Georgia State University
Law Review

The Wind Done Gone: Parody or Piracy?
A Comment on Suntrust Bank v. Houghton Mifflin Company

Barbara S. Murphy

Introduction

     The recent publication of Alice Randall’s The Wind Done Gone (TWDG)[1] created more of a stir in legal circles than in literary ones.[2] Alice Randall used elements from Gone with the Wind (GWTW)[3] to “retell” Margaret Mitchell’s famous tale, this time from the  perspective of Cynara, a newly imagined mulatto half-sister of Scarlett (named “Other” in TWDG).[4]  The Mitchell Trusts, who own the GWTW copyright, sought to enjoin further publication and distribution of TWDG.[5]  The conflict that followed centered on the “blurry boundary between unlawful plagiarism and legitimate critical reinterpretation.”[6]  For the U.S. District Court for the Northern District of Georgia and the United States Court of Appeals for the Eleventh Circuit, the case presented an opportunity to revisit an issue Learned Hand called “the most troublesome in the whole law of copyright”—fair use.[7]

     The fair use doctrine has always protected commentary, criticism, and scholarly appropriation of copyrighted materials from claims of copyright infringement.[8]  Since the Supreme Court decided in Campbell v. Acuff-Rose Music, Inc.,[9] that 2 Live Crew’s rap version of “Oh, Pretty Woman” could claim fair use as a parody, the fair use doctrine has protected parody as well.[10]  Although both the district court and the circuit court agreed that TWDG borrows extensively from GWTW, whether it did so solely in the pursuit of parody became the ultimate question in the case.[11]  The district court found that TWDG was primarily a sequel; the circuit court, in reversing the lower court’s decision, said the book was primarily a parody.[12] Both courts relied heavily on the Campbell decision to arrive at opposite conclusions.[13]

     In Campbell, although the Court confirmed that parody could be a legitimate fair use defense to infringement, some questions remained unresolved.[14] For example, courts still differ on a legal definition of parody for the purposes of fair use defense analysis.[15]  Some courts state that a true parody must target the original work from which it borrows, while others say it may use the borrowed work as a weapon to comment on or ridicule something else.[16]  Additionally, courts still disagree on whether, even if a work is found to be a parody, the law limits how much it may take from the original.[17]

     This Comment reviews how the courts dealt with these questions in the case of Suntrust Bank v. Houghton Mifflin Co., and whether that decision advances the goal of copyright law in general and the fair use doctrine in particular.  This Comment also proposes that further broadening the definition of parody beyond the definition in Campbell, although in line with the goal of copyright law to have the freest possible access to and dissemination of knowledge, could weaken the incentive offered to those who create and develop the knowledge.  By lowering the threshold to allow more allegedly infringing works the opportunity to claim fair use as a defense, the court not only departs from Campbell’s guidelines, but fails to recognize that the granted term of copyright well exceeds the purpose it is intended to serve.

     Part I provides a brief overview of the history and scope of copyright protection.  Part II explains the fair use doctrine and how it applies to parody, including a brief description of the leading parody case, Campbell v. Acuff-Rose Music, Inc.[18]  Part III relates the background of the Suntrust Bank v. Houghton Mifflin Co. case.  The first section of Part IV discusses the district court opinion, followed by the circuit court opinion on the prima facie case of infringement, where the courts agreed.  The second section of Part IV relates the courts’ differing opinions on the fair use defense analysis.  This Comment concludes that although the circuit court’s decision reaffirms Campbell’s central holding that copyright law sufficiently protects parody, the circuit court’s fair use analysis departs from Campbell in significant ways that add confusion, not clarity, to this area of the law.

I. Brief Overview of Copyright Protection

A. History of Copyright

     English common law held that one had a property right to the product of his intellectual labor.[19]  The Statute of Anne[20] first codified the recognized rights of authors and granted “authors and their assigns” the sole right of publication for a renewable term of years.[21]  The basis for the law was to compensate an author by granting him a limited monopoly, but the government retained the right to lower unfairly high book prices upon the public’s petition.[22]  Thus, from the beginning of copyright law, the government sought to promote public access to new ideas while simultaneously encouraging authors to create them. Much of continental Europe took a different route, treating an author’s right in his work as a fundamental “moral right.”[23]  French law, in particular, recognized and sought to protect the “intimate bond” between an author’s personality and his work.[24]  This view of copyright established the author’s control over his work as paramount—beyond a limited property right and superceding society’s right of access to it.[25]

     U.S. copyright law derives from the English, utilitarian theme by proposing to advance creative expression for the benefit of the public at large by granting a copyright to the individual author as both an economic incentive and a reward.[26]  Article I, § 8, cl. 8 of the U.S. Constitution granted the power to Congress “[t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their Respective Writings and Discoveries.”[27] The ultimate aim was to promote broad public availability of literature, music, and the arts for the public good.[28]  The copyright granted a limited monopoly as an incentive to encourage authors to create.[29]  The competing claims of the public interest were to be balanced by the time limit imposed on the right.[30]  The public would have complete access to the work after the term of protection expired, when it entered the public domain.[31]

