COOK COUNTY RECORD

Dropping references to creative works ranging from Shakespeare to Star Wars, the Seventh Circuit Court of Appeals on Monday said Sherlock Holmes works published before 1923 are in the public domain.

In a 15-page opinion written by Judge Richard Posner, the panel affirmed U.S. Chief Judge Ruben Castillo’s issuance of a declaratory judgment, giving author Leslie S. Klinger the green light to use materials from 50 Sherlock Holmes stories and novels that are no longer protected by copyright.

The panel rejected the arguments made by the Estate of Conan Doyle, the Scottish author of 60 Sherlock Holmes stories and novels who died 84 years ago, letting the literary world know that copyright licenses are not needed for Doyle’s first 50 Sherlock Holmes works.

The ruling shows that the panel is not only well-versed in copyright law, but can make analogies to other popular works to explain the oft-complex world of copyright litigation and the need to strike a balance between protecting works and encouraging creativity.

In handing Klinger the win, Posner explained for the panel that a ruling in favor of Doyle’s estate would have encouraged “authors to continue to write stories involving old characters in an effort to prolong copyright protection" and discouraged creativity.

The copyright question over the well-known stories and novels about “the genius detective Sherlock Holmes and his awed sidekick Dr. Watson” came to the Seventh Circuit on appeal from Doyle’s estate in a case Klinger brought in his attempt to publish a sequel to his first Sherlock Holmes-related book.

Klinger, whose website dubs him as “one of the world’s foremost authorities on the twin icons of the Victorian era, Sherlock Holmes and Dracula,” co-edited a 2011 anthology of stories written by modern authors inspired by the Holmes and Watson characters called “A Study in Sherlock: Stories Inspired by the Sherlock Holmes Canon.”

Although Klinger didn’t think he needed a license from Doyle’s estate to publish his anthology because on belief that the copyrights on the 60 Sherlock Holmes stories and novels had expired, his publisher, Random House, paid the estate $5,000 for the license.

Klinger and his co-editor then decided to create a sequel, set to be titled “in the Company of Sherlock Holmes.” and entered into negotiations with Pegasus Books to publish the book and W.W. Norton & Co. to distribute it.

Once it learned about the Klinger’s new project, Doyle’s estate told Pegasus that it would have to get a copyright license like Random House had done, in order to publish the book. The panel’s opinion notes that while the estate didn’t threaten to sue, “it did not mince words” in threatening to prevent the distribution of the Klinger’s sequel.

According to the ruling, Doyle’s estate told Pegasus that if it published Klinger’s book, “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.”

Following this message, as well as “a latent threat” to sue it and Internet Service Providers for copyright infringement, Pegasus refused to publish Klinger’s Sherlock Holmes sequel until he obtained a license from Doyle’s estate.

Rather than getting a license, Klinger opted to sue Doyle’s estate. He asked Chicago’s federal court to issue a declaratory judgment, saying he was free to use material from the first 50 Sherlock Holmes stories and novels, but not Doyle’s last 10 works.

These 10 works, the panel’s opinion notes, were published between 1923 and 1927 and as a result of the 1998 Copyright Term Extension Act, have copyrights that don’t expire until 95 years after their publication date, which in this case, means between 2018 and 2022.

Federal law provides that once a work’s copyright expires, it becomes part of the public domain and can be used without a license from the copyright holder. Doyle’s estate holds the copyrights to his works.

Although the estate defaulted by failing to respond to Klinger’s complaint, the author continued his fight for a declaratory judgment. He filed a motion for summary judgment, to which the estate responded and the judge granted.

The judge also issued the declaratory judgment Klinger asked for, saying he could  use material from the 50 Sherlock Holmes works because they were no longer protected by copyright law.

Doyle’s estate then appealed to the Seventh Circuit on two grounds. The first, according to the panel’s opinion, was that the district court didn’t have subject-matter jurisdiction because there was no actual controversy as Klinger’s book had yet to be published.

The second argument the estate raised was that if the court did have jurisdiction, it was entitled to a judgment in its favor because Holmes and Watson were so-called “complex” characters whose “full complexity is not revealed until a later story,” and as such, “remains under copyright until the later story falls into the public domain,” the opinion explains.

On behalf of the panel, Posner wrote that the estate’s jurisdictional argument failed because its threats to prevent distribution of the book and to sue for copyright infringement created an actual controversy.

