This August will mark the 75th anniversary of the release of the classic film The Wizard of Oz. As Warner Bros. celebrates the iconic status acquired by the film and its characters during the past seven-plus decades, the studio will likely also be rejoicing over a recent victory concerning the intellectual property rights in images of the characters from the film.
In the early 2000’s, Dave Grossman Creations, Inc. (DGCI) and others began acquiring restored versions of old posters and lobby cards (smaller versions of the posters) from The Wizard of Oz, Gone with the Wind, and other properties. Without Warner Bros.’s authorization, DGCI extracted images of the films’ characters from the posters and used them on shirts, action figures, lunch boxes and various other products.
Warner Bros.’s Copyright Claim
Warner Bros. brought suit in 2006 in the Eastern District of Missouri, alleging that the defendants’ use of the extracted images constituted both copyright and trademark infringement. In 2009, in a ruling that was later affirmed by the Eighth Circuit, the District Court granted summary judgment for Warner Bros. on its copyright claims. Although the posters themselves were in the public domain (because they had been published without complying with the notice requirements of the 1909 Copyright Act), the films from which many of the poster images derived were still under copyright. Thus, images of the films’ characters, even though they appeared on the public domain posters, may still be subject to copyright protection.
Warner Bros.’s Trademark Claim
However, as to its trademark claims, the Court found that the Warner Bros. registered trademarks — which included the titles of the films, the names of the characters, and certain phrases such as THERE’S NO PLACE LIKE HOME — were insufficient to establish that Warner Bros. was also entitled to trademark protection for the images of characters that had been used on the defendants’ merchandise. Moreover, the Court held that Warner Bros. could not rely on the films’ widespread fame to show that they deserved common law trademark protection, especially given that so many reproductions of the characters were available from other sources. More evidence was required.
Almost five years later, in March of 2014, Warner Bros. was finally able to overcome this evidentiary hurdle by setting forth in great detail the different ways in which Warner Bros. and its predecessors (notably, MGM) had licensed characters from the films as trademarks for incorporation on different consumer goods. The Court found that this evidence provided sufficient documentation of the company’s ownership of valid and protectable trademarks. Notably, however, the Court held that Warner Bros.’s trademark rights are limited to elements that appeared “solely” in the films, and do not extend to elements from the L. Frank Baum book, The Wonderful Wizard of Oz, or other original source material.
Despite Warner Bros.’s ultimate victory, the case has shown that it can be a rocky (yellow brick) road to obtaining trademark protection for film characters — even for characters as famous as Dorothy and Toto. The parties to the action are still sparring over the nature and scope of the injunction and a pending motion for attorneys’ fees.