[PUBLISH]
`
`IN THE UNITED STATES COURT OF APPEALS
`
`FOR THE ELEVENTH CIRCUIT
`
`_______________
`
`No. 01-12200
`_______________
`
` FILED
`U.S. COURT OF APPEALS
`ELEVENTH CIRCUIT
`OCTOBER 10, 2001
`THOMAS K. KAHN
`CLERK
`
`D. C. Docket No. 01-00701-CV-CAP-1
`
`SUNTRUST BANK, as Trustee of the
`Stephen Mitchell trusts f.b.o. Eugene
`Muse Mitchell and Joseph Reynolds Mitchell,
`
`Plaintiff-Appellee,
`
`versus
`
`HOUGHTON MIFFLIN COMPANY,
`
`Defendant-Appellant.
`
`______________________________
`
`Appeal from the United States District Court
`for the Northern District of Georgia
`______________________________
`(October 10, 2001)
`
`Before BIRCH, MARCUS and WOOD*, Circuit Judges.
`_____________
`*Honorable Harlington Wood, Jr., U.S. Circuit Judge for the Seventh Circuit, sitting by
`designation.
`
`
`
`IN THE UNITED STATES COURT OF APPEALS
`
`FOR THE ELEVENTH CIRCUIT
`
`_______________
`
`No. 01-12200
`_______________
`
` FILED
`U.S. COURT OF APPEALS
`ELEVENTH CIRCUIT
`OCTOBER 10, 2001
`THOMAS K. KAHN
`CLERK
`
`D. C. Docket No. 01-00701-CV-CAP-1
`
`SUNTRUST BANK, as Trustee of the
`Stephen Mitchell trusts f.b.o. Eugene
`Muse Mitchell and Joseph Reynolds Mitchell,
`
`Plaintiff-Appellee,
`
`versus
`
`HOUGHTON MIFFLIN COMPANY,
`
`Defendant-Appellant.
`
`______________________________
`
`Appeal from the United States District Court
`for the Northern District of Georgia
`______________________________
`(October 10, 2001)
`
`Before BIRCH, MARCUS and WOOD*, Circuit Judges.
`_____________
`*Honorable Harlington Wood, Jr., U.S. Circuit Judge for the Seventh Circuit, sitting by
`designation.
`
`
`
`BIRCH, Circuit Judge:
`
`In this opinion, we decide whether publication of The Wind Done Gone
`
`(“TWDG”), a fictional work admittedly based on Margaret Mitchell’s Gone With
`
`the Wind (“GWTW”), should be enjoined from publication based on alleged
`
`copyright violations. The district court granted a preliminary injunction against
`
`publication of TWDG because it found that Plaintiff-Appellee SunTrust Bank
`
`(“SunTrust”) met the four-part test governing preliminary injunctions. We
`
`VACATE the injunction and REMAND for consideration of the remaining claims.
`
`I. BACKGROUND
`
`A.
`
`Procedural History
`
`SunTrust is the trustee of the Mitchell Trust, which holds the copyright in
`
`GWTW. Since its publication in 1936, GWTW has become one of the best-selling
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`books in the world, second in sales only to the Bible. The Mitchell Trust has
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`actively managed the copyright, authorizing derivative works and a variety of
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`commercial items. It has entered into a contract authorizing, under specified
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`conditions, a second sequel to GWTW to be published by St. Martin’s Press. The
`
`2
`
`
`
`Mitchell Trust maintains the copyright in all of the derivative works as well. See
`
`17 U.S.C. § 103.1
`
`Alice Randall, the author of TWDG, persuasively claims that her novel is a
`
`critique of GWTW’s depiction of slavery and the Civil-War era American South.
`
`To this end, she appropriated the characters, plot and major scenes from GWTW
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`into the first half of TWDG. According to SunTrust, TWDG “(1) explicitly refers
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`to [GWTW] in its foreword; (2) copies core characters, character traits, and
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`relationships from [GWTW]; (3) copies and summarizes famous scenes and other
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`elements of the plot from [GWTW]; and (4) copies verbatim dialogues and
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`descriptions from [GWTW].” SunTrust Bank v. Houghton Mifflin Co., 136 F.
`
`Supp. 2d 1357, 1364 (N.D.Ga. 2001), vacated, 252 F.3d 1165 (11th Cir. 2001).
