Editor’s
Note: The following post is adapted from an article that appeared in the Entertainment
& Sports Lawyer
. You can find the
original article here.
So, you own the
rights to a character that is about to fall into the public domain under
Copyright law. When this happens, you will lose control over the character and
anyone is free to come along and create new works using your character. Is
there anything you can do to protect and retain control over your character?
A LITTLE BACKGROUND
Currently, U.S.
copyright law protects original works of authorship created on or after January
1, 1978 (i) for the life of the author plus 70 years, or (ii) 95 years from
first publication or 120 years from the date of creation, whichever is shorter,
for works made for hire, anonymous and pseudonymous works.
Once a work’s term of protection has ended, the work enters the public
domain and is available for anyone to use.
Looking solely
to copyright law, it does not appear that there is anything you can do to
extend the copyright protection for a character other than to have the
character continually evolve over the years. However, “a copyright affords protection only for
original works of authorship and, consequently, copyrights in derivative works secure protection
only for the incremental additions of originality contributed by the authors of
the derivative works.”
WILL SHERLOCK HOLMES SOLVE THE CASE?
In 2014, the
Seventh Circuit court of appeals addressed the issue of whether a continually
evolving literary character should fall into the public domain only after all
works containing the character have entered the public domain, or if parts of
the character can pass into the public domain whenever the original
publications reach the end of their protected terms.
The case in
question was Klinger v. Doyle Estate,
Ltd.,
and it dealt with the character of Sherlock Holmes. Klinger co-edited an
anthology of Sherlock Holmes stories written by modern authors, but he did not
obtain a license from the Doyle estate to do so because he believed the works
to be in the public domain.
The record in the case established that all but ten of the Sherlock Holmes
stories had passed into the public domain.
However, his publisher at the time paid a licensing fee to the Doyle estate
after being contacted.
Klinger and his co-editor then created another anthology for a different
publisher.
Due to the Doyle estate’s demand of a licensing fee and threats to block
publication of the book, Klinger’s publisher refused to publish the anthology
unless Klinger obtained a license.
Klinger sued for a declaratory judgment that the Sherlock Holmes stories were
no longer protected by copyright and that the few stories that were under
copyright lacked “sufficient originality to be copyrightable.”
The Doyle estate argued that complex characters like Sherlock Holmes and Dr.
Watson whose complexities are revealed across many stories should remain
protected until the final story protected by copyright falls into the public
domain. The court, however, ruled that only “original
elements added in the later stories” should remain protected by copyright law.
HOW CAN YOU PROTECT YOUR PUBLIC DOMAIN CHARACTER?
In light of the
recent Sherlock Holmes case and other cases finding similar results,
what options are available to protect a character about to fall into the public
domain? Realistically, there are not a lot of options. Your character has been
protected for decades, and soon it will belong to the public. As the court in Klinger pointed out, extending copyright
protection further shrinks the public domain making it more difficult to create
new work, and
perpetual copyright protection would violate the Constitution, which authorized
“copyright protection only for ‘limited Times.’”
However, there are
two methods by which you may retain some control over your character, or, at a
minimum, limit the ability of others to capitalize on the character. The two
methods are through any trademark rights you may have gained in the character and
through continued, official exploitation of the character.
The first method
is to register all applicable trademark rights for your character. While this
will not prevent others from using a character in the public domain, it should
limit their ability to advertise and exploit the character. If your character’s
name doubles as the title of a continuing publication, such as a comic book,
then newcomers might be prevented from using the character’s name in the title
of a competing publication. If you exploit your character on merchandise, then
you should be able to prevent others from doing the same with the character.
Personally, I do not believe using trademark rights to totally protect your
character is possible. However, there have been instances where a character’s
image fell into the public domain and trademark law protected it from
exploitation, but overall, many feel that expanding
trademark rights to wholly protect characters that have entered the public
domain goes against the public policy goals of granting limited copyright
protection. In
light of this, and this author’s beliefs on the matter, trademark rights to a
character should only be allowed to prevent exploitation in areas unrelated to
the character’s original medium that has entered the public domain. For
example, if the Doyle estate has a valid trademark on Sherlock Holmes hats,
then while a newcomer could exploit Sherlock Holmes in literature and other
possible narrative mediums, the newcomer could be prevented from creating
Sherlock Holmes branded hats.
The second method
is not exactly law related, but business oriented. One way to protect against
unwanted exploitation of public domain characters is to establish a licensing
regime to exploit your character. If your character is popular enough, you
should be able to retain some control over the exploitation of it by
establishing stories, books, movies, etc. that would fall into an official
canon for the character. By designating specific works that will be officially
recognized as continuing to tell the story of the character, you will be able
to distinguish the official works from unofficial, derivative works. This
method of creation and exploitation should encourage fans of the character to
seek out and consume works that build upon and expand the official world of the
character.
Ian Fleming
Publications Ltd. appears to be doing a great job of doing what I described
above. Ian Fleming passed away in 1964. The rights to many of his literary
creations, including James Bond, now belong to Ian Fleming Publications Ltd.
This entity continues to work with authors to create new James Bond stories in
various media, including new books
and even new graphic novels. In
2016, the company partnered with IDW and hired noted comic book writer Warren
Ellis to create an “‘Official Continuation’ of the Bond of the book.”
By commissioning and approving new works that enhance and expand the stories of
James Bond, Ian Fleming Publications Ltd. has set up a clear system to exploit
new works and protect the character of James Bond when Fleming’s original Bond
novels finally fall into the public domain.
In my opinion the
Doyle Estate took too long before implementing this approach to make it
effective. Over the years, new stories were released, including some by Arthur
Conan Doyle’s son, but none were officially recognized as continuing Holmes and
Watson’s adventures. In 2016, the Estate did authorize a writer to release a
new Sherlock Holmes book in 2011.
It was the first book officially endorsed by the Arthur Conan Doyle family in
80 years.
Even though you do
not want to hear that others might soon be able to exploit the character you
have rights to, it is going to happen. Your character and stories will fall
into the public domain. However, if you take actions beforehand, you may be
able to exert some control over the fate of your character before others start
using it.
