Toto, I Don't Think We're In The Public Domain Anymore

from the copyright-backdoors dept

Long-time readers may remember our coverage of a slow-moving copyright case over public domain images from The Wizard of Oz and other movies. In brief: back in 2006, Warner Bros. sued vintage/nostalgia merchandise company AVELA, which had obtained restored images from old promotional posters for the films and was selling them for T-shirts and other products. Nobody disputed that these specific images were in the public domain, because the promo materials had not been registered for copyright even though the films were — but Warner claimed that the images nevertheless infringed on the copyright in the characters established by the film. The court originally sided with Warner in full, but on appeal found that the exact two-dimensional reproductions of the images on T-shirts and the like were not infringing, but instances where they were combined with text and other images or used to create three-dimensional models were, and awarded some pretty huge damages. To complicate matters, there’s also a trademark claim wrapped up in all this. There was another appeal, and now a court has upheld the ruling and the damages, giving movie studios another weapon in their war on the public domain (here’s a PDF of the full ruling).

Now, there are a lot of layers here, and I’m going to focus on The Wizard Of Oz, since it provides the most interesting example. The 1900 book is in the public domain. The 1939 movie is still under copyright held by Warner. The associated 1939 promo materials were not registered (a requirement at the time) and are in the public domain. And many characters and other elements of the movie are also covered by trademark, also owned by Warner. Absolutely none of these facts are in dispute — but put them all together and you have a giant mess that illustrates the flimsiness of the idea/expression dichotomy, and how something can supposedly remain in the public domain while being gutted of all its usefulness to the public.

Let’s consider the line the court drew between different kinds of use, because it’s one of those things that makes a certain amount of legal and logical sense but produces an utterly absurd result. Basically, the court said that Warner can’t stop someone from making unmodified reproductions of material that is undisputedly in the public domain — that is clearly non-infringing — but since that material includes images of characters from a work that is not in the public domain, modifying it (by combining it with other images or turning it into 3D objects) violates those other copyrights and becomes infringement. The existence and limits of character copyright are highly complex and questionable to begin with (Warner does not in fact own the characters, because those are from the book, but only the original elements of the film’s expression of those characters) but if you believe in them to any extent this makes some sense: a single image of a character entering the public domain does not invalidate all copyrights associated with that character. But… consider what this means: if you are remixing copyrighted material, making your own creative changes to it weighs in your favor in a determination of infringement; if you’re making use of public domain material, creative changes might magically turn it into infringement. That’s not how the public domain is supposed to work.

This latest ruling is mostly upholding the last one, so let’s go see what the court said in 2011:

The film actors’ portrayals of the characters at issue here appear to rely upon elements of expression far beyond the dialogue and descriptions in the books. AVELA has identified no instance in which the distinctive mannerisms, facial expressions, voice, or speech patterns of a film character are anticipated in the corresponding book by a literary description that evokes, to any significant extent, what the actor portrayed. … At the very least, the scope of the film copyrights covers all visual depictions of the film characters at issue, except for any aspects of the characters that were injected into the public domain by the publicity materials.

Damn those publicity materials, “injecting” content into the public domain! Now, I have a few questions about this. How does an image on a T-shirt infringe on a film character’s mannerisms, voice or speech patterns? Of that list of distinguishing characteristics, only facial expressions apply — individual specific facial expressions captured in images that are in the public domain. And could we perhaps get some slightly narrower wording than “at the very least the scope of the film copyrights covers all visual depictions of the film characters”? Because goddamn.

Let’s say you were inspired (as many have been) by the character of the Tin Woodsman, and wanted to create something to celebrate him. What can you do? Well, you can start with L. Frank Baum’s original description:

Just before them, was a very big tree that had been partly chopped through, and standing right beside it, with an uplifted axe in his hands, was some sort of a man, yet made entirely of hollow tin. He was slightly rusted, but he was a tin-smith’s masterpiece nevertheless. His tin head and arms and legs were all jointed upon his tin torso, but he stood perfectly motionless, as if he could not stir at all. This was one of the most astonishing things that Dorothy had ever come across in all her young life.

