Eighth Circuit: Adding A Phrase or Dimension to Public Domain Work Is Copyright Infringement

What happens when you take an image from a publicity still for the Wizard of Oz of Judy Garland that has fallen into the public domain and add the phrase "There's no place like home?" where the phrase is part of a book and film under copyright?   Or if you take that same public domain image and render it in three dimensions with the added detail from your own imagination?

The Eighth Circuit has held that you have engaged in copyright infringement in  Warner Bros. Entertainment, Inc. v. X One X Productions (July 5, 2011) (10-1743).

The decision is an interesting one, finding that the enhancements to the public domain works are "evocative" of the copyrighted book and films.   The decision draws interesting distinctions between a "James Bond" character whose visual appearance changes from film to film, and other cartoon-type characters who are recognizable visually.

A lot of thought went into the opinion, but it will be interesting to see whether other circuits or the US Supreme Court follows in light of the opinion in Dastar.

Enhancements to the public domain will be the hot topic of the next few years in copyight litigation, this is not the last word.

A past post on Dastar and this case here.

Dastar Corporation v. 20th Century Fox Film Corporation et al., 539 U.S. 23 (2003)

Patently-O's take on the X One X case with links to documents here.

Warner Bros Entertainment v X One X Productions 8th Cir July 5 2011

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First Circuit: Ownership of a Copyright in a Television Show Governed By Work For Hire Agreement Confirming Earlier Oral Agreement

In TMTV Corp. v. Mass Productions Inc., ---F.3d---, 2011 WL 2306514 (1st Cir. 2011), the First Circuit considered two competing Puerto Rican television shows 20 Pisos and El Condominio (more on Wikipedia here). As in so many of these stories, the initial brainstorming sessions were not set down in writing, later-produced scripts were the result of the amorphous brainstorming session, and in the end, all claimed copyright.

Here, one purported author supplied ideas at the brainstorming session. He lost because of copyright law's requirement of "fixation" - that is, that in order to have a copyright, the ideas must be written down.

Other authors wrote scripts based on the brainstorming session. Those authors, however, did not dispute that they'd agreed to write the scripts as works-for-hire. Later, the authors were paid and executed agreements stating that the scripts were works for hire.

For students of civil procedure and how it relates to the Copyright Act, the decision is instructive on the issues of settlements, damages, and pre- and post- judgment interest. The Hon. David H. Souter (Ret.) of the Supreme Court of the United States sat by designation.

Decision below.

TMTV Corp v Mass Productions (1st Cir. Puerto Rico June 13 2011)

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9th Circuit: Copyright in Characters Fails Betty Boop, TM Goes Poo-Poo-Pee-Do

Will the real official Betty Boop please stand up?

In Fleischer Studios Inc. v A.V.E.L.A Inc, 2011 WL 631449 (9th Cir. Feb. 23, 2011), the Ninth Circuit Court of Appeals held that the purported holder of the Betty Boop character and the Betty Boop trademark (name and image) did not own it after all. The court found that the purported owner failed to show a chain of title to the copyright.

The case raises the interesting issue of how a character copyright arises separately from a copyrighted work. For example, when Ian Fleming wrote the first James Bond novel, he created both a character and a novel. So he could sell the novel and retain the character copyright or sell both. The Fleischer case discusses how films and screenplays are created and sold and how a copyright owner of a film could renew its copyright without owning the underlying character.

Since Fleischer failed to prove copyright ownership, this left the Betty Boop copyright ownership fractured among others, depriving Fleischer of the trademark. Further, the court found that the use of BETTY BOOP with image was "functional and aesthetic" and thus did not function as a trademark.

Circuit Judge Susan Graber wrote a spirited dissent, it is worth reading.

I cover copyright ownership disputes in Copyright Litigation Handbook (West 5th Ed. 2010). The Fleischer case points out three important object lessons for copyright and trademark practitioners who engage in licensing and draft agreements: 1. be very careful in documenting chains of title to a work; 2. be very sure when you license a TM or copyrightable materials that the person claiming the license actually owns the works; and 3. make sure that the representations and warranties clauses cover you in the event your licensor's IP disappears.

Probably the most important lesson to be drawn for an IP owner is that litigation is a risky business. When you send out a cease and desist letter or commence a declaration of title action, there is a chance that the rights that you and your very experienced and fine attorneys believe you own may not hold up. Given the opportunity for reasonable settlement, discretion is often the better part of valor.



Watch Minnie the Moocher above.

More from THREsq here.

WSJ's take here.

The Trademark Blog goes BALLISTIC here and collects critical comments.

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