Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA897620
`
`Filing date:
`
`05/18/2018
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91221648
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Defendant
`United Trademark Holdings, Inc.
`
`ERIK M PELTON
`ERIK M PELTON & ASSOCIATES PLLC
`PO BOX 100637
`ARLINGTON, VA 22210
`UNITED STATES
`Email: uspto@tm4smallbiz.com
`
`Defendant's Notice of Reliance
`
`Erik M. Pelton
`
`uspto@tm4smallbiz.com
`
`/ErikMPelton/
`
`05/18/2018
`
`TEEN TINK Applicants 6th NOR.pdf(25834 bytes )
`6th NOR Exhibts 7A-7B.pdf(1013755 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Disney Enterprises, Inc.
` Opposer,
`
`v.
`
`United Trademark Holdings, Inc.,
` Applicant.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Opposition Nos. 91221648 (Parent)
`
` & 91224985
`
`
`
`
`
`APPLICANT'S SIXTH NOTICE OF RELIANCE
`
`Applicant United Trademark Holdings, Inc. (“Applicant”) hereby gives notice that he
`
`will rely on the following materials in the captioned proceeding, copies of which are attached to
`
`this notice except where noted:
`
`
`
`Exhibit 7: Pursuant to 37 CFR § 2.122(e) of the Trademark Rules of Practice, Applicant relies
`
`on the following printed publication materials that are available to the general public. The
`
`publications are labeled as Applicant’s Exhibits 8(A) through 8(B), as indicated below:
`
`Exhibit Publication
`
`7(A)
`
`7(B)
`
`
`
`Rosenblatt, Elizabeth, The Adventure of the Shrinking Public Domain (September
`5, 2013). University of Colorado Law Review, Vol. 86, 2015. Available at
`SSRN: https://ssrn.com/abstract=2321343
`Liu, Joseph P., The New Public Domain (September 12, 2011). Boston College Law
`School Legal Studies Research Paper No. 243. Available at
`SSRN: https://ssrn.com/abstract=1926381 or http://dx.doi.org/10.2139/ssrn.1926381
`
`The Exhibits are relevant to: the meaning, strength, and distinctiveness of the terms TINKER
`
`BELL and TINK and of Opposer’s marks; trademarks in character names; public domain works;
`
`other du Pont factors; and Opposer’s and Applicant’s claims and defenses.
`
`

`

`
`
`Dated this 18th day of May, 2018.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Erik M. Pelton
`ERIK M. PELTON & ASSOCIATES, PLLC
`
`Attorney for Applicant
`
`
`
`
`
`
`
`
`
`Opposition No. 91221648: APPLICANT'S SIXTH NOTICE OF RELIANCE
`
`p.2
`
`

`

`CERTIFICATE OF SERVICE
`
`
`I hereby certify that a true and accurate copy of APPLICANT'S SIXTH NOTICE OF
`
`RELIANCE has been served on the following by delivering said copy on May 18, 2018, via
`email, to counsel for Opposer at the following address:
`
`
`David M. Kelly
`KELLY IP
`Linda.McLeod@kelly-ip.com, DisneyOpp@kelly-ip.com, lit-
`docketing@kelly-ip.com, kelu.sullivan@kelly-ip.com, larry.white@kelly-
`ip.com, kelly.kurtz@kelly-ip.com
`
`
`
`
`
`
`
`
`
`By:
`
`
`
`
`Erik M. Pelton
`
`
`
`
`
`
`
`Opposition No. 91221648: APPLICANT'S SIXTH NOTICE OF RELIANCE
`
`p.3
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Disney Enterprises, Inc.
` Opposer,
`
`v.
`
`United Trademark Holdings, Inc.,
` Applicant.
