The curious case of copyright and character

When Arthur Conan Doyle’s famous sleuth Sherlock Holmes uttered the words “there is nothing like first-hand evidence” in the 1887 mystery novel A Study in Scarlet, he could not have foreseen that his heirs would turn detective over 100 years later too, when seeking copyright protection for the much-loved character.

In a licensing battle that gripped the literary world, horns were locked after US author Leslie S Klinger refused to pay for a licence demanded by the Conan Doyle Estate, over use of Sherlock Holmes characters in his co-edited book, In the Company of Sherlock Holmes – the sequel to his 2011 A Study in Sherlock, published by Random House and Poisoned Pen Press.

For the latter book, Klinger and the publishers entered into a licensing agreement with the estate in 2011 – to avoid litigation, Klinger said. He has since admitted that the book did use copyrighted material and needed the licence. The estate heard about Klinger’s sequel when one of its contributing authors asked the estate for permission to use a character created in the estate’s copyrighted stories.

In an effort to prove the pen mightier than the sword, Klinger refused to concede to the estate’s licensing agreement for his sequel, stating he would not be swayed by the estate’s “wrongful demand for licensing of public domain novels and stories”.

Without such a licence, the estate said the sequel would infringe. Currently, 10 out of the 60 Sherlock Holmes stories of Arthur Conan Doyle are protected by US copyrights. The estate, which manages the literary, merchandising and advertising rights in Arthur Conan Doyle’s works and characters, said the Holmes and Watson characters were not static but continued to be dynamically developed through all the stories, including the 10 copyrighted stories.

“Copyrighted aspects of Holmes’ character include his relationship with Watson becoming genuine friendship, Holmes’ growing human warmth and emotion, his use of new technologies as tools to fight crime, and his love of nature,” the estate stated. Further, because the 10 stories were set at various points in the characters’ fictional lives, the estate argued new stories about the characters inevitably use copyrighted characteristics.

Benjamin W Allison, the estate’s IP lawyer, says that copyright is one of the reasons we have the creative culture we enjoy. “Any copyright protection comes at the price of prohibiting derivative creations for a time – that’s what copyright is. In an infringement dispute, there is a tendency to focus only on the potential new derivative creation and conclude that allowing it results in a net gain for creativity. But doing so also reduces the incentive to create original works. If we stop protecting original creations short of their full copyright term, we run the risk of killing the goose that lays the golden egg,” he comments.

However, with pro-public domain blogs such as Free-Sherlock.com circling the internet campaigning that Holmes “belongs to the world”, the case was not going to be easily solved nor quickly puffed away like the tobacco in Sherlock’s pipe.

Swiftly taking action, Klinger filed suit against the estate with the US District Court of Illinois in February 2013, asking the court to determine that the characters of Sherlock Holmes and Dr John H Watson are no longer protected by federal copyright laws and that writers and others are free to create new stories about the characters without paying licence fees.

The author said that his sequel book – a collection of stories by mystery/sci-fi/fantasy authors inspired by the Holmes tales – did not infringe copyright as 50 stories out of 60 are in the public domain, so “Holmes and Watson belong to the world, not to some distant relatives of Arthur Conan Doyle”.

Allison admits that in one sense, Sherlock Holmes’ mythic status means the character belongs to everyone, and the estate neither wants nor tries to control his reputation in these literary and cultural senses.

“The line between this and the Sherlock Holmes brand can be challenging. But the most important thing we do to build the Sherlock Holmes brand’s reputation is to select the right licensees to partner with. No amount of quality control once a licence is signed is as important as the overall association and synergy,” he states.

In December 2013, the Illinois court held that Klinger was entitled to use pre-1923 story elements (the 50 stories) but denied to use post-1923 story elements (the 10 stories) as these are still protected by copyright.

The estate appealed the ruling to the US Seventh Circuit Court of Appeals, claiming that the declaration of non-infringement should not have been granted, because Klinger had never presented his book to the court to show that it did not infringe the estate’s copyrights in the 10 stories. “That is an extremely odd circumstance when Klinger’s lawsuit alleges that the ‘actual controversy’ is ‘whether the publication of [his forthcoming book] by plaintiff, his co-editor, and their licensees infringes any copyright of defendant’.”

The estate sought a full copyright term for the Holmes and Watson characters running from the 1927 publication of the last story creating them, citing the character developments in the 10 copyrighted stories as essential to the Holmes character and therefore, inextricably linked to the pre-1923 stories.

“It’s one thing to say as a theory that a public domain version of Holmes can be disentangled from this complex character. It is quite another to actually do so without infringing the copyrighted character development. The estate has been arguing that in order for Klinger to get his requested judgment of non-infringement, he should be required to present his new book for comparison to the protected elements in the copyrighted stories,” Allison said.

