Suntrust Bank v. Houghton Mifflin Company , 252 F.3d 1165 ( 2001 )

  •                                                                                    [PUBLISH]
                                FOR THE ELEVENTH CIRCUIT                  U.S. COURT OF APPEALS
                                                                            ELEVENTH CIRCUIT
                                                                              OCTOBER 10, 2001
                                                                             THOMAS K. KAHN
                                           No. 01-12200
                             D. C. Docket No. 01-00701-CV-CAP-1
    SUNTRUST BANK, as Trustee of the
    Stephen Mitchell trusts f.b.o. Eugene
    Muse Mitchell and Joseph Reynolds Mitchell,
                          Appeal from the United States District Court
                             for the Northern District of Georgia
                                     (October 10, 2001)
    Before BIRCH, MARCUS and WOOD*, Circuit Judges.
     Honorable Harlington Wood, Jr., U.S. Circuit Judge for the Seventh Circuit, sitting by
    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. § 103.1
           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,2 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.
               Hereafter, the Copyright Act of 1976 shall be referred to by only the section number of
    the Act.
               Houghton Mifflin denies that there are passages from GWTW copied verbatim in
          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.3 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
             I believe that fair use should be considered an affirmative right under the 1976 Act,
    rather than merely an affirmative defense, as it is defined in the Act as a use that is not a
    violation of copyright. See Bateman v. Mneumonics, Inc., 
    79 F.3d 1532
    , 1542 n.22 (11th Cir.
    1996). However, fair use is commonly referred to an affirmative defense, see Campbell v.
    Acuff-Rose Music, Inc., 
    510 U.S. 569
    , 590, 
    114 S. Ct. 1164
    , 1177 (1994), and, as we are bound
    by Supreme Court precedent, we will apply it as such. See also David Nimmer, A Riff on Fair
    Use in the Digital Millennium Copyright Act, 148 U. PA. L. REV. 673, 714 n. 227 (2000) (citing
    Bateman). 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.
    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 379.4 The Framers of the U.S. Constitution
    relied on this statute when drafting the Copyright Clause of our Constitution,5
    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 . . . .
            The Statute of Anne providing for copyright is introduced as “[a]n act for the
    encouragement of learning,” and has a preamble that states one of the purposes as “the
    encouragement of learned men to compose and write useful books.” 8 Anne, C.19 (1710),
    reprinted in 8 Nimmer § 7-5.
             See Edward C. Walterscheid, The Remarkable–and Irrational–Disparity Between the
    Patent Term and the Copyright Term, 83 J. PAT. & TRADEMARK OFF. SOC’Y 233, 235 (2001)
    (“The American Copyright Act of 1790 simply copied this same basic scheme [from the Statute
    of Anne] into the new American copyright law.”); Pierre N. Leval, Nimmer Lecture: Fair Use
    Rescued, 44 UCLA L. REV. 1449, 1450 (1997) (“The law of copyright, [was] fashioned by the
    Statute of Anne in 1710 and recognized in our Constitution.”).
    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,6 and then in 1790,
    with the passage of the first American federal copyright statute.7
           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.8 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
          “Resolution of the Continental Congress Respecting Copyright” (1783), reprinted in 8
    Nimmer § 7-11.
           1 Stat. 124 (May 31, 1790), reprinted in 8 Nimmer § 7-41 (“AN ACT for the
    encouragement of learning . . .”).
            See Jane C. Ginsburg, Creation and Commercial Value: Copyright Protection in Works
    of Information, 90 COLUM. L. REV. 1865, 1873 (1990) (“[T]he 1710 English Statute of Anne, the
    1787 United States Constitution, and the 1790 United States federal copyright statute all
    characterized copyright as a device to promote the advancement of knowledge.”).
    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).9 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
             Under modern copyright, such a right to translate would enjoy protection as a
    “derivative work.” §§ 101 and 106. In Folsom v. Marsh, 
    9 F. Cas. 342
     (C.C.Mass. 1841),
    Justice Story created the concept of “fair use,” which actually expanded the copyright monopoly,
    since until that time a translation or abridgement was not considered an infringement.
    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 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
          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.10
           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
    – 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
            See Feist Publications, Inc. v. Rural Tel. Serv. Co., 
    499 U.S. 340
    , 349, 
    111 S. Ct. 1282
    1290 (1991) (“The primary objective of copyright is not to reward the labor of authors, but ‘[t]o
    promote the Progress of Science and useful Arts.’”).
    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,11 while intuitively in
    conflict,12 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.13 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
            “Congress shall make no law . . . abridging the freedom of speech . . .” U.S. CONST.
    amend. I.
            While the First Amendment disallows laws that abridge the freedom of speech, the
    Copyright Clause calls specifically for such a law.
