NEW ERA PUBLICATIONS INTERN. v. Carol Pub. Group

Citation729 F. Supp. 992
Decision Date30 January 1990
Docket NumberNo. 89 Civ. 3845 (LLS).,89 Civ. 3845 (LLS).
PartiesNEW ERA PUBLICATIONS INTERNATIONAL, ApS, Plaintiff, v. CAROL PUBLISHING GROUP and Jonathan Caven-Atack, Defendants.
CourtU.S. District Court — Southern District of New York

Jonathan W. Lubell, Morrison Cohen Singer & Weinstein, New York City, for plaintiff.

Melvin L. Wulf, Beldock Levine & Hoffman, New York City, for defendants.

OPINION AND ORDER

STANTON, District Judge.

Plaintiff New Era Publications International ("New Era") moves pursuant to Fed. R.Civ.P. 65 to enjoin defendants Carol Publishing Group ("Carol") and Jonathan Caven-Atack1 from publishing an unauthorized biography of the late L. Ron Hubbard.

BACKGROUND

New Era is the exclusive licensee of the works of Mr. Hubbard, a prolific and controversial author and founder of the Church of Scientology (the "Church"). Mr. Hubbard, who died in 1986, has written books on such diverse topics as science fiction, philosophy and religion. New Era has gone to considerable lengths to protect the copyrights to Mr. Hubbard's works, instituting suits in the United States, England, Canada and Australia.

Mr. Atack is the author and Carol is the publisher of A Piece of Blue Sky (the "book"), a critical biography of Mr. Hubbard. Mr. Atack was a member of the Church for almost nine years, during which he spent a great deal of time, money and effort studying Church teachings and pursuing its ideals. (Affirmation of Jonathan Caven-Atack dated September 29, 1989 ("Atack Aff.") Exhibit A at 1).

Mr. Atack became disillusioned with the Church after discovering what he perceived to be abusive practices against dissident Church members. (Id. at 1-2). After a thorough investigation, Mr. Atack came to believe that Scientology is a dangerous cult and that Mr. Hubbard, far from being the gentle prophet portrayed in Church literature, was a paranoid, vindictive and profoundly disturbed man. (Id. at 2-5). He wrote the book to expose what he believes to be the pernicious nature of the Church and the deceit that is the foundation of its teachings. (Id. at 6-7).

New Era learned that Carol intended to publish the book and, having reason to believe that it would contain copyrighted materials, New Era brought this action to prevent its publication. (Affidavit of Jonathan Lubell sworn to September 14, 1989 ¶ 3, 4 & 11). Over its objection, Carol was ordered to produce the manuscript of the book to New Era. Review of the manuscript disclosed substantial quotation from copyrighted material and New Era moved for a preliminary injunction. The parties subsequently agreed to merge the proceedings for preliminary and permanent injunctions pursuant to Fed.R.Civ.P. 65(a)(2).

According to New Era, 121 passages of the book are taken from 48 copyrighted sources. (Affidavit of Kenneth Long sworn to September 14, 1989 ("First Long Aff.") ¶ 8 & Exhibit A; Affidavit of Kenneth Long sworn to October 17, 1989 ("Second Long Aff.") ¶ 3). These passages total 4,324 words, which is approximately 2.9% of the total words in the book.2 (First Long Aff. ¶ 8). New Era asserts that two of the passages, totalling 33 words, are from unpublished materials, although Carol contends that these materials have been published. Carol also claims that some of the works allegedly infringed by the book are, for various reasons, not appropriate subjects for a copyright action.

New Era asserts, as it has in another action to enjoin a biography of Mr. Hubbard, that it has been authorized to publish a biography of Mr. Hubbard that will draw from both his published and unpublished writings. (Affidavit of Carl Heldt sworn to September 14, 1989 ("Heldt Aff.") ¶ 7); New Era Publications Int'l v. Henry Holt and Co., 695 F.Supp. 1493, 1522 (S.D.N.Y. 1988), aff'd, 873 F.2d 576 (2d Cir.1989). It contends that publication of the book will seriously impair the market for this biography. (Heldt Aff. ¶ 7).

New Era asserts that publication of the biography would infringe on the copyright of Mr. Hubbard's works in violation of 17 U.S.C. §§ 106, 501 (1988). Carol contends that the use of the copyrighted materials is protected by the "fair use" privilege embodied in 17 U.S.C. § 107.3

DISCUSSION
I. Validity of Certain Copyrights

Carol contends that New Era has not submitted proof of registration of six works, representing nine of the passages that New Era claims come from copyrighted sources. (Defendant's Supplemental Memorandum of Law in Opposition to Plaintiff's Motion for a Preliminary Injunction at 2).4 "Registration of a copyright claim is a jurisdictional prerequisite to a suit for infringement." Wales Industrial, Inc. v. Hasbro Bradley, Inc., 612 F.Supp. 510, 515 (S.D.N.Y.1985) (footnote omitted). However, New Era has demonstrated that it has registered these six works. (See Affidavit of Kenneth Long sworn to November 2, 1989 ("Third Long Aff.") ¶ 4).5

Carol also contends that the copyright of one of the materials, the HCO Manual of Justice, (the "Manual") has expired. The Manual contains 18 of the allegedly infringed passages, totalling approximately 389 words. Carol contends that because the Manual was published in 1959, the 28-year copyright term provided for in the Copyright Act of 19096 (the "1909 Act") expired in 1987.

