Public Domain May Not Be So Public After All–The Warner Bros. v. X One X Decision

by: Robert Wagner, intellectual property attorney at Picadio Sneath Miller & Norton, P.C.

Materials that have fallen into the public domain should be free of any claims of copyright infringement, right? Not so fast says the Eighth Circuit. As with many issues surrounding copyright law, the answer is not so clear cut. It depends on whether other copyrights exist and how one uses the public domain materials in relation to the other copyrights.

In Warner Bros. Entertainment, Inc. v. X One X Productions (No. 10-1743), Warner Brothers sued a number of defendants for allegedly infringing its copyrights in characters and images from the films Gone with the Wind and The Wizard of Oz, as well as numerous short films featuring the cartoon characters “Tom & Jerry.”

Studio Releases Marketing Materials Without Copyright Notice

At the time of these movies’ release in 1939, the copyright laws required that materials be marked with a copyright notice in order to gain the protection of the copyright laws. Materials that failed to comply with the notice requirements of the 1909 Copyright Act in effect at that time forfeited any copyright protections and fell into the public domain. Prior to releasing the films, the studios distributed marketing materials (posters, photographs, lobby cards, etc.) with images of the actors in costume on the sets. None of these materials complied with the copyright notice requirements, and, thus, fell into the public domain. When the movies were released, the studio properly marked the movies and continues to hold a valid copyright in them.

Defendants used these public domain images on shirts, lunch boxes, music box lids, playing cards, and three-dimensional models and figurines. In some cases, defendants added features to the images, such as signature phrases from the movies, or combined the images to create new scenes, sometimes reminiscent of scenes from the movies.

Warner Brothers Sues for Copyright Infringement

Warner Brothers sued, arguing that defendants were only entitled to reproduce the public domain images in their entirety and in the same form without any modifications (i.e., only reproduce the posters as posters). Anything else, it argued, violated its copyrights in the movies and the right to create derivative works.

The Eighth Circuit agreed that the underlying images from the marketing materials were in the public domain, but found that the use of those materials was limited by other copyrights.

In other words, if material related to certain characters is in the public domain, but later works covered by copyright add new aspects to those characters, a work developed from the public domain material infringes the copyrights in the later works to the extent that it incorporates aspects of the characters developed solely in those later works.

The Court then looked at the original books, the movies, the public domain materials, and the defendants’ products to see whether defendants’ use infringed Warner Brothers’ copyrights. In particular, the Court looked to the images in the marketing materials and found that the visual appearance was not sufficiently consistent to have thrown the characters themselves into the public domain by virtue of the release of the marketing materials. Instead, the Court found that only the exact images were in the public domain.

Eighth Circuit’s Holding

Taking this all together, the Eighth Circuit found that defendants were not limited to merely reproducing the public domain materials in exactly the same form as they originally existed. Instead, it found that defendants could reproduce any portion of the public domain materials in any two-dimensional format they chose.

The Court did prohibit defendants from combining public domain images into a new composite work, though. This, it felt, created a “new increment of expression of the film character that was not present in the separate images” and, therefore, infringed Warner Brothers’ copyrights. Similarly, the Court prohibited defendants from taking the two-dimensional images and recasting them in three-dimensional form. This too created a new increment of expression that violated Warner Brothers’ copyrights.

What Does This Case Mean?

The takeaway from this case is that there are no simple answers when it comes to materials that are both copyrighted and in the public domain. One has to look carefully at the facts of the case to determine the nature and scope of the materials in the public domain and in the copyrighted materials. For example, do the public domain materials convey properties and characteristics of the characters or are they just isolated images? How much is in the public domain versus how much is still copyrighted? Has the copyrighted material added anything over the material in the public domain?

While not a complete victory for the studio, Warner Brothers obtained much of what it wanted in this case. Defendants cannot create new works based on the material in the public domain. Instead, they are limited to reproductions (either in full or in part) of the public domain material. It will be interesting to see if either side tries to appeal this decision to the Supreme Court.

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One response to “Public Domain May Not Be So Public After All–The Warner Bros. v. X One X Decision

  1. Pingback: JOLT Digest » Warner Bros. Entm’t v. X One X Productions | Harvard Journal of Law & Technology

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