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Who owns the ruby slippers? An analysis of the impact of Warner Bros. v. X One X on visual depictions in copyright law.

I. Introduction

II. Background

    A. Brief History of Copyright Law

    B. Derivative Works

    C. Public Domain

        1. Silverman v. CBS Inc

        2. Pannonia Farms v. USA Cable

    D. Fair Use

    E. Warner Bros. v. X One X

        1. The Copyrights and Works in Question

        2. The Suit

        3. Arguments on Appeal

        4. Eighth Circuit Opinion

III. ANALYSIS

    A. Visual Depictions of Literary Public Domain Characters

    B. Consistency of Visual Depictions

    C. Use of Public Domain Visual Depictions

    D. Effects on Creativity

IV. Recommendation

    A. Corporations Should Rely on Licenses Instead of the Public
    Domain

    B. The Supreme Court Should Clarify the Copyrightability of Visual
     Depictions

V. Conclusion


I. INTRODUCTION

Copyright law is an inherent aspect of the most individual and valued of democratic rights: creativity. It protects the rights of the creative, provides art to the public, and promotes further development of society. Naturally, such a vast area of law has ambiguities and shortcomings. This Note analyzes the newest of these ambiguities-visual depictions in copyright law--in the recent Eighth Circuit case of Warner Bros. Entertainment, Inc. v. X One XProductions. (1)

The copyrightability of visual depictions remains an underdeveloped subset of copyright law. In the Warner Bros. decision, the Eighth Circuit attempted to clarify which visual elements of popular classic films are under copyright and which elements are available through the public domain. (2) However, the case served less as a clarification and more as an avenue to further questions and litigation.

To fully recognize the impact of Warner Bros., an understanding of the development of copyright law is necessary. Therefore, Part II of this Note outlines the history of copyright law and how it developed into the substantial body of law that exists today. This includes the different rights preserved for copyright owners, defenses against infringement, and the state of the law prior to and following the Warner Bros. decision. Part III analyzes the Eighth Circuit's opinion, particularly noting the inconsistencies with prior case law. Finally, Part IV looks at the impact of this decision on movie producers and film companies as well as the need for further clarification of the law.

II. Background

Before diving into the impact of Warner Bros. v. X One X, it is important to understand the history and development of copyright law. Part II.A provides a brief history of copyright law, from Article I, Section 8, cl. 8 of the Constitution to the 1998 Digital Millennium Copyright Act. As the disputed works in Warner Bros. are essentially derivative works, (3) Part II.B defines derivative works and the rules regarding their creation. Part II.C explains the importance of the public domain and what types of works are available outside of copyright, and Part II.D looks at the very common defense of fair use in copyright infringement suits. Finally, Part II.E discusses the Warner Bros. case itself, explaining the history of the works in question, the parties' arguments, and the ultimate Eighth Circuit decision.

A. Brief History of Copyright Law

Copyright is defined as "the exclusive right of printing or otherwise multiplying copies of an intellectual production, and of publishing and vending the same; the right of preventing all others from doing so." (4) The importance of copyright law in society is manifested by its inclusion in Article I of the U.S. Constitution, making U.S. copyright law as old as the country itself. (5) The Patent and Copyright Clause of the U.S. Constitution states that "Congress shall have the power ... [t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." (6)

Congress enacted the first Copyright Act in 1790 (1790 Copyright Act) "for the encouragement of learning, by securing the copies of maps, charts, and books, to the authors and proprietors of such copies." (7) The first Act limited copyrights specifically to maps, charts, and books. (8) In addition, copyright holders had the sole right to print, reprint, publish, or vend the copyrighted material for 14 years, starting from the time the clerk of the district court recorded the copyright. (9) The copyright owner could extend the copyright for an additional 14 years, provided the owner recorded the copyright for a second time at least six months prior to the expiration of the first term. (10) Infringement of copyright under the original 1790 Copyright Act was punishable by forcing the offender to "forfeit all and every copy and copies" of the copyrighted material and pay a fine of "fifty cents for every sheet which shall be found in his or their possession." (11) Today, that amount has an income value of approximately $508.00 per sheet. (12)

After its formulation, Congress began to alter the 1790 Copyright Act almost immediately. (13) In 1802, Congress expanded the 1790 Copyright Act to cover "the arts of designing, engraving, and etching historical and other prints." (14) In 1831, Congress granted music protection from unauthorized printing and vending. (15) Congress also extended the first term of copyrights from 14 to 28 years and provided the possibility of renewal for an additional 14 years. (16) Throughout the 19th century, copyright protection was extended to dramatic compositions (1856), photographs and photographic negatives (1865), works of art (1870), and the public performance of music (1897). (17)

Congress enacted a second general revision of copyright law in 1870, which centralized all copyright activities in the Library of Congress and reserved the right to create derivative works to the original copyright holders. (18) In 1909, Congress made a third general revision of copyright law, which changed the statutory protection term for a copyrighted work from the date filed with the clerk of the district court to the publication date. (19) The 1909 Copyright Act also extended the renewal period of a valid copyright from 14 to 28 years (20) and added a notice requirement to obtain copyright protection. (21)

Throughout the 20th century, Congress continued to extend copyright protection to various classes of artistic works. (22) Congress added motion pictures, which had been previously registered as photographs, as a class of protected works in 1912 and granted protection to recording and performing rights in 1953. (23) In 1976, Congress again extended the term of a copyright from 28 years plus a possible 28-year renewal to the lifetime of the author plus 50 years. (24) In 1982, Congress amended 17 U.S.C. [section] 506(a) to make willful infringement a criminal offense. (25)

Despite the constant evolution of copyright law, a drastic change occurred in 1998 when Congress passed two substantial copyright acts. (26) First, Congress passed the Sonny Bono Copyright Term Extension Act, (27) which extended the copyright term an additional 20 years.28 Therefore, under current law, a copyright remains valid for the author's lifetime plus an additional 70 years. (29) This extension protects any copyrighted work for roughly a century before it can enter the public domain. (30)

Congress's passage of the Digital Millennium Copyright Act (DMCA) in 1998 prompted the second expansion of copyright law. (31) The DMCA amended portions of Title 17 of the U.S. Code to bring U.S. copyright protection into the 21st century by protecting digital media. (32) President Clinton signed the DMCA into law on october (28), 1998, (33) and the DMCA had no retroactive effect. (34) The DMCA prohibits circumvention of anti-piracy measures companies have included in commercial software; outlaws the creation, sale, or dispersal of code-cracking devices; and limits Internet service provider liability for the transmission of information. (35)

B. Derivative Works

Cases in which a third party wishes to create a derivative work often dispute what falls under the public domain and what remains copyrighted. (36) United States copyright law defines a derivative work as "a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted." (37) The copyright owner has the exclusive right to prepare derivative works based upon his or her copyrighted work. (38) However, a copyright on a derivative work only protects the new material in the work and not any of the matter derived from the original underlying work. (39) Any creation of a derivative work without the original author's authorization constitutes copyright infringement. (40)

Sylvester Stallone asserted this right in 1989 in Anderson v. Stallone. (41) After the success of the films Rocky I, Rocky II, and Rocky III, Timothy Anderson wrote a 31-page screenplay for a version of Rocky IV he hoped Stallone and Metro-Goldwin-Mayer (MGM) would use for an upcoming sequel. (42) Anderson presented the script to Stallone and signed a release relieving MGM from any liability stemming from its use of the screenplay. (43) After the Rocky IV movie debuted, Anderson brought suit against Stallone and MGM for breach of contract and copyright infringement. (44) In Anderson, the district court held that because Anderson's Rocky IV screenplay was an unauthorized derivative work, no amount of it was entitled to copyright protection, and therefore, he had no claim for infringement.