            See Rebecca Tushnet, Copyright as a Model for Free Speech Law: What Copyright Has
    in Common with Anti-Pornography Laws, Campaign Finance Reform, and Telecommunications
    42 Barb. C
    . L. REV. 1, 2 (2000) (“The First Amendment gets government off speakers’
    backs, while the Copyright Act enables speakers to make money from speaking and thus
    encourages them to enter the public marketplace of ideas.”).
    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.
    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 § 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 § 1-10[C][2] (“In general, the democratic dialogue – a
    self-governing people’s participation in the marketplace of ideas – 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 – the public
    already has access to the idea or the concepts.14 A new author may use or discuss
    the idea, but must do so using her own original expression.
           2. Fair Use
             See 1 Nimmer § 1.10[B][2] (“It is exposure to ideas, and not to their particular
    expression, that is vital if self-governing people are to make informed decisions.”).
           First Amendment privileges are also preserved through the doctrine of fair
    use.15 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,16 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
            § 107 (“[F]air use of a copyrighted work . . . for purposes such as criticism [or]
    comment . . . is not an infringement of copyright.”).
                See discussion section II.C.1.b.
    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.”).17
          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
               For a more policy-based discussion, see 1 Nimmer § 1.10[D].
    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,
    510 U.S. 569
    , 578 n.10, 
    114 S. Ct. 1164
    , 1171 n.10 (1994).18
           The basic framework for our analysis remains, however, the standard test
    governing the issuance of preliminary injunctions. SunTrust is not entitled to relief
            The Supreme Court reiterated this point in New York Times v. Tasini, __ U.S. __, __,
    121 S. Ct. 2381
    , 2393 (2001).
    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 1214.19
           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
             Originally the word “copie” was a noun, indicating the manuscript. Ownership of the
    “copie” thus meant ownership of the manuscript for the purposes of publishing it. Today,
    “copy” has become a verb, meaning the act of reproduction of a work. But in the development
    of copyright law it was intended to be a term of art, indicating a reproduction of a work for
    publication. Failure to understand and apply this distinction has confused many courts (assisted
    by overzealous advocates) into too expansive a view of the scope of the copyright monopoly.
    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
            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 Cynara20 in TWDG, it does not change the fact that
    they are the very same copyrighted characters, settings, and plot.
                 b. Fair Use
             “Cynara” is the name of the poem by Ernest Dowson, from which GWTW’s title is
    derived (“I have forgot much, Cynara! gone with the wind, . . .”).
           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—
           (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.
    § 107.21 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
              Interestingly, these elements harken back to Folsom v. Marsh, supra, – where Justice
    Story first articulated the concept of “fair use.”
    U.S. at 577-78, 114 S. Ct. at 1170-71.22 In light of the discussion in §§ IIA and B,
    one of the most important purposes to consider is the free flow of ideas –
    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
               See section II.A. for a discussion of the purposes of copyright.
    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.23 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.24 As the Supreme Court has stated, “[t]he crux
              The benefit of our approach to “parody,” which requires no assessment of whether or
    not a work is humorous, is apparent from the arguments made by the parties in this case.
    SunTrust quotes Michiko Kakutani’s review of TWDG in the New York Times, in which she
    states that the work is “decidedly unfunny.” Houghton Mifflin, on the other hand, claims that
    TWDG is an example of “African-American humor,” which, Houghton Mifflin strongly implies,
    non-African-American judges are not permitted to evaluate without assistance from “experts.”
    Under our approach, we may ignore Houghton Mifflin’s questionable argument and simply
    bypass what would always be a wholly subjective inquiry.
             Randall did not choose to publish her work of fiction on the internet free to all the
    world to read; rather, she chose a method of publication designed to generate economic profit.
    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
            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 – 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 – 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 feckless25, 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
              On pages 62-63 of TWDG, for example, Miss Priss explains that Mammy killed white
    male heirs to the plantation dynasty when they were babies in order to seal Garlic’s and the other
    African-Americans’ control over the drunken Planter. “What would we a done with a sober
    white man on this place?” Says Miss Priss. TWDG at 63.
    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.26 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 – whether depth, wit, cunning, beauty, strength, or courage –
    that their GWTW analogues lacked.
