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Case 1:17-cv-00386-JSR Document 53 Filed 09/08/17 Page 1 of 31
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`17-cv-386 (JSR)
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`OPINION AND ORDER
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
`------------------------------------x
`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
`FAMILY TRUST,
`
`Plaintiffs,
`
`-v-
`
`FREDERIK COLTING and MELISSA
`MEDINA, d/b/a MOPPET BOOKS,
`
`Defendants.
`------------------------------------x
`
`JED S. RAKOFF, U.S.D.J.
`
`On Janua~y 19, 2017, Penguin Random House LLC, Simon &
`
`Schuster, Inc., Alan U. Schwartz as trustee of The Truman Capote
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`Literary Trust, John Sampas as literary representative of The Estate
`
`of Jack Kerouac, Nancy Bump, Anthony M. Sampas, John Lash as
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`executor of The Estate of Jan Kerouac, The Dr. Arthur C. Clarke
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`Trust, Hemingway Copyrights, LLC, The Patrick Hemingway And Carol T.
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`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) (collectively
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`"defendants"), alleging nine counts of copyright infringement.
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`1
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`Case 1:17-cv-00386-JSR Document 53 Filed 09/08/17 Page 2 of 31
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`Plaintiffs are the owners and exclusive licensees of copyrights in
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`four famous novels: Breakfast at Tiffany's by Truman Capote, The Old
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`Man and the Sea by Ernest Hemingway, On the Road by Jack Kerouac,
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`and 2001: A Space Odyssey by Arthur C. Clarke (collectively, the
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`"Novels") Defendants have published "a series of illustrated
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`children's books" "based on" these Novels (collectively, the
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`"Guides"), which contain "condensed, simplified version[s] of
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`the[ir] plot[s] ." See Defendants' Response to Plaintiffs' Rule 56.l
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`Statement of Material Facts (''Def. 56.1 St."), ECF No. 44 ~~ 65, 89.
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`Following the completion of discovery, plaintiffs sought
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`summary judgment in their favor on the issue of liability, and
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`defendants cross-moved for summary judgment in their favor on the
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`issue of liability and on the affirmative defense of fair use.
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`Plaintiffs also moved for summary judgment on the issue of
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`willfulness. In a bottom line order dated July 28, 2017, ECF No. 47,
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`the CoJrt granted summary judgment to plaintiffs on all nine counts
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`of copyright infringement -
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`two for each of the four Novels and one
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`for the character of Holly Golightly - and rejected the affirmative
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`defense of fair use as a matter of law. On the issue of willfulness,
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`the Court permitted defendants, based on representations made by
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`their counsel in open court, see Transcript, dated July 24, 2017,
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`ECF No. 48, to raise (somewhat belatedly) an advice of counsel
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`defense and permitted additional discovery on that defense. As a
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`consequence of that decision, plaintiffs no longer seek summary
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`judgment on the issue of willfulness, and the Court has set the case
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`2
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`Case 1:17-cv-00386-JSR Document 53 Filed 09/08/17 Page 3 of 31
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`down for trial on October 2, 2017 to resolve the remaining issues.
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`See Order, ECF No. 51.
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`This Opinion and Order sets forth the reasons for these
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`rulings.
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`The pertinent facts, either undisputed, or, where disputed,
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`taken most favorably to the respective non-movant, are as follows:
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`At all times here relevant, plaintiffs owned valid copyrights
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`to Breakfast at Tiffany's, The Old Man and the Sea, On the Road, and
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`2001: A Space Odyssey. Def. 56.l St. ~~ 1-13. Defendants'
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`"colorfully illustrated story summaries," called "KinderGuides," are
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`designed to "introduce" these works tc children. Id. ~ 68.
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`On or about September 22, 2016, defendants published their four
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`Guides (part of a planned 50-book series). Id. ~ 65. On their front
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`covers, the Guides very prominently display the titles of
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`plaintiffs' Novels and the names of the authors of plaintiffs'
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`Novels, along with the words "KinderGuides," in large print and, in
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`much smaller print, the words "Early Learning Guides to Culture
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`Classics." Declaration of Marcia B. Paul, Esq. in Support of
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`Plaintiffs' Motion for Summary Judgment ("Paul Deel."), Exs. 49-52,
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`ECF No. 35. The only other words are "Illustrations by
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`" in
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`very small print at the bottom.
