Can you use images that have fallen into the public domain without infringing the copyrights in them?

Yes and no, the Eighth Circuit held today.

The case dealt with pictures that movie studios used to promote Gone with the Wind, The Wizard of Oz, and Tom & Jerry shorts. Art & Vintage Entertainment Licensing Agency (AVELA) got hold of movie posters, "lobby cards", and the like that bore the images and used them as the basis for things like t-shirts, lunch boxes, and action figures. Turner Entertainment and Warner Brothers sued AVELA for a permanent injunction and got one.

The Eighth Circuit reversed in part on the ground that images identical to the ones on the old posters, cards, press books, and other items that had become public domain material couldn't provide the basis for an infringement claim. Warner Bros. Ent. Inc. v. X One X Prods., No. 10-1743 (8th Cir. July 5, 2011). The images lost their protection, the court noted, because the copyright owner had failed to include a proper notice of copyright on the images.

And yet the panel upheld the injunction to the extent it barred AVELA from using more than just the images themselves. Adding a catch phrase, turning a two-dimensional picture into a three-dimensional figurine, and making other changes or additions, the court held, infringed the copyrights in the characters they depicted — Dorothy, the Tin Man, Rhett Butler, Scarlett O'Hara, Tom, and, yes, even Jerry. The court said that "any visual representation that is recognizable as a copyrightable character from one of these films, other than a faithful copy of a public domain image, has copied 'original elements' from the corresponding film." Id. slip op. at 23.