The 8th Circuit recently weighed in on the topic of public domain images and copyrighted characters. As my colleagues Kimberly Herman, Michael Matzka and Laura Stacey explore in greater detail in an advisory about the decision, a number of merchandisers were using images from public domain posters and lobby cards from movies like The Wizard of Oz, Gone with the Wind, and Tom & Jerry. Although the posters themselves were in the public domain (and complete reproductions of those posters were not infringing) the 8th Circuit analyzed further the status of the characters, not merely the images of them. A balance is struck between the right to make derivative works from public-domain images (protected) versus uses that conflict with further development of the character by the copyright holder (infringing). Also discussed is the difference between a character from a public-domain book (e.g. The Tin Man) and an original creation in the film (Tom or Jerry). My colleagues’ treatment of the decision fleshes these points out in fuller depth.
Interestingly, there is no reference in the Court of Appeals opinion to a fair use defense. Although it would certainly have been a reach to argue that the commercial products at issue were a protected fair use, in the absence of permission it would seem worth attempting, at least in the alternative. It may have been raised below and met with skepticism, or its omission may simply have been a strategic choice. In either event, the case is a reminder of the perils of incorporating images without prior permission.
