The 7th Circuit cited an article earlier this month by UC Hastings Research Chair and Professor of Law Ben Depoorter and (his former student) Robert Kirk Walker '13 in dismissing copyright infringement suit by the heirs of Sherlock Holmes and awarding attorney fee-shifting to the defendant.
Read the Opinion: Klinger v. Conan Doyle Estate, AUGUST 4, NO. 14-1128, 7th Cir. (2014)
Wrote POSNER, Circuit Judge:
This opinion is a sequel to Klinger v. Conan Doyle Estate, Ltd., 2014 WL 2726187 (7th Cir. June 16, 2014), where we held that Leslie Klinger was entitled to a declaratory judgment that he would not be infringing copyrights on fictional works published by Arthur Conan Doyle before 1923 by anthologizing stories written long after Doyle’s death in 1930 that feature Sherlock Holmes and other characters depicted in Doyle’s pre-1923 fiction. Even though the modern (post-Doyle) Sherlock Holmes stories copy copyrightable material in the pre-1923 fiction, the copyrights on that fiction, which cover copyrightable elements in it that include original depictions of characters (like Holmes and Dr. Watson), have expired. We rejected the Doyle estate’s argument that because stories published by Doyle between 1923 and his death—and still under copyright—depicted those characters in a more “rounded form” than found in the pre-1923 fiction, the “flat” characters of the earlier stories were protected by the copyrights still in force on the “rounded” characters of the later stories.
...Now Klinger asks us to order the Doyle estate to reimburse the attorneys’ fees he incurred in the appeal, amounting to $30,679.93. (He has filed a separate petition for fees and related costs incurred in his litigation in the district court, totaling $39,123.44. That petition is not before us.) The estate opposes Klinger’s request on the same hopeless grounds that it had urged in its appeal, but does not question the amount of fees as distinct from Klinger’s entitlement to an award of any amount of fees in this case.
We’re not alone in expressing these concerns. See Michael J. Meurer, “Controlling Opportunistic and Anti–Competitive Intellectual Property Litigation,” 44 Boston College L. Rev. 509, 521 (2003). See also Ben Depoorter & Robert Kirk Walker, “Copyright False Positives,” 89 Notre Dame L. Rev. 319, 343-45 (2013), where we read that many persons or firms accused of copyright infringement find that “it is more cost-effective to simply capitulate” than to fight, even when the alleged claim is of dubious merit. Copyright holders, the authors explain, have larger potential upsides and smaller downside risks to filing suit, since if they win they obtain damages but if they lose they don’t have to pay damages (although a loss, especially if recorded in a published opinion as in this case, may make it more difficult for them to play their extortionate game in future cases). So copiers or alleged copiers may be “induced into licensing [that is, paying a fee for a license to reproduce] the underlying work, even if this license is unnecessary or conveys non-existent rights." Id. at 345. Depoorter and Walker (id. at 345 n. 172) give the example of the Summy-Brichard Company, a subsidiary of Warner Music Group, which “receives approximately $2 million per year in royalty payments for licenses to the song ‘Happy Birthday to You,’ despite the fact that the song is most likely in the public domain,” as argued in Robert Brauneis, “Copyright and the World’s Most Popular Song,” 56 J. Copyright Society U.S.A. 335, 338–40 (2009).
This marks the second time this year Judge Posner has cited work by Professor Depoorter. In Goesel v. Boley, the 7th Circuit discusses disclosure of settlements and refers to Depoorter’s article in Cornell Law Review, Law in the Shadow of Bargaining.
"As many other scholars, especially those in law and economics, I have spent my entire career citing the honorable Richard Posner," wrote Depoorter at the time. "One of the most prolific legal scholars ever, Posner has made insightful contributions in virtually all areas of law. Today however, I was informed by a colleague at UC Hastings that the favor had been returned to me."