In the classic 1939 film, The Wizard of Oz, Warner Brothers Studios (WB) taught us the value of persistence. Even if someone tells you that “nobody sees the Wizard!” as long as you are persistent (and accessorize correctly) you can not only see the Wizard, but he will give you free stuff. However, based on WB’s recent legal positioning, the movie studio has apparently decided that no one can see the Wizard, or even say his name.
In October, WB filed a trademark application for “The Great and Powerful Oz.” The timing of their application is significant because only one week earlier, Disney filed a trademark application for the same phrase. Because Disney filed its application first, the United States Patent and Trademark Office (USPTO) suspended WB’s application.
This is good news for Disney, because the studio is expected to release a reboot of the story next year. Oz, the Great and Powerful, directed by Sam Raimi and starring James Franco, is supposed to be a prequel to Frank L. Baum’s original book, The Wonderful Wizard of Oz (1900). The movie is expected to follow the Wizard as he arrives in Oz and becomes the ruler. The events in the new film are supposed to take place before Dorothy lands in Oz.
That Disney’s adaptation is based on the book, and not the movie, is significant. The book resides in the public domain and accordingly, Disney is free to use it without seeking permission from anyone or paying royalties. So, even though WB has full copyright interests in the 1939 film and its characters, anyone may use the book’s story and characters however they see fit. Disney’s lawyers are already preparing for the impending court battle with WB, claiming that the story and characters for its upcoming reboot are “taken directly from the book, which … is in the public domain and out of copyright and a very public story, not created by [Warner Bros.]“)
Further complicating this issue is a recent 8th Circuit case in which WB successfully sued a nostalgia merchandising company, AVELA. AVELA was putting images of famous characters from the book and film on shirts, lunch boxes, and other collectibles. AVELA tried to defend its use by arguing, like Disney, that its use was based on the characters from the book and not the film. However, the justices found that the film characters could be copyrighted even if the characters were based on a prior work. According to the decision:
“We agree with the district court’s conclusion that Dorothy, Tin Man, Cowardly Lion, and Scarecrow from The Wizard of Oz … each exhibit “consistent, widely identifiable traits” in the films that are sufficiently distinctive to merit character protection under the respective film copyrights….Put more simply, there is no evidence that one would be able to visualize the distinctive details of, for example, Clark Gable’s performance before watching the movie Gone with the Wind, even if one had read the book beforehand. At the very least, the scope of the film copyrights covers all visual depictions of the film characters at issue, except for any aspects of the characters that were injected into the public domain by the publicity materials.”
Whether other circuits agree to follow the 8th Circuit’s reasoning or not, this reasoning appears to give WB an advantage over Disney. As to whether WB will seek to aggressively enforce its copyright interests against Disney, it is worth noting that in the last few years, WB has sued the following companies for copyright infringement:
Wicked ‘Wiches Wickedly Delicious Sandwiches, a California restaurant;
Halloween costumes under the “Wizard of Oz” brand name;
Wine brands including, “Dorothy of Kansas and Toto Wine,” “Ruby Slippers Wine,” “Broomstick Wine,” “The Lion’s Courage,” and “Flying Monkey Wine;
“If I Only Had A Brain,” a neuroscience book.
Based on this list, Disney’s best case scenario might be to delay any ruling until after its film is released. Moral of the story? If you feel like trying to be clever and use the word “Oz” to market your product, remember that the only thing waiting for you at the end of the yellow brick road is a lawsuit.
* Rob Abb is a third-year law student at Wake Forest University School of Law and is President of the International Law Society. He holds a Bachelor of Arts and Science in Political Science and Asian Studies from the University of Michigan. Upon graduation in 2012, Mr. Abb plans to practice international law. He is spending his last semester in Washington, D.C., interning at the Federal Communications Commission.