     Authorized by the Constitution, with an eye toward resolving conflicting state copyright laws, Congress passed the first national copyright law, the Copyright Act of 1790,[32] with very little debate.[33]  The law granted an author the exclusive right to “print, reprint, publish, or vend” the work, limited to books, for fourteen years with an additional fourteen year renewal.[34]  The Copyright Act of 1909[35] significantly expanded the scope of protection from books to “all writings,” and extended the length of protection to twenty-eight years, with an additional twenty-eight years upon renewal.[36]  The Copyright Act of 1976[37] (the Copyright Act) also expanded the scope of copyright law to include unpublished writing, codified the judicially created “fair use” doctrine, and preempted much state and common copyright law.[38]  The Copyright Act again expanded the term of copyright to the life of the author plus fifty years, among other provisions.[39]  In 1998, Congress extended the term to the life of the author plus seventy years, under the terms of the Sonny Bono Copyright Term Extension Act (CTEA).[40]

     Critics have called these continual congressional extensions of the protected term of years unwise and even unconstitutional.[41] But courts have consistently held that the Constitution grants to Congress, not the courts, the right to decide the term of copyright.[42]  In addition, the Copyright Act’s idea/expression dichotomy and the latitude the Act affords through fair use adequately protects First Amendment free speech guarantees.[43]

B. Scope of Copyright Protection

     The Copyright Act codifies the requirements of copyrightable subject matter: “Copyright protection subsists . . . in original works of authorship fixed in any tangible medium of expression . . . .”[44]  The Copyright Act limits copyright protection to an author’s expression, not his idea(s): “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.”[45] As the Supreme Court emphasized in Harper & Row v. Nation Enterprises:[46] “No author may copyright his ideas or the facts he narrates.”[47]  By protecting only a particular expression of an idea, the idea/expression dichotomy helps to ensure free access to ideas, and thus avoids confrontation with the First Amendment guarantee of free speech.[48]

C. Infringement of Copyright

     To show a prima facie case of infringement in a copyright action, the copyright holder must show (1) that he owns the copyright, and (2) that the defendant copied the original so that (3) it constituted an unlawful appropriation.[49] If no direct proof of copying exists, the plaintiff may prove copying by demonstrating that (1) the defendant had access to the original, and (2) substantial similarity exists between the alleged infringement and the original.[50]  Substantial similarity requires that the copying be both “quantitatively and qualitatively sufficient to support the legal conclusion that infringement (actionable copying) has occurred.  The qualitative component concerns the copying of expression, rather than ideas . . . .  The quantitative component generally concerns the amount of the copyrighted work that is copied . . . .”[51]  Courts have applied various tests, such as the “ordinary observer”[52] test, the “total concept and feel”[53] test, the “fragmented literal similarity”[54] test, or the “comprehensive nonliteral similarity”[55] test to determine whether works are substantially similar.[56]

II. The Fair Use Doctrine

A. The Source of the Fair Use Doctrine

     Tension exists between the dual guiding principles in copyright law.[57] The desire to have the freest possible access to and dissemination of knowledge directly competes with the need to restrict that access as an incentive to those who create and develop the knowledge.[58]  Fair use is an affirmative defense to copyright infringement, which limits the temporary monopoly granted by copyright “in furtherance of its utilitarian objective” by allowing use of copyrighted material for “criticism, comment, news reporting, teaching, . . . scholarship, or research.”[59]  In other words, use of copyrighted material without permission is fair when public policy demands that the public interest is greater than the private interest of the copyright holder.[60]

     The fair use doctrine was first articulated by Justice Story in Folsom v. Marsh.[61]  In Folsom, the defendant copied letters of George Washington from a copyrighted twelve-volume work to create an 866-page autobiography, 388 pages of which were copied verbatim.[62]  The letters were of great public interest and the secondary book was a short book, which would have increased the public’s access to the letters.[63]  Nevertheless, the court found the letters were proper subjects of copyright, and the copyright was infringed.[64]  Justice Story stated that to find fair use one could “look to the nature and objects of the selections made, the quantity and value of the materials used, and the degree in which the use may prejudice the sale, or diminish the profits, or supersede the objects, of the original work.”[65]

     Judges continued to apply fair use as an equitable rule of reason until 1976, when the Copyright Act codified both the types of works that trigger a consideration of fair use and the four factors to be balanced, including: 

(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.[66]

