Penguin Random House LLC et al v. Frederick Colting et al.
OPINION AND ORDER re: 21 JOINT MOTION for Summary Judgment, 22 MOTION for Summary Judgment, and 27 MOTION for Summary Judgment (Revised). As defendants make no effort to show that Congress lacked such a rational basis for providing plaintiff s an exclusive right to exploit derivative works, including children's adaptations, this Court cannot provide defendants with the relief they are seeking. In sum, given the clearly infringing nature of defendants' Guides, and the fact that that the Guides are unauthorized derivative works that do not primarily critique or parody plaintiffs' Novels but rather reproduce, albeit in a different form, plaintiffs' "original work of authorship," no reasonable trier of fac t could find for defendants in this case. The Court therefore, in its Order of July 28, 2017, granted summary judgment to the plaintiffs on all nine counts of infringement and rejected the affirmative defense of fair use as a matter of law. The Clerk of the Court is hereby directed to close the motions at docket entry number 21, 22, and 27, and as further set forth herein. (Signed by Judge Jed S. Rakoff on 9/7/2017) (ras)
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
PENGUIN RANDOM HOUSE LLC; SIMON &
SCHUSTER, INC.; ALAN U. SCHWARTZ
as trustee of THE TRUMAN CAPOTE
LITERARY TRUST; JOHN SAMPAS as
Literary Representative of THE
ESTATE OF JACK KEROURAC; NANCY
BUMP; ANTHONY M. SAMPAS; JOHN
LASH, Executor of THE ESTATE OF
JAN KEROUAC; THE DR. ARTHUR C.
CLARKE TRUST; HEMINGWAY COPYRIGHTS,
LLC; THE PATRICK HEMINGWAY AND
CAROL T. HEMINGWAY REVOCABLE
LIVING TRUST; and THE HEMINGWAY
OPINION AND ORDER
FREDERIK COLTING and MELISSA
MEDINA, d/b/a MOPPET BOOKS,
JED S. RAKOFF, U.S.D.J.
Penguin Random House LLC,
Inc., Alan U. Schwartz as trustee of The Truman Capote
Literary Trust, John Sampas as literary representative of The Estate
of Jack Kerouac, Nancy Bump, Anthony M. Sampas, John Lash as
executor of The Estate of Jan Kerouac, The Dr. Arthur C. Clarke
Trust, Hemingway Copyrights, LLC, The Patrick Hemingway And Carol T.
Hemingway Revocable Living Trust, and The Hemingway Family Trust
(collectively "plaintiffs") brought this suit against Fredrik
Colting and Melissa Medina
(d/b/a Moppet Books)
"defendants"), alleging nine counts of copyright infringement.
Plaintiffs are the owners and exclusive licensees of copyrights in
four famous novels: Breakfast at Tiffany's by Truman Capote, The Old
Man and the Sea by Ernest Hemingway, On the Road by Jack Kerouac,
and 2001: A Space Odyssey by Arthur C. Clarke
Defendants have published "a series of illustrated
children's books" "based on" these Novels
"Guides"), which contain "condensed, simplified version[s] of
the[ir] plot[s] ." See Defendants' Response to Plaintiffs' Rule 56.l
Statement of Material Facts (''Def. 56.1 St."), ECF No.
Following the completion of discovery, plaintiffs sought
summary judgment in their favor on the issue of liability, and
defendants cross-moved for summary judgment in their favor on the
issue of liability and on the affirmative defense of fair use.
Plaintiffs also moved for summary judgment on the issue of
In a bottom line order dated July 28, 2017, ECF No.
the CoJrt granted summary judgment to plaintiffs on all nine counts
of copyright infringement -
two for each of the four Novels and one
for the character of Holly Golightly - and rejected the affirmative
defense of fair use as a matter of law. On the issue of willfulness,
the Court permitted defendants, based on representations made by
their counsel in open court, see Transcript, dated July 24, 2017,
48, to raise
(somewhat belatedly) an advice of counsel
defense and permitted additional discovery on that defense. As a
consequence of that decision, plaintiffs no longer seek summary
judgment on the issue of willfulness, and the Court has set the case
down for trial on October 2, 2017 to resolve the remaining issues.
See Order, ECF No.
This Opinion and Order sets forth the reasons for these
The pertinent facts,
or, where disputed,
taken most favorably to the respective non-movant, are as follows:
At all times here relevant, plaintiffs owned valid copyrights
to Breakfast at Tiffany's, The Old Man and the Sea, On the Road, and
2001: A Space Odyssey. Def. 56.l St.
"colorfully illustrated story summaries," called "KinderGuides," are
designed to "introduce" these works tc children. Id.
On or about September 22, 2016, defendants published their four
(part of a planned 50-book series). Id.
65. On their front
the Guides very prominently display the titles of
plaintiffs' Novels and the names of the authors of plaintiffs'
Novels, along with the words "KinderGuides," in large print and,
much smaller print, the words "Early Learning Guides to Culture
Classics." Declaration of Marcia B. Paul, Esq. in Support of
Plaintiffs' Motion for Summary Judgment
("Paul Deel."), Exs. 49-52,
35. The only other words are "Illustrations by
very small print at the bottom.
