Dorothy’s ruby slippers, Frankenstein’s neck bolts and Snow White’s blue and yellow dress may be indelible parts of their characters, but for studio lawyers, they are elements of a legal minefield.
Those features appeared in the classic film versions — MGM’s 1939 “The Wizard of Oz,” U’s 1931 “Frankenstein” and Disney’s 1937 “Snow White” — but not in the public domain literary works by L. Frank Baum, Mary Shelley and the brothers Grimm.
As studios increasingly pursue fairy tales, fantasies and other classics in the public domain, they have to contend with visual images, character traits and plot points that have become part of the public imagination — often elements that fall under copyright.
“You would be surprised by the features that the public associates with a character(that) are actually depictions (created by) the studio, and not the original source material,” says Larry Iser of Kinsella, Weitzman, Iser, Kump and Aldisert.
Ken Basin of Greenberg Glusker notes that a new project based on a public domain property that has already been adapted must be careful to draw from the original work and not the adaptation. “Dorothy’s slippers in the novel are silver,” Basin says. “But MGM’s movie producers wanted to show off Technicolor, so they made the slippers ruby to make the Technicolor pop.”
That means that future depictions of Dorothy not sanctioned by Warner Bros., which owns the property, had better find a silver handbag for those matching shoes.
If that sounds like a no-brainer to avoiding a copyright infringement claim, things get murkier when it comes to trademark. When Disney trademarked “Oz, the Great and Powerful,” its upcoming adaptation of a Baum work, it sought protection for the phrase for merchandising. Just a few weeks later, Warner Bros. trademarked the similar sounding “The Great and Powerful Oz.”
Basin calls trademark a much less obvious area of the law, but one that the Supreme Court has warned could not be used to create a “perpetual copyright.” A 2003 Supreme Court decision, Dastar vs. 20th Century Fox Film Corp., rejected the studio’s claims that a video firm which repackaged a World War II documentary series that had fallen into the public domain violated the Lanham Act — the principal federal statute that spells out what constitutes trademark infringement — even though the video company passed off the project as its own. Justice Antonin Scalia, in writing the 8-0 decision, warned of a “species of mutant copyright law that limits the public’s federal right to ‘copy and to use’ expired copyrights.”
Says Basin, “The fundamental question is, ‘Are consumers going to be confused about the origin of the goods or service?'”
Nevertheless, other decisions have bolstered Warner Bros.’ protections for some of its classic characters. The studio largely prevailed in a 2011 8th Circuit Court decision, which held that even though the publicity material a merchandiser used to create a line of “Wizard of Oz” products had fallen into the public domain, it still infringed on the studio’s copyrights in some instances because it evoked the film.
“Like the juxtaposition of an image and a phrase, a composite work combining two or more separate public-domain images (such as Judy Garland as Dorothy combined with an image of the Emerald City) also adds a new increment of expression of the film character that was not present in the separate images,” the court ruled. “Accordingly, products combining extracts from the public domain materials in a new arrangement infringe the copyright in the corresponding film.”
This doesn’t prevent Disney from going all out in merchandising its Oz, but it sure let’s them know that one studio’s legal team is on alert.
The makers of the current “Hotel Transylvania” were dealing with characters in the public domain, even though most folk’s image of Frankenstein and Dracula is based upon U’s movies in the 1930s (see separate story). And when contemporary audiences think of Snow White, they can recite the names of several of the seven dwarfs. But both recent versions of the tale, Relativity’s “Mirror Mirror” and U’s “Snow White and the Huntsman,” had to scrupulously avoid dwarfs that resemble the Disney crew.
Italians have their own images of “Pinocchio,” because Carlo Collodi’s tale is a national treasure and generations have grown up with old-time illustrations and the puppets that inspired by them. But the rest of the world is more familiar with Disney’s version, and any new visual images of the puppet and Jiminy Cricket need to avoid infringing on the Disney version. Disney’s stamp has claimed the hearts of dozens of other fairy tales, including “Alice in Wonderland,” “Wind in the Willows,” “Cinderella” and “Beauty and the Beast.”
Probably the most famous line in all the film versions of Tarzan is “Me Tarzan. You Jane.” But the King of the Jungle’s pidgin English and his chimp companion Cheeta were inventions of MGM, not Edgar Rice Burroughs. In the original novels, Tarzan was descended from British nobility and was multilingual.
So when marketers are beating their chests over a new ape-man, he’d better not remind anyone of Johnny Weissmuller.