`
`Defendant-Appellant Houghton Mifflin, the publisher of TWDG, does not contest
`
`the first three allegations,2 but nonetheless argues that there is no substantial
`
`similarity between the two works or, in the alternative, that the doctrine of fair use
`
`protects TWDG because it is primarily a parody of GWTW.
`
`1Hereafter, the Copyright Act of 1976 shall be referred to by only the section number of
`the Act.
`
`2Houghton Mifflin denies that there are passages from GWTW copied verbatim in
`TWDG.
`
`3
`
`
`
`After discovering the similarities between the books, SunTrust asked
`
`Houghton Mifflin to refrain from publication or distribution of TWDG, but
`
`Houghton Mifflin refused the request. Subsequently, SunTrust filed an action
`
`alleging copyright infringement, violation of the Lanham Act, and deceptive trade
`
`practices, and immediately filed a motion for a temporary restraining order and a
`
`preliminary injunction.
`
`After a hearing, the district court granted the motion, preliminarily enjoining
`
`Houghton Mifflin from “further production, display, distribution, advertising, sale,
`
`or offer for sale of” TWDG. SunTrust Bank, 136 F. Supp. 2d at 1386. In a
`
`thorough opinion, the court found that “the defendant’s publication and sale of
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`[TWDG would] infringe the plaintiff’s copyright interests as protected under the
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`copyright laws.” Id. Houghton Mifflin appealed. At oral argument, we issued an
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`order vacating the injunction on the grounds that it was an unconstitutional prior
`
`restraint. SunTrust Bank v. Houghton Mifflin Co., 252 F. 3d 1165 (11th Cir.
`
`2001). We now vacate that order and issue this more comprehensive opinion.
`
`B.
`
`Standard of Review
`
`“We review the district court’s grant of a preliminary injunction for abuse of
`
`discretion.” Warren Pub., Inc. v. Microdos Data Corp., 115 F.3d 1509, 1516 (11th
`
`Cir. 1997) (en banc). We review decisions of law de novo and findings of fact for
`
`4
`
`
`
`clear error. Mitek Holdings, Inc. v. Arce Eng’g Co., Inc., 89 F.3d 1548, 1554
`
`(11th Cir. 1996).
`
`II. DISCUSSION
`
`Our primary focus at this stage of the case is on the appropriateness of the
`
`injunctive relief granted by the district court. In our analysis, we must evaluate the
`
`merits of SunTrust’s copyright infringement claim, including Houghton Mifflin’s
`
`affirmative defense of fair use.3 As we assess the fair-use defense, we examine to
`
`what extent a critic may use a work to communicate her criticism of the work
`
`without infringing the copyright in that work. To approach these issues in the
`
`proper framework, we should initially review the history of the Constitution’s
`
`Copyright Clause and understand its relationship to the First Amendment.
`
`A.
`
`History and Development of the Copyright Clause
`
`The Copyright Clause finds its roots in England, where, in 1710, the Statute
`
`of Anne “was designed to destroy the booksellers’ monopoly of the booktrade and
`
`3I believe that fair use should be considered an affirmative right under the 1976 Act,
`rather than merely an affirmative defense, as it is defined in the Act as a use that is not a
`violation of copyright. See Bateman v. Mneumonics, Inc., 79 F.3d 1532, 1542 n.22 (11th Cir.
`1996). However, fair use is commonly referred to an affirmative defense, see Campbell v.
`Acuff-Rose Music, Inc., 510 U.S. 569, 590, 114 S. Ct. 1164, 1177 (1994), and, as we are bound
`by Supreme Court precedent, we will apply it as such. See also David Nimmer, A Riff on Fair
`Use in the Digital Millennium Copyright Act, 148 U. PA. L. REV. 673, 714 n. 227 (2000) (citing
`Bateman). Nevertheless, the fact that the fair use right must be procedurally asserted as an
`affirmative defense does not detract from its constitutional significance as a guarantor to access
`and use for First Amendment purposes.
