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IP Frontiers: The winding path to the land of public domain

Looking beyond the Yellow Brick Road

Alana M. Fuierer

Alana M. Fuierer

What do “The Wonderful Wizard of Oz” by L. Frank Baum, “The Adventures of Sherlock Holmes” by Arthur Conan Doyle, and the song “Happy Birthday” have in common? According to many, the answer is: All three, published before 1923, are in the public domain. But, as it turns out, it depends. A number of recent court filings illustrate that, although theoretically all works published before 1923 are in the public domain, in reality this “rule of thumb” isn’t completely true and should be relied upon with caution.

Clients often ask the seemingly simple question, “Can I freely use a [character] that has fallen into the public domain?” Or, “How can I tell if a particular [song] is in the public domain and free to use”? The answer, which can be deceptively complicated when it concerns a famous character or work, is being considered by a number of 2013 district court cases, each looking to declare famous works to be in the public domain.

A public domain work is a creative work that, while perhaps copyrighted at one time, is no longer protected by copyright and may freely be used by anyone. When a musical score for a play enters the public domain, anyone may use, remake, and/or create new musical works based upon it.

Similarly, anyone can make a commercial that plays a symphony by Bach in the background; write a book based on the original stories of King Arthur and the Knights of the Round Table; or produce a movie based on the original story of Hansel and Gretel from Grimm’s Fairy Tales. Unfortunately, determining when a copyright falls into the public domain is not an easy task and can be a winding, complicated path with numerous roadblocks.

Roadblock No. 1: Copyright law extensions

For works published after 2002, calculating a copyright term is simple — life of the author plus 70 years or, if a corporation, 95 years from publication or 120 years from creation, whichever first expires. It’s straight forward, and there is no need to look any further. Most clients, however, are not interested in works that will enter the public domain in the year 2072 and beyond. They instead are interested in works in the public domain now, or soon thereafter. This is where it gets complicated.

It is complicated because, over the past 100 years, there have been several changes to the copyright laws that make it difficult to navigate through what is or is not in the public domain. There have been so many changes that a wide variety of tree charts, graphs, flow charts and even computer algorithms have evolved, each claiming they can tell you whether or not a work is in the public domain.

Most recently, under the Copyright Term Extension Act of 1998 (otherwise known as the Sonny Bono Act), works published in or after 1923 are likely to still be protected by copyright and will not enter the public domain until 2019. Prior to the CTEA, the copyright term was life of the author plus 50 years, or 75 years from publication, and several copyrights were scheduled to enter the public domain in 1999, as others had every year before that.

The CTEA, however, stalled entry into the public domain for works published in 1924, 1925, etc for another 20 years. For example, the original Mickey Mouse character published in 1928, should have entered the public domain in 2004, but it won’t until 2019.

The CTEA did not affect copyrights 1) published prior to 1923; or 2) expired in 1998 because the copyright owner did not comply with copyright formalities under the old rules, such as notice and renewal. In regards to the latter, many works published between 1922 and 1978 were already expired (or in the public domain) in 1998.

Although this may sound promising to a client, in reality, it does not help much. The Copyright Office does not offer a “Public Domain Database” that lists expired copyrights, and researching whether a work of interest published from 1922-1978 complied with the requirements (notice, renewal) is difficult, time consuming and, more often than not, fruitless.

It is safer, and frequently more cost effective, to presume that no works created or published after 1923 have entered the public domain and they won’t until 2019.

Roadblock No. 2: Books vs. movies

Warner Bros. Entm’t, Inc. v. X One X Prods., 644 F.3d 584 (8th Cir. 2011) is a case that illustrates just how complex public domain issues can be and why the “1923 Rule of Thumb” should be applied with caution.

On the one hand, the original book, “The Wonderful Wizard of Oz” by L. Frank Baum, published in 1899, entered the public domain in 1956. On the other, Warner Bros. owns rights to the now-famous 1939 movie “The Wizard of Oz,” an adaption of Baum’s original book.

