Sun Trust Bank v. Houghton Mifflin: copyright infringement and derivative works

Sun Trust Bank vs. Houghton Mifflin Company

Houghton Mifflin had scheduled the publication of Alice Randall's story, entitled "The Wind Done Gone," in June last year when the lawyers of Margaret Mitchell's estate - represented by Sun Trust Bank -- sought for and obtained a preliminary injunction in April, stopping its publication (Associated Press 2001). Margaret Mitchell was the author of the classic novel and very famous movie, "Gone with the Wind," in 1939 and Alice Randall wrote "The Wind Done Gone" in 2001. The estate's lawyers held that Randall violated the Copyright Law by plagiarizing Mitchell's novel and that it was not simply a case of free speech, as claimed by Randall.

In their court action, the lawyers of the Mitchell estate, implored the estate's exclusive right to the publication of the novel:

without the threat of an injunction to derail unauthorized derivative works of fiction, pirates will be free to mine the rich vein of copyrighted works and only to pay if they strike gold, get sued, and get caught before they steal away."

Preliminary Injunction

In granting the preliminary injunction, U.S. District Judge Charles Pannell ruled that Randall's novel borrowed "too liberally from 'Gone with the Wind' and, in so doing, infringed upon the copyright of Mitchell's original work. He elaborated that "The Wind Done Gone" essentially retold "Gone with the Wind," using only a different viewpoint but the same characters and places, and the court viewed this as "unabated piracy (Associated Press)."

Randall argued that she told her story from the viewpoint of Scarlett O'Hara's mulatto half-sister, Tara, and that it was a political parody that had the right to be published. But the federal judge disagreed and said that her "recitation of so much of the earlier work is overwhelming" and thus, constituted un-authorized sequel. To illustrate his point, Judge Pannell said that, while Mitchell's novel ends without describing what becomes her leading and tragic characters, Randall provides that ending in her work. "The right to answer those questions and to write a sequel or other derivative work, however, legally belongs to Ms. Mitchell's heirs, not Ms. Randall."

The Novels Compared

Those who read Randall's novel had different reactions. USA Today found it to be "much like Mitchell's" all right. The MSNBC Review saw it as opening a window into "how attitudes about a race evolved in America." But decided that the story of Cynara did not have the same lasting effect as "Gone with the Wind."

Reactions and Support

The filing of the case for violation of copyright elicited different reactions as well.

Randall's fellow writers, such as Pat Conroy, Harper Lee and Toni Morrison expressed their support for Randall (Freedomforum 2001). Historian Arthur M. Schlesinger did not think the book would be suppressed, and instead, thought that Mitchell's estate is, on the contrary, doing a "wonderful job of advertising for Houghton Mifflin."

In an affidavit submitted to the court, Pat Conroy wrote: "I read it with pleasure and laughed out loud at its clever inversions and insider jokes on the themes of 'Gone with the Wind.'"

Toni Morrison, a Nobel laureate, saw Randall's prose as "by turns evocative, wry, plangent."

James Carroll said that the controversial book vividly brought to life the characters of "Gone with the Wind," a rebuttal to "the most damning lie America has ever told itself."

And Henry Louis Gates, Jr. acknowledged "The Wind Done Gone" as a classic parody from the ancient Greeks to the present (Strothman 2002).

Other names included John Berendt, the roots rocker Steve Earle and civil war historian Shelby Foote.

These praises and endorsements - of its merits, its humanity and its humor -- were seen as the "best refutation of Mitchell estate's accusation" and working in favor of Randall and Houghton Mifflin. Houghton Mifflin filed an emergency motion for an expedited appeal, following the April 20, 2001 granting of a preliminary injunction by Judge Pannell, and this motion was granted. In its appeal, Houghton Mifflin Company prayed:

this Court to permit an unprecedented invasion of the copyright owner's exclusive right to authorize derivative works."

The First Amendment

Mifflin invoked the First Amendment in its appeal. The First Amendment to the U.S. Constitution provides that: "Congress shall make no law... abridging the freedom of speech... Or of the press." And that people have the right to speak freely without interference from government. It also gives the press the right to publish news, information and opinions without government interference, and this means (that) people have the right to publish their own newspapers, newsletters, magazines, etc.

Support poured for Randall and Houghton Mifflin on the basis of the First Amendment, such as Microsoft Corporation and media companies, such as The New York Times Company, Dow Jones & Company, The Tribune Company, Media General, and Cox Enterprises. They filed Friend of the Court briefs, endorsing Randall's novel.

Six more advocates filed a Friend of the Court brief that very week that the emergency motion for an expedited appeal was granted. Led by First Amendment lawyer and professor Leon Friedman, they were the PEN American Center, the American Booksellers Foundation for Free Expression, The Freedom to Read Foundation, The Washington Area Lawyers for the Arts, The First Amendment Project, and the National Coalition Against Censorship (Writers Write 2002).

Advocates of free speech felt that if Randall's book continued to be blocked or stopped, it would have disastrous consequences for other forms of media, such as television and radio. These media constantly resort to parodies, like "The Wind Done Gone." The New York Publishing House stated that one of its literary treasures, "The Lord of the Rings" by JRR Tolkien, was the object of a parody in the Harvard lampoon version, "Bored of the Rings."

Earlier Parodies

Other critics did not think that Randall's case was that big because it was not the first time a black author criticized the conditions of the blacks in the South. In 1967, Margaret Walker wrote the very successful novel, "Jubilee" the synopsis of which was quaintly very close to that of Mitchell's, as can be inferred in this blurb that was then written about it:

Daughter of the while plantation owner and his black mistress, the heroine was conceived, born and reared to womanhood behind the House steeped in knowledge for the times and the people."

