Protection of Literary Characters

[Jackx]

What is the name of your state? UK

Under US copyright law is Sherlock Holmes in the public domain or is the character still protected? There is no trademark. The complication is that all the original series of books are in the public domain except one. The Casebook of Sherlock Holmes does not come into the public domain until 2023. All the others are already unprotected.

 

[divgradcurl]

There is no trademark.

Maybe not in the UK (although there probably is), but there certainly is a trademark for Sherlock Holmes (the character) in the U.S. See record 78461204 at www.uspto.gov, click on trademarks, then go to TESS and search for "Sherlock Holmes". You will see that the character is covered by trademark in the U.S.:

"IC 009. US 021 023 026 036 038. G & S: photographic, cinematographic, optical, measuring, life-saving and teaching apparatus and instruments, namely, magnifying glasses and disposable cameras; calculating machines, namely, digital calculators; computers; computer hardware and computer software,namely, computer game software; recorded digital versatile disks featuring material concerning and relating to the literary characters Sherlock Holmes, spectacles, glasses, sunglasses, monocles, blank and recorded video cassettes, audio cassettes and compact discs featuring motion picture films and audio books concerning and related to the literary character Sherlock Holmes and video game machines for use with televisions"

"IC 016. US 002 005 022 023 029 037 038 050. G & S: paper, cardboard, and goods made from these materials, namely,note pads, note books, posters, postcards, greeting cards; printed matter, namely, books concerning and related to the literary character Sherlock Holmes, film stills and photographic prints;photographs; stationery, pens, namely, fountain pens, ball point pens, pencils, namely, propelling pencils, book marks"

The trademark is owned by The Sherlock Holmes Memorabilia Company Limited CORPORATION UNITED KINGDOM Palladium House, 1-4 Argyll Street London UNITED KINGDOM W1F 7LD

As far as copyright is concerned, if the book is in the public domain in the UK, it is in the public domain in the U.S. And vice-versa, if it is NOT in the public domain in the U.S., it is also NOT in the public domain in the UK (with a few very narrow exceptions).

 

[Jackx]

You are quite right. There are numerous trademarks in force in the United States for "Sherlock Holmes Bathmats", "Sherlock Holmes Magnifying glasses" and the like. BUT unlike Mickey Mouse no one has been able to trademark the literary character Sherlock Holmes as a trademark anywhere in the world. Andrea Plunket who claims to control the Arthur Conan Doyle literary estate attempted this and was turned down. She was also turned down in Federal Court in attempts to assert her rights to the copyrights.It iS accepted that because of delays in the 1920s releasing the original magazine stories that make up the book known as The Casebook of Sherlock Holmes copyright will endure until 2023 although some of those stories will fall into the public domain from 2016. I refer you to, inter alia, Sherlockian.Net: Copyright and also the WATCH file at the University of Texas. Conan Doyle died in 1930. Library of Congress establishes that copyright remains in The Casebook of Sherlock Holmes, but not the other stories.

I happen to be in London England, but my interest is solely in the US status of the character.

So the question remains: in copyright terms, if all of the books featuring Sherlock Holmes are in the public domain except one, The Casebook of Sherlock Holmes, is the character in the public domain? And could, say, a filmmaker, make a movie featuring him without recourse to the estate of Arthur Conan Doyle. Maybe a movie of a public domain story like The Hound of the Baskervilles.

 

[divgradcurl]

So the question remains: in copyright terms, if all of the books featuring Sherlock Holmes are in the public domain except one, The Casebook of Sherlock Holmes, is the character in the public domain?

Not necessarily -- in the U.S., it looks like there is a trademark on the character.

Discussing this from purely a copyright perspective is a little more difficult, because it can be difficult to completely protect a character using only copyright. But so long as a work remains covered by copyright, there is at least the potential that the copyright owner could attempt to assert their rights under copyright law

When a work moves into the public domain, anyone is free to duplicate or distribute the work without having to get permission or pay anyone. This also extends to the creation of derivative works. It is hard to see how you could make a derivative work from a public domain Holmes novel if the Holmes character was still fully covered under copyright law. That's why this isn't a simple question -- you have to really look at all of the facts to determine whether or not a particular character is "protected" under copyright law.

BUT unlike Mickey Mouse no one has been able to trademark the literary character Sherlock Holmes as a trademark anywhere in the world. Andrea Plunket who claims to control the Arthur Conan Doyle literary estate attempted this and was turned down.

The "sherlockian.net" website doesn't discuss the issue of trademark. There apparently IS a trademark in the U.S. owned by The Sherlock Holmes Memorabilia Company Limited. TESS shows the trademark as live; it does show that there was an opposition recorded in 2006, but as of today, the trademark exists and is enforceable in the U.S. IT would require more research to determine what the status of the opposition is.