That’s definitely in the public domain. So far so good. But perhaps your fondest memories are visual — his pointy nose and his steam-pipe hat! Well, fair enough, because that’s all there in the original illustrations from 1900:

Okay, you’re still in the clear! This piece of our shared culture is over a century old, and it belongs to us all to enjoy and repurpose as we see fit — as it should. But hey, in your research, you’ve come across something interesting: original movie posters from 1939 that were never registered for copyright! Obviously the creators didn’t see a great deal of long-term commercial value in their promotional materials, and were happy to let them live in the public domain. You are especially fond of one of the images — another illustration of the Tin Man, based on his portrayal in the movie, which was itself based on the earlier illustrations:

Perfect! Not only is that image in the public domain due to lack of registration, its most identifiable elements are virtually identical to the original illustrations, so you doubt it would even qualify for much copyright protection in the first place. You put it on a T-shirt. Everything’s still fine, and you still haven’t infringed a single copyright. But… something’s missing. A final touch. Perhaps a short line of text, his most famous quote — a six-word sampling, hardly enough to infringe on anything by any reasonable standard. Voila! Your final product is complete:

STOP! THIEF! You’ve gone too far this time, chump. Yes, somehow that final step turned this from a perfectly legitimate use of public domain material into a grievous infringement on the rights of Warner Bros. You are no longer simply using a public domain image, you are using the mannerisms (maybe?) and voice (uh…) of a copyrighted character to create a new work. Basically, it feels like the court badly wanted to just give Warner the farm and block all uses of the images, but had to begrudgingly admit that it couldn’t stop the most direct and obvious cases of reproducing something in the public domain — so it settled for stopping everything else so long as there was the tiniest, flimsiest reason to argue it infringed on the film.

To make things weirder, a trademark claim was involved too. In some ways, this claim was much stronger: Warner owns a variety of trademarks on material and images from the film, and the court reasonably found a likelihood of confusion for consumers who might think the products are official Wizard Of Oz merchandise. But the law already includes an important caveat, via the Dastar ruling, to prevent this sort of perpetual-copyright-via-trademark — and the court knocked that down with some granular interpretation:

Images of the film actors in character and signature phrases from the films are not communications, concepts, or ideas that the consumer goods embody as Dastar defines these terms. Products marketed under AVELA?s licenses employ iconic film characters? pictures to associate the products with Warner?s films, not to copy the film itself. Accordingly, these are trademark claims, not disguised copyright claims, and Dastar does not bar them

Dastar basically says that the right to reproduce public domain material without attribution trumps any claims that doing so is a false designation of origin (“reverse passing off”) in violation of trademark law, by clarifying the narrow definition of “origin” — stating that it does not mean the origin of the ideas and concepts in a work, but the actual commercial origin of a specific product. Somehow, Warner convinced the court that these T-shirts were not copying the content of the film but were in fact associating themselves with the official creators of the film and confusing consumers as to the origin of the product, and thus the trademark claim is still valid.

How can both these things be true? If the public domain images of the characters are not communications, concepts or ideas as defined in Dastar, and were not used to “copy the film itself,” then how can their use be subject to a claim based on the character copyrights from the film? And if they are somehow infringing on copyright, how are they not protected from a trademark claim by Dastar? Yes, you can tease out a legal interpretation that technically resolves this paradox — but you can’t make it sound any less stupid.

We all know that Warner Bros., Disney, and pretty much every other company that has made a fortune by mining the public domain for material will stop at nothing to make sure future generations can’t do the same. The courts need to stop letting them get away with it, but that’s unlikely when we’ve got judges talking about things being “injected” into the public domain — as though entering the public domain was some rare, undesirable aberration, not the default state and ultimate fate of all content.

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Companies: avela, warner bros.

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Comments on “Toto, I Don't Think We're In The Public Domain Anymore”

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clown about town says:

Re: Re:

Try to see this from the courts point of view.

The courts (and judges therein) are in the business of resolving law. The entertainment industry courtesy of opaque copyright and trademark law brings shed-loads of business their way. This unacknowledged “client”, if you will, is fulfilling a key role in keeping the wolves from their door.

PRMan (profile) says:

I think you're missing something here.

“If I Only Had a Heart” is the title of a song written specifically for the movie. It is not part of the original book.

If the line were “Do you suppose Oz could give me a heart?” instead (which is from the book), then I think they would be in the clear, but otherwise they are definitely ripping off the movie properties, not making shirts from public domain materials.

Oninoshiko (profile) says:

Re: I think you're missing something here.

maybe, but we’re talking about a copyright claim, so as such let me ask you a question: Does seeing the five words “If I Only Had A Heart” substitute for actually hearing the song?

If not then it’s hard to argue that it’s actually violating the copyright. Five words are just not enough to qualify as copying a song, let alone an entire film.

Leigh Beadon (profile) says:

Re: I think you're missing something here.

Oh I know, but the copyright on a song does not cover people simply using the name of the song – that’s absurd. But actually that’s not even the issue…

Here’s the REALLY crazy part: check out what the ruling says. It doesn’t say the fact that the line came from the film is what matters – in fact, it explicitly says that even using a line from the original book makes this shirt infringing.