The Copyright Act of 1976 (the "1976 Act") states that any copyright that was in its first term on January 1, 1978 "shall endure for twenty-eight years from the date it was originally secured." 17 U.S.C. § 304(a). Under section 10 of the 1909 Act, an author secured a copyright by publishing a work with a copyright notice. Section 19 required that the copyright notice indicate the year in which the copyright was secured by publication. The copyright notice in the Manual indicates that it was published in 1959, although the work was not registered until September 14, 1989. (Affirmation of Melvin Wulf dated October 24, 1989 Exhibit A).

New Era states that the copyright has not expired because, the copyright notice notwithstanding, the Manual is unpublished. (Third Long Aff. ¶ 5). Under section 26 of the 1909 Act, the date of publication is the date when copies are "placed on sale, sold, or publicly distributed." New Era notes that there is a blank in its copyright application in the space provided for the date of publication and the registration form states that the date of publication is to be included "ONLY if this work has been published." (First Verified Amended Complaint Exhibit B-54 (emphasis in original)).

However, New Era had previously asserted that the work is published. (Heldt Aff. ¶ 4). New Era fails to offer an explanation for the date on the copyright notice or its earlier assertion that the Manual is published. Because the Manual was published with a copyright notice in 1959, its copyright expired in 1987. Accordingly, that work is no longer entitled to copyright protection and the passages from it contained in the book will not be considered in determining New Era's claim of infringement. See Harvey Cartoons v. Columbia Pictures Industries, Inc., 645 F.Supp. 1564, 1571 (S.D.N.Y.1986).

II. Fair Use

The book takes many passages from copyrighted sources. It infringes New Era's copyright unless copying the passages is a fair use. See Harper & Row Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 569, 105 S.Ct. 2218, 2235, 85 L.Ed.2d 588 (1985) (defendant conceded that its quotation of 300 words was infringement "unless excused as a fair use.").

The privilege of fair use, a common-law doctrine codified in section 107 of the 1976 Act, allows a reasonable use of copyrighted materials without the consent of the owner. Harper & Row, 471 U.S. at 549, 105 S.Ct. at 2224 (quoting H. Ball, Law of Copyright and Literary Property 260 (1944)). The nature of the privilege is summed up in Justice Story's classic statement of the doctrine:

A reviewer may fairly cite largely from the original work, if his design be really and truly to use the passages for the purposes of fair and reasonable criticism. On the other hand, it is as clear, that if he thus cites the most important parts of the work, with a view, not to criticize, but to supersede the use of the original work, and substitute the review for it, such a use will be deemed in law a piracy.

Folsom v. Marsh, 9 F.Cas. 342, 344-45 (C.C.D.Mass.1841) (No. 4,901) (cited in Harper & Row, 471 U.S. at 550, 105 S.Ct. at 2225). Section 107 was intended merely to codify the common law doctrine, not to modify it. See Harper & Row, 471 U.S. at 549, 105 S.Ct. at 2224.

Section 107 allows the fair use of a copyrighted work "for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research." 17 U.S.C. § 107. It sets out four nonexclusive factors used to determine whether a use is fair: (1) the purpose and character of the use, including whether it is being published for profit; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used compared to the copyrighted work as a whole; and (4) the effect on the potential market of the copyrighted work. Id.

A. The Purpose and Character of the Use

Carol's potential profit from its use of copyrighted materials "tends to weigh against a finding of fair use." Harper & Row, 471 U.S. at 562, 105 S.Ct. at 2231. Yet the mere fact that a work may produce pecuniary gain for its author or publisher is not dispositive of a claim of fair use. See Maxtone-Graham v. Burtchaell, 803 F.2d 1253, 1262 (2d Cir.1986), cert. denied, 481 U.S. 1059, 107 S.Ct. 2201, 95 L.Ed.2d 856 (1987). Such an absolute rule would severely restrict the operation of the fair use doctrine, as virtually all publications involve some profit motive. Ibid. Thus the Second Circuit has stated when previously analyzing a claim of fair use by a biographer of Mr. Hubbard that "as long as a book can be classified as a work of criticism, scholarship or research, as can the book here, the factor cuts in favor of...

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