C. Public Domain

The "public domain" consists of materials not under copyright. (45) These materials were either published before the existence of copyright law, have an expired copyright, or had an owner who forfeited copyright protection. (46) once in the public domain, the public may copy such material without being subject to infringement prosecution. (47) Additionally, once an element of creativity enters the public domain, no one can again appropriate it by claiming copyright. (48)

Despite the rather clear definition of public domain, copyright infringement cases often dispute its scope. (49) A court's determination as to whether a work is in the public domain can have a large impact on the cost of producing a subsequent creative work. (50) The following cases summarize the efforts of the courts to distinguish the public domain from copyrightable material.

1. Silverman v. CBS Inc.

In 1928, Freeman F. Gosden and Charles J. Correll created the "Amos 'n' Andy" characters for a radio broadcasting show entitled "The Amos 'n' Andy Show." (51) The show became one of the most popular radio programs in the United States. (52) In 1948, Gosden and Correll assigned all of their rights to the "Amos 'n' Andy Show" to CBS Inc. (53) The radio programs continued until 1955, and a television series aired on CBS until 1953, with reruns and non-network syndication running until 1966. (54) In 1981, Stephen M. Silverman began developing a script for a musical based on the "Amos 'n' Andy" characters. (55) Silverman sought a license from CBS to use the characters, but CBS refused. (56)

In 1984, Silverman filed a lawsuit requesting the court declare the "Amos 'n' Andy" radio broadcast from March 1928 through March 1948 (the pre-1948 programs) to be in the public domain. (57) The district court agreed with Silverman and held the pre-1948 programs were in the public domain because CBS did not renew the original copyrights. (58) However, the issue then became determining which elements of the characters were in the public domain and which were still under copyright. (59)

on appeal, the Second Circuit followed the precedent that copyrights protect only original works of authorship and therefore the copyrights for derivative works only protect the "incremental additions of originality contributed by the authors of derivative works." (60) As a result, the Second Circuit held the CBS copyrights for the post-1948 programs protect only the incremental expression beyond that which exists in the pre1948 public domain programs. (61) Simply, anything new that was added to the characters, stories, and scripts post-1948 is still under copyright, and anything Silverman used that could be traced to the post-1948 programs infringed CBS's copyright. (62) However, for the purposes of this Note, the most relevant portion of the opinion is as follows:
   Since only the increments of expression added by the films are
   protectable, Silverman would infringe only if he copies these
   protectable increments. It is, of course, likely that the visual
   portrayal of the characters added something beyond the delineation
   contained in the public domain radio scripts, but surely not every
   visual aspect is protected. For example, the fact that the
   characters are visibly Black does not bar Silverman from placing
   Black "Amos 'n' Andy" characters in his musical, since the race of
   the characters was a feature fully delineated in the public domain
   scripts. Similarly, any other physical features adequately
   described in the pre-1948 radio scripts may be copied even though
   those characteristics are visually apparent in the television films
   or tapes. (63)


In essence, the court ruled that any physical characteristics unique to the motion picture versions of the "Amos 'n' Andy" characters were off limits to Silverman. (64) However, any characteristics attributable to the pre-1948 programs were in the public domain and therefore fair game. (65)

2. Pannonia Farms v. USA Cable

Pannonia Farms v. USA Cable (66) addressed the intellectual property rights to the character Sherlock Holmes. (67) Pannonia Farms, Inc., the "self-described exclusive owner of all copyrights and related rights in the writings of Sir Arthur Conan Doyle within the United States," brought a copyright infringement suit against the USA Cable network over USA's plan to create and air a two-hour motion picture featuring the characters Sherlock Holmes and Dr. Watson. (68) At the time of the lawsuit, only 9 of the 60 Sherlock Holmes stories by Conan Doyle were still under copyright protection. (69) Seeing as USA's motion picture constituted a derivative work, the right to create such a work rested with the holder of the original copyright, if the original work were still under copyright. (70)

While the court ultimately decided the case on standing grounds, it relied on the holding in Silverman, (71) stating, "[a]gain, like Silverman, just as these many stories have passed into the public domain, so too have their delineated constituent elements, such as the Holmes and Watson characters that are the subject of this suit." (72) Therefore, the only elements of the Holmes and Watson characters not available to USA Cable were those that were distinctly added by the nine stories still under copyright. (73) The court held that as Pannonia Farms did not claim infringement for any element specific to the copyrighted nine stories, the "[d]efendant's Movie therefore is not derived from any material that plaintiff's claimed copyrights could potentially encompass. Lacking an allegation of infringement upon plaintiff's own creative 'embellishments and additions' to the Holmes and Watson characters, plaintiff could not have reasonably expected success on its copyright claim." (74)

D. Fair Use

Section 107 of the Copyright Act of 1976 provides "the fair use of a copyrighted work ... for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship or research, is not an infringement of copyright." (75) This doctrine acts as a judicial method of preserving the essence of copyright law of "promoting the Progress of Science and the useful Arts" that extended copyright privileges may prevent. (76) The fair use doctrine originated in the late 19th century in Folsom v. Marsh, (77) a case involving the copying of George Washington's private letters. (78)

In Folsom, the defendant copied hundreds of Washington's letters verbatim in his two-volume biography. (79) The plaintiff had collected these letters as a portion of his 12volume collection of Washington's writings. (80) Although the court found infringement, Justice Story acknowledged the biography had social value. (81) Since Justice Story did not agree with the finding of infringement in the case and thought "no doubt, that it was deemed a perfectly lawful and justifiable use of the plaintiffs' work," he created the fair use defense. (82)

To guide future courts in determining what constitutes fair use, Justice Story provided four factors Congress eventually codified in 1976 in 17 U.S.C. [section] 107. (83) The statute reads:
   In determining whether the use made of a work in any particular
   case is a fair use the factors to be considered shall include (1)
   the purpose and character of the use, including whether such use is
   of a commercial nature or is for nonprofit educational purposes;
   (2) the nature of the copyrighted work; (3) the amount and
   substantiality of the portion used in relation to the copyrighted
   work as a whole; and (4) the effect of the use upon the potential
   market for or value of the copyrighted work. (84)


These criteria serve as a means of balancing the public's creative interests with the rights of the copyright holders. (85) This defense is essential to overcoming the exacting restrictions of copyright law and works in tandem with the public domain. (86)

E. Warner Bros. v. X One X

Warner Bros. v. X One X addresses copyrights of visual depictions of public domain characters. (87) Warner Bros., the owners of the copyrighted movies The Wizard of Oz and Gone with the Wind and the short films "Tom and Jerry," sued Art & Vintage Entertainment Licensing Agency (AVELA), a company that specializes in the restoration and sale of iconic publicity materials, claiming copyright infringement of images from Warner Bros.' copyrighted films. (88) AVELA was in the business of "finding, buying, restoring, licensing, and selling publicity works." (89) In particular, AVELA hired artists to carefully restore public domain publicity materials, including vintage movie and theater posters, lobby display cards, and other advertising materials. (90) AVELA also used extracted images from the publicity materials for use on items such as lunch boxes and playing cards. In some cases, AVELA modified the images by adding a character's signature phrase or combined images extracted from various items of publicity material into a single product. (91)

The 1909 Copyright Act applied in this case because all of the visual depictions were created prior to 1976. (92) The district court granted a permanent injunction against AVELA's use of the film images for their products. (93) The issue on appeal became the copyrightability of visual depictions of literary characters within the public domain. (94)

