Leslie Klinger v. Conan Doyle Estate, Ltd.
2014 U.S. App. LEXIS 15172
7th Cir.2014Background
- Leslie Klinger sought a declaratory judgment that stories by later authors that use characters (e.g., Sherlock Holmes) as depicted in Arthur Conan Doyle works published before 1923 do not infringe because those pre-1923 works are in the public domain.
- The Conan Doyle Estate had asserted continuing rights based on later Doyle stories (published after 1923) that were still under copyright, claiming the later works added protectable "rounded" character elements.
- Random House and Pegasus were both told by the Estate that they needed to pay $5,000 licenses to publish Klinger's anthology; Random House paid, Pegasus declined and faced threats that retailers would be urged to remove the book.
- Klinger sued for a declaratory judgment; the district court ruled for him, and this Court affirmed, holding expired copyrights cannot be extended to cover public-domain elements (including character depictions) from pre-1923 works.
- Klinger moved for appellate attorney’s fees ($30,679.93) under 17 U.S.C. § 505; the Estate opposed entitlement (not the amount). The Court evaluated prevailing-party fee factors and the Estate’s litigation strategy.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether characters and other elements from Doyle works published before 1923 entered the public domain and may be used without a license | Klinger: pre-1923 works are public domain; later copyrights cannot resurrect protection for earlier depictions | Estate: later copyrighted stories depict characters in a more developed form, so those copyrights protect the characters as presented | Court: Public-domain status of pre-1923 works controls; copyrights cannot be extended beyond statutory term; Klinger wins |
| Whether Klinger is entitled to attorney’s fees under 17 U.S.C. § 505 for the successful appeal | Klinger: prevailing party; Estate’s position was frivolous; fee award needed to prevent chilling meritorious defenses | Estate: contested entitlement (reiterated merits arguments); did not dispute fee amount | Court: Awarded fees—defense was weak/frivolous and policy favors fees to deter opportunistic licensing demands |
| Whether the Estate’s threats to retailers and distributors contributed to entitlement to fees | Klinger: Estate’s threats coerced publishers/retailers and exemplified an extortionate business model warranting fees | Estate: did not rebut entitlement arguments | Court: Found threats part of estate’s strategy to extract fees; this supported awarding fees |
| Whether Estate’s conduct implicated antitrust concerns by enlisting retailers to refuse distribution | Klinger: Estate’s solicitations of Amazon and others to exclude Klinger’s book functioned like a boycott against a competitor | Estate: not squarely defended on antitrust in this opinion | Court: Observed that enlisting distributors to refuse to carry the book resembled an unlawful boycott and was further evidence of problematic conduct (but primary relief was copyright fees) |
Key Cases Cited
- Assessment Techs. of Wis., LLC v. WIREdata, Inc., 361 F.3d 434 (7th Cir. 2004) (sets principal factors for awarding fees in copyright cases and presumes fee award when defense is strong)
- DeliverMed Holdings, LLC v. Schaltenbrand, 734 F.3d 616 (7th Cir. 2013) (reaffirms Assessment Technologies factors for fee awards)
- Eastern States Retail Lumber Dealers’ Ass’n v. United States, 234 U.S. 600 (1914) (classic precedent on boycotts as antitrust restraint)
- JTC Petroleum Co. v. Piasa Motor Fuels, Inc., 190 F.3d 775 (7th Cir. 1999) (discusses boycott theory and antitrust implications of coordinated refusals to deal)