Warner Bros secures $2.6m ‘Wizard of Oz’ copyright victory

US entertainment company Warner Bros has secured a $2.6 million victory after a decade-long dispute over copyright in images from the films “Gone with the Wind” and “The Wizard of Oz”, as well as short films featuring cat-and-mouse duo Tom and Jerry.

Back in 2006, Warner Bros sued Art & Vintage Entertainment Licensing Agency (AVELA), claiming copyright and trademark infringement.

AVELA had obtained restored versions of movie posters and lobby cards for the films and extracted images of famous characters 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 Tom and Jerry.

The company then licensed the images for use on lunchboxes, shirts, playing cards, figurines, water globes and action figures, according to the suit.

In 2009, the US District Court for the Eastern District of Missouri granted the entertainment company summary judgment on its copyright infringement claims.

It also entered a “permanent injunction prohibiting AVELA from using any of the publicity material images in any way except for exact duplication of publicity materials in the public domain”.

After an appeal from AVELA, two years later the US Court of Appeals for the Eighth Circuit upheld the summary judgment and most of the injunction, ruling that copyright infringement occurred in two circumstances. It remanded the case to the district court.

The Eighth Circuit said that copyright infringement occurred when the images were used in a 3D object and when they were combined with other images/text to create a composite work. But, it also ruled that infringement didn’t occur where the images were reproduced as an identical 2D image.

On remand, Warner requested statutory damages for its copyright claims and moved for summary judgment on its trademark infringement and unfair competition claims.

At the district court, Warner Bros received statutory damages of $10,000 per infringed copyright. Based on 257 copyright works infringed, Warner Bros received a total award of $2,570,000.

The district court also granted summary judgment on both the trademark infringement and unfair competition claims, finding that Warner holds registered trademarks in words and phrases from the films and common law trademarks in the film characters.

AVELA then challenged the permanent injunction.

On Tuesday, November 1, the US Court of Appeals for the Eighth Circuit upheld the decision and permanent injunction.

Frederick Sperling, a partner at Schiff Hardin, who represented Warner Bros, said that the court's opinion "sends a strong message about the risk of engaging in copyright and trademark infringement".