`
`
`
`
`
`
`
`
`
`
`
`
`
`Opposition Nos. 91221648 (Parent)
`
` & 91224985
`
`
`
`
`
`
`
`APPLICANT'S SIXTH NOTICE OF RELIANCE
`
`
`
`
`
`
`
`
`
`EXHIBIT 7A
`
`

`

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`
`
`THE ADVENTURE OF THE SHRINKING
`
`PUBLIC DOMAIN
`
`ELIZABETH L. ROSENBLATT*
`
`Several scholars have explored the boundaries of intellectual
`property protection for literary characters. Using as a case
`study the history of intellectual property treatment of Arthur
`Conan Doyle’s fictional character Sherlock Holmes, this
`Article builds on that scholarship, with special attention to
`characters that appear in multiple works over time, and to
`the influences of formal and informal law on the entry of
`literary characters into the public domain. While copyright
`protects works of authorship only for a limited time,
`copyright holders have sought to slow the entry of characters
`into the public domain, relying on trademark law, risk
`aversion, uncertainty aversion, legal ambiguity, and other
`formal and informal mechanisms to control the use of such
`characters long after copyright protection has arguably
`expired. This raises questions regarding the true boundaries
`of the public domain and the effects of non-copyright
`influences in restricting cultural expression. This Article
`addresses these questions and suggests an examination and
`reinterpretation of current copyright and trademark doctrine
`to protect the public domain from formal and informal
`encroachment.
`
`
`
`
`
` * Associate Professor and Director, Center for Intellectual Property Law,
`
`Whittier Law School. The author is Legal Chair of the Organization for
`Transformative Works, a lifelong Sherlock Holmes enthusiast, and a pro bono
`consultant on behalf of Leslie Klinger in litigation discussed in this Article. I
`would
`like to thank Leslie Klinger, Jonathan Kirsch, Hayley Hughes,
`Hon. Andrew Peck, and Albert and Julia Rosenblatt for their contributions to the
`historical research contained in this Article. In addition, I would like to thank
`Dan Burk, Irene Calboli, Bryan Choi, Andrew Gilden, Paul Heald, Justin Hughes,
`Sheldon Lyke, Mark McKenna, Tyler Ochoa, Lisa Ramsey, Mark Schultz, Zahr
`Said, Eva Subotnik, Rebecca Tushnet, David Welkowitz, the participants at the
`2013 Intellectual Property Scholars’ Conference, the participants at the 2014
`Works in Progress in Intellectual Property Conference, and my research
`assistants Margaret Rafter and Maxwell Shoemaker for their insights and
`suggestions.
`
`

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`[Vol. 86
`
`
`INTRODUCTION .......................................................................... 562 
`I. 
`  FORMAL CONTOURS OF THE PUBLIC DOMAIN IN
`LITERARY CHARACTERS .................................................. 569 
`A.  Copyright Law’s Public Domain ............................. 574 
`1.  Copyrightability.................................................. 574 
`2.  Copyright Expiration ......................................... 578 
`3.  Narrow Rights for Adapters .............................. 585 
`4.  Copyright Fair Use ............................................. 590 
`B.  Trademark Law’s Public Domain ........................... 592 
`1.  Trademark Protectability .................................. 595 
`2.  Trademark Fair Use and Related Defenses ...... 603 
`  UNCERTAINTY, RISK, AND THE SHRINKING OF THE
`PUBLIC DOMAIN .............................................................. 608 
`A.  Doctrinal Uncertainty and Risk Imbalance ........... 609 
`B.  Uncertain Ownership .............................................. 613 
`1.  Copyright ............................................................ 614 
`2.  Trademark .......................................................... 617 
`C.  Incentive to Assert and the Feedback Loop ............. 620 
`III.    ADDRESSING THE PROBLEM ............................................ 622 
`CONCLUSION ............................................................................. 629 
`
`
`II. 
`
`INTRODUCTION
`
`Sir Arthur Conan Doyle famously relinquished narrative
`control of his creation, Sherlock Holmes, to stage performer
`and playwright William Gillette. Gillette was writing a stage
`dramatization based on Conan Doyle’s work, and cabled Conan
`Doyle to ask whether the play could include a plot in which (the
`famously unromantic) Holmes got married. “You may marry
`him, murder him or do what you like with him,” Conan Doyle
`cabled back.1
`But relinquishing narrative control is a far cry from
`relinquishing legal control. Various parties have been fighting
`over the legal rights to Holmes for over a century.2 In fact, the
`
`
`1. Doyle Dep. 7:2–3, Apr. 12, 1923 (on file with author).
