Monday 11 March 2013

Sherlock Holmes and the Case of the Copyright Expiration Date

This post comes from a very welcome source, being a guest post by our friend and former 1709 Blog team member Miri Frankel (now Associate General Counsel, Aegis Media Americas):

The Case of the Copyright Expiration Date 
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.  According to the Complaint, filed in a federal court in Illinois (the location of the estate’s US licensing agent), Mr Klinger is the author of numerous books and articles relating to the “Canon of Sherlock Holmes, a phrase that refers to the four (4) novels and fifty-six (56) stories by Sir Arthur Conan Doyle featuring the fictional character of Sherlock Holmes and other related characters and story elements”.  Mr Klinger’s Complaint raises copyright law questions that could easily be the subject of a Sherlock Holmes caper.  
US copyright law, applied to the works of Sir Conan Doyle, creates a scenario whereby most of the works have entered the public domain, while only ten stories that were published after January 1, 1923 remain under copyright protection until 2023, at the latest.  For years, the Conan Doyle Estate has demanded and collected licensing fees from authors who created works drawing from or based on the Sherlock Holmes character or other elements from the world of Sherlock Holmes.  According to this March 6 article in the New York Times, Mr Klinger himself paid a licensing fee to the Conan Doyle Estate in connection with a 2011 publication (the Complaint asserts that his then-publisher, Random House, agreed to pay the licensing fee despite his objection).  
But Mr Klinger’s view, and the view of other, sympathetic authors who have created new stories based on elements from the public domain works of Sir Conan Doyle, is that these licensing fees are not necessary, and the Conan Doyle Estate should not be allowed to threaten them with lawsuits to extract licensing fees.  The Complaint asserts that only new, original elements first published in the stories that remain under copyright protection are still protectable; copyright no longer protects, however, any elements that had already been published in earlier Sherlock Holmes works, so all such elements are now in the public domain.  
For its part, the Conan Doyle Estate claims that all elements of the Canon of Sherlock Holmes remain protected by copyright because, “Holmes is a unified literary character that wasn’t completely developed until the author laid down his pen.”  In other words, the character of Sherlock Holmes and all related copyright elements remain protected until 2023, the date upon which the final story published by Sir Conan Doyle enters the public domain.  
Can copyright of all works in a series legitimately be extended until the natural expiration of the copyright term for the final work in the series?  The answer to this question could have a broad impact on the status of copyrights held by authors who create series of works over many years.  I’m not aware of any prior precedental judgments that accept such an outcome, but if any readers know of other cases on this point, please let us know in the comments to this post.   
Some questions in copyright
law are not so elementary,
are they Watson?
To some extent, trade marks derived from elements of such works could help protect the rights holder’s interests in the works.  Indeed, the Conan Doyle Estate also asserts trade mark rights in the word mark Sherlock Holmes and the silhouette image of a pipe-smoking Sherlock.  Klinger reportedly intends to challenge the validity and enforceability of the estate’s purported trade mark rights in connection with demanding licensing fees (though he has not done so in the current copyright-related Complaint).  A Katpost in 2010 generated quite a debate on the validity in the UK of a trade mark that arises from a copyright work that falls into the public domain.  Perhaps this question will soon be asked and answered under US law.    
On the other hand, even if the estate’s copyrights are found to have expired, 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 favorable benefits, including marketing and advertising support from the licensor and, in the case of the Conan Doyle Estate, permission to use the estate’s official licensee seal on book covers or product packaging.  This notion holds equally true in uses that may be considered fair use; though fair use is permitted under copyright law, in some situations it still may be worth the cost of a licence fee to secure authorization, if possible and appropriate, from the rights holder of the underlying elements.  The ROI on the licence benefits may exceed the cost of the licence fee – and prevent costly litigation.     
Klinger Complaint available here
10 Famous Fiction Books in the Public Domain here


Ben said...

