July 2014: Petition for emergency stay denied

On July 17, 2014, Justice Kagan denied the petition for an emergency stay filed by the Conan Doyle Estate, Ltd. As a result, the order of the 7th Circuit in the case is final. The Estate still has the right to file a petition for certiorari, requesting the Supreme Court of the United States to hear their appeal, and the Estate has indicated to the press that it intends to do so.

The Estate’s petition can be downloaded here, and Law360 covered the court’s decision in an article below.

By Allissa Wickham

Law360, New York (July 17, 2014, 5:14 PM ET) — U.S. Supreme Court Justice Elena Kagan on Thursday denied a bid by the estate of Arthur Conan Doyle to stay a Seventh Circuit decision cutting back its copyright on the iconic Sherlock Holmes character, leaving that decision in force as the estate pursues a high court appeal.

The Doyle estate had sought a delay of the Seventh Circuit’s June 16 decision, which held that the Holmes character was mostly in the public domain, as it filed a petition for a writ of certiorari.

Justice Kagan, in charge of temporary order requests from the Seventh Circuit, did not elaborate on her decision to deny the stay request. The estate had first sought a stay with the Seventh Circuit, but the appeals court denied that motion on July 10.

The suit was instigated by author Leslie Klinger, who co-edited two anthologies of new Holmes tales written by modern authors and sought a judgment that he is able to use material from 50 of Doyle’s original Sherlock Holmes stories.

Throughout the suit, the estate had argued that although most of the Holmes stories are in the public domain, the famed detective himself was still under copyright because certain character traits were developed in later, still protected books. That meant new stories featuring Holmes couldn’t be created until the very last work in the series fell into the public domain in 2022, according to the estate.

But like a trial judge who booted the case in December, the Seventh Circuit said last month that it lacked “any basis in statute or case law for extending a copyright beyond its expiration” and the appeal “border[ed] on the quixotic.”

U.S. District Judge Ruben Castillo granted Klinger’s bid for summary judgment in December, and the Seventh Circuit affirmed his ruling, following Seventh Circuit Judge Richard Posner’s characterization of the estate’s argument as a “very aggressive attempt to enlarge copyright law” during oral arguments.

An attorney for Doyle’s estate told Law360 on Thursday that it planned on submitting a certiorari petition with the Supreme Court in a few months.

“We appreciate the court’s consideration of our request as well as the rarity with which the court grants a stay pending appeal,” Benjamin W. Allison of Sutin Thayer & Browne said. “We continue to believe that the Seventh Circuit erred when it split from all other courts in the country and declined to require Mr. Klinger to come forward with his finished book for actual comparison to the protected aspects of Sherlock Holmes’s character.”

Scott Gilbert of Polsinelli PC, who represents Klinger, told Law360 that he believed the denial was appropriate “given the fact that the circuit opinion is entirely consistent with established precedent.”

Separately on Tuesday, Doyle’s estate filed an opposition to Klinger’s recent bid to force the estate tocover his attorneys’ fees, arguing that request should be denied because its appeal was reasonable and that outstanding issues still remained in the case.

Klinger has argued that the Doyle estate should have to pay him $30,679 to cover the legal expenses he incurred defending the appeal, arguing the estate had attempted to enforce a claim that had “no legitimate legal basis.”

But the Doyle estate fiercely disputed this assertion Tuesday, claiming its copyright arguments were supported by legal authority, as well as five fact affidavits, including several from “recognized Sherlockian experts.”

Further, the estate argued, Klinger cannot claim to be the prevailing party in the dispute because the courts haven’t considered whether his new book containing tales about Holmes actually infringes Doyle’s work. The Seventh Circuit held in its opinion that the suit only presented questions of law regarding the public domain, and did not require knowledge of the contents of Klinger’s book.

Allison, the estate’s lawyer, said he believed the estate’s arguments were reasonable, and said the issue of attorneys’ fees should not be decided until the case is fully resolved.

“Mr. Klinger should not be awarded fees for an advisory opinion that still does not decide whether his book is infringing or not infringing,” Allison said. “The court never looked at what parts of the Sherlock Holmes character are protected, and never looked at whether Mr. Klinger’s forthcoming book violated that protection.”

Gilbert, who represents Klinger, emphasized that Klinger had only sought a declaration that some parts of the Sherlock Holmes canon are in the public domain.

“Mr. Klinger determined that he needed a decision on the merits in order to protect both his own future endeavors and the rights of creators everywhere, and this is precisely the type of scenario in which an award of fees is necessary and appropriate,” Gilbert said.

The Doyle estate is represented by Benjamin Allison of Sutin Thayer & Browne PC, William F. Zieske of Zieske Law/Fine Arts Legal and John J. Bursch of Warner Norcross & Judd LLP.

Klinger is represented by Jonathan Kirsch of the Law Offices of Jonathan Kirsch and Scott Gilbert of Polsinelli PC.

The case is Klinger v. Conan Doyle Estate Ltd., case number 14-1128, in the U.S. Court of Appeals for the Seventh Circuit.

–Additional reporting by Bill Donahue and Michael Lipkin. Editing by Elizabeth Bowen.

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July 2014: Petition for legal fees

Leslie Klinger has filed a petition asking the Court to require that Conan Doyle Estate, Ltd., pay the legal fees and costs incurred to date by Klinger in the case, amounting to about $70,000 to date. Click here for a PDF of the petition.

