# Warner Bros. v. X One X: Public Domain Posters, Still-Protected Film Characters

> The Eighth Circuit held studio publicity posters entered the public domain, but merchandise that evokes the Wizard of Oz film characters still infringes.

Topic: Copyright  |  Author: Lidiia Levitska  |  Source: Intellectual Property Law (outsideipcounsel.com)
Canonical: https://outsideipcounsel.com/blog/warner-bros-v-x-one-x-public-domain-film-characters/


Few copyright decisions say yes and no at the same time as consequentially as *Warner Bros. Entertainment, Inc. v. X One X Productions*, 644 F.3d 584 (8th Cir. 2011). Decided July 5, 2011, in an opinion by Judge Raymond Gruender for a unanimous panel, the case handed a nostalgia merchandiser a genuine victory, a holding that the publicity posters and lobby cards for The Wizard of Oz and Gone with the Wind sit squarely in the public domain, and then took most of the commercial value of that victory away. The images may be copied exactly, the court held, but the moment they are recombined, extended, or modeled into anything that evokes the films' characters, they collide with the still-valid film copyrights.

The decision is the modern chart for a tricky boundary in entertainment law: what the public may do with promotional materials that lost protection under the old formalities regime, when the films they promoted remain locked up. For anyone building products on "public domain" Hollywood imagery, *X One X* defines where the free zone ends.

## At a glance

- **Case:** *Warner Bros. Entertainment, Inc. v. X One X Productions*, 644 F.3d 584 (8th Cir. 2011)
- **Decided:** July 5, 2011; opinion by Judge Gruender, joined by Judges Benton and Shepherd; affirmed in part, reversed in part, and remanded from the Eastern District of Missouri
- **Holding:** Publicity materials for The Wizard of Oz and Gone with the Wind entered the public domain for lack of copyright notice, but products that combine or extend those images so they evoke the films' characters infringe the film copyrights, whose increments of character expression remain protected.
- **Status:** Final. On remand the district court entered a modified injunction and statutory damages, and the Eighth Circuit affirmed in a second appeal, 840 F.3d 971 (8th Cir. 2016).

## The notice trap: how studio publicity lost its copyright

The dispute began with a business model. A.V.E.L.A., Inc. and its affiliates, including X One X Productions and licensor Leo Valencia, acquired and restored vintage movie posters, lobby cards, and publicity photographs for The Wizard of Oz (1939), Gone with the Wind (1939), and several Tom & Jerry cartoon shorts. AVELA extracted the character images, Judy Garland as Dorothy, Clark Gable as Rhett Butler, Vivien Leigh as Scarlett O'Hara, and licensed them for t-shirts, lunch boxes, playing cards, action figures, and statuettes. Warner Bros. and Turner Entertainment, owners of the film copyrights, sued in the Eastern District of Missouri, which granted summary judgment and a sweeping permanent injunction against any use of the images.

The threshold question on appeal was whether the publicity materials themselves were protected. Under the Copyright Act of 1909, which governed works published before 1978, federal copyright attached upon publication only if the published copies bore a proper notice; a "general publication" without notice thrust the work into the public domain irrevocably. The studios' promotional apparatus of the late 1930s was built for saturation, not formality: posters, lobby cards, and stills went out to theaters, newspapers, and magazines by the thousands, and none of the materials at issue carried a notice.

Warner Bros. argued the distribution was merely a "limited publication" to a defined group for a restricted purpose, which under 1909 Act doctrine would not trigger forfeiture. The Eighth Circuit disagreed: the materials had been broadly disseminated to promote the films with no meaningful restrictions on their use, a general publication without notice. The posters and lobby cards were in the public domain, and the injunction could not stand insofar as it barred faithful reproduction of them. As the court put it, the public is not limited to making exact replicas of public domain materials but is free to use them in new ways.

## What the books gave the public, and what the films kept

If the case had ended there, AVELA would have won outright. But the publicity materials were not the only relevant works. The films themselves remained under copyright, and the court had to decide what, exactly, the public domain posters had released.