All four Guides share the same layout. The first four pages
feature illustrations and one-line quotations taken from and
attributed to the authors of the Novels
(Capote, Hemingway, Kerouac,
and Clarke). The fifth page contains publication information, and
the sixth is a title page,
stating, to take one example,
''KinderGuides: Early Learning Guides to Culture Classics," "On the
Road," "by Jack Kerouac," and,
in smaller font,
Rose Forshall," "a division of Moppet Books/Los Angeles, CA." The
seventh and eighth pages contain a "Table of Contents." The ninth
displays an illustration of the original author of the Novel, and
the tenth is a page "About the Author." Following these front-pages
are "Story Summaries," which comprise a few dozen pages. Appended
after these "Story Summaries" are a series of back-pages, two each
devoted to "Main Characters," "Key Words," "Quiz Questions," and
"Analysis." See Paul Deel., Exs.
Defendants admit that they had access to plaintiffs' Novels in
preparing their Guides and that they relied on them.
Def. 56.l St.
Indeed, a side-by-side comparison of plaintiffs' and defendants'
works reveals as much. Not only do the plots,
characters of the Guides mirror the Novels, but the Guides also
include many specific details from the Novels.
versions of Breakfast at Tiffany's, Holly Golightly's business card
reads "Holly Golightly, Traveling," and in both versions Holly
describes an experience she calls "the mean reds," or feeling afraid
"but you don't know what you're afraid of." See Paul Deel., Ex.
Truman Capote, Breakfast at Tiffany's
mean reds are horrible. You're afraid
(2012 edition) at 32
but you don't know what
you're afraid of"); Id., Ex. 50, KinderGuides,
. the mean reds. That means she is
afraid but doesn't know what she is afraid of."). Similarly, in both
versions of On the Road, Sal drives across the United States with
$50 in his pocket and goes to see a blind jazz pianist named George
Shearing; in both versions of 2001: A Space Odyssey,
Floyd travels to Clavius Base, a space station on the moon, where
there is a large monolith named "TMA-1" and a crater named "Tyco";
in both versions of The Old Man and the Sea, Santiago has gone
84 days without catching a fish and roots for the New York Yankees.
See Paul Deel., Exs.
45-52. While, of course, many aspects of
plaintiffs' Novels do not appear in defendants'
shorter Guides, all
of the plots, characters, and settings in defendants' Guides appear
in plaintiffs' Novels.
It is also undisputed that there is an established market for
children's books based on adult novels, and that it is not unusual
for copyright holders to publish, or license publication of,
children's versions of works originally intended for adults. Def.
145 (noting that "Defendant Colting understood,
prior to publishing the KinderGuides, that there was a market for
children's editions of adult novels"). Defendants, however, never
sought permission to prepare children's guides for plaintiffs'
It is further undisputed that plaintiffs have never authorized
anyone to publish children's versions of their Novels,
Def. 56.1 St.
Admittedly, the Old Man of this Court shares the latter failing.
97. The managers of Hemingway's literary estate altogether
rejected requests to create children's versions of The Old Man and
101. Penguin Random House considered authorizing a
children's version of 2001: A Space Odyssey, but decided against it.
105. The Capote estate did authorize the creation of an
stand-alone children's version of A Christmas Memory -
a short story originally included in the same volume as Breakfast at
Tiffany's - but did not authorize a children's version of Breakfast
Penguin Random House and the
Clarke Estate have authorized the creation of an ESL ("English as a
version of 2001: A Space Odyssey - "a simplified
version," which includes "inserted pages of exercises and notes,"
but no children's versions.
When parties cross-move for summary judgment, the Court
analyzes the motions separately, "in each case construing the
evidence in the light most favorable to the non-moving party."
Victorinox AG v. B & F Sys., Inc., 114 F. Supp. 3d 132, 135
(quoting Novella v. Westchester Cnty.,
661 F.3d 128,
(2d Cir. 2011)). "Summary judgment is appropriate only if the
moving party shows that there are no genuine issues of material fact
and that the moving party is entitled to judgment as a matter of
law." Miller v. Wolpoff & Abramson, L.L.P.,
321 F.3d 292,
Cir. 2003); Fed. R. Civ. P. 56 (c). The court "must draw all
reasonable inferences and resolve all ambiguities in favor of the
non-moving party." Castle Rock Entm't,
Inc. v. Carol Pub. Grp.,
150 F.3d 132, 137
(2d Cir. 1998)
Garza v. Marine Transp. Lines,
861 F.2d 23, 26
198 8) ) .
