Recent litigation between the owner of copyrights in the book and movie Gone With the Wind and the publisher and author of The Wind Done Gone has surfaced a number of important U.S. copyright law and First Amendment issues for which there was little precedent. Among them are the following:

  1. the potential conflict between the U.S. Copyright Act, 17 U.S.C. 101 et. seq., with its provision for a preliminary injunction restraining distribution of an infringing literary work, and the First Amendment, which forbids laws restraining "speech," traditionally defined to include literary works;
  2. the meaning of the "transformative use" defense to copyright infringement in a case involving literary works; and
  3. whether the "parody" defense, previously applied only in music and photography cases, extends to the use of an entire novel and motion picture.

The Eleventh Circuit Court of Appeals has now provided some guidance with respect to these issues. See SunTrust Bank v. Houghton Mifflin, 252 F.3d 1165 (11th Cir. 2001) (vacating an injunction barring publication of The Wind Done Gone as a prior restraint of speech in violation of the First Amendment of the U.S. Constitution); and SunTrust Bank v. Houghton Mifflin, 60 U.S.P.Q.2d 1225 (11th Cir. 2001) (holding that although The Wind Done Gone used "the very same copyrighted characters, settings, and plot" as did the book and movie Gone With the Wind, Id. at 1232, it appeared from the record on appeal "that a viable fair use defense is available." Id. at 1240.

THE WORKS AT ISSUE

Gone With the Wind, reputedly second only to the Bible in book sales and the most popular motion picture of all time, is familiar to people on every continent. Alice Randall, an accomplished African American woman1 and author of The Wind Done Gone, first read and loved Gone With the Wind when she was twelve. See A Conversation with Alice Randall, appended to The Wind Done Gone, at 211. When she later reread the book, however, "an enormous question arose…: Where are the mulattos on Tara?" Id. Gone With the Wind is a "South without miscegenation, without whippings, without families sold apart, without free blacks striving for their education, without … Frederick Douglass." Id. In Gone With the Wind, blacks are "buffoonish [and] lazy, … routinely compared to ‘apes,’ ‘gorillas,’ and ‘naked savages.’" See Declaration of Alice Randall.2

In order to "add [her] voice" to the debate, Ms. Randall decided, in the words of her Houghton Mifflin editor, Anton Mueller, to "skewer [Gone With the Wind] for its treatment of African Americans." (Mueller Decl.). As the device for doing so, Ms. Randall chose parody – as opposed to academic criticism – because it would reach a wider audience.3

In pursuing her goal, Ms. Randall faced a daunting task for at least two reasons. First, Gone With the Wind covers three periods of history in which the portrayal of blacks progressively worsens.4 To parody Gone With the Wind at the first level, therefore, Ms. Randall did not believe she could not stop with ante-bellum characterizations of blacks, because "blacks during the Civil War are depicted in even more demeaning terms"; likewise, she could not "stop with the treatment during and immediately after … the war, because blacks during Reconstruction are then represented in the most derogatory fashion of all." (Randall Decl.).

Second, while Gone With the Wind created, in the words of the plaintiff’s expert, a "historical myth" (Rubin Aff.), it did so in the form of a novel of over a thousand pages containing more than 150 characters, many of whom stand for a black stereotype or represent a white Southern "ideal."5 At the second level, then, Ms. Randall could not parody the "Old South" generally because, in Gone With the Wind, the "Old South" is not presented generally: rather it is a construct of many individual characters. Thus, Ms. Randall could not parody only the stereotype represented by the slave Jeems, because different and distinct stereotypes are represented by the slaves Pork, Mammy and Prissy. And Ms. Randall could not parody only the "ideal" represented by Ellen, the mistress of Tara, because different "ideals" are represented by Scarlett, Gerald, Ashley, Melanie and Rhett. As Candler Professor of English Literature at Emory University John Sitter testified: "Given the scope of both its parodic intent and its parodic object, [The Wind Done Gone] could not effectively parody [Gone With the Wind] without making numerous allusions." (Sitter Supp. Decl.).

