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Disney, Warner Bros. Fighting Over 'Wizard of Oz' Trademarks (Exclusive)

The underlying work is in the public domain, but Warners is reminding everyone about its 1939 film.

The Scarecrow, Tin Man, Dorothy and the Cowardly Lion

By now, most people are familiar with the story of Dorothy, her dog Toto and their adventures in the land of Oz.

L. Frank Baum first told the story in 1899 in his classic novel, The Wonderful Wizard of Oz. Since the book was published more than 110 years ago, one might assume that anyone has the right to make a film featuring public domain characters such as the Scarecrow and the Cowardly Lion.

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But a legal tornado might be headed Hollywood's way, especially on the merchandising front, since Warner Bros. owns the 1939 film The Wizard of Oz, and it's still very close to the studio's heart.

In October, Warner Bros. very quietly filed a trademark registration on "The Great and Powerful Oz."  

Why is this newsworthy? Well, Disney's coming reboot of the story, directed by Sam Raimi and starring James Franco, is titled Oz, the Great and Powerful. Warners filed its trademark registration only one week after Disney had filed its own.

On Wednesday, an examiner at the United States Trademark Office suspended Warners' trademark attempt because Disney had come first. But that's not the end of the story, if a recent 8th Circuit Court of Appeals decision and lots of activity at the Trademark Office are any indication.

Although Baum's book and accompanying illustrations are in the public domain, judges at the 8th Circuit last year decided to give Warner Bros. "character protection" under its copyright on the 1939 film starring Judy Garland. In the case, which concerned a company that attempted to sell film nostalgia merchandise, the appellate circuit ruled that it would be hard to visualize these characters without watching the movie, even if one had read the book beforehand.

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Copyright potentially represents one arrow in the studio's quiver. But what about trademark?

In the past year, Warners has been one of the most aggressive filers of oppositions at the USPTO's Trademark Trial & Appeal Board. Especially over The Wizard of Oz.

For instance, the company has gone after potential merchandise associated with Dorothy of Oz, a $60 million-budgeted animation film scheduled to be released later this year by Summertime Entertainment.

Warners also has attacked registrations on a series of neuroscience books entitled "If I Only Had A Brain," a restaurant called "Wicked 'Wiches Wickedly Delicious Sandwiches," a clothing line known as "Wizard of Azz," Halloween costumes under the brand name "Wicked of Oz," and dozens of other Oz-related marks.

One pending case at the TTAB is especially enlightening.

It concerns wines being marketed in the state of Kansas. Among them are "Dorothy of Kansas and Toto Wine," "Ruby Slippers Wine," "Broomstick Wine," "The Lion's Courage," and "Flying Monkey Wine."

Warners is objecting, of course.

The opposition caused Bruce Clark, the trademark applicant's attorney, to make this note to the appeals board:

"Nearly all of Applicant's wines and labels reference characters, themes, concepts, drawings taken directly from the book, which book, published in 1899, is in the public domain and out of copyright and a very public story, not created by Opposer."

Warners' trademark attorney, Michael Grow at Arent Fox, responded that this argument would only be relevant in a copyright case. Talking about Clark's brief, Grow wrote:

"This is akin to saying that anyone should be entitled to use famous, widely licensed marks such as HARRY POTTER or ROADRUNNER merely because they were able to find those marks mentioned in a book."

Clark retorted that it wasn't analogous to Harry Potter and that the book is in the public domain is germane to the dispute:

"The book issues are significant to several issues, including association and sponsorship issues relating to the mark, whether Opposer's protection is to the movie script, photos, actors (Judy Garland), or to all things OZ. It is relevant not just to issues as to source and origin, it is relevant as to intent, even to the extent or even existence to any damages Opposer claims it will suffer."

The attorney goes on to say it's "amazing" that the 113-year-old book is of no relevance to Warners. He notes that the studio is opposing the mark, "Flying Monkees," even though the Baum novel illustrated flying monkeys and the movie never used that term.

The case hasn't been resolved yet, but it offers hints about what might be ahead for other studios launching Oz films and associated merchandise.

Warner will need to move soon before a final decision is made on Disney's attempts to claim trademarks around its coming film. Disney has already showcased art for the movie and plans to have it hit theaters in March 2013. Disney is also known for its merchandising tie-ins, and its registration on "Oz, the Great and Powerful" is over stuff like cosmetics, clothing, backpacks, office and school supplies, and watches.

So what does Warners plan on doing about these coming 'Wizard of Oz' remakes? The company won't go so far as publicly declaring that other studios have nothing to worry about in making their films, but company spokesperson Paul McGuire tells us, "This is not about fighting Disney's film. We have merely filed applications to protect the trademarks we use for merchandise relating to our film, the 1939 Wizard of Oz."

E-mail: eriqgardner@yahoo.com

Twitter: @eriqgardner