SUNTRUST BANK, as Trustee of the
Stephen Mitchell trusts f.b.o. Eugene
Muse Mitchell and Joseph Reynolds Mitchell,
Plaintiff-Appellee,
versus
HOUGHTON MIFFLIN COMPANY,
Defendant-Appellant.
Before BIRCH, MARCUS and WOOD*, Circuit Judges.
_____________
Mitchell Trust maintains the copyright in all of the derivative works as well. See 17
U.S.C. § 103.
(See footnote 1)
Alice Randall, the author of TWDG, persuasively claims that her novel is a
critique of GWTW's depiction of slavery and the Civil-War era American South.
To this end, she appropriated the characters, plot and major scenes from GWTW
into the first half of TWDG. According to SunTrust, TWDG (1) explicitly refers to
[GWTW] in its foreword; (2) copies core characters, character traits, and
relationships from [GWTW]; (3) copies and summarizes famous scenes and other
elements of the plot from [GWTW]; and (4) copies verbatim dialogues and
descriptions from [GWTW]. SunTrust Bank v. Houghton Mifflin Co., 136 F.
Supp. 2d 1357, 1364 (N.D.Ga. 2001), vacated, 252 F.3d 1165 (11th Cir. 2001).
Defendant-Appellant Houghton Mifflin, the publisher of TWDG, does not contest
the first three allegations,
(See footnote 2)
but nonetheless argues that there is no substantial
similarity between the two works or, in the alternative, that the doctrine of fair use
protects TWDG because it is primarily a parody of GWTW.
After discovering the similarities between the books, SunTrust asked
Houghton Mifflin to refrain from publication or distribution of TWDG, but
Houghton Mifflin refused the request. Subsequently, SunTrust filed an action
alleging copyright infringement, violation of the Lanham Act, and deceptive trade
practices, and immediately filed a motion for a temporary restraining order and a
preliminary injunction.
After a hearing, the district court granted the motion, preliminarily enjoining
Houghton Mifflin from further production, display, distribution, advertising, sale,
or offer for sale of TWDG. SunTrust Bank, 136 F. Supp. 2d at 1386. In a
thorough opinion, the court found that the defendant's publication and sale of
[TWDG would] infringe the plaintiff's copyright interests as protected under the
copyright laws. Id. Houghton Mifflin appealed. At oral argument, we issued an
order vacating the injunction on the grounds that it was an unconstitutional prior
restraint. SunTrust Bank v. Houghton Mifflin Co., 252 F. 3d 1165 (11th Cir. 2001).
We now vacate that order and issue this more comprehensive opinion.
B. Standard of Review
We review the district court's grant of a preliminary injunction for abuse of
discretion. Warren Pub., Inc. v. Microdos Data Corp., 115 F.3d 1509, 1516 (11th
Cir. 1997) (en banc). We review decisions of law de novo and findings of fact for
clear error. Mitek Holdings, Inc. v. Arce Eng'g Co., Inc., 89 F.3d 1548, 1554 (11th
Cir. 1996).
to prevent its recurrence. L. Ray Patterson, Understanding the Copyright Clause,
47 J. Copyright Soc'y USA 365, 379 (2000). This Parliamentary statute assigned
copyright in books to authors, added a requirement that only a new work could be
copyrighted, and limited the duration, which had been perpetual, to two fourteen-
year terms. 8 Anne, C.19 (1710), reprinted in 8 Melville B. Nimmer & David
Nimmer, Nimmer on Copyright § 7-5 (2001). It is clear that the goal of the Statute
of Anne was to encourage creativity and ensure that the public would have free
access to information by putting an end to the continued use of copyright as a
device of censorship. Patterson at 379.
(See footnote 4)
The Framers of the U.S. Constitution
relied on this statute when drafting the Copyright Clause of our Constitution,
(See footnote 5)
which
reads,
others from copying and selling her particular literary work. See Stowe v. Thomas,
23 F. Cas. 201 (C.C.E.D. Pa. 1853) (holding that a translation of Uncle Tom's
Cabin into German was not a copyright infringement because it was not a copy of
the work as it was published).
(See footnote 9)
This limited right ensured that a maximum number
of new works would be created and published. It was not until the 1909 Act, which
codified the concept of a derivative work, that an author's right to protect his
original work against imitation was established. This change more closely
represents current statutory copyright law and is consistent with copyright's
constitutional mandate.
As a further protection of the public interest, until 1976, statutory copyright
law required that a work be published before an author was entitled to a copyright in
that work. Therefore, in order to have the sole right of publication for the statutory
period, the author was first required to make the work available to the public. In
1976, copyright was extended to include any work fixed in any tangible medium of
expression in order to adapt the law to technological advances. § 102(a). Thus,
the publication requirement was removed, but the fair use right was codified to
maintain the constitutionally mandated balance to ensure that the public has access
to knowledge.
The Copyright Act promotes public access to knowledge because it provides
an economic incentive for authors to publish books and disseminate ideas to the
public. Harper & Row, 471 U.S. at 558, 105 S. Ct. at 2229 (By establishing a
marketable right to the use of one's expression, copyright supplies the economic
incentive to create and disseminate ideas.). The Supreme Court has recognized
that [t]he monopoly created by copyright thus rewards the individual author in
order to benefit the public. Id. at 546, 105 S. Ct. at 2223 (quoting Sony Corp. of
America v. Univ. City Studios, Inc., 464 U.S. 417, 477, 104 S. Ct. 774, 807 (1984)
(Blackmun, J.,dissenting)). Without the limited monopoly, authors would have little
economic incentive to create and publish their work. Therefore, by providing this
incentive, the copyright law promotes the public access to new ideas and concepts.
2. Protection of the Public Domain
The second goal of the Copyright Clause is to ensure that works enter the
public domain after an author's rights, exclusive, but limited, have expired. Parallel
to the patent regime, the limited time period of the copyright serves the dual purpose
of ensuring that the work will enter the public domain and ensuring that the author
has received a fair return for [her] labors. Harper & Row, 471 U.S. at 546, 105
S. Ct. at 2223. This limited grant is intended to motivate the creative activity of
authors . . . by the provision of a special reward, and to allow the public access to
the products of their genius after the limited period of exclusive control has
expired. Sony, 464 U.S. at 429, 104 S. Ct. at 782. The public is protected in two
ways: the grant of a copyright encourages authors to create new works, as discussed
in section II.A.1., and the limitation ensures that the works will eventually enter the
public domain, which protects the public's right of access and use.
(See footnote 10)
3. Exclusive Rights of the Author
Finally, the Copyright Clause grants the author limited exclusive rights in
order to encourage the creation of original works. Before our copyright
jurisprudence developed, there were two separate theories of copyright in England _
the natural law copyright, which was the right of first publication, and the statutory
copyright, which was the right of continued publication. The natural law copyright,
which is not a part of our system, implied an ownership in the work itself, and thus
was preferred by the booksellers and publishers striving to maintain their monopoly
over literature as well as by the Crown to silence seditious writings. Even after
passage of the Statute of Anne, the publishers and booksellers resisted the loss of
their monopoly in the courts for more than sixty years. Finally, in 1774, the House
of Lords ruled that the natural law copyright, that is, the ownership of the work
itself, expires upon publication of the book, when the statutory copyright attaches.
Patterson at 382.
This bifurcated system was carried over into our copyright law. As of the
1909 Act, an author had state common law protection [that] persisted until the
moment of general publication. Estate of Martin Luther King, Jr. v. CBS, Inc., 194
F.3d 1211, 1214 (11th Cir. 1999). After the work was published, the author was
entitled to federal statutory copyright protection if she had complied with certain
federal requirements (i.e. publication with notice). If not, the work was released
into the public domain. Id. The system illustrates that the author's ownership is in
the copyright, and not in the work itself, for if the author had an ownership interest
in the work itself, she would not lose that right if she published the book without
complying with federal statutory copyright requirements. Compliance with the
copyright law results in the guarantee of copyright to the author for a limited time,
but the author never owns the work itself. § 202 (Ownership of a copyright, or of
any of the exclusive rights under a copyright, is distinct from ownership of any
material object in which the work is embodied.).
