USCA, Seventh Circuit, June 16, 2014
Seventh Circuit rules that editor of anthology of stories featuring Arthur Conan Doyle’s Sherlock Holmes and Dr. Watson characters did not need license from Doyle’s estate, as all but 10 Sherlock Holmes stories were published before 1923 and thus are in public domain.
Between 1887 and 1927, Arthur Conan Doyle published 56 stories and four novels with the characters Sherlock Holmes and Dr. Watson. All the works except for 10 stories were published before 1923 and thus have entered the public domain.
Plaintiff Leslie Klinger sought to publish an anthology of stories written by modern authors but featuring Doyle’s Holmes and Watson characters. When Doyle’s estate learned of the book, it threatened to prevent distribution and impliedly threatened to sue for copyright infringement. Klinger’s publisher refused to publish the book unless Klinger obtained a license from the estate. Rather than obtaining a license, Klinger sued the estate for a declaratory judgment that he is free to use material in the Sherlock Holmes stories and novels that are no longer under copyright, and although he may use nothing in the 10 stories still under copyright that have sufficient originality to be copyrightable, the characters from the stories and novels no longer protected by copyright. The district court granted Klinger’s motion for summary judgment.
On appeal, the estate challenged the judgment on two grounds. First, the estate argued that the district court lacked subject-matter jurisdiction because no actual controversy existed. Judge Posner, writing for the panel, rejected the estate’s jurisdictional argument. The estate’s threats created an actual rather than merely a potential controversy, and the controversy was “ripe” despite the fact that the book had not been completed. The legal status of the pre-1923 characters was a question of law, and requiring an author to complete a book before seeking a declaratory ruling would stifle the creation of new works.
On the merits, the estate contended that copyright on a “complex” character, whose full complexity is not developed and revealed until later works, remains protected until the later work falls into the public domain. Thus, even though the pre-1923 stories are in the public domain, the estate argued that the characters could not be copied.
The panel framed the issue as whether copyright protection of a fictional character from a story in the public domain can be extended because the author altered the character in a subsequent work still subject to copyright protection. The panel rejected this reasoning, seeing no basis in statute or case law for extending a copyright beyond its expiration. When a story falls into the public domain, story elements, including characters, become fair game for later authors. Rather, copyrights in derivative works protect only the incremental additions of originality. Thus, while the original elements added in Doyle’s post-1923 stories remained protected, that copyright did not extend to the earlier works by virtue of the incremental additions of originality in those derivative works.
The estate urged the court to distinguish between “flat” and “round” fictional characters, arguing that flat characters do not evolve but round characters do and that Holmes and Watson were not fully rounded until Doyle’s last story. Judge Posner, drawing on a number of colorful literary analogies, saw no merit in the estate’s arguments and affirmed the district court’s grant of summary judgment in Klinger’s favor.