Nishant Bora
Jul 23, 2011

‘Gone with the Wind’ et al- unswayed by the wind of time!

Are you free to use, depict, employ your favourite characters from ‘Gone with the Wind’, ‘Tom and Jerry’, ‘Wizard of Oz’, etc. over any items you use without infringing the copyrights in them? Were you thinking that characters which have fallen into public domain have lived their share of monopoly time? Re-think before you nod to say ‘yes’.

  What does ‘falling into public domain’ mean?

  The phrase depicts end of the term of copyright, i.e. the concerned ‘work’ no longer   enjoys protection under the Intellectual Property Law either because the term of right has expired (in most cases), or has been forfeited.

  Or this is what we thought until the Eight Circuit Court in U.S. had its own opinion about copyright in few characters of the movies ‘Gone with the Wind’, ‘Tom and Jerry’ and ‘Wizard of Oz’.

  The case recently before the Court was Warner Bros. Entertainment, Inc. vs. X One X Productions. AVELA, a merchandising company, was using public domain images of characters from popular films and cartoons, such as ‘Gone with the Wind’, ‘Tom and Jerry’ and ‘Wizard of Oz’. The images were taken from movie posters, lobby cards and applied on shirts, lunch boxes, playing cards, etc. Warner Bros. who is the current copyright holder in the films claimed copyright infringement. AVELA won the right to use some characters, but not the Warner Bros. version of The Wizard of Oz characters.



The court divided the used images into three categories:

(a) products that reproduce an identical image of publicity material;

(b) products that juxtapose an image of the publicity material with another image extracted from the somewhere else (such as a phrase from the movie or book);

(c) and three-dimensional products that have been made from the publicity material images.

For this, the Court held that:

  1. Merely printing a public domain image on a new type of surface (such as a T-shirt or playing card), instead of the original surface (movie poster paper or lobby card paper), did not add an increment of expression of the film character to the image;
  2. The above principle would not apply if the new surface itself is independently evocative of the film character.  For example, reproducing a publicity image of Judy Garland as Dorothy on a ruby slipper might well infringe the film copyright for The Wizard of Oz. Even if it is assumed that each composite work is composed entirely  of faithful extracts from public domain materials, the new arrangement of the extracts in the composite work is a new increment of expression that evokes the film character in a way the individual items of public domain material did not. 
  3. Where the product extended a single two-dimensional public domain image into three dimensions, the three-dimensional rendering added new visual details regarding depth to the underlying two-dimensional image. The addition of visual details to each two-dimensional public domain image to create the three-dimensional product made impermissible use of the “further delineation” characters contained in the film.

Therefore, individual characters like Dorothy, Tin Man, Cowardly Lion, and Scarecrow though are free to be used, but caution is to exercised to not to make them look (dress) like they’re straight out of the movies from which they hailed their names and became famous.

In other words, you'll probably have to be another wizard to be able to do that!