The character of Sherlock Holmes seems to remain popular more than a 120 years after its initial publication. Over the last few years we have witnessed a modern day Sherlock Holmes in the critically acclaimed BBC series Sherlock and a new take on the old Holmes in two Sherlock Holmes movies with Robert Downy Jr.
The first Sherlock Holmes story was published by Arthur Conan Doyle in 1887. The last story was published in 1927. The entire body of work consists of 56 stories and four novels. 10 of these stories were published between 1923 and 1927. Due to statutory extensions of copyright protection, the copyright protection on these 10 final stories will expire between the years 2018 to 2022.
Leslie S. Klinger is, among other things, a literary editor, specializing in Dracula and Sherlock Holmes. Klinger co-edited an anthology called A Study in Sherlock: Stories Inspired by the Sherlock Holmes Cannon. The anthology consisted of stories written by modern authors who were inspired by the characters of Sherlock Holmes and Doctor Watson. Klinger did not think he needed a license to publish the anthology, as most of the copyrights in the stories had expired. However, the estate of Arthur Conan Doyle, the owner of the copyrights, told Klinger’s publisher that it would have to pay the estate $5,000 for a license. The publisher decided to pay in order to obtain a license and the book was published.
Klinger and his co-editor decided to create a sequel to the first book to be called In the Company of Sherlock Holmes, this time with a different publisher. The estate again approached the publisher and told them they would have to obtain a license in order to be legally authorized to publish the new book. Although the estate did not explicitly threaten to sue for copyright infringement, it did threaten to prevent distribution of the book. As with the previous book, the publisher “yielded to the threat” and refused to publish the book “unless and until” Klinger obtained the proper license.
As the Court put it, “Instead of obtaining a license, Klinger sued the estate, seeking a declaratory judgment that he is free to use the material in the 50 Sherlock Holmes stories and novels that are no longer under copyright, though he may use nothing in the 10 stories still under copyright that has sufficient originality to be copyrightable.”
The estate’s main argument was that copyright on “complex” characters, whose complexity is not revealed until a later story, remains under copyright until the later story falls into the public domain. The fact that early stories featuring Sherlock Holmes and Doctor Watson are already in the public domain, does not permit their less than fully developed “complexified” characters in the early stories to be copied even though the stories themselves are in the public domain.
The issue of copyright protection of characters, separately from the works in which they appear, has been addressed in numerous court rulings in the past. One of the landmark cases dealt with a slightly less popular detective: Sam Spade. The Ninth Circuit in Warner Bros. Pictures v. Columbia Broadcasting Systems discussed the protection of characters and ruled that a character would only be protected if it constitutes “the story being told.” A later case, dealing with graphic characters, seemed to apply a different standard for protection of graphic characters, as they are distinguishable from literary characters (Walt Disney Productions v. Air Pirates). This is, however, not the issue of this ruling. It appears that both sides (and the Court) agree that the characters of Sherlock Holmes and Doctor Watson are original and distinguished enough to warrant copyright protection. The question is, can later development of a character “extend” the copyright protection for works featuring the same character that is already in the public domain? The seventh Circuit’s answer is clear – no.
In the opinion of the Court, decided on June 16, 2014 and delivered by Judge Posner, the Court found “no basis in the statute or case law for extending a copyright beyond its expiration.” The Court cited an earlier case, Silverman v. CBS Inc., which raised a similar question. The fictional characters of Amos and Andy appeared in copyrighted radio scripts. The characters continued to appear in subsequent scripts, while the early scripts fell into the public domain. The Second Circuit ruled that copyright can only secure protection for incremental additions of originality. Interestingly, the Seventh Circuit does not mention an almost identical case, from the District Court in New York, Pannonia Farms, Inc. v. USA Cable (The District Court’s ruling in Klinger does cite the Pannonia ruling). In Pannonia, the plaintiff, claiming to be the owner of the copyright in Arthur Conan Doyle’s works, sued a basic cable network for displaying a movie featuring the characters of Holmes and Watson. The District Court cited the Silverman ruling and concluded that there was no copyright infringement.
The estate argued that denying an extension of the copyright would discourage creativity. An author may require a long time in order to “perfect a character or other expressive element that first appeared in his early work.” The loss of copyright may discourage him from trying to improve the character. The Court replied that this is a “double edged sword,” meaning this extension would shrink the public domain and not enable future creators to prepare derivative works. Furthermore, allowing this extension would encourage creators to keep writing stories with the same characters, instead of creating new ones.
The estate argued that the Court needs to distinguish between “flat” and “round” fictional characters. “Flat” characters are those completely described in the first works in which they appear. They do not evolve. The estate claims that Holmes and Watson are “round” characters, since they were not fully evolved and “rounded” until the last story written by Doyle. The Seventh Circuit rejects this argument and points out that this distinction has nothing to do with copyright law. The additional features of the characters, presented in the later stories, may be protected by copyright as long as they are “original” enough to warrant such protection.
The Seventh Circuit ends its ruling by reaffirming the notion that “perpetual or at least nearly perpetual copyrights would violate the copyright clause of the Constitution, Art. I, §8, cl. 8, which authorizes copyright protection only for ‘limited times’.”
In a later decision, the Seventh Circuit awarded Klinger with attorney’s fees. 17 U.S.C. § 505 authorizes the award of reasonable attorney fees to a prevailing party. The Court found that Klinger had to spend money on the appeal process, in which the other party had only a “frivolous” defense. The Court criticized the actions of the estate, going as far as to call them “a form of extortion”. The Court further noted that some of the estate’s actions, mainly asking Amazon and other booksellers to cooperate in enforcing “non-existing” copyrights claims against Klinger, may even be considered a violation of antitrust law.
On September 15, 2014, the Estate filed a writ of certiorari to the Supreme Court. In its petition, the estate argued that the Courts, both the District Court and the Seventh Circuit, erred by not demanding Klinger to present a concrete work, as the anthology was still in the making. There was no writing before the Court, which could be compared to the copyrighted works in order to determine if there is an infringement. This seemed to contradict the Courts’ general approach to reject rulings on “advisory” disputes. Also, the estate argued that the Seventh Circuit ruling presents a circuit conflict as to the proper test to apply for an evolving character. The estate mainly cites the Eighth Circuit decision in Warner Brothers Entertainment Inc. v. X One X Productions, which dealt with characters from films featured on movie posters and postcards. The posters and postcards were in the public domain. A film memorabilia company produced several products featuring the characters, based on the posters and postcards and their depiction in the movies (for example, a picture of Dorothy from the Wizard of Oz, with the phrase “there’s no place like home,” taken from the movie). The Eighth Circuit ruled that the entire character was not “thrust” into the public domain, because the poster and postcards did not “anticipate the full range of distinct speech, movement and other personality traits that combine to establish a copyrightable character.”
The estate’s writ of certiorari to the Supreme Court was denied on November 3, 2014. The Seventh Circuit’s firm language in criticizing the estate business model and willingness to issue a declaratory judgment without examining a concrete work seemed to send a strong message both for the protection of the public domain and its exploitation by future creators and both to “copyright trolls,” who try to aggressively seek licensing fees, even when the claim for existing copyright protection is doubtful, at best.