`
`2. See generally, e.g., DONALD A. REDMOND, SHERLOCK HOLMES AMONG THE
`
`PIRATES: COPYRIGHT AND CONAN DOYLE IN AMERICA 1890–1930 (1990); Hopkins
`Amusement Co. v. Frohman, 103 Ill. App. 613 (1902), aff’d, 67 N.E. 391 (1903)
`(adjudicating the first United States litigation concerning intellectual property
`rights in Sherlock Holmes); Gillette v. Stoll Film Co., 200 N.Y.S. 787 (1922), aff’d,
`198 N.Y.S. 916 (N.Y. App. Div. 1923) (adjudicating suit among adapters of Holmes
`
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`story about Conan Doyle’s cable comes from his own testimony
`in 1923 litigation.3 Although copyright protection has expired
`for the entire Holmes canon worldwide except in the United
`States,4 and although United States copyright protection has
`expired for all but ten of the Sherlock Holmes stories, the battle
`over Holmes rages on today.5
`The most recent of these disputes centers on an entity
`known as the Conan Doyle Estate Ltd. (CDE), which claims a
`combination of copyright and trademark rights in Holmes and
`describes its business as “manag[ing] the fully developed
`[Sherlock Holmes]
`character’s
`further promotion and
`development through licensing agreements.”6 The CDE gained
`attention in early 2013 when Sherlock Holmes scholar Leslie
`Klinger responded to a cease and desist letter from the CDE by
`challenging the CDE in court.7 Klinger sought a declaration
`that seemed self-evident: that the contents of the Sherlock
`Holmes stories and novels first published in the United States
`before 1923, like all works first published in the United States
`before 1923, fall into the copyright public domain.8 The case
`
`
`
`stories); Musto v. Meyer, 434 F. Supp. 32, 36 (S.D.N.Y. 1977) (same); Granada
`Television Int’l, Inc. v. Lorindy Pictures Int’l, Inc., 606 F. Supp. 68, 73 (S.D.N.Y.
`1984) (same); Plunket v. Doyle, No. 99 Civ. 11006 (KMW), 2001 WL 175252
`(S.D.N.Y. Feb. 22, 2001) (adjudicating dispute among entities claiming to own
`copyright in Holmes stories); Pannonia Farms, Inc. v. USA Cable, 03 Civ. 7841
`(NRB), 2004 U.S. Dist. LEXIS 23015 (S.D.N.Y. June 7, 2004) (adjudicating suit
`between claimant in Holmes copyright and adapter); Klinger v. Conan Doyle
`Estate, Ltd., 988 F. Supp. 2d 879 (N.D. Ill. 2013) (same).
`3. See supra note 1.
`
`4. See Dave Itzkoff, For the Heirs to Holmes, a Tangled Web, N.Y. TIMES
`
`(Jan. 18, 2010), http://www.nytimes.com/2010/01/19/books/19sherlock.html,
`archived at http://perma.cc/P5CE-2P7F.
`5. See Klinger v. Conan Doyle Estate Ltd., 755 F.3d 496 (7th Cir. 2014).
`
`
`6. Motion to Stay Mandate, Klinger, 755 F.3d 496 (No. 1:13-CV-14-1128),
`https://freesherlock.files.wordpress.com/2014/07/cde-motion-for-
`at
`available
`stay.pdf, archived at http://perma.cc/6MSU-ZFKB (denying the stay); see also Who
`Are Conan Doyle Estate Ltd.?, CONAN DOYLE EST., http://www.conandoyle
`estate.co.uk/index.php/who-are-conan-doyle-estate-ltd (last visited Oct. 9, 2014),
`archived at http://perma.cc/3EN3-R73N.
`7. See Complaint for Declaratory Judgment, Klinger, 755 F.3d 496 (No. 1:13-
`
`CV-01226), 2013 WL 552848.
`8. See id.; see also PETER HIRTLE, COPYRIGHT TERM AND THE PUBLIC
`
`DOMAIN IN THE UNITED STATES, 1 JANUARY 2014, available at http://copyright.
`cornell.edu/resources/docs/copyright2014.pdf, archived at http://perma.cc/UW5L-
`5UMW (charting expiration dates of copyrighted works based on factors including
`publication date, registration, and renewal; concluding that copyright protection
`has expired for all works first published in the United States before 1923).
