With older stories and characters like Tarzan, Sherlock Holmes, Barsoom, and Buck Rogers increasingly protected by trademarks and not copyrights, it is becoming more and more important every day that anyone following digital publishing news understand the distinctions between these two parts of IP law, and how trademarks can be used to lock down works that have otherwise fallen into the public domain.
This is a nuance that Boing Boing missed yesterday when it covered the recent copyright lawsuit over Buck Rogers.
Earlier this year a filmmaker by the name of Don Murphy who had been hoping to make a movie based on the 87-year-old public domain story Armageddon 2419 AD filed a lawsuit against the Dille Family Trust, the legal entity that controls the IP of the author, Philip Francis Nowlan.
Murphy asked a judge to declare that the story was in the public domain (you can read more about this over at Boing Boing). Since you can find the story over at Project Gutenberg (it's even appended to Murphy's filing), he's right.
But that's not the whole story, and it's also not the point I wanted to make. Instead, I want to point out an error in how Boing Boing framed the lawsuit:
Murphy responded by filing suit in court, asking for a judgment that the Nowlan novel is in the public domain. Furthermore, he asked (as Klinger did with Holmes) for a declaration stating that since the character of Buck Rogers has his origins in the public domain novel, the character itself is therefore in the public domain and all trademarks for it should be voided.
Yeah, that's not what the Murphy lawsuit says, and that's not what Klinger asked for when he sued the Conan Doyle estate over the Sherlock Holmes copyright.
The problem here is that Boing Boing has conflated copyrights with trademarks, and assumed that because the former is no longer valid then neither is the latter.
That is simply not true.
Do you recall that terrible John Carter of Mars movie from 2012? After it bombed at the box office, the rights reverted from Disney to the Burroughs estate (or so the estate claimed; I am unconvinced that the IP claims are valid).
The trademark issue is important to this Buck Rogers lawsuit because while the copyrights may have expired, the trademarks might still be valid. A tv series based on Buck Rogers was produced in the 1970s, which means that there could be trademarks on elements from the stories.
This movie that Murphy wants to make might contain elements that violate the estate's trademarks. We can't know that for sure without seeing the movie, but we also can't summarily discard the possibility.
As I pointed out earlier this year, there's just too much we don't know.
All I can say at this time is that when we hear of an author's estate acting as a copyright troll, we can't assume that only copyrights are involved. The trolls are now using trademarks to their advantage.
For example, in June 2015 Miramax settled a lawsuit over Mr Holmes, a movie based on Mitch Cullin's book, A Slight Trick of The Mind. That lawsuit was brought by the Conan Doyle estate and alleged both copyright and trademark violations (this, even though the estate had never seen the movie in question nor sued over the book).
Similarly, The Dille Family Trust might also be able to exert control over Buck Rogers through trademarks. (This was mentioned in the BB post, but not given the emphasis it deserved.)
And for that reason, any reports which describe this type of lawsuit as an obviously bogus lawsuit should be taken with a grain of salt.
P.S. And to make things even more complicated, the copyright question is uncertain. Felix Torres has pointed out that "The original story has been adapted in newer novels that are still in copyright. There might be a valid claim on the basis of the newer stories." We won't know for sure until and unless this case goes through discovery and a judge issues a ruling.