     As codified, fair use still operates as a “vague” doctrine.[67]  The use of the words “such as” and “including” continues the common-law tradition of fair use adjudication that requires a case-by-case analysis rather than bright-line rules.[68] If there is a bright-line rule in fair use analysis, it is that each case must be decided on its own facts.[69]   Thus, when an alleged infringer asserts fair use in his defense of an unenumerated use, such as parody, the fair use factors are applied, and “are all to be explored, and the results weighed together, in light of the purposes of copyright.”[70]

B. Parody —A Fair Use Defense to Infringement

     Parody, by its very nature, is in direct conflict with copyright.[71]  Because parody derives its usually humorous purpose from mocking another, usually serious work, its very existence rests upon the opportunity to copy the existing work.[72] “Parody is imitation.  And imitation, when it is of an expressive work such as a novel or play or movie, is a taking.”[73] Thus, in many parody cases, prima facie infringement is easily found.[74]

     Although not enumerated in 17 U.S.C. § 107, courts have long recognized that the fair use provision in the Copyright Act protects parody.[75]  Because copyright law seeks to promote broad public availability of literature, music, and the arts for the public good, recognizing a fair use defense for parody in copyright infringement cases allows society to realize the benefit of this socially useful literary genre.[76]

     Before the Campbell decision, application of the four fair use factors in parody cases led to varying results, even in similar cases, usually because the courts focused “on the degree of similarity between the parody and its object, . . . ignor[ing] the rationale of the fair use doctrine.”[77]  In Benny v. Loew’s Inc.,[78] the Ninth Circuit affirmed a lower court decision that “Autolight,” a televised takeoff that followed the story line of the film “Gaslight,” was not a fair use because it took too much from the original.[79]  In Columbia Pictures Corp. v. National Broadcasting. Co.,[80] on virtually the same facts, the same court found that Sid Caesar’s televised “From Here to Obscurity,” which lampooned the film “From Here to Eternity,” was fair use, because some limited taking should be permitted for parody to “conjure up” the original.[81]  Similarly, the Second Circuit ruled that a parody of a television jingle that mocked “I Love New York,” by substituting “I Love Sodom” to the same tune, was fair use, yet “The Cunnilingus Champion of Company C” sung in a racy musical to the tune of “The Boogie Woogie Bugle Boy of Company B,” was not.[82]  Although the Copyright Act is content neutral, judges can “manipulate” the flexible statutory fair use factors to effectively censor parodies “because they [find] them immoral or personally distasteful.”[83]

     In 1994, the Supreme Court heard Campbell v. Acuff-Rose Music, Inc.,[84] the Court’s first decision on whether and to what extent a parody could claim the fair use defense.[85]  The rap group 2 Live Crew used the name, the opening bass riff, and one verse of the original rock and roll classic “Oh, Pretty Woman” to create their own rap version of the song, a claimed parody.[86]  “The words of 2 Live Crew’s song copy the original’s first line, but then ‘quickly degenerat[e] into a play on words, substituting predictable lyrics with shocking ones . . . [that] derisively demonstrat[e] how bland and banal the Orbison song seems to them.’”[87]  The specific issue before the court was whether 2 Live Crew’s commercial parody could claim fair use as a defense to a charge of copyright infringement.[88]

     In addressing the first factor, the purpose and character of the use, the Court found that although commercial use could weigh against a fair use finding, it should not create an evidentiary presumption against alleged infringers in parody cases.[89]  In accord with the goal of copyright law to promote science and the arts, the Court broadened the first factor inquiry to consider whether the parody merely superceded the original, or whether it “add[ed] something new, with a further purpose or different character, altering the first with new expression, meaning, or message; it ask[ed], in other words, whether and to what extent the new work is ‘transformative.’”[90]  According to the court, “[p]arody needs to mimic [the] original to make its point.”[91]  Therefore, in order to claim fair use of original material, the parodist must use the material to create something new that, at least in part, comments on the original. If the alleged infringer does not target the original, but “merely uses [it] to get attention or to avoid the drudgery in working up something fresh, the claim to [fair use] . . .  diminishes.”[92]  The Court did not evaluate the quality of the parody to determine whether a fair use defense should apply in a particular case: “[t]he threshold question when fair use is raised in defense of parody is whether a parodic character may reasonably be perceived.”[93]  The Court resolved that 2 Live Crew’s song intended to ridicule the original, and the end product was transformative.[94]  Therefore, the lower court erred in finding that the song’s commercial purpose alone disqualified its use of the original as fair.[95]

     Finding 2 Live Crew’s song to be a parody altered the analysis of the remaining three fair use factors into a “more liberal formulation” that applies only when the work in question has been found to be a true parody.[96]  Considering the second factor, the nature of the copyrighted work, the Court reiterated that copyright affords expressive, creative, original works more protection against copying than it does factual works.[97]  However, because parodies almost invariably utilize such works, the character of the original “is not much help” in fair use balancing.[98]

