In the

United States Court of Appeals

For the Seventh Circuit ____________________

No. 14-1128

LESLIE S. KLINGER,

Plaintiff-Appellee,

v.

CONAN DOYLE ESTATE, LTD.,

Defendant-Appellant.

____________________

Motion for Award of Attorneys’ Fees in an Appeal

from the United States District Court for the

Northern District of Illinois, Eastern Division.

No. 13 C 1226 — Rubén Castillo, Chief Judge.

____________________

SUBMITTED JULY 15, 2014 — DECIDED AUGUST 4, 2014

____________________

Before POSNER, FLAUM, and MANION, Circuit Judges.

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 oth-
2 No. 14-1128

er 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.

Once the copyright on a work expires, the work becomes 

a part of the public domain and can be copied and sold 

without a license from the holder of the expired copyright. 

So when Klinger published his first anthology of modern 

Sherlock Holmes stories he didn’t think he needed a license.

But the Doyle estate told Random House, which had agreed 

to publish Klinger’s book, that it would have to pay the estate $5,000 for a copyright license. Random House yielded to 

the demand, obtained the license, and published the book.

Klinger arranged for a sequel to the anthology to be published by Pegasus Books and distributed by W.W. Norton & 

Company to booksellers. When the Doyle estate learned of 

this project, it told Pegasus, as it had told Random House,

that Pegasus would have to obtain a $5,000 license from the 

estate in order to be legally authorized to publish the new 

book. The estate didn’t explicitly threaten to sue Pegasus for 

copyright infringement if the publisher didn’t obtain a license, but did explicitly threaten to prevent distribution of 

the book. It did not mince words. It told Pegasus: “If you 
No. 14-1128 3

proceed ... to bring out [the sequel] unlicensed, do not expect to see it offered for sale by Amazon, Barnes & Noble, 

and similar retailers. We work with those compan[ies] routinely to weed out unlicensed uses of Sherlock Holmes from 

their offerings, and will not hesitate to do so with your book 

as well.” There was also a latent threat to sue Pegasus for 

copyright infringement if it published Klinger‘s book without a license, and to sue Internet service providers who distributed it. See Digital Millennium Copyright Act, 17 U.S.C. 

§ 512(i)(1)(A). Pegasus yielded to the threat, as Random 

House had done, and refused to publish the anthology until

Klinger obtained a license from the Doyle estate.

Instead of obtaining a license Klinger sued the estate, 

seeking declaratory relief against being adjudged an infringer of any valid copyrights of the estate—and won, both in 

the district court and, on the estate’s appeal, in this court. 

We could find no basis in statute or case law for extending a

copyright beyond its expiration. When a story falls into the 

public domain, story elements—including characters covered by the expired copyright—become fair game for followon 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. 

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 ques-
4 No. 14-1128

tion the amount of fees as distinct from Klinger’s entitlement 

to an award of any amount of fees in this case.

The Copyright Act authorizes the “award [of] a reasonable attorney’s fee to the prevailing party as part of the costs.” 

17 U.S.C. § 505. We said in Assessment Technologies of Wisconsin, LLC v. WIREdata, Inc., 361 F.3d 434, 436–37 (7th Cir. 2004)

(and reaffirmed in DeliverMed Holdings, LLC v. Schaltenbrand, 

734 F.3d 616, 625–26 (7th Cir. 2013)) that the two most important considerations in deciding whether to award fees 

“are the strength of the prevailing party’s case and the 

amount of damages or other relief the party obtained. If the 

case was a toss-up and the prevailing party obtained generous damages, or injunctive relief of substantial monetary 

value, there is no urgent need to add an award of attorneys’ 

fees. But if at the other extreme the claim or defense was 

frivolous and the prevailing party obtained no relief at all, 

the case for awarding attorneys’ fees is compelling” (citations omitted). We said that as a consequence of the successful defense of an infringement suit the defendant is entitled 

to a “very strong” presumption in favor of receiving attorneys’ fees, in order to ensure that an infringement defendant 

does not abandon a meritorious defense in situations in 

which “the cost of vindication exceeds the private benefit to 

the party.” 361 F.3d at 437. “For without the prospect of such 

an award, [an infringement defendant] might be forced into 

a nuisance settlement or deterred altogether from exercising 

[its] rights.” Id.

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 
No. 14-1128 5

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 case illustrates the concerns expressed both in the 

articles we’ve just cited and in our opinions in Assessment 

Technologies and DeliverMed Holdings. Unless Klinger is 

awarded his attorneys’ fees, he will have lost money—to be 

precise, $25,679.93 ($30,679.93 – $5,000)—in winning an appeal in which the defendant’s only defense bordered on the 

frivolous: a Pyrrhic victory if ever there was one. It’s irrelevant that in Assessment Technologies and DeliverMed Holdings, 

the alleged infringer was the defendant, and in this case it’s 

the plaintiff; a declaratory-judgment plaintiff in a copyright 
6 No. 14-1128

case is in effect a defendant permitted to precipitate the infringement suit.

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 strategy had 

worked with Random House; Pegasus was ready to knuckle 

under; only Klinger (so far as we know) resisted. In effect he 

was a private attorney general, combating a disreputable 

business practice—a form of extortion—and he is seeking by 

the present motion not to obtain a reward but merely to 

avoid a loss. He has performed a public service—and with 

substantial risk to himself, for had he lost he would have 

been out of pocket for the $69,803.37 in fees and costs incurred at the trial and appellate levels ($30,679.93 + 

$39,123.44). 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. For exposing the estate’s unlawful business strategy, 

Klinger deserves a reward but asks only to break even.

We note finally that the estate was playing with fire in 

asking Amazon and other booksellers to cooperate with it in 

enforcing its nonexistent copyright claims against Klinger. 

For it was enlisting those sellers in a boycott of a competitor 

of the estate, and boycotts of competitors violate the antitrust laws. The usual boycott is of a purchaser by his suppliers, induced by a competitor of the purchaser in order to 
No. 14-1128 7

eliminate competition from that purchaser, as in the leading 

case (old as it is) of Eastern States Retail Lumber Dealers’ Ass’n 

v. United States, 234 U.S. 600 (1914); see also JTC Petroleum 

Co. v. Piasa Motor Fuels, Inc., 190 F.3d 775, 777–79 (7th Cir. 

1999). This case is different, in its facts but not in economic 

substance or legal relevance, because the boycotters enlisted 

by the Doyle estate were buyers from the victim, rather than 

sellers to it. But functionally they were suppliers—suppliers 

of essential distribution services to Klinger.

It’s time the estate, in its own self-interest, changed its 

business model.

Klinger’s motion is granted and the Doyle estate ordered

to pay him $30,679.93 for the legal fees that he incurred in 

his successful defense of the district court’s judgment in his 

favor.