1. The Copyrights and Works in Question

The Warner Bros. case focused primarily on three separate films, the first being The Wizard of Oz! (95) L. Frank Baum created and published the story The Wonderful Wizard of Oz in 1900. (96) MGM released the motion picture The Wizard of Oz, to which Warner Bros. Entertainment, Inc. had acquired the copyright through its subsidiary Turner Entertainment Company, on August 12, 1939. (97) The film became one of the most popular and successful films of all-time. (98) It features Judy Garland as "Dorothy," Ray Bolger as "the Scarecrow," Jack Haley as "the Tin Man," and Bert Lahr as "the Cowardly Lion." (99) Images of these actors as the film characters became iconic and instantly recognizable. (100)

The second film involved is Gone with the Wind. (101) Margaret Mitchell wrote the Pulitzer Prize-winning novel Gone with the Wind in 1936. (102) In 1939, MGM released the motion picture of the same title. (103) Starring Vivien Leigh as "Scarlett O'Hara" and Clark Gable as "Rhett Butler," the movie provided visual depictions of Mitchell's story of the fall of the Old South before and during the Civil War. (104) The film won eight Academy Awards, including Best Picture, and the American Film Institute placed Gone with the Wind at number four on its 1998 "Top 100" list. (105)

Thirdly, the Warner Bros. suit involved the animated "Tom and Jerry" films, (106) a series of animated, theatrical short films created by William Hanna and Joseph Barbera throughout 1940 and 1957 for MGM and its parent company, Loew's Inc. (107) Loew's changed into MGM in 1960 and eventually merged with Turner Entertainment Co. in 1986, which was itself wholly owned by Warner Bros. (108) This merger accorded Warner Bros. the copyrights to "Tom and Jerry." (109) In all, "Tom and Jerry" have appeared in at least 255 animated shorts and motion pictures. (110) These cartoons all depict the "Tom and Jerry" characters with an identifiable set of characteristics, such as Tom as a gray or bluegray cat, Jerry as a brown mouse, and the constant fighting and chasing between the two characters. (111)

Prior to the completion of the films The Wizard of Oz and Gone with the Wind, MGM distributed publicity materials featuring the actors as their respective characters to theaters and had these materials published in magazines and newspapers. (112) These materials included movie posters, lobby cards, still photographs, and press books. (113) The images in the materials did not come from film footage but, instead, were created independently by still photographers and artists before and during the films' productions. (114) Loew's Inc., MGM's parent company, distributed the publicity materials without heeding the copyright notice requirement of the 1909 Copyright Act. (115) Warner Bros., after asserting ownership of the registered copyrights to various "Tom and Jerry" short films, also distributed movie posters and lobby cards for these short films without the requisite notice, violating the 1909 Copyright Act. (116) This distribution proved to be a significant oversight by Warner Bros. in regards to the strength of their copyrights. (117)

2. The Suit

Warner Bros. initiated its suit on March 31, 2006, claiming that AVELA's licensing activities infringed Warner Bros.' copyrights of The Wizard of Oz, Gone with the Wind, and the "Tom and Jerry" cartoons. (118) In March 2008, both Warner Bros. and AVELA filed cross-motions for summary judgment on Warner Bros.' claims. (119) On March 20, 2009, the district court granted Warner Bros.' motion for summary judgment. (120) The district court did not address whether the publicity materials in question reached the public domain; Warner Bros. stated it would not assert copyrights on the unaltered publicity materials, which eliminated the need to resolve the public domain issue. (121)

Alternatively, the district court held "even if the images were extracted from public domain materials, AVELA's practice of modifying the extracted images for placement on retail products constituted infringement of the film copyrights." (122) On June 22, 2009, Warner Bros., in response to the order granting summary judgment, filed a motion for permanent injunction, which the court granted on March 4, 2010. (123) The injunction order "restrain[ed] AVELA from licensing or using images from the motion pictures and images of the characters therein and also from using the publicity materials in any manner that displays less than the full publicity material." (124) On April 1, 2010, AVELA filed its notice of appeal on the injunction order. (125)

3. Arguments on Appeal

In AVELA's appeal of the injunction, it argued that the district court erred in granting the summary judgment and subsequent injunctive relief as requested by Warner Bros. (126) AVELA claimed the publicity materials that it used were published in advance of the motion pictures, and such publicity materials were injected into the public domain when they lost copyright protection under the 1909 Copyright Act. (127) Additionally, AVELA claimed it used only the photos and images of characters from public domain materials, "which it is freely entitled to do," and that the images did not embody any character traits developed in the films that were not already in the public domain. (128)

Warner Bros. claimed the district court properly entered summary judgment in its favor, and that the court correctly held AVELA's licensing of the films' characters' images infringed on Warner Bros.' copyrights as a matter of law, regardless of the public domain status of the image sources. (129) Warner Bros.' primary contention was, while AVELA may have extracted the images from the public domain, its use of the images in new ways infringed the copyrights of the films. (130) Warner Bros. agreed with the district court in that the principal characters depicted in The Wizard of Oz, Gone with the Wind, and the "Tom and Jerry" short films are entitled to copyright protection, as each of these characters as portrayed in the films "delineate a specific character that is entitled to copyright protection." (131) Warner Bros. argued the films complete the characters with "far greater specificity and detail, than do the books on which they are based." (132)

4. Eighth Circuit Opinion

In its decision, the appellate court first acknowledged no inadequacies in the chain-of-title documents proving Warner Bros.' ownership of the copyrights for the films The Wizard of Oz, Gone with the Wind, and the "Tom and Jerry" cartoons. (133) To bring a copyright infringement claim, the plaintiff must prove ownership of a valid copyright. (134) As the court found no dispute on the copyright ownership, Warner Bros. had a valid claim. (135)

Secondly, varying from the district court, the Eighth Circuit determined its need to address the issue of whether or not the publicity materials used by AVELA had reached the public domain. (136) The court re-emphasized that since the works in question were created prior to January 1, 1978 (the effective date of the 1976 Copyright Act), the Copyright Act of 1909 governed. (137) Simply put, "the general rule under the 1909 Copyright Act is that a work published in the United States without the statutorily required copyright notice fell into the public domain, 'precluding forever any subsequent copyright protection for the published work.'" (138) Warner Bros. conceded the materials did not comply with the required notice, but argued that they were not injected into the public domain because "their distribution was a 'limited publication.'" (139) The court rejected this argument, holding that the materials did not constitute limited publication under the governing Eighth Circuit and a similar Ninth Circuit test. (140) Due to the nature of the publicity materials and the widespread distribution of the publicity images, the court reasoned that "Loew's intended to abandon the right to control reproduction, distribution, and sale of images in the publicity materials," and therefore the publicity materials for the three films fell within the public domain. (141)

The third and final issue the Eighth Circuit addressed, and that which this Note primarily analyzes, is whether AVELA appropriated original, copyrighted elements of the Warner Bros. copyrights, or only elements in the public domain. (142) The court relied on the Silverman and Pannonia Farms cases by reiterating that in derivative works, only the unique elements created outside of the public domain are eligible for copyright protection. (143) The court established the following framework for determining whether the images in the AVELA works are governed by the public domain or held under Warner Bros. copyrights: "(1) the apparent scope of the copyrights in the later works (here, the films), (2) the scope of the material dedicated to the public in the publicity materials, which correspondingly limits the scope of the film copyrights, and (3) the scope into which each of AVELA's images falls." (144)

In walking through each step of the framework, the court determined that because the publicity materials qualified as public domain, any faithful reproduction of said materials was not under copyright. (145) Therefore, the court lifted the injunctions on AVELA's legitimate use of the materials. (146) However, the most relevant portion of the opinion concerns the use of general visual depictions of the film characters. The court held:
   We agree with the district court's conclusion that Dorothy, Tin
   Man, Cowardly Lion, and Scarecrow from The Wizard of Oz, Scarlett
   O'Hara and Rhett Butler from Gone with the Wind, and Tom and Jerry
   each exhibit "consistent, widely identifiable traits" in the films
   that are sufficiently distinctive to merit character protection
   under the respective film copyrights.... Put more simply, there is
   no evidence that one would be able to visualize the distinctive
   details of, for example, Clark Gable's performance before watching
   the movie Gone with the Wind, even if one had read the book
   beforehand. 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. (147)


This ruling may cause some issues for Hollywood producers and is the primary portion this Note analyzes.