                Randall’s parodic intent vis-a-vis Ashley becomes manifest when the two works are
    read side-by-side. Mitchell has Gerald describe Ashley Wilkes: “The Wilkes are different from
    any of our neighbors-different from any family I ever knew. They are queer folk, and it’s best
    that they marry their cousins and keep their queerness to themselves . . . And when I say queer,
    it’s not crazy I’m meaning . . . there’s no understanding him at all. . . . tell me true, do you
    understand his foderol about books and poetry and music and oil paintings and such
    foolishness?” GWTW at 34. Later, Mitchell describes how “Scarlett turned her prettiest smile
    on Ashley, but for some reason he was not looking at her. He was looking at Charles . . .”
    GWTW at 113. This particular element of Randall’s parody takes on special relevance in the
    market-harm analysis of the case, because it is evident from the record evidence that SunTrust
    makes a practice of requiring authors of its licensed derivatives to make no references to
          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 invariably copy
    publicly known, expressive works.” Campbell, 510 U.S. at 586, 114 S. Ct. at
                         iii. Amount and Substantiality of the Portion Used
            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.
          GWTW is one of the most famous, popular, and enduring American novels
    ever written. Given the fame of the work and its primary characters, SunTrust
    argues that very little reference is required to conjure up GWTW. As we have
    already indicated in our discussion of substantial similarity, TWDG appropriates a
    substantial portion of the protected elements of GWTW. Houghton Mifflin argues
    that TWDG takes nothing from GWTW that does not serve a parodic purpose, the
    crux of the argument being that a large number of characters had to be taken from
    GWTW 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. Houghton Mifflin’s argument is similar to that made by the defendants in
    Harper & Row, who argued for “expanding the doctrine of fair use to create what
    amounts to a public figure exception to copyright.” 471 U.S. at 560, 105 S. Ct. at
    2230. To the extent Houghton Mifflin argues for extra latitude in copying from
    GWTW because of its fame, the Supreme Court has squarely foreclosed any such
          It is fundamentally at odds with the scheme of copyright to accord lesser
          rights in those works that are of greatest importance to the public. . . . To
          propose that fair use be imposed whenever the social value of dissemination
          outweighs any detriment to the artist, would be to propose depriving
          copyright owners of their right in the property precisely when they
          encounter those users who could afford to pay for it.
    Id. at 559, 105 S. Ct. at 2229-30 (internal quotations and punctuation omitted).
    Notably, however, the Court did not go so far as to grant well-known works a
    special, higher copyright status either.
          There are numerous instances in which TWDG appropriates elements of
    GWTW and then transforms them for the purpose of commentary. TWDG uses
    several of GWTW’s most famous lines, but vests them with a completely new
    significance. For example, the final lines of GWTW, “Tomorrow, I’ll think of
    some way to get him back. After all, tomorrow is another day,” are transformed in
    TWDG into “For all those we love for whom tomorrow will not be another day, we
    send the sweet prayer of resting in peace.” Another such recasting is Rhett’s
    famous quip to Scarlett as he left her in GWTW, “My dear, I don’t give a damn.”
    In TWDG, the repetition of this line (which is paraphrased) changes the reader’s
    perception of Rhett/R.B.—and of black-white relations—because he has left
    Scarlett/Other for Cynara, a former slave. Another clear instance in which a
    memorable scene from GWTW is taken primarily for the purpose of parody is
    Gerald/Planter’s acquisition of Pork/Garlic. In GWTW, Gerald won Pork in a card
    game with a man from St. Simons Island. In TWDG, Planter wins Garlic in a card
    game with a man from St. Simons Island, but Garlic, far from being the passive
    “chattel” in GWTW, is portrayed as being smarter than either white character by
    orchestrating the outcome of the card game and determining his own fate. There
    are many more such transformative uses of elements of GWTW in TWDG.
           On the other hand, however, we are told that not all of TWDG’s takings
    from GWTW are clearly justified as commentary. We have already determined
    that TWDG is a parody, but not every parody is a fair use. SunTrust contends that
    TWDG, at least at the margins, takes more of the protected elements of GWTW
    than was necessary to serve a parodic function.
           For example, in a sworn declaration to the district court, Randall stated that
    she needed to reference the scene from GWTW in which Jeems is given to the
    Tarleton twins as a birthday present because she considers it “perhaps the single
    most repellent paragraph in Margaret Mitchell’s novel: a black child given to two
    white children as a birthday present . . . as if the buying and selling of children thus
    had no moral significance.” Clearly, such a scene is fair game for criticism.
    However, in this instance, SunTrust argues that TWDG goes beyond commentary
    on the occurrence itself, appropriating such nonrelevant details as the fact that the
    twins had red hair and were killed at Gettysburg. There are several other scenes
    from GWTW, such as the incident in which Scarlett threw a vase at Ashley while
    Rhett was hidden on the couch, that are retold or alluded to without serving any
    apparent parodic purpose. Similar taking of the descriptions of characters and the
