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.