SUMMARY OF THE PROCEEDINGS BEFORE THE TRIAL AND APPELATE COURT

On March 16, 2001, plaintiff SunTrust Bank filed a complaint in the United States District Court for the Northern District of Georgia against defendant Houghton Mifflin Company, alleging copyright and trademark infringement based on defendant’s yet-to-be published novel The Wind Done Gone. On March 23, plaintiff filed a motion for a temporary restraining order and preliminary injunction barring the book’s imminent publication. The district court held a hearing on the motion for a temporary restraining order on March 29, 2001 and then set down a second hearing for April 18, 2001.

On April 20, 2001, the district court filed a fifty-one (51) page order granting plaintiff’s motion for a preliminary injunction, and enjoining defendant "from further production, display, distribution, advertising, sale, or offer for sale of the book The Wind Done Gone on the grounds that the book infringed the plaintiff’s copyrights.6 SunTrust Bank v. Houghton Mifflin Co., 136 F. Supp. 2d 1357 (N.D. GA. 2001). An expedited appeal was requested by the defendant and granted by the U.S. Court of Appeals for the 11th Circuit. (Order of April 25, 2001)

Immediately upon the close of argument on May 25, 2001, the Eleventh Circuit issued an order vacating the injunction on the grounds that it was an unconstitutional prior restraint. SunTrust Bank v. Houghton Mifflin, 252 F.3d 1165, (11th Cir. 2001) ("SunTrust One"). On October 10, 2001, the Eleventh Circuit vacated its order in SunTrust One and issued a more comprehensive opinion extensively addressing copyright and fair use issues. SunTrust Bank v. Houghton Mifflin, 60 U.S.P.Q.2d 1225 (11th Cir. 2001) ("SunTrust Two.")

SUNTRUST ONE – THE PRIOR RESTRAINT ISSUE

The entry of an injunction barring publication of The Wind Done Gone by the district court produced an extraordinary reaction. The Eleventh Circuit granted an emergency appeal, an expedited briefing schedule and a prompt hearing. The press, which had paid the case comparatively little attention, overwhelmingly opposed an injunction barring the publication of a book.7 A number of parties filed "friend of court" briefs.8

Plaintiff SunTrust argued that injunctions barring publication of books were expressly authorized by the Copyright Act and were a routine remedy where infringement was found. SunTrust also argued that the failure to uphold an injunction against publication of what the district court called "a piratical copy" would create a precedent for the erosion of sequel rights in scores of valuable literary works.

In response, Defendant Houghton Mifflin sought to distinguish the plethora of "routine" cases authorizing injunctions in copyright infringement cases from an injunction restraining speech, relying heavily on a footnote in the U.S. Supreme Court’s opinion in Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (114 S. Ct. 1164) (1994). In Campbell, the court indicated that while injunctions may issue routinely in cases of "simple piracy, such cases are ‘worlds apart from any 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." Campbell, 510 U.S. 569 at 578, note 10, 114 S. Ct. at 1170 quoting Leval, 103 Harv. L. R. 1105, 1133 (1990).

Houghton Mifflin also relied on a recent Eleventh Circuit opinion, Greenberg v. National Geographic Society, 244 F.3d 1267 (11th Cir. 2001), in which the same Judge Birch who wrote SunTrust One and SunTrust Two stated that injunctive relief should not flow "automatically," even from a clear finding on appeal of infringement by a work that had been in public distribution for years. "In assessing the appropriateness of injunctive relief, we urge the court [on remand] to consider alternatives . . . in lieu of foreclosing the public’s . . . access to this educational and entertaining work." 244 F.3d 1267, 1275.

