Somewhere over the Public Domain-bow
Somewhere over the Public Domain-bow
Somewhere over the Public Domain-bow

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    Dorothy and Toto aren’t in Kansas anymore; and if by “Kansas” you mean “the public domain,” you may be right.

    Earlier this month, the Eighth Circuit Court of Appeals drastically hemmed in the scope of the public domain by restricting the use of materials related to copyrighted works. The decision in Warner Bros. Entertainment, Inc. v. X One X Productions wades deep into the muck to make some truly unsettling assertions about the public domain, popular characters, and the scope of copyright. 

    What happened?

    Prior to 1972, creators who wanted their works to be protected by copyright had to register them with the Copyright Office. Although the film version of The Wizard of Oz was registered at its 1939 release, many of its promotional materials were not. As a result, an enormous body of posters, set photographs, and publicity flyers for the movie entered directly into the public domain. 

    Seventy years after The Wizard of Oz debuted in theatres, AVELA, a company which produces vintage-themed paraphernalia, acquired copies of these public domain pictures. AVELA took the images (along with similar materials from the release of Gone with the Wind and the Tom and Jerry short Puss Gets the Boot), cleaned them up, and began displaying them on a wide variety of merchandise, including tee-shirts, playing cards, and snow globes. 

    Warner Brothers got wind of what was going on and sued AVELA, alleging that the use of public domain works somehow infringed on Warner Brothers’ copyright in the film. AVELA countered that because the images were in the public domain, no one – not even the film’s rights holder – could legally restrict how they were used. A district court judge, siding with Warner Brothers, ordered AVELA to stop producing all merchandise containing images from the three films. AVELA appealed the injunction, and public domain got its day in court. 

    What did the Eighth Circuit’s decision say?

    A film’s copyright protects more than its sequence of frames; a substantial body of case law holds that it also covers the film’s characters “to the extent that such characters are sufficiently distinctive.” The “sufficiently distinctive” language ensures that copyright doesn’t protect general archetypes (such as the swaggering pirate), but does protect complete characters (such as Captain Jack Sparrow). As a result, the Eighth Circuit decided that Warner Brothers’ copyright in the film version of The Wizard of Oz “reached back” to cover the “look” of the characters as they appeared in the public domain photos. 

    But, you may (rightly) object, that makes no sense. How can a photograph be in the public domain, but the “look” of its contents still be copyrighted? If not the content of the photographs, what (if anything) was in the public domain?

    The Court acknowledged, over Warner Brothers’ objections, that the images themselves were in the public domain, and could be reproduced faithfully without infringing any existing copyright. It also went one baby step further, holding that any literal reproduction of the images on a two-dimensional surface, cropped or whole, was also legal. Adding to the image or otherwise “transforming” it in any way, however, created works that were too “evocative” of the movie’s copyrighted characters, and thus intruded on Warner Brothers’ copyright. 

    Pay no attention to the law behind the curtain

    Before going any further, it’s important to understand how the public domain affects copyrights that incorporate a large number of individually creative parts, such as films or games. 

    The public domain serves an important function in relation to these “umbrella” copyrights. Whenever an individual element of a larger work passes into the public domain, the larger work’s copyright is reduced accordingly. If, somehow, the recording of Julie Andrews singing “Do-Re-Mi” passes into the public domain, the copyright for The Sound of Music no longer protects it. That would mean that the song could be reproduced, distributed, performed, and adapted — by anyone, without having to seek permission. In that sense, these umbrella copyrights actually retreat incrementally over time. This is hugely beneficial to the general public, by ensuring that copyright holders can’t defeat the public domain and assert sweeping control over every tangential aspect of a work simply by holding on to one, tiny bit of a once-copyrighted work.

    The Eighth Circuit seems to have missed the point, however, as it begins its analysis with the presumption against transferring work into the public domain. Instead, the Court held that even a tangential connection to copyright will trump a valid transfer to public domain. 

    Although they don’t bother to explain the reasoning for their presumption against the public domain, a few things become clear in the course of the opinion. For one thing, the court seems to fear that any works formerly attached to a surviving copyright could be reused and repurposed to become directly competitive with the original work. The idea of creating a substitute work out of purely public domain material is not only far-fetched to the point of absurdity, it completely disregards the point of the law; the final product could be found infringing by a direct comparison with the larger copyrighted work, not just a vague notion of “evocativeness.” (More on the absurdity of using that as a standard below.)