Yup, amazingly, the court said the opposite of what you’re saying. And I quote:

“[products] that each juxtapose an image extracted from an item of publicity material with another image extracted from elsewhere in the publicity materials, or with a printed phrase from the book underlying the subject film, to create a new composite work” are infringing

Leigh Beadon (profile) says:

Re: Re: I think you're missing something here.

I know. This sounds crazy. I struggle to understand how the result could be so absurd myself. To clarify even further:

The court said that what matters is not that the added lined is itself somehow infringing – what matters is that the added line “associates” the public domain image with the film. And somehow, that means the shirt is no longer simply using a public domain image, it’s infringing on the film.

The line of text could be “Guy from that story about Oz, you know the one” and that would be infringing too according to this ruling.

Leigh Beadon (profile) says:

Re: Re: I think you're missing something here.

Furthermore, and still insane, that line says that using two pieces from two different parts of the publicity material (ALL of which is in the public domain) makes it infringing. That is crazy.

By that logic, you can publish early public domain Sherlock Holmes stories individually, but if you put two of them together in a collection you are infringing on the Holmes estate.

That One Guy (profile) says:

Re: Re: If you're going to steal from the public domain, at least be honest about it

At that point the judge might as well have gone all the way and officially said that the book was no longer in the public domain and was now the property of Warner. Simply because Warner was clearly the sole owner of the very concept of the book, movie, and anything even remotely associated with it.

Anonymous Coward says:

“[products] that each juxtapose an image extracted from an item of publicity material with another image extracted from elsewhere in the publicity materials, or with a printed phrase from the book underlying the subject film, to create a new composite work” are infringing

In other words the court is saying that you cannot create a new work without infringing multiple copyrights, as every new work will have phrases and ideas from multiple sources.

ECA (profile) says:

Re: Why is it?

This is as if…
A painter created the BEST picture/art work Ever made…
And NEVER painted another picture, because ALL his life, he gained money from the showing of his picture..

There is no incentive for HIM TO PAINT anything anymore..

This is as bad as contractor/builders, building a HOUSE, and getting PAID every time its sold to another person..
(yes this is happening)

Wendy Cockcroft (profile) says:

Re: Re: Why is it?

Hence the calls to abolish copyright. If they can’t play nicely with their toys, they shouldn’t have them.

Is now a good time to remind folks that allowing copyright to be referred to as property has put the ball in the bad guys’ court? May I also remind you that referring to experiencing content as “consuming” tends to make people think of copyrighted items as finite property that gets “used up” every time you watch a movie, etc.?

We need to take back the narrative and call out the lies from the maximalists. That there are some property elements in copyright, I must concede, but the whole entire thing is not property at all; if anyone is doing any nicking it’s the maximalists from ourselves every time they rob the public domain.

We need to push back, and hard. I recommend taking part in every copyright consultation that comes up and being willing to contact your reps about how absurdly long the terms are. When we stop treating songs, images, and film ideas as property in and of themselves, this madness will come to an end. The only way I can think of to get there is to stop letting everyone else get away with doing that unchallenged. Challenge them.

Anonymous Coward says:

The court ruling is correct

Crazy and backwards as it sounds the court got this one right. The purpose of this case isn’t to determine whether the copyright on the films is valid, you and I might think it’s pretty silly that is, but all the parties in the case appear to agree that it is valid. The court is forced to consider that if the promotional materials had never been made (and subsequently been unregistered for copyright) then those same images which are now public domain would instead be copyrighted. So yes, it’s completely absurd and shitty and against the spirit of public domain but a quirk in the past rules for copyright registration requirements has “injected” works that would otherwise be fully copyrighted into the public domain.

Once you get to that point logically you have to accept that any sort of changes toss the work back into copyrighted territory because otherwise any changes also become public domain and the entire Wizard of Oz movie quickly ends up in the public domain as well, which as I pointed out earlier, no one is (legally) disputing that it should be (even if, morally and logically, it should be).

I wish Techdirt would waste less space on courts upholding bad laws because they uphold laws in general and more time on efforts to fix bad laws, which is really where this battle should be fought.

PaulT (profile) says:

Re: The court ruling is correct

“The court is forced to consider that if the promotional materials had never been made (and subsequently been unregistered for copyright) then those same images which are now public domain would instead be copyrighted”

I thought courts were meant to consider what is actually happening and not what might be happening in an alternate history. The images are public domain in this universe. If we’re addressing parallel universes, I’d prefer they address the one where copyright was never extended to rob works from the public domain and this whole discussion is moot because all the materials are already there.

