When Does Copyright Law Cease Protecting a Fictional Character? (Part II)

A previous post discussed litigation related to the current status of Sir Arthur Conan Doyle's copyright claims to the fictional characters of Sherlock Holmes and Dr. Watson, given that several works had passed into the public domain as a matter of US copyright law.

Below is a further discussion about the power of US copyright law to protect fictional characters that have lapsed into the public domain, but which have been developed through subsequent film adaptations and through the creation of "derivative works."

These legal issues are best illustrated by the murky copyright status of the iconic characters in the Wizard of Oz.

In May 1900, author L. Frank Baum published The Wonderful Wizard of Oz, a fantasy children's novel that included illustrations by W.W. Denslow.  The book includes the familiar story describing how Dorothy, the Tin Man, Scarecrow and the Cowardly Lion traveled down the yellow brick road together to see the Wizard so Dorothy could return home. Notably, in the original 1900 text, Dorothy's slippers are silver.

Baum's seminal book was famously adapted to movie screens in the now iconic 1939 masterpiece film starring Judy Garland. This film made revolutionary use of Technicolor, which inspired a change to the color of Dorothy's slippers to ruby red.  Indeed, Dorothy's red slippers would later become enshrined in the Smithsonian Institution, as a testament to the importance that this particular prop played in American culture.

Although the children's novel The Wonderful Wizard of Oz lost its US copyright protection in 1956, only the original novel by Baum and illustrations by Denslow have entered the public domain.

However, all the later-created derivative works based on the novel are still eligible for independent copyright protection.

Section 101 of the Copyright Act defines a "derivative work" as "[a] work based upon one or more preexisting works" or "[a] work consisting of editorial revisions, annotations, elaborations, or other modifications, which, as a whole, represent an original work of authorship."  Therefore, the 1939 film in which Dorothy wore ruby red slippers is a derivative work that is still protected by US copyright, valuable rights currently held by Warner Brothers.

Slight differences between the public domain novel and the still-copyrighted movie are not an academic issue to those seeking to make any adaptation of the Wizard of Oz plotline without a license from Warner Brothers.  And that includes Disney.

Indeed, just last week, Disney aired a brand new adaptation of the original Wizard of Oz called the Wizard of Dizz.  In this version, Mickey Mouse and the Mickey Mouse Clubhouse troupe are recast as the characters from The Wonderful Wizard of Oz, with Minnie Mouse as Dorothy, and Professor Von Drake as the Wizard.

While the Disney adaptation is potentially protected free speech as a form of parody, a subtle but important detail is the fact that the ruby red slippers worn by Minnie Mouse are replaced by green shoes.

Was this detail an act of literary license on Disney's part, or part of a clever legal strategy to avoid a claim of copyright infringement? 

In fact, Warner Brothers had litigated the status of the Wizard of Oz just two years ago, so it is more likely the latter.

In their most recent squabbles over this issue, Warner Brothers took the legal position that the characters from the film had so altered public perception, that virtually ANY unauthorized use of the characters would violate the film studio's copyright.

And (believe it or not) the 8th Circuit Court of Appeals agreed, issuing a decision that left more questions than it answered.

Subsequently, additional unauthorized renditions including Oz the Great and Powerful starring James Franco, stirred up even more controversy, as Disney riled Warner Brothers by filing for trademarks on that name.

In conclusion, when fictional characters are first described in a text that falls into the public domain, the status of the original copyright does not necessarily make these characters free for the public to use without license.

Further, in Part III, we will discuss how trademarks and trade dress can theoretically create a perpetual "brand" surrounding a character that otherwise would be in the public domain as a matter of copyright law.

When Does Copyright Law Cease Protecting a Fictional Character? (Part I)

Sir Arthur Conan Doyle

The estate of Scottish author Sir Arthur Conan Doyle has advanced a creative -- and controversial -- legal argument, in a gambit to protect its rights to continue to control licensing the fictional personae of Sherlock Holmes and his sidekick Dr. Watson, for at least several more years.

Conan Doyle authored four novels and 56 short stories featuring the now iconic literary characters of Sherlock Holmes and Dr. Watson between 1887 and 1926.  Under UK copyright law, Conan Doyle's entire corpus of work is now freely in the public domain.

However, under more restrictive US copyright law, only Conan Doyle's works published before 1923 are now in the public domain, whereas 10 of his works published after 1923, such as the "Case-Book of Sherlock Holmes", remain squarely under US copyright protection until as late as 2022.

Many critics vehemently argue that the US copyright system, which currently grants authors' heirs a monopoly on their ancestors' written works for as long as 70 years after the author's death, is too restrictive.  In any event, the American public is now confronted with can be legally done with a partial catalog of freely available Holmes-related texts.

Statue of Sherlock Holmes in Edinburgh, Scotland

A Los Angeles-based Sherlock Holmes expert and entertainment lawyer, Leslie Klinger, recently filed a declaratory judgment suit in Chicago federal district court, seeking a ruling that the characters of Holmes and Watson are now effectively freely in the public domain for anyone to use, regardless of whether a few of Conan Doyle's final works still remain under US copyright protection.

The Conan Doyle estate argues that the entirety of these literary characters should remain under lock and key, until the final of the books' copyrights expire.  The estate bases its argument on the logic that the characters' entire personalities, including subtle quirks and flaws, were developed in later works and are therefore embedded throughout the entire corpus of Doyle's literary contributions.  To separate characters into "earlier" and "later" would be to artificially dissect them.

This interesting case raises complex issues of unsettled copyright law.  For example, if a complex literary character "evolves" throughout many different copyrighted texts written during an author's long lifetime, as each text passes into the public domain many years after her death, does only the "immature" character become free to copy, until the entire corpus has lapsed?

Alternatively, once the first of many book's copyright expires, is the entirety of the later-developed character fair game for the public to take?

The question is not entirely academic, as Conan Doyle's estate could theoretically block the making of a television show such as "Elementary," which sets the detectives in modern-day New York, unless the estate is paid a hefty royalty.  The estate could also have blocked a new movie similar to the 2009 film starring Robert Downey, Jr. and Jude Law.

On this issue, the Conan Doyle estate faces a challenging legal landscape.  In 1999, the Second Circuit Court of Appeals confronted a virtually identical issue, and refused to rule that entire characters remained under copyright monopoly when significant previous works had lapsed into the public domain.

In that case, the appellant had wanted to create an unlicensed Broadway musical using the characters of "Amos 'n' Andy." Radio programs featuring the characters from 1928 to 1948 had lapsed into the public domain.  However, several later-created television shows remained under copyright protection.

The New York-based Appeals Court found that this latter fact was not dispositive.  In that case, the Appeals Court held that Silverman, who had wanted to utilize the characters freely, "should now receive a declaration that he is entitled to use all aspects of the "Amos 'n' Andy" materials, including names, stories, and characters, to the extent that such elements of expression are contained (or, in the case of characters, to the extent delineated) in the pre-1948 radio scripts, which are in the public domain."

In other words, the fact that some later materials remained copyrighted did not entitle the copyright owners to continue to monopolize the characters, as large aspects of their personae had been developed and become public domain years earlier.

The New York-based Appeals Court also found that no valid trademark rights in the characters remained, as they were abandoned upon the radio shows passing into the public domain.  It is yet to be seen how the District Court and the Seventh Circuit Court of Appeals, based in Chicago, will rule on this topic in the pending Conan Doyle case.