Its answer was narrow and precise: the publicity materials placed into the public domain only what they actually portrayed. A lobby card shows an actor in costume, in a particular pose. It does not convey the character as the film built that character, the voice, gait, mannerisms, and accumulated visual personality of Garland's Dorothy or Gable's Rhett. Those elements, the court held, are "increments of expression" original to the films, and they remain protected by the film copyrights.

The concept has a distinguished lineage. Ever since Judge Learned Hand's opinion in *Nichols v. Universal Pictures Corp.*, 45 F.2d 119 (2d Cir. 1930), sufficiently delineated characters have been protectable expression in their own right. And in *Silverman v. CBS Inc.*, 870 F.2d 40 (2d Cir. 1989), the Second Circuit held that where early Amos 'n' Andy radio scripts had fallen into the public domain, later copyrighted works protected only the increments of expression they added to the characters. *X One X* applied that architecture to film. L. Frank Baum's 1900 novel The Wonderful Wizard of Oz was itself public domain, but the court observed that the description of a character in prose leaves much to the imagination; the films' visual realizations went far beyond the books' dialogue and descriptions, so the cinematic Dorothy and Scarlett carried protection that neither the old novel nor the noticeless posters dissolved. The principle mirrors 17 U.S.C. § 103(b): protection for a work built on preexisting material extends to what the author added, and the addition here belonged to the studios.

The Tom & Jerry shorts required a wrinkle of their own. Because the cat and mouse were born on screen, their character expression accrued film by film. The earliest poster, for Puss Gets the Boot, showed a generic cat and mouse, but later publicity necessarily depicted characters already delineated in copyrighted shorts, keeping those depictions within the films' protection.

## Three categories of merchandise and where the line fell

The court then sorted AVELA's product line into three categories, and the taxonomy has become the practical heart of the opinion.

First, faithful reproductions: a single public domain image, reproduced in two dimensions, whether whole or cropped, on a new surface such as a t-shirt, poster, or lunch box. These do not infringe. Printing an old lobby card on cotton instead of cardstock adds no increment of the film character, so the injunction was vacated as to this category.

Second, composite works: images extracted from publicity materials and juxtaposed with other images, or paired with a phrase drawn from the book underlying the film, such as printing a publicity photo of Garland alongside the phrase "There's no place like home." These infringe. Notably, both ingredients can themselves be public domain. The court's point was that the new arrangement is itself a new increment of expression: a t-shirt bearing the image and the phrase together, it wrote, is a new single work that evokes the film character of Dorothy much more strongly than the two separate works do.

Third, three-dimensional works: statuettes, figurines, and action figures modeled from the flat publicity images. These infringe as well. Sculpting a fully realized figure from a single pose necessarily draws on the film's visual conception of the character, an increment the posters never released, and the exclusive right to prepare derivative works under 17 U.S.C. § 106(2) belonged to the studios.

The disposition followed the taxonomy: summary judgment affirmed as to the second and third categories, reversed as to the first, and the case remanded to modify the injunction accordingly.

## Aftermath: damages and the 2016 affirmance

On remand, the district court entered a revised injunction and awarded Warner Bros. $2,570,000 in statutory damages, calculated at $10,000 per infringed work. AVELA appealed again, arguing the award was disproportionate; the Eighth Circuit affirmed in *Warner Bros. Entertainment, Inc. v. X One X Productions*, 840 F.3d 971 (8th Cir. 2016), closing the loop on nearly a decade of litigation.

The opinion's influence has outrun its facts. When the Ninth Circuit held the Batmobile protectable in *DC Comics v. Towle*, 802 F.3d 1012 (9th Cir. 2015), it drew on the same character-protection doctrine *X One X* consolidated. And as more twentieth-century films and promotional archives age into the public domain each January, the decision's central distinction, between copying an artifact and resurrecting a character, only grows in importance.

## Open questions

The opinion left real uncertainty at its edges. The court never precisely defined how much context converts a lawful reproduction into an infringing composite: it suggested that even a faithful image could infringe if placed in a setting that evokes the film, offering the example of a public domain image of Dorothy reproduced on ruby slippers, yet it gave no general test for when a "new context" crosses the line. It also did not resolve how the increments-of-expression analysis applies to characters whose underlying literary sources remain copyrighted, and it left untouched the trademark and right-of-publicity theories that often travel with these disputes. Finally, the forfeiture holding is frozen to the 1909 Act; notice failures in post-1978 works are largely curable, so the public domain gateway it opens applies only to the pre-1978 archive.

