Over the past several months, Judge Posner and the Seventh Circuit has handed a couple of rare, but well-deserved wins to the public domain.  On June 16, 2014, the Court issued an opinion holding that the primary characters of Sir Arthur Conan Doyle’s Sherlock Holmes stories–the first of which was published in 1887–had fallen out of copyright and were now part of the public domain.  Recently, on August 4, 2014, Judge Posner and the Seventh Circuit affirmed an award of attorneys’ fees to the alleged infringer for prevailing in the case.

The case generally involved what Judge Posner deemed the  Doyle Estate’s ”extortionate” practice of demanding a relatively small licensing fee of $5000 for any publication that involved Sherlock Holmes or related characters.  The plain business strategy was to demand a sufficiently small license fee so that a rational party would simply pay the fee rather than deal with the expense of litigation.

One intrepid author did the right thing.  Rather than succumbing to the demand, Leslie Klinger brought a lawsuit, in which he prevailed, and established, once and for all, that the Doyle Estate’s claims were bunk.  In affirming the fee award, Judge Posner noted:

 When a story falls into the public domain, story elements—including characters covered by the expired copyright—become fair game for follow-on authors. There is no ground known to American law for extending copyright protection beyond the limits fixed by Congress. The estate’s appeal bordered on the quixotic.

The Doyle estate’s business strategy is plain: charge a modest license 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…. The willingness of someone in Klinger’s position to sue rather than pay Doyle’s estate a modest license fee is important because it injects risk into the estate’s business model. As a result of losing the suit, the estate has lost its claim to own copyrights in characters in the Sherlock Holmes stories published by Arthur Conan Doyle before 1923.

In addition to the win for the public domain, the case raises a couple additional issues of interest for us IP folks.  First, this is just another case where we see the intersection of important IP rights and the costs of litigation necessary to vindicate those rights.  Copyright is a tough animal because of how unbalanced the playing field is.  The strategy here is nothing new.  I previously blogged about the Estate of William Faulkner asserting questionable copyright claims, presumably to extort an unwarranted settlement.  The expenses Klinger incurred in the Doyle Estate litigation far exceeded the $5000 license he was asked to pay for.  Had he not been awarded his attorneys’ fees in connection with this case, Klinger would have suffered a significant loss.  Moreover, had the book been published without this legal victory, and without a license, the publisher would have faced the prospect of excessive copyright infringement damages authorized by current law.

Second, this case raised the insane point that, even though most of his works are now in the public domain, ten stories written approximately 90 years ago are still protected.   Much to the chagrin of fans of the public domain, copyright laws have undergone a troubling series of term extensions, which some authors have pejoratively termed the Mickey Mouse Protection Act.  The fact that any works of Conan Doyle–who died in 1930–are still under copyright is pretty absurd.