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`All four Guides share the same layout. The first four pages
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`feature illustrations and one-line quotations taken from and
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`attributed to the authors of the Novels (Capote, Hemingway, Kerouac,
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`and Clarke). The fifth page contains publication information, and
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`3
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`Case 1:17-cv-00386-JSR Document 53 Filed 09/08/17 Page 4 of 31
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`the sixth is a title page, stating, to take one example,
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`''KinderGuides: Early Learning Guides to Culture Classics," "On the
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`Road," "by Jack Kerouac," and, in smaller font, "Illustrations by
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`Rose Forshall," "a division of Moppet Books/Los Angeles, CA." The
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`seventh and eighth pages contain a "Table of Contents." The ninth
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`displays an illustration of the original author of the Novel, and
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`the tenth is a page "About the Author." Following these front-pages
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`are "Story Summaries," which comprise a few dozen pages. Appended
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`after these "Story Summaries" are a series of back-pages, two each
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`devoted to "Main Characters," "Key Words," "Quiz Questions," and
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`"Analysis." See Paul Deel., Exs. 4 9-52.
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`Defendants admit that they had access to plaintiffs' Novels in
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`preparing their Guides and that they relied on them. Def. 56.l St. ~
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`73. Indeed, a side-by-side comparison of plaintiffs' and defendants'
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`works reveals as much. Not only do the plots, settings, and
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`characters of the Guides mirror the Novels, but the Guides also
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`include many specific details from the Novels. For example, in both
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`versions of Breakfast at Tiffany's, Holly Golightly's business card
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`reads "Holly Golightly, Traveling," and in both versions Holly
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`describes an experience she calls "the mean reds," or feeling afraid
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`"but you don't know what you're afraid of." See Paul Deel., Ex. 46,
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`Truman Capote, Breakfast at Tiffany's (2012 edition) at 32 ("the
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`mean reds are horrible. You're afraid
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`but you don't know what
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`you're afraid of"); Id., Ex. 50, KinderGuides, Breakfast at
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`Tiffany's (2016) at 11,
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`(".
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`. the mean reds. That means she is
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`4
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`Case 1:17-cv-00386-JSR Document 53 Filed 09/08/17 Page 5 of 31
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`afraid but doesn't know what she is afraid of."). Similarly, in both
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`versions of On the Road, Sal drives across the United States with
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`$50 in his pocket and goes to see a blind jazz pianist named George
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`Shearing; in both versions of 2001: A Space Odyssey, Dr. Heywood
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`Floyd travels to Clavius Base, a space station on the moon, where
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`there is a large monolith named "TMA-1" and a crater named "Tyco";
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`and, in both versions of The Old Man and the Sea, Santiago has gone
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`84 days without catching a fish and roots for the New York Yankees. 1
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`See Paul Deel., Exs. 45-52. While, of course, many aspects of
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`plaintiffs' Novels do not appear in defendants' shorter Guides, all
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`of the plots, characters, and settings in defendants' Guides appear
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`in plaintiffs' Novels.
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`It is also undisputed that there is an established market for
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`children's books based on adult novels, and that it is not unusual
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`for copyright holders to publish, or license publication of,
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`children's versions of works originally intended for adults. Def.
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`56.l St. ~~ 95, 145 (noting that "Defendant Colting understood,
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`prior to publishing the KinderGuides, that there was a market for
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`children's editions of adult novels"). Defendants, however, never
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`sought permission to prepare children's guides for plaintiffs'
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`Novels. Id. ~ 150.
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`It is further undisputed that plaintiffs have never authorized
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`anyone to publish children's versions of their Novels, Def. 56.1 St.
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`~ Admittedly, the Old Man of this Court shares the latter failing.