The Copyright Act of 1976 (the "Copyright Act"),
17 U.S.C. §§
101-805, grants copyright owners a bundle of exclusive rights,
including the exclusive right to "reproduce the copyrighted work"
and the exclusive right "to prepare derivative works based upon the
copyrighted work." Id. § 106; Castle Rock,
150 F.3d at 137. Here,
plaintiffs allege that defendants' Guides infringe both those
rights. See Amended Complaint, ECF No. 11
To prevail on either ground, plaintiffs must prove that:
they hold a valid ownership interest in the relevant copyrights,
defendants have "actually copied" their works, and (3) defendants'
"copying is illegal" because of a "substantial similarity" between
works and the "protectable elements" of their
copyrighted works. Castle Rock,
150 F.3d at 137. To prevail on the
second ground, plaintiffs must further prove that
works are unauthorized derivatives under 17 U.S.C. § 106(2). 2
With respect to the first ground, the question of whether
defendants' Guides are derivative works is "completely superfluous,"
as "infringement of the adaptation right necessarily infringes the
reproduction right." Twin Peaks Prods., Inc. v. Publications Int'l,
Ltd., 996 F.2d 1366, 1373 (2d Cir. 1993) (citing 2 Nimmer§ 8.09[A]
As noted, plaintiffs allege, and defendants do not dispute,
that plaintiffs hold valid and subsisting copyrights
in the Novels at issue in this case. Def. 56.1 St.
plaintiffs have produced registration certificates and applicable
renewals for these copyrights. See Amended Complaint, Exs. A-0. Such
documents constitute prima facie evidence of valid ownership. See 17
410(c); Novelty Textile Mills,
558 F.2d 1090, 1092, n.l
protect the Novels'
Inc. v. Joan Fabric Corp.,
(2d Cir. 1977). Such registrations also
fictional characters, including Holly Golightly,
the protagonist of Breakfast at Tiffany's. See Salinger v. Colting,
641 F. Supp. 2d 250, 254
(finding that a novel's
protagonist is protected by the author's copyright in the novel),
vacated and remanded on other grounds,
607 F.3d 68
(2d Cir. 2010)
Having therefore carried their burden with respect to copyright
ownership, plaintiffs must next show that their "work was actually
copied." Actual copying may be established (a)
of copying" or
"by direct evidence
"by indirect evidence, including access to the
similarities that are probative of copying between
and expert testimony." Laureyssens v.
964 F.2d 131, 140
(2d Cir. 1992). The question of "actual copying"
is distinct from,
and precedes, the question of infringement and
"substantial similarity." To prove actual copying, however,
plaintiffs need only show "probative" similarity
that the creators
of the allegedly infringing works drew from the copyrighted works.
See Castle Rock,
150 F.3d at 137; Jorgensen v. Epic/Sony, 351 F.3d
(2d Cir. 2003).
the undisputed facts easily establish actual copying.
Defendants admit that,
in preparing their Guides, they read
Def. 56.1 St.
73. Further, defendants display
the actual titles of plaintiffs' Novels on the front covers of their
Guides and concede that their Guides are "based on the novels." Id.
74. This constitutes actual copying as a matter of law. See
Paramount Pictures Corp. v. Carol Pub. Grp.,
(S.D.N.Y. 1998), aff'd sub nom.
181 F.3d 83
F. Supp. 2d 329,
(2d Cir. 1999)
(arguing that "it would be absurd to suggest that"
actual copying did not occur in a case where defendant's work "is
devoted to telling a large portion" of the story in plaintiff's
After ''actual copying is established," plaintiffs must
"demonstrate that the copying was improper or unlawful by showing
that the second work bears
'substantial similarity' to protected
expression in the earlier work." Castle Rock,
(quoting Repp v. Webber, 132 F.3d 882, 889
150 F.3d at 137
(2d Cir. 1997);
964 F.2d 131, 140
(2d Cir. 1992)).
Specifically, plaintiffs must prove that the copying is
"quantitatively and qualitatively sufficient to support the legal
conclusion that infringement
(actionable copying) has occurred."
150 F.3d at 138
(quoting Ringgold v. Black
126 F.3d 70,
(2d Cir. 1997)). The
qualitative prong regards the nature of the copied expression - it
must be "protected." The quantitative prong regards the amount of
such copying - it must be more than de minimis.
There are a variety of special tests that courts sometimes
apply to assess substantial similarity. These tests are designed to
assist courts in determining whether protectable expression has been
copied, particularly in situations where the relevant works are, at
least superficially, distinct from each other. For example,
courts often employ Learned Hand's "ordinary
observer" test, which he first used to compare two dress designs.
Peter ?an Fabrics,
(2d Cir. 1960)
Inc. v. Martin Weiner Corp., 274 F.2d 487,
(Hand, J.). For textual works, where two otherwise
dissimilar pieces include similar sentences and wording, courts
frequently apply the "fragmented literal similarity test," which
"focuses upon copying of direct quotations or close paraphrasing."
150 F.3d at 140. By contrast, when two works do not
have literal, word-for-word similarity, courts sometimes apply the
"comprehensive non-literal similarity
test, weighing the "total
concept and feel" of the works including their "theme, characters,
sequence, pace, and setting." Castle Rock,
150 F.3d at 140
(citing 4 Melville B. Nimmer and David Nimmer, Nimmer on Copyright
[A] [l] at 13-24
(1997)). The "comprehensive non-literal
similarity" test allows a plaintiff to enforce its copyright in a
though there is little or no word-for-word similarity,
the defendant has nonetheless appropriated "the fundamental essence
or structure" of plaintiffs' work.