`
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`captured the attention of the press and public,9 and for a time,
`the #FreeSherlock hashtag trended on Twitter.10 The case took
`over a year and half to resolve: after Klinger prevailed in the
`Northern District of Illinois and the Seventh Circuit Court of
`Appeals,11 the CDE sought review in the Supreme Court.12 The
`Court denied certiorari in November, 2014.13 Despite Klinger’s
`victory, the CDE maintains that it owns both copyright and
`trademark rights in the character of Holmes. It has issued
`press releases claiming that it retains copyright in the
`“complete” character of Sherlock Holmes and making clear that
`“[t]he [CDE]’s trademark rights in the SHERLOCK HOLMES
`name and image were not at issue in Mr. Klinger’s lawsuit and
`remain unaffected.”14
`
`
`9. See, e.g., Opinions, FREE SHERLOCK, http://free-sherlock.com/opinions
`
`(last visited Sept. 6, 2014), archived at http://perma.cc/9X4N-BVLJ; Jennifer
`Schuessler, Suit Says Sherlock Belongs to the Ages, N.Y. TIMES (Mar. 6, 2013),
`http://www.nytimes.com/2013/03/07/books/suit-says-sherlock-belongs-to-the-
`ages.html, archived at http://perma.cc/manage/vest/MM2C-267P; Jenny Hendrix,
`Free Sherlock? Holmes Scholar Challenges Conan Doyle Estate, L.A. TIMES (Feb.
`18,
`2013),
`http://articles.latimes.com/2013/feb/18/entertainment/la-et-jc-free-
`sherlock-holmes-scholar-challenges-conan-doyle-estate-20130218,
`at
`archived
`http://perma.cc/6SKM-CL2J; Claire Suddath, The Man Who’s Trying to Free
`BUSINESSWEEK
`(Mar.
`8,
`2013),
`BLOOMBERG
`Sherlock Holmes,
`http://www.businessweek.com/articles/2013-03-08/the-man-whos-trying-to-free-
`sherlock-holmes, archived at http://perma.cc/ES8Z-4Y2B; G.F., Who Owns
`Sherlock Holmes?, ECONOMIST (Feb. 20, 2013), http://www.economist.com/blogs/
`prospero/2013/02/public-domain, archived at http://perma.cc/J483-RAEQ; Cory
`Doctorow, Holmes Scholar Files Suit to Put Sherlock Unambiguously Into the
`Public Domain, BOING BOING (Feb. 15, 2013, 5:38 PM), http://boingboing.net/
`2013/02/15/holmes-scholar-files-suit-to-p.html, archived at http://perma.cc/3JLR-
`68UE.
`10. See Results for #freesherlock, TWITTER, https://twitter.com/search?q=%23
`
`freesherlock&src=typd (last visited Sept. 6, 2014), archived at http://perma.cc/
`Z2CT-DGSL. Even literary celebrities like Neil Gaiman and Stephen Fry voiced
`their support. See Tweet by @neilhimself (Neil Gaiman), Mar. 15, 2013
`(“@LyndsayFaye @BakerStBabes @lklinger is the man.”); Tweet by @stephenfry
`(Stephen Fry), Mar. 26, 2013 (“The characters of Sherlock Holmes & Dr. Watson
`should belong to the world! Support the #FreeSherlock case! Bit.ly/YcSnGR”).
`
`11. Klinger, 755 F.3d at 503.
`
`12. Petition for Writ of Certiorari, Klinger v. Conan Doyle Estate, Ltd., 2014
`WL 4639832 (Sept. 15, 2014) (No. 14-316).
`
`13. Klinger, 755 F.3d 496, cert. denied, 2014 WL 4647139 (Nov. 3, 2014) (No.
`14-316).
`14. Press Release—Klinger v. Conan Doyle Estate, CONAN DOYLE EST. (June
`
`16, 2014), http://www.conandoyleestate.co.uk/index.php/press-release-klinger-v-
`conan-doyle-estate, archived at http://perma.cc/3EN3-R73N; Benjamin Allison,
`Ruling Protects Much of Sherlock Holmes’s Character, SUTIN, THAYER & BROWNE
`(Dec. 29, 2013), http://sutinfirm.com/news-awards/ruling-continues-to-protect-
`much-of-sherlock-holmes-character, archived at http://perma.cc/4KKY-FZQ3
`(summarizing recent case and written by lead counsel for the Conan Doyle
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`Moreover, the CDE is only one piece of the intellectual
`property puzzle surrounding Sherlock Holmes. Others claim to
`own both copyright and trademark rights in the character. One
`purported owner, a socialite named Andrea Plunket who claims
`rights through a complicated chain of purchases and
`bequests,15 threatened in 2010 to “withdraw permission for
`more [Warner Brothers] films to be made” if those films
`contained gay subtext regarding Holmes.16 More recently,
`Plunket expressed plans to assert trademark claims against
`both the BBC (for Sherlock) and CBS (for Elementary),
`explaining: “I have the rights, that is clear . . . . No one has
`asked permission to use my trademarks and I am confident
`that, if and when I go to court, I will be able to prevent the
`BBC making any more ‘Sherlocks.’”17
`To some extent, these threats are grounded in law.
