WARNER BROS. ENTERTAINMENT v. X ONE X PRODUCTIONS
644 F.3d 584 (2011)
WARNER BROS. ENTERTAINMENT, INC.; Warner Bros. Consumer Products, Inc.; Turner Entertainment Co., Appellees,
v.
X ONE X PRODUCTIONS, doing business as X One X Movie Archives, Inc.; A.V.E.L.A., Inc., doing business as Art & Vintage Entertainment Licensing Agency; Art-Nostalgia.com, Inc.; Leo Valencia, Appellants.
No. 10-1743.
United States Court of Appeals, Eighth Circuit.
Submitted: February 24, 2011.
Filed: July 5, 2011.
Sondra Hemeryck, argued, Chicago, IL, Elizabeth C. Carver, St. Louis, MO, Frederick J. Sperling, Chicago, IL, on the brief, for appellee.
Before GRUENDER, BENTON, and SHEPHERD, Circuit Judges.
GRUENDER, Circuit Judge.
A.V.E.L.A., Inc., X One X Productions, and Art-Nostalgia.com, Inc. (collectively, "AVELA") appeal a permanent injunction prohibiting them from licensing certain images extracted from publicity materials for the films Gone with the Wind and The Wizard of Oz, as well as several animated short films featuring the cat-and-mouse duo "Tom & Jerry." The district court issued the permanent injunction after granting summary judgment in favor of Warner Bros. Entertainment, Inc., Warner Bros. Consumer Products, Inc., and Turner Entertainment Co. (collectively, "Warner Bros.") on their claim that the extracted images infringe copyrights for the films. For the reasons discussed below, we affirm in part, reverse in part, and remand for appropriate modification of the permanent injunction.
I. BACKGROUND
Warner Bros. asserts ownership of registered copyrights to the 1939 Metro-Goldwyn-Mayer ("MGM") films The Wizard of Oz and Gone with the Wind. Before the films were completed and copyrighted, publicity materials featuring images of the actors in costume posed on the film sets were distributed to theaters and published in newspapers and magazines. The images in these publicity materials were not drawn from the film footage that was used in the films; rather, they were created independently by still photographers and artists before or during production of the films. The publicity materials, such as movie posters, lobby cards, still photographs, and press books, were distributed by the original rights-holder, MGM's parent company Loew's, Inc.,1 and did not comply with the copyright notice requirements of the 1909 Copyright Act, 17 U.S.C. §§ 1 et seq. (1976) (superseded effective 1978). Warner Bros. also asserts ownership of registered copyrights to various animated Tom & Jerry short films that debuted between 1940 and
1957. Movie posters and lobby cards for these short films also were distributed without the requisite copyright notice. As a result, Warner Bros. concedes that it has no registered federal copyrights in the publicity materials themselves.2 AVELA has acquired restored versions of the movie posters and lobby cards for The Wizard of Oz, Gone with the Wind, and several Tom & Jerry short films. From these publicity materials, AVELA has extracted the images of famous characters from the films, including Dorothy, Tin Man, Cowardly Lion, and Scarecrow from The Wizard of Oz; Scarlett O'Hara and Rhett Butler from Gone with the Wind; and the eponymous Tom and Jerry. AVELA licenses the extracted images for use on items such as shirts, lunch boxes, music box lids, and playing cards, and as models for three-dimensional figurines such as statuettes, busts, figurines inside water globes, and action figures. In many cases, AVELA has modified the images, such as by adding a character's signature phrase from the movie to an image modeled on that character's publicity photograph. In other cases, AVELA has combined images extracted from different items of publicity material into a single product. In one example, a publicity photograph of Dorothy posed with Scarecrow serves as the model for a statuette and another publicity photograph of the "yellow brick road" serves as the model for the base of that same statuette.
Warner Bros. sued AVELA, claiming that such use of the extracted images infringes the copyrights for the films. Warner Bros. also asserted claims of, inter alia, trademark infringement and unfair competition. AVELA contended that the distribution of the publicity materials without copyright notice had injected them into the public domain, thus precluding any restrictions on their use. On cross-motions for summary judgment, the district court granted summary judgment to Warner Bros. on the copyright infringement claim and denied summary judgment to both parties on the trademark infringement and unfair competition claims.
The district court's analysis did not require it to determine expressly whether the publicity materials had reached the public domain. Instead, the district court held that, even if the images were extracted from public domain materials, AVELA's practice of modifying the extracted images for placement on retail products constituted infringement of the film copyrights. Warner Bros. averred that it would not assert the copyrights against unaltered reproductions of individual items of publicity material, eliminating any need to resolve whether the publicity materials were in the public domain.
1. Loew's obtained an interest in the copyright to Gone with the Wind, as well as the right to distribute the film, from producer David O. Selznick.
