“Basically, Turner owns the rights to ‘The Wizard of Oz,’ ” said Keith Beutel, co-founder of 7 Locks. “They claimed that we were using the term ‘Surrender Dorothy’ and they didn’t want any confusion with their branding.”
It wasn’t just the name. It was the design on the can, too, which featured a curvy yellow thoroughfare that the media giant insisted was too similar to the “Yellow Brick Road.”
A refresher for anyone unfamiliar with how the beer got its name: For years starting in the 1970s, graffiti would show up on a railway bridge over the Capital Beltway just west of Georgia Avenue. As motorists drove around the Outer Loop, the Oz-like spires of the Mormon temple looming ahead, they’d see “Surrender Dorothy.” It was a bit of whimsy, refreshed whenever it was painted over by CSX, the railroad whose trains use the bridge.
I’ve never been able to find out who first daubed the bridge with that expression, but I did find their inspiration: Catholic schoolgirls who had earlier created a temporary “Surrender Dorothy” message by stuffing wadded-up newspaper in the chain-link fence of a nearby vehicle bridge.
The 7 Locks brewery finds inspiration in local landmarks. Its beers have included Paint Branch Pilsner and Snakeden Saison, both named after Maryland creeks. Surrender Dorothy wasn’t named after “The Wizard of Oz” but after a famous prank. That wasn’t the Yellow Brick Road on the can. That was the Beltway. And that wasn’t Oz; it was the Mormon temple.
That cut no mustard at Turner Entertainment, which filed in opposition to the 7 Locks trademark application. Turner pointed out that it possesses many “Oz”-related trademarks, including the word “DOROTHY” itself. Licensed “Oz” products include travel mugs and Christmas ornaments.
L. Frank Baum’s original 1900 book, “The Wonderful Wizard of Oz,” is in the public domain. The 1939 film added new elements: music, along with the color of the slippers (ruby) and “Surrender Dorothy” spelled in smoke in the sky. Under U.S. law, while all copyrights eventually expire even if renewed as long as possible, a trademark is enforceable as long as it is continuously used in commerce to identify a product or service.
And Turner has been aggressive in protecting that trademark, said Art Neill, executive director of the New Media Rights program at California Western School of Law in San Diego.
“What you’re seeing here is the interesting intersection between copyright and trademark law and the public domain,” Neill said.
In their filing with the U.S. Patent and Trademark Office opposing 7 Locks’s application, Turner’s lawyers wrote: “Applicant adopted the mark SURRENDER DOROTHY with a deliberate intent to cause confusion and to profit from the enormous goodwill established by Opposer through continuous use of Opposer’s DOROTHY Marks.”
I contacted representatives at Turner’s parent company, Warner Bros. They declined to comment.
Neill said that while writers, actors and other creative types can create new “Oz”-related content that won’t run afoul of copyright laws — he spends a lot of time counseling YouTubers, he said — trademarking products is a more contentious area. Still, he believes it’s possible 7 Locks could have prevailed.
“It’s difficult to say how a court would have come out on this, if this had been pushed further,” Neill said.
Pushing further was not something 7 Locks was prepared to do. In August 2020, 7 Locks abandoned its application to trademark its Surrender Dorothy beer.
“We did have a trademark lawyer that navigated things for us for about a year and a half,” Beutel said. “But that year and a half means bills pile up. We could have continued the fight, but we’re a small business. It’s tough to continue that fight against a large corporation. And we still saw a creative opening for us to continue the story with a different name.”
So the new beer is called simply Surrender. The image on the can — unveiled early in the summer — still features the Mormon temple, but the Beltway is gray, not yellow. And the graffito on the bridge over it is being painted over by a man in a hard hat. All you can see are the letters “DORO . . .”
I noticed that another of the beers from 7 Locks is named Billy Goat Trale. Why not Trail, the name of the hiking path near Great Falls? Did they spell it differently to keep the lawyers away?
No, said Beutel.
“That’s just a play on words. There’s no concern with [the National Park Service] coming after us. Let’s hope that’s not the case.”
For previous columns, visit washingtonpost.com/john-kelly.