Not a Lexis+ subscriber? Try it out for free.

Experience a New Era in Legal Research with Free Access to Lexis+

Warner Bros. Entm't, Inc. v. X One X Prods.

United States Court of Appeals for the Eighth Circuit

February 24, 2011, Submitted; July 5, 2011, Filed

No. 10-1743


 [***1157]  [*589]   GRUENDER, Circuit Judge.

A.V.E.L.A., Inc., X One X Productions, and, Inc. (collectively, "AVELA") appeal a permanent injunction prohibiting them from licensing certain images extracted from publicity materials for the films Gone with the Wind and The Wizard of Oz, as well as several animated short films featuring the cat-and-mouse duo "Tom & Jerry." The district court issued the permanent injunction after granting summary judgment in favor of Warner Bros. Entertainment,  [**2] Inc., Warner Bros. Consumer Products, Inc., and Turner Entertainment Co. (collectively, "Warner Bros.") on their claim that the extracted images infringe copyrights for the films. For the reasons discussed below, we affirm in part, reverse in part, and remand for appropriate modification of the permanent injunction.


Warner Bros. asserts ownership of registered copyrights to the 1939 Metro-Goldwyn-Mayer ("MGM") films The Wizard of Oz and Gone with the Wind. Before the films were completed and copyrighted, publicity materials featuring images of the actors in costume posed on the film sets were distributed to theaters and published in newspapers and magazines. The images in these publicity materials were not drawn from the film footage that was used in the films; rather, they were created independently by still photographers and artists before or during production of the films. The publicity materials, such as movie posters, lobby cards, still photographs, and press books, were distributed by the original rights-holder, MGM's parent company Loew's, Inc.,1 and did not comply with the copyright notice requirements of the 1909 Copyright Act, 17 U.S.C. §§ 1 et seq. (1976) (superseded  [**3] effective 1978). Warner Bros. also asserts ownership of registered copyrights to various animated Tom & Jerry short films that debuted between 1940 and  [*590]  1957. Movie posters and lobby cards for these short films also were distributed without the requisite copyright notice. As a result, Warner Bros. concedes that it has no registered federal copyrights in the publicity materials themselves.2

AVELA has acquired restored versions of the movie posters and lobby cards for The Wizard of Oz, Gone with the Wind, and several Tom & Jerry short films. From these publicity materials, AVELA has extracted the images of famous characters from the films, including Dorothy, Tin Man, Cowardly Lion, and Scarecrow from The Wizard of Oz; Scarlett O'Hara and Rhett Butler from Gone with the Wind; and the eponymous Tom and Jerry. AVELA licenses the extracted images for use  [**4] on items such as shirts, lunch boxes, music box lids, and playing cards, and as models for three-dimensional figurines such as statuettes, busts, figurines inside water globes, and action figures. In many cases, AVELA has modified the images, such as by adding a character's signature phrase from the movie to an image modeled on that character's publicity photograph. In other cases, AVELA has combined images extracted from different items of publicity material into a single product. In one example, a publicity photograph of Dorothy posed with Scarecrow serves as the model for a statuette and another publicity photograph of the "yellow brick road" serves as the model for the base of that same statuette.

Read The Full CaseNot a Lexis Advance subscriber? Try it out for free.

Full case includes Shepard's, Headnotes, Legal Analytics from Lex Machina, and more.

644 F.3d 584 *; 2011 U.S. App. LEXIS 13646 **; 99 U.S.P.Q.2D (BNA) 1153 ***; Copy. L. Rep. (CCH) P30,096

Warner Bros. Entertainment, Inc.; Warner Bros. Consumer Products, Inc.; Turner Entertainment Co., Appellees, v. X One X Productions, doing business as X One X Movie Archives, Inc.; A.V.E.L.A., Inc., doing business as Art & Vintage Entertainment Licensing Agency;, Inc.; Leo Valencia, Appellants.

Subsequent History: Summary judgment granted by Warner Bros. Entm't, Inc. v. Dave Grossman Creations, Inc., 13 F. Supp. 3d 963, 2014 U.S. Dist. LEXIS 44306 (E.D. Mo., 2014)

Motion granted by, in part, Motion granted by, in part, Motion denied by, in part, Costs and fees proceeding at Warner Bros. Entm't v. Dave Grossman Creations, 2015 U.S. Dist. LEXIS 133780 (E.D. Mo., Sept. 30, 2015)

Prior History:  [**1] Appeal from the United States District Court for the Eastern District of Missouri.

Warner Bros. Entm't v. Dave Grossman Creations, Inc., 2010 U.S. Dist. LEXIS 19547 (E.D. Mo., Mar. 4, 2010)

Disposition:  The grant of summary judgment was reversed in part and the permanent injunction was vacated in part, only as to products that reproduced in two dimensions any one portion of an image from any one item of publicity material. The case was remanded for modification of the permanent injunction and further proceedings consistent with the court's opinion.


film, public domain, images, posters, visual, movie, Gone, products, infringe, permanent injunction, extracted, photographs, documents, district court, cards, reproduction, appearance, injected, theaters, costume, lobby, derivative work, announcements, distributed, increments, comic, ownership, cartoon, notice, grant of summary judgment

Civil Procedure, Appeals, Standards of Review, De Novo Review, Summary Judgment Review, Standards of Review, Judgments, Summary Judgment, Evidentiary Considerations, Entitlement as Matter of Law, General Overview, Copyright Law, Copyright Infringement Actions, Civil Infringement Actions, Burdens of Proof, Elements, Ownership, Opposing Materials, Accompanying Documentation, Supporting Materials, Affidavits, Abuse of Discretion, Pleadings, Complaints, Evidence, Lay Witnesses, Opinion Testimony, Testimony, Personal Knowledge, Scope of Copyright Protection, Subject Matter, Common Law Copyrights, Governments, Legislation, Statutory Remedies & Rights, Notice, Requirements, Publication, Collective & Derivative Works, Derivative Works, Copying by Defendants, Scope of Protection, Infringement, Protected Subject Matter, Literary Works, Characters, Audiovisual Works & Motion Pictures