7th Cir. Affirms That Characters From First Sherlock Holmes Stories Are Public Domain

By Anandashankar Mazumdar

June 16 --The fact that a few of the original Sherlock Holmes stories are still under the protection of copyright law does not prevent an author from using material from the stories that have fallen into the public domain without the authorization of the copyright holder, the U.S. Court of Appeals for the Seventh Circuit ruled June 16 (Klinger v. Conan Doyle Estate, Ltd., 7th Cir., No. 14-1128, 6/16/14).

Affirming an award of summary judgment in favor of a party who was planning to collect and publish an anthology of new Sherlock Holmes stories by current writers, the court rejected the copyright holder's attempt to distinguish “simple” or “flat” characters from “complex” or “round” characters, which do not fall into the public domain until all the original works featuring them are in the public domain.

The court emphasized that such a notion would seem to allow an author to extend copyright protection over characters indefinitely.

Estate Threatens to Block New Holmes Book.

The dispute began with Leslie S. Klinger of Malibu, Calif., who is an editor and writer who concentrates much of his work on literature, analysis, and trivia regarding the 19th century stories of Sherlock Holmes by Arthur Conan Doyle (1859-1930) and Dracula by Abraham “Bram” Stoker (1847-1912).

Between 1887 and 1927, Doyle wrote four Sherlock Holmes novels and 56 short stories. The first Holmes novel, “A Study in Scarlet,” was published in the United States in 1890.

Klinger has worked on 27 books and numerous articles about mystery and thriller literature, the largest [portion of it focusing on the Sherlock Holmes stories. In 2004 and 2005, Linger published “The New Annotated Sherlock Holmes” and he also advised the creators of Guy Ritchie's motion pictures “Sherlock Holmes” (2009) and “Sherlock Holmes: A Game of Shadow” (2011), featuring Robert Downey Jr. and Jude Law.

In 2011, Linger and Laurie E. King published “A Study in Sherlock,” an anthology of new Sherlock Holmes stories by current writers.

The Conan Doyle Estate Ltd. of Southampton, England, was established by Doyle's heirs and it administrates the licensing of Doyle's works. In 2010, the estate contacted Klinger's publisher, claiming that they must purchase licenses in order to use the characters and story elements originally created by Doyle.

Klinger's publisher agreed to enter into a licensing agreement with the estate for a fee of $4,000.

In 2012 and 2013, Klinger and King were preparing another such anthology for publication by a new publisher, “In the Company of Sherlock Holmes.” Similar demands were made by the estate in 2012 with respect to the second anthology. Klinger's new publisher declined to publish “In the Company of Sherlock Holmes” under threat of litigation from the estate.

District Court Awards Summary Judgment.

Klinger then filed a declaratory judgment action against the estate, seeking a declaration that the “characters, character traits, dialogue, settings, artifacts, story lines and other story elements” from Doyle's original Sherlock Holmes stories published prior to 1924 had entered into the public domain in the United States and, thus, Klinger could use such creations without seeking authorization from the estate.

Klinger argued that only 10 of Doyle's Sherlock Holmes short stories, published between 1924 and 1927, were still subject to copyright claims under U.S. law and, thus, anything that had appeared in the pre-1923 works were free for him to use without authorization from the estate.

Chief Judge Rubén Castillo of the U.S. District Court for the Northern District of Illinois determined that there was a case in controversy, making the matter ripe for adjudication

On the substantive question, the court agreed with Klinger that the characters and elements of the pre-1923 stories were in the public domain and could be freely used. The estate appealed.

Case in Controversy Found.

The appeals court largely affirmed the trial court's rulings, first agreeing on the question of jurisdiction. The court rejected the estate's argument that the matter was not ripe for adjudication.

According to the court, the estate had made “twin threats” to Klinger, the first being a threat to interfere with the distribution of the book once it had been completed and published, and also a threat to bring a copyright infringement claim against him.

Indeed, the court pointed out that Klinger's publisher had already acceded to the threat and had told Klinger that the book would not be published unless Klinger were to secure a license from the estate. This could be grounds for a tortious interference claim by Klinger against the estate, the court said, and thus the matter was “an actual rather than merely a potential controversy.”