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`Case 1:17-cv-00386-JSR Document 53 Filed 09/08/17 Page 6 of 31
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`~ 97. The managers of Hemingway's literary estate altogether
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`rejected requests to create children's versions of The Old Man and
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`the Sea. Id. ~ 101. Penguin Random House considered authorizing a
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`children's version of 2001: A Space Odyssey, but decided against it.
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`Id. ~ 105. The Capote estate did authorize the creation of an
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`illustrated, stand-alone children's version of A Christmas Memory -
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`a short story originally included in the same volume as Breakfast at
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`Tiffany's - but did not authorize a children's version of Breakfast
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`at Tiffany's. Id. ~ 108. Finally, Penguin Random House and the
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`Clarke Estate have authorized the creation of an ESL ("English as a
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`Second Language") version of 2001: A Space Odyssey - "a simplified
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`version," which includes "inserted pages of exercises and notes,"
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`but no children's versions. Id. ~ 114.
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`Discussion
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`When parties cross-move for summary judgment, the Court
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`analyzes the motions separately, "in each case construing the
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`evidence in the light most favorable to the non-moving party."
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`Victorinox AG v. B & F Sys., Inc., 114 F. Supp. 3d 132, 135
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`(S.D.N.Y. 2015)
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`(quoting Novella v. Westchester Cnty., 661 F.3d 128,
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`139 (2d Cir. 2011)). "Summary judgment is appropriate only if the
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`moving party shows that there are no genuine issues of material fact
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`and that the moving party is entitled to judgment as a matter of
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`law." Miller v. Wolpoff & Abramson, L.L.P., 321 F.3d 292, 300 (2d
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`Cir. 2003); Fed. R. Civ. P. 56 (c). The court "must draw all
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`Case 1:17-cv-00386-JSR Document 53 Filed 09/08/17 Page 7 of 31
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`reasonable inferences and resolve all ambiguities in favor of the
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`non-moving party." Castle Rock Entm't, Inc. v. Carol Pub. Grp.,
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`Inc., 150 F.3d 132, 137
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`(2d Cir. 1998) ("Castle Rock")
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`(quoting
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`Garza v. Marine Transp. Lines, Inc., 861 F.2d 23, 26 (2d Cir.
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`198 8) ) .
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`A. Infringement
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`The Copyright Act of 1976 (the "Copyright Act"), 17 U.S.C. §§
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`101-805, grants copyright owners a bundle of exclusive rights,
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`including the exclusive right to "reproduce the copyrighted work"
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`and the exclusive right "to prepare derivative works based upon the
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`copyrighted work." Id. § 106; Castle Rock, 150 F.3d at 137. Here,
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`plaintiffs allege that defendants' Guides infringe both those
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`rights. See Amended Complaint, ECF No. 11 ~~ 108-178.
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`To prevail on either ground, plaintiffs must prove that:
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`(1)
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`they hold a valid ownership interest in the relevant copyrights,
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`(2)
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`defendants have "actually copied" their works, and (3) defendants'
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`"copying is illegal" because of a "substantial similarity" between
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`defendants' works and the "protectable elements" of their
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`copyrighted works. Castle Rock, 150 F.3d at 137. To prevail on the
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`second ground, plaintiffs must further prove that (4) defendants'
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`works are unauthorized derivatives under 17 U.S.C. § 106(2). 2
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`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]
`at 8-114)).
