Mary Siceloff

Currently pending before the United States District Court for the Northern District of Illinois is a case that will determine whether the Estate of Sir Arthur Conan Doyle has any remaining copyright interest in the iconic character of Sherlock Holmes, and his friend and companion in sleuthing, Dr. John Watson.

The fictional detective and his sidekick first made their appearances in “A Study in Scarlet,” published in 1887. By 1923, Doyle had written and published some fifty-six short stories and four novels wherein Holmes and Watson solved numerous cases through Holmes’ unique analytic and deductive methods, all the while interacting with various supporting characters, including Scotland Yard’s Detective Lestrade, their landlady Mrs. Hudson, Holmes’ brother Mycroft, and his arch-nemesis Professor Moriarty. Each of those pre-1923 works is now in the public domain in the United States. Approximately ten Sherlock Holmes stories, published after 1923, remain protected by copyright.

Malibu lawyer, and Sherlock Holmes aficionado, Les Klinger, is the author of numerous books and articles regarding the Sherlock Holmes canon. In 2011, he published, as co-editor, a collection of new short stories by contemporary writers featuring Sherlock Holmes and some of his supporting characters, titled “A Study in Sherlock.” In connection with that publication, the Doyle Estate demanded, and Klinger’s then-publisher paid under protest, a license fee for the use of Holmes and the other characters in the story collection.

Klinger recently compiled and edited, and is ready to publish, a second collection of new Sherlock Holmes stories by contemporary writers, tentatively titled “In the Company of Sherlock Holmes.” The Doyle Estate has once again demanded a license fee, but Klinger’s new publisher would not agree to pay it. Neither would it publish the new story collection while the Doyle Estate’s claim of copyright ownership remained unresolved.

Accordingly, Klinger has filed a single cause of action complaint against the Estate, seeking a declaration that the Sherlock Holmes character, as well as the other characters that first appeared in the pre-1923 works, are in the public domain, and can freely be used by Klinger or anyone else in new literary or audio visual works without infringing on any of the Estate’s copyrights.

Klinger’s position is that Holmes and Watson (as well as the other supporting characters) were fully delineated characters, with all of their respective well-known characteristics, by 1923, and accordingly the characters fell into the public domain along with the works in which they first appeared. The Estate’s position, as expressed by its attorney to the New York Times shortly after the filing of the lawsuit, is that “Holmes is a unified literary character that wasn’t completely developed until the author laid down his pen.” Since Doyle included the Sherlock Holmes character in ten stories published after 1923 – that are still within the term of copyright protection – the Estate apparently is arguing that the copyright in the character will remain with the Estate until the last of those post-1923 works falls into the public domain.

This case highlights an interesting issue – that of the copyrightability of a character as separate and distinct from the work in which that character appears. It was first addressed in 1930 by Judge Learned Hand in Nichols v. Universal Pictures, and Judge Hand’s description of the issue remains to this day the touchstone for determining when a character becomes copyrightable:

“If Twelfth Night were copyrighted, it is quite possible that a second comer might so closely imitate Sir Toby Belch or Malvolio as to infringe, but it would not be enough that for one of his characters he cast a riotous knight who kept wassail to the discomfort of the household, or a vain and foppish steward who became amorous of his mistress. . . . It follows that the less developed the characters, the less they can be copyrighted; that is the penalty an author must bear for marking them too indistinctly.” 45 F.2d 119, 121 (2d Cir. 1930).

In 1954, in a case involving Dashiell Hammet’s Maltese Falcon, the Ninth Circuit applied a rigorous test for granting copyright protection to a character – namely, whether the character “constitutes the story being told.” If so, then he is protected by copyright. If, on the other hand, “the character is only the chessman in the game of telling the story he is not within the protection afforded by copyright.” Warner Bros. Pictures, Inc. v. Columbia Broadcasting System, Inc., 216 F.2d 945 (9th Cir. 1954).

The factual circumstances of that case – which no doubt influenced the court’s conclusions – were unusual: Warner Bros. had been assigned the copyright in the Maltese Falcon in order to produce a motion picture based on the novel. When Hammett then assigned the Sam Spade character to CBS for use in different stories, Warner sued for copyright infringement. The Court found that Hammett – the original author – had the right to put his characters in other works and assign them to other parties, notwithstanding the fact that Warner had the rights to the original story, because the character was not itself copyrightable:

“We conclude that even if the Owners assigned their complete rights in the copyright to [Maltese Falcon], such assignment did not prevent the author from using the characters used therein, in other stories. The characters were vehicles for the story told, and the vehicles did not go with the sale of the story.” Id.

Cases from other Circuits, and later Ninth Circuit cases, have applied a less stringent test, requiring only that character in question be sufficiently distinctly delineated, with consistent, identifiable traits, in order to warrant copyright protection independent of the story in which he appeared. See Walker v. Time Life Films, Inc., 784 F.2d 44, 50 (2nd Cir. 1986); Rice v. Fox Broadcasting Co., 330 F.3d 1170, 1175 (9th Cir. 2003).