III. Analysis

The court in Warner Bros. determined that Warner Bros.' copyrights for The Wizard of Oz, Gone with the Wind, and the "Tom and Jerry" films "cover[] 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." (148) Despite the relatively clear-cut language of the opinion, this Part illustrates the potential problems arising from the Eighth Circuit's ruling. This Part also discusses the impact of this holding on public domain characters, the rule on depictions of literary public domain characters, and the effects of this holding on creativity in the area of motion pictures.

A. Visual Depictions of Literary Public Domain Characters

To establish a copyright infringement case, the plaintiff must demonstrate: (1) ownership of a valid copyright, and (2) that the defendant copied original elements of the plaintiff's copyrighted work. (149) To prove copying, the plaintiff must show: (1) "direct evidence of copying," or (2) that the defendant had access to the copyrighted material and there is a "substantial similarity" between the original work and the alleged infringing work. (150) As the parties in Warner Bros. did not dispute that AVELA had access, the issue became determining the public domain status of the copied elements. (151)

In determining the content and extent of the public domain, the Eighth Circuit seemed to decrease the copyright protection afforded to literary characters and increase protection given to visual depictions of those characters in motion pictures. (152) The court noted that because literary characters leave much to the imagination, creating visual representations of those characters does not necessarily infringe a copyright. (153) However, once a visual depiction of a character is formed, with speech, movement, and personality traits, a mere still image cannot inject the character into the public domain. (154) As the Second Circuit made evident in Silverman, once a character has entered the public domain, the copyright holder's power to prohibit unauthorized derivative works ends. (155) An individual may create a new work featuring a public domain character so long as he or she does not use any of the elements of that character still under copyright. (156) While the Eighth Circuit's holding seems to limit the impact and effect of literary copyrights, the court attempted to stipulate this was not the case in Warner Bros., as the character portrayals in the films rely upon elements beyond the descriptions in the books. (157) However, the Eighth Circuit did note that characters in movies seem to be the product of more creativity and are more copyrightable than those in literature. (158)

The court also emphasized that a character description in literature, no matter how detailed, still requires the imagination of the reader. (159) As noted in Gaiman v. McFarlane, even though the author provided a detailed description of Sam Spade in The Maltese Falcon, "one hardly knows what Sam Spade looked like. But everyone knows what Humphrey Bogart looked like." (160) This analysis seems to open the door to a limitation on the copyright of literary characters. (161)

At the very least, the court's ruling appears to ignore dicta in Silverman, which states, "[i]t is, of course, likely that the visual portrayal of the characters added something beyond the delineation contained in the public domain radio scripts, but surely not every visual aspect is protected"' (162) The Eighth Circuit's determination that all visual depictions--except for those injected into the public domain by the publicity materials--are copyrightable contrasts with this "limited copyright" idea from Silverman. (163) The Second Circuit's holding in Silverman seems to give a broader scope to the public domain, (164) while the Eighth Circuit in Warner Bros. appears to limit the public domain as much as possible. (165)

B. Consistency of Visual Depictions

In determining what elements of the publicity materials were public domain, the Eighth Circuit held that "individuals shown in the publicity materials establish 'characters' for copyright purposes only if they display 'consistent, widely identifiable' visual characteristics." (166) Seeing as Scarlett O'Hara and Rhett Butler are not depicted in consistent visual images, the court found the publicity images amounted to no more than "pictures of the actors in costume" and therefore did not inject all visual depictions of the characters into the public domain. (167) The court reasoned, if the publicity materials were sufficient to inject the characters into public domain, then "almost any image of [the actors] themselves would be sufficient to do so as well." (168)

In a footnote, (169) the Eighth Circuit sought to distinguish its reasoning regarding consistent depictions from that in Metro-Goldwyn-Mayer, Inc. v. American Honda Motor Co., Inc., (170) in which the California district court determined that, despite the variations in visual appearance, "James Bond is a copyrightable character." (171) The key difference between the two cases seems to be the number of films in which the characters appear. (172)

The court identified the James Bond character as the reason for watching the films, as "[a] James Bond film without James Bond is not a James Bond film." (173) The court identified James Bond as an independent character with his own unique traits despite the number of actors who have portrayed him on film. The court found that this distinction separated James Bond from once-portrayed characters such as in Gone with the Wind and The Wizard of Oz. (174) However, one could argue just as plausibly that Gone with the Wind without Vivien Leigh as Scarlett O'Hara and Clark Gable as Rhett Butler is not Gone with the Wind. (175)

C. Use of Public Domain Visual Depictions

In Warner Bros., the Eighth Circuit identified the narrow scope to which the public may use visual aspects of characters in the public domain. (176) First, it held that reproducing one image from public domain publicity material "as an identical twodimensional image" does not infringe on a copyright. (177) The court determined that simply reproducing an image does not add an "increment of expression" to a film character. (178) Adding any such expressions to a character would amount to creating a derivative work. (179) This view is similar to the holding in Silverman, which found that Silverman could use any elements of the "Amos 'n' Andy" that were in the public domain so long as he did not use copies of original expression still protected by copyright. (180)

Second, the court held that the public may not juxtapose an image extracted from the public domain with another image extracted from elsewhere within the public domain. (181) The Eighth Circuit found that creating such a new arrangement would add "a new increment of expression that evokes the film character in a way" that did not previously exist in the public domain. (182) In developing this category, the court relied on dicta from Silverman, emphasizing that if someone makes a new work from public domain materials, that work infringes copyright if the increments added to the public domain materials are themselves copyrighted. (183) Essentially, this category prohibits the public from expanding those limited elements that the court conceded entered the public domain through the publicity materials. (184) This ruling makes it clear that the actual "characters" from The Wizard of Oz, Gone with the Wind, and the "Tom and Jerry" films are still under copyright, while the mere images of the characters are not. (185)

The third and final category eliminates the public's ability to use the public domain two-dimensional images to create three-dimensional figurines. (186) The court reasoned that to alter a two-dimensional image to a three-dimensional figurine, one must use additional knowledge outside of the image--in this case, knowledge of the films. (187) Hence, using personal creativity with public domain images to create a new work adds a new increment of expression beyond the public domain and therefore constitutes infringement. (188) In barring any use of creativity with public domain characters, the court followed the basic criteria of Pannonia and Silverman, but at the same time limited the amount of creativity one may apply to classic characters. (189)

D. Effects on Creativity

The Eighth Circuit's decision in Warner Bros. appears to curb the availability of public domain characters for individual use in an attempt to protect the entertainment industry from dealing with hundreds of copyright licenses. (190) As stated earlier, the court seemed to limit how society may use public domain images, yet at the same time identified that not all elements of the characters are under copyright. (191) This confusion will likely create obstacles for production companies seeking to remake films based on classic literature. (192) Filmmakers will be required to distinguish what is a character and what is simply an actor in a costume. (193)

IV. Recommendation

The Eighth Circuit in Warner Bros. limited the scope and use of the public domain for production companies, which conflicted with other case law involving visual depictions of characters. (194) First, this Part addresses how movie studios and production companies should approach use of the public domain following Warner Bros. Second, this Part looks at the role of the courts in remedying conflicting case law.

