## Facts

- Metro-Goldwyn-Mayer, Inc. (MGM) produced and copyrighted the 1939 film *The Wizard of Oz*, and renewed the copyright; its validity was conceded for purposes of the appeal.
- MGM licensed The Bradford Exchange (Bradford) to use characters and scenes from the film on a series of collectors’ plates.
- Bradford invited artists to submit paintings of Dorothy as played by Judy Garland, explaining that the best painting would lead to a contract for the plate series.
- Bradford supplied production still photographs and instructions stating that the artist’s “interpretation must evoke” audience affection for the film and that the “Judy/Dorothy must be very recognizable as everybody’s Judy/Dorothy.”
- Jorie Gracen, a Bradford employee, entered the contest and created a painting of Dorothy based on the supplied photographs and her recollection of the movie.
- Bradford displayed the contest entries publicly, selected Gracen as the winner, and paid her $200 (as it paid the other contestants).
- Bradford offered Gracen a contract for the series, but she refused to sign because she disliked the terms.
- Bradford then hired another artist, James Auckland, to paint Dorothy for the series and provided Auckland with Gracen’s painting to assist him.
- Gracen alleged that Auckland’s Dorothy painting (used on Bradford’s plate) copied her painting; on appeal, the court assumed copying for purposes of reviewing summary judgment.
- Gracen sued Bradford and related parties for copyright infringement and also attacked MGM’s film copyright, including arguments tied to rights in Judy Garland’s likeness; MGM participated as a defendant and advanced claims in response.

## Issues

1. Whether Gracen, by entering Bradford’s contest under its stated conditions, granted Bradford an implied nonexclusive license to use her winning painting for the plate project.
2. Whether Gracen’s painting of Dorothy, created from MGM’s stills and intended to be a highly recognizable depiction of Judy Garland’s Dorothy, contained enough original expression to be copyrightable as a derivative work.
3. Whether MGM’s copyright in *The Wizard of Oz* was invalid based on Gracen’s arguments concerning MGM’s rights in Judy Garland’s likeness or related objections.

## Decision

- The Seventh Circuit **affirmed** the district court’s grant of **summary judgment** for the defendants.
- The court **assumed without deciding** that an implied license might exist, but chose not to rest its result on that ground.
- The court held that Gracen failed to show her Dorothy painting was sufficiently **original** (beyond the MGM stills and film character depiction) to obtain a protectable copyright as a **derivative work**.
- Because Gracen did not establish protectable authorship in the aspects allegedly copied, her infringement claim failed **even assuming** the plate copied her painting.
- The court rejected Gracen’s challenge to MGM’s copyright in the film and treated MGM’s film copyright as valid and enforceable.

## Legal Principles

- A derivative work is copyrightable only to the extent it contains the author’s **original** expression that is distinguishable from the preexisting copyrighted material.
- When a work is created to be a faithful depiction of a copyrighted character or image—especially under instructions to keep it “very recognizable”—the author may have difficulty identifying a protectable increment of original expression.
- The party asserting copyright in a derivative work bears the burden to show a nontrivial original contribution; technical skill and faithful rendering alone do not establish protectable authorship in the copied elements.
- If the plaintiff cannot show a valid copyright in the material allegedly taken, there can be no infringement liability, even if copying is assumed.
- Implied nonexclusive licenses may arise from conduct and shared expectations, but a court may resolve a dispute on copyrightability grounds without definitively deciding the license question.
- Alleged problems with rights of publicity in an actor’s likeness do not, by themselves, void a federal copyright in a motion picture.

## Conclusion

In *Gracen v. Bradford Exchange*, the Seventh Circuit affirmed summary judgment for Bradford and MGM, concluding that Gracen did not establish that her contest painting of Dorothy—made from MGM stills and intended to look like “everybody’s Judy/Dorothy”—contained a sufficiently original contribution to qualify for copyright protection as a derivative work; therefore, her infringement claim failed even on an assumption of copying, and her separate attack on MGM’s *Wizard of Oz* copyright was rejected.


Gracen v. Bradford Exchange, 698 F.2d 300 (1983)