As revelers in Times Square celebrated the end of 2018 and greeted 2019, works including Cecile B. DeMille’s The 10 Commandments (his original, silent version, not the version with Charlton Heston, which was a remake); Agatha Christie’s Murder on the Links; William Carlos Williams’ The Great American Novel; Charlie Chaplin’s The Pilgrim; and Bela Bartok’s Violin Sonata No. 1 and 2 entered the public domain in the United States. Since copyrights expire at the end of the calendar year,[1] and since this was the first time in twenty years that works entered the public domain in the U.S., some of the revelers in Times Square may very well have been celebrating those works falling into the public domain.
Why Are These Works Entering the Public Domain Now?
The short answer is that a twenty year extension of the copyright law enacted in 1998 effectively delayed the entry of works into the public domain. A more complete answer requires an understanding of the history of copyright law in the U.S. Originally the colonies borrowed British copyright law (known as the Statue of Anne, or the Copyright Act of 1710), and the concept of copyright found its way into the Constitution, which provides that Congress shall have the power “[t]o promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”[2] Congress passed the first Copyright Act in 1790, which provided for a 14 year term with the option to apply for a renewal of 14 years.[3] The 1909 version of the Copyright Act increased the terms, granting an initial term of 28 years and the ability to apply for a renewal term of 28 years.[4]
In 1978 a new Copyright Act took effect. The new Act made various changes to U.S. copyright law, and as relevant here, changed the copyright term. To bring U.S. law into harmony with copyright laws elsewhere around the world, the term was changed to the life of the author plus fifty years, or a total of 75 years in cases where a corporate entity was the author or the work was first published prior to 1978. In 1998 the Copyright Act was amended so that the term became the life of the author plus seventy years, and a total of 95 years where a corporation was the author or the work was first published prior to 1978. The 1998 amendment sparked a backlash, as it was widely perceived to be an effort to prevent “corporate” owned intellectual property (such as Disney’s Steamboat Willie and works owned by the Gershwin and Hammerstein families) from entering the public domain. That backlash resulted in a challenge to the 1998 amendment that went all the way to the Supreme Court, with the Supreme Court upholding the extension because it was for a limited time.[5] As noted above, the 1998 extension had the effect of delaying the entry of works into the public domain for twenty years.
One effect of the various extensions and changes in the law, and because of the age of various records relating to copyright, is that it has become difficult to determine whether a work is in the public domain, as illustrated by the lawsuits that resulted in “Happy Birthday to You”[6] and “We Shall Overcome”[7] becoming public domain works. Both of those decisions involved detailed, extensive investigations into the creation and ownership of the songs involved. Nothing is ever as simple as it might seem when it comes to the public domain.
So it’s in the Public Domain—Can I Use It?
Most people would naturally assume that public domain works are free to use, but that is not necessarily the case. One issue is that a work can be in the public domain in the U.S., but not in the public domain elsewhere—or vice versa. For example, Murder on the Links by Agatha Christie is now in the public domain in the U.S., because its copyright term is calculated as 95 years from its first publication in 1923. Thus, a publisher could republish this book, or a movie studio could turn the book into a movie. But the U.S. would be the only place the new version of the book or the movie could be distributed, since elsewhere in the world the copyright term would be measured from the date of Agatha Christie’s death in 1976 (so in those jurisdictions her works would be in the public domain in 2026). In many cases the rules regarding term of copyright outside of the U.S. are governed by treaties, such as the Berne Convention for the Protection of Literary and Artistic Works, and how those rules are applied can hinge on things such as the nationality of the author, where a work was first published and other considerations, resulting in an analysis that can be almost as complicated as determining the length of a copyright term for older works in the U.S.
Another obstacle to the use of works in the public domain is that certain works, such as movies, can consist of multiple works which must all be in the public domain in order for the ultimate work to be usable. The holiday classic It’s a Wonderful Life provides a good example. The 1946 movie, directed by James Capra and starring James Stewart, was based on the short story “The Greatest Gift,” by Phillip Van Doren Stern. The movie was not commercially successful, and was mostly forgotten, including by Republic Pictures, the original copyright owner in the movie. A copyright renewal was not filed in 1974, and as a result the movie fell into the public domain. Multiple television networks, hungry for inexpensive content to show during the holidays, began airing the movie annually since they did not have to pay any royalties for showing it.
Everything changed for Republic Pictures and the television networks broadcasting It’s a Wonderful Life after a Supreme Court ruling in an unrelated case involving the 1954 movie Rear Window.[8] In that case, the estate of the author of the story on which Rear Window was based renewed the copyright in the story but did not renew the movie rights deal, and instead sold the movie rights to a literary agent. When Rear Window was shown on television, the literary agent sued for infringement of the story on which the movie was based, and the Supreme Court ultimately found that the literary agent owned the rights in the underlying story, and that since the movie rights deal had not been renewed, there was infringement.
Learning of this decision, Republic Pictures seized the opportunity to regain control of It’s a Wonderful Life, especially in view of its newfound popularity. Republic owned the copyright in the Phillip Van Doren Stern story and had acquired the music rights to the movie. With the rights to the underlying story and the music, Republic had control over the movie, since it would be impossible to show the movie on television without first having permission from the owner of the copyright in the underlying story and the music. Thus, in 1993 Republic began enforcing its rights, and in 1994 it signed a long-term deal with NBC, granting NBC the exclusive right to broadcast the movie.