A. Corporations Should Rely on Licenses Instead of the Public Domain

To comply with the Eighth Circuit's ruling in Warner Bros., any corporation seeking to profit from visual depictions of characters should obtain a license from the copyright holder. As the court in Warner Bros. specifically stated that "all visual depictions of the film characters at issue" are under copyright, (195) the only legal way to use such materials is to obtain permission. The slight public domain exception for the specified advertising materials (196) that entered the public domain due to corporation error does not do much to expand the public domain because the only legal use for the materials is the exact copying of the images. (197) There can be no subtracting from, adding to, or altering the images in any way, or the user will be subject to infringement charges. (198) Due to such strict limitations, corporations should continue to seek licenses for use of any and all characters that have been visually depicted and are still under copyright.

Not only should companies seeking to sell merchandise of visually depicted characters obtain licenses, but motion picture production studios that wish to create remakes of classic movies should also obtain licenses. Reinventing classic movies is not by any means a novel idea in the movie industry. However, the Warner Bros. decision limits the extent to which remakes can exist without licenses from the original developers. After Warner Bros., any filmmaker who wishes to remake a literary work, even if the novel exists in the public domain, must be careful not to use any character elements that first appeared in the original movie. (199) For instance, if a movie producer wants to reference ruby slippers while remaking The Wizard of Oz, he must obtain a license from Warner Bros., because the ruby slippers are part of a visual depiction of a character. (200)

However, the problem with licenses is the cost. The price of actual copyright licenses can be very high, (201) and the transaction costs add another level of financial barriers. (202) These high costs can hinder creativity.

Additionally, copyright owners may simply wait to grant a license to the highest bidder, which drives up the prices of the licenses. (203) Another problem is many of the costs of obtaining a license may be disproportionate relative to the copyrighted work. (204) The public domain gives artists the ability to access prior creative works without having to pay licensing or royalty fees and serves to further creativity once an author has been compensated for his or her work. By limiting the scope of public domain and granting copyright to all visual depictions, the Eighth Circuit acted contrary to the IP clause of the Constitution; instead of furthering creativity, it hindered it. (205) Therefore, while licensing seems to be the way to comply with the holding in Warner Bros., it is not the answer to promoting creativity.

Furthermore, authors of literary works should be aware that even the most detailed description of a character in their writing does not guarantee protection for the character. (206) In Warner Bros., the court relied on the Seventh Circuit's opinion in Gaiman and applied the notion that even the most detailed written descriptions of characters leave much to the imagination and therefore are not as copyrightable as visual depictions. (207) As a result, authors should seek further protection for their characters when granting licenses to production companies to create a derivative work.

B. The Supreme Court Should Clarify the Copyrightability of Visual Depictions

The Eighth Circuit's holding in Warner Bros.--that all visual depictions of characters are copyrightable--conflicts with the Second Circuit's idea in Silverman that not every visual aspect of a character is protected. (208) Due to this conflict, the U.S. Supreme Court should address the issue. Moreover, the status, weight, and applicability of Warner Bros. remain unclear, as many movie studios and production companies exist outside of the Eighth Circuit.

If the Supreme Court hears a case on the copyrightability of visual depictions, it should uphold the limited rights of Silverman and reject the exclusive holding of Warner Bros. By applying the limited-scope copyright, in which not every visual aspect of a creative work is protected, the Court would leave wiggle-room in the area of public domain that would further the amount of creativity left open to the public. By adopting such strict standards in Warner Bros., the Eighth Circuit left very little room and few avenues for use of visual depictions without obtaining a license. Copyright law originally granted very limited rights to copyright owners to balance use with incentives to create. (209) The grant of such exclusive rights counters this fundamental aspect.

Another option for the Court is to outline if and how people can use visual depictions under the fair use doctrine. Because fair use is a primary defense to infringement, (210) determining whether fair use can apply to visual depictions would clarify whether a studio may borrow small details from classic movies to create remakes without obtaining expensive licenses. If the Court were to adopt a stricter interpretation of visual copyright, fair use would create a loophole for artists that could further what would otherwise be limited creativity. For example, the courts have determined fair use includes copying in special circumstances, such as using VCRs for time-shifting, (211) and creating works that are not simply copies but transform the work in some way, such as translations and parodies. (212)

The courts have many elements of visual-depiction copyright left to clarify. Until the courts create a more unified idea of what can and cannot be used without obtaining expensive licenses, there will continue to be discrepancies as to ownership rights and what exists in the public domain. The public domain is a powerful creative tool and the courts must define its extent to further the creativity and ingenuity of society.

V. Conclusion

The copyrightability of visual depictions remains an incredibly vague area of law. Copyright law in the United States has undergone continuous changes since its creation in the Constitution, and the law will certainly continue to evolve pursuant to new technologies and the needs of creativity. Therefore, it is important that the courts emphasize clarity in defining the barriers of the law and take care to balance the interests of the creator and the consumer to promote the progress of art, as the Founders originally intended.

(1.) See Warner Bros. Entm't, Inc. v. X One X Prods., 6 44 F.3d 584, 589 (8th Cir. 2011) (ruling on publicity materials based on copyrighted motion pictures).

(2.) Id.

(3.) See id. at 589-90 (discussing "publicity materials" based on motion pictures).

(4.) 18 C.J.S. Copyrights [section] 1 (2011).

(5.) See U.S. Const. art. I, [section] 8, cl. 8 (establishing copyright law with the rest of the United States government in 1789).

(6.) Id.

(7.) Copyright Act of 1790, 1st Cong. ch. 15, 1 Stat. 124 (1790).

(8.) Id.

(9.) Id.

(10.) Id.

(11.) Id.

(12.) MeasuringWorth.com, http://www.measuringworth.com/uscompare/ (last visited Dec. 29, 2012).

(13.) See Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 430-31 (1984) (discussing the need of copyright law to develop quickly in response to "significant changes in technology").

(14.) Copyright Act of 1802, 7th Cong. ch. 36, 2 Stat. 171 (1802); A Brief Introduction and History, U.S. Copyright Off., http://www.copyright.gov/circs/circ1a.html (last visited Dec. 29, 2012).

(15.) Copyright Act of 1831, ch. 16, [section][section] 1-2, 4 Stat. 436 (1831); A Brief Introduction and History, supra note 14.

(16.) Copyright Act of 1831, ch. 16, [section][section] 1-2.

(17.) A Brief Introduction and History, supra note 14.

(18.) Copyright Act of 1870, ch. 230, [section][section] 86, 101, 16 Stat. 198 (1870); A Brief Introduction and History, supra note 14; Diane Leenheer Zimmerman, The Statute of Anne and Its Progeny: Variations Without a Theme, 47 Hous. L. Rev. 965, 995 (2010).

(19.) Copyright Act of 1909, 35 Stat. 1075 (1909).

(20.) Id.

(21.) Id. The general rule under the 1909 Act is that a work must bear a valid copyright notice upon publication in order to secure copyright protection in the United States.... [A] publication of a work in the United States without the statutory notice of copyright fell into the public domain. Twin Books Corp. v. Walt Disney Co., 83 F.3d 1162, 1165-66 (9th Cir. 1996).

(22.) See A Brief Introduction and History, supra note 14 (identifying the various categories added to copyright law protection).

(23.) Id.

(24.) Copyright Act of 1976, Pub. L. No. 94-553, 90 Stat. 2541 (codified as amended at 17 U.S.C. [section] 302(a) (2006)); Zimmerman, supra note 18, at 997.

