In his 1924 work “The Adventure of the Illustrious Client”, Sir Arthur Conan Doyle chronicles the quest of his famous detective, Sherlock Holmes, to seize a book belonging to the villainous Austrian Baron Adelbert Gruner in order to prevent the Baron’s marriage to the daughter of Holmes’ client. More than 90 years later, a different story of intrigue starring Holmes and book rights of another sort is playing out before U.S. courts.

Doyle was a prolific writer, publishing fifty-six stories and four novels featuring Holmes between 1887 and 1927 before his death in 1930. Due to a series of statutory extensions of U.S. Copyright Law over the past several decades, the copyrights on Doyle’s works published prior to 1923 expired in 1998, and the chronicles of Holmes’ adventures contained in those publications entered the public domain. The remaining works, a total of ten stories including “The Adventure of the Illustrious Client”, will enter the public domain between 2018 and 2022, depending on their respective first dates of publication. In the meantime, Doyle’s estate has embarked on its own quest to seize as many copyright royalties from the remaining ten stories as it can.

On February 14, 2013, author Leslie Klinger sued Doyle’s estate in a bid to prevent the estate from soliciting another $5,000 licensing fee from the proposed publisher of one of Klinger’s anthologies of original Holmes stories. Klinger’s declaratory judgment action requested a determination that he may freely use the Holmes character from the fifty public domain tales, less any sufficiently copyrightable elements from the ten stories that remain under copyright. The estate countered that a “complex” character such as Holmes remains completely under copyright, despite the fact that some tales of his exploits have already entered the public domain, until the fully-“complexified” Holmes character, as finally revealed in later stories, enters the public domain. In essence, Klinger’s suit asked the court to consider whether copyright protection on a fictional character can be extended beyond its expiration due to modifications of the character appearing in later works. On appeal, in June of 2014, the Seventh Circuit held squarely that it could not. Thus, Klinger, and any other artist, was free to use the Holmes character in his original works, as long as he avoided any of the elements of Holmes’ character added only by the ten protected works. When the Supreme Court rejected the estate’s appeal of this ruling, Holmes (and his assistant Watson, also a subject of the suit) became property of the public domain in the United States.

Mr. Holmes is a fitting character for this analysis, not only because of the time period in which his adventures were published, but because he, as a literary character, is most securely protected by copyright law. By contrast, a more “visual” character like a cartoon may benefit from trademark law, whereby a cartoon character’s visual likeness (or hallmark slogan or other unique characteristic) may receive indefinite protection for its association with a certain individual or company. Literary artists such as Doyle are subject to the “copyright bargain”: a limited duration of protection up front in exchange for releasing the work thereafter to enrich the public domain.

But all is not lost for the Doyle estate. Although not directly at issue in the Klinger case, a few details pointed out by the Court leave openings for narrow slivers of copyright protection for the Holmes and Watson characters. The Court noted, for example, that in the final ten protected works, the reader learns that Holmes has grown to like dogs, and that Watson has been married twice. The use of Holmes or Watson characters bearing these particular characteristics without the Doyle estate’s permission would likely constitute copyright infringement. These “incremental additions” to the Holmes and Watson characters are exactly what the estate points to in their lawsuit, filed last month, against Miramax, LLC and Roadside Attractions LLC, whose U.S. premier of Mr. Holmes, a film about Holmes’ retirement, is set for July 17, 2015. If certain details about the Holmes character depicted in the film are present in the ten protected works and not in any of Doyle’s other published writings, the studios, as well as Mr. Holmes’ director and the author and publisher of the book on which the film is based, may be liable. Until the last Holmes copyright expires in 2022, the Holmes anthologizer would be wise to take a close reading of both the literature and the law.

 

Emily Rohm Billig is an associate in Ober|Kaler’s Intellectual Property Group where she represents small to mid-size businesses, government agencies, educational institutions, nonprofits and individuals with issues related to copyright, trademarks, trade secrets, patents and licensing. She is co-author of Ober|Kaler’s blog on intellectual property issues, www.OberIPWatch.com.