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`Case 1:17-cv-00386-JSR Document 53 Filed 09/08/17 Page 8 of 31
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`(1) Valid Ownership
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`As noted, plaintiffs allege, and defendants do not dispute,
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`that plaintiffs hold valid and subsisting copyrights (and licenses)
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`in the Novels at issue in this case. Def. 56.1 St. ~~ 6-12. Further,
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`plaintiffs have produced registration certificates and applicable
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`renewals for these copyrights. See Amended Complaint, Exs. A-0. Such
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`documents constitute prima facie evidence of valid ownership. See 17
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`U.S.C. § 410(c); Novelty Textile Mills, Inc. v. Joan Fabric Corp.,
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`558 F.2d 1090, 1092, n.l (2d Cir. 1977). Such registrations also
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`protect the Novels' fictional characters, including Holly Golightly,
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`the protagonist of Breakfast at Tiffany's. See Salinger v. Colting,
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`641 F. Supp. 2d 250, 254 (S.D.N.Y. 2009)
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`(finding that a novel's
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`protagonist is protected by the author's copyright in the novel),
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`vacated and remanded on other grounds, 607 F.3d 68
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`(2d Cir. 2010)
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`(2) Actual Copying
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`Having therefore carried their burden with respect to copyright
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`ownership, plaintiffs must next show that their "work was actually
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`copied." Actual copying may be established (a) "by direct evidence
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`of copying" or (b) "by indirect evidence, including access to the
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`copyrighted work, similarities that are probative of copying between
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`the works, and expert testimony." Laureyssens v. Idea Group, Inc.,
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`964 F.2d 131, 140 (2d Cir. 1992). The question of "actual copying"
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`is distinct from, and precedes, the question of infringement and
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`"substantial similarity." To prove actual copying, however,
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`plaintiffs need only show "probative" similarity ~ that the creators
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`8
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`Case 1:17-cv-00386-JSR Document 53 Filed 09/08/17 Page 9 of 31
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`of the allegedly infringing works drew from the copyrighted works.
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`See Castle Rock, 150 F.3d at 137; Jorgensen v. Epic/Sony, 351 F.3d
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`46, 54-57 (2d Cir. 2003).
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`Here, the undisputed facts easily establish actual copying.
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`Defendants admit that, in preparing their Guides, they read
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`plaintiffs' Novels. Def. 56.1 St. ~ 73. Further, defendants display
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`the actual titles of plaintiffs' Novels on the front covers of their
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`Guides and concede that their Guides are "based on the novels." Id.
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`~ 74. This constitutes actual copying as a matter of law. See
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`Paramount Pictures Corp. v. Carol Pub. Grp., Inc., F. Supp. 2d 329,
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`332-3 (S.D.N.Y. 1998), aff'd sub nom. 181 F.3d 83 (2d Cir. 1999)
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`("Star Trek")
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`(arguing that "it would be absurd to suggest that"
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`actual copying did not occur in a case where defendant's work "is
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`devoted to telling a large portion" of the story in plaintiff's
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`work)
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`( 3) Substantial Similarity
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`After ''actual copying is established," plaintiffs must
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`"demonstrate that the copying was improper or unlawful by showing
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`that the second work bears 'substantial similarity' to protected
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`expression in the earlier work." Castle Rock, 150 F.3d at 137
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`(quoting Repp v. Webber, 132 F.3d 882, 889 (2d Cir. 1997);
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`Laureyssens v. Idea Group, Inc., 964 F.2d 131, 140 (2d Cir. 1992)).
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`Specifically, plaintiffs must prove that the copying is
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`"quantitatively and qualitatively sufficient to support the legal
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`conclusion that infringement (actionable copying) has occurred."
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`Case 1:17-cv-00386-JSR Document 53 Filed 09/08/17 Page 10 of 31
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`Castle Rock, 150 F.3d at 138 (quoting Ringgold v. Black
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`Entertainment Television, Inc., 126 F.3d 70, 75 (2d Cir. 1997)). The
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`qualitative prong regards the nature of the copied expression - it
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`must be "protected." The quantitative prong regards the amount of
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`such copying - it must be more than de minimis. Id.
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`There are a variety of special tests that courts sometimes
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`apply to assess substantial similarity. These tests are designed to
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`assist courts in determining whether protectable expression has been
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`copied, particularly in situations where the relevant works are, at
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`least superficially, distinct from each other. For example, for non(cid:173)
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`textual works, courts often employ Learned Hand's "ordinary
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`observer" test, which he first used to compare two dress designs.
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`Peter ?an Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489
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`(2d Cir. 1960)
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`(Hand, J.). For textual works, where two otherwise
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`dissimilar pieces include similar sentences and wording, courts
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`frequently apply the "fragmented literal similarity test," which
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`"focuses upon copying of direct quotations or close paraphrasing."