(25.) A Brief Introduction and History, supra note 14.

(26.) See 17 U.S.C. [section] 302(a) (2006) (extending the copyright term to 70 years); see infra note 28 and accompanying text (emphasizing the increase in length of a valid copyright).

(27.) Sonny Bono Copyright Term Extension Act, Pub. L. No. 105-298, 112 Stat. 2827 (1998).

(28.) "Copyright in a work created on or after January 1, 1978, subsists from its creation and, except as provided by the following subsections, endures for a term consisting of the life of the author and 70 years after the author's death." 17 U.S.C. [section] 302(a).

(29.) Id.

(30.) Zimmerman, supra note 18, at 997.

(31.) See The Digital Millennium Copyright Act of1998: U.S. Copyright Office Summary, U.S. Copyright Off. (Dec. 1998), http://www.copyright.gov/legislation/dmca.pdf (outlining the different areas of technology now covered by U.S. copyright law).

(32.) Id.

(33.) The Digital Millennium Act, UCLA Online Inst. for Cyberspace L. & Pol'y (Feb. 8, 2001), legacy.gseis.ucla.edu/iclp/dmca1.htm.

(34.) Digital Millennium Copyright Act of 1998, Pub. L. No. 105-304, [section] 1332, 112 Stat. 2860 (codified as amended in scattered sections of 17 U.S.C.).

(35.) See generally The Digital Millennium Act, supra note 33 (summarizing the general provisions of the DMCA).

(36.) See generally Warner Bros. Entm't, Inc. v. X One X Prods., 644 F.3d 584 (8th Cir. 2011) (considering the public domain status of The Wizard of Oz, Gone with the Wind, and "Tom and Jerry"); Silverman v. CBS Inc., 870 F.2d 40 (2d Cir. 1989) (disputing the copyright status of "Amos 'n' Andy" characters); Pannonia Farms, Inc. v. USA Cable, No. 03 Civ. 7841, 2004 WL 1276842 (S.D.N.Y. June 8, 2004) (challenging the copyright status of Sherlock Holmes and Doctor Watson).

(37.) 17 U.S.C. [section] 101 (2011).

(38.) Id. [section] 106.

(39.) See 1 Melville B. Nimmer on Copyright [section] 3.04 (1979) (citing Russell v. Price, 612 F.2d 1123, 1128 (1979)).

(40.) See Anderson v. Stallone, No. 87-0592, 1989 WL 206431, at *8 (C.D. Cal. Apr. 25, 1989) (determining whether a script of Rocky IV written by a third party amounted to an unauthorized derivative work).

(41.) Id.

(42.) Id. at *1.

(43.) Id.

(44.) Id. at *2.

(45.) See Black's Law Dictionary 1349 (9th ed. 2009). Black's Law defines "public domain" as
   [t]he universe of inventions and creative works that are not
   protected by intellectual-property rights and are therefore
   available for anyone to use without charge. When copyright,
   trademark, patent, or trade-secret rights are lost or expire, the
   intellectual property they had protected becomes part of the public
   domain and can be appropriated by anyone without liability for
   infringement.


Id.

(46.) See Stephen FiSHMAN, The Public Domain: How to Find & Use Copyright-Free Writings, Music, Art & More 5 (5th ed. 2010) (outlining the basic characteristics of the public domain and copyright law).

(47.) Id.

(48.) Assessment Techs. of WI, LLC, v. WireData, Inc., 350 F.3d 640, 643 (7th Cir. 2003).

(49.) See cases cited supra note 36 (noting litigation regarding the copyright public domain status of different visual depictions).

(50.) See infra note 202 and accompanying text (examining the cost-effectiveness of licensing agreements).

(51.) Silverman v. CBS Inc., 870 F.2d 40, 42 (2d Cir. 1989) [hereinafter Silverman II].

(52.) Id.

(53.) Id.

(54.) Id.

(55.) Id. at 43.

(56.) Silverman II, 870 F.2d at 43.

(57.) Silverman v. CBS Inc., 632 F. Supp. 1344, 1348 (S.D.N.Y. 1986) [hereinafter Silverman I].

(58.) Silverman II, 870 F.2d at 43.

(59.) Id. at 49-50.

(60.) Id.

(61.) Id.

(62.) Id. at 50.

(63.) Silverman II, 870 F.2d at 50 (emphasis added).

(64.) See Francis M. Nevins, Jr., Copyright + Character = Catastrophe, 39 J. Copyright Soc'y U.S.A. 303, 338-39 (1992) (analyzing SilvermanII's impact on character portrayals).

(65.) Id.

(66.) Pannonia Farms v. USA Cable, No. 03 Civ. 7841, 2004 WL 1276842, at *1 (S.D.N.Y. June 8, 2004).

(67.) Id.

(68.) Id.

(69.) Id.

(70.) Id. at *7.

(71.) Pannonia Farms, 2004 WL 1276842 at *9.

(72.) Id.

(73.) See id. at *8-9 n.17 (identifying only nine of Doyle's Sherlock Holmes stories as copyrighted, and therefore placing the previous 50 works under public domain and thus available to USA Cable).

(74.) Id. at *9 (citing Filmvideo Releasing Corp. v. Hastings, 668 F.2d 91, 92 (2d Cir. 1981)).

(75.) 17 U.S.C. [section] 107 (2006).

(76.) 18 Am. Jur. 2d Copyright and Literary Property [section] 78 (2010).

(77.) Folsom v. Marsh, 9 F. Cas. 342, 345 (C.C.D. Mass. 1841) (No. 4901).

(78.) Id.

(79.) Christina Bohannan, Copyright Harm, Foreseeability, and Fair Use, 85 Wash. U. L. Rev. 969, 975 (2007).

(80.) Id. at 976.

(81.) Id.

(82.) Folsom, 9 F. Cas. at 349.

(83.) Bohannan, supra note 79, at 976.

(84.) 17 U.S.C. [section] 107 (2006).

(85.) 18 Am. Jur. 2d, supra note 76.

(86.) See generally John R. Therien, Exorcising the Specter of a "Pay-Per-Use" Society: Toward Preserving Fair Use and the Public Domain in the Digital Age, 16 Berkeley Tech. L.J. 979 (2001) (discussing the importance of preserving fair use and the public domain in copyright law).

(87.) See Warner Bros. Entm't v. X One X Prods., 644 F.3d 584, 589 (8th Cir. 2011) (evaluating whether the use of visual depictions of characters from copyrighted films in publicity materials constitutes copyright infringement).

(88.) Id. at 590.

(89.) Brief for Appellant at 7, Warner Bros. Entm't v. X One X Prods., 644 F.3d 584 (8th Cir. 2011) (No.

10-1743).

(90.) Id.

(91.) Id.

(92.) See id. at 17-18 (explaining the relevance and application of the 1909 Copyright Act).

(93.) Warner Bros., 644 F.3d at 590.

(94.) Id. at 590, 596-97.

(95.) Id. at 589.

(96.) Id.

(97.) Brief for Appellee at 3, Warner Bros. Entm't v. X One X Prods., 644 F.3d 584 (8th Cir. 2011) (No. 10-1743).

(98.) Id. at 4.

(99.) Id.

(100.) Id.

(101.) Warner Bros., 644 F.3d at 589.

(102.) Brief for Appellant, supra note 89, at 5.

(103.) Id. at 5.

(104.) Brief for Appellee, supra note 97, at 10-11.

(105.) Id. at 11.

(106.) Warner Bros., 644 F.3d at 589.

(107.) Brief for Appellee, supra note 97, at 13.

