Alyshea Low discusses the legal issues that arise from the expiry of copyright.
 
INTRODUCTION
 
Copyright protection afforded to works cannot be granted in perpetuity. Maintaining and ensuring the balance between the exclusive right of the copyright owner and the interests of the public to have access to the works is important. This term of protection is limited to a fixed duration and is dependent on the categories of the copyright work involved.
 
Copyright law in Malaysia is governed by the Copyright Act 1987 (“Act”) which came into force on 1 December 1987. The Act has undergone various significant updates since then, with the latest amendments in 2012.
 
DURATION OF COPYRIGHT
 
Generally, for literary, musical and artistic work, section 17(1) of the Act provides that the duration of the copyright is the life of the author plus 50 years after his death. If the work is published after the death of the author, the copyright will subsist for 50 years from publication of the work. In the case of a joint work prepared by two or more authors, section 17(4) states that the computation shall start from the date of the author who dies last.
 
Malaysia acceded to the Berne Convention for the Protection of Literary and Artistic Works (“Convention”) on 28 June 1990. Article 7(6) of the Convention allows member countries to grant a term of protection in excess of what is stipulated in the Convention, which is generally 50 years. For example, in order to harmonise copyright laws of member countries in the European Union, the duration of protection has been extended from 50 to 70 years after the death of the author pursuant to amendments made by members of the European Union to their respective domestic laws in accordance with Articles 1 and 13(1) of Council Directive 93/98 (“Directive 93/98”). However, Malaysia has not taken steps to amend the Act to extend the duration of copyright as permitted under Article 7(6) of the Convention.
 
In the United States of America, federal law provides that the term of a copyright for an individual person is for the life of the author and 70 years after his death. For copyright work for hire and most institutional authors, e.g. companies and universities, the term of protection is 95 years from the first publication; or if not published, 120 years from its creation, whichever occurs first.
 
In the United Kingdom, Australia and Singapore, typically the work will be protected for either 70 years from the death of the author, or if published, 70 years from the date of the first publication.
 
WHAT HAPPENS AFTER THE EXPIRATION DATE?
 
When the term of a copyright expires, the work enters the “public domain”. This simply means that the work becomes free and available for anyone to use, copy or reproduce for any purpose. The permission of the former copyright owner is also not required.
 
This is why the works of well-known writers like William Shakespeare, artists like Leonardo da Vinci and composers like Beethoven and Mozart can be copied, reproduced and used in varying forms.  
 
EXTENSION, PLEASE?
 
There is no option for extending copyright protection; however, in certain instances copyright has been revived.
 
In Butterfly Music Srl v Carosello Edizioni Musicali e Discografiche Srl (CEMED) [1999] I-3939 (Case C-60/98), the European Court of Justice ruled that certain musical works of Mina, an Italian singer, which had entered the public domain under the legislation previously in force, had again become protected as a result of the provisions of Directive 93/98 being transposed into national law. This ruling in effect restored and extended the terms of copyright on material previously in the public domain.
 
In the United States, President Clinton signed the Copyright Term Extension Act (“CTEA”), also known as the Sonny Bono Copyright Term Extension Act, in 1998. The CTEA retroactively extended copyright protection. As a result, the rights to 20^th century iconic works such as “Gone With the Wind” and “Citizen Kane” were protected for an additional 20 years.
 
Unlike the examples cited above, there are no provisions in Malaysia granting extension of copyright protection.
 
The subject of copyright existing in an updated work is more complex and dependant on the facts of each case.  
 
In Hyperion Records Limited v Sawkins [2005] EWCA Civ 565, Dr Lionel Sawkins, a musicology scholar of high repute, prepared four performing editions (“performing editions”) of the works of Michel-Richard de Lalande, the principal composer in the Courts of Louis XIV and Louis XV. Lalande was born in 1657 and died in 1726. Thus, any copyright that may have subsisted in his music in the United Kingdom would have expired long ago.
 
