A recently filed lawsuit in federal court in New Mexico raises the question of whether the new Netflix film “Enola Holmes,” a film about Sherlock Holmes’ sister, infringes the copyright in the Sherlock Holmes character and stories owned by the Arthur Conan Doyle Estate.
As reported in a June 24, 2020 article in the Hollywood Reporter (see https://www.hollywoodreporter.com/thr-esq/conan-doyle-estate-sues-netflix-coming-movie-sherlock-holmes-sister-1300108), the Conan Doyle Estate has sued Netflix, Legendary Pictures, Penguin Random House and others, including author Nancy Springer, whose book series forms the basis of the new movie, claiming that the Enola Holmes character and story infringe the copyright in Arthur Conan Doyle’s famous character and stories.
The complicating factor for the Doyle Estate is that in 2014, the Doyle Estate lost most of its copyright rights to Sherlock Holmes when a federal appellate court ruled that all of the stories authored about the Holmes character before 1923 were in the public domain. But the ruling didn’t strip away the Doyle Estate’s copyright on the last 10 original Sherlock Holmes stories authored between 1923 and 1927.
Under well settled copyright law, only the original elements of Doyle’s last ten Holmes stories are protected by copyright. And the copyright does not protect what are known as scènes à faire, which are standard and customary plot elements standard for the works in a particular genre. Think of a car chase in a crime drama.
To try to get around the public domain and scènes à faire problems, the Estate’s complaint alleges that “After the stories that are now in the public domain, and before the Copyrighted Stories, the Great War happened . . . In World War I Conan Doyle lost his eldest son, Arthur Alleyne Kingsley. Four months later he lost his brother, Brigadier-general Innes Doyle. When Conan Doyle came back to Holmes in the Copyrighted Stories between 1923 and 1927, it was no longer enough that the Holmes character was the most brilliant rational and analytical mind. Holmes needed to be human. The character needed to develop human connection and empathy.”
And so Sherlock “became warmer,” continues the complaint, setting up the question of whether the development of feelings is something that can be protected by copyright and whether the alleged depiction of Sherlock in “Enola Holmes” is somehow derivative and therefore infringing.
It will be interesting to see how this case plays out. The estate likely will have to convince the court that the “warmer” Sherlock Holmes character in the stories still protected by copyright is expressed sufficiently differently from the colder one in the public domain stories such that the warmer character acquired protectable elements. Then, the estate also will have to prove that the warmer character in the allegedly infringing works is warmer in the same manner as the character in the works protected by the copyright.
A copy of the complaint can be found here: https://www.documentcloud.org/documents/6956021-Sherlock.html
United States Supreme Court Finds That A Generic Term Coupled with A Top-Level Domain Name May Be Registered as Trademarks If They Have Secondary Meaning
On June 30, 2020, the United States Supreme Court issued its long-awaited decision in United States Patent and Trademark Office v. Booking.com, B.V., (“Booking.com”) which addressed the issue of whether a generic word coupled with a top-level domain name such as “.com” could qualify for trademark protection. The Booking.com decision can be found here: https://www.supremecourt.gov/opinions/19pdf/19-46_8n59.pdf.
It had long been the position of the United States Patent and Trademark Office (PTO) that a generic term like “booking” remained generic and thus not eligible for trademark protection even if combined with a top-level domain name. Such claimed trademarks are referred to as “generic.com” trademarks.
In its decision in Booking.com, the Supreme Court, in an 8-1 decision, rejected the bright line rule advocated by the PTO and held that a generic.com term may function as a trademark if such generic.com term (like the booking.com trademark) has acquired secondary meaning.
Critically, not all generic.com terms will qualify as trademarks. On the contrary, only those terms that have acquired distinctiveness and therefore have become source indicators in the minds of consumers will be eligible for trademark protection. The Supreme Court was clear that generic.com terms cannot be inherently distinctive but can acquire distinctiveness with consumers.
Establishing the acquired distinctiveness and secondary meaning necessary for registration may come from consumer surveys, but they are not the only means. Others include dictionaries, usage by consumers and competitors, and any other source of evidence bearing on how consumers perceive a term’s meaning.
It will be interesting to see if the Booking.com decision leads to an onslaught of applications seeking trademark registration for alleged generic.com trademarks. It also will be interesting to see how demanding the PTO will be as to the evidence necessary to prove acquired distinctiveness and secondary meaning. And we will soon see how the courts will resolve competing claims to similar claimed generic.com trademarks – think beer.com and beer.com.