     The Court then considered the third factor: “‘the amount and substantiality of the portion used in relation to the copyrighted work as a whole.’”[99]  The Court referred back to the first factor, because parody itself “springs from recognizable allusion to its object” and therefore necessitates taking enough to “conjure up” that original.[100]  2 Live Crew copied the first line of the lyrics and the opening bass riff and arguably took from the “heart” of the original.[101] The Court disagreed with a finding that this taking was “unreasonable as a matter of law,” and remanded so the lower court could reevaluate the reasonableness of the taking in relation to “the extent to which the song’s overriding purpose and character [was] to parody the original.”[102]

     The Court recognized that as “parody pure and simple . . . the new work will not affect the market for the original . . . by acting as a substitute for it  . . . because the parody and the original usually serve different market functions.”[103]  However, the new work may have a more complex character beyond parody, and may affect protectable markets for derivative works of the copyrighted original.[104]  The Court also remanded so that 2 Live Crew could present evidence that its rap version would not adversely affect the market for a “nonparody, rap version of ‘Oh, Pretty Woman.’”[105]

     The Court emphasized that, although parody is entitled to the fair use defense, it enjoys no more of a presumptive justification than any other use, such as news reporting.  Parody must still “work its way through the relevant [fair use] factors, and be judged case by case, in light of the ends of the copyright law.”[106]

     The Campbell decision liberalized the statutory factor analysis of fair use in parody cases and provided some guidance for future cases, where the finding of parody is clear.[107]  “[L]ower courts [may] no longer dismiss the parody as a non-fair use simply because it is commercial, or because it copied the heart of an original creative work.”[108] However, by requiring the lower courts to discern whether the alleged infringing work is a true parody or merely a satire, the Court forces judges to critique what a work means—whether the secondary work criticizes the original (true parody), or society in general (satire).[109]  Justice Kennedy’s concurrence warns that courts “must take care to ensure that not just any commercial takeoff is rationalized post hoc as a parody.”[110]

     Post-Campbell decisions where parody was raised as a fair use defense of infringement include, most notably, a Ninth Circuit decision which held that “The Cat NOT in the Hat!,” a retelling of the Simpson murder trial in the style of Dr. Seuss’ The Cat in the Hat! was not a parody, but a satire.[111]  The book “broadly mimic[s] Dr. Seuss’ characteristic style, [but] it does not hold his style up to ridicule.” [112]  The Second Circuit found that copying a famous photograph of a naked, pregnant, very serious Demi Moore, and superimposing upon it the head of a smirking Leslie Nielsen was a valid parody, even though as an advertisement its use was highly commercial.[113]  According to the court, the ad could “reasonably be perceived as commenting on the seriousness, even the pretentiousness, of the original.”[114]  In another case, an author failed to convince the court that The Joy of Trek, a book intended to “explain the Star Trek phenomenon to the non-Trekker,” was entitled to the fair use defense as a parody.[115]  The court found that although The Joy of Trek “poke[d] fun at Star Trek,” the overall purpose was not to mock Star Trek, therefore it was not entitled to the fair use defense of parody.[116]  None of these cases seriously challenged courts’ abilities to distinguish true parody based on the guidelines set forth in Campbell. TWDG presented a tougher case.

III. Background of Suntrust Bank

     In 1936, Margaret Mitchell penned the epic Gone With The Wind (GWTW).[117]  The love story of Scarlett O’Hara and Rhett Butler, set in the Civil War South, became one of the best-selling books in the world, and spawned one of the most popular movies of our time.[118]  Sixty-five years later, in 2001, Alice Randall wrote the novel The Wind Done Gone (TWDG).[119]  The tale’s narrator, Cynara, the beautiful mulatto slave woman, wins the love of R.B. (Rhett Butler) from her half-sister Other (Scarlett), only to summarily dump him later for a dashing young black politician.[120]  One critic hailed the book as “a sleek tale, a mystery novel . . . a palimpsest, a bodice-ripper, a meditation, a confession. . . . Randall has crafted a gleaming pendant to [GWTW].”[121]  Another critic wrote: “[Randall’s] plot is exiguous, her prose stiff and unsure . . . .  Nor is she any kind of parodist.  The only funny thing about [TWDG] . . . is the fawning press it’s been getting.”[122]  Notified of the impending publication of TWDG, Suntrust Bank, the trustee for the Mitchell estate, sued Randall’s publisher, Houghton Mifflin, on March 16, 2001, for copyright infringement.[123]

     Seeking a temporary restraining order to halt the book’s publication, the complaint identified TWDG as “a blatant and wholesale theft of [GWTW]” and an “unauthorized derivative work which incorporates and infringes upon the fully developed characters, settings, plot lines and other copyrighted elements of [GWTW].”[124]  The GWTW copyright expires in 2031.[125] Houghton Mifflin, publisher of TWDG, responded that the book borrowed ideas from GWTW, but was not “substantially similar” to and thus did not infringe upon GWTW.[126]  Houghton Mifflin also asserted a fair use defense of the borrowing[127] and characterized the book as a parody intended to ridicule the racist depictions of African–Americans in a popular American icon. [128]

