Suntrust Bank v. Houghton Mifflin Co.

• Decision Date: 20 April 2001
• Docket Number: CIV.A.No. 1:01-CV-701-CAP.
• Parties: SUNTRUST BANK, as Trustee of the Stephens Mitchell Trusts f/b/o Eugene Muse Mitchell and Joseph Reynolds Mitchell, Plaintiff, v. HOUGHTON MIFFLIN COMPANY, Defendant.
• Court: U.S. District Court — Northern District of Georgia

136 F.Supp.2d 1357

SUNTRUST BANK, as Trustee of the Stephens Mitchell Trusts f/b/o Eugene Muse Mitchell and Joseph Reynolds Mitchell, Plaintiff, v. HOUGHTON MIFFLIN COMPANY, Defendant.

CIV.A.No. 1:01-CV-701-CAP.

United States District Court, N.D. Georgia, Atlanta Division.

April 20, 2001.

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William B. B. Smith, Ralph Ragan Morrison, Anne Moody Johnson, Jones Day Reavis & Pogue, Atlanta, GA, Maura J. Wogan, Jessie F. Beeber, Thomas D. Selz, Martin Garbus, Richard Kurnit, Frankfurt Garbus Kurnit Klein & Selz, New York City, for plaintiff.

Miles J. Alexander, Jerre B. Swann, W. Swain Wood, Kilpatrick Stockton, Atlanta, GA, for defendant.

Peter Crane Canfield, Dow Lohnes & Albertson, Atlanta, GA, Leon Friedman, Office of Leon Friedman, New York City, for American Booksellers Foundation for Freedom of Expression, Freedom to Read Foundation and Pen American Center.

ORDER

PANNELL, District Judge.

The plaintiff filed the instant action seeking a temporary restraining order ("TRO") and a preliminary injunction to enjoin the defendant from further publication and distribution of the book The Wind Done Gone. The case arises under the Copyright Act and, as such, the court has federal question subject matter jurisdiction. See 17 U.S.C. §§ 101 et seq.; and see 28 U.S.C. § 1338(a). On March 29, 2001, the court held a hearing on the plaintiff's request for a TRO. The court has not issued a TRO. On April 18, 2001, the court conducted a hearing on the plaintiff's request for a preliminary injunction.

I. BACKGROUND FACTS AND PROCEDURAL HISTORY

The Mitchell Trusts are the copyright owners of the novel Gone With the Wind, by Margaret Mitchell. Published in 1936, the book has enjoyed widespread acclaim, been translated into over 30 languages, and has sold tens of millions of copies. Over the years, the Mitchell Trusts have authorized derivative works of Gone With the Wind, as well as the use of certain elements of Gone With the Wind in a wide variety of commercial contexts.

For example, in 1988, the Mitchell Trusts authorized the publication of Scarlett: The Sequel to Margaret Mitchell's Gone With the Wind by Alexandra Ripley and published by Warner Books in 1991 (hereinafter "Scarlett: The Sequel"), which incorporated the characters, character traits, settings, plot lines, title and other elements of the original novel.

The Mitchell Trusts have also entered into a contract authorizing, under certain conditions, the making of a second sequel to Gone With the Wind again using copyrighted elements of the original novel (hereinafter the "Second Sequel"). The Second Sequel, if approved by the Mitchell Trusts, will be published by St. Martin's Press.¹ The Mitchell Trusts are the sole owners of the copyright to Scarlett: The Sequel and, by written agreement, will be the sole copyright owners of the Second Sequel. The contract for the Second Sequel specifically provides that neither Scarlett O'Hara nor Rhett Butler may die, thereby, according to the plaintiff, preserving the reading public's expectations, as well as the Mitchell Trusts' ability to authorize sequels in the future.

According to the plaintiff, The Wind Done Gone is an unauthorized sequel to Gone With the Wind. The new work chronicles the diary of a woman named Cynara, the illegitimate daughter of Planter, a plantation owner, and Mammy, a slave who cares for his children. The plaintiff's copyright infringement claim rests on the fact that the defendant's book: (1) explicitly refers to Gone With the Wind in its foreword; (2) copies core characters, character traits, and relationships from Gone With the Wind; (3) copies and summarizes famous scenes and other elements of the plot from Gone With the Wind; and (4) copies verbatim dialogues and descriptions from Gone With the Wind. After discovering these similarities, the plaintiff filed the instant suit on March 16, 2001. The plaintiff has asked the defendant to withdraw the book from publication and distribution, but the defendant has refused to do so.