    In this case, the court’s presumption led it to conclude that recognizing the public domain status of anything besides the literal images in the photos would mean peeling back the film’s copyright in the character’s visual appearances. Ultimately, the court had to scrabble around for reasons to keep the characters’ “looks” from slipping into the public domain along with the photos. It offered a handful of unconvincing arguments to justify its decision, none of which stand up under much scrutiny. Two in particular stood out: the court’s novel standard of “evocativeness”; and what can only be described as a subjective value of an actor’s performance. 

    1. Two Wrongs Make a (Copy)Right

    So what happens if you take a public domain image, and juxtapose it with a related public domain quote? According to the Eighth Circuit, you may have just infringed on a copyrighted work.  In a completely original turn of logic, the court said that “products combining extracts from the public domain materials in a new arrangement infringe the copyright in the corresponding film” because such arrangements “evoke” the film by adding new expression. 

    To call the test vague would be an understatement. Say I wanted to produce a T-shirt using a public domain image of Humphrey Bogart from Casablanca, with “Play it again, Sam” – a line never actually uttered in the movie – written underneath. Because it wasn’t in the film, that phrase can’t protected by the film’s copyright. It is, however, evocative of the film, and when put under a public domain image of Bogart, would fail the Eighth Circuit’s “evocativeness” test spectacularly. 

    What about using a public-domain quote from the same source material? If I printed a poster using a public-domain photograph of Jeremy Brett dressed as Sherlock Holmes, with “The Game is Afoot!” (a quote famously uttered by Holmes in the 1903 – and wonderfully public domain – “Adventure of the Abbey Grange“) written underneath, does that infringe on Grenada TV’s copyright to their version of Sherlock Holmes? According to the Eighth Circuit, it most certainly does – regardless of the inescapable fact that all component parts of it are soundly, and unarguably, in the public domain. 

    Hypotheticals aside, promotional images are, by definition, evocative of a copyrighted work. Why should this essential feature – the very thing that makes their entrance into the public domain socially valuable – subject them to a more restrictive standard than less-known works? The Court’s ruling not only places new and novel restrictions on the use of public domain work, it effectively pulls valuable aspects of works out of the public domain and puts them back under an expired copyright umbrella. The end result is a blanket restriction on how the public can use public domain works that may be too “evocative” of a work remaining in copyright. 

    2. Showing is More Important than Telling

    Both Gone with the Wind and The Wizard of Oz were based on books that have since passed into the public domain. Given that the film builds upon the book as source material, it would make logical sense for the copyright to extend only to those incremental additions over the public domain works. Right?

    The Eighth Circuit acknowledged that such limitations existed in theory. But rather than examining how they would apply here, the court proceeded to snub English majors everywhere by asserting that there was no way in which a book could foreshadow the nuance of character granted by a movie version: 

    …a book’s description of a character generally anticipates very little of the expression of the character in film … The description of a character in prose leaves much to the imagination, even when the description is detailed—as in Dashiell Hammett’s description of Sam Spade’s physical appearance in the first paragraph of The Maltese Falcon. … Even after all this, one hardly knows what Sam Spade looked like. But everyone knows what Humphrey Bogart looked like. (Gaiman v. McFarlane, 360 F.3d 644, 661 (7th Cir. 2004))

    The court went on to declare that AVELA had failed to identify any instance in which the book anticipated the “the distinctive mannerisms, facial expressions, voice, or speech patterns of a film character …  [or] evokes, to any significant extent, what the actor portrayed.”

    Why the court suddenly places such weighty emphasis on the intangible aspects of a character, when all they’re being asked to consider is the use of a character’s static image, is baffling. What do a character’s mannerisms or speech patterns have anything to do with its appearance in a public domain photograph? 

    The Eighth Circuit doesn’t deign to say. The potential chilling effect of this decision on use of public domain works is enormous, and if the trend toward narrowing the public domain continues, we may end up with a host of restrictions on those very works that were intended for free and public use.