This has an important impact on modern interpretation of copyright, as it
emphasizes the distinction between ownership of the work, which an author does
not possess, and ownership of the copyright, which an author enjoys for a limited
time. In a society oriented toward property ownership, it is not surprising to find
many that erroneously equate the work with the copyright in the work and conclude
that if one owns the copyright, they must also own the work. However, the fallacy
of that understanding is exposed by the simple fact that the work continues to exist
after the term of copyright associated with the work has expired. The copyright is
not a natural right inherent in authorship. If it were, the impact on market values
would be irrelevant; any unauthorized taking would be obnoxious. Pierre Leval,
Towards a Fair Use Standard, 105 Harv. L. Rev. 1105, 1124 (1990).
B. The Union of Copyright and the First Amendment
The Copyright Clause and the First Amendment,
(See footnote 11)
while intuitively in
conflict,
(See footnote 12)
were drafted to work together to prevent censorship; copyright laws were
enacted in part to prevent private censorship and the First Amendment was enacted
to prevent public censorship.
(See footnote 13)
There are [c]onflicting interests that must be
accommodated in drawing a definitional balance between the Copyright Clause and
the First Amendment. 1 Nimmer § 1.10[B][1]. In establishing this balance [o]n
the copyright side, economic encouragement for creators must be preserved and the
privacy of unpublished works recognized. Freedom of speech[, on the other hand,]
requires the preservation of a meaningful public or democratic dialogue, as well as
the uses of speech as a safety valve against violent acts, and as an end in itself. Id.
In copyright law, the balance between the First Amendment and copyright is
preserved, in part, by the idea/expression dichotomy and the doctrine of fair use.
See Eldred v. Reno, 239 F.3d 372, 375 (D.C. Cir. 2001) (The first amendment
objection . . . was misplaced '[i]n view of the First Amendment protections already
embodied in the Copyright Act's distinction between copyrightable expression and
uncopyrightable facts and ideas, and the latitude for scholarship and comment
traditionally afforded by fair use.') (quoting Harper & Row, 471 U.S. at 560, 105
S. Ct. at 2218).
1. The Idea/ Expression Dichotomy
Copyright cannot protect an idea, only the expression of that idea. Baker v.
Selden, 101 U.S. 99 (1879); Mitek, 89 F.3d at 1556 n.19; Bell South Adver. &
Publ'g Corp. v. Donnelly Info. Publ'g, Inc., 999 F.2d 1436, 1445 (1993); codified in
§ 102(b) (In no case does copyright protection for an original work of authorship
extend to any idea, procedure, process, system, method of operation, concept,
principle, or discovery, regardless of the form in which it is described, explained,
illustrated, or embodied in such work.). The result is that copyright assures
authors the right to their original expression, but encourages others to build freely
upon the ideas and information conveyed by the work. Feist, 499 U.S. at 349-50,
111 S. Ct. at 1290. It is partly through this idea/expression dichotomy that
copyright law embodies the First Amendment's underlying goal of encouraging open
debate and the free exchange of ideas. See Harper & Row, 471 U.S. at 556, 105 S.
Ct. at 2228 (citing as correct the Second Circuit's observation that copyright's
idea/expression dichotomy 'strike[s] a definitional balance between the First
Amendment and the Copyright Act by permitting free communication of facts while
still protecting an author's expression); Worldwide Church of God v. Philadelphia
Church of God, 227 F.3d 1110, 1115 (9th Cir. 2000), cert. denied __ U.S. __, 121
S. Ct. 1486 (2001) (The public interest in the free flow of information is assured by
the law's refusal to recognize a valid copyright in facts.); see also 1 Nimmer § 1-
10[C][2] (In general, the democratic dialogue _ a self-governing people's
participation in the marketplace of ideas _ is adequately served if the public has
access to an author's ideas, and such loss to the dialogue as results from
inaccessibility to an author's 'expression' is counterbalanced by the greater public
interest in the copyright system.). Holding an infringer liable in copyright for
copying the expression of another author's ideas does not impede First Amendment
goals because the public purpose has been served _ the public already has access to
the idea or the concepts.
(See footnote 14)
A new author may use or discuss the idea, but must do
so using her own original expression.
2. Fair Use
First Amendment privileges are also preserved through the doctrine of fair
use.
(See footnote 15)
Until codification of the fair-use doctrine in the 1976 Act, fair use was a
judge-made right developed to preserve the constitutionality of copyright legislation
by protecting First Amendment values. Had fair use not been recognized as a right
under the 1976 Act, the statutory abandonment of publication as a condition of
copyright that had existed for over 200 years would have jeopardized the
constitutionality of the new Act because there would be no statutory guarantee that
new ideas, or new expressions of old ideas, would be accessible to the public.
Included in the definition of fair use are purposes such as criticism,
comment, news reporting, teaching . . ., scholarship, or research. § 107. The
exceptions carved out for these purposes are at the heart of fair use's protection of
the First Amendment, as they allow later authors to use a previous author's
copyright to introduce new ideas or concepts to the public. Therefore, within the
limits of the fair-use test,
(See footnote 16)
any use of a copyright is permitted to fulfill one of the
important purposes listed in the statute.
Because of the First Amendment principles built into copyright law through
the idea/expression dichotomy and the doctrine of fair use, courts often need not
entertain related First Amendment arguments in a copyright case. See, e.g., Eldred,
239 F.3d at 376 (where the works in question are by definition under copyright;
that puts the works on the latter half of the 'idea/expression dichotomy' and makes
them subject to fair use. This obviates further inquiry under the First
Amendment.); Nihon Keizai Shimbun, Inc. v. Comline Bus. Data, Inc., 166 F.3d
65, 74 (2d Cir. 1999) (We have repeatedly rejected First Amendment challenges to
injunctions from copyright infringement on the ground that First Amendment
concerns are protected by and coextensive with the fair use doctrine.); Los Angeles
News Serv. v. Tullo, 973 F.2d 791, 795 (9th Cir. 1992) (First Amendment
concerns are also addressed in the copyright field through the 'fair use'
doctrine.).
(See footnote 17)
The case before us calls for an analysis of whether a preliminary injunction
was properly granted against an alleged infringer who, relying largely on the
doctrine of fair use, made use of another's copyright for comment and criticism. As
discussed herein, copyright does not immunize a work from comment and criticism.
Therefore, the narrower question in this case is to what extent a critic may use the
protected elements of an original work of authorship to communicate her criticism
without infringing the copyright in that work. As will be discussed below, this
becomes essentially an analysis of the fair use factors. As we turn to the analysis
required in this case, we must remain cognizant of the First Amendment protections
interwoven into copyright law.
C. Appropriateness of Injunctive Relief
The chief function of a preliminary injunction is to preserve the status quo
until the merits of the controversy can be fully and fairly adjudicated. Northeastern
Fl. Chapter of Ass'n of Gen. Contractors of Am. v. City of Jacksonville, Fl., 896
F.2d 1283, 1284 (11th Cir. 1990). The Copyright Act specifically vests the federal
courts with power to grant injunctions to prevent or restrain infringement of a
copyright. § 502(a). While injunctive relief may be particularly appropriate in
cases involving simple copying or piracy of a copyrighted work, the Supreme
Court has cautioned that such relief may not be consistent with the goals of
copyright law in cases in which the alleged infringer of the copyright has a colorable
fair-use defense. Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 578 n.10, 114
S. Ct. 1164, 1171 n.10 (1994).
(See footnote 18)
The basic framework for our analysis remains, however, the standard test
governing the issuance of preliminary injunctions. SunTrust is not entitled to relief
in the form of a preliminary injunction unless it has proved each of the following
four elements: (1) a substantial likelihood of success on the merits, (2) a substantial
threat of irreparable injury if the injunction were not granted, (3) that the threatened
injury to the plaintiff outweighs the harm an injunction may cause the defendant, and
(4) that granting the injunction would not disserve the public interest. Am. Red
Cross v. Palm Beach Blood Bank, Inc., 143 F.3d 1407, 1410 (11th Cir. 1998).