And in 1892, Frances Ellen Watkins Harper wrote Iola Leroy ("Shadows Uplifted") to challenge the myth of "moonlight and magnolias that held sway in Southern fiction since the fall of Appomattox (Davis 2002). Walker and Harper were among those who "reinterpreted" the legend of the South, as the land of kind planters, beautiful ladies and contented slaves (Davis), but as pungently and sharply as Alice Randall and her "The Wind Done Gone."

In conceiving her story, Randall said she was fascinated with Mitchell's novel and had questions to ask about the mulattos and Scarlett's half-sister. Randall said she felt that she had to answer her own questions and tell a story that had not been told. These questions led her to create Cynara, the daughter of Gerald O'Hara and Mammy, who would outdo Other (Scarlett) in "wit, resourcefulness and strength (Davis)."

As mentioned earlier, Randall reversed the situation established or created by Mitchell. In "The Wind Done Gone," the slaves were in the position of power and the whites were reduced to weakness. Black Mammy and Miss Priss headed the household, Dreamy Gentleman (Ashley) was a homosexual and Miss Priss had power over him for knowing his secret. Mealy Mouth was capable only of procreating. Lady Ellen, who was a strong and pious character in Mitchell's story, was humbled in Randall's novel by the knowledge that she and Scarlett and her sisters had Negro blood (Davis). R (or Rhett) had none of the appeal he had in Mitchell's novel. Cynara discovered that Other (Scarlett) was no true source of envy or threat to her because it was she whom Mammy loved unconditionally. She was thus made free to live her own life from behind Other's shadow (Davis). Many readers found Randall's story and treatment "clever."

In an interview, Randall said that, sometime in the past, African-Americans were prohibited by law to read and write. She then very sadly noted how and why obstacles were placed on the way of a black woman at this time to tell her story. She also said that she had to do a parody, not a sequel to Mitchell's work, or her family would take offense against it.

Records reveal that the original working title for "Gone with the Wind" in 1936 was "Bugles Sang True," and that the Southern heroine's earlier name was not Scarlett but Pansy (O'Hara). If Randall chose other names for her characters, all that court battle could have been prevented (Ellison 2001).

Houghton Mifflin Company hoped that the same thing would happen to "The Wind Done Gone" as did to a 1989 dispute where it figured, also involving a parody by Roy Orbison's hit song, "Pretty Woman." Rock group 2 Live Crew later came out with "Ugly Woman" and Orbison's estate sued the group for violation of copyright. In 1994, the Supreme Court ruled that "Ugly Woman" was a parody and, thus, was protected by the First Amendment (Amanillo Globe News).

Houghton Mifflin Company also noted that famous works, such as Herman Melville's Moby Dick" and Charlotte Bronte's "Jane Eyre" had "spin-offs and hoped that case of Randall's novel would be decided the same way.

Limitations to Copyright

It could have been an oversight or the consequence of impulse. But Alice Randall's novel was protected, not only by the First Amendment, which provides and protects one's rights to free speech and press without interference from the government. It was, more importantly and ironically, protected by the Copyright Law itself, which Mitchell's lawyers invoked in filing for an injunction to stop the publication of Randall's book. Section 107 of the same Chapter

Chapter I) and same title (Title 7) establishes the limitations to the exclusive right through "fair use" for criticism and comment, which do not constitute infringement of copyright according to:

a. The purpose and character of use if commercial or non-profit) b. The nature of the copyrighted work c. The amount and substantiality of the portion used to the copyrighted work d. effect of use upon the potential market or value of the copyrighted work

Since Randall's novel was/is basically a caricature of how the blacks were treated in the South, especially in those times (of Mitchell's setting), "The Wind Done Gone" fulfilled the requirement for purpose and character of use (a) as well as for the value of the work (d). For these reasons, Randall's novel would qualify as an exception to the rule of copyright or fall under two of the four categories of limitations to the exclusiveness of copyright (Findlaw.com).

To these grounds, however, Mitchell's estate's lawyers argued that Randall used all of Mitchell's main characters and, thus, could not qualify as a simple parody. Lead lawyer Morrison also reasoned that Randall would only get rich off Mitchell's work if her book was allowed to be published. He, moreover, refused to acknowledge that "The Wind Done Gone" would expose "Gone with the Wind" as a sympathetic work of racism of the South, rather that Randall, who was very thorough in lifting the storyline and characters of Mitchell, according to Morrison, would just make a ton of money by plagiarizing "Gone with the Wind."

Morrison emphasized that the most important thing to the heirs and readers of Mitchell was "protecting her image," which materialized through the establishment of a two-story, red-brick museum building. It was in this structure where Mitchell spent nine years writing her novel by tapping out the manuscript on a second-hand Remington typewriter.

When asked about the "glaring stereotypes in her novel, the lawyers said that these proceeded from Mitchell's childhood in the South, which became the setting of her novel.

On its May 25 hearing of the case, the 11th Circuit Court of Appeals in Atlanta lifted the injunction placed by the U.S. District Court, which banned the publication of Randall's novel, "The Wind Done Gone" by Houghton Mifflin Company.

Houghton Mifflin Company Executive Vice President for the Trade and Reference Division Wendy Strothman, called that day's court decision "an absolute victory for both the First Amendment and the Fair Use Doctrine of the Copyright Act." She saw these laws as both crucial to American culture and freedom of expression, and expressed her company's gratitude for the speed by which the Court acted on the issue, which would benefit "prominent authors, corporations, media companies and First Amendment advocates" of Randall's "parody."

Houghton Mifflin planned to continue with the publication of the book, the author's first. The first printing would run 25,000 copies and estimated to be in bookstores in two to three weeks' time.