Claiming Copyright in Public Domain Works: It’s Time to Put an End to Publishing Sleight of Hand

Mark Twain was famous for many things, including being a copyright absolutist. He thought copyrights should be perpetual. Appearing before Congress, he stated, “I know we must have a limit, but forty-two years is too much of a limit. I am quite unable to guess why there should be a limit at all to the possession of the product of a man’s labor.” 1 Of particular rancor to him was that the main beneficiary of a work entering the public domain was the book publishers. They simply continued to publish the work, without having to pay him a royalty. The public domain “gives the publisher double profit.” Twain complained. “He goes on publishing the book and as many of his confederates as choose to go into the conspiracy do so, and they rear families in affluence. And they continue the enjoyment of those ill-gotten gains generation after generation forever, for they never die.” 2 Twain was very prescient. Huckleberry Finn has been in the public domain for nearly 100 years. But a publisher will be happy to sell you a copy for $8.78. 3 To be fair, there are certain hard costs in publishing a physical copy. But $8.78? Even a Kindle copy, which costs next to nothing to deliver, will still set you back 99 cents. 4

The main problem with all of this is that the copy that you purchase will carry a copyright notice on it. I discovered this as I picked up my son’s copy of Huckleberry Finn, which he had to read for school last year. A copyright? On what? The illustration on the front cover? The notice doesn’t tell you, and there is no requirement that the notice state what the copyright claim entails. For its part, the Mark Twain Project states that “texts edited by the Mark Twain Project and published by [University of California] Press (such as, for example, the Project’s 2003 edition of Adventures of Huckleberry Finn) are also protected, and may not be reproduced without permission.” 5 Just how does redacting a public domain work create a new copyright in the entire work? And unless I have memorized every page of Huckleberry Finn, just how am I supposed to know where the changes are? This is not how the public domain is supposed to function.

The Mark Twain Project was also responsible for this public domain sleight of hand. Recall that back in 2010, Mark Twain’s Autobiography was published, with a full claim of copyright for which the University of California Press wants $33.00. 6 But the author himself had stipulated that this work was not to be published until 100 years after his death. 7 This meant that the work was already in the public domain under the life plus 70 term dictated by the copyright act. 8 Many copyright scholars, like Kevin Smith (and myself), wondered how this copyright claim was possible. 9 Here’s how they did it.

Section 303 of the copyright act contained a little known “clean up” provision to assist in the transition from a strict term of years to a “life plus” term. Under the 1909 act, a work that remained unpublished and unregistered at the Federal level would be protected by state law, and in effect have a perpetual copyright term. Section 301 provided for post-1978 Federal pre-emption, effectively eliminating almost all state law protections for copyrights. Then, in section 303, the act provided that all unpublished works would receive life plus 70 terms, and if the life plus 70 term had already expired, provided a minimum length of protection until December 31, 2002. Here’s where the catch comes in. In order to encourage the publication of unpublished works, if a work was published before December 31, 2002, it would receive “bonus” protection until December 31, 2047, or 70 years from the effective date of the 1976 Copyright Act.

So in 2002, the Mark Twain Project “published” all of Twain’s unpublished works, including his autobiography. 10 Didn’t hear about it? Neither did I. This was the quietest publication in literary history. Especially considering this should have been a major literary event. To the contrary, the Twain Project published the material in a manner that ensured that the works would not be widely disseminated, if at all. The Twain Project published this material on three rolls of microfilm, 11 and the asking price was an astonishing $50,000.00. 12 So, having met the bare definition of “publication” under the copyright act in that “[t]he offering to distribute copies or phonorecords to a group of persons for purposes of further distribution…constitutes publication,” 13 the Mark Twain Project lays its claim to a copyright term until December 31, 2047. 14

That a major United States university, the University of California, would be a willing participant in this shameless and greedy circumvention of the public domain is truly dumbfounding. I guess that their dedication to the enhancement of public knowledge got thrown under the bus for the sake of a large payout. Additionally troubling is that nothing is ever mentioned that they, along with the Twain Project, violated the very main tenet of the gift: namely, that publication not occur until 100 years after his death.

