Estate Loses Exclusive Rights to Sherlock Holmes Series

Young and old have been captivated by Sir Arthur Conan Doyle’s books and stories detailing the adventures of Sherlock Holmes and his companion, Dr. Watson.[1]After Sir Arthur Conan Doyle’s death in 1930, dozens of authors added to his work, elaborating on previously established stories, creating entirely new ones, or refashioning them into television shows and movies—but not without entering into a licensing agreement with Sir Arthur Conan Doyle’s estate (“Conan Doyle”).[2] Conan Doyle held exclusive rights to Sir Arthur Conan Doyle’s works (collectively called “the Canon”), and any party hoping to use his characters or story elements had to enter into an agreement or risk litigation. Sherlock Holmes enthusiasts eagerly awaited the day when they could use Sir Arthur Conan Doyle’s characters and story elements without involving Conan Doyle. However, Conan Doyle continued to guard its copyrights even after many believed they had entered the public domain.[3] One author believed Conan Doyle was overstepping its bounds and sought a declaratory judgment to resolve the uncertainty.

On December 23, 2013, in Klinger v. Conan Doyle Estate, LTD,[4]Chief Judge Rubén Castillo of the Northern District of Illinois held that four novels and forty-six short stories written by Sir Arthur Conan Doyle featuring Sherlock Holmes and Dr. Watson have fallen into the public domain, notwithstanding that ten of his short stories were written after 1923 and are still protected by copyright law. Conan Doyle appealed the decision to the Seventh Circuit Court of Appeals, but to no avail. The Seventh Circuit affirmed the district court’s decision. As a result, the public may now create works featuring Sherlock Holmes and Dr. Watson without the risk of litigation and without entering into licensing agreements with Conan Doyle, as long as the new works don’t mention elements introduced after 1923.

Background of Dispute

The dispute began when Plaintiff Leslie S. Klinger, a Sherlock Holmes expert, sought to use characters and other story elements derived from Sir Arthur Conan Doyle’s works. Klinger has authored two dozen books and several other articles involving the British detective. Klinger co-edited a book titled, “A Study in Sherlock,” as well as a sequel to the book by the name of “In the Company of Sherlock Holmes.” Prior to their publication, Conan Doyle informed the publishing companies that they were required to enter into licensing agreements or risk subsequent litigation. Klinger reticently entered into a licensing agreement for “A Study in Sherlock” but filed suit before publishing his second work to determine the copyright status of “a list of specific characters, character traits, dialogue, settings, artifacts, and other story elements” (“Sherlock Holmes Story Elements”).[5]

Pre-1923 Elements

Klinger argued that the Sherlock Holmes Story Elements had fallen into the public domain because the stories in which they were first introduced were authored prior to 1923. Conan Doyle contended that it retained copyright ownership because Sir Arthur Conan Doyle continued to develop the Canon throughout the ten post-1923 stories, which remain under copyright protection. A finding to the contrary, Conan Doyle reasoned, would reduce the Story Elements to a “public domain version” and a “copyrighted version.”[6]

Judge Castillo held that “where an author has used the same character in a series of works, some of which are in the public domain, the public is free to copy story elements from the public domain works.”[7]Stories published after 1923 could not protect pre-1923 works from entering the public domain even if both contained the same story elements. Judge Castillo agreed that his holding would create a public domain version and a copyrighted version, explaining that this was precisely what other courts had imagined.[8]

Post-1923 Elements

As for the story elements introduced after 1923,[9]Klinger contended that these elements were not copyrightable because they are events, rather than characteristics of Sherlock Holmes and Dr. Watson. He went on to state that material introduced after 1923 did not “complete” the storyline or characters and therefore did not qualify for protection. Conan Doyle countered and argued that Sir Arthur Conan Doyle developed the Canon throughout all of his writings; thus, all should receive copyright protection.

The court cited Schrock v. Learning Curve Int’l, Inc., holding that novel material published after 1923 constitutes copyrightable “increments of expression.”[10] Interpreting 17 U.S.C. §103(b) of the Copyright Act, the court in Shrock explained that “[t]he Copyright Act specifically grants the author of a derivative work copyright protection in the incremental original expression he contributes as long as the derivative work does not infringe the underlying work.”[11]The author must add “enough expressive variation from public-domain or other existing works to enable the new work to be readily distinguished from its predecessors.”[12]Thus, in this case, the court determined that Sir Arthur Conan Doyle’s ten post-1923 works contained enough expressive variation to warrant copyright protection. The judge dismissed Klinger’s “completeness” argument and also disagreed with his characterization of the post-1923 Story Elements as mere “events.”

