United States District Court, N.D. Illinois, Eastern Division
LESLIE S. KLINGER, Plaintiff,
CONAN DOYLE ESTATE, LTD., Defendant
[Copyrighted Material Omitted]
For Leslie S Klinger, an individual, Plaintiff: Scott M Gilbert, LEAD ATTORNEY, Polsinelli, PC, Chicago, IL; John A. Leja, Polsinelli Shughart PC, Chicago, IL.
For Conan Doyle Estate, Ltd, a business entity organized under the laws of the United Kingdom, Defendant: Benjamin Allison, PRO HAC VICE, Sutin Thayer & Browne, A Professional Corporation, Santa Fe, NM; Lynn E. Mostoller, PRO HAC VICE, Sutin, Thayer & Browne, Apc, Albuquerque, NM; William Frederick Zieske, Zieske Law, Woodstock, IL.
Rubé n Castillo, Chief United States District Judge.
MEMORANDUM OPINION AND ORDER
Plaintiff Leslie S. Klinger (" Klinger" ) brings this copyright action against Defendant Conan Doyle Estate, Ltd. (" Conan Doyle" ), seeking a declaratory judgment pursuant to the Declaratory Judgment Act, 28 U.S.C. § 2201. Specifically, Klinger seeks a declaration that various characters, character traits and other story elements from Sir Arthur Conan Doyle's Sherlock Holmes stories are free for the public to copy without infringing Conan Doyle's rights under the Copyright Act, 17 U.S.C. § 101 et seq. Presently before the Court is Klinger's motion for summary judgment. For the reasons set forth below, the Court grant's Klinger's motion in part and denies it in part.
RELEVANT FACTS 
Sir Arthur Conan Doyle authored four novels and fifty-six short stories (collectively, " the Canon" ) featuring the fictional
characters of detective Sherlock Holmes and his friend and colleague Dr. John H. Watson. (Conan Doyle's Rule 56.1 Resp. ¶ ¶ 1, 8.) Sir Arthur Conan Doyle first introduced these characters in " A Study in Scarlet," which was first published in Beeton's Christmas Annual in 1887 and first released in the United States in 1890. (Conan Doyle's Rule 56.1 Resp. ¶ 8.) The four novels and forty-six of the fifty-six short stories were first published in the United States on various dates prior to January 1, 1923. (Conan Doyle's Rule 56.1 Resp. ¶ 11.) The ten short stories remaining under copyright protection (the " Ten Stories" ) are set forth in Exhibit B to the complaint. (R. 1-2, Ex. B, Ten Stories.)
Conan Doyle is a company owned by members of Sir Arthur Conan Doyle's family. (Klinger's Rule 56.1 Resp. ¶ 1.) Conan Doyle licenses its intellectual property, including copyrights, in the works of Sir Arthur Conan Doyle to third parties through its exclusive authorized licensing agents in the United States. (Conan Doyle's Rule 56.1 Resp. ¶ 5.) Klinger is the author and editor of twenty-seven books and dozens of articles in the mystery and thriller literature genre, including two dozen books and numerous articles on Sherlock Holmes and the Canon. (Conan Doyle's Rule 56.1 Resp. ¶ 1.)
I. A Study in Sherlock
Klinger is the co-editor, along with Laurie R. King, of A Study in Sherlock, an anthology of new and original short stories by contemporary authors. (Conan Doyle's Rule 56.1 Resp. ¶ 2.) The stories in A Study in Sherlock were inspired by the Canon and feature various characters and story elements from the Canon. (Conan Doyle's Rule 56.1 Resp. ¶ 2.) Klinger and King entered into a contract with Random House to publish the anthology. (Conan Doyle's Rule 56.1 Resp. ¶ 2.) Before Random House published A Study in Sherlock, Conan Doyle intervened to assert its exclusive copyright over the use of the characters Sherlock Holmes and Dr. Watson. (Conan Doyle's Rule 56.1 Resp. ¶ 21.) Conan Doyle informed Random House that it must enter into a licensing agreement with it in order to publish the anthology. ( Id. ) Although Klinger and King believed that the law did not require them to obtain a license, Random House disagreed and entered into a licensing agreement with Conan Doyle. ( Id. )
II. In the Company of Sherlock Holmes
Klinger and King are also the co-editors of a sequel to A Study in Sherlock, currently titled In the Company of Sherlock Holmes, which is another collection of new and original short stories featuring various characters and story elements from the Canon. (Conan Doyle's Rule 56.1 Resp. ¶ 3.) Klinger and King are currently preparing In the Company of Sherlock Holmes for publication by Pegasus Books and distribution by W.W. Norton & Company. ( Id. ) At Klinger's insistence, literary critic and historian Michael Dirda, a contributing author to the new anthology, informed Conan Doyle of his intention to use Sir Arthur Conan Doyle's fictional
character Langdale Pike in his new story. (Klinger's Rule 56.1 Resp. ¶ 12; R. 29-1, Klinger's Suppl. Decl. ¶ 9.) The character originated in the short story " The Three Gables," published in the 1926 Case-Book, which ...