US District Judge rules on Sherlock Holmes copyright dispute

by DLA Piper
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On 23 December 2013, US District Judge Ruben Castillo ruled that some key characters in the Sherlock Holmes series created by Sir Arthur Canon Doyle are free for the public to copy without infringing the copyright of Conan Doyle’s estate (“Conan Doyle“). Castillo found that while some of the storylines created by Sir Arthur Conan Doyle are still protected by copyright (the final ten short stories published after 1923), the fictional detective and his trusty companion Dr Watson are not.

The decision comes after Klinger, a Sherlock Holmes expert and author, brought a lawsuit against Conan Doyle in February 2013 when they demanded a fee in return for using the fictional detective in new stories featuring Sherlock Holmes.  Klinger argued that whilst some of the Holmes’ storylines are still protected by copyright,  characters (including Sherlock himself) and many story elements originated in works that have now entered the public domain (stories published pre-1923) and therefore writers should be able to use them freely. In the US copyright continues in force 70 years after the death of the author, or 95 years after publication. Conan Doyle argued that the character of Sherlock Holmes should remain under complete copyright protection until the copyright of the last of the ten stories expires in 2022; furthermore because the later stories include major character developments for Holmes and Watson, the characters should be protected as whole, including portrayals in the earlier works.  Judge Castillo agreed with Klinger and found that only the final ten stories (and story elements included in those stories such as  Dr Watson’s wife and background as an athlete and the retirement of Sherlock Holmes) can remain protected under US law. 

The decision will be good news for writers and film makers wanting to create adaptations featuring the character of Sherlock Holmes. Although copyright has expired in only some of the stories, Castillo’s decision means that writers may use Sherlock Holmes without paying licence fees or obtaining approval from Conan Doyle.

We analyse the decision in more detail below.

On 23 December 2013, US District Judge Ruben Castillo granted a partial summary judgement that various characters (including Sherlock Holmes himself and his companion  Dr Watson), character traits and other story elements from Sir Arthur Canon Doyle’s famous Sherlock Holmes series are free for the public to copy without infringing the copyright of Conan Doyle’s estate (“Conan Doyle“).

Klinger, a Sherlock Holmes expert and editor of various anthologies of Sherlock Holmes stories, sought to have the Court determine the copyright status of various story elements in the four novels and 56 short stories of the Sherlock Holmes canon. This was to clarify whether his proposed collection of new and original short stories (entitled  In the Company of Sherlock Holmes) featuring elements from the canon required a license from Conan Doyle’s estate.

In the US, copyright continues in force 70 years after the death of the author, or 95 years after publication. Sir Arthur Canon Doyle first introduced Sherlock Holmes and Dr Watson in a short story in 1887. The four novels and forty six of the fifty six short stories were first published in the US on various dates prior to January 1 1923. Therefore only ten stories remain under copyright until 2022.

Klinger’s motion for summary judgement rested on two propositions:

  1. that the story elements in the pre-1923 stories are in the public domain and are thus available for public use; and
  2. that the story elements in the post-1923 stories (the ten remaining short stories), are events that are not essential to the story or characters of Sherlock Holmes and Dr Watson and therefore do not constitute incremental expression susceptible to copyright.

The First Proposition

Klinger argued that the story elements in the pre-1923 stories have entered the public domain and are thus free to any member of the public to use. Conan Doyle did not dispute the fact that all the stories in the canon (except the ten stories) were in the public domain. Rather, Conan Doyle argued that the characters of Sherlock Holmes and Dr Watson continued to be developed throughout the copyrighted ten stories and therefore remain under copyright protection until the final copyrighted story enters the public domain in 2022. In this way, because the Sherlock Holmes story elements include character attributes that are under copyright protection, Conan Doyle argued that the Court could not find that the elements are in the public domain;  Holmes remains a “single complex character” who cannot be “dismantled.”

However, the Court sided with Klinger and ruled that  “it 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.” Therefore having established that all but ten stories have passed into the public domain, the Court concluded on the first point that the pre-1923 story elements are free for public use. The Court stated that “the effect of adopting Conan Doyle’s position would be to extend impermissibly the copyright of certain character elements of Holmes and Watson beyond their statutory period, contrary to the goals of the Copyright Act.”

The Second Proposition

Klinger argued that although some of the Sherlock Holmes story elements included elements first introduced in post-1923/copyrighted ten stories, these elements are events rather than characteristics of Dr Watson and Sherlock Holmes and as such are not copyrightable; in the US, according to the rule in Scott v WKJG,copyright does not extend to ideas, plots, dramatic situations and events.” Such story elements under contention included Dr Watson’s second wife and athletic background, as well as Sherlock Holmes’ retirement. Klinger contended that any material first introduced in the ten stories did not “complete” the characters and therefore did not qualify for copyright protection.  However, the Court maintained that instead of  deciding whether elements “completed” a character, case law instructs that the “increments of expression” test should be applied. The Court applied the 7th Circuit precedent regarding incremental expression, “the only originality required for a new work to be copyrightable is enough expressive variation from public domain… to enable the new work to be readily distinguished from its predecessor.”  Applied to the present case these would be “storylines, dialogue, characters and character traits newly introduced in the ten stories.” The post-1923 story elements described above “originated” in the copyrighted ten stories and therefore constitute original expression beyond what is contained in the public domain portion of the canon. In this way, the Court found that the “low threshold of originality required for increments of expression counsels toward finding the post-1923 story elements are copyrightable.” Disagreeing with Klinger’s contention that the referenced elements are “events” and therefore not capable of copyright protection, the Court confirmed that the story elements are not events but consist of a character, character trait and storyline, which are copyrightable increments of expression and therefore are not yet in the public domain.

Therefore Klinger’s motion for summary judgement was in part granted and in part denied; granted with respect to Klinger’s use of the pre-1923 story elements and denied with respect to Klinger’s use of the Post -1923 story elements. Whilst Conan Doyle have expressed their intention to appeal, this decision seems likely to pave the way for more adaptations based on the Sherlock Holmes character, since the famous character himself has now been determined as in the public domain and free to use.

 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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