By: Olivia Clark, Georgia State University College of Law
The following is a guest blog post from Olivia Clark, a former merit scholarship pre professional dancer with Atlanta Ballet, who has recently performed with Crossover Movement Arts. She has two BAs, one in English and the other in Italian, from the University of Georgia, and is currently pursuing her JD at Georgia State University. She has a strong interest in intellectual property and entertainment law, and is a recipient of Georgia State University’s 1L Intellectual Property Scholarship. She is currently an intern at Georgia Lawyers for the Arts in Atlanta, Georgia.
In his 1930 opinion for the 2nd Circuit case Nichols v. Universal Pictures Corp., Learned Hand defined a broad standard for considering the copyright-ability of characters within a work. In Nichols, a playwright sued Universal Pictures for creating a film by a different name that was based on his play “Abie’s Irish Rose.” While the court determined that the movie was not similar enough to the play to constitute infringement of the whole work, whether the movie infringed on certain parts was a valid consideration.
Hand conceded that a distinct boundary could not be drawn, but noted that it is possible for a character to be copied to such a degree that it constitutes infringement. He analogized that if Shakespeare’s Twelfth Night was still protected by copyright, then copying the character of Malvolio could constitute infringement, although the idea of a hopeless steward who lusted after his mistress would not constitute infringement. Hand concluded by stating that cases where the alleged infringement is based on the copying of a broad abstraction would waste the court’s time, whereas cases where the alleged infringement is based on identical copying of a protected work would not.
Years later, the 9th Circuit cited Hand’s standard in Anderson v. Stallone. After viewing the previous Rocky movies, the plaintiff in Anderson wrote a script for Rocky IV based on the character of Rocky. Anderson relinquished his rights in the script to a production company. Although Anderson expected a payout for his script, he received no compensation. The 9th Circuit District Court held that Anderson’s work, because it was based on a copyright protected character, i.e., Rocky, was not entitled to copyright protection in the first place, and so there was no copyright infringement.
In fact, the court held that the Rocky characters from the first three movies were an expression protected by copyright “independent from the story in which they are contained.” Anderson’s derivative work based on those characters constituted infringement in violation of Section 106(2) of the Copyright Act, which states that the owner of a copyright has the exclusive right to produce derivative works. In other words, the character of Rocky was distinctive enough to be protected by copyright law.
Based on the Nichols and Anderson precedent, it is evident that a character, like Rocky, can be developed fully enough to be protectable. And if copyright law protects Rocky, then surely the characters of Holmes and Watson, of Sherlock Holmes fame, are also protected, right? Well, they would almost certainly be, if the copyright hadn’t expired. In the recently decided case Klinger v. Doyle, we have the added issue of expired copyrights within the canon of works that develop the Holmes and Watson characters.
Judge Posner authored the 7th Circuit Court opinion in Klinger, where he distinguished the copyright-ability of characters in seeming opposition to precedent. In Klinger, the plaintiff, Klinger, compiled an anthology of contemporary stories based on the Sherlock Holmes and Dr. Watson characters. While most of the copyrights to Doyle’s original Sherlock Holmes stories had expired, the Doyle estate still demanded payment for a license to use the characters. Klinger’s publisher complied. But, when Klinger decided to publish a second volume, the Doyle estate demanded further payment. Unwilling to do so, Klinger sued for declaratory judgment to allow him to use the material from the 50 Holmes stories in the public domain.
The issue was that although some of the Sherlock Holmes books were in the public domain, at least 10 were not. The Doyle estate argued that there is no way to protect the “incremental” character developments in the 10 later stories, other than protecting the entire character as a whole. Notably, it drew a distinction between round and flat characters. A “flat” character would be one whose identity is completely realized within the single work in which it appears. In contrast, a “round” character evolves through subsequent works. The Holmes and Watson characters fit into the former category, and the court agreed that their identities were not fully realized until the last story written by Doyle, which was among those still under copyright protection.
But Judge Posner used this distinction to the advantage of Klinger, not the Doyle estate. Posner pointed out that Doyle divulges certain traits of Holmes and Watson in the works still under copyright protection, e.g., like Holmes growing to like dogs and Watson getting married twice. Posner stated that only original ideas from derivative works are protected by copyright, so protection does not extend to the use of these characters as a whole, but merely to the use of these traits divulged in the works still under protection.
The Holmes and Watson characters certainly comply with the Hand standard of specificity, and further, the “rounded” character distinction falls in line with reasoning for copyright-ability of such characters as a complete work. Perhaps the Doyle estate should not have highlighted the round and flat distinction, and instead relied on the fact that the Holmes and Watson characters as a whole should remain protected. Posner ran with this distinction, which led him to hold for the plaintiff. But, if the identity of character applies outside of the work as a whole, as Nichols and Anderson indicate, then it seems that an entire character rather than only its unexpired traits should be protected.