Suntrust Bank v. Houghton Mifflin Co.

United States Court of Appeals for the Eleventh Circuit · 2001 · Property

PropertyCopyrightFair UsePreliminary Injunctionscopyrightfair useparodycriticism

Facts

SunTrust holds the copyright in Margaret Mitchell's Gone With the Wind and has actively licensed derivative works based on it. Alice Randall wrote The Wind Done Gone, a fictional work admittedly based on Gone With the Wind and described as a critique of that novel's depiction of slavery and the Civil War-era South. To make that critique, Randall appropriated characters, plot, and major scenes from Gone With the Wind, and Houghton Mifflin, the publisher, did not contest those broad similarities. After Houghton Mifflin refused SunTrust's request not to publish the book, SunTrust filed suit and sought injunctive relief.

Issue

Whether SunTrust showed a substantial likelihood of success on its copyright infringement claim sufficient to justify a preliminary injunction against publication of The Wind Done Gone, despite Houghton Mifflin's fair use defense. More specifically, the question was whether Randall's use of protected elements of Gone With the Wind for criticism and parody was likely fair use.

Rule

A preliminary injunction may issue only if the plaintiff proves: (1) a substantial likelihood of success on the merits, (2) a substantial threat of irreparable injury absent an injunction, (3) that the threatened injury to the plaintiff outweighs the harm to the defendant, and (4) that the injunction would not disserve the public interest. In copyright cases, even where prima facie infringement is shown, injunctive relief is disfavored when the defendant has a colorable fair use defense; fair use is assessed under the statutory factors, with special attention to whether the secondary work is transformative, parodic, or critical, and whether any market harm is cognizable substitution rather than mere harm from criticism.

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One of 10 multiple-choice questions for this case. Pick an answer to see why.

Prairie Lantern Press in Chicago plans to publish a novel by Elena Cruz that reworks a still-copyrighted frontier classic to expose the original book's romantic treatment of anti-Indigenous violence. Cruz borrows recognizable characters and several famous scenes, but the new book reverses the moral perspective and depicts the celebrated hero as cruel and self-serving. The copyright holder seeks a preliminary injunction before release.

Assuming the copyright holder can show ownership and copying of protected expression, which is the strongest reason the injunction should be denied at this stage?

Explanation. A preliminary injunction requires, among other things, a substantial likelihood of success on the merits. Under the majority opinion, where the defendant presents a colorable fair use defense grounded in transformative criticism or parody, injunctive relief is disfavored. The critical point is not that all perspective-shifting fiction is lawful, but that this work appears to use protected elements to comment on and rebut the original rather than merely supersede it. Commercial publication does not eliminate fair use.