    minor details of their histories and interactions that arguably are not essential to the
    parodic purpose of the work recur throughout: Melanie/Mealy Mouth is flat-
    chested, Mammy is described as being like an elephant and is proud of
    Scarlett/Other’s small waist, Gerald/Planter had been run out of Ireland for
    committing murder and is an excellent horseman, Bonnie/Precious wears a blue
    velvet riding habit and is afraid of the dark, Belle/Beauty has red hair and lives in
    Atlanta, Ellen/Lady likes lemon verbena, Carreen/Kareen ends up in a convent in
    Charleston. Clearly, TWDG uses these idiosyncratic characters. But we must
    determine whether the use is fair. In doing so, we are reminded that literary
    relevance is a highly subjective analysis ill-suited for judicial inquiry. Thus we are
    presented with conflicting and opposing arguments relative to the amount taken
    and whether it was too much or a necessary amount.
          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 S. Ct. at
    1176 (emphasis added; quotations omitted). “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 Broad’g Co., 
    623 F.2d 252
    , 253 n. 1 (2d Cir. 1980).
           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.27 The second point indicates that any material we suspect is
    “extraneous” to the parody is unlawful only if it negatively effects the potential
               SunTrust suggests that Houghton Mifflin decided–as a legalistic afterthought–to
    market TWDG as a “parody.” We are mindful of Justice Kennedy’s admonition that courts
    “ensure that no just any commercial takeoff is rationalized post hoc as a parody.” Campbell, 510
    U.S. at 600 (Kennedy, J., concurring). Justice Kennedy’s concurrence simply underscores the
    danger of relying upon facile, formalistic labels, and encourages us to march this alleged
    infringement through fair use’s four-pronged analysis as we would any other such work. Randall
    and Houghton-Mifflin may label their book a “parody,” or a “novel,” or whatever they like, and
    that fact would be largely irrelevant to our task. Defendants “need not label their [work] . . . a
    parody in order to claim fair use protection . . . Parody serves its goals whether labeled or not,
    and there is no reason to require parody to state the obvious . . . ” Campbell, 510 U.S. at 583 n.
    17. The only way in which Houghton Mifflin’s marketing strategy might be relevant is if it
    diverted consumers from GWTW-related products to its own. In any case, such a practice, if it
    were found to exist, would likely fall under the market harm fair use factor.
    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
                         iv. Effect on the Market Value of the Original
            The final fair-use factor requires us to consider the effect that the publication
    of TWDG will have on the market for or value of SunTrust’s copyright in GWTW,
    including the potential harm it may cause to the market for derivative works based
    on GWTW. Campbell, 510 U.S. at 590, 114 S. Ct. at 1177. In addressing this
    factor, we must “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.” Id., 114 S. Ct. at 1177
    (quotations omitted). More specifically, the Campbell Court continued: “[T]he
    only harm to derivatives that need concern us . . . is the harm of market
    substitution. The fact that a parody may impair the market for derivative uses by
    the very effectiveness of its critical commentary is no more relevant under
    copyright that the like threat to the original market.” Id., 510 U.S. at 593, 114 S.
    Ct. at 1178.28 See also Nimmer on Copyright, § 1305[A][4] at 181 (Vol. 4) (citing
    Consumers Union of U.S., Inc. v. General Signal Corp., 
    724 F.2d 1044
     (2nd Cir.
    1993)) (“The fourth factor looks to adverse impact only by reason of usurpation of
    the demand for plaintiff’s work through defendant’s copying of protectible
    expression from such work.”).
           As for the potential market, SunTrust proffered evidence in the district court
    of the value of its copyright in GWTW. Several derivative works of GWTW have
    been authorized, including the famous movie of the same name and a book titled
    Scarlett: The Sequel.29 GWTW and the derivative works based upon it have
    generated millions of dollars for the copyright holders. SunTrust has negotiated an
    agreement with St. Martin’s Press permitting it to produce another derivative work
    based on GWTW, a privilege for which St. Martin’s paid “well into seven figures.”
    Part of this agreement was that SunTrust would not authorize any other derivative
    works prior to the publication of St. Martin’s book.
               “Whereas a work that merely supplants or supersedes another is likely to cause a
    substantially adverse impact on the potential market of the original, a transformative work is less
    likely to do so.” Sony Computer Entertainment, Inc. v. Connectix Corp., 
    203 F.3d 596
    , 607 (9th
    Cir. 2000) (citing Campbell, 510 U.S. at 591, 114 S. Ct. at 1177, and Harper & Row Publishers,
    Inc. v. Nation Enters., Inc., 
    471 U.S. 539
    , 567-69 (1985)).
              See generally, Trust Co. Bank v. MGM/UA Entertainment Co., 
    772 F.2d 740
    Cir. 1985).
           An examination of the record, with its limited development as to relevant
    market harm due to the preliminary injunction status of the case, discloses that
    SunTrust focuses on the value of GWTW and its derivatives, but fails to address
    and offers little evidence or argument to demonstrate that TWDG would supplant
    demand for SunTrust’s licensed derivatives. However, the Supreme Court and
    other appeals courts have made clear that, particularly in cases of parody, evidence
    of harm to the potential market for or value of the original copyright is crucial to a