Sawkins’ work involved the gathering of surviving manuscripts and prints and the choice of the most appropriate version, the insertion of missing material, and the re-composition of missing bars. In total, Sawkins spent 1,200 hours working on the performing editions and made 3,000 editorial interventions to the performing editions.
 
When Hyperion, the record company denied Sawkins’ copyright in the performing editions and refused to pay him royalties, Sawkins brought proceedings for infringement of copyright. The Court of Appeal, approving the High Court decision, held that there is copyright protection in the performing editions. At this juncture, it is important to note that Sawkins did not claim copyright in Lalande’s music, but claimed copyright in the performing editions which incorporated new work “sufficiently original in terms of the skill and labour used to produce it”.
 
ELEMENTARY, MY DEAR WATSON
 
This is probably the most famous quote attributed to uber-detective, Sherlock Holmes. The character itself inspired countless films and television adaptations. But the truth of the matter is, Sir Arthur Conan Doyle never wrote those exact words in any of his 56 short stories or 4 novels which starred his fictional detective. This quote was used by author P.G. Wodehouse in the 1915 novel, Psmith, Journalist where the writer, in no way, shape or form referred to the character, Sherlock Holmes.
 
Under U.S. copyright law, works published before 1 January 1923 no longer have copyright protection. This was to embroil the estate of Doyle, who had died in 1930, in a legal dispute which involved the famous detective.
 
The latest decision of the U.S. Supreme Court in Conan Doyle Estate, Ltd v Leslie S. Klinger No. 14-316 reaffirmed the ruling of the 7^th U.S. Circuit Court in June 2014. The Conan Doyle Estate had demanded from author, Leslie Klinger, the sum of $5,000 for the right to publish a book of new short stories featuring characters and elements from Doyle’s work. Klinger refused, arguing that he should be free to publish as the 50 original Doyle stories now in the U.S. public domain, include all key characters and story elements. The Conan Doyle Estate insisted that, until expiration in 2022, Sherlock Holmes remains a “single complex character” who cannot “be dismantled”.
 
The Circuit Court agreed with Klinger’s arguments and said that 50 of Doyle’s works featuring the famed fictional detective that were published before 1923 are in the public domain.
 
In a final attempt, the Conan Doyle Estate filed a petition for a writ of certiorari with the Supreme Court, arguing that the later stories of Doyle had changed or altered the main features of the two central characters.
 
In early November 2014, the Supreme Court declined to hear an appeal filed by the Conan Doyle Estate and dismissed the case. The Supreme Court said that only the last 10 works published between 1923 and 1927 have copyright protection expiring after 95 years. Those 10 works deserved protection, but the original character of the famous detective and his sidekick, Dr Watson, were no longer subject to copyright protection. Copyright protection in these century-old literary characters could not be extended simply by changing their features in later stories.
 
Thus, based on the ruling of the U.S. Supreme Court, writers are free to depict Sherlock Holmes in new mysteries without the need to seek permission or paying license fees, with the exception of the 10 works which are still protected by copyright. The Supreme Court said that “when a story falls into the public domain, story elements, including characters covered by the expired copyright, becomes fair game for follow-on authors”. Notwithstanding the use of common characters in successive works, the copyrights of the original Sherlock Holmes and Watson characters from 1887 had expired. The existing copyrights in the 10 Sherlock Holmes stories only covered the features Doyle had added to the original Holmes and Watson characters. In other words, “the alterations do not revive the expired copyrights on the original characters”.
 
FIGHTING A LOSING BATTLE?
 
The decision in the Conan Doyle Case has a definite impact on many popular serialized characters when the first works fall into the public domain. If the Conan Doyle Estate had succeeded in obtaining leave and won the appeal against the decision in the Circuit Court, it would have raised new questions and potential challenges in the cases of similar characters. For example, the UK copyright protecting Ian Fleming’s James Bond novels which are due to expire in 2034.
 
The limited lifetime of copyright protection has achieved the purpose of balancing between the rights of the author and the rights of the public. By placing an end date to the period of copyright protection, the work is available to the public to adapt, alter and further enhance; allowing a continuous free flow of information and intellectual thought which will be of benefit to society.