Sherlock Holmes and the Public Domain: not so Elementary?
On Dec. 23, 2013, the Northern District of Illinois delivered a Christmas present for the Sherlock Holmes lovers of the world: Klinger v. Conan Doyle Estate Ltd.,1 a suitably labyrinthine decision that should resolve any lingering mystery about the public domain status of the Sherlock Holmes stories by Sir Arthur Conan Doyle. Break out the deerstalker hat and calabash pipe as we describe the Klinger case and the creative, albeit unsuccessful arguments both sides asserted in their battle over the future of the 127-year-old Holmes franchise.
The Parties and the Works
Conan Doyle Estate Ltd. (Conan Doyle) is a company owned by members of Sir Arthur Conan Doyle's family. Conan Doyle licenses its intellectual property, including copyrights, in the works of Sir Arthur Conan Doyle, including the Holmes works, to third parties through its exclusive authorized licensing agents in the United States. Leslie Klinger is the author and editor of 27 books and dozens of articles in the mystery and thriller literature genre, including two dozen books and numerous articles on Sherlock Holmes.
The Holmes works by Doyle comprise four novels and 56 short stories (the canon) featuring the fictional characters of detective Sherlock Holmes and his friend and colleague Dr. John H. Watson. Doyle introduced these characters in "A Study in Scarlet," which was first published in Beeton's Christmas Annual in 1887 and first released in the United States in 1890. All four novels and 46 of the 56 short stories were first published in the United States on various dates prior to Jan. 1, 1923. The law is clear, and the parties agreed, that works published in the United States. before this date are in the public domain in this country, but Conan Doyle nonetheless argued that the Holmes and Watson characters per se did not lapse into the public domain when the stories did. Conversely, 10 of the short stories were published later, and remain under copyright protection (the Ten Stories), but Klinger argued that certain elements of these stories were not sufficiently original to warrant copyright protection and should thus be free to use.
Without the consent of Conan Doyle, Klinger compiled A Study In Sherlock, an anthology of newly written Sherlock Holmes stories by contemporary authors, published by Random House. Despite the public domain status of the pre-1923 works, Conan Doyle objected to the inclusion of the Holmes and Watson characters, and Random House ultimately agreed to take a license. Klinger also compiled a second anthology of new Holmes stories, In the Company of Sherlock Holmes, under contract with Pegasus Books and W.W. Norton & Co. One of the contributors, literary critic and historian Michael Dirda, included a character from the Ten Stories named Langdale Pike, and Klinger instructed Dirda to seek a license from Conan Doyle "for the use of any character or story elements that [are] still under copyright protection." Upon learning of the second anthology, Conan Doyle threatened to sue Pegasus and to shut down sales of the second anthology through third parties such as Amazon and Barnes & Noble.
Klinger responded by filing an action seeking a declaration that various characters, character traits and other story elements from Doyle's Sherlock Holmes stories are free for the public to copy without infringing Conan Doyle's rights under the Copyright Act, and enjoining Conan Doyle from asserting rights in the Holmes story elements or interfering with Klinger's exploitation of them. The game was afoot.
The Pre-1923 Elements
Conan Doyle recognized that the pre-1923 stories were in the public domain, but argued that because the characters of Sherlock Holmes and Watson were continually developed throughout the entire canon, the copyright protecting the Ten Stories should extend to the Holmes and Watson characters and the story elements pertaining to those characters. Therefore, it argued, the characters of Holmes and Watson should remain under copyright until the last of the Ten Stories expires in 2022 (or 2023; the parties could not agree as to the correct date, but the issue was ultimately moot).
Chief Judge Ruben Castillo relied almost exclusively on U.S. Court of Appeals for the Second Circuit and Southern District of New York precedent to reject Conan Doyle's argument for protecting the characters beyond the initial stories in which they appeared. In Silverman v. CBS,2 the Second Circuit addressed an almost identical issue regarding the comedy characters "Amos n' Andy," who had significant success beginning in radio in 1928 and continuing through broadcast and syndicated television until 1966. The Amos n' Andy radio scripts from the 1928-1948 period had lapsed into the public domain for lack of timely renewal, but the post-1948 scripts remained under copyright. The Second Circuit held that the characters as delineated in the earlier scripts were public domain, but that new character traits and other elements first introduced in the post-1948 period remained subject to copyright.
In 2004, the Southern District actually applied Silverman to the Sherlock Homes canon itself, finding in Pannonia Farms v. USA Cable,3 that only the "increments of expression" added by the Ten Stories were protected by copyright. Conan Doyle was not a party to the Pannonia Farms case.
Citing Silverman and Pannonia Farms as persuasive authority, the Klinger court held, "[w]here an author has used the same character in a series of works, some of which are in the public domain, the public is free to copy story elements from the public domain works." Conan Doyle argued that the effect of such a holding would be to "dismantle Sir Arthur Conan Doyle's characters into a public domain version and a copyrighted version," Klinger at *23, but the court replied that this was "precisely what prior courts have done."
