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Surrender Dorothy: Court Upholds Damages, Injunction for Movie Content Infringement

The US Court of Appeals for the Eighth Circuit affirmed a summary judgment and permanent injunction prohibiting the defendant from licensing images from movies owned by the plaintiff. Warner Bros. Entertainment, Inc., et al. v. X One X Productions, dba X One X Movie Archives, Inc., et al., Case No. 15-3728 (8th Cir., Nov. 1, 2016) (Gruender, J).

Warner Bros. is the owner of the registered copyrights in the movies Gone with the Wind and The Wizard of Oz, and in the “Tom and Jerry” cartoons. Warner Bros. is also the owner of various registered and common law trademarks for characters and images related to the movies. X One X Productions took restored versions of movie posters and lobby cards for the films and extracted images of famous characters, such as Tin Man, Cowardly Lion and Scarecrow. X One X then licensed these images for use on consumer products, such as shirts, lunch boxes, playing cards and action figures. Warner Bros. filed suit asserting copyright and trademark infringement claims.

The district court granted Warner Bros. a summary judgment on its copyright infringement claims and enjoined X One X from using any of the images in any way except for exact duplication of publicity materials in the public domain. X One X appealed.

In an earlier decision in this case, the Eighth Circuit upheld the summary judgment and most of the injunction and remanded the case. On remand, Warner Bros. requested, among other things, damages for its copyright claims and also moved for summary judgment on its trademark infringement and unfair competition claims. The district court awarded statutory damages in the amount of $10,000 per act of infringement for 257 articles, for a total award of $2.57 million. The district court also granted summary judgment with respect to the trademark infringement and unfair competition claims, and issued a permanent injunction prohibiting X One X from licensing any images or phrases from the films or cartoons, allowing for the exact reproductions of public materials in the public domain. X One X again appealed.

In its second consideration of the case, the Eighth Circuit found the $10,000 award per copyright was not unreasonable given that the cases had “tortured and laborious” discovery history, in particular given the intentionally discretionary nature of the statutory damages for copyright infringement. The Court noted that “a substantial damages award necessary to deter future infringement and provide sufficient restitution to the copyright holder is not clearly erroneous.”

The Eighth Circuit further rejected X One X’s arguments that the Warner Bros. film titles and images marks are descriptive because they “immediately alert the purchaser to the nature of the product, i.e., that it is from Warner’s films,” finding the argument to be largely self-defeating as “aptly describe[ing] a strong trademark, immediately associating the product with Warner.” Finally, the Court upheld the injunction barring X One X from selling merchandise that violates Warner Bros.’ copyrights and trademarks.

© 2020 McDermott Will & EmeryNational Law Review, Volume VI, Number 364


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