LITIGATIONINTELLECTUAL PROPERTY >> ALERT

SHERLOCK HOLMES COMES OUT OF THE PAGESEVENTH CIRCUIT SAYS PUBLIC DOMAIN CHARACTERS MAY LEAD FICTIONAL LIVES APART FROM THEIR COPYRIGHT OWNERS

The cast of fictional characters who are public domain in the United States, and, thus, available to writers, filmmakers and other creatives to copy without copyright permission or payment, became more firmly entrenched last month when the Supreme Court declined to hear an appeal challenging the public domain status of the literary characters Sherlock Holmes and Dr. John Watson.

The estate of Sir Arthur Conan Doyle, creator of the Holmes and Watson characters, had petitioned the Supreme Court to overturn the decision by the Seventh Circuit Court of Appeals in Klinger v. Conan Doyle Estate, Ltd. holding that Holmes and Watson are in the public domain because the earliest works in which the two characters appeared — four novels and forty-six short stories — are in the public domain.

The Doyle estate had contended that Holmes and Watson remain protected by copyright notwithstanding their appearance in fifty public domain works because the characters were not fully developed until their appearance in ten later short stories by Doyle, all of which still are protected by copyright. By denying the Doyle estate’s appeal the Supreme Court let stand the Seventh Circuit’s ruling that fictional characters who are featured in public domain works are also in the public domain, and the fact that these characters further developed in other copyright protected works will not claw them back into copyright.

The precedent established by the Seventh Circuit decision goes far towards ensuring that a wide range of popular fictional characters who straddle public domain and copyright protected literary works, such as Conan the Barbarian, Olive Oyl, Hercule Poirot, Tarzan, Zorro, and Dorothy, the Scarecrow, the Tin Man, the Cowardly Lion and the Wizard of Oz, remain freely available for use by the public. That said, the Klinger decision does not confer an unconditional license to copy public domain characters, and, as the court and the parties’ filings in the case expressly acknowledge, use of public domain characters without permission from their rights holders may carry

significant risk of challenge and liability on two other grounds.

First, Klinger confirms that aspects of a fictional character that are covered in public domain works are free to copy, but aspects of the character that are introduced in copyright protected works may not be. In the case of the Sherlock Holmes canon, this allocation of character traits and story elements between public domain and copyright protected works means that Holmes’s Baker Street address, drug addiction, deductive reasoning and nemeses Professor Moriarty and Charles Augustus Milverton, for example, are public domain, but Holmes’s interest in dogs and Watson’s second wife and background as an athlete, for example,

DECEMBER 2014

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LITIGATIONINTELLECTUAL PROPERTY

DECEMBER 2014

are not. (The Klinger court did not consider, and the parties seemingly did not raise, the issue of whether any of the non-public domain character traits and story elements may be free for use on the independent bases that they are “scenes a faire,” i.e., unprotected stock narrative elements, or that they are unprotected generalized ideas. Certainly it could be argued that, for example, Watson’s military career, which is detailed in the public domain works, made his athletic background, which arises in the copyrighted works, an unsurprising and commonplace stock character trait which should be free for the public to copy and use.)

Second, Klinger is a copyright case only and does not eliminate or otherwise weaken any trademark protection that fictional characters separately may receive. Indeed, fictional characters commonly are protected by both copyright and trademark, and when a character’s copyright protection lapses and the character falls into the public domain any trademark protection the character’s name, image and other identifying features enjoy remains unaffected. Thus, an unlicensed use of the public domain Sherlock Holmes characters and plot elements may be immune from a copyright infringement claim but still could be vulnerable to a trademark infringement claim if the use is likely to suggest falsely that the Doyle estate sponsors, approves of or otherwise is associated with the use.

Notably, unlicensed use of a fictional character trademark is more likely to be found infringing if the use is commercial in nature, such as advertising or merchandizing, than if the use is artistic in nature, such as a book, film or television program, because artistic uses receive heightened protection under the First Amendment. (However, even a commercial use may be able to defeat a trademark claim if the fictional character depicted has become, as a result of its public domain status, so widely used by third parties that the character no longer serves to identify a single owner or source, and thus no longer can be protected as a trademark.)

It also should also be noted that Klinger is silent on the question of when a fictitious character is sufficiently detailed that the character crosses the threshold separating unprotected idea from protected expression. (The Klinger parties seemingly conceded that Sherlock Holmes and John Watson were sufficiently delineated across the fifty public domain texts to constitute copyrightable characters.) As established by decades of case law, until a person is specific and developed enough to constitute a distinctive character the person is merely an idea that the public is free to copy. 

Thus, in the Sherlock Holmes stories, a person identified only as “the woman”

and who is merely mentioned in passing in a single story likely would not constitute a protected character, but the same person once given a name, a backstory, a detailed physical description and memorable interactions with Holmes and/or Watson surely would be. In instances where fictional characters achieved the requisite degree of delineation only incrementally across multiple copyright protected works this issue is important because it allows free use of those characters up until the point that they achieved copyrightable status, just as if those characters, up to that point, were in the public domain.

FOR MORE INFORMATION Ashima A. Dayal Partner, Advertising, Marketing & Promotions 212.468.4912 adayal@dglaw.com

Brandie J. Lustbader Associate, Litigation 212.468.4821 blustbader@dglaw.com

or the D&G attorney with whom you have regular contact.

Davis & Gilbert LLPT: 212.468.48001740 Broadway, New York, NY 10019www.dglaw.com

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