, , , , , ,


( illustrations by Sidney Paget, originally published in The Strand Magazine, between 1891 and 1904)

While it’s true that most federal judges are well-paid, we wouldn’t say that the job is a cushy one. Usually, court dockets include hundreds of on-going cases, rarely of the black and white variety. Most times, cases are in that “gray” murky area and the litigants most closely resemble squabbling children. Once in a while, though, the stars align and the “good guy” isn’t hard to discern, the law is clear, and the “bad guy” gets a good thumping by the court.

Such was the case in Judges Posner, Flaum and Manion’s opinion on author Leslie Klinger’s Motion for Award of Attorneys’ Fees in an appeal filed with the United States Court of Appeals for the Seventh Circuit (court’s decision is here).  Klinger is co-editor (with Laurie R. King) of the anthology, A Study in Sherlock: Stories Inspired by the Sherlock Holmes Canon, published in 2011. As explained in the Court’s opinion, “canon” refers to the original 60 stories and novels written by Arthur Conan Doyle. The anthology contains stories written by modern authors, most of which include Doyle’s beloved Dr. Watson and Sherlock Holmes characters.


Although the copyrights on most of the works in the “canon” had expired, the Doyle estate demanded a $5000 license fee from Klinger’s publisher, Random House, which it paid.  Later, Klinger and co-editor King put together a sequel, In The Company of Sherlock Holmes. This time, the Doyle estate demanded a license fee from Pegasus, the new publisher. According to the Court, the estate “did not mince words” and threatened to “weed out” Klinger’s books from Amazon, Barnes & Noble and other retailers if he and Pegasus did not pay up. In light of the estate’s threats, Pegasus refused to publish the sequel until Klinger obtained a license from the Doyle estate. That’s when Klinger filed a declaratory action against the estate in the district court. His complaint sought a declaratory judgment that he is free to use material in the fifty Sherlock Holmes stories and novels that are no longer under copyright. The estate lost the case and then appealed to the United States Court of Appeals for the 7th Circuit.

The appeals Court first noted that there is no basis in statute or case law for extending a copyright beyond its expiration. The Court reiterated the rule that:

When a story falls in to the public domain, story elements– including characters covered by the expired copyright– become fair game for follow-on authors[.]

The Doyle estate’s reasoning as to why this straight-forward rule does not apply to the Watson/Holmes characters was bizarre. The estate’s attorney began an impassioned discussion of  “rounded” versus “flat”  characters, even “dramatiz[ing] the concept of a “round” character by describing large circles with his arms” (the Court must have found the attorney’s arm flailing amusing since it described it in its opinion). By this the estate apparently meant that, because the characters evolved over time in Doyle’s stories, the copyright on them did not expire.  The Court must have read all of our minds when it wondered “[w]hat this has to do with copyright law eludes us.”


The Court’s August 4 decision on Klinger’s motion for attorneys’ fees is the really juicy part, though.  The Court began by noting the case for awarding attorneys’ fees is compelling where the claim or defense was frivolous and the prevailing party obtained no relief at all. Citing prior case law and Michael J. Meurer’s article on anti-competitive intellectual property litigation (available here), the Court explained the importance of this rule by noting:

For without the prospect of such an award, an infringement defendant might be forced into a nuisance settlement or deterred altogether from exercising its rights.

The Court then went on to note that the Doyle’s business strategy was to charge a modest license fee for which there is no legal basis, in the hope that the writer or publisher asked for the fee will pay it rather than incur the cost of litigating the matter. Before awarding Klinger over $30,000, the Court stated:

[Klinger was] combating a disreputable business practice- a form of extortion– and he is seeking by the present motion not to obtain a reward but merely to avoid a loss.  He has performed a public service.

The Court also noted that the estate was “playing with fire” by asking Amazon and Barnes & Noble to cooperate with it in enforcing its non-existent copyright claims against Klinger. While there is no indication that the estate had actually approached the booksellers or that they had knowledge of the estate’s threat, the Court noted that enlisting them in boycotting Klinger would violate the antitrust laws.

The Court had jurisdiction to only grant Klinger attorneys’ fees related to the appeal.  Klinger is apparently also seeking attorneys’ fees related to the district court case.

Our thanks to www.bestofsherlock.com, an informative and fascinating website about the Sherlock Holmes character and the art of Sidney Paget, who illustrated Doyle’s Sherlock Holmes stories in The Strand Magazine. The website’s section on Paget includes information on each illustration, including date, the story in which it appeared and information on the people, museums and collections that have owned each piece.