## Facts

- Warner owned copyrights in the motion pictures *The Wizard of Oz* (1939), *Gone with the Wind* (1939), and various *Tom and Jerry* animated shorts, and claimed rights in the films’ character depictions.
- Before the films’ releases, Warner’s predecessor distributed publicity materials (e.g., posters, lobby cards) containing still images of film characters.
- The publicity materials were distributed without the copyright notices required by the 1909 Copyright Act, resulting in those publicity materials entering the public domain, while the films remained copyrighted.
- AVELA acquired and restored copies of the publicity materials, extracted character images, and licensed the images for consumer merchandise.
- AVELA’s products included (i) essentially exact two-dimensional reproductions of a single publicity image and (ii) altered uses, including cropped or isolated images, composites combining multiple publicity elements or added text, and three-dimensional figurines and similar items.
- Warner sued for copyright infringement; the district court granted summary judgment for Warner and entered a permanent injunction that broadly barred AVELA from using the images other than exact duplication of the public-domain publicity materials.
- AVELA appealed the copyright liability rulings and the scope of the injunction.

## Issues

1. Whether use of images derived from public-domain publicity materials can infringe copyrights in the underlying films.
2. Whether AVELA’s composite and three-dimensional merchandise constituted unauthorized derivative works of the copyrighted films.
3. Whether the permanent injunction was overbroad in restricting non-infringing reproduction of public-domain publicity images.

## Decision

- The Eighth Circuit affirmed in part and reversed in part.
- The court held the publicity materials were in the public domain because they were distributed without required notice, but that fact did not extinguish Warner’s copyrights in the films.
- The court held that merchandise reproducing a single public-domain publicity image as an identical two-dimensional image did not infringe the film copyrights.
- The court held that composite products and three-dimensional products infringed as unauthorized derivative works because they appropriated protectable expression from the films’ character depictions beyond mere verbatim reuse of a public-domain image.
- The court vacated the injunction in part and remanded for narrowing consistent with the distinction between permissible verbatim 2D reproductions and infringing composite/3D uses.

## Legal Principles

- Public-domain status of a publicity item does not place the underlying film (or its protectable character depictions) in the public domain.
- Verbatim reproduction of a public-domain publicity image in an identical two-dimensional form is generally permissible, even when the image depicts characters from a copyrighted film.
- Creating new works from public-domain publicity images can infringe a separate copyrighted work when the new work constitutes a derivative work that recasts, transforms, or substantially copies protectable expression from the copyrighted film.
- Combining multiple publicity elements, adding new expressive content, or rendering character depictions in three dimensions may cross from permissible copying of public-domain material into infringement of the film’s protected expression.
- Injunctive relief must be tailored to prohibit infringing conduct without barring lawful uses of public-domain materials.

## Conclusion

The Eighth Circuit drew a line between lawful reuse of public-domain film publicity images and unlawful exploitation of copyrighted film expression: AVELA could reproduce single publicity images verbatim in two dimensions, but its composites and three-dimensional merchandise infringed as unauthorized derivative works, requiring the injunction to be narrowed on remand.


Warner Bros. Ent. Inc. v. X One X Prods., 644 F.3d 584 (8th Cir. 2011)