In Warner Bros. Entm’t, Inc. v. X One X Prods., the defendants made licensed products using images from public domain publicity materials featuring characters from “The Wizard of Oz.” The Eighth Circuit affirmed a permanent injunction in favor of Warner Bros., finding the film characters themselves were not in the public domain and restricting defendants from depicting copyrighted film characters derived from images in the public domain.

In other words, the character depictions from the movie — Dorothy, the Tin Man, the Cowardly Lion, the Scarecrow and even the ruby slippers — remain protected by copyright and are owned by Warner Bros.

The Eighth Circuit’s decision illustrates that even if a famous, original image or story is in the public domain, you could still infringe copyrights in a subsequent copyright-protected film, play, sound recording or story line by portraying a famous character in public, selling merchandise, or writing a script that includes portions of the subsequent, copyright-protected work.

Roadblock No. 3: Unauthorized publications

Under the Copyright Laws, publication only occurs if authorized by the copyright owner. If your grandfather wrote a poem in 1900 and never published it, but a publishing company published his poem without his authorization in 1910, the poem is “unpublished” for purposes of calculating its copyright term. If your grandfather then publishes a collection of his lifelong poems in 1950, his poem would receive a 95-year term starting from that date and any use, copying, duplication, derivation or reproduction of the 1910 published poem would infringe the 1950 copyright, even though research would indicate the 1910 poem had entered the public domain in 2005.

This scenario is similar to the fact pattern alleged by the defendants in a class action suit filed this year in the Central District of California over rights to perhaps the most popular song in the world, “Happy Birthday To You,” Siegel v. Warner/Chappell Music Inc., No. 13-4418 (C.D. Cal., June 19); see also Good Morning to You Productions Corp. v. Warner/Chappell Music Inc., No. 13-4040 (SDNY June 13) (voluntarily dismissed).

Many people are surprised to hear that if a restaurant wants its employees to sing “Happy Birthday to You” to a guest, it either needs to pay a royalty to Warner Chappell Music Inc. or sing a different “happy birthday” song. By some accounts, Warner Chappell collects about $2M annually from the song.

According to the Seigel plaintiffs, the lyrics to “Happy Birthday To You” were published in 1911; the melody, originally called “Good morning to All,” was written by sisters Mildred J. and Patty Smith Hill in 1893; and the copyrights to both since have expired and are in the public domain.

The defendant, Warner Chappell, claims to be the current owner of the “Happy Birthday To You” copyright and argues the first authorized publication of the lyrics and music together was in 1935, and the song has not yet entered the public domain. The complaint requests, among other things, a declaration that the song is not protected by federal copyright law, is dedicated to public use, and is in the public domain; and a permanent injunction enjoining the defendants from asserting any copyright to the song and collecting any licensing fees for use of the song.

If the plaintiffs ultimately succeed, “Happy Birthday To You” can be sung free of charge without seeking advice of counsel. More importantly, however, the case illustrates the importance of, and difficulty with, determining whether a work with a publication date prior to 1923 was “authorized” and is now in the public domain.

Roadblock No. 4: Series

If one was to strictly follow the “1923 Rule of Thumb,” another famous work, “The Adventures of Sherlock Holmes,” (1887) by Arthur Conan Doyle, would be in the public domain. That is precisely what one plaintiff is arguing in Klinger vs. Conan Doyle Estate Ltd., 13-cv-01226 (ND ILL 2013), also filed earlier this year. In February 2013, author and editor Leslie Klinger brought legal action against the estate of Arthur Conan Doyle.

According to Klinger, the character of Sherlock Holmes first appeared in publication in 1887 and was featured in four novels and 56 short stories spanning until 1927 and, under U.S. copyright laws, the works created and published prior to 1923 (50 stories) are in the public domain. Because the characters were “set forth fully” in the public domain stories, Klinger claims anyone may use Sherlock Holmes characters as they see fit without paying a royalty or license fee to the Doyle estate.