II. LEGAL DISCUSSION

The purpose of a preliminary injunction is to protect the movant from irreparable harm and to preserve the status quo until the district court renders a decision on the merits. See Canal Auth. of Fla. v. Callaway, 489 F.2d 567, 572 (5th Cir.1974).² In seeking a preliminary injunction, a plaintiff in a copyright infringement case, as in all others, must establish that:

(1) there is a substantial likelihood that the moving party will prevail on the merits;

(2) the moving party will suffer irreparable injury if the injunction is not granted;

(3) the threatened injury to the moving party outweighs the threatened harm the proposed injunction may cause the opposing party; and

(4) the injunction, if issued, would not be adverse to the public interest.

Johnson v. U.S. Dept. Of Agri., 734 F.2d 774, 781 (11th Cir.1984); see FED.R.CIV.P. 65.

The first element is generally regarded as the most important because the granting of injunctive relief would be inequitable if the movant has no chance of succeeding on the merits of the case. See Canal Auth. of Fla., 489 F.2d at 576; see generally Gonzalez v. Reno, 2000 WL 381901 (11th Cir.2000). Here, the plaintiff must not only demonstrate a likelihood of success on the elements of its prima facie case but also as to the asserted defenses by the defendant, such as the fair use doctrine. See Metro-Goldwyn-Mayer, Inc. v. Showcase Atlanta Cooperative Productions, Inc., 479 F.Supp. 351, 355 (N.D.Ga.1979) (citing Canal Auth. of Fla., 489 F.2d at 567); and see 17 U.S.C. § 107. The remaining three elements essentially require the court to balance the equities of the matter in dispute in order to "choose the course of action that will minimize the costs of being mistaken." American Hospital Supply Corp. v. Hospital Products, Ltd., 780 F.2d 589, 593 (7th Cir.1986). Ultimately, the decision to grant injunctive relief rests within the "sound discretion of the district court." Sierra Club v. Georgia Power Co., 180 F.3d 1309, 1310 (11th Cir. 1999) (citations omitted). Given the foregoing principles and the record thus far developed, the court proceeds to consider the motions for injunctive relief.

A. Likelihood of Success on the Merits

1. Infringement by the Defendant

In order to obtain injunctive relief for copyright infringement, the plaintiff must show ownership of a valid, existing copyright and copying of the copyrighted material by the defendant. See generally Conagra, Inc. v. Singleton, 743 F.2d 1508, 1512 (11th Cir.1984). The court finds that the plaintiff has ownership of a valid, existing copyright in the novel Gone With the Wind.³ Thus, the plaintiff's right to prepare derivative works based on the copyrighted work automatically arises under 17 U.S.C. § 106(2), and the plaintiff is entitled to prevent any unauthorized musical arrangement, dramatization, or any other form in which the work may be recast, transformed, or adapted. Metro-Goldwyn-Mayer, Inc., 479 F.Supp. at 355-56; see generally 17 U.S.C. § 106.

To establish a prima facie case the plaintiff must demonstrate copying by the defendant of the copyrighted work. Id.; see also Walt Disney Productions v. Air Pirates, 581 F.2d 751 (9th Cir.1978); and see Berlin v. E.C. Publications, Inc., 329 F.2d 541 (2d Cir.1964). If, as here, the plaintiff has no direct proof of copying, then the plaintiff may prove copying by demonstrating that the defendant had access to the copyrighted work and that the works are "substantially similar." See Herzog v. Castle Rock Entertainment, 193 F.3d 1241, 1248 (11th Cir.1999) (citing Benson v. Coca-Cola Co., 795 F.2d 973, 974 (11th Cir.1986)). Ms. Randall admits that she has twice read Gone With the Wind.⁴ Thus, the court finds that the plaintiff has established the first element of its prima facie case.

To show substantial similarity, the plaintiff must show that "an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work." Original Appalachian Artworks, Inc. v. Toy Loft, Inc., 684 F.2d 821, 829 (11th Cir.1982). Although not an exhaustive list, the Eleventh Circuit has made clear that "sequences of events which necessarily follow a common theme ..., [i]ncidents, characters, or settings that are indispensable or standard in the treatment of a given topic are not copyrightable." Herzog, 193 F.3d at 1248. (citations and internal quotations omitted). Therefore, the court in determining whether infringement has occurred must decide whether the similarities between Gone With the Wind and The Wind Done Gone "are substantial from the point of view of the lay reader and whether those similarities involve copyrightable material." Id. Judge Learned Hand best articulated what has become the guiding principle for courts to use in applying the substantial similarity test:

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 general statement of what the play is about, and at times consist of only 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. ... Nobody has ever been able to fix that boundary, and nobody ever can.

Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir.1930).

The plaintiff in establishing substantial similarity must satisfy both an extrinsic, or objective, test, as well as an intrinsic, or subjective, test. Herzog 193 F.3d at 1257.

The plaintiff contends that The Wind Done Gone is an unauthorized sequel to Gone With the Wind. The plaintiff argues that the defendant seeks to associate its work...