When does a still image -- or a series of such images -- embody a "character" for purposes of copyright law? In Warner Bros. Entertainment, Inc. v. X One X Prods., 2011 U.S. App. LEXIS 13646 (8th Cir. July 5, 2011) [enhanced version available to lexis.com subscribers / unenhanced version available from lexisONE Free Case Law], the Eighth Circuit addressed this question in the context of determining whether the depicted characters -- or merely the individual images -- had entered the public domain. However, the court's holding imposes troubling restrictions on the public's ability to make creative uses of public domain character images. In this Analysis, Mary LaFrance examines Warner Bros. and discusses character copyrights and the public domain. She writes:
While the 1939 films Gone with the Wind and The Wizard of Oz were still in production and not yet covered by statutory copyrights, film studio MGM distributed publicity materials, including movie posters and lobby cards, featuring images of the actors in costume and posed on the film set. Publicity materials were also distributed for several Tom and Jerry cartoon shorts released between 1940 and 1957. Most of these publicity materials were publicly distributed without a copyright notice; while a few bore a copyright notice, their copyrights were not renewed. In this litigation, plaintiff Warner Bros. conceded that it did not hold registered copyrights in the publicity materials. However, the films themselves remain protected by copyright, and Warner Bros. asserted ownership of those copyrights by assignment.
Defendant AVELA acquired restored versions of some of these movie posters and lobby cards. When AVELA began licensing the images appearing on these materials (sometimes modifying and/or combining the images) for use on various types of merchandise, Warner Bros. brought suit for copyright infringement, trademark infringement, and unfair competition. Without expressly holding that the publicity materials had entered the public domain, the district court held that even if those specific images had entered in the public domain, AVELA's alterations of the images infringed the film copyrights. Accordingly, the court granted Warner Bros.' motion for summary judgment of copyright infringement, and permanently enjoined AVELA from licensing its altered versions of the publicity stills. This appeal followed.
A. What makes a Character Copyrightable?
Perhaps the most difficult question presented by Warner Bros. is what it takes to inject a "character" into the public domain, as opposed to a specific image of that character. Logically, the analysis should be the same as the analysis of what it takes to create a copyrightable character, as opposed to creating only a copyrightable image or textual description of that character. Unfortunately, there is no clear answer to either question.
Although an early Ninth Circuit precedent suggested that copyright protection was limited to characters that constitute "the story being told," that standard has been much criticized, and courts have generally applied a less stringent standard, treating characters as copyrightable to the extent that they are delineated in sufficient detail and have consistent identifiable traits. In general, these standards are more easily satisfied by visually depicted characters, especially cartoon characters, as opposed to characters described only in a literary text.
If, as these authorities suggest, consistent identifiable traits are required for a character to be copyrighted, then copyright in a character could not arise from a single still image, such as a single movie poster; in such a case, only the specific image would be copyrightable. On the other hand, if the same character were depicted in several different still images, "consistent identifiable traits" could emerge. In the instant case, it appears that multiple images of each character entered the public domain, making it possible that some consistent traits could emerge, but the court found insufficient consistency among the specific images that were released.
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