Joining the Twain Project in the shameless and greedy “claiming copyright in the public domain” arena is the Estate of Sir Arthur Conan Doyle. The famous creator of Sherlock Holmes has been dead for 84 years, 15 and the majority of Holmes mysteries are clearly in the public domain, 16 yet his estate insists that the character of Sherlock Holmes remains protected by copyright, and demands licensing fees from anyone wishing to use the Sherlock Holmes name. 17

Leslie Klinger had written a prior anthology of works based on the public domain Sherlock Holmes stories only to see his publisher knuckle under to a demand from the Conan Doyle estate of a $5,000.00 licensing fee. 18 When he decided to create a sequel to the anthology, the Conan Doyle estate once again came charging in, throwing both elbows.

“It told [the proposed publisher]: ‘If you proceed instead to bring out Study in Sherlock II [the original title of In the Company of Sherlock Holmes] unlicensed, do not expect to see it offered for sale by Amazon, Barnes & Noble, and similar retailers. We work with those compan[ies] routinely to weed out unlicensed uses of Sherlock Holmes from their offerings, and will not hesitate to do so with your book as well.’ There was also a latent threat to sue Pegasus for copyright infringement if it published Klinger’s book without a license, and to sue Internet service providers who distributed it.” 19

Klingler filed a declaratory judgment action to declare that the Sherlock Holmes character was in the public domain. The Conan Doyle Estate tried to throw a monkey wrench into this proceeding by failing to respond to the lawsuit and defaulting. They then claimed at summary judgment that the motion could not be granted, as the case was not a live controversy because the book had not come out, they had taken no action, and had failed to respond to the lawsuit. 20 They also argued that since not all the Sherlock Holmes stories were in the public domain, Holmes was not “completed” as a character and therefore still protected by copyright until the expiration of the copyright in the last story. District Court did not buy any of this and issued summary judgment for the Plaintiff. The Conan Doyle Estate appealed. They were thoroughly rejected by the Seventh Circuit Court of Appeals:

“With the net effect on creativity of extending the copyright protection of literary characters to the extraordinary lengths urged by the estate so uncertain, and no legal grounds suggested for extending copyright protection beyond the limits fixed by Congress, the estate’s appeal borders on the quixotic. The spectre of perpetual, or at least nearly perpetual, copyright…looms, once one realizes that the Doyle estate is seeking 135 years (1887–2022) of copyright protection for the character of Sherlock Holmes as depicted in the first Sherlock Holmes story.” 21

It got worse for the Conan Doyle Estate. Klinger moved for his attorneys fees. The Seventh Circuit awarded them, and wrote this rather stinging rebuke:

“The Doyle estate’s business strategy is plain: charge a modest license fee for which there is no legal basis, in the hope that the “rational” writer or publisher asked for the fee will pay it rather than incur a greater cost, in legal expenses, in challenging the legality of the demand. The strategy had worked with Random House; Pegasus was ready to knuckle under; only Klinger (so far as we know) resisted. In effect he was a private attorney general, combating a disreputable business practice—a form of extortion—and he is seeking by the present motion not to obtain a reward but merely to avoid a loss. He has performed a public service—and with substantial risk to himself, for had he lost he would have been out of pocket for the $69,803.37 in fees and costs incurred at the trial and appellate levels ($30,679.93 + $39,123.44). The willingness of someone in Klinger’s position to sue rather than pay Doyle’s estate a modest license fee is important because it injects risk into the estate’s business model. As a result of losing the suit, the estate has lost its claim to own copyrights in characters in the Sherlock Holmes stories published by Arthur Conan Doyle before 1923. For exposing the estate’s unlawful business strategy, Klinger deserves a reward but asks only to break even.” 22