Under any analysis, however, it would appear that at least the great Sherlock Holmes was, within the first handful of stories, highly delineated, perhaps even to the point of constituting “the story being told.” As noted by another court, “[i]ndeed, audiences do not watch Tarzan, Superman, Sherlock Holmes, or James Bond for the story, they watch these films to see their heroes at work.” Metro-Goldwyn-Mayer, Inc. v. American Honda Motor Co., Inc., 900 F.Supp. 1287, 1296 (C.D. Cal. 1995).

If the Sherlock Holmes and Dr. Watson characters in fact reached copyrightable status in the earlier works, then it should follow that when those works fell into the public domain, so did the character. Accordingly, it will be interesting to see how the Estate defends the action, and what the ultimate ruling of the Northern District of Illinois will be. Given the significant number of Sherlock Holmes works currently being produced and distributed, it is undoubtedly a matter of substantial financial import to the Estate.

In Association For Molecular Pathology v. Myriad Genetics, Inc., decided on June 13, 2013, the United States Supreme Court held that isolated natural genes (DNA) are not patentable. Thus, genes that exist in a living organism, such as the human breast cancer genes BRCA1 and BRCA2 at issue in this case, are not made patentable because the inventor isolates them from the other genomic DNA. The Court was careful to explain that other inventions related to genes, however, are patentable. In particular, the Court held that the synthetic copy of a gene known as “complimentary DNA” (cDNA) is patentable, as well as methods of isolating genes and methods of using cDNA.

The decision was not surprising. The law has long been that naturally occurring biological compositions are not patentable subject matter. The Court applied that rule logically to find that a gene as it exists in a living organism is not patentable just because someone discovers it. In contrast to natural DNA, cDNA is not found in the living organism. The Court found that cDNA is a copy of the natural gene, synthesized in the lab; it is different from the natural gene in that it does not include the non-coding portions of the DNA that are present in the natural gene. The Court concluded that the cDNA is therefore patentable as a man-made composition.

BRCA1 and BRCA2 genes are associated with an increased risk of breast and ovarian cancer. A woman with specific mutations in these genes has a 50% to 80% chance of having breast cancer, compared with 12% to 13% risk for women without these mutations, and a 20% to 50% chance of having ovarian cancer. Myriad discovered the location of these genes and sequenced the most common mutations. They used this information to develop a screening test to determine if a woman has a high risk of cancer due to the presence of the BRCA1 and BRCA2 gene mutations.

Myriadobtained patents on the natural genes and on the cDNA. Other companies developed genetic tests to determine the presence of the BRCA1 and BRCA2 mutations, and offered genetic services to the public. Myriad then threatened its competitors with patent infringement suits. In response, all of the other test providers ceased offering their tests, and Myriad became the sole provider of BRCA genetic testing.

After several years, a group of cancer patients, physicians, and patient advocacy groups sued Myriad for a declaratory judgment of invalidity under 35 USC § 101 on the grounds that the patents on the genes covered products of nature. The district court granted summary judgment for the plaintiffs, finding that the claims were not valid. On appeal, the Federal Circuit Court of Appeals reversed the district court. The Supreme Court granted the plaintiffs’ petition for certiorari, vacated the judgment, and remanded the case back to the Federal Circuit. The Federal Circuit then decided that both natural DNA and cDNA were patentable. Plaintiffs again appealed to the Supreme Court. In this decision, the Court affirmed in part and reversed in part.

The Court described Myriad’s discovery as follows:

“The location and order of the nucleotides existed in nature before Myriad found them. Nor did Myriad create or alter the genetic structure of DNA. Instead, Myriad’s principal contribution was uncovering the precise location and genetic sequence of the BRCA1 and BRCA2 genes within chromosomes 17 and 13. “

Myriad argued that the Supreme Court’s decision in Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980) was controlling. Chakrabarty was the Court’s leading case holding that phenomena of nature and products of nature are not patentable, but that a man-made bacterium was patentable. The Court correctly pointed out that the invention in Chakrabarty was man-made, as it was not a naturally occurring bacterium, while the genes that Myriad had patented were not man-made and exist in nature. The Court acknowledged the importance of Myriad’s discovery, stating that “groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the section 101 inquiry.” The Court held that the genes that Myriad had discovered are clearly products of nature, and therefore not patentable.

The Court reached the opposite conclusion with respect to Myriad’s claims directed to the cDNA it had synthesized. Because the cDNA is not naturally occurring, the Court held that it is patentable.

The Court emphasized the limitations of its holding, pointing out that it was not ruling on the patentability of methods of making genes, method of applying the discovered knowledge, or natural DNA whose sequences had been altered by the inventor.

Even though the Court’s decision was well reasoned, the reaction in the biotechnology community has been mixed. Some experts are concerned that biotechnology companies have lost significant value because their gene patents can and will be invalidated. Others believe that most biotechnology companies will not really be affected because they have also patented their cDNA compositions and methods of using those genes. What is certain is that the Court has made a clear rule, even if narrow: if you want to patent a gene, it had better not be the naturally occurring DNA.

The reaction of the public has been favorable. Many scientists view the decision positively because it confirms that genes (as they exist in nature) do not belong to anyone, but are in the public domain, giving them the freedom to conduct basic genetic research. Patients and doctors are happy because the BRCA genetic test should now be less costly and more accessible to patients.