`
`5
`
`
`
`to prevent its recurrence.” L. Ray Patterson, Understanding the Copyright Clause,
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`47 J. COPYRIGHT SOC’Y USA 365, 379 (2000). This Parliamentary statute assigned
`
`copyright in books to authors, added a requirement that only a new work could be
`
`copyrighted, and limited the duration, which had been perpetual, to two fourteen-
`
`year terms. 8 Anne, C.19 (1710), reprinted in 8 Melville B. Nimmer & David
`
`Nimmer, Nimmer on Copyright § 7-5 (2001). It is clear that the goal of the
`
`Statute of Anne was to encourage creativity and ensure that the public would have
`
`free access to information by putting an end to “the continued use of copyright as a
`
`device of censorship.” Patterson at 379.4 The Framers of the U.S. Constitution
`
`relied on this statute when drafting the Copyright Clause of our Constitution,5
`
`which reads,
`
`The Congress shall have Power . . . to promote the Progress of Science
`. . . by securing for limited Times to Authors . . . the exclusive Right to
`their respective Writings . . . .
`
`4The Statute of Anne providing for copyright is introduced as “[a]n act for the
`encouragement of learning,” and has a preamble that states one of the purposes as “the
`encouragement of learned men to compose and write useful books.” 8 Anne, C.19 (1710),
`reprinted in 8 Nimmer § 7-5.
`
`5See Edward C. Walterscheid, The Remarkable–and Irrational–Disparity Between the
`Patent Term and the Copyright Term, 83 J. PAT. & TRADEMARK OFF. SOC’Y 233, 235 (2001)
`(“The American Copyright Act of 1790 simply copied this same basic scheme [from the Statute
`of Anne] into the new American copyright law.”); Pierre N. Leval, Nimmer Lecture: Fair Use
`Rescued, 44 UCLA L. REV. 1449, 1450 (1997) (“The law of copyright, [was] fashioned by the
`Statute of Anne in 1710 and recognized in our Constitution.”).
`
`6
`
`
`
`U.S. CONST. art. 1, § 8, cl. 8. Congress directly transferred the principles from the
`
`Statute of Anne into the copyright law of the United States in 1783, first through a
`
`recommendation to the states to enact similar copyright laws,6 and then in 1790,
`
`with the passage of the first American federal copyright statute.7
`
`The Copyright Clause was intended “to be the engine of free expression.”
`
`Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 558, 105 S. Ct.
`
`2218, 2229 (1985). To that end, copyright laws have been enacted achieve the
`
`three main goals: the promotion of learning, the protection of the public domain,
`
`and the granting of an exclusive right to the author.
`
`1. Promotion of Learning
`
`In the United States, copyright has always been used to promote learning by
`
`guarding against censorship.8 Throughout the nineteenth century, the copyright in
`
`literature was limited to the right “to publish and vend books.” Patterson, at 383.
`
`The term “copy” was interpreted literally; an author had the right only to prevent
`
`6“Resolution of the Continental Congress Respecting Copyright” (1783), reprinted in 8
`Nimmer § 7-11.
`
`71 Stat. 124 (May 31, 1790), reprinted in 8 Nimmer § 7-41 (“AN ACT for the
`encouragement of learning . . .”).
`
`8See Jane C. Ginsburg, Creation and Commercial Value: Copyright Protection in Works
`of Information, 90 COLUM. L. REV. 1865, 1873 (1990) (“[T]he 1710 English Statute of Anne, the
`1787 United States Constitution, and the 1790 United States federal copyright statute all
`characterized copyright as a device to promote the advancement of knowledge.”).
`
`7
`
`
`
`others from copying and selling her particular literary work. See Stowe v. Thomas,
`
`23 F. Cas. 201 (C.C.E.D. Pa. 1853) (holding that a translation of Uncle Tom’s
`
`Cabin into German was not a copyright infringement because it was not a copy of
`
`the work as it was published).9 This limited right ensured that a maximum number
`
`of new works would be created and published. It was not until the 1909 Act,
`
`which codified the concept of a derivative work, that an author’s right to protect
`
`his original work against imitation was established. This change more closely
`
`represents current statutory copyright law and is consistent with copyright’s
`
`constitutional mandate.
`
`As a further protection of the public interest, until 1976, statutory copyright
`
`law required that a work be published before an author was entitled to a copyright
`
`in that work. Therefore, in order to have the sole right of publication for the
`
`statutory period, the author was first required to make the work available to the
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`public. In 1976, copyright was extended to include any work “fixed in any
`
`tangible medium of expression” in order to adapt the law to technological
`
`advances. § 102(a). Thus, the publication requirement was removed, but the fair
`
`9Under modern copyright, such a right to translate would enjoy protection as a
`“derivative work.” §§ 101 and 106. In Folsom v. Marsh, 9 F.Cas. 342 (C.C.Mass. 1841),
`Justice Story created the concept of “fair use,” which actually expanded the copyright monopoly,
`since until that time a translation or abridgement was not considered an infringement.