1709 readers might also find this comment about Disney's recently released "Oz: The Great and Powerful" of interest, especially in light of Warner's previous moves to protect characters from the 1939 film "The Wizard of Oz", itself based on the now out of copyright book by Frank Baum published in 1900, "The Wonderful Wizard of Oz":

I also noticed that Disney had reportedly used a stakeholders meeting for the somewhat controversial Trans-Pacific Partnership (TPP) Agreement ("ACTA on steroids"!)to call for extended copyright terms.

Andy J said...

Regrettably all I can do is point to some second hand research which in turn cites some primary sources which may have a bearing on this issue. In an interesting paper entitled The Conflicting Interests in Copyrightability of Fictional Characters, Dr Tabrez Ahmad and Debmita Mondal address this subject on page 11 under the heading 'Extending the Character into Subsequent Works'.
They cite Professor Leslie A Kurtz's article The Independent Legal Lives of Fictional Characters 1986 Wisc. L. Rev. 429, 1986, when making the statement:
"When part of a series enters the public domain, the characters appearing in that work may be copied even when subsequent parts of the series are still protected by copyright".
The authors then go on to cite Silverman v CBS 6870 F2d 40 (2nd Cir.) in which the court found that character traits which were found in the original pre-1948 CBS radio characters Amos 'n' Andy were in the public domain and so were not infringed by their later incorporation into a Broadway musical produced by Steven Silverman, although new elements which were added for the musical version were separately protected.

Peter Smith said...

"Can copyright of all works in a series legitimately be extended until the natural expiration of the copyright term for the final work in the series?"
If so, then what about characters developed across a series that is written by multiple authors? Could the copyright be prolonged indefinitely in this manner? This is probably most common in long-running television series but there have recently been "official" James Bond novels by guest authors.

Ben said...

Interesting points Andy - I hadn't seen that paper - as I tend to fixate on image rights when it comes to 'characters'. There is some case law to suggest that fictional characters such as the Teenage Mutant Ninja Turtles and Crocodile Dundee are protected: Paul Hogan who created Dundee has won at least two successful cases in Australia I know of, protecting his character. And the English case of Mirage Studios v Counter-Feat Clothing (Ninja Turtles),[1991] FSR 145 seemed to support the Australian position, although the English case was based on the copyright in drawings of turtles.

I have probably veered off into passing off, personality, publicity and image rights! But here are the two 'Crocodile Dundee' cases if anyone is interested.

Pacific Dunlop Limited v Paul Hogan; Rimfire Films Limited and Burns Philp Trustee Company Limited [1989] FCA 185, 23 FCR 553;

Paul Hogan and Rimfire Films Limited v Koala Dundee Pty Limited; Anthony Robert Reeves and Joseph Anthony John Piovesan [1988] FCA 333,

Miri Frankel said...

Thank you for all of the interesting references!

I do think it will be a difficult, if not impossible, battle for the Conan Doyle Estate. But given that its revenues are so keenly tied to the earlier works, in addition to those still under copyright, I suppose it is a battle they must fight to the death!

From a licensing perspective, they might do well to change strategies and focus on the fact that they are in a unique position to authorize works regarding Sherlock Holmes and to grant use of the official seal of the estate. I am sure fewer licenses will be sought, but fewer is better than none!

Ben said...

Another one (well sort of)! Now its Zorro!

Playwright Robert Cabellm who wrote the 1966 musical "Z - The Music of Zorro" - has filed a suit against Zorro Productions, Inc., alleging that the organization is falsely claiming rights to the masked avenger including fraudulent registrations of trade marks. That said, the very original Zorro book (Johnston McCulley book "The Curse of Capistrano" from 1919) and movie "The Mark of Zprro" (1920) are both now in the public domain,

Ben said...

One more just in ......

Three recently published science fiction novels by Chinese writer Zheng Jun have stirred up controversy with their claim to be a "sequel to Star Wars" on the book covers. The works do not have authorization from Lucasfilm, the copyright holder of the legendary US movie series. On his popular micro blog, author and translator Qu Chang wrote that it is "surprising the books were published".