Yet again, a movie industry giant takes on the little guy and wins. A recent lawsuit filed by Warner Bros. raises public domain issues within copyright provisions that could have some pretty interesting consequences for artists. On the other hand, the ruling also suggests that artists can potentially benefit from the court’s decision not to allow merchandise distributors to use copyrighted images in their products. Leo Valencia has made a living off selling merchandise from popular films like Gone With the Wind, The Wizard of Oz and Tom & Jerry, using images of popular characters that are about as integrated into the American vernacular as peanut butter and jelly sandwiches. Valencia’s t-shirts, coffee mugs, and other memorabilia were sold through several different channels. About 10 years ago, however, Warner Bros. decided that Valencia’s use of those images violated their copyright and intellectual property and filed a lawsuit against, citing just that. Warner Bros. stated that copyright infringement occurred when the publicity images were used on the products, including in three-dimensional objects, such as a statuette or action figure, or combined with other images or text to create a composite image. In his defense, Valencia claimed that he was merely lifting images from publicity campaigns launched by the studio to promote the respective films.
According to Valencia, his use of images that had already appeared in posters and lobby cards didn’t constitute a violation of copyright law, as those images were already in the public domain. After a lot of back and forth in court, a judge ultimately sided with Warner Bros. and forced Valencia to fork up more than $2.5 million to rectify his violation of Warner Bros. copyright. So, what does that ruling mean for artists? In order to find out, we’ll need to review copyright law and its duration, while analyzing whether Valencia’s use of the images constituted fair use.
Mickey Mouse Copyright Law and the Public Domain
Copyright law protects original works of authorship, fixed in a tangible medium, with at least a limited degree of creativity. For example, if I write a screenplay, I am automatically entitled to copyright protection for that work. These protections mean that no one can reproduce, distribute, make derivatives of, or sell copyrighted work, without express permission from the copyright owner. As a movie studio, Warner Bros. has certain copyright protections in their films, which they share with writers, actors, and directors alike. As such, they do have control over how elements of their films are used – from characters to storylines and scenery, anyone attempting to use or build upon a Warner Bros. film will need to seek permission from the studio first, or risk being exposed to a copyright lawsuit. Copyright protections do have some limitations, however – namely, time. Copyright protection doesn’t last forever, after all, and once it expires, works enter into the public domain. Which is exactly why big money players like Disney have spent a fortune lobbying for its extension time and again (more on that later).
At the outset of the creation of U.S. Copyright Law in 1790, copyright law protected the work for just 14 years from the date of creation, with the option to extend the term by another 14 years if the copyright holder was still alive (it’s worth noting that only a copyright holder can file for an extension of copyright duration). By 1831 it was changed to 28 years with a 14-year renewal and in 1909, copyright duration became 28 years with a 28-year renewal. Copyright duration law went on as so until the Copyright Act was reformed in 1976. In that new iteration, copyright protections were increased to the life of the author plus 50 years. Meaning that, copyright protection would extend over a work for an indefinitely long period of time. For works authored by corporations (i.e. Warner Bros. or Disney), the 1976 legislation also granted a retroactive extension for works published before the new system took effect. The maximum term for already-published works was lengthened from 56 years to 75 years, though anything published in 1922 or before was in the public domain. Anything after that would still be under copyright.
We call it Mickey Mouse copyright law because the beloved Disney character was a driving force behind the revision of copyright’s duration. Disney lobbied and led the revision of the law when its beloved Mickey Mouse character was due to enter the public domain. Interestingly enough, Disney was behind another revision in 1998, when the Sonny Bono Copyright Term Extension Act, which lengthens copyrights for works created on or after January 1, 1978 to “life of the author plus 70 years,” and extends copyrights for corporate works to 95 years from the year of first publication, or 120 years from the year of creation, whichever expires first.
Let’s use Gone With The Wind as an example. Gone with the Wind was created in 1939, which means that in 1976, it was not protected by copyright law since the duration at the time was only 28 years. However, the film’s creators could have likely applied for the 28-year extension, which they likely did. And once the 1976 Act was passed, the film would have been grandfathered in if it was still currently protected by copyright law. Since the characters from Gone with the Wind are protected by copyright, it’s quite certain that Valencia’s use of them would be considered copyright infringement. But Valencia did have one card to play – he alleged that his use of the images would be considered fair use.
Fair Use Images: How Does it Work?
The only exception to this rule is the Fair Use doctrine, which allows you to use copyrighted work for certain purposes. The fair use doctrine is outlined by U.S. copyright laws, and the U.S. Copyright Office has even created a Fair Use Index of the overwhelming case law on the subject. Courts measure fair use by these four prongs:
- the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
- the nature of the copyrighted work;
- the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
- the effect of the use upon the potential market for or value of the copyrighted workcopyright.gov/fair-use/fair-
As we’ve outlined in our e-book, fair use comes into play in various scenarios in which a work may be excused from copyright infringement liability because the use of the copyrighted material can be considered fair use. Andy Warhol’s use of popular iconography, such as the Campell’s Soup can, for example, are considered fair use images because his work was transformative of the original intention with which the product was created. However, courts tend to be particularly strict on whether or not something can be considered a fair use image based on whether or not the work was used for commercial purposes. Generally speaking, the courts won’t allow someone to profit from someone else’s creative work product without ensuring that the original creator is adequately compensated. Valencia claimed that because the images had already been used for publicity material, that they should be considered fair use images and available to the public domain. That is simply not the case, as there is no basis in his argument to suggest that publicity images are considered fair use images under copyright law. As a result, the court agreed with Warner Bros. and awarded damages to the media giant.
What can artists learn from this lesson? On the one hand, the court’s decision to make Valencia pay up is good news for artists, who often find themselves being ripped off by product websites like Café Society and Etsy, who stand behind a fair use images doctrine to engage in these types of practices. But on the other hand, this decision is another victory for a media giant and a loss for the little guy – and since very rarely do artists have the funds required to institute the same type of lawsuit to defend their copyrights, it’s unlikely that this ruling will do much to change the landscape for artists.