`
`8
`
`
`
`use right was codified to maintain the constitutionally mandated balance to ensure
`
`that the public has access to knowledge.
`
`The Copyright Act promotes public access to knowledge because it provides
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`an economic incentive for authors to publish books and disseminate ideas to the
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`public. Harper & Row, 471 U.S. at 558, 105 S. Ct. at 2229 (“By establishing a
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`marketable right to the use of one’s expression, copyright supplies the economic
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`incentive to create and disseminate ideas.”). The Supreme Court has recognized
`
`that “[t]he monopoly created by copyright thus rewards the individual author in
`
`order to benefit the public.” Id. at 546, 105 S. Ct. at 2223 (quoting Sony Corp. of
`
`America v. Univ. City Studios, Inc., 464 U.S. 417, 477, 104 S. Ct. 774, 807 (1984)
`
`(Blackmun, J.,dissenting)). Without the limited monopoly, authors would have
`
`little economic incentive to create and publish their work. Therefore, by providing
`
`this incentive, the copyright law promotes the public access to new ideas and
`
`concepts.
`
`2. Protection of the Public Domain
`
`The second goal of the Copyright Clause is to ensure that works enter the
`
`public domain after an author’s rights, exclusive, but limited, have expired.
`
`Parallel to the patent regime, the limited time period of the copyright serves the
`
`dual purpose of ensuring that the work will enter the public domain and ensuring
`
`9
`
`
`
`that the author has received “a fair return for [her] labors.” Harper & Row, 471
`
`U.S. at 546, 105 S. Ct. at 2223. This limited grant “is intended to motivate the
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`creative activity of authors . . . by the provision of a special reward, and to allow
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`the public access to the products of their genius after the limited period of
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`exclusive control has expired.” Sony, 464 U.S. at 429, 104 S. Ct. at 782. The
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`public is protected in two ways: the grant of a copyright encourages authors to
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`create new works, as discussed in section II.A.1., and the limitation ensures that the
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`works will eventually enter the public domain, which protects the public’s right of
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`access and use.10
`
`3. Exclusive Rights of the Author
`
`Finally, the Copyright Clause grants the author limited exclusive rights in
`
`order to encourage the creation of original works. Before our copyright
`
`jurisprudence developed, there were two separate theories of copyright in England
`
`– the natural law copyright, which was the right of first publication, and the
`
`statutory copyright, which was the right of continued publication. The natural law
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`copyright, which is not a part of our system, implied an ownership in the work
`
`itself, and thus was preferred by the booksellers and publishers striving to maintain
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`10See Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 349, 111 S. Ct. 1282,
`1290 (1991) (“The primary objective of copyright is not to reward the labor of authors, but ‘[t]o
`promote the Progress of Science and useful Arts.’”).
`
`10
`
`
`
`their monopoly over literature as well as by the Crown to silence “seditious”
`
`writings. Even after passage of the Statute of Anne, the publishers and booksellers
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`resisted the loss of their monopoly in the courts for more than sixty years. Finally,
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`in 1774, the House of Lords ruled that the natural law copyright, that is, the
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`ownership of the work itself, expires upon publication of the book, when the
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`statutory copyright attaches. Patterson at 382.
`
`This bifurcated system was carried over into our copyright law. As of the
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`1909 Act, an author had “state common law protection [that] persisted until the
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`moment of general publication.” Estate of Martin Luther King, Jr. v. CBS, Inc.,
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`194 F.3d 1211, 1214 (11th Cir. 1999). After the work was published, the author
`
`was entitled to federal statutory copyright protection if she had complied with
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`certain federal requirements (i.e. publication with notice). If not, the work was
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`released into the public domain. Id. The system illustrates that the author’s
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`ownership is in the copyright, and not in the work itself, for if the author had an
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`ownership interest in the work itself, she would not lose that right if she published
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`the book without complying with federal statutory copyright requirements.
