(See the preliminary per curiam opinion filed May 25, 2001)
(See the majority opinion by Judge Birch.)
SUNTRUST BANK, as Trustee of the Stephens Mitchell Trusts f/b/o Eugene
Mitchell and Joseph Reynolds Mitchell, Plaintiff-Appellee,
Before BIRCH, MARCUS and WOOD [FN*], Circuit Judges.
MARCUS, Circuit Judge, specially concurring:
I concur in Judge Birch's thoughtful and thorough opinion but write separately to emphasize that, on this limited record, Suntrust has fallen well short of establishing a likelihood of success on its copyright infringement claim. I stress three points. First, the district court erred by finding that the critical or parodic element of The Wind Done Gone is anything but clear-cut. Far from amounting to "unabated piracy," 136 F.Supp.2d 1357, 1369 (N.D.Ga.2001), The Wind Done Gone is unequivocally parody, as both Judge Birch and the Supreme Court in Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 114 S.Ct. 1164, 127 L.Ed.2d 500 (1994), define that term. Indeed, the book is critical by constitution, its main aim being to shatter Gone With the Wind 's window on life in the antebellum and Civil War South. Second, in service of this parodic design, Randall radically reshapes what she borrows from Mitchell. I would thus go even further than Judge Birch in underscoring the transformative nature of Randall's book; the "purpose and nature" prong of the fair use analysis is not a close call, in my view. Third, the preliminary record, if anything, suggests that The Wind Done Gone will not act as a substitute for Mitchell's original. What little evidence we have before us indicates that these two books aim at different readerships; to the extent that there is any overlap between these respective markets, further factfinding may well reveal that these two books 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)). [FN1] 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, 114 S.Ct. at 1173; 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.' ").
*19 Rather, we deal here with a book that seeks to rebut a classic novel's particular perspective on the Civil War and slavery. [FN2] 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, 23 S.Ct. 298, 47 L.Ed. 460 (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, 114 S.Ct. at 1170. 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, 114 S.Ct. at 1173. 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. [FN3]
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, 114 S.Ct. at 1172 (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.
*20 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."
*21 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, 114 S.Ct. at 1174 (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, 114 S.Ct. at 1178 (describing the "distinction between potentially remediable displacement and unremediable disparagement"); Zacchini v. Scripps-Howard Broadcasting Co., 433 U.S. 562, 573, 97 S.Ct. 2849, 53 L.Ed.2d 965 (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, 114 S.Ct. at 1178, or that widespread conduct of the sort engaged in by Randall [FN4] would harm Suntrust's derivative markets, see id. at 590, 114 S.Ct. at 1177. "[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, 114 S.Ct. 1164). "[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, 114 S.Ct. at 1178 (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, 114 S.Ct. at 1178 n. 24.
*22 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. [FN5] 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." [FN6]
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:
*23 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, 114 S.Ct. at 1178.
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," 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).
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.
FN* Honorable Harlington Wood, Jr., U.S. Circuit Judge for the Seventh Circuit, sitting by designation.
FN1. Ernest Hemingway did not share Huxley's enthusiasm for the form: "The parody is the last refuge of the frustrated writer. Parodies are what you write when you are associate editor of the Harvard Lampoon. The greater the work of literature, the easier the parody. The step up from writing parodies is writing on the wall above the urinal." Paul Hirshson, "Names and Faces," The Boston Globe, July 22, 1989 at 7. Whatever parody's aesthetic value, copyright law has tended to agree with Huxley as to its social utility.
FN2. I need not expand upon Judge Birch's excellent explanation of the specific ways in which The Wind Done Gone criticizes or comments on aspects and characters of Gone With the Wind.
FN3. It is hazardous to speculate too much about the legality of various hypothetical parodies, given the many forms literary parody may take, and the levels of sophistication it may reach. See Margaret A. Rose, Parody: Ancient, Modern, and Post-Modern 36-38 (1993) (describing an array of parodic literary techniques and "signals"). The irony and self-awareness common in contemporary literature, in particular, may one day pose difficulties for the fair use doctrine. It is not hard to imagine a copyrighted story that parodies itself by design, or an author who makes a career out of parodying his own work in each subsequent one. (Vladimir Nabokov, among others, hinted at the potential for such practices. See, e.g., Vladimir Nabokov, Pale Fire (1962) (a novel consisting of a poem and substantial prose commentary on that poem).) Suppose that this hypothetical author in turn becomes the target of parody by another. Could the second author's work be said to usurp demand for the original author's self-parody? Here, we face a much simpler problem: Gone With the Wind lacks any apparent self-directed irony, and Randall's attack on it is just as straight-forward.
FN4. The fourth fair use factor "requires courts to 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' for the original." Campbell, 510 U.S. at 590, 114 S.Ct. at 1177 (citation omitted). Here, "conduct of the sort engaged in by the defendant" would include only those parodies that make a similar frontal attack on Gone With the Wind and that, like Randall's book, radically transform elements borrowed from the original.
FN5. As Jane Chelius attested: "It is easier to imagine a buyer of The Wind Done Gone wanting to read Gone With the Wind to find a reference point, than it is to imagine a reader who loved Gone With the Wind wanting to read a book such as The Wind Done Gone that parodies and puts it in a critical light."
FN6. In a piece of documentary evidence submitted by Suntrust (Thomas Hal Clarke, attorney and member of the committee established by the trust instruments to direct the plaintiff Suntrust Bank), Conroy again indicates that the Mitchell Estate was loath to license a derivative work that contained such elements:
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.
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