Legal Brief - Week 08 : Leslie S. Klinger v Conan Doyle Estate

Fabrice Tshiyoyi Banyingela

Professor Michael Hales – BYU Idaho

Business Law 375

6 November 2021

Leslie S. Klinger v Conan Doyle Estate

  

Case Facts

Arthur Conan Doyle (Doyle) a British writer and physician published the character of Sherlock Holmes (Holmes) and his colleague Dr. Johnson Watson (Watson) in 1887, the first of four novels and fifty-six short stories. His works’ intellectual property is claimed by “The Conan Doyle Estate” (Estate), a company created by eight of his distant relatives. By 2013, 80% of the published stories were included in the public domain in the United States because of the expiration of the copyrights, and the remaining 20% were extended by the Copyright Term Extension Act of 1998. Those copyrights were expected to end between 2018 and 2022, depending on the original publication date of each story.

In 2011, inspired by the collection, Leslie S. Klinger (Klinger), an American attorney and writer obtained a license for $5000 from the Estate to publish “A Study in Sherlock”. Two years later, Klinger together with his publisher Pegasus (Pegasus) Books and distributor W.W. Norton & Campy was stopped by the Estate demanding a license fee for the use of the Sherlock Holmes characters in a collection of stories “In the Company of Sherlock Holmes” – Klinger’s second anthology.

In February 2013, Klinger filed a copyright lawsuit seeking a declaratory judgment in the United States District Court for the Northern District of Illinois against the Estate to address the license fee for the use of the Sherlock Holmes and his colleague Dr. Johnson Watson’s characters. In his quest for declaratory judgment, Klinger wanted to know whether he is free to copy the characters of Holmes and Watson as they are depicted in the stories and novels of Arthur Conan Doyle that are in the public domain.

Klinger believed that he did not need to obtain and pay for a license from the Estate, because once the copyright on a work expires, the work becomes a part of the public domain and hence seeking a legal determination of a court to resolve the legal uncertainty. The district court issued Klinger a declaratory judgment, and the Estate appealed.

 

The Issue

Did the Northern District of Illinois’s court have subject-matter jurisdiction over this case?  

 

Rule

Because court proceedings can sometimes be very complex, and to prevent further lawsuits, some people opt for declaratory judgment when they believe that their rights under contract or law might conflict.

A declaratory judgment as defined by the Law Information Institute is “a binding judgment from a court defining the legal relationship between parties and their rights in a matter before the court.” Often, this happens prior to the filing of a lawsuit and can only be issued when there is an actual controversy. The benefit of a declaratory judgment is to prevent lawsuits that are likely to be unsuccessful. Julia Kagan from Investopedia said that “a policyholder that receives an unfavorable declaratory judgment is unlikely to file a lawsuit, as the suit is much more likely to be dismissed.” Therefore, declaratory judgments have the same effect and force as final judgments and are legally binding.

 

Application

When The Estate became aware of Klinger's intentions to publish a second anthology “In the Company of Sherlock Holmes,” the Estate requested the publisher to obtain a license like in the previous contract of “In the Action of Sherlock”. Furthermore, the Estate stated that “if you proceed instead to bring out the book unlicensed, 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."

In the United States and the United Kingdom, the author’s copyright protection in literacy, dramatic, musical, and artistic works lasts for the life of the author plus an additional 70 years after the death of the latest living author. And once expired, the work becomes a part of the public domain and can be copied and sold without obtaining a license.

Understanding that the collection’s copyright protection expired, Klinger did not expect Conan’s opposing reaction. Hence he took the matter to court seeking declaratory judgment. The estate argues that Klinger’s suit is premature, and therefore not yet an actual controversy and so not within the jurisdiction of the federal courts. The Estate contends that the original character cannot lawfully be copied without a license from the writer until the copyright on the later work (remaining 20%) expires.

It was clearly proven in court that Sherlock Holmes and Johnson Watson characters used in the second anthology had entered the public domain because the copyright protection had expired, and hence they can be used without procuring a license. The court ruled that “a copyright affords protection only for original works of authorship and, consequently, copyrights in derivative works secure protection only for the incremental additions of originality contributed by the authors of the derivative works.” The district court issued Klinger a declaratory judgment, and the Estate appealed.

 

Conclusion

            In the absence of an actual controversy between the parties and the book not yet published, Klinger could have sought advice from an attorney and not sought a declaratory judgment from a federal judge. Therefore, the District Court has no subject-matter jurisdiction.

            Nevertheless, the Estate made two threats to Klinger’s work. First, the Estate threatened to prevent sales by Amazon and other big book retailers, and last, threatened to sue the writers, publisher, and distributors for copyright infringement if they defied its threat. Klinger could have used those as an argument to sue The Estate.

  

Reference

Michael H (2021). “Business Law.”

Brigham Young University - Idaho, Chapter 13 - 14

Legal Information Institute. “Declaratory Judgement”. 1992

https://www.law.cornell.edu/wex/substantive_law. (Accessed 6 November 2021)

Julia Kagan. “Declaratory Judgement”. November 2021

https://www.investopedia.com/terms/d/declaratory-judgment.asp.

(Accessed 6 November 2021)  

Wikipedia. “Arthur Conan Doyle”. October 2021

https://en.wikipedia.org/wiki/Arthur_Conan_Doyle. (Accessed 6 November 2021)   

Cases Justicia. “Leslie S. Klinger v Conan Doyle Estate”. June 2014

https://cases.justia.com/federal/appellate-courts/ca7/14-1128/14-1128-2014-06-16.pdf?ts=1411046092. (Accessed 6 November 2021)