`Although
`copyright
`protection
`expires,
`it
`does
`so
`incrementally.18 As a result, claimants can argue for continued
`protection of character elements even after copyright has
`expired for the stories that introduced and defined the
`characters. Trademark law, which protects source identifiers
`(that is, brand names, logos, and the like), is less likely than
`copyright law to protect literary characters, and even less
`likely to bar expressive uses of those characters,19 but
`trademark law provides appealing ammunition for claimants
`because unlike copyright, trademark protection can last
`forever.20
`
`
`Estate).
`15. See infra notes 261–64 and accompanying text.
`
`
`16. Oli Simpson, ‘Sherlock Holmes 2’ Plans in Jeopardy?, DIGITAL SPY (Jan. 4,
`2010, 3:12 PM), http://www.digitalspy.com/movies/news/a193822/sherlock-holmes-
`2-plans-in-jeopardy.html, archived at http://perma.cc/785V-ZN6Y.
`17. The Game is Afoot in Sherlock Trademark Dispute, WORLD TRADEMARK R.
`
`BLOG (Jan. 16, 2014), http://www.worldtrademarkreview.com/daily/detail.aspx?g=
`645b6180-c549-4a61-8945-2a4239865fb2, archived at http://perma.cc/8JRM-Y9EZ.
`18. See HIRTLE, supra note 8.
`
`19. See infra Part I.B.
`
`20. See 15 U.S.C. §§ 1059, 1064 (2012) (providing for permanently renewable
`
`registration so long as mark is not abandoned or rendered generic). A number of
`scholars have commented on trademark law’s ability to simulate eternal copyright
`protection even after actual copyright protection has expired. See generally, e.g.,
`J.C. Sander, The End of Arbitrary Findings of Secondary Meaning: A Call for the
`Expansion of Trademark Status of Literary Characters, 17 INTELL. PROP. L. BULL.
`1 (2012); Mark McKenna, Dastar’s Next Stand, 19 J. INTELL. PROP. L. 357 (2012)
`(describing impact of Dastar decision on overlap between trademark and
`copyright); Andrea Slane, Guarding a Cultural Icon: Concurrent Intellectual
`Property Regimes and the Perpetual Protection of Anne of Green Gables in
`
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`
`But while copyright and trademark law may provide
`claimants with a patina of legitimacy, their threats draw power
`less from formal doctrine than from informal forces such as
`pragmatism and fear. Formal law often permits adapters to
`create new works featuring preexisting literary characters,
`either because those characters are unprotected by law or
`because the adapters’ activities are protected by doctrinal
`defenses.21 But informal mechanisms can do at least as much
`to constrain behavior as formal law can, and the law’s fuzzy
`boundaries invite overreaching claims that increase the risk or
`cost of making adaptations. While it may be difficult for a
`claimant to win litigation against an adapter, it is still easy to
`threaten litigation, and even the most meritorious litigation
`defense is expensive and uncertain. Adapters therefore find
`themselves at the mercy of publishers, distributors, and
`insurance carriers who are unwilling to invest in projects that
`injunction.22
`may
`face
`costly
`litigation and possible
`Threatening litigation can be an effective business model for
`putative rights holders, because paying for a license is more
`predictable, and likely cheaper, than fighting about whether a
`license is necessary.23 And there is little incentive for adapters
`to challenge claimants’ allegations, even those that rest on thin
`legal reeds. Adapters, publishers, and distributors generally
`have acquiesced to the CDE’s licensing demands,24 even for
`
`
`
`Canada, 56 MCGILL L.J. 1011 (2011) (describing Canadian law); Kathryn M.