“Once you get to that point logically you have to accept that any sort of changes toss the work back into copyrighted territory because otherwise any changes also become public domain and the entire Wizard of Oz movie quickly ends up in the public domain as well”

No, they wouldn’t. The film existed and was created as a separate entity from the promotional shots. The film was a whole new work, not a modification of the promo shots. In fact, it would actually happen the other way round – a new modified print of Nosferatu with a new soundtrack has a separate copyright from the public domain original. That doesn’t make the original suddenly under copyright, nor down it make the new work 100% public domain. So, the fact that some material from a copyrighted work is public domain would not suddenly make the whole thing public domain.

“I wish Techdirt would waste less space on courts upholding bad laws because they uphold laws in general and more time on efforts to fix bad laws”

They cover both. Why should they ignore where the law is openly being abused, thereby giving great examples of why it desperately needs to be fixed?

Leigh Beadon (profile) says:

Re: The court ruling is correct

The purpose of this case isn’t to determine whether the copyright on the films is valid

Um, what? Who ever claimed that was the purpose of this case? I spend quite some time at the beginning of the post pointing out that the copyright status of the film is not in dispute.

It’s odd that you think this is such an inevitable, inarguable ruling, or that you think a different ruling would someone drag the entire Wizard Of Oz movie into the public domain… Neither of those things are true.

SpaceOmega5000 (profile) says:


I really hope we don’t live in a world where basic forms of modding with public domain images can be Copyrighted as a whole. I was wondering what the 3D models part was about?

Are they seriously arguing that making a 3D model of a public domain picture automatically violates the film’s Copyrights? Or was it because the 3D model was based off the poster, where the poster was only showing a face of the character? At one point I can sort of see something but still find it ridiculous since the image might naturally lead to it. Sadly I wish I could see a model made from the company to be sure more.
Anyway if one were to make a 3D model or figure off the 1900 style or made a original rest of the model from the poster, and they wouldn’t consider it further expression of the Copyrighted character, then that would be a little bit of a relief.

Sp1r1ted1 (profile) says:

Must Know

So, not only do you have to know the work of art, all other works of art that stem from that work, AND all promotional works that could be created at any time in the future as those potentially relate to the work that stemmed from the original. It’s quite a lot to ingest and find. Because these “new” promotional works can be produced at any time and potentially extend the stemmed work of arts copyright in a partial manner. Talk about going down the rabbit hole. Ooops, Did I just violate something or is this considered fair use?

Quite honestly, I no longer like the Wizard, the Tin Man, the Scarecrow, the Cowardly Lion, or Dorthy. As a boy, I use to think Judy Garland was hot in her outfit while portraying the innocence of someone caught up in the the complexities of societal regulation (so much so that it entered her poor subconscious when dreaming); turns out that the control has been taken to an entirely new level and making people aware of it (legally) has completely diminished the art in comparison to the reality of what the production company initially hoped to relate to it’s viewers. Now I just think that I would rather watch something else and forget that work of art ever existed. Somehow greed, and societal oppression (through twisted litigation) just seems to sour thing more than the artistic value that was ever offered.

WB has in essence become the Witch and is going after Toto to have him put down through the “laws” that both are trying to exact.

Maybe, some people will see this and maybe some will not but if there is one phrase that would best be suited for a T-Shirt it would be, “WB killed Dorthy and her little dog too!!!” Then put a little quote with the ruling beneath it.

Sp1r1ted1 (profile) says:

Promotional Work

To me, the copyright of the promotional work should be independent of the film. It should stand on its own, not as an extension of a work for the use in furthering copyright of another work. This is stacking the law and if we allow that to happen then we will eventually prevent people from having free speech. How many levels should we extend this?

For example if Microsoft writes a software program and then reference some of the code (in fine print) at the bottom of one of the posters should that copyright be extended? How much code can be placed on a promotional item that has a logo? And does it only have to be placed at one promotional site? Now do I have to track down every piece of promotional material that MS ever created and scan it to make sure that I don’t violate a copyright? Obviously, software is a ways out of the realm of public domain, but I think my point is clear.

This type of litigation will prevent the very thing that copyrights were intended to uphold. It will in essence prevent future innovation rather than foster it. Safeguarding the creation is important, but when you have to figure out many layers of copyrights then the barrier to entry becomes so large that a single artist can no longer engage.

The law is being extended from protecting a work by a person to a corporation (technically not a person but legally it is.) WB is using its mass (something an individual can not become) to control the marketplace on both large and small scales. This is in essence anti-competitive. Sure they can say there are other corporations out there that they have to compete against but ideas and creativity do not come from organizations it comes from people.

I feel like William Wallace. “Freeeeeeeeedom!!!!”

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