Every frame of Disney’s newly released film, The Great and Powerful Oz has been examined closely by lawyers, and not just because they are fans of its star, James Franco. Lawyers’ recommendations have led Disney to change certain features of the film, for reasons other than their – ahem – expertise as film critics.

Disney’s film is a prequel to the 1900 novel The Wonderful Wizard of Oz, by Frank Baum, which is in the public domain because copyright has expired. Frank Baum’s novel was also the basis for the 1939 Warner Bros film The Wizard of Oz, starring Judy Garland. However, the movie remains protected by copyright which limits any derivative use.

The upshot is that Disney can base its film on and copy Frank Baum’s original novel without infringing copyright, but Disney is prohibited from reproducing a substantial part of the Warner Bros film. Copying one but not the other is, of course, a fine line to tread.

Disney has had a team of lawyers on hand to check that The Great and Powerful Oz only copies the novel, and not the 1939 film. This has apparently included a range of changes inspired by potential legal risk rather than creativity. Based on the media reports of what the lawyers changed (see here and here), the lawyers may have said things like (using our creative license):

  • “We love what you have done with those munchkin hairstyles, but they look a bit too much like the old film. You have already filmed all of their scenes? Oh well, you can just get someone to edit each scene post-production.”
  • “That green is far too similar to the other green. The colour of the wicked witch’s skin has got to be changed.”
  • “How ‘bout changing the wicked witch’s monkeys to baboons?”

Here is another intriguing twist: The original publicity materials from the Wizard of Oz (such as an image of the Dorothy character) are in the public domain and are not protected by copyright.

What would therefore happen if a person decided to print a T-shirt with this image of Dorothy (from the publicity materials in the public domain) together with her famous tagline “there is no place like home” (which was in the original novel)? Interestingly, even though both the image and tagline are in the public domain, a US Court found this infringed copyright in the 1939 film (decision here). The Court said that:

  • The Warner Bros film added “new aspects” to the public domain characters.
  • If the publicity materials were not faithfully copied, and the image was recognisable as a copyrightable character from the film, then there may be copying of the original elements of the film.
  • If the various public domain works are combined in a “new arrangement” that is an expression of the film character, then this arrangement will infringe copyright in the film.

Hmmm… It strikes us that this judge may have really liked the 1939 film.

Let’s briefly examine how a dispute between the Wizard of Oz and The Great and Powerful Oz would play out under Australian law. Importantly, the concept of infringing a ‘cinematograph film’ under the Australian Copyright Act 1968 means one must have reproduced actual images and sounds from the original work. Think, for example, of filming movies surreptitiously on a hand-held camera while watching a movie in a cinema, or burning a copy of a film on a DVD.

The question then becomes whether the amount copied is substantial or not. In this context, a High Court case involving the TV Show The Panel, which reproduced short segments of films for comment, led to a range of findings depending on the amount taken, and whether an appropriate defence justified the reproduction (decision here).

So, unless The Great and Powerful Oz has, say, digitally incorporated segments of the Wizard of Oz into its film, one would need to look elsewhere under our copyright law in Australia when examining whether aspects of the new film are ‘too close’ to Wizard of Oz.

One can do this by testing the objective similarity of the underlying ‘dramatic works’ (the sequence of events, characters and images displayed in the relevant movies) and / or the ‘literary works’, namely, a comparison of the words in the scripts.

To see how this has been applied in Australia, see:

  • Universal City Studios Inc v Zeccola (1982) 65 FLR 225 where the Court considered whether the film “Great White” had copied the screenplay or novel for “Jaws” [The answer was ‘Yes’]; and
  • Telstra Corporation Limited v Royal & Sun Alliance Insurance Australia Limited [2003] FCA 786 (aka the ‘Goggomobil case’), where the Applicant faced additional problems in showing that an advertisement had been copied because of the absence of an original script [The court found against the Applicant on copyright, but ultimately in favour of the Applicant on the question of misleading or deceptive conduct].

With our The Great and Powerful Oz example, under Australian law one would watch both films, closely comparing the sequence of scenes and events, as well as the presentation of the sets, characters and costumes.

A comparison would then take place of the scripts (hopefully, the lawyers for The Great and Powerful Oz would have access to the original The Wizard of Oz script, although the delivery of lines in the film could arguably comprise an embodiment of the original script – noting though that in many films actors do ‘ad lib’!).

Based on the careful differences described above, it’s hard to envisage any problematic reproduction of The Wizard of Oz dramatic or literary works. As in the Goggomobil case, where the Respondents made sure the scenes took place outside rather than inside, and changed the colour scheme as well as elements of the presentation, so too the lawyers appear to have engaged in this exercise in The Great and Powerful Oz. One also needs to bear in mind that the new film is not a ‘re-make’ of the original, but is an adaptation of a different Frank Baum book, albeit in the same ‘world’ as The Wizard of Oz.

A final consideration, but one of the most important, is whether – if those behind The Wizard of Oz were genuinely upset – they could establish chain of title in the claimed copyright works. For plaintiffs, establishing such ownership can be ‘nightmare territory’. For defendants, exploiting such loopholes can mean avoiding liability on a technicality.

If you ever have the task of undertaking such comparisons, enjoy it. You get to watch movies and have vigorous debates about the similarities and differences of key elements and plot lines. That’s the kind of ‘job’ many would perform for free!