The estate also argued that there could not be a ripe controversy, because Klinger had not even finished the book, so there was yet no way to know whether it would infringe the copyright interests that the estate laid claim to. The court said:

That would be a good argument in many cases but not in the present one, because the only issue presented by Klinger's quest for a declaratory judgment is one of law: whether he is free to copy the characters of Holmes and Watson as they are depicted in the stories and novels of Arthur Conan Doyle that are in the public domain. To answer that question requires no knowledge of the contents of the book.

Because Klinger had asserted that the forthcoming book would not use protectable elements that were original to the 10 books still under protection, there was no need to wait for the book to be completed, the court said.

Furthermore, denying Klinger the opportunity to have this matter adjudicated would have constituted a discouragement to authors to create such works, because their publishers could be intimidated by such threats of legal action or threats of interference with distribution.

No Legal Support for Extending Protection.

Turning to the substantive question, the court found no support in the law for the estate's proposition: “We cannot find any basis in statute or case law for extending a copyright beyond its expiration,” the court said. “When a story falls into the public domain, story elements--including characters covered by the expired copyright--become fair game for follow-on authors.”

To allow otherwise would disturb the balance established by the law to give incentives to the original author to create the original work and to give incentives to new authors to create derivative works.

The court also noted that most “copyrighted works include some, and often a great deal of, public domain material” and that use of the public domain is important to ongoing creativity.

The court rejected the estate's attempt to draw a distinction between “flat” or “simple” characters--who are complete from the beginning and fall into the public domain when the original work does--and “round” or “complex” characters--who are not completed until the final work in the series. The court said:

What this has to do with copyright law eludes us. There are the early Holmes and Watson stories, and the late ones, and features of Holmes and Watson are depicted in the late stories that are not found in the early ones …. Only in the late stories for example do we learn that Holmes's attitude toward dogs has changed--he has grown to like them--and that Watson has been married twice. These additional features, being (we may assume) “original” in the generous sense that the word bears in copyright law, are protected by the unexpired copyrights on the late stories. But Klinger wants just to copy the Holmes and Watson of the early stories, the stories no longer under copyright.

The court rejected the estate's claim that there was no way for Klinger to separate the early, unprotected, elements of Holmes and Watson from the later, protected, elements. The court said:

From the outset of the series of Arthur Conan Doyle stories and novel that began in 1887 Holmes and Watson were distinctive characters and therefore copyrightable. They were “incomplete” only in the sense that Doyle might want to (and later did) add additional features to their portrayals. The resulting somewhat altered characters were derivative works, the additional features of which that were added in the ten late stories being protected by the copyrights on those stories. The alterations do not revive the expired copyrights on the original characters.

The court analogized the estate's argument to trademark dilution--which expands the exclusive rights of a trademark owner beyond those impacting infringement itself. However, the court said, such a doctrine did not exist in copyright law, which permitted noninfringing parodies.

Labeling the estate's appeal as “quixotic,” the court rejected this argument as harboring a “spectre of perpetual, or at least nearly perpetual” copyright protection, especially since the estate was essentially seeking a 135-year copyright term for the original Sherlock Holmes character.

The court noted that the district court had granted only partial summary judgment in Klinger's favor on the grounds that should Klinger use original, protectable material from the 10 newest books, then the estate could have a cause of action.

However, the court said, this was a mistake on the part of the district court, because Klinger had already declared that no such material would be used and was not seeking a declaration with the scope of covering such material. Thus, the lower court's ruling with respect to those 10 would could be “ignored,” the court said and the award of summary judgment in Klinger's favor represented a resolution to all the outstanding claims in the proceeding.

The court's opinion was authored by Judge Richard A. Posner and joined by Judge Joel M. Flaum and Judge Daniel A. Manion. Klinger was represented by Polsinelli P.C., Chicago. The estate was represented by Zieske Law, Woodstock, Ill.

By Anandashankar Mazumdar

To contact the reporter on this story: Anandashankar Mazumdar in Washington at amazumdar@bna.com

To contact the editor responsible for this story: Naresh Sritharan at nsritharan@bna.com

Text is available at http://www.bloomberglaw.com/public/document/Leslie_Klinger_v_Conan_Doyle_Estate_Ltd_Docket_No_1401128_7th_Cir.