A Study in Copyright and Trademark
By Marie-Andrée Weiss
The movie Mr. Holmes, produced by Miramax, is set to be released in the U.S. on July 17. It is based on the Mitch Cullin novel A Slight Trick of the Mind and features Sherlock Holmes in his twilight years, after he retired to a Sussex farm to tend to his bees. The Conan Doyle Estate (CDE) is suing Miramax, Penguin, the editor of A Slight Trick of the Mind, and Mitch Cullin himself for copyright and trademark infringement. The case is Conan Doyle Estate Ltd. v. Miramax, LLC, No. 1:15-CV-432.
While the first fifty of the Sherlock Holmes short stories and novels are now in the public domain, ten are still protected by copyright in the United States. CDE was unsuccessful last year in its claim that the Sherlock Holmes and Doctor Watson characters are still protected by copyright, as the Seventh Circuit held in Leslie Klinger v. Conan Doyle Estate, Ltd. that they were now in the public domain (see here for a comment about the case in a previous TTLF newsletter).
CDE had argued in Klinger that Sherlock Holmes and Dr. Watson were “complex” characters who evolved during the stories and novels in which they appeared, and that, therefore, they should only become part of the public domain when the copyright of the last story in which they appear expires. This claim did not convince the Seventh Circuit, but Judge Posner noted in Klinger that the characters indeed changed over the years, writing that “[o]nly in the late stories . . . do we learn that Holmes’s attitude toward dogs has changed—he has grown to like them—and that Watson has been married twice. These additional features, being (we may assume) “original” in the generous sense that the word bears in copyright law, are protected by the unexpired copyrights on the late stories.“ Therefore, while the Sherlock Holmes character is no longer protected by copyright, some elements of the character first appearing in stories still protected by copyright may still be protected themselves. CDE claims the Cullin’s novel and the movie are copying these “highly original and protectable” elements.
Development of characters and copyright
According to the complaint, two of the public domain short stories refer to Sherlock Holmes’ retirement on the Sussex Downs, where he takes to bee-farming, and so these particular elements are no longer protected by copyright (Complaint p. 2). The complaint, however, distinguishes the “copyrighted mature Holmes” of the short stories protected by copyright from “the more clinical and purely rational Holmes” of the public domain stories (Complaint p. 12).
CDE claims that the Cullin novel and the Miramax movie are using elements of Sherlock Holmes’ character which were originally created by Sir Arthur Conan Doyle in the short stories still protected by copyright, such as his love of nature and dogs or his ability to express love. For instance, the complaint states that, in The Adventure of the Lion’s Mane, a story still protected by copyright, “Conan Doyle changed Sherlock Holmes. Holmes now loves the quiet of nature” (Complaint p. 10.) For CDE, Conan Doyle continued to develop the Sherlock Holmes character in the ten stories still protected by copyright (Complaint p. 2). For instance, he “develop[ed] a gentler demeanor, emotional warmth, and the ability to show love in his later years” (Complaint p. 8). Conan Doyle “changed Holmes in later life by giving him a gentleness and kindness Holmes did not possess in public domain stories” (Complaint p. 12). His knowledge of medicine was also created in these stories, as was his embrace of modern technologies, such as the microscope, and their use to solve crimes.
CDE further alleges that Cullin’s work is infringing because, in A Glass Armonicist, a story within a story in Cullin’s novel, Holmes is shown to be respectful and solicitous toward Dr. Watson, which the Complaint states is “[a] more subtle but important copying” from two protected stories, The Three Garridebs and The Adventure’s of the Lion’s Mane (Complaint p. 15). The Complaint cites a passage of The Lion’s Mane where the detective recalls how deeply moved he was when he first saw a very beautiful woman who had been the object of affection of a man who had died under mysterious circumstances, and affirms that “Cullin similarly has Holmes react from his heart rather than just his mind to the woman at the center of “The Glass Armonicist” (Complaint p. 15). The Complaint does not, however, cite any parallel allegedly infringing passage.