    fair use determination. “[E]vidence about relevant markets” is also crucial to the
    fair use analysis. Campbell, 510 U.S. at 590, 114 S. Ct. at 1177. “Evidence of
    substantial harm to [a derivative market] would weigh against a finding of fair
    use.” Id. at 593, 114 S. Ct. at 1178. “What is necessary is a showing by a
    preponderance of the evidence that some meaningful likelihood of future harm
    exits.” Sony, 464 U.S. at 451, 104 S. Ct. at 793 (emphasis in original).30 It should
    also be remembered that with a work as old as GWTW on which the original
               See also Worldwide Church of God v. Philadelphia Church of God, Inc., 
    227 F.3d 1110
    , 1119 (9th Cir. 2000) (noting, in market harm analysis, that “undisputed evidence shows
    that individuals who received copies of [defendant’s work] from [defendant] are present or could
    be potential adherents of [plaintiff’s]”); Liebovitz v. Paramount Pictures Corp., 
    137 F.3d 109
    116 n. 6 (2nd Cir. 1998) (where plaintiff conceded lack of market harm for derivative works,
    “defendant had no obligation to present evidence to present evidence showing lack of harm”);
    Ringgold v. Black Entertainment Television, Inc., 
    126 F.3d 70
    , 81 (2nd Cir. 1997) (“[I]n view of
    what Ringgold has averred is prepared to prove, the record on the fourth fair use factor is
    inadequate to permit summary judgment for the defendants.”); Dr. Seuss Enter., L.P. v. Penguin
    Books USA, Inc., 
    109 F.3d 1394
    , 1403 (9th Cir. 1997) ) (parties “must bring forward favorable
    evidence about relevant markets.”).
    copyright may soon expire, creation of a derivative work only serves to protect that
    which is original to the latter work and does not somehow extend the copyright in
    the copyrightable elements of the original work. See § 103(b) (“The copyright in a
    . . . derivative work extends only to the material contributed by the author of such
    work, as distinguished from the preexisting material employed in the work, and
    does not imply any exclusive right in the preexisting material.”).
           In contrast, the evidence proffered in support of the fair use defense31
    specifically and correctly focused on market substitution and demonstrates why
    Randall’s book is unlikely to displace sales of GWTW.32 Thus, we conclude,
               “Since fair use is an affirmative defense, its proponent would have difficulty carrying
    the burden of demonstrating fair use without favorable evidence about relevant markets.”
    Campbell, 510 U.S. at 590, 114 S. Ct. at 1177. At the injunction stage, the burden remains in the
    party seeking restraint to demonstrate the likelihood of success on the merits. Thus, in a
    copyright infringement case, the copyright owner must demonstrate (after establishing copyright
    ownership and the taking of original elements), where a prima facie fair use defense is
    presented, that the fair use factors are insufficient to support such a defense. As a practical
    matter, the fair use proponent will anticipate its burden on the merits and counter with evidence
    to support its claim of fair use. That is often why district courts invoke Fed. R. Civ. P. 65(a)(2)
    to consolidate the trials of the action on the merits with the hearing on the application for
    preliminary injunction. The record in this case reflects that such a consolidation was not
               It is worth noting that in the several months since we lifted the injunction against
    publication of TWDG there have been sales of both GWTW and TWDG which may assist the
    district court in evaluating the economic harm fair use factor. The Court in Campbell did
    acknowledge that “[e]ven favorable evidence, without more, is no guarantee of fairness,” and
    that the market harm factor, “no less than the other three, may be addressed only through a
    ‘sensitive balancing of interests’” 510 U.S. at 590, n. 21, 114 S. Ct. at 1177, n. 21 (quoting Sony
    Corp., 464. U.S. at 455, n. 40, 
    104 S. Ct. 795
    , n. 40). That the market harm factor may not
    always be a purely factual or evidentiary matter, however, does not mean that it is a purely legal
    matter. It is, like fair use generally, a mixed question of law and fact.
    based on the current record, that SunTrust’s evidence falls far short of establishing
    that TWDG or others like it will act as market substitutes for GWTW or will
    significantly harm its derivatives. Accordingly, the fourth fair use factor weighs in
    favor of TWDG.
                 c. Summary of the Merits
          We reject the district court’s conclusion that SunTrust has established its
    likelihood of success on the merits. To the contrary, based upon our analysis of the
    fair use factors we find, at this juncture, TWDG is entitled to a fair-use defense.
          2. Irreparable Injury
          The district court found that the second factor in the preliminary injunction
    analysis, irreparable injury to SunTrust, could be presumed following a showing of
    copyright infringement. SunTrust, 136 F.Supp.2d at 1384 (citing Sony Corp., 464
    U.S. at 451-52, 104 S. Ct. at 793). As we have previously indicated, however, the
    Supreme Court has made clear that there is no presumption of irreparable injury
    when the alleged infringer has a bona fide fair-use defense. Campbell, 510 U.S. at
    578 n.10, 114 S. Ct. at 1171 n.10.
          In evaluating irreparable injury we consider only the potential harm that the
    copyright holders of GWTW will suffer from the publication of TWDG itself.
    SunTrust argues that it has “incalculable millions of dollars riding on the
    appropriate cultivation of the [GWTW] franchise,” but it has failed to show, at
    least at this early juncture in the case, how the publication of TWDG, a work that
    may have little to no appeal to the fans of GWTW who comprise the logical market
