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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  • identicon
    Anonymous Coward, 14 Nov 2016 @ 9:56am

    Copyright must be abolished.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 14 Nov 2016 @ 10:10am

    is there even a single court in the USA that does it's job rather than falling over itself to climb up the asses of the entertainment industries? the attitude is pathetic!!

    reply to this | link to this | view in chronology ]

    • identicon
      clown about town, 14 Nov 2016 @ 11:14pm

      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.

      reply to this | link to this | view in chronology ]

  • icon
    jupiterkansas (profile), 14 Nov 2016 @ 10:19am

    The film's copyright should have expired in 1995. Our culture has been hijacked by the film industry.

    reply to this | link to this | view in chronology ]

  • identicon
    I.T. Guy, 14 Nov 2016 @ 10:19am

    They are doing such a great job. My kids have never even seen it. At this point prolly never will.

    reply to this | link to this | view in chronology ]

  • identicon
    I.T. Guy, 14 Nov 2016 @ 10:26am

    I am going to start making tee shirts with Raymond Gruender's picture on it in a tin man hat with the caption:
    "If I only had a brain."

    reply to this | link to this | view in chronology ]

  • identicon
    PRMan, 14 Nov 2016 @ 10:56am

    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.

    reply to this | link to this | view in chronology ]

    • icon
      Oninoshiko (profile), 14 Nov 2016 @ 11:08am

      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.

      reply to this | link to this | view in chronology ]

    • icon
      JoeCool (profile), 14 Nov 2016 @ 11:34am

      Re: I think you're missing something here.

      I think it's the courts that are singing "If I only had a brain." :)

      reply to this | link to this | view in chronology ]

    • icon
      Leigh Beadon (profile), 14 Nov 2016 @ 11:40am

      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

      reply to this | link to this | view in chronology ]

      • icon
        Leigh Beadon (profile), 14 Nov 2016 @ 11:44am

        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.

        reply to this | link to this | view in chronology ]

      • icon
        Leigh Beadon (profile), 14 Nov 2016 @ 11:48am

        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.

        reply to this | link to this | view in chronology ]

      • icon
        That One Guy (profile), 14 Nov 2016 @ 2:52pm

        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.

        reply to this | link to this | view in chronology ]

  • identicon
    Max, 14 Nov 2016 @ 11:46am

    So yeah, honest question - am I a filthy pirate every time I say "I'll be back!"...? How about when I say it with a thick foreign accent? Now how about saying "Hasta la vista, baby"...? If so, how much do I owe per utterance, and who shall I make it payable to...?

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 14 Nov 2016 @ 11:48am

    “[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.

    reply to this | link to this | view in chronology ]

  • icon
    ECA (profile), 14 Nov 2016 @ 12:01pm

    Why is it?

    That 'AT THE TIME' Copyright is being Extended, and retroactive??

    I know that Laws/regulations can not be extended Backwards, nor retroactive...WHY IS THIS any different?

    ALL of it, Movies, Music, and all the stuff related should be released, BEFORE 1970's...

    reply to this | link to this | view in chronology ]

    • icon
      ECA (profile), 14 Nov 2016 @ 12:06pm

      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)

      reply to this | link to this | view in chronology ]

    • icon
      jupiterkansas (profile), 14 Nov 2016 @ 2:06pm

      Re: Why is it?

      Because nobody opposed the film industry when they begged congress for retroactive copyright in 1976, and now corporations own our culture.

      reply to this | link to this | view in chronology ]

      • identicon
        Wendy Cockcroft, 16 Nov 2016 @ 5:50am

        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.

        reply to this | link to this | view in chronology ]

      • identicon
        Wendy Cockcroft, 16 Nov 2016 @ 5:50am

        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.

        reply to this | link to this | view in chronology ]

  • identicon
    Sir Copywrong, 14 Nov 2016 @ 3:45pm

    Copyright Surveillance Database

    Copyright is a registry that correlates artists together with the memes they create. If they dare to draw the wrong meme, you know where to find them and stop the dank memes.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 14 Nov 2016 @ 9:02pm

    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.

    reply to this | link to this | view in chronology ]

    • icon
      PaulT (profile), 15 Nov 2016 @ 1:10am

      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?

      reply to this | link to this | view in chronology ]

    • icon
      Leigh Beadon (profile), 15 Nov 2016 @ 6:41am

      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.

      reply to this | link to this | view in chronology ]

  • identicon
    Kronomex, 15 Nov 2016 @ 2:25pm

    I have nasty feeling now that The Donald will soon be ruining...sorry...running the country that the copyright industry will concrete their rules and regulations into unassailable bastions of greed.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 16 Nov 2016 @ 5:30am

    Public domain law

    Aka

    The, kick the can down the road, reap all the benefit, and we fell for it...law

    reply to this | link to this | view in chronology ]


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