Monday, March 25, 2013

Not so elementary, Watson?

When a work enters the public domain, simply put, it means that that it is free for all to use, “like the air we breathe”. 

Sounds simple and easy, doesn’t it? Before we reach such a conclusion, it is important to examine instances, such as the case of a series of stories revolving around a well-developed character, where it may not be so straightforward. In such cases, copyright would exist not just in the story but also in the character the story is based upon provided such character is sufficiently developed to warrant such protection. Sai Deepak has made several interesting points on this issue herehere and here.

In particular, enforcement of copyright becomes murky when the series is only partially protected under copyright, that is to say, when several stories of the series have already entered the public domain. The question that comes up is whether, as a result, the character based on who such stories are written also enters the public domain.

This is precisely what is being contested by the Conan Doyle estate with respect to copyright in the enormously popular character of Sherlock Holmes. A top Sherlockian scholar, Leslie Klinger has filed a complaint against the estate before the Federal Court in Chicago claiming that the licensing fees that is being demanded by the estate is unnecessary since the characters and elements in the story derive from materials that are now in the public domain. The estate, on the other hand, claims that character is still under copyright protection, till the year 2023, which is when the copyright in Conan Doyle’s last book expires.

Though most of Doyle’s works are in the public domain, stories published post 1923 are protected until 2023. Readers interested in knowing more about the history of ownership in the copyright may refer to this article in the NY Times. (Though it details the complex history of the ownership, the article fails to mention that the fact that the majority of Doyle’s works are now in the public domain)

This said, the mere fact that the series is partially protected under copyright law does not take the character itself out of the public domain as claimed by the estate. When a work enters into the public domain, all aspects of the work, including the character, enter into the public domain. Klinger, in my opinion, is correct in claiming that no license fees can be imposed on the use of the character in this case.

While in this case, Klinger claims that he has avoided the use of any features of the character that have been introduced post 1923, determination of infringement in cases where the character is developed over the course of the series may not be ‘elementary’. Only those attributes of the character that first featured in works that are still protected under copyright law cannot be used by those seeking to include the character in their works though this might be a tedious task for courts to determine.

There is yet another twist in the case of the character in the public domain, which perhaps even Sherlock Holmes may have found difficult to solve. Where trademark in the character has been registered, there has been a disturbing trend where trademark owners in many instances have tried to indefinitely extend their copyright in characters through the enforcement of their trademark rights. (See the Tarzan case, for instance) This is by virtue of the fact that trademarks are perpetual, unlike copyrights, at least till the owner actively uses the trademark.

The Conan Doyle estate, too, has asserted trademark rights in the word mark Sherlock Holmes and in the silhouette image of Sherlock smoking with a pipe.This, however would not exclude anyone from using the character in a novel as trademarks and copyright serve different purposes and seek to protect different aspects of a work.

There is no possibility of the trademark stopping the use of the character is a novel is given that trademarks operate ONLY when such a character is used in the course of trade. Thus, despite trademark law not being able to stop you from using a public domain character such as Sherlock Holmes in a novel, the estate might be able to enforce its rights if the name is used in the tite of the book. This, in my opinion, is the only way in which the owner of a trademark can enforce his rights in relation to public domain characters.

All said and done, this is one judgment that would clarify a lot of doubts on the extent of rights in public domain works that are also protected by other forms of intellectual property.


  1. I was a huge Harry Potter fan while growing up and in between waiting for the next book to release, I used to read up a lot of fan fiction. I was wondering whats your take on where Fan fiction stands on copyright?
    Googling I found that Rowling has no issues with Fan Fiction. I am not clear whether Fan Fiction can be considered as Parody (I don't think so.) I am not sure if fan fiction falls under the purview of Fair Use/Fair Dealing.

  2. When it comes to Fan Fiction, if there is the use of a well developed character, it certainly does amount to copyright infringement. The question, therefore, is whether such employment of the character is covered under fair use\fair dealing. This would depend on how the character is used in the fan fiction.
    If the fan fiction uses a similar plot (most fan fiction does not) and takes substantial elements from the original work, I would think it falls outside the purview of fair use. However, if the character is used in a novel storyline which does not substantially borrow from the original work, it can be considered to be transformative. The farther away Fan Fiction is from the original, the more transformative it is and thus, more the possibility of courts considering it to be fair use.

    Interestingly, Warner Bros. and Rowling brought suit against a Harry Potter fan who created a lexicon which defined fictional facts and terms used in the series. Though the court held this to fall outside fair use, it interestingly noted that as a general matter, the market for reference guides does not exclusively belong to the author.

    To answer your second question, I don't think fan fiction can be categorized as parody as a whole and this too would depend on the nature of the work. Unless there is some sort of a comic element or intended ridicule, all Fan Fiction is not parody.

    I think an interesting issue to consider is whether authors will be able to enforce their moral rights in such works.