`
`Compliance with the copyright law results in the guarantee of copyright to the
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`author for a limited time, but the author never owns the work itself. § 202
`
`11
`
`
`
`(“Ownership of a copyright, or of any of the exclusive rights under a copyright, is
`
`distinct from ownership of any material object in which the work is embodied.”).
`
`
`
`This has an important impact on modern interpretation of copyright, as it
`
`emphasizes the distinction between ownership of the work, which an author does
`
`not possess, and ownership of the copyright, which an author enjoys for a limited
`
`time. In a society oriented toward property ownership, it is not surprising to find
`
`many that erroneously equate the work with the copyright in the work and
`
`conclude that if one owns the copyright, they must also own the work. However,
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`the fallacy of that understanding is exposed by the simple fact that the work
`
`continues to exist after the term of copyright associated with the work has expired.
`
`“The copyright is not a natural right inherent in authorship. If it were, the impact
`
`on market values would be irrelevant; any unauthorized taking would be
`
`obnoxious.” Pierre Leval, Towards a Fair Use Standard, 105 Harv. L. Rev. 1105,
`
`1124 (1990).
`
`B. The Union of Copyright and the First Amendment
`
`12
`
`
`
`The Copyright Clause and the First Amendment,11 while intuitively in
`
`conflict,12 were drafted to work together to prevent censorship; copyright laws
`
`were enacted in part to prevent private censorship and the First Amendment was
`
`enacted to prevent public censorship.13 There are “[c]onflicting interests that must
`
`be accommodated in drawing a definitional balance” between the Copyright Clause
`
`and the First Amendment. 1 Nimmer § 1.10[B][1]. In establishing this balance
`
`“[o]n the copyright side, economic encouragement for creators must be preserved
`
`and the privacy of unpublished works recognized. Freedom of speech[, on the
`
`other hand,] requires the preservation of a meaningful public or democratic
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`dialogue, as well as the uses of speech as a safety valve against violent acts, and as
`
`an end in itself.” Id.
`
`In copyright law, the balance between the First Amendment and copyright is
`
`preserved, in part, by the idea/expression dichotomy and the doctrine of fair use.
`
`See Eldred v. Reno, 239 F.3d 372, 375 (D.C. Cir. 2001) (“The first amendment
`
`11“Congress shall make no law . . . abridging the freedom of speech . . .” U.S. CONST.
`amend. I.
`
`12While the First Amendment disallows laws that abridge the freedom of speech, the
`Copyright Clause calls specifically for such a law.
`
`13See Rebecca Tushnet, Copyright as a Model for Free Speech Law: What Copyright Has
`in Common with Anti-Pornography Laws, Campaign Finance Reform, and Telecommunications
`Regulation, 42 B. C. L. REV. 1, 2 (2000) (“The First Amendment gets government off speakers’
`backs, while the Copyright Act enables speakers to make money from speaking and thus
`encourages them to enter the public marketplace of ideas.”).
`
`13
`
`
`
`objection . . . was misplaced ‘[i]n view of the First Amendment protections already
`
`embodied in the Copyright Act’s distinction between copyrightable expression and
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`uncopyrightable facts and ideas, and the latitude for scholarship and comment
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`traditionally afforded by fair use.’”) (quoting Harper & Row, 471 U.S. at 560, 105
`
`S. Ct. at 2218).
`
`1. The Idea/ Expression Dichotomy
`
`Copyright cannot protect an idea, only the expression of that idea. Baker v.
`
`Selden, 101 U.S. 99 (1879); Mitek, 89 F.3d at 1556 n.19; Bell South Adver. &
`
`Publ’g Corp. v. Donnelly Info. Publ’g, Inc., 999 F.2d 1436, 1445 (1993); codified
`
`in § 102(b) (“In no case does copyright protection for an original work of
`
`authorship extend to any idea, procedure, process, system, method of operation,
`
`concept, principle, or discovery, regardless of the form in which it is described,
`
`explained, illustrated, or embodied in such work.”). The result is that “copyright
`
`assures authors the right to their original expression, but encourages others to build
`
`freely upon the ideas and information conveyed by the work.” Feist, 499 U.S. at
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`349-50, 111 S. Ct. at 1290. It is partly through this idea/expression dichotomy that
`
`copyright law embodies the First Amendment’s underlying goal of encouraging
`
`open debate and the free exchange of ideas. See Harper & Row, 471 U.S. at 556,
`
`105 S. Ct. at 2228 (citing as correct the Second Circuit’s observation that
`
`14
`
`
`
`“copyright’s idea/expression dichotomy ‘strike[s] a definitional balance between
`
`the First Amendment and the Copyright Act by permitting free communication of
`
`facts while still protecting an author’s expression”); Worldwide Church of God v.