Maybe a movie of a public domain story like The Hound of the Baskervilles.

That would clearly be allowed, since the work is in the public domain -- EXCEPT that a trademark exists for the character (in the U.S., at least). As long as that trademark appears as Live, it's not somethig you can just ignore or say that it shouldn't be. In my earlier post, I posted the relevant sections from the trademark registration that would cover books and movies, and they clearly are asserting that they hold a trademark on the character itself, not just a logo.

 

[Jackx]

Leaving aside the trademark issue for the moment, you seem to say two opposed things regarding copyright. First you say it is difficult to see how anyone could create a derivative work from a public domain novel if the central character where still fully protected in a work covered by copyright. But then you say it would be possible to make a movie of, for example, The Hound of the Baskervilles which is in the public domain. Yet The Casebook of Sherlock Holmes is still protected fully. Can you help me understand this?

With regard to the trademark, neither of the organisations which claim to represent the Arthur Conan Doyle Literary estate accept that such a trademark exists and the Sherlock Holmes Memorabilia Company in response to an email say they claim nothing but protection for their range of Sherlock Holmes souvenirs which they sell to tourists in london, England.

I have reviewed the papers which you cited, but they appear to relate solely to the logo, eg "Sherlock Holmes Deerstalker Hat". The DVDs and movies mentioned cannot by any stretch of the imagination be protected by this trademark, since those films and TV shows are the property of the Studio or TV company.

 

[divgradcurl]

First you say it is difficult to see how anyone could create a derivative work from a public domain novel if the central character where still fully protected in a work covered by copyright. But then you say it would be possible to make a movie of, for example, The Hound of the Baskervilles which is in the public domain. Yet The Casebook of Sherlock Holmes is still protected fully. Can you help me understand this?

The reason my answer was evasive, in a way, was because I remembered caselaw going both ways, and didn't have time to do the research. I did a quick check in one my references, and it appears that, as of 2002 at least, this question was not completely settled. In Silverman v. CBS, Inc., 870 F.2d 40 (2d Cir. 1989), the courts apparently stated that as long as a character is covered by copyright, infringement can occur (I am reading from a summary, not the original case). It does appear that the case may say that public-domain aspects of a character are NOT protectable by copyright -- but you would have to read the case (and see if there were any cases that cited this case that elucidate the matter) to know for sure. Also, Walt Disney Productions v. Air Pirates, 581 F.2d 751 (9th Cir. 1978) appears to suggest that literary characters are protected by copyright, but my summary doesn't say whether or not this case touches on the public domain issue.

So, my answer is, I am not sure. Someone needs to do some research to determine what exactly the scope of protection is, if any, given that some of the works are clearly public domain and some aren't.

With regard to the trademark, neither of the organisations which claim to represent the Arthur Conan Doyle Literary estate accept that such a trademark exists and the Sherlock Holmes Memorabilia Company in response to an email say they claim nothing but protection for their range of Sherlock Holmes souvenirs which they sell to tourists in london, England.

That may be true, I didn't spend any real time researching the trademark issue, just a quick look at TESS.

The DVDs and movies mentioned cannot by any stretch of the imagination be protected by this trademark, since those films and TV shows are the property of the Studio or TV company.

Again, this is quite likely the case, I didn't spend a lot of time looking into the trademark issue.

 

[Jackx]

Perhaps we have to wait for case-law to settle things. Main thing is that the first or earlier books (which are most likely to be out of copyright) have probably set the parameters about the character. Unfortunately nothing has been set by courts yet so it looks like I shall have to settle with one or other of the estate claimants.

 

[divgradcurl]

Perhaps we have to wait for case-law to settle things. Main thing is that the first or earlier books (which are most likely to be out of copyright) have probably set the parameters about the character. Unfortunately nothing has been set by courts yet so it looks like I shall have to settle with one or other of the estate claimants.

What do you mean by settle? Have you been sued, or threatened with a suit? If that's the case, you should definitely try and talk with a copyright lawyer, who will be completely up to speed on this topic.

 

[Jackx]

No, I have not been sued. When I used the word "settle" I meant it in the sense that case law would begin to establish the extent of copyright protection in the rather specialized circumstances I have outlined.

 

[Jackx]

And when I used the word "settle" the scond time, I meant it in the sense that I would maybe have to deal with one or other of the estate claimants protectively in order to secure a right to use the character.

 

[divgradcurl]

And when I used the word "settle" the scond time, I meant it in the sense that I would maybe have to deal with one or other of the estate claimants protectively in order to secure a right to use the character.

Got it. Well, good luck with your venture.

 

[Jackx]

Thanks for your help. It enables me to ask my attorney the right questions when I get to LA next week. Such a useful site