(108.) Id. at 6.

(109.) Id.

(110.) Id. at 14.

(111.) Id.

(112.) Warner Bros. Entm't v. X One X Prods., 644 F.3d 584, 589 (8th Cir. 2011).

(113.) Id.

(114.) Id.

(115.) Id.; see also Twin Books Corp. v. Walt Disney, Co., 83 F.3d 1162, 1165-66 (9th Cir. 1996) (noting that Section 19 of the 1909 Copyright Act had certain notice requirements, by which the [C] symbol originated).

(116.) Warner Bros., 644 F.3d at 589.

(117.) See id. at 593 (noting that failure to follow the notice requirement invalidated the copyright).

(118.) Brief for Appellee, supra note 97, at 22; Brief for Appellant, supra note 89, at 2.

(119.) Brief for Appellant, supra note 89, at 4.

(120.) Id.; Brief for Appellee, supra note 97, at 22-23.

(121.) Warner Bros., 644 F.3d at 590.

(122.) Id.

(123.) Brief for Appellant, supra note 89, at 12; Brief for Appellee, supra note 97, at 25.

(124.) Brief for Appellant, supra note 89, at 12-13; see also Brief for Appellee, supra note 97, at 25 (enjoining AVELA from licensing or using images from the motion pictures or characters).

(125.) Brief for Appellant, supra note 89, at 13.

(126.) Id. at 15.

(127.) Id.

(128.) Id.

(129.) Brief for Appellee, supra note 97, at 26.

(130.) Warner Bros. Entm't v. X One X Prods., 644 F.3d 584, 596 (8th Cir. 2011).

(131.) Brief for Appellee, supra note 97, at 29. Warner Bros. relies on the following cases: Halicki Films, LLC v. Sanderson Sales and Mktg., 547 F.3d 1213, 1224 (9th Cir. 2008) (holding that "Eleanor," a yellow 1971 Fastback Ford Mustang featured in the motion picture Gone in Sixty Seconds, may be entitled to copyright protection); Metro-Goldwyn-Mayer, Inc. v. Am. Honda Motor Co., 900 F. Supp. 1287, 1296-97 (C.D. Cal. 1995) (recognizing the character of James Bond, as portrayed in films, is protected through copyright); Ideal Toy Corp. v. Kenner Prods. Div. of Gen. Mills Fun Grp., Inc., 443 F. Supp. 291, 301-02 (S.D.N.Y. 1977) (acknowledging the copyright protection of Star Wars characters). Brief for Appellee, supra note 97, at 28.

(132.) Brief for Appellee, supra note 97, at 31.

(133.) Warner Bros., 644 F.3d at 591-92.

(134.) Id. at 591 (citing Taylor Corp. v. Four Seasons Greetings, LLC, 403 F.3d 958, 962 (8th Cir. 2005)).

(135.) See id. at 592 (stating that because a chain of title has been established, the court may proceed to determine further issues).

(136.) Id.

(137.) Id.

(138.) Warner Bros., 644 F.3d at 593 (citing Twin Books Corp. v. Walt Disney Co., 83 F.3d 1162, 1165-66 (9th Cir. 1996)).

(139.) Id. at 593.

(140.) Id. at 595. The Eighth Circuit defines a publication as general "if the rights-holder demonstrated an express or implied intent to abandon his right to control distribution and reproduction of his work, as determined objectively from 'the implications of his outward actions to the reasonable outsider.'" Id. at 593 (citing Nucor Corp. v. Tenn. Forging Steel Serv., Inc., 476 F.2d 386, 390 n.7 (8th Cir. 1973)). The framework developed by the Ninth Circuit identifies a limited publication as "a distribution (1) to a definitely selected class of persons, (2) for a limited purpose, (3) without the right of reproduction, distribution, or sale." Id. at 593 (citing White v. Kimmell, 193 F.2d 744, 746-47 (9th Cir. 1952)).

(141.) Warner Bros., 644 F.3d at 595.

(142.) Id. at 596.

(143.) See id. at 596-97 (applying the rulings of Silverman v. CBS Inc. and Pannonia Farms, Inc. v. USA Cable).

(144.) Id. at 597.

(145.) Id. at 604; Eriq Gardner, Warner Bros. Wins Key Legal Ruling Impacting All 'Wizard of Oz' Remakes, Hollywood Rep. (July 6, 2011), http://www.hollywoodreporter.com/thr-esq/warner-bros-wins-key-legal 208255.

(146.) Warner Bros., 644 F.3d at 604.

(147.) Gardner, supra note 145 (emphasis added) (quoting Warner Bros., 644 F.3d at 597, 598).

(148.) Warner Bros., 644 F.3d at 598. However, the only use of the visual character depictions that does not constitute copyright infringement is the reproduction of any two dimensional image without supplementing with any other images or words. Id. at 602-04.

(149.) Id. at 595 (citing Taylor Corp. v. Four Seasons Greetings, LLC, 403 F.3d 958, 962-63 (8th Cir. 2005)).

(150.) Id. at 595.

(151.) Id. at 596.

(152.) Warner Bros., 644 F.3d at 597-98.

(153.) Id.; see also Walt Disney Prods. v. Air Pirates, 581 F.2d 751, 755 (9th Cir. 1978) (citing Warner Bros. Pictures v. Columbia Broad. Sys., 216 F.2d 945, 950 (9th Cir. 1954)) (noting that characters are "merely vehicles for the story and did not 'really constitute' the story being told").

(154.) See Gaiman v. McFarlane, 360 F.3d 644, 661 (7th Cir. 2004) (stating that a character becomes "sufficiently distinctive to be copyrightable" only once he or she is drawn, named, and given speech).

(155.) See supra notes 47-48 and accompanying text (identifying the copyright rights revoked by public domain status).

(156.) See Silverman v. CBS Inc., 870 F.2d 40, 49 (2d Cir. 1989) ("Thus, the CBS copyrights in the post 1948 radio scripts programs, and whatever rights it may have in the television scripts and programs ... provide protection only for the increments of expression beyond what is contained in the pre-1948 radio scripts, which are in the public domain.").

(157.) Warner Bros., 644 F.3d at 598.

(158.) See id. (explaining that although AVELA accurately pointed out that Warner Bros.' copyrights are limited to the increments of character expression in the films and not the books, "this has little practical effect in the instant case, as a book's description of a character generally anticipates very little of the expression of the character in film").

(159.) See id at 597 (noting that a book's description of a character "anticipates very little expression of the character in film").

(160.) See Gaiman v. McFarlane, 360 F.3d 644, 660-61 (7th Cir. 2004) (comparing the literary description of Sam Spade with Humphrey Bogart's interpretation of the character in the 1941 film).

(161.) Id. In Warner Bros. Pictures, Inc. v. Columbia Broad. Sys. Inc., the Ninth Circuit refused to copyright the character Sam Spade. 216 F.2d 945, 950 (9th Cir. 1954). According to the Seventh Circuit in Gaiman, the Columbia ruling has been overturned by subsequent cases: Olson v. Nat'l Broad. Co., 855 F.2d 1124 (9th Cir. 1988) and Walt Disney Prods. v. Air Pirates, 581 F.2d 751 (9th Cir. 1978). However, no dicta or holding in these cases explicitly overturns Columbia. These contrasting holdings could raise future questions as to Columbia's validity.

(162.) Silverman v. CBS Inc., 870 F.2d 40, 50 (2d Cir. 1989) (emphasis added).

(163.) Id.

(164.) See id. ("For example, the fact that the characters are visibly Black does not bar Silverman from placing Black "Amos 'n' Andy" characters in his musical, since the race of the characters was a feature fully delineated in the public domain scripts.").