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`Castle Rock, 150 F.3d at 140. By contrast, when two works do not
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`have literal, word-for-word similarity, courts sometimes apply the
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`"comprehensive non-literal similarity 11 test, weighing the "total
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`concept and feel" of the works including their "theme, characters,
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`plot, sequence, pace, and setting." Castle Rock, 150 F.3d at 140
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`(citing 4 Melville B. Nimmer and David Nimmer, Nimmer on Copyright §
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`13. 03
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`[A] [l] at 13-24 (1997)). The "comprehensive non-literal
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`similarity" test allows a plaintiff to enforce its copyright in a
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`Case 1:17-cv-00386-JSR Document 53 Filed 09/08/17 Page 11 of 31
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`case where, though there is little or no word-for-word similarity,
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`the defendant has nonetheless appropriated "the fundamental essence
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`or structure" of plaintiffs' work. Id.
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`In the instant case, however, none of these special tests is
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`even needed to establish substantial similarity, as defendants'
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`Guides are not even superficially distinct from the respective
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`Novels. Instead, they are explicitly based on plaintiffs' Novels,
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`and seek in defendant's words, to "introduce" them to children
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`"through colorfully illustrated story summaries and kid-friendly
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`analyses." Def. 56.1 St. ~~ 68, 74-76.
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`To avoid, therefore, this obvious similarity, defendants would
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`have the Court, in effect, subtract from defendants' Guides the
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`characters, plots, and settings that were directly lifted from
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`plaintiffs' Novels, on the ground that these elements do not
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`consti~ute protectable expression. See Knitwaves, Inc. v. Lollytogs
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`Ltd., 71 F.3d 996, 1002 (2d Cir. 1995)
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`(noting that a court must
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`limit its infringement inquiry to whether "the protectable elements,
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`standing alone, are substantially similar").
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`Defendants make several arguments in support of this approach.
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`First, defendants claim that the characters, plots, and settings in
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`plaintiffs' Novels are merely "a collection of made-up facts" or
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`''fictional facts," and, since (historical or independently-existing)
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`facts are not protected, these elements are not aspects of "an
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`author's original expression" subject to copyright. Defendants'
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`Memorandum of Law in Support of Summary Judgment ("Def. Mem.") at 4-
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`Case 1:17-cv-00386-JSR Document 53 Filed 09/08/17 Page 12 of 31
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`5. As defendants put it, their Guide to 2001: A Space Odyssey
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`"merely summarized some of the facts of the book and the characters,
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`not the creative expression that makes Dr. David Bowman and HAL [the
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`characters] memorable." Def. Mem. at 9 (emphasis added). In other
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`words, the aspects of plaintiffs' Novels that appear in defendants'
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`Guides, such as the character of Holly Golightly, her place of
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`residence, her trips to the prison, her relationship to Sally
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`Tomato, are not protected expression but, according to defendants,
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`"fictional facts."
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`This exercise in sophistry, however, which confuses the
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`difference between historical or independently-existing facts and
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`fictional details created by a novelist, finds no support in
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`applicable law. As the Second Circuit has clearly stated,
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`"characters and events" that "spring from the imagination" of
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`authors are copyrightable, creative expression. See Castle Rock, 150
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`F.3d at 139. Thus, the Copyright Act protects both the literal text
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`describing, for example, Dr. Bowman and HAL, and the "made-up facts"
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`about Dr. Bowman and HAL. "Unlike the facts in a phone book, which
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`do not owe their origin to an act of authorship," each "fact" in
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`defendants' Guides is really "fictitious expression" created by
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`plaintiffs' authors. Castle Rock, 150 F.3d at 139. Because the
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`"characters and events" in defendants' Guides "spring from the
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`imagination o=" Capote, Hemingway, Kerouac, and Clarke, each Guide
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`"plainly copies copyrightable, creative expression." Id. (citing
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`Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 347
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`Case 1:17-cv-00386-JSR Document 53 Filed 09/08/17 Page 13 of 31
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`(1991)) (discussing the distinction between "discovered facts,"
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`which do not "owe their origin to an act of authorship" and thus are
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`not protected by copyright, and "created facts," which constitute
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`original, protected expression).
