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Copyright & Public Domain: Conan Doyle Estate Asks Supreme Court to Review 7th Circuit Decision That "Sherlock Holmes" Characters in Pre-1923 Stories Not Protected

"Quixotic" is how Judge Posner's opinion characterized the Conan Doyle Estate's assertion that the "Sherlock Holmes" and "Dr. Watson" characters are still completely protected by copyright in the United States, despite the fact that fifty-six "Sherlock Holmes" stories and four novels published prior to 1923 have entered the public domain.  Klinger v. Conan Doyle Estate, Ltd., No. 14-1128 (7th Cir., Aug. 4, 2014), slip op. 3 (affirming award of attorney's fees to Klinger after affirming a declaratory judgment against the Estate in an opinion on June 16, 2014). 

The suit began as an action by Klinger for a declaratory judgment that he could use material from the "Sherlock Holmes" stories and books in the public domain in a new  book without infringing the Doyle Estate's copyright in ten remaining stories still under copyright.  This suit came after the Estate had demanded a license fee from Klinger's prospective publisher.  Klinger v. Conan Doylel Estate, Ltd., No. 13 C 1226 (N.D. Ill.).  

The district court granted a declaratory judgment in Klinger's favor, rejecting the Estate's theory  that the early (public domain) Holmes and Dr. Watson characters were "flat" and that the later ones in the still-protected stories are "round," more fully-developed, and thus fully protected.

The Seventh Circuit rejected the Estate's theory:  "When a story falls into the public domain, story elements -- including characters covered by the expired copyright -- become fair game for follow-on authors ...," relying upon the Second Circuit's decision in Silverman v. CBS Inc., 870 F.2d 40, 49-51 (2d Cir. 1989).  Klinger v. Conan Doyle Estate, Ltd., No. 14-1128 (7th Cir., June 16, 2014), slip op. 8.  The court recognized that if any future book by Klinger infringes original elements in Conan Doyle stories still under copyright, the Estate will be free to assert claims.  Id. at 7.  

The Conan Doyle Estate file a petition for a writ of certiorari on September 15, 2014 which, perhaps advisedly, only presents an Article III jurisdictional issue, not the copyright issue on the merits.  Conan Doyle Estate, Ltd. v. Klinger, No. 14-316 (S. Ct., filed September 15, 2014). 

The issue presented by the Estate in the Supreme Court is whether the lower courts lacked Article III jurisdiction to declare non-infringement of copyright based solely on Klinger's claim that his future work will be based solely on the "Sherlock Holmes" and "Dr. Watson" characters portrayed in works are in the public domain.  The Estate contended the case could not be decided without having an existing work by Klinger to compare to the ten Conan Doyle stories still protected by copyright.  The Estate asserts there is a circuit conflict on the availability of declaratory relief, relying on various patent cases, and with the Court's decision in Calderon v. Ashmus, 523 U.S. 740 (1998) (no Article III jurisdiction to review habeas-related issue where failure to exhaust state remedies).  

The cert. petition's "Question Presented" is limited to the Article III issue, but the Estate also contends there is a circuit conflict on the merits regarding the extent of copyright protection for characters in relation to the public domain, citing Warner Brothers Entertainment Inc. v X One X Productions, 644 F.3d 584 (8th Cir. 2011) (holding that public domain publicity photos and materials of principal characters portrayed in Tom & Jerry cartoons and Gone With the Wind and Wizard of Oz movies did not thrust the characters in the movies into the public domain, with narrow, limited exceptions).  Pet. 18-20.

The Seventh Circuit rejected the Estate's jurisdictional argument, holding that only a question of law was presented:  "whether [Klinger] is free to copy the characters of Holmes and Watson as they are depicted in the stories of Arthur Conan Doyle that are in the public domain."   Klinger v. Conan Doyle Estate, Ltd., No. 14-1128 (7th Cir., June 16, 2014), slip op. 7.  

A response to the the Estate's cert. petition is due by October 17, 2014; amici are welcomed by both sides.