Should We All Sing “Happy Birthday” to Zorro and Buck Rogers? Three Lessons on the Public Domain

Stephen Carlisle August 14, 2015

Following on the successful lawsuit declaring Sherlock Holmes to be in the public domain, ¹ another lawsuit was filed last week seeking to do the same to Buck Rogers. ² Also, it appears that the proverbial “smoking gun” has just been unearthed in the “Happy Birthday” litigation ³ and the holders of trademark registration to “Zorro” have had their trademarks invalidated in Europe Union countries last month. ⁴ All of these cases shed some light on the intricacies of how and when an artistic work can go into the public domain.

Today, the computations are fairly easy. In the United States, all works created and fixed after 1978 last for a term equal to the life of the author plus 70 years after death, so all copyrights by a single author enter the public domain at the same time. ⁵ For works created by corporations, the term is 95 years from 1^st publication of the work. ⁶

But prior to that date, you could go into the public domain not only by having your copyright term expire, but also by making critical mistakes. Consider how complicated it has become that it is necessary to have a chart to keep track of all the various possibilities under the old 1909 copyright act. ⁷

Under the prior law, if you published your work without copyright notice (e.g. © 1955 by John Doe), this immediately and irrevocably placed the work in the public domain. This happened to the original black and white version of Night of the Living Dead. ⁸ Another potential trap was if you forgot to renew the copyright after the initial term had expired, which would also place your work in the public domain. ⁹ This happened to the original It’s a Wonderful Life ¹⁰ and Little Shop of Horrors, which apparently was never registered for copyright. ¹¹

With regard to Zorro, the first work to feature him was published in 1919 and a Zorro film starring Douglas Fairbanks was also released that same year. Since any work published in the United States prior to 1923 is in the public domain, ¹² this means the story, and Zorro himself, have passed into the public domain. One must be careful though, because a work can be in the public domain in one country, but not others. ¹³ The creator of Zorro, Johnston McCulley, died in 1958. ¹⁴ So, along with the United States, Zorro is in the public domain in all countries adhering to the Berne Treaty minimum of life of the author plus 50 years after death. But in those Berne Countries that follow life plus 70 years, Zorro has 13 more years of protection.

Back in the U.S., an author of a musical about Zorro has filed a declaratory action seeking to make final Zorro’s public domain status, especially where the holders of some of the Zorro rights are arguing he is protected by trademark law. ¹⁵ This blog has previously explained how these protections can overlap, ¹⁶ due to the fact that the character is so famous as to have achieved what trademark lawyers call “secondary meaning” or the character calls to mind the source of the material.

This was not a winning argument before the European Union’s Office for Harmonization in the Internal Market. ¹⁷ There, the office held that:

“Because of the fame of the fictional character Zorro, and his particular characteristics, the relevant public will consider the trade mark “ZORRO” as simply a description of the content of the goods and services.

If the relevant public understands the name of a novel character as a synonym for a certain character, in view of its well-known nature, it is devoid of any distinctive character.” ¹⁸

“In light of the above, the trade mark “ZORRO” will not be recognised as an indicator of trade origin, but rather a non-distinctive name for, and subject matter of the goods and services.” ¹⁹

Put more succinctly, since the character Zorro had been the subject of numerous motion pictures (well over 30), television shows and comic books, the public regards the name “Zorro” as identifying the character, not the source of the material.

Likewise, the character of Anthony Rogers (later “Buck Rogers”), first appeared in 1928, ²⁰ so it should still be in copyright. But in the complaint, it is asserted that the first Buck Rogers story, Armageddon 2419 A.D., entered the public domain in 1956, or 28 years after first publication. ²¹ This would indicate either that the story was never registered, like Little Shop of Horrors, or there was a failure to renew, like It’s A Wonderful Life. Curiously, the complaint does not say which theory they are advancing. What is undeniable is that the author, Philip Francis Nowlan, died in 1940. This means that in the remainder of the world that follows the Berne Treaty, his copyright expired 70 years from the date of his death, or in 2010, and is in the public domain throughout the majority of the world.

The complaint also takes a pre-emptive strike against the assertion of trademark protection, by stating that Buck Rogers cannot have trademark status due to the U.S. Supreme Court ruling in Dastar Corp. v. Twentieth Century Foxfilm Corp., ²² [that the Trademark] Act does not prevent the unaccredited copying of a work in the public domain. ²³ I am not sure that the Dastar case really gets them as far as they want to go. I think it would be better to take the stand that Buck Rogers, like Zorro, is widely perceived as the name of the character, and does not identify the source of the material.

Which leaves us “Happy Birthday.” Warner-Chappell Music’s claim to the copyright stems from a 1935 piano arrangement of the song. ²⁴ Yet, the challengers were able to track down at a Pittsburgh Library early editions of The Everyday Song Book, specifically, a revised fourth edition, published in 1922, which included the “Happy Birthday” song, but did not contain any copyright notice. ²⁵

So, it seems that there is no wiggle room left. Either the song is in the public domain because it was published without copyright notice, or having been published before 1923, whatever copyright term it enjoyed has expired. ²⁶

Warner-Chappell makes the rather weak argument that somehow their predecessor in interest did not authorize this publication, even though a legend below the “Happy Birthday” song states it was published by “special permission” of the publisher Warner purchased in 1988 to acquire the copyright in “Happy Birthday.” ²⁷

So, should we sing “Happy Birthday” to Zorro and Buck Rogers?

Or perhaps sing N’Sync’s “Bye, Bye, Bye” to all three of them.