Had he not known how Doyle’s estate would have reacted to the publication of his book, Posner said Klinger wouldn’t have been show an actual dispute existed.

But, the threats were made and resulted in Pegasus’ refusal to publish Klinger’s sequel, an injury the panel said provided him with standing to seek a declaratory judgment and the court jurisdiction to rule on it.

Determining the district court had jurisdiction, the panel then turned to the merits of the case: “whether copyright protection of a fictional character can be extended beyond the expiration of the copyright on it because the author altered the character in a subsequent work.”

Doyle’s estate argued that a character can’t be used in other works without a license from the copyright holder when “that character appears in a different form” in later works," the opinion states.

“We cannot find any basis in statute or case law for extending a copyright beyond its expiration,” Posner wrote. “When a story falls into the public domain, story elements—including characters covered by the expired copyright—become fair game for follow-on authors.”

Citing Silverman v. CBS Inc., a 1989 ruling dealing with use of the fictional, copyrighted radio characters of Amos and Andy, the panel determined that copyrights of Doyle’s first 50 Sherlock Holmes stories and novels can’t extended just because the Holmes and Watson evolved in his final 10 stories.

In regards to the estate’s argument that creativity would be discouraged if copyrights were extended to cover Doyle’s pre-1923 work, the panel said “this point has no application to the present case” as Doyle died decades ago and as such, is not competing with the authors in Klinger’s anthology.

“More important, extending copyright protection is a two-edged sword from the standpoint of inducing creativity, as it would reduce the incentive of subsequent authors to create derivative works (such as new versions of popular fictional characters like Holmes and Watson) by shrinking the public domain,” Posner wrote.

He said, “For the longer the copyright term is, the less public-domain material there will be and so the greater will be the cost of authorship, because authors will have to obtain licenses from copyright holders for more material—as illustrated by the estate’s demand in this case for a license fee from Pegasus.”

The panel then offered some analogies to explain why it rejected the estate’s request to distinguish between simple or flat characters and complex or round characters in its copyright analysis.

The estate argued the copyrights of Doyle’s later works should apply in the dispute because Holmes and Watson were complex characters as a more rounded portrayal of them was provided in the last 10 Sherlock Holmes works.

The panel said the same could be said about how readers learned things about Sir John Falstaff in Shakespeare’s Henry V (Part 2), Henry IV and The Merry Wives of Windsor that were not mentioned in Henry IV (Part 1). Posner notes “that Henry V, in which Falstaff is reported as dying, precedes The Merry Wives, in which he is very much alive.”

“Likewise the ten last Sherlock Holmes stories all are set before 1914, which was the last year in which the other stories were set,” Posner wrote. “Thus a more rounded Holmes or Watson (or Falstaff) is found in a later work depicting a younger person. We don’t see how that can justify extending the expired copyright on the flatter character.”

A more contemporary example, the panel said, can be found in the six "Star Wars" movies.

“Episodes IV, V, and VI were produced before I, II, and III,” the opinion states. “The Doyle estate would presumably argue that the copyrights on the characters as portrayed in IV, V, and VI will not expire until the copyrights on I, II, and III expire.”

The panel goes on to note that “it’s not unusual for an author to use the same character in successive works, yet with differences resulting, in the simplest case, just from aging,” such as how Shakespeare evolved his Henry character from prince to king.

“Were Henry IV in the public domain and Henry V under copyright, Henry Prince of Wales could be copied without Shakespeare’s permission but not Henry V,” Posner wrote. “Could the Doyle estate doubt this? Could it think Holmes a more complex and altered character than Henry?”

The panel said it could understand how Doyle’s estate would be “concerned that a modern author might write a story in which Sherlock Holmes was disparaged (perhaps by being depicted as a drug dealer—he was of course a cocaine user—or as an idiot detective like Inspector Clouseau of the Pink Panther movies) in a way that might deter someone from Doyle’s work because he or she would be confused over Holmes’ "true" character.

But, Posner said, it seems like Doyle’s estate is more concerned about any Sherlock Holmes-inspired story being published with receiving payment for a copyright license than the depiction of the characters.

“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 be-yond the limits fixed by Congress, the estate’s appeal borders on the quixotic,” Posner wrote for the panel.

He added, “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.”

Benjamin Allison of Sutin Thayer & Browne in New Mexico represented Doyle's estate and California attorney Jonathan L. Kirsch represented Klinger in arguments before the Seventh Circuit panel that was rounded out by Judges Joel Flaum and Daniel Manion.