In the instant case, however, none of these special tests is
even needed to establish substantial similarity, as defendants'
Guides are not even superficially distinct from the respective
Instead, they are explicitly based on plaintiffs' Novels,
and seek in defendant's words, to "introduce" them to children
"through colorfully illustrated story summaries and kid-friendly
analyses." Def. 56.1 St.
have the Court,
this obvious similarity, defendants would
subtract from defendants' Guides the
characters, plots, and settings that were directly lifted from
on the ground that these elements do not
protectable expression. See Knitwaves,
71 F.3d 996,
(2d Cir. 1995)
Inc. v. Lollytogs
(noting that a court must
limit its infringement inquiry to whether "the protectable elements,
are substantially similar").
Defendants make several arguments in support of this approach.
First, defendants claim that the characters, plots, and settings in
plaintiffs' Novels are merely "a collection of made-up facts" or
''fictional facts," and,
(historical or independently-existing)
facts are not protected, these elements are not aspects of "an
author's original expression" subject to copyright. Defendants'
Memorandum of Law in Support of Summary Judgment
5. As defendants put it, their Guide to 2001: A Space Odyssey
"merely summarized some of the facts of the book and the characters,
not the creative expression that makes Dr. David Bowman and HAL [the
characters] memorable." Def. Mem. at 9 (emphasis added).
words, the aspects of plaintiffs' Novels that appear in defendants'
such as the character of Holly Golightly, her place of
residence, her trips to the prison, her relationship to Sally
Tomato, are not protected expression but, according to defendants,
This exercise in sophistry, however, which confuses the
difference between historical or independently-existing facts and
fictional details created by a novelist,
finds no support in
applicable law. As the Second Circuit has clearly stated,
"characters and events" that "spring from the imagination" of
authors are copyrightable, creative expression. See Castle Rock,
F.3d at 139. Thus, the Copyright Act protects both the literal text
Dr. Bowman and HAL, and the "made-up facts"
about Dr. Bowman and HAL. "Unlike the facts in a phone book, which
do not owe their origin to an act of authorship," each "fact" in
Guides is really "fictitious expression" created by
authors. Castle Rock,
150 F.3d at 139. Because the
"characters and events" in defendants' Guides "spring from the
imagination o=" Capote, Hemingway, Kerouac,
and Clarke, each Guide
"plainly copies copyrightable, creative expression." Id.
Inc. v. Rural Tel. Serv. Co.,
(discussing the distinction between "discovered facts,"
which do not "owe their origin to an act of authorship" and thus are
not protected by copyright, and "created facts," which constitute
original, protected expression).
Second, defendants argue that the characters in plaintiffs'
works are unprotectable ''stock characters." For example, Breakfast
at Tiffany's is, according to defendants,
just the story of "a small
town girl with a tough past who has come to the big city." Dean, in
On the Road,
is just "a stereotypical womanizing, wild guy and Sal,
is portrayed as a young writer." Thus, defendants
Sal and Dean are simply "stock characters and do not warrant
copyright protection." Def. Mem. at 10.
Defendants again misstate the law. While copyright law does not
protect basic characters and stock figures,
45 F.2d 119, 122
see Nichols v. Universal
(2d Cir. 1930), copyright law does
protect characters who are sufficiently delineated to be original.
As the Seventh Circuit points out, in the very case defendants cite,
a knowledgeable old wino is not a copyrightable character per se,
but one named Cagliostro with an obviously phony title
faintly Mosaic facial features is protected. "No more is required
for a character copyright." Gaiman, 360 F.3d at 660. See also
Detective Comics v. Bruns Publications,
111 F.2d 432,
(finding that "Wonderman," a superhero with only superficial
differences from ''Superman" is infringing, even though both are
drawn from the same basic Herculean character type)
The general rule is that, where defendants' works use "more
than general types and ideas and have appropriated the pictorial and
literary details embodied in the complainant's copyrights,"
defendants' works are infringing. Detective Comics,
111 F.2d at 433.
Here, defendants do not even attempt to conceal their copying.
their explicit intention was to lift plaintiffs' characters
to "introduce" them to children. Thus, for example, defendants'
of Breakfast at Tiffany's does not tell the story of just
any "small town girl with a tough past," but the story of the very
distinctive Holly Golightly. And, as noted, defendants make a point
of copying the very expression of that distinctiveness,
such as the
text on Holly's business card and her original idiom "the mean
reds." Similarly, defendants'
Guide to On the Road is not just about
a ''womanizing wild guy," but a distinctive womanizing wild guy named
Dean who travels across the country having particular adventures
with his equally distinctive friend Sal.
Third, defendants argue in that latter regard that the plots of
plaintiffs' Novels, which defendants reproduce in their Guides, are
merely unprotectable "scenes A faire," or "incidents, characters or
settings which are as a practical matter indispensable, or at least
in the treatment of a given topic." Hoehling v. Universal
618 F.2d 972,
(2d Cir. 1980). For example,
defendants argue that The Old Man and the Sea is a classic "man
versus nature" story for which "a trip in nature, the struggle
reflecting on nature, triumph and defeat" are
2001: A Space Odyssey, defendants say, is simply a "man
versus technology" plot, hence the elements which naturally arise
("a space station,
space shuttle, an intelligent machine,
tragedy in space, overcoming technology")
are not protected.
