Yes, You Can Copyright Characters

Friday, June 27, 2014 - 13:56
Allison S. Brehm

Allison S. Brehm

The Editor interviews Allison S. Brehm, Partner, Kelley Drye & Warren LLP.  

Editor: Please describe your role at your firm.

Brehm: I am an attorney located in the firm’s Los Angeles office and have been counseling clients for nearly 12 years in the motion picture, television and publishing industries regarding copyright, idea theft, trademark, defamation, privacy and right of publicity issues.

Editor: Tell us about Leslie S. Klinger v. Conan Doyle Estate Ltd.

Brehm: On June 16, the Seventh Circuit Court of Appeals, with Circuit Judge Posner writing the opinion, considered the issue of copyright protection for the Sherlock Holmes and Dr. Watson characters who first appeared in Arthur Conan Doyle stories in which the copyrights had expired, and whether the characters’ existence in subsequent Conan Doyle stories still under copyright extended the term of protection of the characters. 

In this case, plaintiff Leslie S. Klinger sought a judgment that the copyright had expired on all of Arthur Conan Doyle’s Sherlock Holmes stories that predate 1923, which leaves only ten stories protected under copyright. He argued that the Sherlock Holmes and Doctor Watson characters as depicted in those earlier stories were in the public domain.

Mr. Klinger sought to use only those characters as depicted in the stories that were no longer under copyright, but not the material in the ten stories published between 1923 and 1927 that are still under copyright. The reason why he wanted to use them is that he had co-edited an anthology written by modern authors who were inspired by, and many times depicted, Sherlock Holmes and Doctor Watson.

As to the first edition of that anthology, the publisher, Random House, paid the Conan Doyle Estate a $5,000 license fee to use the copyrighted characters. Then, when Mr. Klinger decided to co-edit a sequel, he brought in another publisher, and the estate of Conan Doyle again demanded a license fee from the new publisher. The new publisher, Pegasus Books, refused to publish the sequel because it did not want to pay the license fee. Mr. Klinger wanted to resolve this issue in federal court and get a declaratory judgment that he is free to use, without paying any license fee, material in the Sherlock Holmes stories that are no longer under copyright.

In the lawsuit, Mr. Klinger claimed that those characters that existed in the early stories were in the public domain. The estate asserted that was not the case because the Sherlock Holmes and Doctor Watson characters had evolved over time. The estate argued that those characters became more complete and complex through the ten stories that are still under copyright. So what the estate wanted to do was separate the characters of Sherlock Holmes and Doctor Watson from the copyrights in the early works whose copyrights had expired on the theory that the characters were not actually complete until the later works, still under copyright, were finished. Thus, even though the copyrights had expired on the substantial body of Conan Doyle’s work, which predated 1923, the estate claimed that the characters in those works weren’t really completed and not fully subject to copyright protection until the last story written by Conan Doyle.

The Seventh Circuit ruled that the estate’s proposed rule would have extended the term of copyright protection beyond the term that is permissible under copyright law. If the estate prevailed, the total term of copyright protection for Sherlock Holmes and Doctor Watson would have been 135 years, which was beyond that which is permissible under the Copyright Act. The court emphatically rejected the estate’s proposition and stated: “we cannot find any basis in statute or case law extending copyright beyond its original expiration.” The estate intends to petition the Supreme Court to review the decision. Unless the Court grants the petition and reverses, the ruling will be the law in the Seventh Circuit.

Editor: What is the effect of this case?

Brehm: As an initial matter, the ruling reinforces the notion that fictional characters may be subject to copyright protection where they are sufficiently distinctive. However, the Seventh Circuit determined that where fictional characters are subject to copyright protection, the duration of that copyright is tied to the work in which the character first appeared. Thus, subsequent alterations to the characters do not revive expired copyrights on the original characters. Subsequent alterations to characters may very well be subject to copyright protection, but they don’t extend the duration of protection for the character in an earlier work whose copyright has expired. The court reasoned that this is consistent with the doctrine concerning derivative works, namely that the copyright in a derivative work extends only to the original or protectable elements that have been added by the author of the derivative work. The copyright in a derivative work does not revive the copyright protection in an underlying work whose copyright has expired.          

Editor: How will this case impact other copyright lawsuits in the future?

