The Eleventh Circuit Court of Appeals recently handed down a decision in Suntrust Bank vs. Houghton Mifflin, better known as “The Wind Done Gone” case.  The decision represents significant issues regarding the nature of the defense of “fair use” under the United States Copyright Law.

        On the other hand, in 1998 the Second Circuit Court of Appeals handed down a decision in Castle Rock Entertainment, Inc. vs. Carol Publishing Group, Inc. and Golub, better known as the “Seinfeld” case, that went in the opposite direction from The Wind Done Gone case.

        The moral: even among the federal courts, there is conflict in the decisions and there is simply no realistic way anyone can say, in advance, whether something is going to be held to be fair use or not.  Given that complete unknown, any party that does not seek to license, where possible, runs significant legal risks.  Read “Screen Shot Liability for Computer Book Authors” for an examination of the benefits of licensing.

The Cases

        For those not familiar with the Wind Done Gone case, the plaintiff Suntrust is the trustee of the estate of Margaret Mitchell and thus represents the rights in and to “Gone With The Wind.”  The defendant is the publisher of “The Wind Done Gone,” which work, including scenes and characters, was admittedly taken from “Gone With The Wind.”  For the sake of clarity, this work is referred to as “GWTW” and “The Wind Done Gone” will be referred to as “TWDG,” which is how the works are referred to in the case.

        In the Seinfeld matter, one of the defendants was a writer who created “The Seinfeld Aptitude Test” and published it as a book.  It contained extensive references to the successful television show and then posed “trivia” questions based on episodes of that show.

The Injunction

        Initially, it is worth noting that the decision in TWDG case was on appeal from the granting of an injunction against the publication of The Second Work.  This means that the defendant was not allowed to publish The Second Work.  Such remedies are very rare since they are considered to be “prior restraints” on the exercise of First Amendment rights.  Generally, parties are left to sue and claim damages and injunctive relief *after* they prevail.  Thus, the Eleventh Circuit vacated the injunction and sent the case back for further issues.

The Issues

        The Court in TWDG case stated:

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, 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.
        The Court in the Seinfeld case phrased the issues presented by the case thusly:
This case presents two interesting and somewhat novel issues of copyright law. The first is whether The Seinfeld Aptitude Test , a trivia quiz book devoted exclusively to testing its readers’ recollection of scenes and events from the fictional television series Seinfeld , takes sufficient protected expression from the original, as evidenced by the book’s substantial similarity to the television series, such that, in the absence of any defenses, the book would infringe the copyright in Seinfeld . The second is whether The Seinfeld Aptitude Test (also referred to as The SAT ) constitutes fair use of the Seinfeld television series.
        Seem pretty much the same, do they not?  Stay tuned for differences however.

Substantial Similarity Issues

        The Court in TWDG case reviewed both works to determine if TWDG work was “substantially similar” to GWTW, one of the elements of infringement.

        The Court stated:

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.
        The Court found that indeed TWDG copied substantial scenes and characters directly from GWTW.  It rejected the defendant’s argument that because the characters and scenes were in fact taken in opposite direction in TWDG as compared to GWTW that such different spin made the use not substantially similar.  The Court said that the characters and scenes were the same irrespective of how they were repurposed in TWDG.

        And indeed, citing many similar legal principles, the Seinfeld Court held that the author had indeed copied substantial material from the protected elements of the series including characters and scenes.

        It stated:

As to Ringgold’s qualitative component, each SAT trivia question is based directly upon original, protectable expression in Seinfeld . As noted by the district court, The SAT did not copy from Seinfeld unprotected facts, but, rather, creative expression. ….. Rather, The SAT tests whether the reader knows that the character Jerry places a Pez dispenser on Elaine’s leg during a piano recital, that Kramer enjoys going to the airport because he’s hypnotized by the baggage carousels, and that Jerry, opining on how to identify a virgin, said “It’s not like spotting a toupee.” Because these characters and events spring from the imagination of Seinfeld ‘s authors, The SAT plainly copies copyrightable, creative expression.
Fair Use Issues

        I have written extensively about fair use and you can read these articles on my site under the link “Articles for Writers and Publishers” (see below).  I thus assume for the sake of this article that you have read those articles or are familiar with the standards courts use to decide cases in which this defense is raised.

        The defendants argued that TWDG was protected under the fair use doctrine since it was a parody of GWTW.

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. [Emphasis added]
        The Court stated:
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. 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.
        Both Courts reviewed the so-called 4 purpose test regarding fair use.

        Nature and Purpose of the Work:  TWDG was clearly a commercial venture but commercialism, in and of itself, does not rule out the defense of fair use if other elements are present.

However, TWDG’s for-profit status is strongly overshadowed and outweighed in view of its highly transformative use of GWTC’s [sic] 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.
        Similarly, the Seinfeld court held that the Seinfeld Trivia Test was also commercial but, like TWDG, that fact alone did not prevent a finding of fair use.

        The single most important difference between the 2 cases comes in the issue of whether the Courts considered the later work to be “transformative” of the earlier work.  A later work is “transformative” of an earlier work when it uses that earlier work in a manner that gives new meaning to that earlier work i.e. it enables us to see the earlier work in a different manner than might have been originally intended.  This is directly opposite of the concept that if the later work merely replaces the original work, i.e. does not change or transform it, such factors weigh against a finding of fair use.

