It has emerged that the Yellow Brick Road – major highway of the fantasy world in L Frank Baum’s children’s book The Wonderful Wizard of Oz – leads not just to the Emerald City, but to trademark disputes. In the past year, Hollywood studio Warner Brothers – rights owner of the 1939 film adaptation The Wizard of Oz, starring Judy Garland – has carried out extensive brand litigation over a number of phrases derived from Baum’s work, in moves that have intrigued media companies and mystified trademark applicants.

In one spate of oppositions, filed against trademarks applied for by one William P Schaetzel, Warner Brothers sought to quash a series of brands for the Oz-themed beverages Ruby Slippers Wine; Dorothy of Kansas and Toto Wine; and Flying Monkey Wine – along with another for The Emerald City Vineyard and Winery.

On 14 February, an announcement from Warner Home Video broke the spell, revealing that the studio is preparing for a 2014 re-release of the Garland film for its 75th Anniversary. According to spokesman Jeff Baker, from next year Warner Brothers will begin a ‘re-launching of The Wizard of Oz franchise in a multi-platform, unprecedented rollout that will include new and restored formats with major sponsorships and branding’, complete with ‘massive’ media support. ‘We expect 90% to 95% consumer awareness,’ he added – plans normally reserved for big-budget, new releases rather than archive titles.

The legal action has become important in IP terms by highlighting a potential clash between US trademark and copyright laws. Warner Brothers has been opposing Oz-related marks in order to defend rights held in the film it owns. However, the trademark applicants have argued that their brands are developed from material contained in Baum’s original book, which is in the public domain. Under US copyright laws, prior to 1976, authors’ rights in their published works lasted for 28 years, with an option to extend by another 28. As The Wonderful Wizard of Oz was first published in 1900, Baum’s copyright in the book – and later, his estate’s – expired in 1956, which meant that anyone from that point on was free to use potions of the text, or even republish the whole book, without having to seek formal permission.

That was the stance of trademark attorney Bruce Clark, who represented the wine brands during recent opposition proceedings at the United States Patent and Trademark Office (USPTO). ‘Nearly all of Applicant's wines and labels,’ he argued, ‘reference characters, themes, concepts [and] drawings taken directly from the book, which is in the public domain and out of copyright, and a very public story – not created by Opposer.’

However, Arent Fox attorney Michael Grow, who represented Warner Brothers, countered: ‘This is akin to saying that anyone should be entitled to use famous, widely licensed marks such as Harry Potter or Roadrunner [two Warner-owned brands] merely because they were able to find those marks mentioned in a book.’ Media companies with investments in Oz-themed products will now be watching Warner Brothers closely to gauge the extent to which it can prove, through litigation, that it has exclusive claims in the relevant phrases.

Novels inspired by the book and film include Philip José Farmer’s A Barnstormer in Oz (1982), in which a pilot finds himself in the imaginary land; Geoff Ryman’s Was (1992), which fictionalises the story of the film’s production; and Gregory Maguire’s Wicked: The Life and Times of the Wicked Witch of the West (1995), which takes a biographical angle on Baum’s central villain. Significantly, Maguire’s book is also the basis of the long-running and successful musical production Wicked, launched in 2003, which is still active in London and New York.