Monday, March 04, 2013

Sherlock Holmes and the Case of the Public Domain

In a suit filed recently in federal court in Chicago[1], a top Sherlock Holmes scholar alleged that many licensing fees paid to the Arthur Conan Doyle estate have been unnecessary, since the main characters and elements of their story derive from materials in the public domain. The suit was brought by Leslie S. Klinger, the editor of the 3,000-page "Annotated Sherlock Holmes" and other Sherlock Holmes-related books. It stems from his book "In the Company of Sherlock Holmes," a collection of new Sherlock Holmes stories by various authors, edited by Klinger and his co-editor Laurie King to be published by Pegasus Books.

The creator of Sherlock Holmes was Arthur Conan Doyle. He published most of his Sherlock Holmes stories from 1887 to 1927.  One might think that Sherlock Holmes is now in the public domain and any writer could freely borrow his character for inclusion in their own story.  However, some of Doyle's stories were published in periodicals as late as 1927, they may be within the protection of U.S. copyright laws. Works published before 1923 are most likely in the public domain, at least under U.S. law. For those stories published after January 1, 1923, they could remain protected until 2023.

According to the lawsuit all the Sherlock Holmes stories entered the public domain under the laws of the United Kingdom and Canada in 1980. However, with the passage of the U. S. Copyright Act of 1976 theauthor of a work that had passed into the public domain in the United States, or his heirs, were entitled to restore the work to copyright in the United States under certainconditions. In 1981, Dame Jean Conan Doyle, the last surviving child of Sir Arthur Conan Doyle, applied for registration of the copyright to "The Case-Book of Sherlock Holmes," a collection of stories. This workis comprised of 12 stories that were first published in various periodicals between 1921 and 1927, and thecollection was first published as a book in the United States in 1927.

The complaint asserts that the Doyle estate sent a letter to Pegasus Books threatening to prevent publication of "In the Company of Sherlock Holmes" unless it was paid a license fee. Kingler's prior publisher, Random House, had reluctantly paid $5,000 fee for an earlier Klinger collection he edited titled "A Study in Sherlock," even though Klinger believed he was not legally required to do so. The suit asks the court to make a declaratory judgment, establishing that the basic "Sherlock Holmes story elements" are in the public domain under U.S copyright law. Klinger claims that the stories in his new collection avoided drawing on copyrighted elements introduced in any of the Holmes stories published after January 1, 1923.

In a 2004 decision, a U.S District court judge Naomi Reice Buchwald determined that of Doyle's 60 Sherlock Holmes stories, nine might still be under copyright.[2]Although the character of Sherlock Holmes is in the public domain, various storylines, dialogue and characters that first appeared in these nine stories could be protected under U.S. copyright law. A copyright for a derivative work based on a prior work does not create copyright protection retroactively for the underlying work but can protect new material that has been added.

Sherlock Holmes continues to be an enormously popular character, even though he is 125 years old. He was recently featured in two Warner Brother films, the BBC's "Sherlock," and the television series "Elementary." The most recent Warner Brothers film "Sherlock Holmes: A Game of Shadows," starring Robert Downey Jr., had an international box office gross of $543 million from distribution in more than 50 countries.

The case raises the issue of which elements of the Sherlock Holmes stories are in the public domain, and which may remain under the protection of copyright law. Copyright can sometimes, but not always, protect characters and plot. Recognition of copyright protection for fictional characters goes back to Judge Learned Hand, who suggested that characters might be protected, independent from the plot of a story. He wrote "It follows that the less developed the characters, the less they can be copyrighted; that is the penalty an author must bear for making them too indistinct." So, while a writer cannot secure a monopoly on hard-boiled private eyes, one could protect a finely drawn character like Sam Spade.

While plots can be protected, stock scenes cannot. The doctrine of scènes à faire excludes from copyright protection scenes that flow from common unprotectable ideas. These would include "thematic concepts or scenes which necessarily follow certain similar plot situations" and ordinary literary incidents and settings which are customary for the genre. Thus, a writer cannot preclude others from using such common devices as a car chase or cattle drive in their stories.