Works that are part of a series can encounter difficulties when early works in the series are in the public domain and later works in the series are still protected by copyright. A case involving the Sherlock Holmes series, which was published between 1887 and 1927, demonstrates this.[9] Leslie Klinger co-edited an anthology of stories entitled A Study in Sherlock: Stories Inspired by the Sherlock Holmes Canon, consisting of stories written by modern authors but inspired by, and in most instances depicting, Sherlock Holmes and Dr. Watson. Sir Arthur Conan Doyle’s estate told Random House, which was to publish Klinger’s book, that it would have to pay for a copyright license. While Klinger did not believe a license was necessary, Random House acceded to the demand. Thereafter, Klinger and his co-editor decided to create a sequel, to be called In the Company of Sherlock Holmes. Once the Conan Doyle estate learned of the project, it told the publisher that a license was necessary, and also threatened that if a license was not obtained, the estate would work to prevent distribution of the book and to sue internet service providers who distributed it. As a result, the publisher refused to publish the sequel unless Klinger secured a license.
Instead, Klinger, filed a lawsuit against the estate, seeking a declaration of which Sherlock Holmes works he was free to use. The estate did not defend the case, and the district court granted Klinger summary judgment. The estate then appealed. The appellate court noted that Conan Doyle wrote a total of sixty Sherlock Holmes stories and novels and that only the last ten of those works were still covered by copyright. The court ruled that [t]he ten Holmes-Watson stories in which copyright persists are derivative from the earlier stories, so only original elements added in the later stories remain protected. The freedom to make new works based on public domain materials ends where the resulting derivative work comes into conflict with a valid copyright.
In other words, Klinger was free to create new Sherlock Holmes works so long as those works did not use elements that were first introduced in the Sherlock Holmes works that were still under copyright.
Parties seeking to use other characters appearing in works that fall into the public domain, such as early works featuring Mickey Mouse, Bugs Bunny, Batman or Superman, Winnie the Pooh and others, will face a similar challenge.
Trademarks are another hurdle which could make the use of public domain works not as simple as it might at first seem. In many instances, the names and images of popular characters can be protected under trademark law, even when the characters themselves have fallen into the public domain due to the expiration of copyright. This is because copyright and trademark serve vastly different purposes. Copyright restricts the public’s ability, for a limited time, to reproduce an artistic work. On the other hand, trademarks are intended to function as indicators of source and eliminate public confusion as to the source of goods or services; as such, they can be protected for as long as they are in use.
Popular characters, and their names, often function as trademarks—just think of Mickey Mouse and Minnie Mouse, both of whom are the subject of multiple trademark registrations, as are their names. Indeed, in a case involving the works of Beatrix Potter, the court observed that “[t]he fact that a copyrightable character or design has fallen into the public domain should not preclude protection under the trademark law so long as it is shown to have acquired independent trademark significance, identify in some way the source or sponsorship of the goods.”[10]
Thus, trademark rights can be asserted, at a minimum, to cast doubt on the ability to use a public domain work as the basis for a new work. The estate of Edgar Rice Burroughs, author of Tarzan and John Carter of Mars, has used its trademark rights to challenge new works based on Burroughs’ works. In 2012 the estate filed a lawsuit against parties producing and selling comic books based on Burroughs’ works which were in the public domain in the U.S.[11] The lawsuit asserted multiple claims for trademark infringement, based on the defendants’ publication of a comics entitled “Lord of the Jungle” and “Warlord of Mars” and alleging that by using those titles the public would be confused into thinking that the comics were sponsored or endorsed by the estate. While the case was ultimately settled, it demonstrates how owners of works in the public domain can still impact the use of a public domain work.
Conclusion
The fact that a work has entered the public domain is a good indicator that it may be available for use, but it does not necessarily mean that it can be freely used for any purpose. Whether or not a public domain work can be used for any purpose is something that can only be determined in consultation with an experienced intellectual property attorney.
[1] 17 U.S.C. § 305.
[2] U.S. CONST. art. I, § 8, cl. 8.
[3] Act of May 31, 1790, ch. 15, § 1, 1 Stat. 124, 124 (repealed 1802).
[4] Pub. L. No. 349, §§ 23–24, 35 Stat. 1075, 1080–81 (1909) (repealed 1978).
[5] Eldred v. Ashcroft, 537 U.S. 186 (2003).
[6]Marya v. Warner/Chappell Music, Inc., 131 F. Supp. 3d 975 (C.D. Cal. 2015).
[7] We Shall Overcome Foundation v. The Richmond Org., 330 F.Supp.3d 960 (S.D.N.Y. 2018).
[8] Stewart v. Abend, 495 U.S. 207 (1990).
[9] Klinger v. Conan Doyle Estate, Ltd., 755 F.3d 496 (7th Cir. 2014).
[10] Frederick Warne & Co. v. Book Sales, Inc., 481 F. Supp. 1191 (S.D.N.Y. 1979).
[11] Edgar Rice Burroughs, Inc. v. Dynamic Forces Entertainment, Inc., 12 CV 1192 (S.D.N.Y. 2012).