`Foley, Protecting Fictional Characters: Defining the Elusive Trademark-Copyright
`Divide, 41 CONN. L. REV. 921 (2009); Viva Moffatt, Mutant Copyrights and
`Backdoor Patents: The Problem of Overlapping Intellectual Property Protection, 19
`BERKELEY TECH. L.J. 1473 (2004); Kristen Knudsen, Tomorrow Never Dies, 2
`VAND. J. ENT. L. & PRAC. 13 (2000); Christine Nickles, The Conflicts Between
`Intellectual Property Protections When A Character Enters The Public Domain, 7
`UCLA ENT. L. REV. 133 (1999); Leslie A. Kurtz, The Methuselah Factor: When
`Characters Outlive Their Copyrights, 11 U. MIAMI ENT. & SPORTS L. REV. 437
`(1994) [hereinafter Kurtz, Methuselah]; Michael Todd Helfand, When Mickey
`Mouse Is as Strong as Superman: The Convergence Of Intellectual Property Laws
`To Protect Fictional Literary and Pictorial Characters, 44 STAN. L. REV. 623
`(1992); Leslie A. Kurtz, The Independent Legal Lives of Fictional Characters, 1986
`WIS. L. REV. 429 (1986) [hereinafter Kurtz, Independent Lives].
`21. See infra Parts I.A.4, I.B.2.
`
`22. See id.
`
`23. Id.
`
`24. See Klinger v. Conan Doyle Estate, Ltd., 761 F.3d 789, 791–92 (7th Cir.
`
`2014) (granting attorneys’ fees to Klinger, describing CDE’s business model of
`seeking license fees from adapters, and stating “[i]t’s time the estate, in its own
`self-interest, changed its business model”). For a partial listing of the CDE’s
`licenses, see Affidavit of Jon Lellenberg at 2, U.S. Trademark Application Serial
`
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`
`projects that do not draw at all from the few remaining
`copyrighted stories.25 The remarkable thing about the Klinger
`v. CDE case is not its outcome—it’s that Mr. Klinger was
`willing to expend the time and energy to pursue the case rather
`than caving to the CDE’s licensing demand as so many others
`have.26
`Doctrinal encroachment and informal forces thus combine
`to shrink the public domain. The law encumbers some uses and
`permits rights holders to assert claims over even more, so that
`even legally permitted uses become functionally barred. The
`result stifles creative expression and facilitates rent-seeking
`behavior by questionable claimants over material that would
`otherwise reside in the public domain.
`This Article uses the literary character of Sherlock Holmes
`as a case study to explore the true boundaries of the public
`domain and the effects of non-copyright
`influences
`in
`restricting expression. Holmes is an ideal subject because his
`extensive litigation history demonstrates the web of formal and
`informal constraints that adapters may face in deciding to base
`new work on an existing literary character. But while Holmes
`may provide an excellent example, his legal history is far from
`unique. The problems surrounding Holmes are endemic to
`popular literary characters and are particularly acute for
`characters that appear in, and develop through, multiple
`works. These are the characters most likely to be beloved by
`fans and commercial adapters, and about whom fans and
`adapters are most likely to want to create new works. At the
`same time, their popularity and potential profitability make
`them the most likely to tempt putative rights holders to
`overreach. The same characteristics that have made Holmes
`such a fertile subject of disputes have done the same for many
`
`
`
`No. 85,229,790 (filed Jan. 31, 2011), available at https://tsdr.uspto.gov/document
`viewer?caseId=sn85229790&docId=RSI20111217183505#docIndex=4&page=2.
`
`25. For example, the iPad adventure book Steampunk Holmes: Legacy of the
`Nautilus is an adaptation of the public-domain story The Adventure of the Bruce-
`Partington Plans. See P.C. MARTIN, STEAMPUNK HOLMES: LEGACY OF THE
`NAUTILUS (2d ed. 2012), available at http://www.smashwords.com/extreader/
`read/134422/1/steampunk-holmes-legacy-of-the-nautilus, archived at http://perma
`.cc/8N3F-73LX (containing prominent notice that the makers received a license
`from the CDE).
