From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Friday, 20 September 2013

Is Sherlock Free of Copyright in the US? Not Just Yet

License fees no
longer necessary?
In February Leslie Klinger, a Los Angeles attorney, filed a lawsuit against the estate of Sir Arthur Conan Doyle -- the creator and author of a series of fictional works featuring legendary investigator and crime-solver Sherlock Holmes. The lawsuit sought a declaratory judgment that a forthcoming book authored by Mr Klinger does not infringe upon the works of Sir Arthur Conan Doyle because the Sherlock Holmes elements and characters incorporated into Mr Klinger’s work are all in the public domain. Those elements, it is claimed, are in the public domain because the Sherlock Holmes books and stories published prior to 1923 (which includes all Sherlock works other than ten stories published in The Case-Book of Sherlock Holmes) are no longer subject to copyright protection under US copyright law.  Mr Klinger seeks confirmation from the court that elements developed in the pre-1923 books and stories are indeed in the public domain despite the fact that Sir Arthur reused those elements in later works that remain subject to copyright. (More on the initial Complaint at the 1709 Blog)


According to Mr Klinger’s website, Free Sherlock!, the Conan Doyle Estate failed to file an Answer or other formal responsive pleading within the time allowed.  The court thus granted a default judgment in Mr Klinger’s favour, which would have paved the way for Mr Klinger to publish his book without the need to pay a license fee and without fear of infringement liability to the Conan Doyle Estate.
Mr Klinger was not satisfied.  Instead, he wanted the court to issue a ruling on the merits, rather than merely a default order, to establish a precedent on which other authors could rely.  To this end, he filed a Motion for Summary Judgment asking the court to rule affirmatively that the main elements of the Sherlock Holmes canon are in the public domain. The Conan Doyle Estate failed within the time initially allotted to appear or file a response to Mr Klinger's Motion, nor had it moved to vacate the default order previously entered against it.  Because a ruling on the merits could definitively declare that the pre-1923 elements of the Sherlock Holmes canon are in the public domain, the Court exercised caution [and deference to the Conan Doyle Estate, perhaps?] by giving the Conan Doyle Estate additional time to respond. 
Finally, on September 10, the Conan Doyle Estate responded to the Motion for Summary Judgment.  Stating,
"[t]he facts are that Sir Arthur continued creating the characters in the [stories that remain subject to copyright], adding significant aspects of each character's background, creating new history about the dynamics of their own relationship, changing Holmes's outlook on the world, and giving him new skills. [...] In other words, at any given point in their fictional lives, the characters depend on copyrighted character development."
The Conan Doyle Estate also dispatches with what would seem to be contradictory case law, Silverman v. CBS, Inc., by explaining that the characters of Amos 'n' Andy at issue in Silverman were flat characters who were completely and fully developed after the first few episodes of of the Amos 'n' Andy radio show.  By contrast, claims the Estate, Holmes and Watson are "round characters" who continue to change in each new story.  Sherlock Holmes is a character "having all of the complex background and maturing emotions, thoughts, relationships and actions that characterize human development over time." 
Cat Sherlock awaits her fate:
Will she  continue to earn royalties
or will her kitty run dry?
In addition, in light of the fact that Sir Conan Doyle published Sherlock Holmes stories in a non-linear fashion, jumping forward and backward in time from story to story, it would be "impossible to use [the characters] at any given point in their fictional lives without invading copyrighted character development" that occurs in the stories that remain subject to copyright. 

Sir Arthur is not alone in developing his characters, like Holmes, over the course of a series.  However, if the character is sufficiently developed in early works, as is typical in order to engage and interest readers, the author should not be permitted to leverage later character developments to extend the term of copyright through the copyright period of the later works.  If this were the case, a publisher could potentially extend the copyright in a character indefinitely, as publishers may leverage multiple authors to write series of works over decades.  A ruling in favour of the Conan Doyle Estate would have not just a broad impact on the status of copyrights held by authors who create series of works over many years, but also a significant impact on the purpose of public domain in encouraging new creative works that draw inspiration from, or are derivative of, prior creations whose copyright terms have expired.  In this Kat's opinion, this is incongruous with the intent of the copyright law, which intentionally established a limited period of time during which a work could be leveraged exclusively by the creator. 