## Implications for creators and businesses

- **Public domain status is artifact-specific, not character-specific.** A poster in the public domain frees that poster, exactly as it appeared. It does not free Dorothy, Rhett, or Scarlett. Before building a product line on vintage imagery, map every copyrighted work in which the character appears, not just the source you copied.
- **Exact reproduction is the safe harbor; curation is the danger zone.** Reprinting one public domain image on a shirt or poster is defensible under *X One X*. Combining images, adding famous lines, or rendering figures in 3D forfeits the safe harbor because each move adds protected character expression back in.
- **The 1909 Act formalities still decide fortunes.** For pre-1978 materials, publication history and notice are outcome-determinative. Provenance research, when an item was distributed, to whom, and with what notice, is due diligence, not trivia.
- **Character copyright is a studio's longest-lived asset.** *X One X* confirms that a film's increments of character expression survive the loss of ancillary materials and can anchor both injunctions and substantial statutory damages, here $2.57 million.

## Frequently asked questions

**Why were the Wizard of Oz and Gone with the Wind posters in the public domain?** Under the Copyright Act of 1909, a work received federal protection only if it was published with a proper copyright notice. The studios distributed posters, lobby cards, and publicity photos widely to promote the films, and none of the materials carried a notice. The Eighth Circuit found this was a general publication without notice, which forfeited protection and placed the materials in the public domain.

**Can a business legally sell products using those public domain movie images today?** Yes, within the boundary the Eighth Circuit drew. An exact reproduction of a single public domain publicity image, printed in two dimensions on a shirt, poster, or similar item, does not infringe. But combining two extracted images, pairing an image with a signature phrase from the underlying book, or building three-dimensional figures from the images adds a new increment of expression that evokes the film characters, and infringes the film copyrights.

**What are the 'increments of expression' the court protected?** They are the original expressive elements a film adds to a character beyond any preexisting public domain source: Judy Garland's specific look, voice, and demeanor as Dorothy, for example, rather than the girl described in L. Frank Baum's novel. Because those increments are original to the film, they remain protected by the film's copyright even when related publicity images lose protection.

## Authorities and sources

- [*Warner Bros. Entertainment, Inc. v. X One X Productions*, 644 F.3d 584 (8th Cir. 2011), No. 10-1743 (slip opinion, Eighth Circuit)](https://ecf.ca8.uscourts.gov/opndir/11/07/101743P.pdf)
- [*Warner Bros. Entertainment, Inc. v. X One X Productions*, 840 F.3d 971 (8th Cir. 2016), No. 15-3728 (second appeal, slip opinion, Eighth Circuit)](https://ecf.ca8.uscourts.gov/opndir/16/11/153728P.pdf)
- [17 U.S.C. § 103 (works incorporating preexisting material) and § 106(2) (derivative works right), Cornell LII](https://www.law.cornell.edu/uscode/text/17/106)
- [Harvard Journal of Law & Technology Digest, "Warner Bros. Entm't v. X One X Productions: Eighth Circuit Holds that Use of Public Domain Material Infringes Film Copyright"](https://jolt.law.harvard.edu/digest/warner-bros-entm-e2-80-99t-v-x-one-x-productions)
- [Loeb & Loeb LLP, case summary of the 2011 decision](https://www.loeb.com/en/insights/publications/2011/07/warner-bros-entertainment-et-al-v-x-one-x-produc__)
- [Stanford Copyright & Fair Use Center, case page for Warner Bros. v. X One X Productions](https://fairuse.stanford.edu/case/warner-bros-entertainment-inc-et-al-v-x-one-x-productions-et-al/)
- [IPWatchdog, "8th Cir. decision upholds injunction against merchandiser using famous Warner Bros. images" (Nov. 28, 2016)](https://ipwatchdog.com/2016/11/28/8th-cir-upholds-injunction-against-merchandiser-using-famous-warner-bros-images/)