`26. See Klinger, 761 F.3d at 792 (granting attorneys’ fees to Klinger,
`
`describing differential between cost of license and cost of litigation); Affidavit of
`Jon Lellenberg, supra note 24, at 2 (identifying some who have obtained licenses
`from the CDE).
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`other characters. For example, copyright protection has expired
`for Tarzan,27 Zorro,28 John Carter of Mars,29 Conan the
`Barbarian,30 Peter Rabbit,31 “Fatso” from Casper the Friendly
`Ghost,32 and Betty Boop33—yet for each, putative rights
`holders have sought to rely on trademark theories to extend
`protection.34
`Therefore, while this Article examines Holmes in depth, its
`implications are much broader. The Article begins by defining
`the public domain and exploring the doctrinal and conceptual
`value of having a public domain in literary characters. In Part
`I, the Article addresses the contours that formal law provides
`to the public domain, first in a copyright context and then in a
`trademark context. Part I concludes that although formal
`copyright and trademark law are designed to create a robust
`public domain in literary characters, both bodies of law suffer
`from uncertainties that blur the boundaries of the public
`
`
`27. See Edgar Rice Burroughs, Inc. v. Manns Theatres, No. 76-3612, 1976 WL
`
`20994, 195 U.S.P.Q. 159 at *3 (C.D. Cal. Dec. 20, 1976); Complaint, Edgar Rice
`Burroughs, Inc. v. Dynamic Forces Entm’t, Inc., 1:12-cv-01192-ER (S.D.N.Y. Feb.
`12, 2012) (alleging infringement of various Tarzan and John Carter of Mars
`marks without alleging infringement of United States copyright).
`28. See generally Sony Pictures Entm’t v. Fireworks Entm’t Grp., 137 F.
`
`Supp. 2d 1177 (C.D. Cal. 2001) (claiming trademark rights in Zorro character
`after copyright had expired); Sony Pictures Entm’t v. Fireworks Entm’t Grp., 156
`F. Supp. 2d 1148 (C.D. Cal. 2001) (same); Queen of Swords to Zorro: Take That!, 7
`ANDREWS INTELL. PROP. LITIG. REP., no. 21, 5 (2001) (describing case).
`29. See Charlie Jane Anders, Can You Trademark a Character from a Public
`
`Domain Story?, IO9 (Feb. 27, 2012, 5:00 PM), http://io9.com/5888791/can-you-
`trademark-a-character-whos-in-the-public-domain, archived at http://perma.cc/
`KH3H-WMUT; John Carter of Mars Series, EDGAR RICE BURROUGHS,
`http://www.edgarriceburroughs.com/?page_id=18 (last visited Oct. 13, 2014),
`archived at http://perma.cc/29HF-2LXJ (noting that John Carter books were
`published in 1911 but describing claim of trademark rights in, among other
`things, character names); Complaint, Edgar Rice Burroughs, Inc. v. Dynamic
`Forces Entm’t, Inc., 1:12-cv-01192-ER (S.D.N.Y. Feb. 12, 2012) (alleging
`infringement of various Tarzan and John Carter of Mars marks).
`30. See generally Conan Properties, Inc. v. Mattel, Inc., 712 F. Supp. 353, 355
`
`(S.D.N.Y. 1989) (asserting both copyright and trademark claims against Mattel’s
`He-Man although copyright had lapsed in Robert Howard’s Conan character).
`31. See generally Frederick Warne & Co., Inc. v. Book Sales Inc., 481 F. Supp.
`
`1191 (S.D.N.Y. 1979) (asserting trademark rights in Peter Rabbit after copyright
`had expired); Viva R. Moffat, Mutant Copyrights and Backdoor Patents: The
`Problem of Overlapping Intellectual Property Protection, 19 BERKELEY TECH. L.J.
`1473 (2004).
`32. See Harvey Cartoons v. Columbia Pictures Indus., Inc., 645 F. Supp. 1564
`
`(S.D.N.Y. 1986).
`33. See generally Fleischer Studios, Inc. v. A.V.E.L.A., Inc., 654 F.3d 958 (9th
`
`Cir. 2011).
`34. See infra notes 35–41 and sources cited therein.