Similarly, Breakfast at Tiffany's is a "man versus himself plot,"
and On the Road is "a man versus society" plot. Def. Mem. at 7.
absurd theory, the plot of Don Quixote is simply
Cervantes' hackneyed version of The Odyssey. Defendants totally
copyrightable, specific ones are. See Stodart v. Mut.
Corp., 249 F. 507,
distinction that while general plot ideas
(S.D.N.Y. 1917), aff'd,
(comparing two plots and finding them substantially similar)
45 F.2d at 120
84 F.3d 581,
(outlining the distinction); Williams v.
(2d Cir. 1996)
distinction). Defendants' Guides do not tell stories that share
similar plot elements with plaintiffs' work. They retell, albeit in
the very same stories including the very same
settings, and plot twists as the original
Novels. To be sure, they do not copy every single incident, but it
is well established as a matter of law that "no plagiarist can
excuse the wrong by showing how much of his work he did not pirate."
Sheldon v. Metro-Goldwyn Pictures Corp.,
81 F.2d 49,
1936). Nor need a work create the same "feel" or effect as the
copyrighted work to be infringing. See Castle Rock (where defendants
infringed on plaintiffs'
copyright in a TV show by publishing a quiz
book about the show), Twin Peaks Prods.,
996 F.2d 1366 (2d Cir. 1993)
infringed on plaintiffs' copyright in a TV show by publishing a
guide about the show), Star Trek (where defendants infringed on
copyright in a movie by publishing a guide about the
and Warner Bros. Entm't Inc. v. RDR Books,
575 F. Supp. 2d
(S.D.N.Y. 2008) ("Harry Potter") (where defendants infringed on
plaintiffs' copyright in books and movies by publishing an
encyclopedia based on them) .
By any reasonable comparison, defendants'
substantial aspects of the themes,
pace, and settings of plaintiffs' Novels.
Def. 56.1 St.
Indeed, that is their
(admitting that "defendants
'wanted to be true to the author's original conception'" at least
"as far as possible given the nature of the KinderGuides as
children's books" and that defendants' works seek to convey to
children "the stories and characters" in plaintiffs' Novels).
Defendants thus effectively admit to copyright infringement as a
matter of law.
Plaintiffs also allege that defendants' Guides violate their
right to control the preparation of derivative works. See 17 U.S.C.
106 (2). The Copyright Act defines a "derivative work" as: "a work
based upon one or more preexisting works,
such as a translation,
musical arrangement, dramatization, fictionalization, motion picture
art reproduction, abridgment,
condensation, or any other form in which a work may be recast,
or adapted." 17 U.S.C. § 101. "A work is not
simply because it is
preexisting works." Harry Potter,
575 F. Supp. 2d at 538. Only works
that are ''recast, transformed, or adapted" into another medium,
or language while still representing the "original work of
authorship" are derivative.
Id.; Castle Rock,
150 F.3d at 143 n.
For example, book reviews and parodies of copyrighted works are not
despite being based on, and potentially
substantial amounts of protected expression. See
Campbell v. Acuff-Rose Music,
510 U.S. 569,
(stating the general rule that the "market for potential derivative
uses includes only those that creators of original works would in
general develop or license others to develop").
Depending on its nature,
a "guide" may or may not qualify as a
derivative work. The issue turns on whether the guide changes the
copyrighted material in such a way that the guide no longer
represents the original "work of authorship." 17 U.S.C.
Warner Bros. Entm't Inc. v. RDR Books, 575 F. Supp. 2d 513,
For example, the Second Circuit found that a guide
to the TV show Twin Peaks, which "merely transformed" the original
work "from one medium to another," was a derivative work. But an
encyclopedia based on the Harry Potter world, which did not tell the
same story as the original copyrighted books and movies, was not a
("by condensing, synthesizing, and
the preexisting material in an A-to-Z reference guide, the Lexicon
does not recast the material in another medium to retell the story
of Harry Potter, but instead gives the copyrighted material another
purpose. That purpose is to give the reader a ready understanding of
individual elements in the elaborate world of Harry Potter that
appear in voluminous and diverse sources.").
Here, though defendants' Guides add additional material at the
specifically a few brief pages of "Analysis," "Quiz Questions,"
and information about the author,
they are primarily dedicated to
stories. Two pages of analysis do not convert
the Guides overall - which are largely composed of "Story Summaries"
- into something that no longer "represents the original work of
authorship." Like a translation, dramatization, or motion picture
(three categories explicitly delineated by Congress as
see 17 U.S.C.
101), and like the guide in Twin
Peaks, defendants' works basically retell the story of plaintiffs'
works in another medium (in this case illustrated children's books)
Thus, because defendants never received permission from plaintiffs
to produce their Guides, the Guides are unauthorized derivatives as
a matter of law. See Def.