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`Philadelphia Church of God, 227 F.3d 1110, 1115 (9th Cir. 2000), cert. denied __
`
`U.S. __, 121 S. Ct. 1486 (2001) (“The public interest in the free flow of
`
`information is assured by the law’s refusal to recognize a valid copyright in
`
`facts.”); see also 1 Nimmer § 1-10[C][2] (“In general, the democratic dialogue – a
`
`self-governing people’s participation in the marketplace of ideas – is adequately
`
`served if the public has access to an author’s ideas, and such loss to the dialogue as
`
`results from inaccessibility to an author’s ‘expression’ is counterbalanced by the
`
`greater public interest in the copyright system.”). Holding an infringer liable in
`
`copyright for copying the expression of another author’s ideas does not impede
`
`First Amendment goals because the public purpose has been served – the public
`
`already has access to the idea or the concepts.14 A new author may use or discuss
`
`the idea, but must do so using her own original expression.
`
`2. Fair Use
`
`14See 1 Nimmer § 1.10[B][2] (“It is exposure to ideas, and not to their particular
`expression, that is vital if self-governing people are to make informed decisions.”).
`
`15
`
`
`
`First Amendment privileges are also preserved through the doctrine of fair
`
`use.15 Until codification of the fair-use doctrine in the 1976 Act, fair use was a
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`judge-made right developed to preserve the constitutionality of copyright
`
`legislation by protecting First Amendment values. Had fair use not been
`
`recognized as a right under the 1976 Act, the statutory abandonment of publication
`
`as a condition of copyright that had existed for over 200 years would have
`
`jeopardized the constitutionality of the new Act because there would be no
`
`statutory guarantee that new ideas, or new expressions of old ideas, would be
`
`accessible to the public.
`
`Included in the definition of fair use are “purposes such
`
`as criticism, comment, news reporting, teaching . . ., scholarship, or research.” §
`
`107. The exceptions carved out for these purposes are at the heart of fair use’s
`
`protection of the First Amendment, as they allow later authors to use a previous
`
`author’s copyright to introduce new ideas or concepts to the public. Therefore,
`
`within the limits of the fair-use test,16 any use of a copyright is permitted to fulfill
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`one of the important purposes listed in the statute.
`
`Because of the First Amendment principles built into copyright law through
`
`the idea/expression dichotomy and the doctrine of fair use, courts often need not
`
`15 § 107 (“[F]air use of a copyrighted work . . . for purposes such as criticism [or]
`comment . . . is not an infringement of copyright.”).
`
`16See discussion section II.C.1.b.
`
`16
`
`
`
`entertain related First Amendment arguments in a copyright case. See, e.g.,
`
`Eldred, 239 F.3d at 376 (where the works in question “are by definition under
`
`copyright; that puts the works on the latter half of the ‘idea/expression dichotomy’
`
`and makes them subject to fair use. This obviates further inquiry under the First
`
`Amendment.”); Nihon Keizai Shimbun, Inc. v. Comline Bus. Data, Inc., 166 F.3d
`
`65, 74 (2d Cir. 1999) (“We have repeatedly rejected First Amendment challenges
`
`to injunctions from copyright infringement on the ground that First Amendment
`
`concerns are protected by and coextensive with the fair use doctrine.”); Los
`
`Angeles News Serv. v. Tullo, 973 F.2d 791, 795 (9th Cir. 1992) (“First
`
`Amendment concerns are also addressed in the copyright field through the ‘fair
`
`use’ doctrine.”).17
`
`The case before us calls for an analysis of whether a preliminary injunction
`
`was properly granted against an alleged infringer who, relying largely on the
`
`doctrine of fair use, made use of another’s copyright for comment and criticism.
`
`As discussed herein, copyright does not immunize a work from comment and
`
`criticism. Therefore, the narrower question in this case is to what extent a critic
`
`may use the protected elements of an original work of authorship to communicate
`
`her criticism without infringing the copyright in that work. As will be discussed
`
`17For a more policy-based discussion, see 1 Nimmer § 1.10[D].