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`Second, defendants argue that the characters in plaintiffs'
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`works are unprotectable ''stock characters." For example, Breakfast
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`at Tiffany's is, according to defendants, just the story of "a small
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`town girl with a tough past who has come to the big city." Dean, in
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`On the Road, is just "a stereotypical womanizing, wild guy and Sal,
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`our narrator, is portrayed as a young writer." Thus, defendants
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`argue, Sal and Dean are simply "stock characters and do not warrant
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`copyright protection." Def. Mem. at 10.
`
`Defendants again misstate the law. While copyright law does not
`
`protect basic characters and stock figures, see Nichols v. Universal
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`Pictures Corp., 45 F.2d 119, 122 (2d Cir. 1930), copyright law does
`
`protect characters who are sufficiently delineated to be original.
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`As the Seventh Circuit points out, in the very case defendants cite,
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`a knowledgeable old wino is not a copyrightable character per se,
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`but one named Cagliostro with an obviously phony title ("Count") and
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`faintly Mosaic facial features is protected. "No more is required
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`for a character copyright." Gaiman, 360 F.3d at 660. See also
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`Detective Comics v. Bruns Publications, 111 F.2d 432, 433
`
`(2d Cir.
`
`1940) (finding that "Wonderman," a superhero with only superficial
`
`differences from ''Superman" is infringing, even though both are
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`drawn from the same basic Herculean character type)
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`Case 1:17-cv-00386-JSR Document 53 Filed 09/08/17 Page 14 of 31
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`The general rule is that, where defendants' works use "more
`
`than general types and ideas and have appropriated the pictorial and
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`literary details embodied in the complainant's copyrights,"
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`defendants' works are infringing. Detective Comics, 111 F.2d at 433.
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`Here, defendants do not even attempt to conceal their copying.
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`Indeed, their explicit intention was to lift plaintiffs' characters
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`to "introduce" them to children. Thus, for example, defendants'
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`versio~ of Breakfast at Tiffany's does not tell the story of just
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`any "small town girl with a tough past," but the story of the very
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`distinctive Holly Golightly. And, as noted, defendants make a point
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`of copying the very expression of that distinctiveness, such as the
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`text on Holly's business card and her original idiom "the mean
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`reds." Similarly, defendants' Guide to On the Road is not just about
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`a
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`''womanizing wild guy," but a distinctive womanizing wild guy named
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`Dean who travels across the country having particular adventures
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`with his equally distinctive friend Sal.
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`Third, defendants argue in that latter regard that the plots of
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`plaintiffs' Novels, which defendants reproduce in their Guides, are
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`merely unprotectable "scenes A faire," or "incidents, characters or
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`settings which are as a practical matter indispensable, or at least
`
`standard, in the treatment of a given topic." Hoehling v. Universal
`
`City Studios, Inc., 618 F.2d 972, 979 (2d Cir. 1980). For example,
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`defendants argue that The Old Man and the Sea is a classic "man
`
`versus nature" story for which "a trip in nature, the struggle
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`against the f~sh, reflecting on nature, triumph and defeat" are
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`Case 1:17-cv-00386-JSR Document 53 Filed 09/08/17 Page 15 of 31
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`unprotected. 2001: A Space Odyssey, defendants say, is simply a "man
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`versus technology" plot, hence the elements which naturally arise
`
`from it ("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.
`
`On defendants' absurd theory, the plot of Don Quixote is simply
`
`Cervantes' hackneyed version of The Odyssey. Defendants totally
`
`ignore the we~l-developed distinction that while general plot ideas
`
`are no~ copyrightable, specific ones are. See Stodart v. Mut. Film
`
`Corp., 249 F. 507, 509 (S.D.N.Y. 1917), aff'd, 249 F. 513 (2d Cir.
`
`1918)
`
`(comparing two plots and finding them substantially similar)
`
`Nichols, 45 F.2d at 120 (outlining the distinction); Williams v.