For the aforementioned reasons, defendants' Guides are
infringing; they infringe upon plaintiffs' exclusive right to
reproduce their Novels,
including the character of Holly Golightly
(a separate count), and they infringe upon plaintiffs' exclusive
right to exploit the market for derivative works based on their
B. Fair Use
Defendants argue that, even if they have infringed plaintiffs'
Novels, defendants' Guides are protected by the doctrine of fair
Fair use is an affirmative defense to infringement,
traditionally defined as "a privilege in others than the owner of
the copyright to use the copyrighted material in a reasonable manner
without his consent." Harper & Row,
471 U.S. at 549
Ball, Law of Copyright and Literary Property at 260
''fair use is a mixed question of law and fact," Id. at 560, where a
court finds no genuine issues of material fact it may conclude as a
matter of law that a challenged use does not qualify for fair use
protection. See Wright v. Warner Books,
953 F.2d 731,
(noting that the "mere fact that a determination of the
fair use question requires an examination of the specific facts of
each case does not necessarily mean that in each case involving fair
use there are factual issues to be tried")
The Copyright Act specifies four non-exclusive factors that
bear on fair use:
the purpose and character of the use,
including whether such use is of a commercial nature or is for
nonprofit educational purposes;
the nature of the copyrighted
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
17 U.S.C. § 107.
These factors are not meant to be "treated in isolation" -
are designed to be "weighed together," and applied with the
underlying constitutional purposes of copyright in mind. Campbell,
510 U.S. at 578.
Indeed, "[f]rom the infancy of copyright protection
some opportunity for fair use of copyrighted materials has been
thought necessary to fulfill copyright's very purpose,
the Progress of Science and useful Arts'" Id. at 575
The doctrine of fair use furthers these goals by permitting
others to use existing works in ways that their owners would not
ordinarily use them.
For example, criticism and commentary are
protected by fair use because we do not expect the "creators of
imaginative works" to "license critical reviews" of their own
productions. "People ask ... for criticism, but they only want
Bondage at 241
510 U.S. at 592
(quoting S. Maugham, Of Human
(Penguin ed. 1992)). Indeed, academic freedom and
robust critical debate require that Congress allow people to analyze
fiction without first seeking approval from publishing houses or
authors. The same principles and protections extend to parodies,
which we would not expect copyright holders to willingly license,
but, which nonetheless benefit the public. Id.
What fair use law does not protect is the right of others to
produce works that, generally speaking,
the "creators of imaginative
works" might choose to produce themselves. Congress granted the
exclusive right to produce
such derivatives and other
substantially similar works to copyright holders,
in any given instance, the copyright holders intend to use
these rights or not. The central question presented in this case,
is whether illustrated children's guides to adult novels are
the sort of use that Congress reserved to copyright holders or the
sort of use,
like criticism or parody, which Congress intended to
allow others to exploit.
Purpose and Character of the Use
The first factor in a fair use inquiry is "the purpose and
character of the use,
including whether such use is of a commercial
nature or is for nonprofit educational purposes." 17 U.S.C. §
107 (1). A work that adds "further purpose or different character,
altering the first with new expression, meaning or message," is
often described in the case law as "transformative." Campbell,
(citing Pierre N. Leval, Toward a Fair Use Standard, 103
Harv . L . Rev . 11 0 S ( 1 9 9 0 )
( "Lev al" )
( coining the term
in this sense, has a particular
meaning. As Judge Leval explains it, a work is transformative if it
Whether a work is transformative is a separate question from
whether it is commercial in nature, a question which is not
dispositive but tends to favor copyright holders on the margins. See
Twin Peaks, 996 F. 2d at 137 5.
is "productive"; if it adds "new insights and understandings" for
the "enrichment of society." Transformative uses of a copyright work
for example, "criticizing the quoted work, exposing the
character of the original author, proving a fact,
or summarizing an
idea argued in the original in order to defend or rebut it." Leval
Here defendants' argue that their Guides are potentially
transformative in three respects:
(1) they abridge plaintiffs'
Novels by substantially shortening them;
they modify plaintiffs'
Novels for a younger audience by removing adult themes; and (3)
add to plaintiffs' Novels by adding a page or two of analysis, two
pages of quiz questions,
and a few pages of background information.
None of these alterations are sufficient to sustain defendants'
fair use claim. As an initial matter, U.S.
abridgements as fair use,
law no longer protects
even in cases where the shortening
involves, as Justice Story put it, "real, substantial condensation
of the materials, and intellectual labor and judgment bestowed
thereon; and not merely the facile use of the scissors." Folsom v.
9 F.Cas. 342, 344-45
(C.C.D. Mass. 1841). Instead, under the
Copyright Act, abridgements are generally considered to be
and the right to prepare them is reserved
exclusively to the copyright holder. See Twin Peaks,
996 F.2d at
With respect to modifying the Novels for a younger audience,
the mere removal of adult themes does not meaningfully "recast" the
work any more than an airline's editing of R-rated films so that
they can be shown to children on a flight absolve the airline from
paying a royalty. As Judge Leval puts it,
the question is whether
the work produces new insights and understandings. Here, defendants'
expurgated Guides are a vehicle for conveying to children the
original stories and insights.
it is quite clear
Guides seek to fairly represent the original work
of authorship - defendants admit as much. See Def.
