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Article: The Scope of Copyright Protection over Sherlock Holmes Characters Is Far from “Elementary”

June 01, 2014
Business Litigation Reports

The copyright clause of the U.S. Constitution incentivizes the creation of original works of art by granting authors exclusive rights in such works for “limited Times.” U.S. Const. art. I, § 8, cl. 8. The idea is to strike a balance by providing sufficient exclusive rights to foster artistic creation, while limiting that exclusivity temporally to avoid impeding the free flow of ideas and information with thickets of licensing arrangements. While it is an elegant proposition, striking that balance has proven messy in practice. The Founding Fathers’ language is still being parsed, as reflected in the recent Northern District of Illinois case Klinger v. Conan Doyle Estate, Ltd., 2013 WL 6824923 (N.D. Ill. Dec. 23, 2013), which grappled with the extent of copyright protection that applies to the iconic characters of Sir Arthur Conan Doyle’s famous Sherlock Holmes stories.

The question of the extent of copyright protection over fictional characters that is at the heart of the Klinger case has a rich history of jurisprudence. But before arriving at that question, courts had to decide whether a copyright could protect a fictional character at all, and if so, for how long.

Copyright protection is commonly associated with a precisely defined and easy-to-copy artistic creation that is fixed in a tangible medium of expression—such as a poem, a video recording of a television series, or a painting. Courts have also found copyright protection over fictional characters that are defined in a broader and more fluid sense—such as by mannerisms, a style of dress, or behavioral tendencies. Characters defined too broadly are ineligible for protection, allowing anyone to incorporate a stock character into a story (e.g., the tweed-wearing, absent-minded professor). But an artist can protect a readily identifiable and unique creation—for instance, a certain British secret agent with a penchant for fast cars, tuxedos, high-tech gadgetry, and memorable catch phrases. See MGM v. Honda, 900 F. Supp. 1287 (C.D. Cal. 1995).

These ground rules were established almost a century ago in Nichols v. Universal Pictures Corp., 45 F.2d 119 (2d Cir. 1930), where the famed Judge Learned Hand based his rationale on the established tenet that abstract ideas are not copyrightable while their particularized expression is:

If Twelfth Night were copyrighted, it is quite possible that a second comer might so closely imitate Sir Toby Belch of Malvolio as to infringe, but it would not be enough that for one of his characters he case a riotous knight who kept wassail to the discomfort of the household, or a vain and foppish steward who became amorous of his mistress. These would be no more than Shakespeare’s “ideas” in the play, as little capable of monopoly as Einstein’s Doctrine of Relativity, or Darwin’s theory of the Origin of Species. It follows that the less developed the characters, the less they can be copyrighted[.]

Id. at 121. More recently, Judge Posner of the Seventh Circuit applied Judge Hand’s analysis in holding that a comic-book character need only be drawn, named, and given speech to be a sufficiently distinctive and copyrightable character. Gaiman v. McFarlane, 360 F.3d 644, 660 (7th Cir. 2004). Judge Posner also recognized, however, that even this seemingly bright-line standard will not always be perfectly implemented. See id. (“As long as the character is distinctive, other authors can use the stock character out of which it may have been built without fear (well, without too much fear) of being accused as infringers.”).

Assuming that copyright protection applies to a fictional character, the next question is the duration of that protection. This question may be complex and require the interpretation of several provisions of the Copyright Act, 17 U.S.C. § 301, et seq., including those regarding the manner in which the work that introduced the character was “published.” In general, however, works published before 1923 are no longer subject to any copyright protection, and are therefore in the public domain. Works published after 1923 and before 1978 are entitled to a maximum of 95 years of protection if the copyrights in the works were properly renewed.

With these rules in mind, the Klinger court was called upon to decide the extent of copyright protection that applies to fictional characters that appear in a series of works that span the 1923 threshold, such that the copyrights in the pre-dating works have expired already, while the copyrights in the post-dating works remain valid until at least 2018. The underlying dispute arose when the plaintiff, Leslie Klinger, sought to publish two anthologies of short stories by contemporary authors featuring characters from Doyle’s original series of stories. Doyle’s stories comprise sixty volumes of novels and novellas of which fifty were published before 1923, and thus indisputably in the public domain, while ten (the “Ten Stories”) were published after 1923, and thus remain, at least in part, under copyright protection for several more years. Before publishing the anthologies, Doyle’s estate demanded licenses from the publishing houses. Klinger therefore filed suit seeking a judicial declaration that story elements and characters that were first introduced in Doyle’s pre-1923 works have entered the public domain. In response, Doyle argued that because the Sherlock Holmes and Dr. Watson characters continued to be developed in stories that were first published after 1923, those characters remain subject to copyright protection.

On the merits, Chief Judge Rubén Castillo relied on the Second Circuit’s landmark decision in Silverman v. CBS, Inc., 870 F.2d 40 (2d Cir. 1989), to conclude that Klinger and the public may use any pre-1923 story elements without seeking a license, but that any post-1923 story elements constituting “increments of protection” are protected by copyright. Klinger, 2013 WL 6824923 at *6-7. The Silverman court had previously applied this test, which derives from the Copyright Act’s protection of “derivative works,” to hold that copyrighted radio scripts for the “Amos ‘n’ Andy” program were protected only to the extent they included “increments of expression” further delineating the characters and story beyond what is contained in the public domain works. Silverman, 870 F.2d at 50; see 17 U.S.C. § 103(b) (“The copyright in a compilation or derivative work extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work, and does not imply any exclusive right in the preexisting material”). In reaching its conclusion, the Klinger court rejected Doyle’s argument that Silverman applies only to two-dimensional, “flat characters,” and not to complex, three-dimensional characters such as Sherlock Holmes and Dr. Watson, explaining that Doyle’s approach fails to offer a workable standard for determining whether a character is three-dimensional and protected. Klinger, 2013 WL 6824923 at *7.

As a result of the Klinger ruling, which is presently on appeal to the Seventh Circuit, the public is free to develop new works around the Sherlock Holmes or Dr. Watson characters provided that those works do not incorporate story elements from the Ten Stories that remain under protection—such as Dr. Watson’s second wife and his background as a rugby player, and Sherlock Holmes’ retirement from his detective agency. It remains to be seen whether the practical effect of the Klinger ruling will be to encourage more uses of the public elements of Doyle’s or others’ similarly-situated works in a series, or discourage such uses where it is difficult to distinguish between public and copyrighted story elements that apply to the same fictional character. What is virtually certain is that the Klinger decision will not be the final time that a court is called upon to address this quirk of the Copyright Act.