Currently pending before the United States District Court for the Northern District of Illinois is a case that will determine whether the Estate of Sir Arthur Conan Doyle has any remaining copyright interest in the iconic character of Sherlock Holmes, and his friend and companion in sleuthing, Dr. John Watson.
The fictional detective and his sidekick first made their appearances in “A Study in Scarlet,” published in 1887. By 1923, Doyle had written and published some fifty-six short stories and four novels wherein Holmes and Watson solved numerous cases through Holmes’ unique analytic and deductive methods, all the while interacting with various supporting characters, including Scotland Yard’s Detective Lestrade, their landlady Mrs. Hudson, Holmes’ brother Mycroft, and his arch-nemesis Professor Moriarty. Each of those pre-1923 works is now in the public domain in the United States. Approximately ten Sherlock Holmes stories, published after 1923, remain protected by copyright.
Malibu lawyer, and Sherlock Holmes aficionado, Les Klinger, is the author of numerous books and articles regarding the Sherlock Holmes canon. In 2011, he published, as co-editor, a collection of new short stories by contemporary writers featuring Sherlock Holmes and some of his supporting characters, titled “A Study in Sherlock.” In connection with that publication, the Doyle Estate demanded, and Klinger’s then-publisher paid under protest, a license fee for the use of Holmes and the other characters in the story collection.
Klinger recently compiled and edited, and is ready to publish, a second collection of new Sherlock Holmes stories by contemporary writers, tentatively titled “In the Company of Sherlock Holmes.” The Doyle Estate has once again demanded a license fee, but Klinger’s new publisher would not agree to pay it. Neither would it publish the new story collection while the Doyle Estate’s claim of copyright ownership remained unresolved.
Accordingly, Klinger has filed a single cause of action complaint against the Estate, seeking a declaration that the Sherlock Holmes character, as well as the other characters that first appeared in the pre-1923 works, are in the public domain, and can freely be used by Klinger or anyone else in new literary or audio visual works without infringing on any of the Estate’s copyrights.
Klinger’s position is that Holmes and Watson (as well as the other supporting characters) were fully delineated characters, with all of their respective well-known characteristics, by 1923, and accordingly the characters fell into the public domain along with the works in which they first appeared. The Estate’s position, as expressed by its attorney to the New York Times shortly after the filing of the lawsuit, is that “Holmes is a unified literary character that wasn’t completely developed until the author laid down his pen.” Since Doyle included the Sherlock Holmes character in ten stories published after 1923 – that are still within the term of copyright protection – the Estate apparently is arguing that the copyright in the character will remain with the Estate until the last of those post-1923 works falls into the public domain.
This case highlights an interesting issue – that of the copyrightability of a character as separate and distinct from the work in which that character appears. It was first addressed in 1930 by Judge Learned Hand in Nichols v. Universal Pictures, and Judge Hand’s description of the issue remains to this day the touchstone for determining when a character becomes copyrightable:
“If Twelfth Night were copyrighted, it is quite possible that a second comer might so closely imitate Sir Toby Belch or Malvolio as to infringe, but it would not be enough that for one of his characters he cast a riotous knight who kept wassail to the discomfort of the household, or a vain and foppish steward who became amorous of his mistress. . . . It follows that the less developed the characters, the less they can be copyrighted; that is the penalty an author must bear for marking them too indistinctly.” 45 F.2d 119, 121 (2d Cir. 1930).
In 1954, in a case involving Dashiell Hammet’s Maltese Falcon, the Ninth Circuit applied a rigorous test for granting copyright protection to a character – namely, whether the character “constitutes the story being told.” If so, then he is protected by copyright. If, on the other hand, “the character is only the chessman in the game of telling the story he is not within the protection afforded by copyright.” Warner Bros. Pictures, Inc. v. Columbia Broadcasting System, Inc., 216 F.2d 945 (9th Cir. 1954).
The factual circumstances of that case – which no doubt influenced the court’s conclusions – were unusual: Warner Bros. had been assigned the copyright in the Maltese Falcon in order to produce a motion picture based on the novel. When Hammett then assigned the Sam Spade character to CBS for use in different stories, Warner sued for copyright infringement. The Court found that Hammett – the original author – had the right to put his characters in other works and assign them to other parties, notwithstanding the fact that Warner had the rights to the original story, because the character was not itself copyrightable:
“We conclude that even if the Owners assigned their complete rights in the copyright to [Maltese Falcon], such assignment did not prevent the author from using the characters used therein, in other stories. The characters were vehicles for the story told, and the vehicles did not go with the sale of the story.” Id.
Cases from other Circuits, and later Ninth Circuit cases, have applied a less stringent test, requiring only that character in question be sufficiently distinctly delineated, with consistent, identifiable traits, in order to warrant copyright protection independent of the story in which he appeared. See Walker v. Time Life Films, Inc., 784 F.2d 44, 50 (2nd Cir. 1986); Rice v. Fox Broadcasting Co., 330 F.3d 1170, 1175 (9th Cir. 2003).
Under any analysis, however, it would appear that at least the great Sherlock Holmes was, within the first handful of stories, highly delineated, perhaps even to the point of constituting “the story being told.” As noted by another court, “[i]ndeed, audiences do not watch Tarzan, Superman, Sherlock Holmes, or James Bond for the story, they watch these films to see their heroes at work.” Metro-Goldwyn-Mayer, Inc. v. American Honda Motor Co., Inc., 900 F.Supp. 1287, 1296 (C.D. Cal. 1995).
If the Sherlock Holmes and Dr. Watson characters in fact reached copyrightable status in the earlier works, then it should follow that when those works fell into the public domain, so did the character. Accordingly, it will be interesting to see how the Estate defends the action, and what the ultimate ruling of the Northern District of Illinois will be. Given the significant number of Sherlock Holmes works currently being produced and distributed, it is undoubtedly a matter of substantial financial import to the Estate.