Sherlock Holmes and the Public Domain

Over his illustrious 125-plus-year career, Sherlock Holmes has captured the public’s imagination by catching thieves, stopping assassins, and breaking up spy rings. His adventures have led to his appearance in many books, motion pictures, video games, and television series, including two of the most popular programs currently airing. Sir Arthur Conan Doyle’s famed detective’s latest case lands him in an Illinois district court. An earlier blog posting on the case is here.

In December Northern District of Illinois Chief Judge Ruben Castillo ruled against the estate of Holmes’ creator in Klinger v. Conan Doyle Estate, Ltd., a case that has implications for Holmes’s future adventures. The issue before the court was: when does a previously copyrightable character enter the public domain? Just as books, movies, and television shows are protected by copyright, so are their characters.

The question is anything but elementary. The majority of the original Holmes series of books and short stories were published before 1923, and thus have entered the public domain in the US, because US copyright law no longer protects published works of that vintage. However, ten short stories (the “Ten Stories”) were published later than 1923, and thus, are still afforded copyright protection.

Leslie Klinger is a prolific mystery author who has written two dozen books on or featuring the world’s favorite detective. Mr. Klinger had previously co-edited an anthology of new stories featuring Sherlock Holmes. Before it was to be published, Conan Doyle Estate, Ltd. notified Mr. Klinger’s publisher that it owned the applicable rights and would demand a license agreement be entered into for use of the two main characters of the Holmes series: Sherlock, and his partner, Dr. John Watson. The publisher agreed.

Mr. Klinger’s next Holmes anthology was written for publication by a different publisher. Before this new book was to be published, Mr. Klinger contacted an intermediary to inform the Conan Doyle Estate that he would be using a character who first appeared in the Ten Stories. The Estate subsequently contacted Mr. Klinger’s publisher demanding that it enter into a license agreement for its use of Holmes and related characters, and further threatened to contact book retailers to stop sales of the book if it remained unlicensed. Mr. Klinger brought an action for declaratory judgment of the copyright status of the Sherlock Holmes series’ story elements.

Those story elements, including Holmes and Watson, first appeared in works published before 1923, so this should be an open and shut case requiring no deductive reasoning. Why was it not so easy? The answer is that the Estate advanced a novel, if ultimately unsuccessful, argument for the continued copyrightability of the characters. The Estate argued that because some character elements were first developed in the copyright protected Ten Stories, that the character set was not really complete until this point of the last stories. In other words, you complete me – not until the saga is over. So, because fictional “facts” such as Dr. Watson’s athletic career, or Sherlock’s brief retirement, were not revealed until the later Ten Stories, the characters themselves could not be copied.

In his opinion, Judge Castillo rejected the Estate’s argument. His reasoning was based on a similar case involving the “Amos ‘n’ Andy” series. Originally a popular radio program begun in 1928, CBS created a television version of the series in 1951. Decades later, a Broadway producer began writing a musical based on “Amos ‘n’ Andy,” and was sued by CBS for copyright infringement. All of the pre-1948 radio scripts had previously entered the public domain. The court ruled that the producer was free to use the characters and any elements of character or story contained in the pre-1948 scripts. The post-1948 story elements were copyrightable “increments of expression,” or further delineations of the character and story. In finding that the pre-1923 story elements were in the public domain, Judge Castillo espoused the longstanding principle that once a work enters into the public domain, it cannot be restored back into copyright protection.

However, all is not lost for the Estate. While anyone is now free to use the pre-1923 story elements in the US to produce whatever new Sherlock Holmes adventure they wish to create, the creators of these Sherlock derivatives may in fact find financial difficulty exploiting their new works commercially. The Estate still owns several trademarks related to the Sherlock Holmes stories including an array of products from playing cards to chess sets to computer games. This web of trademark protection may discourage publishers and production studios from offering new Sherlock Holmes works, because the lack of merchandising and some trademark fights could limit the profit potential of said works. This point serves as a reminder of the importance of maximizing the protection of intellectual property by pursuing both copyright and trademark protection. Still, Sherlock Holmes’s greatest enemy, though, may not be Moriarty, but the public domain.

In February 2015, our colleague and friend, partner Mark Fischer, passed away. We have made his blog posts available in honor of both his nuanced and wide-ranging knowledge of intellectual property, new media and entertainment law and of his entertaining style. Please read our tribute to Mark in the firm’s Alumni Spotlight publication and his obituary in the Boston Globe.

© 2009- Duane Morris LLP. Duane Morris is a registered service mark of Duane Morris LLP.

The opinions expressed on this blog are those of the author and are not to be construed as legal advice.

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