Not So “Elementary”: Derivative Works That Straddle The Public Domain Dateline

On January 22, 2014, Conan Doyle Estate, Ltd. (“Conan”), a company owned by family members of the late Sir Arthur Conan Doyle, filed a Notice of Appeal seeking review of the Northern District of Illinois’ recent decision concerning the protectability of elements from Doyle’s famous Sherlock Holmes literary series.  The primary issue on appeal will be whether certain story elements contained in ten short stories that are not in the public domain should be protected despite having evolved from earlier works that are in the public domain.

Over the course of his career, Doyle authored four novels and fifty-six short stories based on Sherlock Holmes and his associate, Dr. John H. Watson (these works are collectively known as the “Canon of Sherlock Holmes” or the “Canon”).  The four novels and forty-six of the short stories were published in the United States before January 1, 1923 and are currently in the public domain.  The remaining ten short stories were published after January 1, 1923 and are currently protected under the Copyright Act. 

In 2011, Leslie S. Klinger co-edited and published a work titled A Study in Sherlock, a collection of short stories by contemporary authors inspired by the Canon.  Klinger later co-edited a sequel to A Study in Sherlock titled In the Company of Sherlock Holmes.  The stories feature many of the same characters, themes and other story elements found in the Canon.  Following failed efforts to negotiate a license for the use of the Canon, Klinger brought an action in the Northern District of Illinois seeking a judicial determination that the Canon, and the elements of the Canon, were in the public domain and could therefore be copied without infringing any rights Doyle, and later Conan, may have previously held in those works. 

Klinger’s main argument was that any elements in the post-1923 works are in the public domain because the stories in which the elements were first introduced have entered the public domain.  Doyle’s position (which the court deemed “novel”) was that the elements of the Canon, including Holmes and 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 ten later works included new elements, such as the introduction of Watson’s second wife, Watson’s background as an athlete, and Holmes’ retirement from his detective agency.

Rejecting the parties’ black and white approaches, the district court began its analysis with a discussion of the seminal opinion in Silverman v. CBS, Inc., where the Second Circuit held “increments of expression” contained in certain scripts for the “Amos ‘n’ Andy” show were protected despite previous scripts having already passed into the public domain.  Applying the increments of expression dichotomy to the Canon, the district court held that Klinger was entitled to use the pre-1923 elements but was precluded from copying any post-1923 elements, which remained under copyright protection through expiration of the applicable term.  Should Klinger move forward with his appeal, the Seventh Circuit will have the opportunity to revisit the applicability and scope of the incremental expression test, perhaps offering additional guidance to those in the somewhat unique position of owning the rights to multiple works, some of which are protectable and others that are now in the public domain.