(165.) See Warner Bros. v. X One X Prods., 644 F.3d 584, 599 (8th Cir. 2011) (pointing out that the publicity materials "could have injected" only the physical features of the characters and not any underlying character traits).

(166.) Id.

(167.) Id. at 601.

(168.) Id.

(169.) Id. at 599 n.8.

(170.) Metro-Goldwyn-Mayer, Inc. v. Am. Honda Motor Co., Inc., 900 F. Supp. 1287 (C.D. Cal. 1995).

(171.) Id. at 1296.

(172.) Id. (explaining that even though James Bond has been portrayed by several different actors, the character has certain traits that have been developed over time via the 16 films which had been released at that point). Contra Warner Bros., 644 F.3d at 599-600 (noting that the lack of consistent visual characteristics limits the public domain to only those few images released in the publicity materials).

(173.) Metro-Goldwyn-Mayer, 900 F. Supp. at 1296.

(174.) See Warner Bros. , 644 F.3d at 599 n.8 (specifying that "distinctive qualities apart from visual appearance can diminish or even negate the need for consistent visual appearance").

(175.) See supra notes 104-05 and accompanying text (identifying the success and numerous awards won by the film and actors in their portrayals, giving the film and characters their own prestige). It is important to note Vivien Leigh received numerous awards for her portrayal of Scarlett O'Hara, including the 1939 Academy Award for Best Actress. Gone with the Wind (1939), N.Y. Times, http://movies.nytimes.com/movie/ 20278/Gone-With-the-Wind/details (last visited Dec. 30, 2012). Clark Gable was nominated for the Academy Award for Best Actor for his portrayal of Rhett Butler. Id.

(176.) Warner Bros., 644 F.3d at 602-04.

(177.) Id. at 602.

(178.) Id.

(179.) See supra notes 37-39 and accompanying text (explaining that adding elements to a preexisting work constitutes a derivative work and the copyright holder has the exclusive right to create derivative works).

(180.) Silverman v. CBS Inc., 870 F.2d 40, 50 (2d Cir. 1989).

(181.) Warner Bros., 644 F.3d at 602-03.

(182.) Id.

(183.) Id. at 603 (citing Silverman, 870 F.2d at 50).

(184.) See id. ("Accordingly, products combining extracts from the public domain materials in a new arrangement infringe the copyright in the corresponding film.").

(185.) See id at 600-01 (stating that the only images in the public domain for the "Tom and Jerry" cartoons, Gone with the Wind, and The Wizard of Oz are those precise images in the publicity materials).

(186.) Warner Bros., 644 F.3d at 603-04.

(187.) See id. at 604 ("The only reasonable inference is that the details added to establish perspective and full realization were chosen to be consistent with the film characters.").

(188.) See id at 603 (noting that judging the size of someone's nose from a specific angle is impossible to do without using one's one creativity and innovation).

(189.) See Silverman v. CBS Inc., 870 F.2d 40, 50 (2d Cir. 1989) (noting that Silverman may use any public domain material from the pre-1948 scripts without reservations). Contra Warner Bros., 644 F.3d at 600-03 (identifying specific limitations on the legal use of public domain materials, such as allowing an individual to only copy and paste an image and not manipulate it).

(190.) See Warner Bros., 644 F.3d at 601 ("If the publicity material images for The Wizard of Oz were held to establish the visual elements of copyrightable characters, their scope would encompass almost any character who wears a scarecrow or lion costume ... creating an unacceptable result.").

(191.) See supra note 189 and accompanying text (identifying the contradictory nature of the court's ruling).

(192.) See Gardner, supra note 145 ("Any filmmaker that wants to create a new version of a literary work-[sic] even one in the public domain--needs to be careful not to use copyrightable elements of characters that first appear in protected motion picture versions of the works.").

(193.) See Warner Bros., 644 F.3d at 600-01 (stating that the images of Vivien Leigh and Clark Gable as Scarlett O'Hara and Rhett Butler in the publicity materials were merely pictures of actors in costume, and therefore did not inject visual depictions of the characters into the public domain).

(194.) See supra Part III.A (analyzing the impact of Warner Bros. on the scope of public domain characters).

(195.) Warner Bros., 644 F.3d at 597-98.

(196.) Id.

(197.) Id. at 602-04.

(198.) See supra Part III.C (identifying how a public domain character may be used without committing infringement); see also Warner Bros., 644 F.3d at 602 (finding that exactly copying a portion of the advertising materials did not infringe on the copyright).

(199.) See Gardner, supra note 145 (quoting Aaron Moss, chair of litigation at Greenberg Glusker).

(200.) See id. (noting that at the time the article was written, there were nine Wizard of Oz projects in development). Interestingly, in the public domain novel, Dorothy's slippers were silver. L. Frank Baum, The Wonderful Wizard of Oz (Harper Collins ed., 2000) (1900).

(201.) See Katie Dean, Cash Rescues Eyes on the Prize, Wired (Aug. 30, 2005), www.wired.com/ entertainment/music/news/2005/08/68664 (noting that the re-licensing and post-production costs for the documentary Eyes on the Prize, a 14-part series chronicling the history of the civil rights movement in America, amounted to $850,000).

(202.) See Edward Lee, Warming up to User-Generated Content, 2008 U. Ill. L. Rev. 1459, 1461 (2008) ("[H]igh transaction costs often make licenses cost-prohibitive or ineffective."); see also Richard A. Posner, Transactional Costs and Antitrust Concerns in the Licensing of Intellectual Property, 4 J. Marshall Rev. Intell. Prop. L. 325, 326 (2005) ("A high ratio of licensing cost to the value of the license means that copyright licensing costs will often be a formidable barrier to a value-maximizing transaction.").

(203.) Jeffrey W. Natke, Collapsing Copyright Divisibility: A Proposal for Situational or Medium Specific Indivisibility, 2007 Mich. St. L. Rev. 483, 502 (2007).

(204.) See Posner, supra note 202 (noting that works first published between 1923 and 1977 would currently be in the public domain if not for the Sonny Bono Copyright Term Extension Act, which extended the copyright terms of these works until the end of 2018 at the earliest, and 2072 at the latest).

(205.) See Wendy J. Gordon, Fair Use Markets: On Weighing Potential Licensing Fees, 79 Geo. Wash. L. Rev. 1814, 1815 (2011) (arguing that the public domain is a source of new creativity).

(206.) See Gaiman v. McFarlane, 360 F.3d 644, 660-61 (7th Cir. 2004) (noting that even the most detailed description of a character does not necessarily grant it copyrightability).

(207.) See supra notes 154-60 and accompanying text (comparing Warner Bros. to Gaiman).

(208.) See supra notes 155-57 and accompanying text (contrasting Warner Bros. and Silverman).

(209.) Bohannan, supra note 79, at 970.

(210.) See id. ("The fair use doctrine is arguably the most important doctrine for striking this balance with regard to uses of copyrighted expression.").

(211.) Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 449-56 (1984).

(212.) Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 580 (1994).

Leslie Aboud *

* J.D. Candidate, University of Iowa College of Law, 2013; B.A., University of Northern Iowa, 2010. I would like to thank the student writers and editors of Volumes 37 and 38 of the Journal of Corporation Law for their work on this Note. Additionally, I would like to thank Professor Herbert Hovenkamp for his guidance on selecting this topic. Lastly, I would like to thank my parents and former teachers for their numerous hours of reading, editing, and commenting on countless drafts of various essays, papers, and theses in order to push me to my full writing potential.
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Author:Aboud, Leslie
Publication:The Journal of Corporation Law
Date:Jan 1, 2013
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