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`domain and permit overreaching by putative rights holders. In
`Part II, the Article addresses the informal forces that exploit
`formal doctrine to constrict the public domain in literary
`characters: doctrinal uncertainty, uncertainty surrounding
`rights ownership, and an incentive for putative rights holders
`to assert dubious or nonexistent rights. Finally, Part III
`suggests that the public interest would benefit from brighter-
`line copyright and trademark rules regarding when literary
`characters reside in the public domain, and proceeds to propose
`solutions based on existing copyright and trademark doctrines.
`
`I. FORMAL CONTOURS OF THE PUBLIC DOMAIN IN LITERARY
`CHARACTERS
`
`Literary characters are part of a shared cultural
`vocabulary. Although their lives begin on the page, literary
`characters take up residence in cultural discourse, gaining
`symbolic and cultural significance.35 This may be even truer for
`serialized characters like Sherlock Holmes, who must be
`beloved enough to support the success of multiple works. As
`time passes and their canons build, the characters become like
`old friends, living on as “fixed points in a changing age” even
`after their creators die.36 Certainly, Sherlock Holmes has
`become far more than a fictional detective. He has so infused
`the cultural consciousness that the term “Sherlock Holmes” has
`become a generic term for detective or clever person—“she’s a
`real Sherlock Holmes”—in addition to identifying the detective
`himself. Naturally, new creators want to tell stories about
`these culturally significant characters—to re-tell or reimagine
`their stories, to comment on their meaning, or to create new
`episodes in the characters’ imagined-yet-familiar lives.37 As a
`subject of adaptation, Sherlock Holmes is ubiquitous; in
`addition to the “canon” of fifty-six short stories and four novels
`written by Conan Doyle, Holmes has also appeared in
`thousands of film and television adaptations, plays, and
`pastiches, and tens of thousands of works of non-commercial
`
`
`35. See Kurtz, Independent Lives, supra note 20, at 432–36 (discussing and
`
`providing examples of characters’ entry into cultural vocabulary).
`
` ARTHUR CONAN DOYLE, HIS LAST BOW 8 (1917) (“Good old Watson! You
`36.
`are the one fixed point in a changing age.”).
`37. See Jacqueline Lai Chung, Drawing Idea from Expression: Creating a
`
`Legal Space for Culturally Appropriated Literary Characters, 49 WM. & MARY L.
`REV. 903, 913–17 (2007) (discussing cultural appropriation of characters).
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`fiction, art, commentaries, and other works created by fans of
`the detective.38 Holmes and scores of other characters whose
`identities transcend their original stories have become symbols
`with meanings created not only by the characters’ original
`creators, but also by the public at large. This shared cultural
`vocabulary is a rich source of communicative and expressive
`meaning.39
`Because intellectual property law gives owners exclusive
`rights over protected information, it inevitably limits the pool
`of resources available to creators.40 For example, Harry Potter
`and his friends are undoubtedly part of shared culture, but it
`would be a copyright infringement to make and sell exact
`copies of J.K. Rowling’s Harry Potter books.41 But while the
`law places some limits on what creators can do and use, it also
`constrains those limits, so as to leave room for cultural
`expression. The law creates a public domain of material
`available to creators by expressly excluding certain information
`from protection and permitting certain uses of protected
`information.
`The public domain encompasses free-to-use material across
`doctrinal lines—i.e., material unencumbered by copyright,
`trademark, patent, or other intellectual property doctrine.
`Scholars disagree, however, on a precise definition or scope for
`the term “public domain.”42 The narrowest definition includes
`only information outside the scope of formal intellectual
`property protection: inventions and works of authorship too old
`to be patented or copyrighted; information too generic,
`functional, or descriptive to serve as trademarks for particular
`
`
`
`38. Betsy Rosenblatt, Sherlock Holmes Fan Fiction, 62 BAKER STREET J. 33
`
`(2012).
`39. See Chung, supra note 37, at 931–32 (discussing sources of meaning and
`
`communicative value of culturally appropriated characters); Kurtz, Independent
`Lives, supra note 20, at 433–36.
`
`40. I use the term “creators” here and throughout to refer both to so-called
`“original” creators and follow-on creators such as adapters, recognizing that even
`the most original creator must inevitably draw on material that came before.
`41. See Warner Bros. Entm’t Inc. v. RDR Books, 575 F. Supp. 2d 513, 546–49
`
`(S.D.N.Y. 2008) (holding that work containing substantial portions of Harry
`Potter books infringed copyright).
`42. Se