     Of her motivation to write TWDG, Ms. Randall declared:

[GWTW] . . . more than any other work I know, has presented and helped perpetuate an image of the South that I, as an African-American woman living in the South, felt compelled to comment upon and criticize. It is an image of a world in which blacks are buffoonish, lazy, drunk and physically disgusting, and in which they are routinely compared to ‘apes,’ ‘gorillas’ and ‘naked savages.’[129]

     On April 20, 2001, the United States District Court for the Northern District of Georgia issued a preliminary injunction barring the release of TWDG.[130]  Houghton Mifflin appealed the decision, and on May 25, 2001, a three-judge panel of the Eleventh Circuit Court of Appeals vacated the preliminary injunction as an unlawful prior restraint in violation of the First Amendment.[131]  TWDG was published and began selling in bookstores by early June 2001.[132]

     The Eleventh Circuit denied a rehearing before the full court.[133]  An appeal to the U. S. Supreme Court was possible, as was a full trial on the merits in district court.[134]  On May 10, 2002, however, the Mitchell Trusts released a joint statement with Houghton Mifflin announcing “an agreement to drop its copyright infringement [law]suit against the book in return for an undisclosed charitable contribution to” Morehouse College, a “historically black Atlanta [c]ollege.”[135]

     The original action against Houghton Mifflin sought a temporary restraining order and preliminary injunction.[136]  Therefore no court decided the full case on its merits.[137] However, in seeking a preliminary injunction, a plaintiff must establish that: (1) there is a substantial likelihood that the plaintiff will prevail on the merits;[138] (2) the moving party will suffer irreparable injury if the injunction is not granted;[139] (3) the threatened injury to the moving party outweighs the threatened harm the proposed injunction may cause the opposing party;[140] and (4) the injunction, if issued, would not be adverse to the public interest.[141]  The first element, by its very definition, required thorough presentation and consideration of the merits of Suntrust’s copyright infringement claim as well as Houghton Mifflin’s fair use defense claim.[142]

IV. Suntrust  v. Houghton  Mifflin Co.

A. The Wind Done Gone Infringed on the Copyright of Gone With The Wind.

     In Suntrust Bank v. Houghton Mifflin Company,[143] (Suntrust I) the district court, holding for the plaintiffs, found that TWDG infringed on the GWTW copyright as protected under copyright law and granted a preliminary injunction.[144]  The district court found that the Mitchell Trusts own a valid existing copyright in GWTW, including the exclusive right to prepare derivative works, and to prevent any unauthorized musical arrangement, dramatization, or any other form in which the work may be recast, transformed, or adapted.[145]  Absent direct proof of copying by Randall, Suntrust had to show that TWDG’s author had access to GWTW and that the two works were “substantially similar.”[146]  Randall admittedly read GWTW twice, and in her own words “fell in love with the novel,” despite the offensive racial stereotyping.  She later realized she had to tell the “story that hadn’t been told.”[147]

     The district court found substantial similarity between TWDG and GWTW because an average lay observer would recognize the characters, character traits, scenes, settings, physical descriptions, and plot as those of GWTW. [148]  The district court also found fragmented literal similarity and comprehensive non-literal similarity.[149]

     The circuit court, in Suntrust Bank v. Houghton Mifflin Company[150] (Suntrust II), agreed that TWDG was substantially similar, particularly in its first half, which it found was largely “‘an encapsulation’ of [GWTW] [that] exploit[s] ‘its copyrighted characters, story lines, an settings as the palette for the new story.’”[151]  Both the district court and the circuit court found that Alice Randall “copied” GWTW.[152]  However, the courts disagreed on whether she was justified in doing so.

B. The Wind Done Gone – Unauthorized Sequel or Unauthorized Parody?

     The fair use provision in the Copyright Act protects parody.[153]  Parody is commonly understood to constitute a “literary or artistic work that imitates the characteristic style of an author or a work for comic effect or ridicule.”[154]  In Campbell, the Court stated that for the purposes of copyright law, a “[p]arody needs to mimic an original to make its point.”[155]  The Court refined the definition of parody as a type of satire that “use[s] . . . some elements of a prior author’s composition to create a new one that, at least in part, comments on that author’s works.”[156]  Although debate still surrounds the meaning of parody,[157] Campbell made clear that the fair use analysis is altered when parody is found during the first factor analysis of the purpose and character of the use.[158]  Thus, in Suntrust I and Suntrust II, the application of the fair use factors depended on whether or not TWDG was found to be a parody.[159]