1. Substantial Likelihood of Success on the Merits
a. Prima Facie Copyright Infringement
The first step in evaluating the likelihood that SunTrust will succeed on the
merits is to determine whether it has established the prima facie elements of a
copyright infringement claim: (1) that SunTrust owns a valid copyright in GWTW
and (2) that Randall copied original elements of GWTW in TWDG. Feist, 499
U.S. at 361, 111 S. Ct. at 1296; Leigh v. Warner Bros., Inc., 212 F.3d 1210, 1214
(11th Cir. 2000). The district court found that SunTrust had carried its burden on
both of these elements.
The first element, SunTrust's ownership of a valid copyright in GWTW, is
not disputed. Houghton Mifflin does assert, however, that SunTrust did not
establish the second element of infringement, that TWDG appropriates copyright-
protected expression from GWTW. In order to prove copying, SunTrust was
required to show a substantial similarity between the two works such that an
average lay observer would recognize the alleged copy as having been appropriated
from the copyrighted work. Leigh, 212 F.3d at 1214 (quoting Original
Appalachian Artworks, Inc. v. Toy Loft, Inc., 684 F.2d 821, 829 (11th Cir. 1982)).
Not all copying of a work is actionable, however, for, as discussed in section
II.B.1., no author may copyright facts or ideas. The copyright is limited to those
aspects of the work_termed 'expression'_that display the stamp of the author's
originality. Harper & Row, 471 U.S. at 547, 105 S. Ct. at 2224 (citation omitted).
Thus, we are concerned with substantial similarities between TWDG and GWTW
only to the extent that they involve the copying of original, protected expression.
Leigh, 212 F.3d at 1214.
(See footnote 19)
There is no bright line that separates the protectable expression from the
nonprotectable idea in a work of fiction. While often referred to as a test for
distinguishing the idea from the expression, Judge Learned Hand's famous
statement in Nichols v. Universal Pictures Corp., 45 F.2d 119 (2d Cir. 1930), is
actually nothing more than a concise restatement of the problem facing the courts:
Upon any work, and especially upon a play, a great number of patterns of
increasing generality will fit equally well, as more and more of the incident is
left out. The last may perhaps be no more than the most general statement of
what the play is about, and at time might consist only of its title; but there is a
point in this series of abstractions where they are no longer protected, since
otherwise the playwright could prevent the use of his 'ideas,' to which, apart
from their expression, his property is never extended.
Id. at 121. At one end of the spectrum, scenes a faire_the stock scenes and
hackneyed character types that naturally flow from a common theme_are
considered ideas, and therefore are not copyrightable. Beal v. Paramount Pictures
Corp., 20 F.3d 454, 459-60 (11th Cir. 1994). But as plots become more intricately
detailed and characters become more idiosyncratic, they at some point cross the line
into expression and are protected by copyright. See 1 Nimmer § 2.12 (2001).
After conducting a thorough comparison of the two works, the district court
found that TWDG copied far more than unprotected scenes a faire from GWTW:
[TWDG] uses fifteen fictional characters from [GWTW], incorporating their
physical attributes, mannerisms, and the distinct features that Ms. Mitchell used to
describe them, as well as their complex relationships with each other. Moreover,
the various [fictional] locales, . . . settings, characters, themes, and plot of [TWDG]
closely mirror those contained in [GWTW]. SunTrust, 136 F.Supp.2d at 1367.
Our own review of the two works reveals substantial use of GWTW. TWDG
appropriates numerous characters, settings, and plot twists from GWTW. For
example, Scarlett O'Hara, Rhett Butler, Bonnie Butler, Melanie Wilkes, Ashley
Wilkes, Gerald O'Hara, Ellen O'Hara, Mammy, Pork, Dilcey, Prissy, Belle
Watling, Carreen O'Hara, Stuart and Brenton Tarleton, Jeems, Philippe, and Aunt
Pittypat, all characters in GWTW, appear in TWDG. Many of these characters are
renamed in TWDG: Scarlett becomes Other, Rhett Butler becomes R.B., Pork
becomes Garlic, Prissy becomes Miss Priss, Philippe becomes Feleepe, Aunt
Pittypat becomes Aunt Pattypit, etc. In several instances, Randall renamed
characters using Mitchell's descriptions of those characters in GWTW: Ashley
becomes Dreamy Gentleman, Melanie becomes Mealy Mouth, Gerald becomes
Planter. The fictional settings from GWTW receive a similarly transparent
renaming in TWDG: Tara becomes Tata, Twelve Oaks Plantation becomes
Twelve Slaves Strong as Trees. TWDG copies, often in wholesale fashion, the
descriptions and histories of these fictional characters and places from GWTW, as
well as their relationships and interactions with one another. TWDG appropriates
or otherwise explicitly references many aspects of GWTW's plot as well, such as
the scenes in which Scarlett kills a Union soldier and the scene in which Rhett stays
in the room with his dead daughter Bonnie, burning candles. After carefully
comparing the two works, we agree with the district court that, particularly in its
first half, TWDG is largely an encapsulation of [GWTW] [that] exploit[s] its
copyrighted characters, story lines, and settings as the palette for the new story.
SunTrust, 136 F.Supp.2d at 1367.
Houghton Mifflin argues that there is no substantial similarity between
TWDG and GWTW because the retelling of the story is an inversion of GWTW:
the characters, places, and events lifted from GWTW are often cast in a different
light, strong characters from the original are depicted as weak (and vice-versa) in
the new work, the institutions and values romanticized in GWTW are exposed as
corrupt in TWDG. While we agree with Houghton Mifflin that the characters,
settings, and plot taken from GWTW are vested with a new significance when
viewed through the character of Cynara
(See footnote 20)
in TWDG, it does not change the fact that
they are the very same copyrighted characters, settings, and plot.
b. Fair Use
Randall's appropriation of elements of GWTW in TWDG may nevertheless
not constitute infringement of SunTrust's copyright if the taking is protected as a
fair use. The codification of the fair-use doctrine in the Copyright Act provides:
Notwithstanding the provisions of sections 106 and 106A, the fair use of a
copyrighted work . . . for purposes such as criticism, comment, news
reporting, teaching (including multiple copies for classroom use), scholarship,
or research, is not an infringement of copyright. In determining whether the
use made of a work in any particular case is a fair use the factors to be
considered shall include_
(1) the purpose and character of the use, including whether such use is of a
commercial nature or is for nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation to the
copyrighted work as a whole; and
(4) the effect of the use upon the potential market for or value of the
copyrighted work.
§ 107.
(See footnote 21)
In assessing whether a use of a copyright is a fair use under the statute, we
bear in mind that the examples of possible fair uses given are illustrative rather than
exclusive, and that [a]ll [of the four factors] are to be explored, and the results
weighed together in light of the purposes of copyright. Campbell, 510 U.S. at 577-
78, 114 S. Ct. at 1170-71.
(See footnote 22)
In light of the discussion in §§ IIA and B, one of the
most important purposes to consider is the free flow of ideas _ particularly criticism
and commentary.
Houghton Mifflin argues that TWDG is entitled to fair-use protection as a
parody of GWTW. In Campbell, the Supreme Court held that parody, although not
specifically listed in § 107, is a form of comment and criticism that may constitute a
fair use of the copyrighted work being parodied. Id. at 579, 114 S. Ct. at 1171.