SunTrust advanced a number of additional arguments in support of the injunction, including a contention that there was no such thing as "prior restraint in enjoining copyright infringement" (Plaintiff Appellee’s brief at 43); the argument that the district court’s injunction "does not prohibit publication of any ideas, arguments or criticism of Gone With the Wind" (Plaintiff Appellee’s brief at 43); and an ad hominem to the effect that vacating the injunction would leave copyright owners of novels and films with nothing more than a damages claim – in effect, with a "compulsory license" – whenever sequel rights were in dispute. In response, Houghton Mifflin argued that it was precisely the publication of effective criticism of Gone With the Wind that the injunction banned, relegating would be critics to unread academic journals; and that the injunctive remedy authorized by Congress was in any event permissive not mandatory.9

The court in SunTrust One communicated its rejection of SunTrust’s arguments by ruling, within moments after completion of oral argument, that the district court’s injunction was in violation of the prohibition against prior restraints and an abuse of discretion. Because of the abbreviated nature of the two page opinion in SunTrust One, however, the court gave little guidance as to its rationale.

Interestingly, SunTrust Two fails to expound directly upon the ruling in SunTrust One insofar as the court found the preliminary injunction to be an unconstitutional prior restraint. See SunTrust Two at 1229 in which the court in effect found that the copyright clause in the U.S. Constitution had as its root purpose the promotion of learning and the prohibition of "private" censorship, goals not inconsistent with those of the First Amendment:

"The Copyright Clause and the First amendment, while intuitively in conflict, 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. . . ." SunTrust Two at 1229.

Having reconciled the philosophical purposes of the copyright clause and the First Amendment, the court relied principally upon fair use analysis in concluding that the plaintiff was not likely to succeed on the merits.

THE FAIR USE ISSUES

Although the 11th Circuit found copying of protected expression, it acknowledged that "[Alice] Randall’s appropriation of elements of Gone With the Wind in The Wind Done Gone may nevertheless not constitute infringement" if the taking was protected as a fair use.10 In analyzing fairness, the Copyright Act directs courts to weigh the following factors:

  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." 17 U.S.C. 107

(1) The Purpose and Character of the Use – The court easily found that The Wind Done Gone was a "commercial product," but just as easily held that its for profit status was "strongly overshadowed and outweighed in view of its highly transformative use of Gone With the Wind’s copyrighted elements." Observing that The Wind Done Gone’s success depended "heavily on copyrighted elements appropriated from Gone With the Wind," the court quickly added that The Wind Done Gone ". . . is principally and purposefully a critical statement that seeks to rebut and destroy the perspective, judgments and mythologies of Gone With the Wind. SunTrust Two at 1234.

After a discussion of numerous examples of inverted characters and altered racial viewpoints, the courts concluded that the first factor not only favored fair use, but "informs our analysis of the other factors, particularly the fourth as discussed below."

(2) The Nature of the Copyrighted Work

While agreeing with the plaintiff that Gone With the Wind was "undoubtedly entitled to the greatest degree of protection as an original work of fiction," the court agreed with Houghton Mifflin that "this factor is given little weight in parody cases because, as argued by the defendant and as held by the Supreme Court, parodies almost invariably copy well known expressive works." Id. at 1235-36.

(3) Amount and Substantiality of the Portion Used

It has always been the law that a parody must be able to "conjure up" enough of the original to make the object of the parody recognizable, but how much more the parodist may use has been the subject of much debate over the years. Noting that The Wind Done Gone appropriates a "substantial portion" of the copyrighted elements of Gone With the Wind, the court in SunTrust Two observed, "Houghton Mifflin argues that The Wind Done Gone takes nothing from Gone With the Wind that does not serve a parodic purpose, the crux of the argument being that a large number of characters had to be taken from Gone With the Wind 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." SunTrust Two at 1236. After analyzing numerous instances in which The Wind Done Gone transformed or appropriated elements for the purpose of commentary11, and after referring to arguments by SunTrust that The Wind Done Gone exceeded the bounds in using certain minor details and interaction "that arguably are not essential to the parodic purpose of the work," SunTrust Two at 1237, the court importantly noted,

"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 Sup. Ct. at 1166) (Emphasis added by the 11th Circuit.) ‘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 Broadcasting Company, 623 F.2d 252, 253 n. 1 (2d Cir. 1980)". SunTrust Two at 1237.