The court rejected Conan Doyle's attempt to distinguish Silverman on the basis of the purportedly "two-dimensional" nature of the Amos n' Andy characters, and noted that adopting Conan Doyle's position would "extend impermissibly the copyright in certain character elements of Holmes and Watson beyond their statutory period, contrary to the goals of the Copyright Act."
The Post-1923 Elements
As for the post-1923 works, the Ten Stories, it was Klinger's arguments that failed to persuade. The court cited the following new, post-1923 elements as to which Klinger sought a declaration: (1) Watson's second wife, first introduced in 1924 (in "The Illustrious Client"); (2) Watson's background as an athlete, first described in 1924 (in "The Sussex Vampire"); and (3) Holmes' retirement from his detective agency, first referenced in 1926 (in "The Lion's Mane"). Klinger asserted that these specific post-1923 elements he allegedly infringed were "events rather than characterizations of Watson and Holmes, and as such, are not copyrightable."
The court disagreed, relying on U.S. Court of Appeals for the Seventh Circuit authority which recognizes copyright in "increments of expression" added to derivative works. First, the court found that the Ten Stories are in fact derivative works of the pre-1923 stories, despite Conan Doyle's contrary argument that "no single work in the Canon is a derivative of another work." Citing the statute, 17 U.S.C. 101, the court noted that a derivative work is "a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted."
The court also cited other cases finding sequels to be derivative works, including Micro Star v. Formgen, 154 F.3d 1107, 1112 (9th Cir. 1998) (user-created files based on copyrighted Duke Nukem computer game "are surely sequels, telling new…tales of Duke's fabulous adventures. A book about Duke would infringe for the same reason, even if it contained no pictures") and Salinger v. Colting, 641 F.Supp.2d 250, 267 (S.D.N.Y. 2009) (holding that an unauthorized novel that continues the story of Catcher in the Rye and its protagonist constitutes an infringing derivative work).
Because the Ten Stories are derivative works, the court continued, Seventh Circuit law applies a low threshold of originality for "increments of expression" to be protectable. See Bucklew v. Hawkins, Ash, Baptie & Co., 329 F.3d 923, 929) (7th Cir. 2003) ("the only originality required for a new work to be copyrightable is enough expressive variation from public-domain or other existing works to enable the new work to be readily distinguished from its predecessors").4 As a result, the court found that the post-1923 story elements from the Ten Stories met the increments of expression test and were copyrightable.
Seeking to avoid this result, Klinger contended that the post-1923 story elements were not susceptible to copyright protection because they are events, not characteristics, citing Scott v. WKJG, 376 F.2d 467, 469 (7th Cir. 1967) ("Copyright protection does not extend to ideas, plots, dramatic situations and events"). The Klinger court rejected this argument and held that the post-1923 story elements do not fit into any of the categories articulated by Scott but instead consist of a character (Watson's second wife), character trait (Watson's athleticism), and storyline (Holmes' retirement), all of which are copyrightable increments of expression. Therefore, to the extent that Klinger sought to use these post-1923 elements without consent, he could be held to infringe. The court concluded that "Klinger is entitled to use the Pre-1923 Story Elements" but "[t]he Post-1923 Story Elements are protected under copyright, and as a result neither Klinger nor the public are entitled to use them."5
As Klinger's anthologies appear to demonstrate, there is still a robust market for new adventures featuring Holmes and Watson. Unlike other pop-culture "fan fiction" subjects such as Star Trek or The Hunger Games, however, the Holmes canon contains copious public domain material that any would-be Holmes author or filmmaker can safely publish and commercialize without fear of legal repercussions. Going forward, such creators will need to avoid literary elements that first appeared in the Ten Stories, at least until these works too enter the public domain in 2022 or so, but this would not seem to present an insuperable hurdle for a motivated sequelist. Holmes fans may be enjoying Klinger's Christmas present for years to come.
Robert W. Clarida is a partner at Reitler, Kailas & Rosenblatt, and the author of the treatise 'Copyright Law Deskbook' (BNA). Robert J. Bernstein practices law in The Law Office of Robert J. Bernstein.
1. No. 13 C 1226, 2013 U.S. Dist. LEXIS 180493 (N.D. Ill. 2013).
2. 870 F.2d 40, 50 (2d Cir. 1989).
3. No. 03 Civ. 7841, 2004 U.S. Dist. LEXIS 23015 (S.D.N.Y. 2004).
4. This standard is very similar to the "distinguishable variation" test in the Second Circuit under L. Batlin & Son v. Snyder, 536 F.2d 486 (2d Cir.) cert. den. 429 U.S. 857 (1976).
5. Klinger at *33-34.