    for its authorized derivative works, will cause it irreparable injury. To the extent
    that SunTrust will suffer monetary harm from the infringement of its copyright,
    harms that may be remedied through the award of monetary damages are not
    considered “irreparable.” Cunningham v. Adams, 
    808 F.2d 815
    , 821 (11th Cir.
          Thus, a lack of irreparable injury to SunTrust, together with the First
    Amendment concerns regarding comment and criticism and the likelihood that a
    fair use defense will prevail, make injunctive relief improper and we need not
    address the remaining factors, except to stress that the public interest is always
    served in promoting First Amendment values and in preserving the public domain
    from encroachment. Siegel v. Lepore, 
    234 F.3d 1163
    , 1176 (11th Cir. 2000).
    Accordingly, we vacate the district court’s injunction. We thereby substitute this
    opinion for our brief order issued on 25 May 2001, reported at 
    252 F.3d 1165
    Cir. 2001).
                                    III. CONCLUSION
          SunTrust initiated this action as one alleging copyright infringement and
    seeking monetary damages. SunTrust subsequently moved for a preliminary
    injunction to stay the publication of TWDG, which the district court granted. In
    granting the injunction, however, the district court incorrectly assessed the issues
    of “likelihood of success on the merits” and “irreparable harm” as discussed above.
    The Supreme Court has recognized that “the goals of copyright law, to stimulate
    the creation and publication of edifying matter, are not always best served by
    automatically granting injunctive relief when parodists are found to have gone
    beyond the bounds of fair use.” Campbell, 510 U.S. at 578 n.10, 114 S. Ct. at 1171
    n.10 (quotations omitted). The Court cited to an article by Judge Pierre Leval of
    the Second Circuit, in which he notes that injunctive relief is appropriate in “the
    vast majority of [copyright] cases” because “the infringements are simple piracy,”
    but cautions that such cases are “worlds apart from many 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.”
    Id. (quoting Leval, Toward a Fair Use Standard, 103 HARV. L. REV. 1105, 1132
    (1990)) (internal punctuation omitted).
          In this case, we have found that to the extent SunTrust suffers injury from
    TWDG’s putative infringement of its copyright in GWTW, such harm can
    adequately be remedied through an award of monetary damages. Moreover, under
    the present state of the record, it appears that a viable fair use defense is available.
    Thus, the issuance of the injunction was at odds with the shared principles of the
    First Amendment and the copyright law, acting as a prior restraint on speech
    because the public had not had access to Randall’s ideas or viewpoint in the form
    of expression that she chose.
          We VACATE the judgment of the district court and REMAND the case for
    further proceedings consistent with this opinion.
    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
     (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)).1 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 § (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).
             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.
           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; 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.’”).
           Rather, we deal here with a book that seeks to rebut a classic novel’s
    particular perspective on the Civil War and slavery.2 This fact does not, of course,
    mean that we ought to grant Randall and Houghton Mifflin any special deference
           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
    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 (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. 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.
    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.3
           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
             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.
    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 (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.
          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.”
           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 (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 (describing the “distinction
    between potentially remediable displacement and unremediable disparagement”);
    Zacchini v. Scripps-Howard Broadcasting Co., 
    433 U.S. 562
    , 573 (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, or that widespread conduct of the sort engaged in by Randall4 would
    harm SunTrust’s derivative markets, see id. at 590. “[I]f the secondary work harms
             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 (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.
    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). “[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 (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.
           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.5
    It is not far-fetched to predict that sales of Gone With the Wind have grown since
            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.”
    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
                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
            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.
          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:
              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.
          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,
    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.
    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.

