An interesting case was recently filed in the Federal District Court in the Northern District of Illinois. Call it: The Case of the Phantom Copyrights. On February 14, 2013, noted Sherlock Holmes scholar, Professor Leslie S. Klinger, filed a declaratory judgment suit against the estate of the late Sir Arthur Conan Doyle (the original author of the Sherlock Holmes books), asking the court to acknowledge that the characters of Holmes and Watson are in the public domain and as such are no longer protected by copyright in the U.S. At issue is whether or not the Conan Doyle estate can prevent a third party (in this case, Professor Klinger) from writing stories, movies or other creative works featuring the Sherlock Holmes and Watson characters made famous in the original Conan Doyle works.
Conan Doyle wrote a total of four novels and fifty-six short stories featuring the famous detective. These stories first appeared in publication in 1887. The copyrights in all of Conan Doyle’s works expired in the United Kingdom in 1980 and are public domain there. The issue in the case is the status of the copyrights under U.S. law. The length of the term of copyright protection under U.S. law is somewhat complex as a result of the interplay between the old Copyright Act of 1909 (which had a fixed set of two copyright terms of 28 years each and applied to works first created prior to January 1, 1978) and the current Copyright Act of 1976 (which created a new “life of author plus” method for determining the copyright term and applies to all works first created after January 1, 1978). For pre-1978 works, U.S. copyright law provides that all works published in the United States prior to 1923 are now in the public domain, and that is not in dispute because the maximum 56 years of copyright protection expired. However, for pre-1978 works that were published after 1923 but before 1963, if the copyright was registered, the Copyright Act of 1976 provides that its term lasts for 95 years.
The Conan Doyle estate admits that those Sherlock Holmes works published prior to 1923 (which are the overwhelming majority of the works) now are in the public domain under U.S. law. However, the estate bases its copyright ownership claims on the fact that it registered the copyright to The Case Book (which was published in the United States in 1927) in 1981 and, therefore, is subject to the 95 year copyright term. That 95 year copyright term on The Case Book is set to expire in 2023.
The legal issue at hand is the right of the Conan Doyle estate to insist that anyone writing a modern “Sherlock Holmes” story must obtain a license from them on the basis that the characters from the original works are protected by the unexpired copyright which applies to the later works. Over the years, there have been many parties who have created works based on the characters from the original works. Examples include the Robert Downey, Jr. films over the past couple of years and the new television series, Elementary. In many cases, parties desiring to create new works, such as those productions, have agreed to obtain licenses from the Conan Doyle estate (largely, I believe, as a form of “insurance policy” against a suit). However, Professor Klinger has refused to obtain such a license because he believes that the characters created in the first Sherlock Holmes works are now in the public domain and free for all to use.
As I previously noted in my February 20, 2013 blawg post, the owner of a copyright under U.S. law actually owns a “bundle” of rights. Included within this bundle is the right to prepare derivative works based upon the original work. However—and this is a critical point—the copyright in a derivative work only extends to the portion changed or added to the original work. For example, if I were to write a musical arrangement of The Star Spangled Banner, I would own a copyright in that arrangement. As such, I would have the right to prevent another party from copying my arrangement. That right would not extend, however, to preventing someone else from copying the original piece and doing their own arrangement.
Even if the Conan Doyle estate did not register each subsequent Sherlock Holmes story as a derivative work of the original story, it still does not change the basic character of those later works; namely, they incorporated many of the same characters and elements of the earlier stories. Under proper copyright analysis, copyright protection would apply to those later works, but only with respect to new characters, plot elements, stories and other creative elements. To accept the Conan Doyle estate’s position regarding this copyright issue would amount to the creation of a perpetual term of copyright protection, as long as elements in an original work continue to be incorporated into new works. That simply does not make logical sense. In my view (we’ll see if the District Court agrees with me), the characters established by Sir Arthur Conan Doyle in the early Sherlock Holmes books are now in the public domain and, as such, anyone is free to use them. Note that once in the public domain, these characters will remain as such, and nobody can claim to own them.
In addition to their copyright allegations, the estate also seems to believe that they have a right to prevent usage of the characters under trademark law as well. While it is true that a character in a story is capable of trademark protection if the character is so associated with a particular source that there would be a likelihood of confusion as to the source if another party were to use it, that character must be used as a trademark in order for that to be true. In other words, the character must be used as a symbol of the source of origin for a particular product or service in order for that character to be protected under trademark law. Take, for example, the character of Mickey Mouse. Disney not only includes Mickey as a character in its films, comics and stories, but it uses it as a symbol of The Walt Disney Company and various products and services offered for sale by The Walt Disney Company. As such, it is not only protected by copyright laws, but it is protected under trademark law because it also functions as a trademark. The Conan Doyle estate’s argument is that the Sherlock Holmes characters are so uniquely identified with Sir Arthur Conan Doyle that any other use of those characters, even in a literary setting, would create a likelihood of confusion that the actual source of those works is the Conan Doyle estate.
There are problems with that argument. If the Conan Doyle estate had licensed the image of Sherlock Holmes for use on a double-billed hat, it might be valid as a trademark for hats. Going back to the Disney example, an analogy would be a hamburger joint using Mickey Mouse on its signage. Even if Disney never sold burgers using Mickey’s image, Disney could very reasonably claim that such a use amounts to trademark infringement or unfair competition in that it creates confusion as to the true source of origin of the hamburgers. I don’t think that the Conan Doyle estate can make a similarly compelling argument here. The Sherlock Holmes characters are not being used here to sell goods or services; instead, they merely appear as characters in a literary work. In other words, they are not being used in the trademark sense at all. Nonetheless, this trademark argument probably is the only basis upon which the court could rule in the estate’s favor. To rule in the estate’s favor on the copyright claim would amount to creating a perpetual term of copyright, something that clearly is not part of U.S. copyright law.
My Prediction
The court will declare that Sherlock Holmes, Dr. Watson and the other iconic characters created in those early works are now in the public domain, free for all to use in literary and other artistic works. It seems elementary to me.