Parody, which is directed toward a particular literary or artistic work, is
distinguishable from satire, which more broadly addresses the institutions and mores
of a slice of society. Id. at 580-81, 581 n.15, 114 S. Ct. at 1172, 1172 n.15. Thus,
[p]arody needs to mimic an original to make its point, and so has some claim to use
the creation of its victim's . . . imagination, whereas satire can stand on its own two
feet and so requires justification for the very act of borrowing. Id. at 580-81, 114
S. Ct. at 1172.
The fact that parody by definition must borrow elements from an existing
work, however, does not mean that every parody is shielded from a claim of
copyright infringement as a fair use. The [Copyright] Act has no hint of an
evidentiary preference for parodists over their victims, and no workable
presumption for parody could take account of the fact that parody often shades into
satire when society is lampooned through its creative artifacts, or that a work may
contain both parodic and nonparodic elements. Id. at 581, 114 S. Ct. at 1172.
Therefore, Houghton Mifflin's fair-use defense of parody, like any other claim of
fair use, must be evaluated in light of the factors set out in § 107 and the
constitutional purposes of copyright law. Id., 114 S. Ct. at 1172.
Before considering a claimed fair-use defense based on parody, however, the
Supreme Court has required that we ensure that a parodic character may
reasonably be perceived in the allegedly infringing work. Id. at 582, 114 S. Ct. at
1173. The Supreme Court's definition of parody in Campbell, however, is
somewhat vague. On the one hand, the Court suggests that the aim of parody is
comic effect or ridicule, but it then proceeds to discuss parody more expansively
in terms of its commentary on the original. Id. at 580, 114 S. Ct. at 1172. In light
of the admonition in Campbell that courts should not judge the quality of the work
or the success of the attempted humor in discerning its parodic character, we choose
to take the broader view. For purposes of our fair-use analysis, we will treat a work
as a parody if its aim is to comment upon or criticize a prior work by appropriating
elements of the original in creating a new artistic, as opposed to scholarly or
journalistic, work.
(See footnote 23)
Under this definition, the parodic character of TWDG is clear.
TWDG is not a general commentary upon the Civil-War-era American South, but a
specific criticism of and rejoinder to the depiction of slavery and the relationships
between blacks and whites in GWTW. The fact that Randall chose to convey her
criticisms of GWTW through a work of fiction, which she contends is a more
powerful vehicle for her message than a scholarly article, does not, in and of itself,
deprive TWDG of fair-use protection. We therefore proceed to an analysis of the
four fair-use factors.
i. Purpose and Character of the Work
The first factor in the fair-use analysis, the purpose and character of the
allegedly infringing work, has several facets. The first is whether TWDG serves a
commercial purpose or nonprofit educational purpose. § 107(1). Despite whatever
educational function TWDG may be able to lay claim to, it is undoubtedly a
commercial product.
(See footnote 24)
As the Supreme Court has stated, [t]he crux of the
profit/nonprofit distinction is not whether the sole motive of the use is monetary gain
but whether the user stands to profit from exploitation of the copyrighted material
without paying the customary price. Harper & Row, 471 U.S. at 562, 105 S. Ct. at
2231. The fact that TWDG was published for profit is the first factor weighing
against a finding of fair use. Id., 105 S. Ct. at 2231.
However, TWDG's for-profit status is strongly overshadowed and outweighed in
view of its highly transformative use of GWTC's copyrighted elements. [T]he
more transformative the new work, the less will be the significance of other factors,
like commercialism, that may weigh against a finding of fair use. Campbell, 510
U.S. at 579, 114 S. Ct. at 1171. [T]he goal of copyright, to promote science and
the arts, is generally furthered by the creation of transformative works. Id.. A
work's transformative value is of special import in the realm of parody, since a
parody's aim is, by nature, to transform an earlier work.
The second factor in the purpose and character analysis relevant to this
case is to what extent TWDG's use of copyrighted elements of GWTW can be said
to be transformative. The inquiry is whether the new work merely supersedes
the objects of the original creation, or instead adds something new, with a further
purpose or different character, altering the first with new expression, meaning, or
message. Campbell, 510 U.S. at 579, 114 S. Ct. at 1171 (citations and internal
punctuation omitted). The issue of transformation is a double-edged sword in this
case. On the one hand, the story of Cynara and her perception of the events in
TWDG certainly adds new expression, meaning, [and] message to GWTW. From
another perspective, however, TWDG's success as a pure work of fiction depends
heavily on copyrighted elements appropriated from GWTW to carry its own plot
forward.
However, as noted above, TWDG is more than an abstract, pure fictional
work. It is principally and purposefully a critical statement that seeks to rebut and
destroy the perspective, judgments, and mythology of GWTW. Randall's literary
goal is to explode the romantic, idealized portrait of the antebellum South during
and after the Civil War. In the world of GWTW, the white characters comprise a
noble aristocracy whose idyllic existence is upset only by the intrusion of Yankee
soldiers, and, eventually, by the liberation of the black slaves. Through her
characters as well as through direct narration, Mitchell describes how both blacks
and whites were purportedly better off in the days of slavery: The more I see of
emancipation the more criminal I think it is. It's just ruined the darkies, says
Scarlett O'Hara. GWTW at 639. Free blacks are described as creatures of small
intelligence . . . [l]ike monkeys or small children turned loose among treasured
objects whose value is beyond their comprehension, they ran wild _ either from
perverse pleasure in destruction or simply because of their ignorance. Id. at 654.
Blacks elected to the legislature are described as spending most of their time eating
goobers and easing their unaccustomed feet into and out of new shoes. Id. at 904.
As the district court noted: The earlier work is a third-person epic, whereas
the new work is told in the first-person as an intimate diary of the life of Cynara.
Thematically, the new work provides a different viewpoint of the antebellum
world. 136 F. Supp. 2d at 1367. While told from a different perspective, more
critically, the story is transformed into a very different tale, albeit much more
abbreviated. Cynara's very language is a departure from Mitchell's original prose;
she acts as the voice of Randall's inversion of GWTW. She is the vehicle of
parody; she is its means _ not its end. It is clear within the first fifty pages of
Cynara's fictional diary that Randall's work flips GWTW's traditional race roles,
portrays powerful whites as stupid or feckless
(See footnote 25)
, and generally sets out to demystify
GWTW and strip the romanticism from Mitchell's specific account of this period of
our history. Approximately the last half of TWDG tells a completely new story that,
although involving characters based on GWTW characters, features plot elements
found nowhere within the covers of GWTW.
Where Randall refers directly to Mitchell's plot and characters, she does so in
service of her general attack on GWTW. In GWTW, Scarlett O'Hara often
expresses disgust with and condescension towards blacks; in TWDG, Other,
Scarlett's counterpart, is herself of mixed descent. In GWTW, Ashley Wilkes is the
initial object of Scarlett's affection; in TWDG, he is homosexual.
(See footnote 26)
In GWTW,
Rhett Butler does not consort with black female characters and is portrayed as the
captain of his own destiny. In TWDG, Cynara ends her affair with Rhett's
counterpart, R., to begin a relationship with a black Congressman; R. ends up a
washed out former cad. In TWDG, nearly every black character is given some
redeeming quality _ whether depth, wit, cunning, beauty, strength, or courage _ that
their GWTW analogues lacked.
In light of this, we find it difficult to conclude that Randall simply tried to
avoid the drudgery in working up something fresh. Campbell, 510 U.S. at 580,
114 S. Ct. at 1172. It is hard to imagine how Randall could have specifically
criticized GWTW without depending heavily upon copyrighted elements of that
book. A parody is a work that seeks to comment upon or criticize another work by
appropriating elements of the original. Parody needs to mimic an original to make
its point, and so has some claim to use the creation of its victim's (or collective
victims') imagination. Campbell, 510 U.S. at 580-81, 114 S. Ct. at 1172. Thus,
Randall has fully employed those conscripted elements from GWTW to make war
against it. Her work, TWDG, reflects transformative value because it can provide
social benefit, by shedding light on an earlier work, and, in the process, creating a
new one. Campbell, 510 U.S. at 579, 114 S. Ct. at 1171.
