No. 35
April 2014
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Sherlock Holmes and the Peculiar Case of the Partial Copyright
(Article by Uli Widmaier, Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Chicago, USA)
Sherlock Holmes arrived on the literary scene in 1887 (1890 in the U.S.) with the publication of Sir Arthur Conan Doyle's mystery novel A Study in Scarlet. Even today, audiences still crave new Sherlock Holmes stories. Leslie Klinger co-edits collections of Sherlock Holmes stories by contemporary authors, which he plans to publish without a license from the Conan Doyle Estate.

The Estate is not amused by this facet of its protagonist's continued vitality. The Estate threatened Klinger and his publisher with legal action for copyright infringement. In response, Klinger filed a federal court action for declaratory judgment of non-infringement. On December 23, 2013, the court ruled on Klinger's motion for summary judgment.

Under U.S. law, all Sherlock Holmes stories published prior to January 1, 1923, are in the public domain. The ten Sherlock Holmes stories published after that date remain under copyright. Can a new story that draws solely on elements from the pre-1923 works be published without a license from the Estate?

Not at all, argued the Estate, proffering “a novel legal argument that the characters of Sherlock Holmes and Dr. Watson continued to be developed throughout the copyrighted Ten Stories and therefore remain under copyright protection until the final copyrighted story enters the public domain in 2022.”

The court rejected this argument. “The effect of adopting [the Estate's] position would be to extend impermissibly the copyright of certain character elements of Holmes and Watson beyond their statutory period, contrary to the goals of the Copyright Act.” In other words, once story elements are in the public domain, they cannot be clawed back by showing that they form an integral whole with other elements that remain protected.

What about new Sherlock Holmes stories that draw on themes from still-copyrighted works? The stories in Klinger's planned books mentioned Dr. Watson's second wife and his background as an athlete, as well as Sherlock Holmes's retirement from his detective agency. These elements were introduced after 1923. May a modern author use them without a license?

The answer depends on whether those story elements constitute “increments of expression.” Copyright protects only the “increments of expression” beyond what was already contained in the pre-1923 stories. The test originates from the concept of derivative works. “The only originality required for a [derivative] work to be copyrightable is enough expressive variation from the... existing work to enable the new work to be readily distinguished from its predecessors.”

Klinger argued that Dr. Watson's second marriage and athletic background, and Sherlock Holmes's retirement, are mere unprotectable “events.” The court disagreed. Such a “low threshold [is] required for increments of expression” that even these modest additions to the storyline were sufficient to qualify for copyright protection. Klinger cannot use them without a license.

Klinger requested an injunction barring the Estate from asserting copyright protection as to any Sherlock Holmes story elements whatsoever. While pre-1923 story elements are unprotectable, those dating from 1923 or thereafter remain copyrighted. Klinger's stories used elements from both periods. Since the new elements in the still-copyrighted works qualify as “increments of expression,” they are not lawfully usable without a license. Thus, despite Klinger's success on the merits regarding the pre-1923 works, the court denied Klinger's request for an injunction.

In summary, in a story universe that includes both copyrighted and public domain elements, the copyright owner cannot prevent use of the public domain elements by arguing that they form an organic whole with the copyrighted elements. Conversely, the copyrighted elements do not fall into the public domain as long as they constitute “increments of expression” — a very modest requirement — over the public domain elements. Perhaps the answer, my dear Watson, is elementary after all: it depends on the facts of the case.