Prof. Randal C. Picker,
The University of Chicago Law School
August 8, 2011
L. Frank Baum set out to create “a modernized fairy tale, in which the wonderment and joy are retained and the heart-aches and nightmares are left out.” So said Baum writing in Chicago, in April 1900, in the introduction to his book The Wonderful Wizard of Oz. The copyright page in the book was dated 1899 and ran in favor of Baum and W.W. Denslow, who did the illustrations. If you flip through the book, you will recognize quickly the Scarecrow, the Tin Woodman, the Cowardly Lion, and Dorothy.
The text and illustrations are now in the public domain and are free to use for all. You can set out if you’d like to create a new movie based on the text of the book. You could sell a set of coasters imprinted with the illustrations. What you should not do, though, is to make a copy of the 1939 film, directed by Victor Fleming and starring famously Judy Garland. That film presumably is still in copyright and therefore to make a copy of that film would be to infringe upon it. The idea that we cannot copy that film while still having the full power to make a film based upon the public domain text of The Wonderful Wizard of Oz obviously sets the stage for complications, as demonstrated by a recent Eighth Circuit case , Warner Bros. v. X One X Productions (July 5, 2011).
We don’t have a remake of The Wizard of Oz (yet). Instead, to simplify dramatically, publicity materials were produced to promote the original film. These materials seemingly were not derived directly from the film footage but instead may have been created contemporaneously. For example, one of the objects in the case involves a publicity photograph of Judy Garland dressed as Dorothy posing with the Ray Bolger, dressed as the Scarecrow. The photograph is a separate work from the film itself and in that sense arises independently.
These publicity materials could give rise to independent copyrightable works and, under the law applicable at the time, if those works were published without the appropriate copyright notifications, the works would enter the public domain. But if the work lacked the right notice but was instead an unpublished private work, it would not have entered the public domain. You can imagine the fights over what counts as publication, given the consequences, and we have one of those here, but that isn’t my issue today. Accept the court’s conclusion that the publicity materials were published and therefore entered the public domain.
So what can we do with these public domain publicity materials, and can we mix those together with the public domain text of The Wonderful Wizard of Oz? Combine one public domain photograph plus one public domain text and do we have a noninfringing work? This is exactly the issue in the case. Avela deals in vintage and nostalgia and licenses images for use on a variety of objects including shirts, lunch boxes, and playing cards. Avela extracted images from the public domain publicity materials. In some cases, those images were used as is, and the Eighth Circuit upheld that use, but in other cases, Avela combined materials. There are a number of possibilities but to focus on just the simple version of this – seen in the case – imagine a public domain photograph of Judy Garland as Dorothy along with the famous line about the uniqueness of home.
The line from the movie of course is “There’s no place like home,” but that isn’t the line in Baum’s original text, where Dorothy instead says that “There is no place like home.” (That isn’t much of a change, but the book uses silver shoes to get Dorothy home, and not the iconic ruby slippers seen in the movie.) Leave it to lawyers to fight about the importance of a contraction, but the Eighth Circuit did not want to make its opinion turn on that small difference. Instead, the court concluded that “products combining extracts from the public domain materials in a new arrangement infringe the copyright in the corresponding film.” The public domain image from the publicity materials combined with a public domain version of the famous line infringed the film.
There is much more in the opinion, including an interesting discussion of character in copyright and the circumstances under which characters can enter the public domain and also about the risks of moving from a 2D public domain photo to a 3D representation, but linger with the fundamental question about permitted uses of the public domain. Did the court get it right in barring Avela from combining separate public domain works?
We should be careful about making too much of this result. The publicity materials entered the public domain through a regime of copyright forfeiture. We no longer have that regime, and the old regime was seen by some as giving rise to much unfairness. The Eighth Circuit opinion puts some limits on the consequences of old forfeitures.
That said, under the court’s results, Avela can use the publicity images so long as they are not combined even with other public domain works if doing so will infringe on the copyright in the film. Those images have value only because of the film, but it is hard to think that the court preserves the licensing market for Warner even if Avela is barred from combinations. The publicity images have cultural salience only because of the film and in that sense evoke the film with or without additional text. If it is the evocation of the film that is thought to infringe, it is hard to see that adding or subtracting text changes that meaningfully.