        The Seinfeld Court defined the issue thusly:

… whether the allegedly infringing work “merely supersedes” the original work “ or instead adds something new, with a further purpose or different character, altering the first with new . . . meaning or message,” in other words “whether and to what extent the new work is ‘transformative.’” Id. at 579 (quoting Leval at 1111). If “the secondary use adds value to the original--if [copyrightable expression in the original work] is used as raw material, transformed in the creation of new information, new aesthetics, new insights and understandings--this is the very type of activity that the fair use doctrine intends to protect for the enrichment of society.” Leval at 1111.
        The TWDG Court stated:
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, and generally sets out to demystify GWTW and strip the romanticism from Mitchell’s specific account of this period of our history.
        While stating the same general principles, however, the Seinfeld Court found just the opposite:
Any transformative purpose possessed by The SAT is slight to non-existent. We reject the argument that The SAT was created to educate Seinfeld viewers or to criticize, “expose,” or otherwise comment upon Seinfeld . The SAT’s  purpose, as evidenced definitively by the statements of the book’s creators and by the book itself, is to repackage Seinfeld to entertain Seinfeld viewers. The SAT’s back cover makes no mention of exposing Seinfeld to its readers, for example, as a pitiably vacuous reflection of a puerile and pervasive television culture, but rather urges SAT readers to “open this book to satisfy [their] between-episode [ Seinfeld ] cravings.” Golub, The SAT’s author, described the trivia quiz book not as a commentary or a Seinfeld research tool, but as an effort to “capture Seinfeld’s flavor in quiz book fashion.” Finally, even viewing The SAT in the light most favorable to defendants, we find scant reason to conclude that this trivia quiz book seeks to educate, criticize, parody, comment, report upon, or research Seinfeld , or otherwise serve a transformative purpose.   The book does not contain commentary or analysis about Seinfeld , nor does it suggest how The SAT can be used to research Seinfeld ; rather, the book simply poses trivia questions. The SAT’s plain purpose, therefore, is not to expose Seinfeld’s “nothingness,” but to satiate Seinfeld fans’ passion for the “nothingness” that Seinfeld has elevated into the realm of protectable creative expression.
        The Nature of the Copyrighted Work:  the TWDG Court made quick work of this because having found that TWDG was a parody and transformative, the other factors including this one are given less weight in determining fair use.  On the other hand, the Seinfeld Court found in favor of the plaintiff, Castle Rock, on this same point, in part because they did not find the SAT work to be transformative.

        Amount and Substantiality of the Portion Used:  the TWDG Court found that by its very nature, a parody must use the underlying work.

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.
        The Court then discussed how much of GWTW could be taken under this doctrine and when such taking stops being necessary for the parody and then becomes an infringement.  In such a consideration, the market displacement issue, as opposed to the transformative issue, discussed above, are integrally intertwined.
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. 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).
        However, the Seinfeld Court ruled in the opposite manner, again in part because the Court did not consider the later work transformative of the earlier one.
In the instant case, it could be argued that The SAT could not expose Seinfeld’s “nothingness” without repeated, indeed exhaustive examples deconstructing Seinfeld’s humor, thereby emphasizing Seinfeld’s meaninglessness to The SAT’s readers. That The SAT posed as many as 643 trivia questions to make this rather straightforward point, however, suggests that The SAT’s purpose was entertainment, not commentary. Such an argument has not been advanced on appeal, but if it had been, it would not disturb our conclusion that, under any fair reading, The SAT does not serve a critical or otherwise transformative purpose. Accordingly, the third factor weighs against fair use.
        Effect on the Market Value of the Original:  Included within this discussion is not only the market impact TWDG might have on GWTW as a book but on any derivative works based on GWTW (movies etc.)  If the second work, TWDG merely replaces the market for the original GWTW, then such a factor will weigh against a finding of fair use.  Because the case was decided on the basis of an injunction in which the record is not as thorough as after a full trial, the Court found that the plaintiff had not produced sufficient evidence to support its claim of market displacement.

        The Seinfeld Court stated:

In considering the fourth factor, our concern is not whether the secondary use suppresses or even destroys the market for the original work or its potential derivatives, but whether the secondary use usurps or substitutes for the market of the original work.
        The Seinfeld Court then found in favor of the plaintiffs on this point.  It said:
Unlike parody, criticism, scholarship, news reporting, or other transformative uses, The SAT substitutes for a derivative market that a television program copyright owner such as Castle Rock “would in general develop or license others to develop.”

        As in all fair use cases, while the 4 factors test is used, in truth all of the factors are related to all the other factors.  Often the decision is based on the gestalt of the situation, i.e. the court looks at the entirety of the relationship of the 2 works.  In all instances, each case is to be decided on its own facts and while the principles of law seem clearly stated, the application of those principles to the given case can and often does produce widely varying results.

        In all instances, licensing from the original work is the best approach.  In instances where such licensing is not possible, it is often a “roll of the dice” as to how a court will decide.

© 2001 Ivan Hoffman


This article is not intended as legal advice and is not legal advice.  This article is intended to provide only general, non-specific legal information.  The specific facts that apply to your matter may make the outcome different than would be anticipated by you.  This article is based on United States law.  You should consult with an attorney familiar with the issues and the laws of your country.  This article does not create any attorney client relationship.
No portion of this article may be copied, retransmitted, reposted, duplicated or otherwise used without the express written approval of the author.



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