The defendant, the Conan Doyle estate, collects substantial fees for the use of Sherlock Holmes characters and maintains that the creation of the character Sherlock Holmes and others was not complete until the end of the series published in 1927. Therefore, according to the defendant, copyright protection for the famous characters is stretched out for as long as those final ten stories remain under copyright (i.e. 2022).

The ultimate issue raised by the Sherlock Holmes case will turn on precisely when “the characters as works of authorship were complete,” as that is when the copyright term started to tick. Other famous characters have been similarly challenged.

For example, in response to another complaint filed in 2013, copyright in the character Zorro was defended on grounds his character was not complete in the earlier public domain stories, see Robert W. Cabell v. Zorro Productions, Inc. et al., 13-cv-00449 (W.D. Wash. 2013) (1st Book published in 1919); see also Silverman v. CBS Inc., 870 F.2d 40 (2nd Cir. 1989) (“Amos ‘n’ Andy” characters, created in 1928). So far, however, with little success.

Roadblock No. 5: Copyrights vs. trademarks

To extend the life of its copyrights, a copyright owner will often look to trademark law because, unlike copyrights, trademarks can be extended indefinitely provided they are used in commerce for a good/service.

As one example, Turner Entertainment/Warner Bros. owns trademark registrations to virtually all of the characters from the Wizard of Oz (including Dorothy, Tin Man, Scarecrow, Munchkin, Ruby Red Slippers, Wicked Witch of the West, and Toto) and famous phrases from the movies such as “There’s no place like home.”

Over the past few years, Warner Bros. has filed numerous Trademark Trial and Appeal Board opposition proceedings over use of several Oz-related trademarks on wine, a restaurant, a clothing line, Halloween costumes, etc., by applicants who believed the “Wizard of Oz” was in the public domain.

Adding an interesting twist, in 2013, Disney filed a trademark application for the trademark “Oz, the Great and Powerful,” the name of its 2013 movie. One week later, Warner Bros. filed its own trademark for “The Great and Powerful Oz,” which is suspended pending the outcome of the Disney trademark application.

Trademark issues have been raised by the Conan Doyle Estate as well. In 2009, it filed cancellation proceedings against a UK Company called The Sherlock Holmes Memorabilia Co., who filed applications for the mark Sherlock Holmes in connection with 17 classes of goods. The Conan Doyle Estate is seeking to cancel the marks based on fraud and priority of use, while at the same time has filed its own set of Intent-To-Use trademarks for the mark Sherlock Holmes, which largely remain suspended until the cancellation proceeding is resolved, see also Robert W. Cabell v. Zorro Productions, Inc. et al., 13-cv-00449 (W.D. Wash. 2013) (failed attempt by owner of Zorro copyrights to assert trademark claims).

Finding your way to the public domain

The following websites claim to provide a list of books “believed” to be in public domain: http://www.goodreads.com/shelf/show/public-domain and http://www.feedbooks.com/publicdomain. Similarly, the following websites provide a list of movies believed to be in public domain: http://www.imdb.com/list/2RfGaIYkZPc/ and http://www.imdb.com/list/i7iwnmMTuLQ/. There are many others. But, please exercise caution when using these or other similar websites, including public domain calculators.

As the above examples illustrate, it can be difficult to determine the public domain status of a work in the U.S., and whether a song, book or character is in the public domain depends on several factors in addition to when it was first published. By using a general rule of thumb or simple calculation, it is nearly impossible to determine with absolute certainty whether a work has entered the public domain, but perhaps the cases filed this year will at least shed some light on the complicated road into the public domain.

Alana Fuierer is a partner with the intellectual property law firm of Heslin Rothenberg Farley & Mesiti P.C., with offices in both Rochester and Albany. She can be reached at (585) 288-4832, or at amf@hrfmlaw.com.

 

 

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