United States: The Role of Parody in Copyright: is a New Wind Blowing?

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 seeming conflict between the U.S. Copyright Act, 17 U.S.C. 101 et. seq., with its provision for a preliminary injunction barring 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 as first proposed by U.S. Second Circuit Court of Appeals Judge Pierre Leval in an article in the Harvard Law Review, and as thereafter adopted by the United States Supreme Court in Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (114 S. Ct. 1164) (1994); and

(3) whether or not the "parody" defense, previously applied only in music and photography cases, extends to the use of an entire novel and motion picture.

Two recent decisions by the Eleventh Circuit Court of Appeals provide substantial guidance with respect to these issues. See SunTrust Bank v. Houghton Mifflin, 252 F3d 1165, (11^th 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, [NEED "F.3d" CITE], 60 U.S.P.Q.2d 1225 (11^th 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 ___, it appeared from the record on appeal "that a viable fair use defense is available." Id at ____.

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. Parody, 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’ . . . ."

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:

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."³ 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 Jeems, because, as reflected above, different and distinct stereotypes are represented by 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.)

In essence, Ms. Randall turned "everything upside down and inside out," constructing black characters and deconstructing white characters.⁴ To illustrate, in The Wind Done Gone:

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.

At plaintiff‘s request, the parties did not present live testimony but rather submitted all evidence by means of written affidavits and declarations. Pursuant to a court-approved stipulation, the parties filed additional briefs and written evidentiary submissions on April 12 and April 16, and oral argument was heard on April 18.

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.⁷ 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 11^th 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 F3d 1165, (11^th 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 (11^th Cir. 2001) ("SunTrust Two.")

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, seemed all but unanimously opposed to an injunction barring the publication of a book.⁸ A number of parties filed "friend of court" briefs.⁹

Plaintiff SunTrust argued that injunctions barring publication of books were expressly authorized by the Copyright Act and that they were a routine remedy where an 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 destruction of sequel rights for 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).

Defendant also relied on a recent Eleventh Circuit opinion, Greenberg v. National Geographic Society, 244 F.3d 1267 (11^th 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.¹⁰

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 upon the ruling in SunTrust One insofar as the court found the preliminary injunction to be a prior restraint. See SunTrust Two at 5-17 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:

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 (because of the defendant’s evidence of fair use); and that the plaintiff had failed to show irreparable injury (because any monetary harm to Gone With the Wind could be remedied through the award of monetary damages).

Relying upon two Eleventh Circuit opinions addressing the issue of substantial similarity between literary works and movies, Beal v. Paramount Pictures Corp., 20 F.3d 454 (11^th Cir. 1994) and Herzog v. Castlerock Entertainment, 193 F.3d 1241 (11^th Cir. 1999), Houghton Mifflin, unlike defendants in most parody cases, challenged head-on the argument that there was "substantial similarity" of copyrightable expression between Gone With the Wind and The Wind Done Gone.

For example, Houghton Mifflin argued that substantial similarity should not be found between characters who share "a broad similarity" but who otherwise are "completely different in background, story, personal attributes, and most distinctively in purpose," citing Herzog, 193 F.3d at 1258. Houghton Mifflin also argued that The Wind Done Gone was, to use the language of Beal and Herzog, "an entirely different story," and that the elements of "settings" and "scenes," identified as significant in Herzog and Beal, were viewed from such radically different perspectives in The Wind Done Gone that they could hardly be the same landscape. As a result, Houghton Mifflin argued that SunTrust had failed to meet its burden of proving substantial similarity, and therefore that there was no need to address the fair use defense, traditionally thought to arise upon the proof of infringement.¹¹

While the court acknowledged that copyright only protected Gone With the Wind’s expression, not its facts or ideas, the court rejected the defendant’s argument that there was no substantial similarity. Charging that defendant "appropriates numerous characters, settings, and plot twists from Gone With the Wind," the court concluded: "After carefully comparing the two works, we agree with the district court that, particularly in its first half, The Wind Done Gone is largely ‘an encapsulation’ of Gone With the Wind that exploits its copyrighted characters, story lines and settings as the palette for the new story." SunTrust Two at ____.

As for defendant’s argument that there was no substantial similarity between the two books because The Wind Done Gone inverted Gone With the Wind’s characters, places and events and cast them in a different light, the court stated, "While we agree with Houghton Mifflin that the characters, settings and plot taken from Gone With the Wind are vested with a new significance . . . it does not change the fact that they are the very same copyrighted characters, settings and plot." SunTrust Two at 23.

Although the 11^th 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. In this regard, the Copyright Act provides:

(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

After a discussion of numerous examples of inverted characters and altered racial viewpoints, the court added, "It is hard to imagine how Randall could have specifically criticized Gone With the Wind without depending heavily upon copyrighted elements of that book." Id at 31. The court went on to conclude 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."

(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 33. After analyzing numerous instances in which The Wind Done Gone transformed or appropriated elements for the purpose of commentary¹², 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 36, the court importantly noted,

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 37. Regarding the first issue, the 11^th 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 37-38. 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 39.

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 40. 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:

The time for SunTrust to request certiorari from the U.S. Supreme Court expired on January 8, 2002. The case now appears headed back for pre-trial discovery on the relatively narrow issue of market effect.