Finally, there is the question of whether defendants'
qualify as educational criticism or commentary. Works of criticism
and commentary provide the sort of new insights and understandings
that are the sine qua non of transformative use.
should be considered commentary, arguing that
their works serve educational purposes. As evidence, defendants
the few pages of analysis, quiz questions,
information at the back of each Guide.
But tacking on these few pages dces not provide safe harbor for
an otherwise infringing work. The law is clear that, to be
considered transformative criticism, the aspects of a work that
reproduce another's protected expression must be in service of
commentary on that work.
it is not enough for part of a work
to have a transformative purpose. Courts must also consider whether
the work "does so [i.e.
substantial extent." Twin Peaks,
to an insignificant or a
996 F.2d at 1374.
In other words,
if a defendant's work describes the plot of a copyrighted work
"briefly" in order to add significant comment about the authors'
then it may be protected by fair use. But if a
defendant copies more than is necessary to facilitate "comment or
criticism," then it will not be protected.
story summaries do not recount plaintiffs'
Novels in the service of literary
they provide literary
analysis in the service of trying to make the Guides qualify for the
fair use exception.
Indeed, defendants admitted this in open court,
when their counsel explained that Colting and Medina "went to great
lengths" to achieve fair use protection. See Transcript, ECF No.
("the very fact that we have these sections in the book [e.g.
the "Main Characters" and "Keywords" and "Analysis" sections]
these are all things that were done to make these books fair use,
least in the minds of the defendants").
Fair use, however,
is not a
jacket to be worn over an otherwise infringing outfit. One cannot
add a bit of commentary to convert an unauthorized derivative work
into a protectable publication.
Guides do not transform plaintiffs' Novels in
a legally cognizable way.
For this reason,
Guides are of a commercial nature,
and because defendants'
the first factor strongly favors
Nature of the Copyrighted Work
The second factor in a fair use inquiry regards the nature of
the copyrighted work.
17 U.S.C. § 107 (2).
Copyright law recognize,
in order to promote the sciences and the arts,
the "application of
the fair use defense" must be broader "in the case of factual works
than in the case of fiction or fantasy." 3 Nimmer§ 13.05[A] at 1377.
In other words,
expressly creative works tend to receive more
robust copyright protection than news broadcasts or non-fiction
pub l i cat ions . See Stewart v . Abend , 4 9 5 U . S . 2 0 7 , 2 3 7 - 8 ( 1 9 9 0 ) . In
this case, plaintiffs' Novels are precisely the sorts of creative
works that receive special solicitude in a fair use analysis. See
996 F.2d at 1376. Thus, the second factor favors
Amount and Substantiality of the Use
The third factor -
the amount and substantiality of the portion
of the copyright work used - must be examined in context. Castle
150 F.3d at 144; Campbell,
510 U.S. at 586-7. This is not, as
defendants conceive of it, a question of bare percentages. Def. Mem.
it turns on whether the "extent" of the copying is
or more than necessary to further "the purpose and
character of the use." Campbell,
510 U.S. at 586-7; Castle Rock,
F.3d at 144. In cases of parody,
journalism, and criticism, fair use
doctrine allows for more of a copyrighted work to be copied than
where the purpose is less transformative.
Therefore, the question here is whether and to what extent
copying was necessary to serve some transformative
purpose - such as to provide commentary or criticism. The answer is
clear: nearly all of defendants Guides' are devoted to telling
copyrighted stories, with only two pages purporting to
analyze them. Thus, the third factor favors plaintiffs. See,
Star Trek, 11 F. Supp. 2d at 336
(noting that it is "difficult to
see how 168 pages can be devoted to illustration while the true
purposes of the book is [sic] carried out by the book's remaining 49
pages" of commentary) .
Effect of the Use Upon the Potential Market
The fourth factor is the "effect of the use upon the potential
market for or value of the copyrighted work." 17 U.S.C.
Under current law,
need not show that their Novels have
suffered an actual drop in sales. To negate fair use one need only
show that if the challenged use "should become widespread, it would
adversely affect the potential market for the copyrighted work."
Sony Corp. of America v. Universal City Studios,
464 U.S. at
"because the licensing of derivatives is an
important economic incentive to the creation of originals," this
analysis must consider not only the effect of defendants' Guides
upon the market for plaintiffs' origiGal copyrighted works, but also
the effect of the Guides upon the market for potential derivative
510 U.S. at 593.
Defendants make two arguments in support of their contention
that the fourth factor weighs in their favor.
First, they argue that
their Guides do not affect the market for plaintiffs' Novels. "To
pretend that any consumer would go to a bookstore
seeking one of the great classics of American literature
and instead choose to purchase an illustrated children's book defies
belief." Def. Mem. at 23. But it is defendants' burden to show that
their works will not adversely affect either the market for
plaintiffs' originals or the market for derivative works based on
plaintiffs' originals. Both sides agree that there is an established
market for children's versions of adult novels,
and that publishers,
like plaintif=s, often choose to license their works to exploit that
Def. 56.1 St.