`
`Crichton, 84 F.3d 581, 587-89 (2d Cir. 1996)
`
`(exploring the
`
`distinction). Defendants' Guides do not tell stories that share
`
`similar plot elements with plaintiffs' work. They retell, albeit in
`
`abridged fashion, the very same stories including the very same
`
`characters, incidents, 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, 56 (2d Cir.
`
`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
`
`15
`
`

`

`Case 1:17-cv-00386-JSR Document 53 Filed 09/08/17 Page 16 of 31
`
`book about the show), Twin Peaks Prods., Inc. v. Publications Int'l,
`
`Ltd., 996 F.2d 1366 (2d Cir. 1993)
`
`("Twin Peaks")
`
`(where defendants
`
`infringed on plaintiffs' copyright in a TV show by publishing a
`
`guide about the show), Star Trek (where defendants infringed on
`
`plaintiffs' copyright in a movie by publishing a guide about the
`
`movie), and Warner Bros. Entm't Inc. v. RDR Books, 575 F. Supp. 2d
`
`513 (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' Guides copy
`
`substantial aspects of the themes, characters, plots, sequencing,
`
`pace, and settings of plaintiffs' Novels. Indeed, that is their
`
`stated purpose. Def. 56.1 St. ~~ 68, 76 (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.
`
`(4) Derivative Works
`
`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
`
`16
`
`

`

`Case 1:17-cv-00386-JSR Document 53 Filed 09/08/17 Page 17 of 31
`
`version, sound recording, art reproduction, abridgment,
`
`condensation, or any other form in which a work may be recast,
`
`transformed, or adapted." 17 U.S.C. § 101. "A work is not
`
`derivative, however, simply because it is 'based upon' the
`
`preexisting works." Harry Potter, 575 F. Supp. 2d at 538. Only works
`
`that are ''recast, transformed, or adapted" into another medium,
`
`mode, or language while still representing the "original work of
`
`authorship" are derivative. Id.; Castle Rock, 150 F.3d at 143 n. 9.
`
`For example, book reviews and parodies of copyrighted works are not
`
`derivative works, despite being based on, and potentially
`
`reproducing, substantial amounts of protected expression. See
`
`Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 592 (1994)
`
`(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. § 101;
`
`Warner Bros. Entm't Inc. v. RDR Books, 575 F. Supp. 2d 513, 539
`
`(S.D.N.Y. 2008). 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
`
`17
`
`

`

`Case 1:17-cv-00386-JSR Document 53 Filed 09/08/17 Page 18 of 31
`
`derivative work. Id.
`
`("by condensing, synthesizing, and ~eorganizing
`
`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
`
`end, specifically a few brief pages of "Analysis," "Quiz Questions,"
`
`and information about the author, they are primarily dedicated to
`
`retelling plaintiffs' 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
`
`adaptation (three categories explicitly delineated by Congress as
`
`derivative works, 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. 56.1 St. ~ 150.
`
`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
`
`18
`
`

`

`Case 1:17-cv-00386-JSR Document 53 Filed 09/08/17 Page 19 of 31
`
`right to exploit the market for derivative works based on their
`
`Novels.
`
`B. Fair Use
`
`Defendants argue that, even if they have infringed plaintiffs'
`
`Novels, defendants' Guides are protected by the doctrine of fair
`
`use. 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 (quoting H.
`
`Ball, Law of Copyright and Literary Property at 260 (1944)) Though
`
`''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, Inc., 953 F.2d 731, 735 (2d
`
`Cir. 1991)
`
`(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") (internal citations
`
`omitted).
`
`The Copyright Act specifies four non-exclusive factors that
`
`bear on fair use:
`
`(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
`
`19
`
`

`

`Case 1:17-cv-00386-JSR Document 53 Filed 09/08/17 Page 20 of 31
`
`relation to the copyrighted work as a whole; and (4) the effect of
`
`the use upon the potential market for or value of the copyrighted
`
`work. 17 U.S.C. § 107.
`
`These factors are not meant to be "treated in isolation" -
`
`they
`
`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,
`
`'[t]o promote
`
`the Progress of Science and useful Arts'" Id. at 575 (quoting U.S.
`
`Const., Art. I, § 8, cl. 8) .
`
`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

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