For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

Two of our regular Kats are currently on blogging sabbaticals. They are David Brophy and Catherine Lee.

Saturday, 28 December 2013

Breaking News: Sherlock is (Partly) Free of Copyright in the US

The District Court's Opinion got this
Kat's attention despite being on holiday.
Since this summer, this Kat has been keenly following the lawsuit filed by Los Angeles-based attorney Leslie Klinger seeking a declaratory judgement that all elements of the canon of Sherlock Holmes published before 1923 are free for anyone to use.  Those elements, Mr Klinger 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. 

Thus, it was with great delight that this Kat received an update yesterday afternoon from Mr Klinger's website Free-Sherlock announcing that the US District Court for the Northern District of Illinois ("District Court") had issued its ruling - just in time for this Kat to write this post before her term as a Guest Kat expires.

The background on this case, including the arguments of each party are described in prior Kat posts here and here

The District Court first examined whether the Sherlock Holmes elements published prior to 1923 ("Pre-1923 Elements") are indeed elements that are no longer subject to copyright protection and are now in the public domain.  The District Court quickly dispatched with this question by holding that the Second Circuit Court of Appeal's ruling in  Silverman v. CBS, Inc. is applicable here.  The District Court explained, "[i]t is a bedrock principle of copyright that 'once work enters the public domain, it cannot be appropriated as private (intellectual) property,' and even the most creative of legal theories cannot trump this tenet."  Thus, the public may use the Pre-1923 Elements without obtaining a license from the Conan Doyle Estate. 

The District Court next turned to the question of whether elements of the Sherlock Holmes canon published after 1923 ("Post-1923 Elements"), such as Dr Watson's athletic background and Sherlock Holmes' retirement, are "increments of expression" that are copyrightable, or if the Post-1923 Elements are plot elements, ideas, or events that are not copyrightable.  Mr Klinger argued that these Post-1923 Elements are merely events in the lives of the Sherlock Holmes characters and are not subject to copyright protection.  The District Court examined the Post-1923 works to determine whether they constituted "incremental original expressions" that are readily distinguishable from the prior works.  It concluded that, as storylines, new characters and new character traits, these Post-1923 Elements are indeed increments of expression that are and remain subject to copyright protection, "and as a result neither Klinger nor the public are entitled to use them."

Unfortunately, the District Court stopped short of granting a permanent injunction barring the Conan Doyle Estate from asserting copyright in the elements of the Sherlock Holmes canon, even those elements that the District Court agreed are in the public domain.  The creator of a derivative work or other work that makes use of Pre-1923 Elements thus risks a license fee demand or threat of litigation from the Conan Doyle Estate.  However, based on this District Court ruling, the Conan Doyle Estate would likely be unable to prevail in a legal action against any creators who refuse to pay a license fee.  Will 2014 see the publication of many new (and unlicensed) Sherlock Holmes derivative works that leverage the Pre-1923 Elements?  This Kat will be eager to find out!

District Court Opinion here

2 comments:

Andy J said...

Thanks Miri. I hope we will continue to hear from you even after your guest stint ends.
This was a sensible judgment, and one wonders now how much revenue the Conan Doyle Estate can expect to see from trying to sell licences for just the 3 story elements - Dr Watson's second wife, his youthful sporting prowess, and Holmes's retirement - which the court found were still in copyright.
Given the Estate's propensity for litigation in the past, could protecting what few IP rights they still own now cost more than their potential value?
The background story on Sir Arthur Conan Doyle's estate makes for interesting reading as a case study in how not to manage IP.

Miri Frankel said...

Thank you for the kind words, Andy!

Regarding your comment about the Estate, I suspect the Estate will continue seeking license fees from users of the Sherlock Holmes canon. Though they could not successfully demand licenses on the basis of copyright in the pre-1923 elements, they can still offer support and deep expertise, which some authors and entertainment companies may find useful and worth the cost of the license fee. Perhaps it's new focus might be more akin to a consultancy rather than copyright licensor.

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