In June 2014, the Seventh Circuit Court ruled that part of Sherlock Holmes’ character is in the public domain – but the complete Holmes character is still protected by copyright. The court affirmed that the last 10 original Sherlock Holmes stories contain the full portrayal of Holmes and Watson, and all character development in those 10 stories is protected by the estate’s copyrights, including Holmes’ friendship with Watson and Holmes’ growing emotion and warmth.

However, the court concluded that, “With the net effect on creativity of extending the copyright protection of literary characters to the extraordinary lengths urged by the estate so uncertain, and no legal grounds suggested for extending copyright protection beyond the limits fixed by Congress, the estate’s appeal borders on the quixotic.”

Disappointed, the estate said the decision “accepted Klinger’s unsupported assertion that his work would not contain any protected elements from the final 10 stories and granted Klinger’s declaration of non-infringement without ever looking at Klinger’s book to determine whether it infringed the copyrighted 10 stories.” The court said that the estate would be able to bring another suit against Klinger for “lying” if the published book did, in fact, include protected elements. To this date, Klinger has never showed his new book to any court to back up his claim that it avoids copyrighted materials, Allison says.

Allison notes that the circuit created a conflict with every other US court to address the issue when it made a judgment about a series character without looking at the new work being proposed and without comparing that new work to protected aspects of Sherlock Holmes.

“Under this approach, a court can grant a declaration of non-infringement based only on a new writer’s representation that his proposed work will not infringe – without ever making the required comparison to the copyrighted materials.” Allison continues, “If it turns out that the proposed work actually does infringe protected aspects of the underlying character, Judge Posner held that the copyright owner can sue the writer for ‘lying’. This transforms a copyright infringement claim into an action for fraud or misrepresentation.”

He adds, “One reference work lists over 1,700 series characters in modern fiction. Many of these characters are at risk of being dismantled without a court ever looking at whether the proposed new use infringes copyrighted character materials.”

The Supreme Court of the US (SCOTUS) denied a plea by the estate in July this year to stay the earlier ruling, and in August, the seventh circuit issued a scathing opinion against the estate when it granted legal fees to Klinger.

“The estate’s business strategy is plain: charge a modest licence fee for which there is no legal basis, in the hope that the ‘rational’ writer or publisher asked for the fee will pay it rather than incur a greater cost, in legal expenses, in challenging the legality of the demand… It’s time the estate, in its own self-interest, changed its business model,” said Judge Posner.

Posner went on to call the estate’s licensing efforts ‘a form of extortion’, and a ‘disreputable business practice’. If what Judge Posner said about the estate’s licensing regime were true, says Allison, he would agree with the labels the judge used. “But the judge’s conclusions were based on two licences: Klinger’s first book (licensed through Random House) and Klinger’s second book (the subject of this lawsuit). As to the first book, which was licensed by the estate, Klinger admitted in this case that it would have been infringement were it not for the licence. As for his second book, Klinger has refused to show it to the court or to the estate, so Judge Posner has never seen it and cannot possibly know if it needs to be licensed.”

Allison adds, “When a federal appellate decision calls an admittedly necessary copyright licence ‘extortion’, I hope the Supreme Court reverses that decision.” On 15 September, the estate filed its SCOTUS petition for certiorari.

As for labelling the estate’s licensing model as ‘aggressive’, Allison disagrees, stating it is not aggressive for the estate to contend that Klinger should be ‘put to his proof’. “If he believes his new book does not infringe the copyrighted 10 stories, he should present the book and demonstrate that.” As for the estate’s enforcement efforts, Allison says it was Klinger who filed the lawsuit, not the estate. “The estate prefers a positive approach, and would rather build and offer something good for readers and consumers than engage in litigation.”

With the litigation running its course, Klinger also attacked how the estate “pounded the drum” over its trademark rights, highlighting that its pending applications “according to most experts, are unlikely to be granted”.

The estate’s first trademark was filed on 17 February 2010 and Allison reveals that soon after he began representing the estate, he filed registration applications to protect its long-held common law trademark, but opposition filings have delayed progression.

“Some have registered, some are pending. A tourist merchandiser in London made an effort to take over the Sherlock Holmes brand, and defeating that claim has caused the registration process to take longer than it otherwise would,” he comments.

The estate’s request for Supreme Court review will be briefed in autumn, with the court likely deciding on whether to review the case at a later date. “Noted Supreme Court lawyer John Bursch has joined our team, and we look forward to presenting our substantive arguments to the court,” Allison says.

Despite the legal fight with Klinger, Allison says the estate is keen on “allowing as many writers as possible who want to work with the Holmes and Watson characters to do so”.

With a loyal army of older fans who grew up with the novels and new fans brought up on his reinvention in the BBC’s hit adaptation starring Benedict Cumberbatch, there is much at stake for Allison and the estate.

Working with, rather than against, admirers of the character is an important element to this case. Keeping Sherlock Holmes’ followers onside, while at the same time protecting his brand from those wishing to breathe new life into the character, is a conundrum worthy of Holmes himself.