U.S. 11th Circuit Court of Appeals Reports

SUNTRUST BANK v. HOUGHTON MIFFLIN COMPANY, 268 F.3d 1257 (11th Cir. 2001)

SUNTRUST BANK, as Trustee of the Stephen Mitchell trusts f.b.o.

Eugene Muse Mitchell and Joseph Reynolds Mitchell, Plaintiff-Appellee,

v. HOUGHTON MIFFLIN COMPANY, Defendant-Appellant.

No. 01-12200

United States Court of Appeals, Eleventh Circuit

DECIDED October 10, 2001

Joseph M. Beck, Miles J. Alexander, Jerre Bailey Swann, Kilpatrick Stockton & Cody, Atlanta, GA, for Defendant-Appellant.

Richard Kurnit, New York City, William B. Smith, Ralph R. Morrison, Anne Moody Johnson, Jones, Day, Reavis & Pogue, Atlanta, GA, for Plaintiff-Appellee.

Leon Friedman, New York City, for Pan American Ctr., American Booksellers Foundation for Freedom of Exp., Freedom to Read Foundation, Washington Lawyers' for the Arts, The First Amendment Project and National Coalition Against Censorship, Amicus Curiae.

E. Edward Bruce, Covington & Burling, Washington, DC, for Microsoft Corp., Amicus Curiae.

Jed Rubenfeld, Yale Law School, New Haven, CT, for Georgia First Amendment Foundation, Amicus Curiae.

Hollie Manheimer, Decatur, GA, for Amicus Curiae.

Appeal from the United States District Court for the Northern District of Georgia. D.C. Docket No. 01-00701-CV-CAP-1.

Before BIRCH, MARCUS and WOOD[fn*], Circuit Judges.

[fn*] Honorable Harlington Wood, Jr., U.S. Circuit Judge for the Seventh Circuit, sitting by designation.

BIRCH, Circuit Judge:

In this opinion, we decide whether publication of The Wind Done Gone ("TWDG"), a fictional work admittedly based on Margaret Mitchell's Gone With the Wind ("GWTW"), should be enjoined from publication based on alleged copyright violations. The district court granted a preliminary injunction against publication of TWDG because it found that Plaintiff-Appellee SunTrust Bank ("SunTrust") met the four-part test governing preliminary injunctions. We VACATE the injunction and REMAND for consideration of the remaining claims.

I. BACKGROUND

A. Procedural History

SunTrust is the trustee of the Mitchell Trust, which holds the copyright in GWTW. Since its publication in 1936, GWTW has become one of the best-selling books in the world, second in sales only to the Bible. The Mitchell Trust has actively managed the copyright, authorizing derivative works and a variety of commercial items. It has entered into a contract authorizing, under specified conditions, a second sequel to GWTW to be published by St. Martin's Press. The Mitchell Trust maintains the copyright in all of the derivative works as well. See 17 U.S.C. § 103.[fn1]

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,[fn2] 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).

II. DISCUSSION

Our primary focus at this stage of the case is on the appropriateness of the injunctive relief granted by the district court. In our analysis, we must evaluate the merits of SunTrust's copyright infringement claim, including Houghton Mifflin's affirmative defense of fair use.[fn3] As we assess the fair-use defense, we examine to what extent a critic may use a work to communicate her criticism of the work without infringing the copyright in that work. To approach these issues in the proper framework, we should initially review the history of the Constitution's Copyright Clause and understand its relationship to the First Amendment.

A. History and Development of the Copyright Clause

The Copyright Clause finds its roots in England, where, in 1710, the Statute of Anne "was designed to destroy the booksellers' monopoly of the booktrade and 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.[fn4] The Framers of the U.S. Constitution relied on this statute when drafting the Copyright Clause of our Constitution,[fn5] which reads,
The Congress shall have Power . . . to promote the Progress of Science . . . by securing for limited Times to Authors . . . the exclusive Right to their respective Writings. . . .

U.S. Const. art. 1, § 8, cl. 8. Congress directly transferred the principles from the Statute of Anne into the copyright law of the United States in 1783, first through a recommendation to the states to enact similar copyright laws,[fn6] and then in 1790, with the passage of the first American federal copyright statute.[fn7]

The Copyright Clause was intended "to be the engine of free expression." Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 558, 105 S.Ct. 2218, 2229 (1985). To that end, copyright laws have been enacted achieve the three main goals: the promotion of learning, the protection of the public domain, and the granting of an exclusive right to the author.

1. Promotion of Learning

In the United States, copyright has always been used to promote learning by guarding against censorship.[fn8] Throughout the nineteenth century, the copyright in literature was limited to the right "to publish and vend books." Patterson, at 383. The term "copy" was interpreted literally; an author had the right only to prevent 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).[fn9] 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 Paqge 1262 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.[fn10]

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 ?Äî 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,[fn11] while intuitively in conflict,[fn12] 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.[fn13] 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 ¬ß 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 ¬ß 1-10[C][2] ("In general, the democratic dialogue ?Äî a self-governing people's participation in the marketplace of ideas ?Äî 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 ?Äî the public already has access to the idea or the concepts.[fn14] 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.[fn15] 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,[fn16] 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.").[fn17]

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).[fn18]

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.[fn19]

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[fn20] 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 ?Äî

(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.

¬ß 107.[fn21] 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.[fn22] In light of the discussion in ¬ß¬ß IIA and B, one of the most important purposes to consider is the free flow of ideas ?Äî 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.[fn23] 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.[fn24] 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 ?Äî 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 ?Äî 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[fn25], 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.[fn26] 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 ?Äî whether depth, wit, cunning, beauty, strength, or courage ?Äî 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