Of course, no discussion of trying to grab works back from the public domain would be complete without a mention of “Happy Birthday,” a subject that I have some personal experience with. Warner-Chappell, the publisher of “Happy Birthday” receives an estimated $2 million a year in licensing fees for a song that many people feel is in the public domain. 23 Documentary filmmaker Jennifer Nelson wanted to make a movie about the song. Warner-Chappell wanted a $1,500 licensing fee. 24 She has declined to do so and instead, like Leslie Klingler, filed a declaratory decree in June 2013 seeking a judgment that “Happy Birthday” is in the public domain. You can read the complaint here. 25 Her complaint “closely tracks the findings of Robert Brauneis, a professor at the George Washington University Law School and the author of a 68-page article titled “Copyright and the World’s Most Popular Song.” 26 His conclusion is that “Happy Birthday” is in the public domain. 27

Certainly, the melody to “Happy Birthday” is in the public domain, being composed in the late 1800’s. 28 However, Warner-Chappell can be aggressive on that front as well. I had an artist record a live album on the occasion of his birthday. The band surprised him by playing a special arrangement of “Happy Birthday.” Even though none of the words were sung, and the melody is clearly in the public domain, Warner Chappell Music insisted on a full royalty for the use of the song on the CD, known in the music industry as a “mechanical royalty.” The record company agreed to pay the full royalty. Why would a record company pay a full mechanical royalty on a public domain song? Because the record company was Warner Bros. Records, sister company to Warner-Chappell Music. Right hand, meet left hand, and now shake. And because the Artist was over the maximum total royalty rate because some of the songs were very lengthy, the royalty payment for “Happy Birthday” came out of the Artist’s pocket. My complaints, not surprisingly, not only fell on deaf ears, but were never responded to.

I am as pro-copyright as they come. Anyone who has read my blog posts understands this. But enough is enough. Copyrights last for a very long time, and once you have had your run, that should be it. Aggressively trying to exact payments for something that is clearly in the public domain should not be tolerated at any level of this business. In fact, it only increases the ill-will towards the notions of copyrights in general, and makes the job of getting fair treatment and proper enforcement of existing copyrights that much more difficult.

This is not idle speculation. The antics of the Mark Twain Project in claiming that editorial revisions grant a new copyright over the entire work have spawned a new cottage industry: taking works in the public domain, altering them slightly, and then claiming a copyright in the entire work. 29 This story from Money Magazine recounts how this person claims to have made $15,000 in the first month, selling a book he copied almost verbatim from a book in the public domain. 30 To make this sleazy ruse complete, the picture of the “author” is not even a picture of himself. 31

The website “Public Domain Mastermind” breathlessly tells you “[t]hat’s right, you can edit, modify, repackage, republish and resell a product and keep 100% of the profits without paying a penny in product purchase fees, royalties or copyright fees!” 32 But wait, there’s more! They will also show you “How to easily and inexpensively get the legal protection you need to safeguard your public domain project from being stolen!” 33 Of course, you need to pay them $47 for the course that shows you how. 34

It is tough to make a claim that one can “steal” from the public domain, but this is fairly close to it. The copyright act is quite clear that in creating a derivative work, you only receive a copyright in the material that is new, and that you attain no rights in the pre-existing material. 35 Yet, nowhere in the copyright notice will the overt plagiarism be noted or revealed, nor is there any requirement that you do so. This practice is not universal. To their credit, court opinions printed off the WestLaw service note that their claim of copyright does not extend to U.S. Government works, namely the Federal Court opinions which they are republishing. This should point the way to some kind of remedy.

Since there is no requirement that you place copyright notice on your work at all, 36 no damage would be done to the Berne Treaty prohibition against formalities by requiring that a copyright notice be honest as to what is being claimed. If your work is a derivative work, you must disclose this to the copyright office anyway, including the identification of any pre-existing material. Therefore, I would propose that the copyright notice section of the copyright act be amended in the following manner. If the work bearing copyright notice is based on a work in the public domain, then the following legend should appear prominently, say under the title of the book:

This work is based on ***, by ***, which is in the public domain. No claim of copyright is being made to any aspect of that work. This work has changed the public domain work by doing the following: ***.

So, let’s stop the publishing sleight of hand, be it by Twain, Conan Doyle or Warner-Chappel Music. You’ve enjoyed a very long term of copyright protection. When it expires, it’s time to let it go.

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