While transformative use is not absolutely necessary for a finding of fair use,
. . . the more transformative the new work, the less will be the significance of other
factors. Id., 114 S. Ct. at 1171 (internal citations omitted). In the case of
TWDG, consideration of this factor certainly militates in favor of a finding of fair
use, and, informs our analysis of the other factors, particularly the fourth, as
discussed below .
ii. Nature of the Copyrighted Work
The second factor, the nature of the copyrighted work, recognizes that there
is a hierarchy of copyright protection in which original, creative works are afforded
greater protection than derivative works or factual compilations. Id. at 586, 114 S.
Ct. at 1175; Microdos, 115 F.3d at 1515 n.16. GWTW is undoubtedly entitled to
the greatest degree of protection as an original work of fiction. This factor is given
little weight in parody cases, however, since parodies almost invariably copy
publicly known, expressive works. Campbell, 510 U.S. at 586, 114 S. Ct. at 1175.
iii. Amount and Substantiality of the Portion Used
The third fair-use factor is the amount and substantiality of the portion used
in relation to the copyrighted work as a whole. § 107(3). It is at this point that
parody presents uniquely difficult problems for courts in the fair-use context, for
[p]arody's humor, or in any event its comment, necessarily springs from
recognizable allusion to its object through distorted imitation. . . . When parody
takes aim at a particular original work, the parody must be able to 'conjure up' at
least enough of that original to make the object of its critical wit recognizable.
Campbell, 510 U.S. at 588, 114 S. Ct. at 1176. Once enough has been taken to
conjure up the original in the minds of the readership, any further taking must
specifically serve the new work's parodic aims. Id., 114 S. Ct. at 1176.
GWTW is one of the most famous, popular, and enduring American novels
ever written. Given the fame of the work and its primary characters, SunTrust
argues that very little reference is required to conjure up GWTW. As we have
already indicated in our discussion of substantial similarity, TWDG appropriates a
substantial portion of the protected elements of GWTW. Houghton Mifflin argues
that TWDG takes nothing from GWTW that does not serve a parodic purpose, the
crux of the argument being that a large number of characters had to be taken from
GWTW because each represents a different ideal or stereotype that requires
commentary, and that the work as a whole could not be adequately commented
upon without revisiting substantial portions of the plot, including its most famous
scenes. Houghton Mifflin's argument is similar to that made by the defendants in
Harper & Row, who argued for expanding the doctrine of fair use to create what
amounts to a public figure exception to copyright. 471 U.S. at 560, 105 S. Ct. at
2230. To the extent Houghton Mifflin argues for extra latitude in copying from
GWTW because of its fame, the Supreme Court has squarely foreclosed any such
privilege:
It is fundamentally at odds with the scheme of copyright to accord lesser
rights in those works that are of greatest importance to the public. . . . To
propose that fair use be imposed whenever the social value of dissemination
outweighs any detriment to the artist, would be to propose depriving
copyright owners of their right in the property precisely when they encounter
those users who could afford to pay for it.
Id. at 559, 105 S. Ct. at 2229-30 (internal quotations and punctuation omitted).
Notably, however, the Court did not go so far as to grant well-known works a
special, higher copyright status either.
There are numerous instances in which TWDG appropriates elements of
GWTW and then transforms them for the purpose of commentary. TWDG uses
several of GWTW's most famous lines, but vests them with a completely new
significance. For example, the final lines of GWTW, Tomorrow, I'll think of some
way to get him back. After all, tomorrow is another day, are transformed in
TWDG into For all those we love for whom tomorrow will not be another day, we
send the sweet prayer of resting in peace. Another such recasting is Rhett's
famous quip to Scarlett as he left her in GWTW, My dear, I don't give a damn.
In TWDG, the repetition of this line (which is paraphrased) changes the reader's
perception of Rhett/R.B._and of black-white relations_because he has left
Scarlett/Other for Cynara, a former slave. Another clear instance in which a
memorable scene from GWTW is taken primarily for the purpose of parody is
Gerald/Planter's acquisition of Pork/Garlic. In GWTW, Gerald won Pork in a card
game with a man from St. Simons Island. In TWDG, Planter wins Garlic in a card
game with a man from St. Simons Island, but Garlic, far from being the passive
chattel in GWTW, is portrayed as being smarter than either white character by
orchestrating the outcome of the card game and determining his own fate. There are
many more such transformative uses of elements of GWTW in TWDG.
On the other hand, however, we are told that not all of TWDG's takings
from GWTW are clearly justified as commentary. We have already determined
that TWDG is a parody, but not every parody is a fair use. SunTrust contends that
TWDG, at least at the margins, takes more of the protected elements of GWTW
than was necessary to serve a parodic function.
For example, in a sworn declaration to the district court, Randall stated that
she needed to reference the scene from GWTW in which Jeems is given to the
Tarleton twins as a birthday present because she considers it perhaps the single
most repellent paragraph in Margaret Mitchell's novel: a black child given to two
white children as a birthday present . . . as if the buying and selling of children thus
had no moral significance. Clearly, such a scene is fair game for criticism.
However, in this instance, SunTrust argues that TWDG goes beyond commentary
on the occurrence itself, appropriating such nonrelevant details as the fact that the
twins had red hair and were killed at Gettysburg. There are several other scenes
from GWTW, such as the incident in which Scarlett threw a vase at Ashley while
Rhett was hidden on the couch, that are retold or alluded to without serving any
apparent parodic purpose. Similar taking of the descriptions of characters and the
minor details of their histories and interactions that arguably are not essential to the
parodic purpose of the work recur throughout: Melanie/Mealy Mouth is flat-chested,
Mammy is described as being like an elephant and is proud of Scarlett/Other's small
waist, Gerald/Planter had been run out of Ireland for committing murder and is an
excellent horseman, Bonnie/Precious wears a blue velvet riding habit and is afraid of
the dark, Belle/Beauty has red hair and lives in Atlanta, Ellen/Lady likes lemon
verbena, Carreen/Kareen ends up in a convent in Charleston. Clearly, TWDG uses
these idiosyncratic characters. But we must determine whether the use is fair. In
doing so, we are reminded that literary relevance is a highly subjective analysis ill-
suited for judicial inquiry. Thus we are presented with conflicting and opposing
arguments relative to the amount taken and whether it was too much or a necessary
amount.
The Supreme Court in Campbell did not require that parodists take the bare
minimum amount of copyright material necessary to conjure up the original work.
Parody must be able to conjure up at least enough of [the] original to make the
object of its critical wit recognizable. Campbell, 510 U.S. at 588, 114 S. Ct. at
1176 (emphasis added; quotations omitted). Parody frequently needs to be more
than a fleeting evocation of an original in order to make its humorous point. . . .
[E]ven more extensive use [than necessary to conjure up the original] would still be
fair use, provided the parody builds upon the original, using the original as a known
element of modern culture and contributing something new for humorous effect or
commentary. Elsmere Music, Inc. v. National Broad'g Co., 623 F.2d 252, 253 n. 1
(2d Cir. 1980).
A use does not necessarily become infringing the moment it does more than
simply conjure up another work. Rather, [o]nce enough has been taken to assure
identification, how much more is reasonable will depend, say, [1] on the extent to
which the [work's] overriding purpose and character is to parody the original or,
in contrast, [2] the likelihood that the parody may serve as a market substitute for
the original. Campbell, 510 U.S. at 588, 114 S. Ct. at 1176 (numeration and
emphasis added). As to the first point, it is manifest that TWDG's raison d'etre is
to parody GWTW.