The IP Kat notes that in many jurisdictions all of the works of Sir Arthur have fallen into the public domain.  Thus, the status of its US copyrights likely holds singular importance for the Conan Doyle Estate as a means to protect the revenues generated by its copyright licensing activities. 

Regardless of the outcome in respect of its copyrights, the Conan Doyle Estate does also assert trade mark rights in the word mark Sherlock Holmes and the silhouette image of a pipe-smoking Sherlock.  In this regard, even if Mr Klinger is successful in establishing that major elements from the canon of Sherlock Holmes is in the public domain, it still retains its reputation as a foremost expert on all things Sherlock Holmes. Being an authorized licensee of a respected and prominent stakeholder, such as the Conan Doyle Estate, often comes with favourable benefits, including marketing and advertising support from the Estate and permission to use the Estate’s official licensee seal (the Sherlock silhouette) on book covers or product packaging.  For some, the Estate's official support may be worth the cost of the trade mark license fee.

Top 10 Sherlock Holmes Quotes here

10 comments:

Anonymous said...

Initial expressions subject to future 'development'?

That seems like an awfully slippery slope (and one a certain U.S. Mouse would joyfully scamper to).

Miri Frankel said...

@Anonymous, you might be interested to know that the Copyright Term Extension Act of 1998, which extended copyright in the US to life of author plus 70 years or, for corporate copyrights, 120 years from creation or 95 years from publication, was nicknamed "the Mickey Mouse Protection Act".

Anonymous said...

Unfortunately, the protection it provides is not at all mickey-mouse.

Anonymous said...

MiriFrankel @ 21:00,

That's pretty cheesy.

Roufousse T. Fairfly said...

When Mickey Mouse turns 120, we'll learn that copyright in the US has been extended to 240 years. Or 2400...

Anonymous said...

Roufousse T. Fairfly,

While I think your post was made somewhat tongue in cheek, the court's reasoning does indicate that successive lengthening of terms of protection does not violate the US constitutional limitation of 'for limited times' and is thus a very real potentiality.

Anonymous said...

Dear Miri,

Thanks for an interesting post, but just for future reference, it's "Sir Arthur" or "Conan Doyle", NEVER "Sir Conan Doyle". Ditto any other knight of the realm - the famous conductor Sir John Eliot Gardiner is Sir John or Gardiner.

Miri Frankel said...

@Anonymous 11:21 - Thank you for teaching this American a lesson in British etiquette!

@Roufousse, to be clear, the court hasn't issued its ruling yet. The parties have each laid out their arguments for the court's consideration, and I will share an update when the court rules. In any case, it may indeed be permissible to lengthen the term of copyright, e.g. through an Act of Congress. However, I think a judicial ruling that copyright can be extended if a creator adds character development details over a series of works would conflict with constitutional and congressional intentions that copyright be limited to a set period of time (however long that may be). In addition, such a ruling would unfairly create 2 copyright terms: a limited period of time for individual creators, who clearly cannot continue creating works forever, and a potentially perpetual term for corporate creators that could leverage generations of employees to extend the life of its copyright holdings.

Finally, regarding the Mickey Mouse comments, no matter what the term of copyright is, Disney will be able to protect its exclusivity over the Mouse through its trademark registrations. The character of Mickey Mouse has become a designation of origin for Disney.

Andy J said...

Regarding the protection of characters and plots, I can't help thinking it's the US courts which have created this mess by drawing the line between idea and expression in the wrong place. Admittedly this has come about because Hollywood and the TV studios have brought case after case in the hope of protecting their franchises.
It is more than a little ironic that during his lifetime Conan Doyle suffered piracy of his works at the hands of American publishers (Sherlock Holmes Among the Pirates).

Anonymous said...

Andy J @19:23,

Actually, irony has very little to do with it and it is quite a natural part of the evolution of a country - the more evolved, the realization that more powerful IP laws have greater value.

China is now experiencing this in relation to patents.

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