I’ll get you, my pretty, and your little copyright too!

By Beth Hutchens
July 11, 2011

Wicked Witch, circa 1900

Last week, the 8th Circuit handed down a ruling saying that knickknack companies can’t use Warner Brothers’ copyrighted images on their merchandise even if they use public domain elements. Shocking. But for reasons unknown, some Hollywood types took this to mean that “every Wizard of Oz movie is in jeopardy”. Ummmm… no. Granted, the issues deal with one of the quirkier concepts in copyright law but just… no. At the end of the day, my pretties, it all boils down to what is protected by copyright, what is not, and what you can do with that stuff.

Here’s what happened. About five years ago, Warner Brothers (who owns the copyrights) sued companies selling little bits of stuff featuring characters and scenes from Gone with the Wind and The Wizard of Oz (and Tom & Jerry, too, but for the sake of brevity we’re not going there.) The companies had some restored publicity photographs, movie posters, and other promotional stuff for the movies and began incorporating elements from those posters with the images of the characters from the films to make snow globes, lunch boxes, and other types of nostalgic trinkets. Lots of times, they would modify the image to add a character’s catch phrase from the movie. Other times, they would combine different publicity photos into a single product. For example, a publicity photograph of Dorothy posed with the Scarecrow served as the model for a statuette and another publicity shot of the yellow brick road was the model for the base of that same statuette. Warner Bros said “No way, Jose! That’s copyright infringement!” The companies said “Nu-uh! It’s public domain!” The 8th Circuit Court of Appeals was tapped to decide who was right. Turns out, it’s Warner Brothers. Here’s why.

Believe it or not, copyright protection does extend to original expressions of plot details, character structure, and even fictional places if they are sufficiently descriptive and developed, e.g., there must be a modicum of creativity and sufficient uniqueness. The rule of thumb is the less developed the character, the less likely it can be copyrighted. The more developed a character, the more likely it can be copyrighted. I’ll use an example.

When I was six, I wanted to be a witch for Halloween. The witch / broom stick concept dates back to the middle ages. So does the pointy hat and maybe even green skin. So, for my kindergarten Halloween party, I carried a broom and wore a black dress with a cape and a pointy hat. I didn’t have green skin, though. I don’t think my mother wanted to spend the next six months cleaning green makeup off the walls, the carpet, my clothes, and the cat, so no green skin for me. Anyhoo, to make my costume, all I did was take well known perceptions of a witch that had been around for hundreds of years. No creative spark, nothing original, just public domain elements I threw together so I could be a generic witch for my Trick R Treating fun. There was nothing very unique about my costume and I’m not ashamed to say there wasn’t much of a creative spark when I threw together an outfit that looked like every other picture of a witch I had seen in my fairy tales. No developed character here.

Enter stage left my beloved Wicked Witch of the West. Here’s what she looks like as L. Frank Baum imagined her. Very developed, very creative, very unique, and therefore, totally copyrightable. And due to the 1831 Copyright Act, she is totally in the public domain. In contrast, here is a picture of Margaret Hamilton as the Witch in Warner Brothers’ 1939 classic. Again, totally original, totally unique, and totally copyrightable. She is also ruled by the 1909 Act, but very much NOT in the public domain. Yes, she has the black dress, the pointy hat, the broom, and even green skin. But she also has a distinctive look, attitude, catch phrases, and developed personality traits that make her very different from my generic expression of a witch and L. Frank Baum’s public domain character. So what is it about this particular expression of a witch that makes her unique? She is, after all, comprised of at least some elements that are in the public domain. It all has to do with original expression, character development in a movie, and the 1909 Copyright Act.

Let’s go back to the publicity photos. These (and other promotional items) were actually released before the film was. They featured the actors in costume and on various sets, but they weren’t stills of the film’s footage. They were created independently and separately by photographers and artists. Importantly, these materials, unlike the movie, were not published with the copyright notice, which was required under the 1909 Copyright Act. This means the images on these posters are now in the public domain, whereas the actual movie, which was published with the proper notice, is not. Warner Bros. argued that even though the companies are using materials that are publicly available, they are using them in new ways that infringe the copyrights in movies, e.g., they are making infringing derivative works. The companies countered that there is no limitation on the public’s right to modify or make derivative works from public domain materials. That’s actually true. The 8th Circuit agreed with the companies on this point and noted:

“[A]s a general proposition, the public is not limited solely to making exact replicas of public domain materials, but rather is free to use public domain materials in new ways (i.e., to make derivative works by adding to and recombining elements of the public domain materials).”

But they went on to point out that you can’t do it if this new material conflicts with a valid copyright. That means even if you use a public domain character, like the Wicked Witch of the West, if you incorporate copyrighted expressions of that Witch (like catch phrases or specific characteristics), it would be an infringing derivative work.

Here’s the thing. The description of a character in a book is very different from that character as portrayed in the movie. This is because a book’s description of a character generally has nothing to do with the interpretation on film. The written word description of a character leaves much to the reader’s imagination, even when the description is detailed. For example, L. Frank Baum described the Wicked Witch of the West as “paunched old woman with three pigtails and an eye-patch.” This conjures in the reader’s imagination an image personal to him or her. Contrast with Margaret Hamilton who portrayed Warner Bros. interpretation of that character. The reader’s mental image of the written description of that character is removed and, for the purposes of the motion picture, is replaced with the image as portrayed by the actress. The court noted that the film actors’ portrayals of the characters at issue appeared to rely upon elements of expression far beyond the dialogue and descriptions in the books. As a result, the copyright in the film covers that depiction of the character, but not the public domain elements of the publicity posters.