C. The Fair Use Analysis in Suntrust I.

     The first factor in a fair use inquiry is 17 U.S.C. § 107(1): “the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes.”[160]  Following Campbell v. Acuff-Rose Music, Inc.,[161] the district court considered whether TWDG “add[ed] something new, with a further purpose or different character” and was thus “transformative.”[162]  The district court stated that because parody is obviously transformative, it was necessary to decide whether TWDG was a parody in order to weigh that factor in light of others, like commercialism.[163]  If TWDG used GWTW merely to “get attention” or to “avoid the drudgery in working up something fresh,” the claim of fair use would be diminished.[164]  In this balancing test, if the court found TWDG to be a parody, the transformative value would outweigh the commercial use.[165]

     Suntrust maintained that TWDG was an unauthorized sequel.[166]  Because Suntrust alone has control over derivative works, including sequels,[167] finding that TWDG was a sequel would tilt the scales from highly transformative toward commercial, and thus against a finding of fair use.[168]

     Parody must target the original, not just use it as a weapon to target something else.[169]  The district court found that TWDG did criticize GWTW’s one-sided view, but also used the original expression of GWTW to facilitate the author’s social commentary on Southern history in general.[170]  For example, in TWDG the slave Garlic (originally the obedient and loyal Pork in GWTW[171]) controls his master so thoroughly that when “Garlic pull[s] the string[s], . . . Planter [the master] dance[s] like a bandy-legged Irish marionette.”[172]  The district court observed that the scene could be perceived as funny and ironic, but because the scene essentially “further elaborate[d] upon an extant character from [GWTW]” it more closely resembled a sequel (albeit with a political message) than a parody.[173] 

     Asa the district court pointed out, the new book does not borrow the characters merely to mimic them, but uses them established characters from GWTW to tell the new story.[174]  TWDG’s Other (Scarlett in GWTW) is a powerful character who demands attention.[175]  Similarly, R. (Rhett Butler) is a major complex character in TWDG and plays a “key role” in the new tale.[176]  The district court noted that the pre-lawsuit book cover described TWDG as:

an inspired act of literary invention [that] supplies the story that has been missing from the work that more than any other has defined our image of the antebellum South, Margaret Mitchell’s [GWTW].  Imagine . . . the black characters in Mitchell’s tale were other than one-dimensional stereotypes . . . that Scarlett O’Hara had an illegitimate mulatto sister, and this sister, Cynara, Cinnamon, or Cindy – beautiful and brown – gets to tell her story. [177]

     The district court observed that if the “work is intended to supply the missing story of the earlier work and takes up where the former work left off, then it is a sequel.”[178] The court compared the original jacket copy to the new, revised book jacket, which added the phrase: “A provocative literary parody that explodes the mythology perpetrated by a Southern classic.”[179]  In addition, the revised inside jacket cover copy now states: “[TWDG] allude[s] to events in Mitchell’s novel but ingeniously and ironically transform[s] them . . . .”[180]  Despite these attempts to recast the work as transformative parody, the district court found TWDG to be “exactly what it bills itself as, a sequel to [GWTW], told from the perspective of Scarlett’s mulatto half-sister, Cynara.”[181]

     The district court found that TWDG is transformative to the extent that its structure and style differ dramatically from GWTW.[182]  Ms. Randall added the missing miscegenation, whippings, families sold apart, and free blacks striving for their education into the story, as well as telling the new story from a different perspective in the form of a first person narrative.[183]  The court concluded that TWDG “contains transformative parody that criticizes the earlier work,” but transforms it “no more than any other sequel to an original work.”[184]  Therefore, the court found the commercial purpose of TWDG weighed strongly in favor of the plaintiff, but the finding that TWDG was transformative served to temper that weight.[185]

     Under the second factor—the nature of the copyrighted work—the more creative a work, the more protection it should be accorded from copying.[186]  When a work is found to be a parody, this second statutory factor “is not much help.”[187] Because the district court had found that TWDG was not a parody and that GWTW was a highly original creative and imaginative work, the second factor militated against a finding of fair use.[188]

     Assessing the third factor, the amount and substantiality of the portion used, required the court to judge the quality and quantity of the amount of GWTW taken by TWDG.[189]  The district court again looked to Campbell, where the Supreme Court urged that when gauging whether the amount taken is fair, a court should give special consideration to an alleged infringer who asserts a parody defense.[190]  Because TWDG depended for its very effectiveness upon recognition of the elements of GWTW, it needed to take enough to “conjure up” the original “to make the object of its critical wit recognizable.”[191]  The court found that the quantitative taking was excessive, even granting the parodic use: “Her use does not merely ‘conjure up’ the earlier work, but rather has made a wholesale encapsulation of [GWTW], copied its more famous and compelling fictional scenes . . . and [employed its] most notable characters.”[192] The qualitative taking was substantial as well; TWDG copied the “plot, themes, characters, character traits, settings, scenes, descriptive phrases, and verbatim quotes.”[193]  Essentially, the court found that Ms. Randall could have achieved a parodic result using substantially less than she did, and thus, “the third factor militate[d] against a finding of fair use.”[194]

