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Copyright Protection Upheld for 'Wizard of Oz' and 'Tom & Jerry' Merch

By George Khoury, Esq. on November 03, 2016 | Last updated on March 21, 2019

After a decade of fighting it out in court, Warner Bros. won the latest appeal confirming that the merchandising of various works, including Gone with the Wind, Tom & Jerry, and the Wizard of Oz, by a company that made figurines, snow globes and t-shirts, violated copyright and trademark law. The case, initially filed in 2006, was appealed twice, after each time the District Court ruled in favor of Warner Bros.

At issue in the most recent appeal was whether the District Court's monetary awards, dispositive ruling and granting of a permanent injunction were proper. The Appeals Court upheld the entire ruling of the lower court in favor of Warner Bros.

Reproducing the Public Domain

The companies that Warner Bros. sued had taken promotional materials that were not copyrighted and used those promotional materials as the basis to create merchandise such as t-shirts and figurines. Additionally, on some merchandise, phrases from the movies would be printed next to the un-copyrighted images, or the images would be mixed together, or used as the basis to create figurines or snow globes.

Although the images the merchandising company used were not copyrighted, the court ultimately ruled that anything except an exact reproduction of the un-copyrighted promotional posters ran afoul of both trademark and copyright law. The court reasoned that the studio has a continued interest in the characters and films, and while the images being reproduced are not copyrighted, creating anything except exact replicas of the non-copyrighted pieces infringed on the studio's rights.

This decision has significant implications for many small to mid-size businesses that rely on un-copyrighted promotional materials to create merchandise for sale.

Appeal Upholds $2.6M and Permanent Injunction

As part of the lower court's ruling, Warner Bros. was awarded approximately $2.6 million in damages stemming from the violations, and additionally issued a permanent injunction preventing the company from making or selling anything except the exact reproductions of the un-copyrighted promotional posters.

As well as the damages award and injunction, the lower court awarded attorney fees to Warner Bros. However, the amount of attorney fees to be awarded has not been determined yet. In a case that has been litigated since 2006, and gone through 2 appeals, it will not come as a surprise if the attorney fees are determined to be in excess of the damages award.

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