145. Indeed, plaintiffs provide many
examples for the record of publishers exploiting this market in this
Second, defendants argue that "Plaintiffs' have never created,
marketed, or licensed any work that remotely resembles Defendants'
works." Def. Mem. at 24. Even if this were true,
it would not be
enough for defendants to show that plaintiffs have not exploited a
It suffices, as a matter of law, that plaintiffs
might change their minds. Castle Rock,
150 F.3d at 146. "If the
defendant's work adversely affects the value of any of the rights in
the copyrighted work (in this case the adaptation [and
471 U.S. at 568
the use is not fair." Harper & Row Publishers,
(quoting 3 Nimmer§ 13.05, at 13-77-13-78
(brackets in original). Thus, as children's
books "fill a market niche" that plaintiffs "would in general
As discussed earlier, it is undisputed that plaintiffs have
published an ESL version of 2001: A Space Odyssey, which competes in
the same ESL market as defendants' Guide. Def. 56.1 St. ~~ 114, 142.
develop or license others to develop," the fourth factor favors the
plaintiffs. Castle Rock,
150 F.3d at 145
The Court must also take into consideration other factors that
might bear on the question of fair use. Campbell,
510 U.S. at 577.
Among these is whether, as defendants argue, their works should be
protected because otherwise the constitutional purpose of copyright
law - to 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 - would be
U.S. Const., Art. 1,
8, cl. 8. As defendants' point
out, copyright law is designed to "motivate the creative activity of
authors and inventors 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." Harper & Row
471 U.S. at 546
(quoting Sony Corp. of America,
at 429). This "monopoly created by copyright .
individual author in order to benefit the public." Id.
Thus, defendants ask the Court to assess the interests of the
public in the context of the facts of this specific case. Plaintiffs
"do not include authors, but the heirs, trusts and estates of
authors." Def. Mem. at 1. Plaintiffs have not published illustrated
children's books based on their Novels and appear to have no
intention of doing so. Thus, according to defendants, plaintiffs
"explicitly seek to stifle the creation of" new works,
''sole interest" in this case "is not to preserve their own works, or
their ability to license their works, but instead to prevent the
creation of wholly new works that reference their own." Id. at 1,
24. Plaintiffs' motives, they contend, do "not satisfy the
constitutional imperative that the limited monopoly granted to
authors be exercised in such a way as to "promote the progress of
science and the useful arts." Def. Mem. at 24.
However, the Court cannot apply one fair use analysis where
copyright holders can show they plan to exploit their rights to make
derivative works and another fair use analysis in a case where
copyright holders have not exploited such rights for half a century
or longer or disclaim any intention of exploiting them in the
Such an approach would be inconsistent with the Copyright
Act. Congress did not provide a use-it-or-lose-it mechanism for
Instead, Congress granted a package of rights
to copyright holders,
including the exclusive right to exploit
regardless of whether copyright holders ever
intend to exploit those rights.
Indeed, the fact that any given
author has decided not to exploit certain rights does not mean that
others gain the right to exploit them. "It would
ends of the Copyright Act -
. not serve the
i.e., to advance the arts -
were denied their monopoly over derivative versions of their
creative works merely because they made the artistic decision not to
saturate those markets with variations of their original." Castle
Rock Entm't v. Carol Pub. Grp.,
955 F. Supp. 260, 272
(S.D.N.Y. 1997), aff'd sub nom. Castle Rock,
150 F.3d 132.
Implicit in defendants' argument, then, is a contention that
the Copyright Act itself is unconstitutional. As defendants put it,
"the original copyright act granted authors exclusive rights for a
14-year term, with the option for a renewal term of the same length.
Over the course of the following 200+ years, the grant of rights has
expanded unchecked, leading us here today." Def. Mem. at 1.
Defendants are no doubt correct in pointing out that Congress'
policy judgments have changed substantially over the course of our
nation's history. But as a legal matter, for the Copyright Act to
withstand constitutional scrutiny, it must merely be the case that,
in constructing its general scheme, Congress had a rational basis to
believe that granting a suite of exclusive derivative rights to
copyright holders would advance progress in the sciences and the
arts. See Eldred v. Ashcroft,
537 U.S. 186, 208
if the Copyright Act is "a rational enactment," the Court is
"not at liberty to second-guess congressional determinations and
. however debatable or arguably unwise they may
be"). As defendants make no effort to show that Congress lacked such
a rational basis for providing plaintiffs an exclusive right to
exploit derivative works, including children's adaptations, this
Court cannot provide defendants with the relief they are seeking.
In sum, given the clearly infringing nature of defendants'
Guides, and the fact that that the Guides are unauthorized
derivative works that do not primarily critique or parody
plaintiffs' Novels but rather reproduce, albeit in a different form,
plaintiffs' "original work of authorship," no reasonable trier of
fact could find for defendants in this case. The Court therefore,
its Order of July 28, 2017, granted summary judgment to the
plaintiffs on all nine counts of infringement and rejected the
affirmative defense of fair use as a matter of law.
The Clerk of the Court is hereby directed to close the motions
at docket entry number 21, 22, and 27.
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