`
`17
`
`
`
`below, this becomes essentially an analysis of the fair use factors. As we turn to
`
`the analysis required in this case, we must remain cognizant of the First
`
`Amendment protections interwoven into copyright law.
`
`C. Appropriateness of Injunctive Relief
`
`“The chief function of a preliminary injunction is to preserve the status quo
`
`until the merits of the controversy can be fully and fairly adjudicated.”
`
`Northeastern Fl. Chapter of Ass’n of Gen. Contractors of Am. v. City of
`
`Jacksonville, Fl., 896 F.2d 1283, 1284 (11th Cir. 1990). The Copyright Act
`
`specifically vests the federal courts with power to grant injunctions “to prevent or
`
`restrain infringement of a copyright.” § 502(a). While injunctive relief may be
`
`particularly appropriate in cases involving simple copying or “piracy” of a
`
`copyrighted work, the Supreme Court has cautioned that such relief may not be
`
`consistent with the goals of copyright law in cases in which the alleged infringer of
`
`the copyright has a colorable fair-use defense. Campbell v. Acuff-Rose Music,
`
`Inc., 510 U.S. 569, 578 n.10, 114 S. Ct. 1164, 1171 n.10 (1994).18
`
`The basic framework for our analysis remains, however, the standard test
`
`governing the issuance of preliminary injunctions. SunTrust is not entitled to relief
`
`18The Supreme Court reiterated this point in New York Times v. Tasini, __ U.S. __, __,
`121 S. Ct. 2381, 2393 (2001).
`
`18
`
`
`
`in the form of a preliminary injunction unless it has proved each of the following
`
`four elements: “(1) a substantial likelihood of success on the merits, (2) a
`
`substantial threat of irreparable injury if the injunction were not granted, (3) that
`
`the threatened injury to the plaintiff outweighs the harm an injunction may cause
`
`the defendant, and (4) that granting the injunction would not disserve the public
`
`interest.” Am. Red Cross v. Palm Beach Blood Bank, Inc., 143 F.3d 1407, 1410
`
`(11th Cir. 1998).
`
`1. Substantial Likelihood of Success on the Merits
`
`a. Prima Facie Copyright Infringement
`
`The first step in evaluating the likelihood that SunTrust will succeed on the
`
`merits is to determine whether it has established the prima facie elements of a
`
`copyright infringement claim: (1) that SunTrust owns a valid copyright in GWTW
`
`and (2) that Randall copied original elements of GWTW in TWDG. Feist, 499
`
`U.S. at 361, 111 S. Ct. at 1296; Leigh v. Warner Bros., Inc., 212 F.3d 1210, 1214
`
`(11th Cir. 2000). The district court found that SunTrust had carried its burden on
`
`both of these elements.
`
`The first element, SunTrust’s ownership of a valid copyright in GWTW, is
`
`not disputed. Houghton Mifflin does assert, however, that SunTrust did not
`
`establish the second element of infringement, that TWDG appropriates copyright-
`
`19
`
`
`
`protected expression from GWTW. In order to prove copying, SunTrust was
`
`required to show a “substantial similarity” between the two works such that “an
`
`average lay observer would recognize the alleged copy as having been
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`appropriated from the copyrighted work.” Leigh, 212 F.3d at 1214 (quoting
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`Original Appalachian Artworks, Inc. v. Toy Loft, Inc., 684 F.2d 821, 829 (11th
`
`Cir. 1982)). Not all copying of a work is actionable, however, for, as discussed in
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`section II.B.1., “no author may copyright facts or ideas. The copyright is limited to
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`those aspects of the work–termed ‘expression’–that display the stamp of the
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`author’s originality.” Harper & Row, 471 U.S. at 547, 105 S. Ct. at 2224 (citation
`
`omitted). Thus, we are concerned with substantial similarities between TWDG and
`
`GWTW only to the extent that they involve the copying of original, protected
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`expression. Leigh, 212 F.3d at 1214.19
`
`There is no bright line that separates the protectable expression from the
`
`nonprotectable idea in a work of fiction. While often referred to as a test for
`
`distinguishing the idea from the expression, Judge Learned Hand’s famous
`
`19Originally the word “copie” was a noun, indicating the manuscript. Ownership of the
`“copie” thus meant ownership of the manuscript for the purposes of publishing it. Today,
`“copy” has become a verb, meaning the act of reproduction of a work. But in the development
`of copyright law it was intended to be a term of art, indicating a reproduction of a work for
`publication. Failure to understand and apply this distinction has confused many courts (assisted
`by overzealous advocates) into too expansive a view of the scope of the copyright monopoly.