     The fourth factor, the effect of the use on the market value of the original, measures the degree “to which the parody may serve as a market substitute for the original or potentially licensed derivatives.”[195] A “derivative work” is one “based upon one or more preexisting works, such as . . . an abridgement, condensation, or any other form in which a work may be recast, transformed, or adapted.”[196]  In Campbell, where rap musicians substantially copied “Oh, Pretty Woman” to create a parody, the Court commented that the musicians, in asserting the affirmative defense of fair use, bore the burden to show the lack of an adverse effect upon the market for rap derivatives of the original.[197] The Court predicted that the “evidentiary hole [would] doubtless be plugged on remand.”[198]

     The derivative market for GWTW, however, is well established and has generated millions of dollars for the Mitchell Trusts.[199]  The court pointed out that by “killing two core characters from [GWTW] and marrying off another, [TWDG] has the immediate effect of damaging or even precluding the Mitchell Trusts’ ability to continue to tell the love story of Scarlett and Rhett.”[200]  The defendant argued that because TWDG is a stinging criticism of GWTW, there would be little chance that the plaintiff would ever license such a work.[201]  The court agreed that harm is less certain where the use is parodic, but even if TWDG’s parodic intent was substantial, its parodic effect is slight in comparison to the extensive copying.[202]  Therefore, the district court concluded that TWDG’s market harm to GWTW was in its “market substitution” as a sequel, not due to the “effectiveness of its critical commentary.”[203] The district court found that the “instant harm of market substitution weigh[ed] against a finding of fair use under the fourth factor.”[204]

D. The Fair Use Analysis in Suntrust II.

     The circuit court, like the district court, first had to decide whether or not TWDG was a parody.[205]  To do so, it redefined parody by eliminating any requirement that parody include humor and broadened the definition of parody beyond that provided in Campbell.[206]  “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.”[207]  Because TWDG is “a specific criticism of and rejoinder to the depiction of slavery and the relationships between blacks and whites in GWTW,” albeit in the form of a novel, the court concluded that the “parodic character of TWDG is clear.”[208]

     In analyzing the first factor, the purpose and character of the work, the circuit court found TWDG to be a legitimate parody, because its use was highly transformative, outweighing the book’s commercial, for-profit nature.[209]  Thus, the court found that the first factor tipped in the defendant’s favor.[210] The court recognized that TWDG is a novel that depends heavily on copyrighted elements to carry its story forward, but found that TWDG’s principal parodic nature is a critical statement of GWTW.[211]  Where the district court used an example from TWDG to support its characterization of the book, the circuit court instead drew from Ms. Randall’s description of her intent to “explode” GWTW’s version of the antebellum South.[212] Further, the circuit court quoted, at length, several of the racially offensive quotes from GWTW as sources for legitimate political comment that inspired the writing of TWDG.[213]

     The circuit court agreed with the district court that the very style of the first-person narrative shortened and significantly transformed the borrowed copyrighted elements of GWTW.[214]  The circuit court maintained that TWDG only borrowed elements to further the “general attack” on GWTW.[215]  Reasserting the finding that TWDG is a parody, thus highly transformative, and that TWDG can provide a social benefit by shedding light on an earlier work, the circuit court found that the facts in this case militated in favor of finding fair use.[216]

     In factoring the weight of the nature of the copyrighted work, the second factor, the circuit court acknowledged that copyright affords the highest protection to original works of fiction, such as GWTW.[217]  Because the circuit court had found TWDG was a parody of GWTW, the original expressive nature of GWTW carried little weight, and the second factor favored fair use.[218]

     In the third factor analysis of the amount and substantiality of the portion used, the circuit court first commented that GWTW, merely because it is famous, deserves neither more nor less protection from copyright law.[219]  The court extended the transformative function, identified in discussion of the first factor, to justify TWDG’s substantial borrowing from GWTW.[220]  Thus, the court excused taking where TWDG altered the meaning of the borrowed elements, characters, quotes, and scenes from GWTW for the purpose of critical commentary.[221]  In response to the plaintiff’s charge that the defendant took many elements that had no discernable parodic function, the court declined to enter into a “highly subjective [literary] analysis ill-suited for judicial inquiry,” and thus did not decide whether those takings were necessary.[222]  The court decided that any “extraneous” material taken would be suspect only if it would negatively affect the potential market for or value of the original copyright.[223]  Because the court had not yet addressed the market value factor, it could not yet determine whether the quantity and quality of the materials used were reasonable.[224]

     The circuit court, like the district court, considered whether TWDG would cause potential harm to the market for derivative works of GWTW through its analysis of the fourth factor.[225]  The circuit court, however, found the plaintiff’s proffer of relevant evidence of potential market harm was insufficient, and concluded that the fourth factor also favored the defendant.[226]  The circuit court stated that the plaintiff should have focused on whether and to what degree TWDG would have supplanted demand for GWTW’s licensed derivatives, instead of on the value of GWTW and its derivatives.[227]