Conan Doyle Appeals to the 7th Circuit

Conan Doyle appealed the district court decision to the Seventh Circuit Court of Appeals. Conan Doyle first argued that the court lacked subject-matter jurisdiction, contending that “there was no case or controversy between the parties” since the estate had only threatened litigation when Klinger sought a declaratory injunction from the district court.[13] In the alternative, the estate contended that Sherlock Holmes and Dr. Watson are “complex” or “round” characters whose characters were not fully developed until the publication of the final ten stories, which continue to be protected by copyright law. Therefore, the copyrights on the original works should be “extended beyond the expiration of the copyright . . .  because the author altered the character in a subsequent work.”[14]

The Seventh Circuit dismissed Conan Doyle’s jurisdictional argument. It reasoned that Conan Doyle’s threats to block distribution and to subsequently sue for copyright infringement were sufficient to satisfy the case and controversy requirement. The Court also found unpersuasive Conan Doyle’s argument for the extension of the Holmes-Watson copyrights. The Seventh Circuit agreed with the district court, holding that that “[t]he ten Holmes-Watson stories in which copyright persists are derivative from the earlier stories, so only original elements added in the later stories remain protected.”[15]

Conclusion

Conan Doyle’s estate reaped the benefits of Sir Arthur Conan Doyle’s literary genius for over ninety years. Klinger’s lawsuit has, in essence, removed the pre-1923 Story Elements from Conan Doyle’s exclusive grasp and given it to the public. Conan Doyle’s estate crafted a novel legal argument—namely, that the ten works published after 1923 had the effect of protecting the fifty works published prior to 1923 because they developed the same characters and story elements. Judge Castillo dismissed this argument, authoring a sensible opinion which provides clear guidance to legal practitioners and lay people alike.

Copyright matters present challenging legal questions as the Klinger v. Conan Doyle Estate case illustrates. If you have a copyright question, we invite you to contact our office to discuss your specific legal issue. The attorneys of Bea & VandenBerk are experienced in representing organizations in copyright and other intellectual property matters.

– Jacob L. Zerkle, J.D.

This article is provided for general information and should not be relied upon as legal advice for a specific situation.  If you are in need of specific advice or legal representation, please do not hesitate to contact us.

©2014 Bea & VandenBerk

 

[1] Sir Arthur Conan Doyle published sixty works between 1887 and 1930.

[2] “Conan Doyle” is a company owned by the heirs of Sir Arthur Conan Doyle’s estate, which licenses the estate’s intellectual property rights to third parties.

[3] Works published prior to 1923 have entered the public domain and may be copied without the risk of litigation. See Societe Civile Succession Guino v. Renoir, 549 F.3d 1182, 1189 (9th Cir. 2008).Fifty of Sir Arthur Conan Doyle’s works were published prior to 1923 and ten after. Many felt that pre-1923 works were in the public domain, but Conan Doyle insisted that the entire series was protected.

[4] Klinger v. Conan Doyle Estate, LTD, No. 13 C 1226 (N.D. Ill. 2013).

[5] Klinger, No. 13 C 1226, at 4.

[6] Id. at 11-13.

[7] Id. at 12.

[8] Id. at 13-14 (citing Silverman v. CBS, Inc., 870 F.2d 40 (2d Cir. 1989) and Pannonia Farms, Inc. v. USA Cable, No. 03 CIV. 7841, 2004 WL 1276842 (S.D.N.Y. 2004)).

[9] Post-1923 elements include (1) Dr. Watson’s second wife, (2) Dr. Watson’s background as an athlete, and (3) Sherlock Holmes’ retirement from his detective agency.

[10] Klinger, No. 13 C 1226, at 17-18.

[11] Id. at 16 (emphasis added) (citing Schrock v. Learning Curve Int’l Inc., 586 F.3d 513, 518 (7th Cir. 2009)). A derivative work is “a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgement, condensation, or any other form in which a work may be recast, transformed, or adapted.” 17 U.S.C. §101.

[12] Id. (quoting Schrock, 586 F.3d at 521) (internal citations and quotation marks omitted).

[13] Klinger v. Conan Doyle Estate, Ltd., No. 14-1128, at 4 (7th Cir. 2014).

[14] Id. at 8.

[15] Id. at 9.