The situation becomes even murkier when one considers that the Sherlock Holmes stories are subject to a confusing web of differing copyright laws across the globe.  There is no such thing as an "international copyright" that will protect an author's work everywhere.  Protection against unauthorized use in a particular country depends on the laws of that country. In other words, Copyright law is applied territorially by every country within its borders. Thus, the duration of copyright protection differs from country to country. Each country enforces its own laws, irrespective of the nationality of the author, or where the work was created or first published. The United States has joined several international copyright conventions to protect American works from infringement in foreign countries. These accords essentially provide for reciprocity of treatment for authors. For example, France agrees to protect the works of American authors in France. In return, the United States protects the work of French authors in the United States.

This means that the United States will protect a French author in the United States in the same manner and extent as the United States protects American authors. It does not mean that French authors will have the same rights in the United States that they have in France under French law. Thus, it is often said that copyright laws are territorial in their application. French law applies in France; American law applies in the United States. This application can produce unexpected results, because American copyright law and French copyright law are quite different. American law focuses on economic rights while French law protects author's creative rights. The issue of whether a work is in the public domain can vary from jurisdiction to jurisdiction, because each country applies its own laws. This poses a potential minefield for publishers of works with international appeal.

U.S. law recognizes the work-for-hire doctrine under which the "author" of a work can be the employer of an artist, not the artist himself. Few countries recognize this doctrine. On the other hand, some countries have doctrines that do not exist under U.S. law. France expressly recognizes the moral rights ("droit moral") of authors. U.S. copyright law only recognizes moral rights in the realm of fine art. Moral rights prevent others from changing the author's work (the right of integrity), or removing the author's name from the work (the right of paternity), even if the author has sold the work and the copyright to it.

Under French law, the rights of integrity and paternity are perpetual, inheritable, inalienable and imprescriptible. Thus, the heirs of an artist can object to the use of their ancestor's work, even if that work's copyright has expired.

In Huston v. Turner Entertainment,[3] the late American director John Huston was determined by a French court to be the author of the American film "The Asphalt Jungle." Under American law, Huston's employer was the author or owner. When Turner Entertainment which had acquired the film, sought to distribute a colorized version of it in France, over French television Channel 5, Huston's heirs initiated an action in the French Courts under the French moral rights law, seeking an injunction and damages against Turner and Channel 5. 

The French Supreme Court ruled that the transformation of the work from a black and white film to a colorized version was a breach of Huston's moral rights, even though these rights were not recognized in the United States. It did not matter that Huston was a U.S. citizen directing a movie for a U.S. company (MGM), which was shot on the MGM lot in Los Angeles. Moreover, the contract with Huston granted MGM all rights, and provided that American law would govern any dispute. France's highest court found for Huston's heirs on the grounds that French moral rights laws may not be violated in France regardless of the terms of a contract made elsewhere. The court held that it was against public policy to permit foreign law or foreign contracts to change the French system of moral rights within France.  Ultimately, the French courts entered judgment against Turner Entertainment for 400,000 francs and against French Channel 5 for 200,000 francs, and prohibited distribution of the colorized film in France.  

So, while Sherlock Holmes is a brilliant detective, even he may find it difficult to sort out the conflicting copyright laws of different nations.

[1]Klinger v. Conan Doyle Estate, Ltd., 1:13- cv-01226, U.S. District Court, Northern District of Illinois (Chicago).
[2] Pannonia Farms, Inc.,   v   USA Cable, 2004 U.S. Dist. LEXIS 23015; 72 U.S.P.Q.2D (BNA) 1090
 [3] Huston v. Turner Entertainment, French Court of Cassation, 1991, cited in article "International Copyright Litigation in U.S. Courts: Jurisdiction, Damages and Choice of Law" by Lionel S. Sobel; Emerging Issues in Intellectual Property Practice, CEB Program Handbook, p. 83, April 1994, California Continuing Education of the Bar.