Brehm: The case does not change the fact that fictional characters may still be subject to copyright protection if they are sufficiently distinctive. The Seventh Circuit has not disturbed this well-settled principle. What the ruling means with respect to serialized characters is that the length of copyright protection is not determined by the date of creation of the last work in which that character appeared, but rather by the date of creation of the first work in which the character appeared, assuming the character merits copyright protection. As a general matter, the term for copyright protection for works created after January 1, 1978, lasts for the life of the author plus an additional seventy years. That can be a pretty significant amount of time, but nonetheless, it is finite. This limitation is part of the Copyright Act’s goal of promoting and incentivizing creativity. The Act stimulates the creation of new works by giving creators a period of time during which they own the copyright exclusively, but then after a certain point it expires so that other creators are free to build on and use the works that have entered the public domain.

Post-Klinger, and absent any reversal by the Supreme Court, under Seventh Circuit law, if the copyright in a work featuring a serialized character has expired, the copyright owner cannot preclude other creators from using that character, as delineated in the work that has expired. However, if the copyright owner creates additional works still under copyright, and adds new traits to the character that are protectable, the copyright owner could preclude other creators from using those traits. 

So, for example, if you have six different books, the term of copyright protection for a character that is featured in each of the six books won’t be determined by the creation date of the sixth book, but rather from the first book, as the character existed at the time. If that character evolved over time, such that new, sufficiently distinctive character traits were added in books two through six, then the copyright in those new books could include the new character traits. Consequently, even if the copyright on the first book expired, the copyright owner could still state a claim for copyright infringement arising from copying of those new character traits in books two through six assuming those traits are both protectable and there was actionable copying under the Copyright Act.

Editor: Are there other character copyright cases similar to this one?

Brehm: There are a number of character copyright cases, but to my knowledge Silverman v. CBS Inc., a Second Circuit case from 1989 that is cited in the Klinger case, is the only published decision that is similar to this one. It involved the right to copy the fictional characters of Amos and Andy, who had appeared both in copyrighted radio scripts whose copyrights had expired, and in subsequent scripts still under copyright. The Seventh Circuit relied on this case in holding that the copyrights on the derivative works, that is the last ten Sherlock Holmes stories, only cover new, original additions to the works. But as far as a case similar to this where you had a copyright owner effectively trying to “separate” the character from the work in which the copyright had expired, I am not aware of any other published cases. There are, however, many cases that have held that characters may be subject to copyright protection.

A number of other iconic characters have been subject to copyright protection, such as Superman, Rocky Balboa, Godzilla, Tarzan and ET. There are two predominant tests that courts use to determine whether characters qualify for copyright protection – the “sufficiently distinctive” test and the “story-being-told” test.

Klinger is not the only recent case addressing copyright protection for characters. There is a case pending in the Ninth Circuit concerning the extent of copyright protection for the Batmobile car. There is also a case pending in the Central District of California regarding copyright protection for James Bond. And the Central District recently decided a case regarding copyright protection for a sportscaster character that had been created by the comedian Hank Azaria. These three cases along with the Klinger case prove that copyright protection for fictional characters continues to be a frequently litigated issue.

Editor: If you have a series involving a particular character, when will copyright protection for that character expire?

Brehm: It depends on the date of creation of the copyrighted work in which the character first appears. There is always going to be a limit on the length of copyright protection. However, if there are changes in that character over time, those changes may be subject to separate protection under the Copyright Act.

This case holds that if you have a character in a work and the copyright in the work has expired, the copyright on the character will expire. If the character is used in later works whose copyrights have not expired and there are new traits that are added to that character, and those traits merit copyright protection, the character may be protected as to those new traits for the full term of the copyright associated with those later works.

Editor: To what extent will modifying your character extend the term of a copyright?

Brehm:  Under Klinger, if you modify, the term of protection starts anew with respect to those modifications only, and only if they are subject to copyright protection in the first instance.

Editor: Since these types of cases are litigated frequently, what types of changes in case law do you foresee in the future?

Brehm: Courts will continue to uphold copyright protection for certain characters that meet the applicable tests. That doesn’t mean that a plaintiff would necessarily prevail since there are other requirements for prevailing in an infringement action. For instance, the allegedly infringing work must be substantially similar in its expression to the plaintiff’s work. Because major brands revolve around characters that have been used for a long time, and many companies are creating sequels, we will continue to see efforts to protect fictional characters.


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