One might imagine it should not be too difficult for one describe the infamous Wicked Witch of the West from L. Frank Baum’s iconic Oz series, beginning with The Wonderful Wizard of Oz. In fact, one could probably close one’s eyes and simultaneously click one’s heels three times whilst describing her to a T. Whether it’s Theodora from Disney’s Oz the Great and Powerful or Elphaba from Gregory Maguire’s Wicked series/Broadway musical, one would instantly recognize the Wicked Witch by her green flesh, pointy black hat and broomstick upon which she travels. Her green complexion is so identifiable with her, that it’s even a significant plot device in Maguire’s books.
And Oh! There is one more we almost forgot — the Wicked Witch of the West as she appears in MGM’s classic 1939 film, The Wizard of Oz. Just like the original books — now in the public domain — the Witch is sans name in the classic film, but that is essentially where the similarities end. Unlike the books, the MGM Witch has a striking green complexion, wears a black pointy hat and is rarely unescorted by a flying broom. Not only does MGM’s witch bear virtually no resemblance to the one-eyed, golden cap sporting witch from the book, but there appears to be no known comparable image of such a witch existing in pop culture prior to the 1939 film. It is of popular thought that MGM’s witch is green simply for the same reason they transformed Dorothy’s slippers from silver to ruby — for the sake of Technicolor.
Thus perhaps it can be reasonably claimed that virtually any green-tinged sorceress, particularly those inhabiting the land of Oz, is derivative of MGM’s film which is currently owned by Warner Brothers’ Turner Entertainment and is not public domain. One popular anecdote, as it goes, is that the color of the Witch as portrayed by Mila Kunis in Oz the Great and Powerful had to be carefully chosen and agonized over by teams of lawyers as to not confuse her with the MGM witch (from a legal perspective, anyway). Remarkably, however, while Warner Brothers scoffs at any non-authorized use of ruby colored slippers in various Oz productions, the Witch’s flesh is rarely a point of contention.
What has become a point of contention, however, is Disney’s attempt to trademark Oz the Great and Powerful and yesterday, Turner Entertainment took another step in a long battle over the perennial question of where public domain ends and intellectual property begins.
The whole IP battle began, interestingly enough, with a strike from Disney in January against Turner Entertainment who had attempted to trademark the term ‘The Great and Powerful Oz’ (the application was filed in June of 2011 but the overall trademarking process is lengthy at best). Although many outlets claim Turner Entertainment filed the application as a preemptive strike against Disney’s movie project, it does specifically cover gaming devices/slot machines, for which there is one by that title currently produced by WMS. Disney has filed an intention to object to the registration and, through multiple extensions, has effectively kept Turner’s application in limbo.
Needless to say, when Turner had the opportunity to turn-er the tables on Disney back in April, they did so, hoping to claim that Disney’s attempt to trademark ‘Oz the Great and Powerful’ would violate their trademark of ‘The Great and Powerful Oz.’ With Turner’s application still in dispute, however, they opted to take a different tactic, claiming that Disney’s application conflicts with their already approved trademark, ‘Wizard of Oz.’
In papers filed yesterday with the Trademark Trial and Appeal Board yesterday, Turner Entertainment became the first of the warring parties to state its case. Turner claims that it is already a proven owner of a ‘family of marks’ containing the word ‘Oz’ and has already successfully been using other terms, such as ‘The Great and Powerful Oz’ in commerce. Perhaps Turner’s single best argument for denying Disney the rights to ‘Oz the Great and Powerful,’however, is that while the literal term appears in neither the book nor the film, the film does refer to ‘The Great and Powerful Oz’ repeatedly whereas the book does not. The book, in fact, refers to Oz as ‘terrible’ (and once as ‘powerful and terrible’). Therefore, Turner argues, Disney’s film title is derivative of the MGM film and therefore Disney is not entitled to stake claim to it.
It is always worth noting that this action represents an objection to Disney receiving a trademark — it is not a lawsuit.