Whether The Wind Done Gone took more than what was reasonable from Gone With the Wind, therefore, would depend on whether The Wind Done Gone’s overriding purpose and character was to parody Gone With the Wind, or in contrast to serve as a market substitute for it. SunTrust Two at 1237. Regarding the first issue, the 11th Circuit stated unequivocally, "It is manifest that The Wind Done Gone’s raison d’etre is to parody Gone With the Wind." SunTrust Two at 1237. As for the likelihood that The Wind Done Gone would serve as a market substitute, the Eleventh Circuit held that such would be the case only if The Wind Done Gone negatively affected the potential market for or value of Gone With the Wind. Based on the record on an appeal of a preliminary injunction, the court could not determine conclusively whether what had been taken was reasonable.

(4) Affect on the Market Value of Gone With the Wind

At the outset, the court quickly rejected any argument that a parody might impair the market for derivative uses because it was an effective critical commentary, holding that only an adverse impact "by reason of usurpation of the demand for plaintiff’s work through defendant’s copying of protectable expression from such work" should be considered. Id. at 1238.

Reviewing the record, the court found that plaintiff SunTrust "focuses on the value of Gone With the Wind and its derivatives but fails to address and offers little evidence or argument to demonstrate that The Wind Done Gone would supplant demand for SunTrust’s licensed derivatives." Id. at 1238. By comparison, the court viewed favorably evidence offered by Houghton Mifflin to the effect that no harm cognizable by copyright law was likely to occur:

"In contrast, the evidence proffered in support of the fair use defense specifically and correctly focused on market substitution and demonstrates why Randall’s book is unlikely to displace sales of Gone With the Wind. Thus, we conclude, based on the current record, that SunTrust’s evidence falls far short of establishing that The Wind Done Gone or others like it will act as market substitutes for Gone With the Wind or will significantly harm its derivatives. Accordingly, the fourth fair use factor weighs in favor of The Wind Done Gone." Id. at 1239.

THE ROAD AHEAD

Plaintiff’s opportunity to request certiorari from the U.S. Supreme Court expires on January 8, 2002. At that point, and assuming certiorari is not sought at this stage, the case will return to the district court "for further proceedings consistent with [SunTrust Two]." Id. at 1240.

FOOTNOTES

1Ms. Randall graduated with honors in English at Harvard, spent her early adult years in Washington, D.C. where, inter alia, she wrote a history of that city’s black elite, and then moved to Nashville, Tennessee where she has made a career as a screenwriter and best-selling country music songwriter.

2The Declaration of Ms. Randall (as well as those of every witness in this litigation whose testimony was cited by a party) is available at http://www.thewinddonegone.com/courtpapers.html. Ms. Randall’s sentiments about GWTW were shared by Barbara McCaskill, Professor of English at the University of Georgia specializing in African American literature, who testified:

Anyone who believes that pejorative characterizations of blacks are not currently accepted by many who cling to the "historical myth" of [Gone With the Wind] must live in a different world than I do. Although we are more than a century removed from the 1850s and 1860s, the issues that the period raises … still linger, especially in the minds of black readers…. [T]he public discussion raised by books such as [The Wind Done Gone] is critical to the continued search for healing and truth in our country. (McCaskill Decl.)

Similarly, Henry Louis Gates, Jr., Chair of the Department of Afro-American Studies at Harvard University testified: "[T]he embarrassing depictions of characters such as Mammy and the character played by Butterfly McQueen ("I don’t know nuthin’ about birthin’ no babies, Miss Scarlett.") have taken decades for black authors to overcome. (Gates Decl.) Gone With the Wind "especially in its book form – is widely regarded in the black community as one of the most racist depictions of slavery … in American literature." Id.

3Parody, a literary device used to criticize or ridicule another literary work, is at the heart of African American expression. As Harvard Professor Gates testified: "It is a creative mechanism for the exercise of political speech . . . on the part of people who feel themselves oppressed and wish to protest that condition . . . . African Americans have used parody since slavery to ‘fight back’ . ."