In response, the Estate filed a motion on July 3, 2014 (text is here), asking the Court to “stay” (delay) its “mandate” (the finality of its order), so that the Estate does not have to respond to the fee petition at this time (the response is otherwise due by July 14, 2014). The Estate avers that delay should be granted because it is filing a petition for certiorari, asking the Supreme Court of the United States to overturn the 7th Circuit’s decision, on the twin grounds that (a) there is a conflict among the Circuit courts on whether this case is “justiciable” (that is, whether it presents an actual “case or controversy” or is simply theoretical) and the 7th Circuit applied the law incorrectly in finding that the case was justiciable, and (b) the 7th Circuit interpreted the copyright laws incorrectly.

The Estate points out that if the effectiveness of the 7th Circuit’s order is not delayed, it stands to lose significant licensing fees because Sherlock Holmes is so popular at present.


January 2014: News Release re Appeal

To download a PDF of the following, click here.

The Conan Doyle Estate, Ltd. has filed a Notice of Appeal in the U.S. District Court that ruled in favor of Leslie S. Klinger in a declaratory relief action on the copyright status of the Sherlock Holmes Canon.

Chief Judge Rubén Castillo ruled that all copyright-protected elements of the Canon that were first introduced in stories published in the United States prior to 1923 are now in the public domain, and “Klinger and the public may use the Pre-1923 Story Elements without seeking a license.”  Indeed, the Court found that “[t]he evidence presented to the Court as to this first proposition is ‘so one-sided’ that Klinger must prevail as a matter of law.”

By filing a Notice of Appeal, the Conan Doyle Estate is entitled to present its legal arguments to the Seventh Circuit Court of Appeals in a formal brief.  However, the deadline for filing the brief is March 3, 2014, and no appellate brief has yet been filed. For that reason, Klinger and his counsel do not yet know what arguments will be raised on appeal by the Estate if, in fact, the Estate proceeds with the appeal.  If the CDE pursues its appeal, Klinger will file an appellate brief in response, and the matter will be argued and decided in the Seventh Circuit Court of Appeals.

In the meantime, the Order of the District Court remains in full force and effect unless the CDE seeks a stay of enforcement.  In that case, Klinger will oppose any request for a stay of enforcement of the Order pending appeal and will seek a bond if the Order is stayed.

Klinger is also preparing a motion to be filed in U.S. District Court to require the Estate to pay the fees and costs he incurred in bringing the declaratory relief action in District Court.  He will also ask the Court of Appeals to require the Estate to post a bond as security against his costs in litigating the appeal.

“Although the Estate has issued some self-serving press releases, we do not really know what they regard as reversible error in the decision of Judge Castillo,” says Klinger.  “They can’t be encouraged by the Court’s observation that their legal theory is ‘novel,’ a word that is often used in legal circles to indicate that an argument is imaginative but unsupportable in the law.”

“We are confident that the decision of Judge Castillo is fully supported by the facts and the applicable law, and we expect the Order to be upheld on appeal,” says Klinger.  “We will continue to carry the burden of litigating the public-domain status of the pre-1923 stories, not only for the benefit of my own books but for all creators who wish to draw on the public-domain elements of the Canon in their own work.”


January 2014: Appeal

Conan Doyle Estate Appeals Sherlock Holmes Copyright Decision

By Benjamin Allison
Counsel for the Conan Doyle Estate Ltd.

Santa Fe, N.M. (January 21, 2014) — The Conan Doyle Estate Ltd., owned and run by the family of writer Sir Arthur Conan Doyle, has appealed to the Seventh Circuit Court of Appeals from a lower court decision in Klinger v Conan Doyle Estate Ltd.  The lower court decision held that Sherlock Holmes and Dr. Watson may not be protected by copyright even though ten original stories by Conan Doyle developing the Holmes and Watson characters remain under copyright. The lower court did rule that using character developments from these ten stories requires the Estate’s permission, but stated it was not addressing the copyright status of Holmes’s character.

The lower court decision would fracture Conan Doyle’s characters into protected and unprotected parts.  The Conan Doyle Estate believes that Holmes and Watson should be protected as the fully delineated characters their author created.  The Holmes and Watson characters were not completed by Conan Doyle until 1927, and Congress has provided a copyright term of 95 years for such characters. The Estate will ask the Seventh Circuit to protect Conan Doyle’s literary characters for the full term Congress provided.

This important decision is likely to affect copyright protection for many other longstanding series characters. The case is particularly significant because Holmes and Watson are two of the world’s most loved and recognized characters, thanks to the creative genius of Conan Doyle’s writing.  The Doyle family intends to continue to foster creative new uses of the characters by others, as recent television and motion picture series, novels, and other programs demonstrate.

Richard Doyle, a director of Conan Doyle Estate Ltd, commented, “Sherlock has been depicted in various and wonderful ways with the Estate’s consent and support. We want to make sure that future generations can admire and enjoy Sherlock and Watson as much as past generations have.”

Benjamin Allison, an attorney with Sutin, Thayer & Browne, serves as lead counsel for the Conan Doyle Estate Ltd.

Sutin, Thayer & Browne is one of the oldest and largest law firms in New Mexico, offering exceptional legal services since 1946.  sutinfirm.com

To download the Estate’s filings, click here and here.