These two claims are likely to be unsuccessful. As Sherlock Holmes is in the public domain, writers are free to write stories featuring him, and may provide him with new feelings. Respect and solicitousness for an old friend, emotions when meeting a beautiful woman, are not particularly original feelings. Indeed, most people would find them normal and, while Conan Doyle chose to provide these feelings to the famously cold detective in his twilight years, their inner normalcy may prevent finding them original enough to prove infringement of the protected “Sherlock Holmes as a retiree”
The setting of both works
Conan Doyle has Holmes describing his “little Sussex home” in the second paragraph of The Adventure of the Lion’s Mane. The Complaint gives as an example of alleged copying by both the novel and the movie their featuring of “the lonely villa, the chalk cliffs in the distance, the path to the beach, and Holmes’ walks on it.” This particular example is not likely to be found protectable by the court: if a particular character has a farm in Sussex, it may very well be close to the Channel, and if it is, the house could very well be “commanding a great view of the Channel,” as written in The Lion’s Mane. Such a property would also be likely to have a path leading to the sea, and this path could be “long, tortuous . . . steep and slippery” as described in The Lion’s Mane, and as often observed in the area. Such a setting would probably be considered scènes à faire for a novel set in Sussex, in a house close to the sea.
The style of both works
The complaint points out that the Glass Armonicist is supposedly written by Holmes himself, using the first person, not the voice of Doctor Watson, and that Conan Doyle had his hero narrate his adventures in only two stories, The Lion’s Mane and The Adventure of the Blanched Soldier, which are still protected by copyright. The complaint reproduces a passage of Blanched Soldier and an allegedly infringing passage of Cullin’s novel. Both passages have Holmes crediting Watson for having written their adventures in a way interesting to the readers, instead of sticking to the facts, as Holmes would have preferred him to do. Both passages conclude that the writer must present the story in a way which is interesting to the reader (Complaint p. 13).
The Complaint also compares a passage of Blanched Soldier with a passage from Cullin’s novel which CDE claims is infringing. In both extracts, Holmes is shown sitting with his back to the window while receiving a visitor, who is himself illuminated by light. In both passages, the visitor does not know how to start his conversation with Holmes, and the detective finally initiates it by one of his famous deductions. In the original story, Holmes deduces that the visitor is from South Africa, while in Cullin’s work Holmes deduces that the visitor is seeking advice regarding his wife. In both works, the visitor is surprised by Holmes’statement.
Sherlock Holmes as a Trademark
CDE also claims trademark infringement and unfair competition because the movie, Mr. Watson, “uses a title confusingly similar to [the Estate]’s trademark SHERLOCK HOLMES.” CDE owns the SHERLOCK HOLMES trademark for “Organisation of exhibitions for cultural, educational, and entertainment purposes” which was registered last February in the principal register and the SHERLOCK HOLMES trademark for “Electronic gaming machines.” It has applied for registration of the SHERLOCK HOLMES trademark for entertainment services, for motion pictures, and for printed matter. This application has, however, has been suspended by the USPTO for five years pending registration of a similar mark in the same class. Indeed, many SHERLOCK HOLMES trademarks are currently owned by various entities, reflecting the fact that the name of a character in the public domain may indeed be registered as a trademark.
CDE has allowed writers to create new Sherlock Holmes stories, such as Anthony Horowitz’s Moriarty. It has also authorized Warner Brother’s Sherlock Holmes movies, and the BBC series Sherlock which is set in contemporary times. Other writers have used Sherlock Holmes as a retired detective character. For instance, Michael Chabon’s novel, The Final Solution, features an octogenarian detective, smoking a pipe and wearing tweeds, tending to his bees in Sussex. The novel is, however, set during World War II, and the main character is not named, but only referred to as ‘the old man.’ All of these works, whether authorized or not, have contributed to the fame of the Baker Street detective; the “Elementary my Dear Watson” phrase was not created by Conan Doyle, but by Hollywood. We may soon have more clues on whether some aspects of the characters created by Sir Arthur Conan Doyle are still protected by copyright.