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August 12, 2011 / Erach Screwvala

Public Domain Pitfalls

Sometimes that shiny object lying on the ground isn’t the prize it appears to be.

There was a time when copyright owners had to observe certain formalities to maintain protection for their works of art. A single mistake resulted in a protected work falling into the public domain. Of course, once a work is in the public domain, anyone is free to use it. Of course nothing is black and white when it comes to copyright law and this is no exception.

In 1939, MGM released The Wizard of Oz. MGM registered a copyright in the film and it remains viable to this day. In connection with the release of the film, the studio created and released a variety of publicity materials, such as posters, still photographs, to promote the film. The studio failed to include proper copyright notices on the material and so it passed into the public domain. A Nevada company acquired some of this material which it then licensed for the manufacture of shirts, mugs, and other knickknacks, no doubt secure in its right to do so.

Not so fast. Warner, which now owns the copyright to the film, sued alleging infringement of the film copyright. The Eighth Circuit agreed, affirming the district court’s judgment in favor or Warner. Warner Bros. Entertainment v. X One X Productions, No. 10-1743.  How did that happen?

The decision makes sense when you consider that copyright can exist in layers. For example, a sound recording carries with it multiple copyrights: the recording itself and the underlying compositions on the recording. So too with a film or television show, which quite often includes copyrighted background music. Even if one element of a copyrighted work falls into the public domain, the remaining elements still enjoy protection from infringement.

So how did the publicity materials violate the film copyright? To understand, we need to understand how a single work can implicate multiple copyrights. Take, for example, a CD. For each recorded track, there are at least two separate copyrights: the copyright in the actual recording and the copyright to the underlying composition. A television show or a film also typically has multiple layers of copyrights, whether in the use of recorded music as background or the use of pre-existing film or television clips.

Here, the additional layer was the use of the film characters in the publicity materials. Courts have routinely held that copyright protection can extend to characters where those characters have distinctive characteristics, such as visual look, speech, and mannerisms. Thus, it has been held that James Bond qualifies for copyright protection. Metro-Goldwyn-Mayer v. American Honda Motor Company, 900 F.Supp. 1287 (C.D. Cal. 1995). Where the film character is based on a literary character, as was true here, the protection is limited to the incremental expressions of character beyond that included in the underlying work. Of course, as the Court noted, literary works often allow for imagination in the embodiment of a character, which a film would typically take further.

This decision points out the importance of understanding how works can implicate many layers of copyright protection. Even when licensing material, you must take care to determine what other rights exist in the material you license and then take steps to license the additional material as well.


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