Who owns the ruby slippers? An analysis of the impact of Warner Bros. v. X One X on visual depictions in copyright law.

• Author: Aboud, Leslie

1. Introduction II. Background A. Brief History of Copyright Law B. Derivative Works C. Public Domain 1. Silverman v. CBS Inc 2. Pannonia Farms v. USA Cable D. Fair Use E. Warner Bros. v. X One X 1. The Copyrights and Works in Question 2. The Suit 3. Arguments on Appeal 4. Eighth Circuit Opinion III. ANALYSIS A. Visual Depictions of Literary Public Domain Characters B. Consistency of Visual Depictions C. Use of Public Domain Visual Depictions D. Effects on Creativity IV. Recommendation A. Corporations Should Rely on Licenses Instead of the Public Domain B. The Supreme Court Should Clarify the Copyrightability of Visual Depictions V. Conclusion I. INTRODUCTION

   Copyright law is an inherent aspect of the most individual and valued of democratic rights: creativity. It protects the rights of the creative, provides art to the public, and promotes further development of society. Naturally, such a vast area of law has ambiguities and shortcomings. This Note analyzes the newest of these ambiguities-visual depictions in copyright law--in the recent Eighth Circuit case of Warner Bros. Entertainment, Inc. v. X One XProductions. (1)

   The copyrightability of visual depictions remains an underdeveloped subset of copyright law. In the Warner Bros. decision, the Eighth Circuit attempted to clarify which visual elements of popular classic films are under copyright and which elements are available through the public domain. (2) However, the case served less as a clarification and more as an avenue to further questions and litigation.

   To fully recognize the impact of Warner Bros., an understanding of the development of copyright law is necessary. Therefore, Part II of this Note outlines the history of copyright law and how it developed into the substantial body of law that exists today. This includes the different rights preserved for copyright owners, defenses against infringement, and the state of the law prior to and following the Warner Bros. decision. Part III analyzes the Eighth Circuit's opinion, particularly noting the inconsistencies with prior case law. Finally, Part IV looks at the impact of this decision on movie producers and film companies as well as the need for further clarification of the law.

2. Background

   Before diving into the impact of Warner Bros. v. X One X, it is important to understand the history and development of copyright law. Part II.A provides a brief history of copyright law, from Article I, Section 8, cl. 8 of the Constitution to the 1998 Digital Millennium Copyright Act. As the disputed works in Warner Bros. are essentially derivative works, (3) Part II.B defines derivative works and the rules regarding their creation. Part II.C explains the importance of the public domain and what types of works are available outside of copyright, and Part II.D looks at the very common defense of fair use in copyright infringement suits. Finally, Part II.E discusses the Warner Bros. case itself, explaining the history of the works in question, the parties' arguments, and the ultimate Eighth Circuit decision.

   1. Brief History of Copyright Law

      Copyright is defined as "the exclusive right of printing or otherwise multiplying copies of an intellectual production, and of publishing and vending the same; the right of preventing all others from doing so." (4) The importance of copyright law in society is manifested by its inclusion in Article I of the U.S. Constitution, making U.S. copyright law as old as the country itself. (5) The Patent and Copyright Clause of the U.S. Constitution states that "Congress shall have the power ... [t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." (6)

      Congress enacted the first Copyright Act in 1790 (1790 Copyright Act) "for the encouragement of learning, by securing the copies of maps, charts, and books, to the authors and proprietors of such copies." (7) The first Act limited copyrights specifically to maps, charts, and books. (8) In addition, copyright holders had the sole right to print, reprint, publish, or vend the copyrighted material for 14 years, starting from the time the clerk of the district court recorded the copyright. (9) The copyright owner could extend the copyright for an additional 14 years, provided the owner recorded the copyright for a second time at least six months prior to the expiration of the first term. (10) Infringement of copyright under the original 1790 Copyright Act was punishable by forcing the offender to "forfeit all and every copy and copies" of the copyrighted material and pay a fine of "fifty cents for every sheet which shall be found in his or their possession." (11) Today, that amount has an income value of approximately $508.00 per sheet. (12)