The companies argued that since the publicity materials were public domain, the characters themselves were also in the public domain. Not so. This is because the images included in the publicity materials “cannot anticipate the full range of distinctive speech, movement, demeanor, and other personality traits that combine to establish a copyrightable character.” The movie character becomes a living breathing expression of the book’s character that is different from a photograph or drawing of the public domain character. Nevertheless, it is possible that public domain materials could place some aspects of a character’s visual appearance into the public domain. The court reasoned that the individuals shown in the publicity materials establish “characters” for copyright purposes only if they display “consistent, widely identifiable” visual characteristics, e.g., if they show the unique and developed character that was featured in the movie. This means we might have had an issue if the publicity photographs depicted Dorothy as she appeared on film.

Consistency was the key with this case. In order to have at least some aspects of the expression of the characters in the 1939 movie tossed into the public domain, the publicity materials would have had to consistently show the same expression of the character as portrayed in the movie. They didn’t. There were actually many different portrayals of the movie characters. When we think of Warner Bros.’ Dorothy we envision a blue and white dress, two brown braids, a little basket with a dog in it, and those fabulous red shoes. The movie posters didn’t show Dorothy this way, and similarly didn’t depict what we have come to recognize as the Tin Man, the Cowardly Lion, or the Witch. For example, in the publicity materials, Judy Garland as Dorothy sometimes wears a red dress and bow and black slippers. In some images the Tin Man’s face appears metallic, and in others it appears flesh-colored. The court held that the characters’ visual appearances in the publicity materials weren’t consistent enough to create any “copyrightable elements” of the film characters’ visual appearances. Meaning they were just plain old characters and weren’t developed enough to be that particular witch, or little girl, or scarecrow. This is for good reason. If the inconsistent publicity material images of undeveloped characters were held to embody the copyrighted characters, this would allow us to say that a copyright could extent to any character who wears a scarecrow or lion costume. I’m sure Disney would squeal with glee at that idea, but thank goodness, the CAC said no way.

Therefore, with the companies’ use of an amalgamation of public domain and copyrighted material, it wasn’t difficult for the court to determine that using only public domain materials (like putting the publicity image by itself on a T-shirt) was totally ok, but anything that is recognizable as a copyrightable character from the film has copied “original elements” from that film. So when the companies made things that used the public domain image plus the catch phrase or a still from the move (like “there’s no place like home” under a picture of Judy Garland as Dorothy) it was an unauthorized derivative work because it used a developed copyrighted character. Similarly, a composite work combining two or more separate public domain images (such as Judy Garland as Dorothy combined with an image of the Emerald City) added a new increment of expression of the film character (not the public domain character). Just because they were in a new form, like a statuette or a snow globe, won’t remove any infringing aspect of the material taken from the film- even if it’s a new expression of that film character.

The take-home is that you can’t add copyrighted material to public domain material and negate the underlying protection-even if it’s in a new medium. Similarly, you can’t take public domain materials and combine them in such a way that evokes copyrighted material. And that, my pretties, is a very very very good thing. But never fear- a farmhouse is not falling on new interpretations of the Wizard of Oz. You are free to come up your own interpretation of any public domain work and create something completely unique, original, and copyrightable. Gregory Maguire pulled it off like a boss. I have no doubt that current projects based on the original Wizard of Oz (or any other public domain work) will be able to do so without the copyright brigade breaking down the door. Just don’t put Dorothy in ruby slippers; that idea is all Warner Brothers. Wait- you didn’t know Dorothy’s slippers were originally made of silver? I guess it is true you should always read the book before seeing the movie.

The Author

Beth Hutchens

Beth Hutchens is a contributing author on IPWatchdog.com. Beth’s recurring, feature column typically focuses on Internet, trademark, copyright and/or privacy issues. She brings her unique perspective and witty writing style to subject matter that could otherwise be dry. Her insights, along with a “take no prisoners” attitude, work to provide a fun, entertaining and always informative column.

When not writing she is an attorney based in Seattle, Washington. can be reached at beth.hutchens@gmail.com.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 1 Comment comments.

  1. TRP July 12, 2011 12:39 pm

    Warner Brothers created a copyrighted material (WB copyrighted material or “A”) that looked alot like a now public domain, publicity photograph of Dorothy posed with the Scarecrow combined with a now public domain publicity shot of the yellow brick road (public domain material or “B”).

    Knickknacks took the public domain material or “B” and made “C” – a “statuette” made from combining a public domain, publicity photograph of Dorothy posed with the Scarecrow and a public domain publicity shot of the yellow brick road.

    Knickknacks says, yea, C=B, but we didn’t copy C from A, so we’re cool.

    Warner Brothers says that if A=B and B=C, then A=C, viz, WB copyrighted material and statuette are equal.

    The court cries “Transitive Property!” and says “Not cool!” to Knickknacks and tells Knickknacks that they gotta pay Warner Brothers.

    Math geeks, please back me up on this!