(See footnote 27)
The second point indicates that any material we suspect is
extraneous to the parody is unlawful only if it negatively effects the potential
market for or value of the original copyright. Based upon this record at this
juncture, we cannot determine in any conclusive way whether 'the quantity and
value of the materials used' are reasonable in relation to the purpose of the
copying.' Id., 510 U.S. at 586, 114 S. Ct. at 1175 (quoting Folsom, 9 F.Cas. at
348).
iv. Effect on the Market Value of the Original
The final fair-use factor requires us to consider the effect that the publication
of TWDG will have on the market for or value of SunTrust's copyright in GWTW,
including the potential harm it may cause to the market for derivative works based
on GWTW. Campbell, 510 U.S. at 590, 114 S. Ct. at 1177. In addressing this
factor, we must consider not only the extent of market harm caused by the
particular actions of the alleged infringer, but also whether unrestricted and
widespread conduct of the sort engaged in by the defendant [] would result in a
substantially adverse impact on the potential market. Id., 114 S. Ct. at 1177
(quotations omitted). More specifically, the Campbell Court continued: [T]he
only harm to derivatives that need concern us . . . is the harm of market substitution.
The fact that a parody may impair the market for derivative uses by the very
effectiveness of its critical commentary is no more relevant under copyright that the
like threat to the original market. Id., 510 U.S. at 593, 114 S. Ct. at 1178.
(See footnote 28)
See
also Nimmer on Copyright, § 1305[A][4] at 181 (Vol. 4) (citing Consumers Union
of U.S., Inc. v. General Signal Corp., 724 F.2d 1044 (2nd Cir. 1993)) (The fourth
factor looks to adverse impact only by reason of usurpation of the demand for
plaintiff's work through defendant's copying of protectible expression from such
work.).
As for the potential market, SunTrust proffered evidence in the district court
of the value of its copyright in GWTW. Several derivative works of GWTW have
been authorized, including the famous movie of the same name and a book titled
Scarlett: The Sequel.
(See footnote 29)
GWTW and the derivative works based upon it have
generated millions of dollars for the copyright holders. SunTrust has negotiated an
agreement with St. Martin's Press permitting it to produce another derivative work
based on GWTW, a privilege for which St. Martin's paid well into seven figures.
Part of this agreement was that SunTrust would not authorize any other derivative
works prior to the publication of St. Martin's book.
An examination of the record, with its limited development as to relevant
market harm due to the preliminary injunction status of the case, discloses that
SunTrust focuses on the value of GWTW and its derivatives, but fails to address
and offers little evidence or argument to demonstrate that TWDG would supplant
demand for SunTrust's licensed derivatives. However, the Supreme Court and other
appeals courts have made clear that, particularly in cases of parody, evidence of
harm to the potential market for or value of the original copyright is crucial to a fair
use determination. [E]vidence about relevant markets is also crucial to the fair
use analysis. Campbell, 510 U.S. at 590, 114 S. Ct. at 1177. Evidence of
substantial harm to [a derivative market] would weigh against a finding of fair use.
Id. at 593, 114 S. Ct. at 1178. What is necessary is a showing by a preponderance
of the evidence that some meaningful likelihood of future harm exits. Sony, 464
U.S. at 451, 104 S. Ct. at 793 (emphasis in original).
(See footnote 30)
It should also be
remembered that with a work as old as GWTW on which the original copyright may
soon expire, creation of a derivative work only serves to protect that which is
original to the latter work and does not somehow extend the copyright in the
copyrightable elements of the original work. See § 103(b) (The copyright in a . . .
derivative work extends only to the material contributed by the author of such work,
as distinguished from the preexisting material employed in the work, and does not
imply any exclusive right in the preexisting material.).
In contrast, the evidence proffered in support of the fair use defense
(See footnote 31)
specifically and correctly focused on market substitution and demonstrates why
Randall's book is unlikely to displace sales of GWTW.
(See footnote 32)
Thus, we conclude,
based on the current record, that SunTrust's evidence falls far short of establishing
that TWDG or others like it will act as market substitutes for GWTW or will
significantly harm its derivatives. Accordingly, the fourth fair use factor weighs in
favor of TWDG.
c. Summary of the Merits
We reject the district court's conclusion that SunTrust has established its
likelihood of success on the merits. To the contrary, based upon our analysis of the
fair use factors we find, at this juncture, TWDG is entitled to a fair-use defense.
2. Irreparable Injury
The district court found that the second factor in the preliminary injunction
analysis, irreparable injury to SunTrust, could be presumed following a showing of
copyright infringement. SunTrust, 136 F.Supp.2d at 1384 (citing Sony Corp., 464
U.S. at 451-52, 104 S. Ct. at 793). As we have previously indicated, however, the
Supreme Court has made clear that there is no presumption of irreparable injury
when the alleged infringer has a bona fide fair-use defense. Campbell, 510 U.S. at
578 n.10, 114 S. Ct. at 1171 n.10.
In evaluating irreparable injury we consider only the potential harm that the
copyright holders of GWTW will suffer from the publication of TWDG itself.
SunTrust argues that it has incalculable millions of dollars riding on the appropriate
cultivation of the [GWTW] franchise, but it has failed to show, at least at this early
juncture in the case, how the publication of TWDG, a work that may have little to
no appeal to the fans of GWTW who comprise the logical market for its authorized
derivative works, will cause it irreparable injury. To the extent that SunTrust will
suffer monetary harm from the infringement of its copyright, harms that may be
remedied through the award of monetary damages are not considered irreparable.
Cunningham v. Adams, 808 F.2d 815, 821 (11th Cir. 1987).
Thus, a lack of irreparable injury to SunTrust, together with the First
Amendment concerns regarding comment and criticism and the likelihood that a fair
use defense will prevail, make injunctive relief improper and we need not address
the remaining factors, except to stress that the public interest is always served in
promoting First Amendment values and in preserving the public domain from
encroachment. Siegel v. Lepore, 234 F.3d 1163, 1176 (11th Cir. 2000).
Accordingly, we vacate the district court's injunction. We thereby substitute this
opinion for our brief order issued on 25 May 2001, reported at 252 F.3d 1165 (11th
Cir. 2001).
automatically granting injunctive relief when parodists are found to have gone
beyond the bounds of fair use. Campbell, 510 U.S. at 578 n.10, 114 S. Ct. at 1171
n.10 (quotations omitted). The Court cited to an article by Judge Pierre Leval of the
Second Circuit, in which he notes that injunctive relief is appropriate in the vast
majority of [copyright] cases because the infringements are simple piracy, but
cautions that such cases are worlds apart from many of those raising reasonable
contentions of fair use where there may be a strong public interest in the publication
of the secondary work and the copyright owner's interest may be adequately
protected by an award of damages for whatever infringement is found. Id. (quoting
Leval, Toward a Fair Use Standard, 103 Harv. L. Rev. 1105, 1132 (1990))
(internal punctuation omitted).
In this case, we have found that to the extent SunTrust suffers injury from
TWDG's putative infringement of its copyright in GWTW, such harm can
adequately be remedied through an award of monetary damages. Moreover, under
the present state of the record, it appears that a viable fair use defense is available.
Thus, the issuance of the injunction was at odds with the shared principles of the
First Amendment and the copyright law, acting as a prior restraint on speech
because the public had not had access to Randall's ideas or viewpoint in the form of
expression that she chose.
We REVERSE the judgment of the district court and REMAND the case for further proceedings consistent with this opinion.
will act as complements rather than substitutes. Moreover, the Mitchell estate
seems to have made a specific practice of refusing to license just the sort of
derivative use Randall has undertaken -- a factor that further undermines SunTrust's
copyright claim.
'Parodies and caricatures . . . are the most penetrating of criticisms.'
Cardtoons, L.C. v. Major League Baseball Players Ass'n, 95 F.3d 959, 972 (10th
Cir. 1996) (quoting Aldous Huxley, Point Counter Point, ch. 13 (1928)).