2. Some of the still photographs for The Wizard of Oz and a few of the movie posters for the Tom & Jerry films complied with copyright notice provisions, but those copyrights were not timely renewed.
3. Although a Second Amended Complaint without the documents attached was operative at the time of the summary judgment motion, we have recognized that documents attached to a superseded original complaint are part of the record before the district court. See, e.g., Muhammed v. DEA, Asset Forfeiture Unit, 92 F.3d 648, 654 (8th Cir. 1996) (holding that an exhibit attached to the plaintiffs' original complaint must be considered on a motion to dismiss, despite the fact that the plaintiffs' amended complaint did not include or cite the contents of that exhibit); Less v. Lurie, 789 F.2d 624, 625 (8th Cir.1986) (considering a partnership agreement attached only to plaintiffs' initial complaint in considering a motion to dismiss plaintiffs' Second Amended Complaint).
4. The current version of Rule 56 no longer requires attachment of a sworn or certified copy of each paper referenced in an affidavit. See Fed.R.Civ.P. 56(c)(4). Instead, a party that wishes to challenge an affiant's reliance on an unattached document may object that the material "cannot be presented in a form that would be admissible in evidence." Fed. R.Civ.P. 56(c)(2).
5. Notably, the National Screen Agreement submitted into the record by Warner Bros. covered publicity materials for films produced between July 8, 1937 and December 31, 1939. Because the Tom & Jerry short films at issue here debuted between 1940 and 1957, and Warner Bros. asserts no later agreements or additional grounds for finding a "limited publication," Warner Bros. essentially concedes that the Tom & Jerry publicity materials are in the public domain.
6. Warner Bros. argues that the distribution to newspapers and magazines is irrelevant in this case because AVELA extracts images only from restored movie posters and lobby cards, not from newspapers and magazines. Experts for both parties agreed, however, that the materials provided to theaters, on the one hand, and the materials provided to newspapers and magazines, on the other, were drawn from a single, comprehensive set of publicity images created for the sole purpose of promoting each film. Both avenues of distribution would be relevant to a reasonable outsider trying to discern Loew's intent to place limits on reproduction, distribution, and sale when it put these publicity materials in others' hands without copyright notice. See Nucor Corp., 476 F.2d at 390 n. 7; Milton H. Greene Archives, 320 Fed.Appx. at 573 (affirming, where publicity materials were distributed variously "to magazines, newspapers, and local theaters," that a general publication still occurred with respect to the pictures that "were not used [by the recipients] as broadly as the others or at all" because the materials were made available with no limits on diffusion, reproduction, or distribution).
7. Warner Bros. also argued in district court that the publicity materials are protected by the film copyrights as derivative works of the films. Under the 1909 Copyright Act, what came to be known as "derivative works" were defined as "[c]ompilations or abridgements, adaptations, arrangements, dramatizations, translations, or other versions of works in the public domain or of copyrighted works...." 17 U.S.C. § 7 (repealed effective 1978); see Shoptalk, Ltd. v. Concorde-New Horizons Corp., 168 F.3d 586, 591 (2d Cir.1999). Here, it is undisputed that the publicity materials were not based on film footage used in the copyrighted films, but rather on still photographs and artists' renderings created independently from the film footage. Because they were not adapted or otherwise created from the films, the publicity materials cannot be "derivative works" of the films.
8. Of course, the presence of distinctive qualities apart from visual appearance can diminish or even negate the need for consistent visual appearance. See, e.g., Metro-Goldwyn-Mayer, 900 F.Supp. at 1296 (holding that variations in the visual appearance of James Bond did not negate character protection in light of his many distinctive and consistently displayed character traits; the fact that "many actors can play Bond is a testament to the fact that Bond is a unique character whose specific qualities remain constant despite the change in actors").
9. The record shows that these extreme color variations resulted from the practice of using artists to hand-color still photographs originally taken in black-and-white (because color photography was relatively new and expensive). The coloration artists often were left to their own discretion in choosing colors for each photograph.
10. This principle would not apply if the new surface itself is independently evocative of the film character. For example, reproducing a publicity image of Judy Garland as Dorothy on a ruby slipper might well infringe the film copyright for The Wizard of Oz.
11. Many of the phrases drawn from the underlying books are modified to some degree in the corresponding films, such as contracting "There is" to "There's" in the cited example. The parties dispute whether such modified phrases are original to the films, and thus within the scope of the film copyrights, or still recognizable as phrases drawn from the books, and thus outside the scope of the film copyrights. We need not resolve that question because we hold that, even if the phrases taken alone are outside the scope of the film copyrights, the juxtaposition of the phrases with images from the publicity materials is an infringement of the film copyrights.
12. AVELA does not dispute that a permanent injunction is appropriate to the extent that the AVELA products are found to infringe Warner Bros.'s copyrights.