`
`20
`
`
`
`statement in Nichols v. Universal Pictures Corp., 45 F.2d 119 (2d Cir. 1930), is
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`actually nothing more than a concise restatement of the problem facing the courts:
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`Upon any work, and especially upon a play, a great number of patterns of
`increasing generality will fit equally well, as more and more of the incident
`is left out. The last may perhaps be no more than the most general statement
`of what the play is about, and at time might consist only of its title; but there
`is a point in this series of abstractions where they are no longer protected,
`since otherwise the playwright could prevent the use of his ‘ideas,’ to which,
`apart from their expression, his property is never extended.
`
`Id. at 121. At one end of the spectrum, scenes a faire–the stock scenes and
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`hackneyed character types that “naturally flow from a common theme”–are
`
`considered “ideas,” and therefore are not copyrightable. Beal v. Paramount
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`Pictures Corp., 20 F.3d 454, 459-60 (11th Cir. 1994). But as plots become more
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`intricately detailed and characters become more idiosyncratic, they at some point
`
`cross the line into “expression” and are protected by copyright. See 1 Nimmer §
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`2.12 (2001).
`
`After conducting a thorough comparison of the two works, the district court
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`found that TWDG copied far more than unprotected scenes a faire from GWTW:
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`“[TWDG] uses fifteen fictional characters from [GWTW], incorporating their
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`physical attributes, mannerisms, and the distinct features that Ms. Mitchell used to
`
`describe them, as well as their complex relationships with each other. Moreover,
`
`the various [fictional] locales, . . . settings, characters, themes, and plot of
`
`21
`
`
`
`[TWDG] closely mirror those contained in [GWTW].” SunTrust, 136 F.Supp.2d at
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`1367.
`
`Our own review of the two works reveals substantial use of GWTW.
`
`TWDG appropriates numerous characters, settings, and plot twists from GWTW.
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`For example, Scarlett O’Hara, Rhett Butler, Bonnie Butler, Melanie Wilkes,
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`Ashley Wilkes, Gerald O’Hara, Ellen O’Hara, Mammy, Pork, Dilcey, Prissy, Belle
`
`Watling, Carreen O’Hara, Stuart and Brenton Tarleton, Jeems, Philippe, and Aunt
`
`Pittypat, all characters in GWTW, appear in TWDG. Many of these characters are
`
`renamed in TWDG: Scarlett becomes “Other,” Rhett Butler becomes “R.B.,” Pork
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`becomes “Garlic,” Prissy becomes “Miss Priss,” Philippe becomes “Feleepe,” Aunt
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`Pittypat becomes “Aunt Pattypit,” etc. In several instances, Randall renamed
`
`characters using Mitchell’s descriptions of those characters in GWTW: Ashley
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`becomes “Dreamy Gentleman,” Melanie becomes “Mealy Mouth,” Gerald
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`becomes “Planter.” The fictional settings from GWTW receive a similarly
`
`transparent renaming in TWDG: Tara becomes “Tata,” Twelve Oaks Plantation
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`becomes “Twelve Slaves Strong as Trees.” TWDG copies, often in wholesale
`
`fashion, the descriptions and histories of these fictional characters and places from
`
`GWTW, as well as their relationships and interactions with one another. TWDG
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`appropriates or otherwise explicitly references many aspects of GWTW’s plot as
`
`22
`
`
`
`well, such as the scenes in which Scarlett kills a Union soldier and the scene in
`
`which Rhett stays in the room with his dead daughter Bonnie, burning candles.
`
`After carefully comparing the two works, we agree with the district court that,
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`particularly in its first half, TWDG is largely “an encapsulation of [GWTW] [that]
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`exploit[s] its copyrighted characters, story lines, and settings as the palette for the
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`new story.” SunTrust, 136 F.Supp.2d at 1367.
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`Houghton Mifflin argues that there is no substantial similarity between
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`TWDG and GWTW because the retelling of the story is an inversion of GWTW:
`
`the characters, places, and events lifted from GWTW are often cast in a
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