(See footnote 33)
Parody
has long enjoyed a secure niche in the critical tradition, from Aristophanes'
parodies of Aeschylus and Euripides to current lampoons of popular cartoon
characters. II Paul Goldstein, Copyright § 10.2.1.2 (2001). As such, parody is a
vital commodity in the marketplace of ideas, Cardtoons, 95 F.3d at 972, that
deserves substantial freedom -- both as entertainment and as a form of social and
literary criticism, Berlin v. E. C. Pubs., Inc., 329 F.2d 541, 545 (2d Cir. 1964).
When rendered in harmony with copyright law, parody enjoys significant value as
free speech under the First Amendment. Dr. Seuss Enterprises, L.P. v. Penguin
Books USA, Inc., 109 F.3d 1394, 1400 (9th Cir. 1997).
The Wind Done Gone's critical nature is clearer than that of other works
courts have found to be protected parodies. This case does not involve a pop song
that simply comment[s] on the naiveté of the original of an earlier day. Campbell,
510 U.S. at 583; see also Fisher v. Dees, 794 F.2d 432, 434 (9th Cir. 1986) (song
entitled When Sonny Sniffs Glue was protected parody of When Sunny Gets
Blue); Elsmere Music, Inc. v. National Broadcasting Co., Inc., 482 F.Supp. 741,
747 (S.D.N.Y.), aff'd, 623 F.2d 252 (2d Cir. 1980) (comedy sketch including song,
I Love Sodom, was protected parody of advertising jingle, I Love New York).
It does not involve an advertisement in which an actor apes a starlet's pose on a
magazine cover. See Leibovitz v. Paramount Pictures Corp., 137 F.3d 109, 115 (2d
Cir. 1998) ('[A] ridiculous image of a smirking, foolish-looking pregnant' Leslie
Nielsen was a protected parody of a 'serious portrayal of a beautiful woman
[Demi Moore] taking great pride in the majesty of her pregnant body.').
Rather, we deal here with a book that seeks to rebut a classic novel's
particular perspective on the Civil War and slavery.
(See footnote 34)
This fact does not, of course,
mean that we ought to grant Randall and Houghton Mifflin any special deference in
making a fair use determination; the copyright laws apply equally to all expressive
content, whether we might deem it of trifling import or utmost gravity. Cf. Bleistein
v. Donaldson Lithographing Co., 188 U.S. 239, 251 (1903) (Holmes, J.) (It would
be a dangerous undertaking for persons trained only to the law to constitute
themselves final judges of the worth of [a work], outside of the narrowest and most
obvious limits. At the one extreme some works of genius would be sure to miss
appreciation. Their very novelty would make them repulsive until the public had
learned the new language in which their author spoke.). The two books' shared
subject matter simply helps demonstrate how The Wind Done Gone's critical
character is more pronounced than many protected parodies. Our analysis might
have been different had we faced a conflict between two literary worldviews of less
perfect polarity, for example, or two works that differed over a matter of less sharp
controversy. As Judge Birch explains in detail, though, The Wind Done Gone's
plain object is to make war on Gone with the Wind's specific outlook -- on a topic
that itself tends to elicit no small comment and criticism.
In light of this, Appellee SunTrust's forecasts of a seismic shift in the
publishing industry are premature and unfounded. First, our decision today does no
more than explain our rationale for overturning the district court's grant of a
preliminary injunction; while I am skeptical, for the reasons I explain here, that
SunTrust will prevail below, I remind the parties that a full trial on the merits has yet
to occur. Second, this opinion will not somehow compel courts to grant the fair use
defense to every book that retells a copyrighted story from another character's point
of view. Fair use adjudication requires case-by-case analysis and eschews bright-
line rules. See Campbell, 510 U.S. at 577. After this case, as before it, only those
works whose parodic character may reasonably be perceived and that survive the
four-prong fair use analysis will be protected as parody. Id. at 582. Had Randall
chosen to write The Wind Done Gone from the point of view of one of Mitchell's
original characters, for example, and done no more than put a new gloss on the
familiar tale without criticizing or commenting on its fundamental theme and spirit,
Houghton Mifflin's case would have been much tougher.
(See footnote 35)
The Wind Done Gone's criticism of Gone With the Wind's substance is
plain, but whether it parodies Mitchell's style is less clear. This does not weigh
against Houghton Mifflin's parody defense, however, because a work need only
exhibit critical bearing on the substance or style of the original composition.
Campbell, 510 U.S. at 580 (emphasis added). In any event, Randall's style is a
marked departure from Mitchell's. The Wind Done Gone takes diary form; its
chronology is disjunctive and its language often earthy. It is told from an
introspective first-person point of view. Mitchell's story, by comparison, is a linear
third-person narrative, epic in scope and staid in tone. Perhaps Randall based her
story on the perceptions of a single character to underscore the inherent subjectivity
of storytelling, in contrast to Mitchell's disembodied, objective narrator. To
whatever extent it parodies Mitchell's authorial voice, Randall's narrative style
furthers her overall parodic purpose by reinforcing the notion that The Wind Done
Gone casts Gone With the Wind's story and characters in a new, and contrary, light.
The district court recognized that the two works . . . present polar
viewpoints, yet concluded that The Wind Done Gone recreates the same fictional
world, described in the same way and inhabited by the same people, who are doing
the same things. 136 F.Supp.2d at 1369. Of course, both works are set in the
antebellum South, but The Wind Done Gone creates an alter universe described in a
wholly different style, and inhabited by shrewd slaves who manipulate incompetent
masters and free blacks who thrive independent of the white plantation system. Like
a political, thematic, and stylistic negative, The Wind Done Gone inverts Gone With
the Wind's portrait of race relations of the place and era.
Given this stark contrast, I would go further than Judge Birch in stressing the
transformative nature of Randall's book. I agree with, and therefore will not echo,
Judge Birch's analysis of the specific transformative uses Randall makes of
elements of Gone With the Wind. I arrive, however, at a less qualified conclusion
on the matter. Far from being a double-edged sword that only militates in favor
of a finding of fair use, the issue of transformation cuts decisively in Houghton
Mifflin's favor, in my view. Even a cursory comparison of the two texts reveals
that The Wind Done Gone profoundly alters what it borrows -- indeed, at times
beyond recognition. To catch some of Randall's allusions, even a reader familiar
with Mitchell's work may need to refer to the original text. To create a successful
parody, an author must keep certain elements constant while inverting or
exaggerating other variables; [g]enerally there is an incongruity between the
borrowed and the new elements. Richard A. Posner, When Is Parody Fair Use?
21 J. Leg. Stud. 67, 68 (1992). In Randall's book, the ratio of the former to the
latter is very low, and the incongruity between them wide.
Next, it is worth emphasizing that the limited record at this preliminary stage
in no way supports the district court's finding that The Wind Done Gone might act
as a market substitute for Gone with the Wind or its licensed derivatives. Turning to
the affidavits submitted on behalf of Houghton Mifflin, one expert said that The
Wind Done Gone is unlikely to have any discernible effect on the market for sequels
other than, possibly, through its criticism. . . . Audience members with a deep
affection for Gone with the Wind are unlikely to be drawn to The Wind Done Gone,
. . . [which] appeals to a distinctly contemporary sensibility for fresh, irreverent,
realistic works of fiction that turn old ideas upside down. Another testified that
The Wind Done Gone will not appeal to any desire among readers for a sequel to
Gone With the Wind . . . [because] [t]he target audiences for the two books are . . .
very different.