4For example, in Gone With The Wind:

a. Blacks in the ante-bellum South "would sit in the kitchen all day, talking endlessly about the good old days when a house nigger wasn’t suppose to do a field hand’s work." Gone With the Wind at 432.

b. During and immediately after the Civil War, many blacks are described as "apes" whom Scarlett would have liked to have "whipped until the blood ran down their backs." Gone With the Wind at 589.

c. By Reconstruction, blacks are portrayed as "creatures of small intelligence" who "like monkeys or small children … ran wild." They "spent most of their time eating goobers and easing their unaccustomed feet into and out of new shoes." Emancipation "just ruined the darkies." Gone With the Wind at 639, 654, 904.

5To illustrate, Jeems is the classic chattel, given at ten years of age to the Tarleton twins as "their body servant and, like the dogs, accompanied them everywhere." Gone With the Wind 10. Pork is the loyal man servant to Gerald O’Hara, won in a poker game, who, in times of dire need after the War, steals chickens for his former masters, and is awarded Gerald’s watch for his devotion. Mammy is the loyal female retainer with the "kind black face [having] the uncomprehending sadness of a monkey’s." Gone With the Wind 415. And Prissy is the epitome of silliness, forever transfixed as knowing "nuthin’ about birthin’ no babies." (Gates Decl.) The white characters, on the other hand, are more complex and interrelated, and depict different facets of the "good" Old South.

6The trademark claim was barely mentioned in the hearings and briefs and was not ruled upon by the district court.

7 See, e.g., editorials in the New York Times, "Gone with the First Amendment, May 1, 2001 and the Atlanta Journal and Constitution, "Banning Book Offends the First Amendment," May 23, 2001.

8Amicus briefs in support of Houghton Mifflin were filed by The New York Times Company, Dow Jones & Company, Inc., The Tribune Company, Media General, Inc., Cable News Network, LP, LLP, and Cox Enterprises; by Microsoft Corporation; by PEN American Center, American Booksellers Foundation for Freedom of Expression, Freedom to Read Foundation, Washington Lawyers' for the Arts, The First Amendment Project, and the National Coalition Against Censorship; by the Georgia First Amendment Foundation.

An amicus brief in support of SunTrust Bank was filed by Paul Levinson and Walter Wager.

9Houghton Mifflin also argued that traditional First Amendment principles applied with equal force in copyright infringement cases, citing Trust Company Bank v. Putnam Publishing Co., 5 U.S.P.Q.2d at 1879 (refusing to enjoin publication of a novel that allegedly infringed Gone With the Wind because of the public interest in access to the work); Globe International, Inc. v. National Inquirer, Inc., No. 98-10613 CAS, 1999 Westlaw 727232 at *5 (CD CA 1999) ("the prior restraint analysis has been applied to requests for copyright injunctions, even though Congress has included injunctive relief as a remedy for infringement"); Belushi v. Woodward, 598 F.Supp. 36 (D. D.C. 1984) (refusing to enjoin further publication of a book despite the fact that plaintiff had a substantial likelihood of success because the book was not "an average commercial product"); and Religious Technology Center v. Larma, 897 F.Supp. 260, 262-63 (ED VA 1995) ("If a threat to national security was insufficient to warrant a prior restraint in New York Times v. United States, the threat to [plaintiff’s] copyrights . . . is woefully inadequate").

10In one of the more intriguing paragraphs of SunTrust Two, Judge Birch, apparently speaking only for himself, stated, "I believe that fair use should be considered an affirmative right under the 1976 [Copyright] Act, rather than merely an affirmative defense, as it is defined in the Act as a use that is not a violation of copyright." SunTrust Two at 1240, n.3. (Emphasis original.) Acknowledging that fair use was commonly referred to as an affirmative defense and that "we are bound Supreme Court precedent," Judge Birch concluded, "Nevertheless, the fact that the fair use right must be procedurally asserted as an affirmative defense does not detract from its constitutional significance as a guarantor to access and use for First Amendment purposes." Id.

11 As an example, the court pointed to "the final lines of Gone With the Wind, ‘tomorrow I’ll think of some way to get him back. After all, tomorrow is another day," in comparison to The Wind Done Gone’s "For all those we love for whom tomorrow will not be another day, we send the sweet prayer of resting in peace.’" SunTrust Two at 1236.

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