When Does Copyright Law Cease Protecting a Fictional Character? (Part II)

A previous post discussed litigation related to the current status of Sir Arthur Conan Doyle's copyright claims to the fictional characters of Sherlock Holmes and Dr. Watson, given that several works had passed into the public domain as a matter of US copyright law.

Below is a further discussion about the power of US copyright law to protect fictional characters that have lapsed into the public domain, but which have been developed through subsequent film adaptations and through the creation of "derivative works."

These legal issues are best illustrated by the murky copyright status of the iconic characters in the Wizard of Oz.

In May 1900, author L. Frank Baum published The Wonderful Wizard of Oz, a fantasy children's novel that included illustrations by W.W. Denslow.  The book includes the familiar story describing how Dorothy, the Tin Man, Scarecrow and the Cowardly Lion traveled down the yellow brick road together to see the Wizard so Dorothy could return home. Notably, in the original 1900 text, Dorothy's slippers are silver.

Baum's seminal book was famously adapted to movie screens in the now iconic 1939 masterpiece film starring Judy Garland. This film made revolutionary use of Technicolor, which inspired a change to the color of Dorothy's slippers to ruby red.  Indeed, Dorothy's red slippers would later become enshrined in the Smithsonian Institution, as a testament to the importance that this particular prop played in American culture.

Although the children's novel The Wonderful Wizard of Oz lost its US copyright protection in 1956, only the original novel by Baum and illustrations by Denslow have entered the public domain.

However, all the later-created derivative works based on the novel are still eligible for independent copyright protection.

Section 101 of the Copyright Act defines a "derivative work" as "[a] work based upon one or more preexisting works" or "[a] work consisting of editorial revisions, annotations, elaborations, or other modifications, which, as a whole, represent an original work of authorship."  Therefore, the 1939 film in which Dorothy wore ruby red slippers is a derivative work that is still protected by US copyright, valuable rights currently held by Warner Brothers.

Slight differences between the public domain novel and the still-copyrighted movie are not an academic issue to those seeking to make any adaptation of the Wizard of Oz plotline without a license from Warner Brothers.  And that includes Disney.

Indeed, just last week, Disney aired a brand new adaptation of the original Wizard of Oz called the Wizard of Dizz.  In this version, Mickey Mouse and the Mickey Mouse Clubhouse troupe are recast as the characters from The Wonderful Wizard of Oz, with Minnie Mouse as Dorothy, and Professor Von Drake as the Wizard.

While the Disney adaptation is potentially protected free speech as a form of parody, a subtle but important detail is the fact that the ruby red slippers worn by Minnie Mouse are replaced by green shoes.

Was this detail an act of literary license on Disney's part, or part of a clever legal strategy to avoid a claim of copyright infringement? 

In fact, Warner Brothers had litigated the status of the Wizard of Oz just two years ago, so it is more likely the latter.

In their most recent squabbles over this issue, Warner Brothers took the legal position that the characters from the film had so altered public perception, that virtually ANY unauthorized use of the characters would violate the film studio's copyright.

And (believe it or not) the 8th Circuit Court of Appeals agreed, issuing a decision that left more questions than it answered.

Subsequently, additional unauthorized renditions including Oz the Great and Powerful starring James Franco, stirred up even more controversy, as Disney riled Warner Brothers by filing for trademarks on that name.

In conclusion, when fictional characters are first described in a text that falls into the public domain, the status of the original copyright does not necessarily make these characters free for the public to use without license.

Further, in Part III, we will discuss how trademarks and trade dress can theoretically create a perpetual "brand" surrounding a character that otherwise would be in the public domain as a matter of copyright law.

Disney Offends Latinos With Bid to Trademark Traditional Holiday Name

On May 1, Disney filed an application with the U.S. Patent and Trademark Office to protect the phrase "Día de los Muertos," or "Day of the Dead," across multiple platforms. 

Disney subsidiary Pixar is apparently releasing a film -- with the working title "The Untitled Pixar Movie About Dia de los Muertos" -- this fall.

Here's the issue -- Día de los Muertos is a traditional holiday celebrated on November 1 and 2 in Mexico and across Latin America.

People honor the lives of lost family members or friends by building altars, holding processions, decorating gravesites and placing offerings for loved ones.

Based on its trademark application, Disney hoped to secure the rights to the title "Day of the Dead" and such themed merchandise as fruit preserves, fruit-based snacks, toys, games, clothing, footwear, backpacks, clocks and jewelry.

But the Latino community has raised serious questions about the application on social media.

On Tuesday, a petition was started on Change.org to stop the Disney effort, stating that the attempt to trademark Día de los Muertos was "cultural appropriation and exploitation at its worst." As of today, the petition has over 21,000 signatures.

In 2003, the Day of the Dead celebration was entered on the UNESCO list of the Masterpieces of the Oral and Intangible Heritage of Humanity.

"The Indigenous Festivity dedicated to the Dead are deeply rooted in the cultural life of the indigenous peoples of Mexico," UNESCO has said.

But after the backlash, Disney withdrew its application this week.

"The trademark [was] intended to protect any potential title of the movie or related activity," a spokeswoman for Disney said. "Since then, it has been determined that the title of the film will change, and therefore we are withdrawing our application for trademark registration."

Disney did not comment on whether social media reactions directly led to the decision to withdraw the application.  This isn't the first time Disney has sought to trademark a controversial phrase.

In 2011, it tried to secure "SEAL Team Six," the Navy SEAL team that captured and killed Osama bin Laden, seeking exclusive rights for use on items from video games to backpacks. However, after receiving an overwhelming response from critics, Disney withdrew the application "out of deference to the Navy."