SunTrust's evidence for the contrary view is likewise incomplete. Experts
submitted affidavits stating that The Wind Done Gone is a parasitical work [that]
has little merit [and] . . . exist[s] solely to exploit Gone With the Wind, and that
Randall's book would seriously taint the original. One expert stressed the need
of the representatives of Margaret Mitchell's Gone With the Wind to protect the
reputation of their copyright. Another said that The Wind Done Gone will
capitalize on and thus benefit from the resulting notoriety that will accrue to it as
the reading public makes the inevitable comparison to Gone With the Wind which
has become and remains a popular classic since its publication. Still others
reminded the district court that SunTrust has inked multi-million dollar deals for its
licensed derivatives.
None of these statements provides any explanation or data regarding how
Randall's book or others like it would act as substitutes for Gone With the Wind
derivatives. Capitaliz[ing] on or benefit[ting] from . . . [a book's] notoriety
does not always amount to harmful substitution; if it did, no commercial parody,
which by definition seeks to profit from another work's notoriety by mocking it,
would be permitted. See Campbell, 510 U.S. at 584 (rejecting the notion that
commercial uses are presumed unfair).
Furthermore, it is not copyright's job to protect the reputation of a work or
guard it from taint in any sense except an economic one -- specifically, where
substitution occurs. See Campbell, 510 U.S. at 592 (describing the distinction
between potentially remediable displacement and unremediable disparagement);
Zacchini v. Scripps-Howard Broadcasting Co., 433 U.S. 562, 573 (1977) ([T]he
goals of patent and copyright law . . . focus[] on the right of the individual to reap
the reward of his endeavors and hav[e] little to do with protecting feelings or
reputation.); Arnstein v. Porter, 154 F.2d 464, 473 (2d Cir. 1946) (stating that a
copyright holder's legally protected interest is not, as such, his reputation as a
musician but his interest in the potential financial returns from his compositions
which derive from the lay public's approbation of his efforts); cf. Fisher, 794 F.2d
at 440 (rejecting a copyright holder's claims of defamation and disparagement in
the context of a parodic fair use). Since Randall's book seeks to upend Mitchell's
view of the antebellum South, there is no great risk that readers will confuse it for
part of Gone With the Wind's ongoing saga. No one disputes that SunTrust's
derivative rights are worth millions, but that fact tells nothing of how an anti-Gone
With the Wind screed would act as a market substitute.
On remand, I believe the district court should remain mindful that market
harm cannot be established simply by a showing that the original's sales have
suffered or may do so. Rather, the market harm factor requires proof that The Wind
Done Gone has usurped demand for Gone With the Wind, see Campbell, 510 U.S.
at 592, or that widespread conduct of the sort engaged in by Randall
(See footnote 36)
would harm
SunTrust's derivative markets, see id. at 590. [I]f the secondary work harms the
market for the original through criticism or parody, rather than by offering a market
substitute for the original that supersedes it, 'it does not produce a harm cognizable
under the Copyright Act.' On Davis v. The Gap, Inc., 246 F.3d 152, 175 (2d Cir.
2001) (quoting Campbell, 510 U.S. at 592). [T]he role of the courts is to
distinguish between biting criticism that merely suppresses demand and copyright
infringement, which usurps [the market for the original]. Campbell, 510 U.S. at
592 (internal quotation marks omitted) (brackets omitted). In cases where it is
difficult to determine whence the harm flows . . . the other fair use factors may
provide some indicia of the likely source of the harm. A work whose overriding
purpose and character is parodic and whose borrowing is slight in relation to its
parody will be far less likely to cause cognizable harm than a work with little
parodic content and much copying. Id. at 593 n.24.
It is even possible that The Wind Done Gone will act as a complement to,
rather than a substitute for, Gone With the Wind and its potential derivatives.
Readers of Randall's book may want to refresh their recollections of the original.
(See footnote 37)
It is not far-fetched to predict that sales of Gone With the Wind have grown since
The Wind Done Gone's publication. A more fully developed record on the subject
will no doubt aid the district court's analysis.
Finally, I wish to highlight a factor significant to the market harm inquiry:
SunTrust's apparent practice of placing certain editorial restrictions on the authors
of its licensed derivatives. Pat Conroy, the author of The Prince of Tides and Beach
Music, among other novels, attested to the sorts of constraints the Mitchell estate
sought to place on him as a potential author of a sequel to Gone With the Wind:
I wrote an introduction to the sixtieth anniversary edition of [Gone
With the Wind] . . . After the appearance of my introduction[,]
which included my own deep appreciation for the artistry of
GWTW, the estate of Margaret Mitchell contacted my agent, Julian
Bach, in New York and asked if I would be interested in doing a
sequel to GWTW. . . . When Julian Bach called me, he issued a
strange decree from the estate that Julian said was non-negotiable. .
. . He said, You're not going to like this, but the estate will
require you to sign a pledge that says you will under no
circumstances write anything about miscegenation or
homosexuality.
(See footnote 38)
In light of this, the The Wind Done Gone's transformation of Ashley Wilkes into a homosexual, its depiction of interracial sex, and its multiple mulatto characters take on additional relevance. The Supreme Court in Campbell explained
how a copyright holder's reluctance to license certain kinds of derivatives affects
the market harm analysis:
The market for potential derivative uses includes only those that
creators of original works would in general develop or license
others to develop. Yet the unlikelihood that creators of imaginative
works will license critical reviews or lampoons of their own
productions removes such uses from the very notion of a potential
licensing market.
510 U.S. at 592.
however, it may not now invoke copyright to further that goal. Of course, SunTrust
can choose to license its derivatives however it wishes and insist that those
derivatives remain free of content it deems disreputable. SunTrust may be vigilant
of Gone With the Wind's public image -- but it may not use copyright to shield
Gone With the Wind from unwelcome comment, a policy that would extend
intellectual property protection into the precincts of censorship, in Pat Conroy's
words. Because the social good is served by increasing the supply of criticism --
and thus, potentially, of truth -- creators of original works cannot be given the power
to block the dissemination of critical derivative works. Leibovitz, 137 F.3d at 115
n.3. Copyright law is not designed to stifle critics. Destructive parodies play an
important role in social and literary criticism and thus merit protection even though
they may discourage or discredit an original author. Fisher, 794 F.2d at 438
(citation and internal quotation marks omitted).
Other courts have echoed the principle that 'only traditional, reasonable, or
likely to be developed markets' ought to be considered when assessing the effect
of a challenged use upon a potential market. Ringgold v. Black Entm't Television,
Inc., 126 F.3d 70, 81 (2d Cir. 1997) (citation omitted); see also Nunez v. Caribbean
Int'l News Corp., 235 F.3d 18, 25 (1st Cir. 2000); Infinity Broadcast Corp. v.
Kirkwood, 150 F.3d 104, 111 (2d Cir. 1998). In the cases where we have found
the fourth factor to favor a defendant, the defendant's work filled a market niche
that the plaintiff simply had no interest in occupying. Twin Peaks Prods., Inc. v.
Publications Int'l, Ltd., 996 F.2d 1366, 1377 (2d Cir. 1993).
The preliminary record does not indicate why SunTrust sought to impose
editorial restrictions on Conroy. To the extent that SunTrust may have done so to
preserve Gone With the Wind's reputation, or protect its story from taint,
The law grants copyright holders a powerful monopoly in their expressive
works. It should not also afford them windfall damages for the publication of the
sorts of works that they themselves would never publish, or worse, grant them a
power of indirect censorship.
Finally, Appellee warns that our decision in this case will prompt an endless
parade of litigants to test the boundaries of the rule we establish here. This is at least
possible, but such a phenomenon is not exactly alien to our common law tradition.
And to the extent authors and publishers will be encouraged to experiment with new
and different forms of storytelling, copyright's fundamental purpose, [t]o promote
the Progress of Science and useful Arts, will have been served. U.S. Const. Art. 1,
§ 8, cl. 8.
Footnote: 1
All my resistance to your restrictions _ all of them, and I include
miscegenation, homosexuality, the rights of review and approval _ I do
because they begin inching toward the precincts of censorship.
Fax to Owen Laster from Pat Conroy, Nov. 10, 1998.