     Because the circuit court found that Suntrust had not established the likelihood of its success on the merits, nor shown irreparable injury, the court vacated the district court’s injunction and remanded the case to the district court.[228]

Conclusion

     The Suntrust II decision continues the tradition of fair use adjudication that requires a case-by-case analysis rather than bright-line rules.[229]  The opinion may “become ‘very influential’ in future copyright litigation.”[230]  One who seeks to contribute to the wealth of knowledge and artistic ideas through a secondary fictional work by borrowing from a copyright-protected cultural icon (or just an ordinary work) may more easily succeed on a claim of fair use—even when the secondary work is merely critical.  However, expanding the parameters of acceptable fair use seems to be an end-run around the fact that the copyright term is much longer than it needs to be (ninety-five years, in the case of GWTW) to serve as an incentive to create new, original works.[231]

     Broadening the meaning of parody to accommodate a work that is arguably not a true parody weakens copyright protection for any work that might be copied, regardless of how long it has been protected.[232]  Suggestions to add more fair use factors to protect works that have not yet reaped “enough” substantial profits would inject even more subjectivity into fair use analysis.[233]  Cases have shown that the flexibility of the fair use doctrine has allowed courts to censor “distasteful” parodies.[234]

     By both reaffirming Campbell and departing from it, the circuit court’s decision added more confusion than clarity to those questions Campbell left unanswered.  The circuit court faced a dilemma because TWDG did not fit neatly into any of the existing legal parody definitions.  TWDG arguably lacks humor, promotes a political statement critical of the fictional GWTW, but does not “lampoon Mitchell’s prose or the narrative devices of GWTW.”[235]  Yet, the circuit court recognized the value of the critical message Ms. Randall sought to convey[236] and that its perceived political nature concerned the type of speech that triggers heightened First Amendment protection.[237]  By lowering the threshold for TWDG, however, the circuit court ignored the Campbell Court’s warning to “keep[] the definition of parody within proper limits,” lest doubts about “whether a given use is fair . . . be resolved in favor of the self-proclaimed parodist.”[238]

     The circuit court’s opinion departed from Campbell in other respects. In analyzing the third fair use factor, the circuit court could not ignore the extensive borrowed elements that seemed to have no parodic purpose at all.[239]  Instead of considering whether TWDG took more than was necessary, (the standard “conjure up” test),[240] the court stated that any material that “is ‘extraneous’ to the parody is unlawful only if it negatively effects the potential market.”[241]  If by extraneous the circuit court meant unnecessary to further the effectiveness of the parody, or conjure up the original, the analysis is inconsistent with that of the Court in Campbell.  In Campbell, the Court expressed that even granting the parodic purpose and the probable lack of market harm, whether the taking in that case was “excessive” was still open to determination on remand.[242]  In other words, determination of “excessive taking” was a contextual question tied to the first and fourth factors.[243]

     As stated in Campbell, a parody would not likely supplant the demand for an original or its derivatives, as each serves a different market function.[244]  The original author presumably would have no interest, and thus suffer no harm, in the market for a parody of his own work.  Also, as the Court stated in Campbell, copyright law does not protect an original from harm when a lethal parody, such as a scathing review, kills the market demand for an original.[245]  Under a limited definition of parody, this viewpoint makes sense.  However, if the definition of parody is broadened to include “artistic, as opposed to scholarly or journalistic”[246] works, the presumption is weakened.  An “artistic” work with parodic elements might very well compete in the same market, and thereby cause harm. Moreover, as the Court in Campbell pointed out, especially when a work is not pure parody, the secondary work could harm the potential derivative market for the original.[247]

     Finally, by eliminating any requirement that the “parody” target the original, the court opens up the category beyond what is needed to protect the freedom to make critical comments on expressive works, which is already well protected by copyright law.[248]  As an enumerated fair use, critical commentary has been specifically protected since Congress passed the Copyright Act of 1976.[249]  For Ms. Randall’s commentary, “[t]he device [she] chose was to create, in a work of fiction, a literary parody of Gone With The Wind.”[250]  The district court compared the contents of the two novels to conclude that TWDG was more like a sequel to GWTW.[251]  The circuit court based its analysis most heavily upon TWDG’s author’s expressed intent in writing it and thus found it to be a parody.[252]   Regardless of the label, “The Unauthorized Parody,” belatedly stuck to TWDG’s cover, one can’t tell a book by its cover.  Alice Randall’s declaration, which lists the offensive, racist ideas and language in GWTW in detail, is a more compelling indictment of GWTW (and the society that elevated it to a classic) than is her book.[253]  The fact remains that Ms. Randall could have criticized GWTW, perhaps more effectively, without using any copyrighted materials at all.[254]