Document Info

DocketNumber: 01-12200

Citation Numbers: 252 F.3d 1165

Filed Date: 5/25/2001

Precedential Status: Precedential

Modified Date: 3/24/2017

Authorities (37)

King, Martin, Estate of v. CBS , 194 F.3d 1211 ( 1999 )

Judicial Complaint, In Re: , 212 F.3d 1210 ( 2000 )

Suntrust Bank v. Houghton Mifflin Company , 252 F.3d 1165 ( 2001 )

Bleistein v. Donaldson Lithographing Co. , 188 U.S. 239 ( 1903 )

Zacchini v. Scripps-Howard Broadcasting Co. , 433 U.S. 562 ( 1977 )

Sony Corp. of America v. Universal City Studios, Inc. , 464 U.S. 417 ( 1984 )

Harper & Row, Publishers, Inc. v. Nation Enterprises , 471 U.S. 539 ( 1985 )

Feist Publications, Inc. v. Rural Telephone Service Co. , 499 U.S. 340 ( 1991 )

Campbell v. Acuff-Rose Music, Inc. , 510 U.S. 569 ( 1994 )

New York Times Co. v. Tasini , 533 U.S. 483 ( 2001 )

Irving Berlin v. E. C. Publications, Inc. , 329 F.2d 541 ( 1964 )

Elsmere Music, Inc. v. National Broadcasting Company , 623 F.2d 252 ( 1980 )

original-appalachian-artworks-inc-a-georgia-corporation-v-the-toy-loft , 684 F.2d 821 ( 1982 )

trust-company-bank-as-trustee-for-eugene-muse-mitchell-and-joseph-reynolds , 772 F.2d 740 ( 1985 )

Marvin Fisher D/B/A Marvin Music Company and Jack Segal v. ... , 794 F.2d 432 ( 1986 )

tj-cunningham-v-kenneth-m-adams-kearen-t-marcus-ken-spillas-jerry , 808 F.2d 815 ( 1987 )

northeastern-florida-chapter-of-the-association-of-general-contractors-of , 896 F.2d 1283 ( 1990 )

los-angeles-news-service-plaintiff-counter-defendant-appellee-robert-tur , 973 F.2d 791 ( 1992 )

twin-peaks-productions-inc-plaintiff-appellee-cross-appellant-v , 996 F.2d 1366 ( 1993 )

bellsouth-advertising-publishing-corporation-plaintiff-counterclaim-v , 999 F.2d 1436 ( 1993 )

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