Practical Tips for Protecting Public Domain Characters

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.[1] Once a work’s term of protection has ended, the work enters the public domain and is available for anyone to use.[2]

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.”[3]

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.,[4] 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.[5] The record in the case established that all but ten of the Sherlock Holmes stories had passed into the public domain.[6] However, his publisher at the time paid a licensing fee to the Doyle estate after being contacted.[7] Klinger and his co-editor then created another anthology for a different publisher.[8] 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.[9] 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.”[10] 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.[11]  The court, however, ruled that only “original elements added in the later stories” should remain protected by copyright law.[12]

HOW CAN YOU PROTECT YOUR PUBLIC DOMAIN CHARACTER?
In light of the recent Sherlock Holmes case and other cases finding similar results,[13] 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,[14] and perpetual copyright protection would violate the Constitution, which authorized “copyright protection only for ‘limited Times.’”[15]  

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,[16]  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.[17] 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[18] and even new graphic novels.[19] 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.”[20] 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.[21] It was the first book officially endorsed by the Arthur Conan Doyle family in 80 years.[22]

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.

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[1] Circular 15a, Duration of Copyright, 1, U.S. Copyright Office,  http://www.copyright.gov/circs/circ15a.pdf (last visited May 24, 2016)..

[2] Kurtz, Leslie A., The Methuselah Factor: When Characters Outlive Their Copyrights,  11 U. Miami Ent. & Sports L. Rev. 437, 446 (1994).

[3] Silverman v. CBS Inc., 870 F.2d 40, 49 (2^nd Cir. 1989).

[4] Klinger v. Doyle Estate, Ltd., 755 F.3d 496 (7^th Cir. 2014).

[5] Id. at 497.

[6] Id.

[7] Id.

[8] Id.

[9] Id. at 498.

[10] Id.

[11] Id.

[12] Id. at 501.

[13] See Klinger, 755 F.3d at 500-01; See also Kurtz, The Methuselah Factor, at 447.

[14] Klinger, 755 F.3d at 501.

[15] Id. at 503.

[16] See Frederick Warne & Co., Inc. v. Book Sales, Inc., 481 F.Supp. 1191 (S.D.N.Y. 1979).

[17] Kurtz, 11 U. Miami Ent. & Sports L. Rev. at 450-51.

[18] About Us, http://www.ianfleming.com/about-ian-fleming-publications/ (last visited June 15, 2016).

[19]Vargr hits shelves – James Bond Comic Issues #1 Out Now, Nov. 4, 2015, http://www.ianfleming.com/vargr-hits-shelves-james-bond-comic-issue-1-out-now/ (last visited June 15, 2016).

[20] Bailey, Benjamin. Warren Ellis Talks Bringing Ian Fleming’s James Bond to 2016, Nerdist.com, http://nerdist.com/warren-ellis-talks-bringing-ian-flemings-james-bond-to-2016/ (last vistited July 13, 2016).

[21] A New Sherlock Holmes Story: The House of Silk b Anthony Horowitz, http://www.conandoyleestate.com/index.php/house-of-silk-anthony-horowitz/ (last visited July 7, 2016).

[22] A New Sherlock Holmes Story: The House of Silk b Anthony Horowitz, http://www.conandoyleestate.com/index.php/house-of-silk-anthony-horowitz/ (last visited July 7, 2016).