      After its formulation, Congress began to alter the 1790 Copyright Act almost immediately. (13) In 1802, Congress expanded the 1790 Copyright Act to cover "the arts of designing, engraving, and etching historical and other prints." (14) In 1831, Congress granted music protection from unauthorized printing and vending. (15) Congress also extended the first term of copyrights from 14 to 28 years and provided the possibility of renewal for an additional 14 years. (16) Throughout the 19th century, copyright protection was extended to dramatic compositions (1856), photographs and photographic negatives (1865), works of art (1870), and the public performance of music (1897). (17)

      Congress enacted a second general revision of copyright law in 1870, which centralized all copyright activities in the Library of Congress and reserved the right to create derivative works to the original copyright holders. (18) In 1909, Congress made a third general revision of copyright law, which changed the statutory protection term for a copyrighted work from the date filed with the clerk of the district court to the publication date. (19) The 1909 Copyright Act also extended the renewal period of a valid copyright from 14 to 28 years (20) and added a notice requirement to obtain copyright protection. (21)

      Throughout the 20th century, Congress continued to extend copyright protection to various classes of artistic works. (22) Congress added motion pictures, which had been previously registered as photographs, as a class of protected works in 1912 and granted protection to recording and performing rights in 1953. (23) In 1976, Congress again extended the term of a copyright from 28 years plus a possible 28-year renewal to the lifetime of the author plus 50 years. (24) In 1982, Congress amended 17 U.S.C. [section] 506(a) to make willful infringement a criminal offense. (25)

      Despite the constant evolution of copyright law, a drastic change occurred in 1998 when Congress passed two substantial copyright acts. (26) First, Congress passed the Sonny Bono Copyright Term Extension Act, (27) which extended the copyright term an additional 20 years.28 Therefore, under current law, a copyright remains valid for the author's lifetime plus an additional 70 years. (29) This extension protects any copyrighted work for roughly a century before it can enter the public domain. (30)

      Congress's passage of the Digital Millennium Copyright Act (DMCA) in 1998 prompted the second expansion of copyright law. (31) The DMCA amended portions of Title 17 of the U.S. Code to bring U.S. copyright protection into the 21st century by protecting digital media. (32) President Clinton signed the DMCA into law on october (28), 1998, (33) and the DMCA had no retroactive effect. (34) The DMCA prohibits circumvention of anti-piracy measures companies have included in commercial software; outlaws the creation, sale, or dispersal of code-cracking devices; and limits Internet service provider liability for the transmission of information. (35)

   2. Derivative Works

      Cases in which a third party wishes to create a derivative work often dispute what falls under the public domain and what remains copyrighted. (36) United States copyright law defines a derivative work as "a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted." (37) The copyright owner has the exclusive right to prepare derivative works based upon his or her copyrighted work. (38) However, a copyright on a derivative work only protects the new material in the work and not any of the matter derived from the original underlying work. (39) Any creation of a derivative work without the original author's authorization constitutes copyright infringement. (40)

      Sylvester Stallone asserted this right in 1989 in Anderson v. Stallone. (41) After the success of the films Rocky I, Rocky II, and Rocky III, Timothy Anderson wrote a 31-page screenplay for a version of Rocky IV he hoped Stallone and Metro-Goldwin-Mayer (MGM) would use for an upcoming sequel. (42) Anderson presented the script to Stallone and signed a release relieving MGM from any liability stemming from its use of the screenplay. (43) After the Rocky IV movie debuted, Anderson brought suit against Stallone and MGM for breach of contract and copyright infringement. (44) In Anderson, the district court held that because Anderson's Rocky IV screenplay was an unauthorized derivative work, no amount of it was entitled to copyright protection, and therefore, he had no claim for infringement.

   3. Public Domain

      The "public domain" consists of materials not under copyright. (45) These materials were either published before the existence of copyright law, have an expired copyright, or had an owner who forfeited copyright protection. (46) once in the public domain, the public may copy such material without being subject to infringement prosecution. (47) Additionally, once an element of creativity enters the public...