The First Amendment's relationship with the Fair Use Doctrine

In SunTrust Bank v Houghton Mifflin Co. 268 F3d 1257, 60 USPQ2d 1225, 14 FLW Fed C 1391 (2001, 11th Cir.), rehearing denied en ban, 275 F3d 58 (11th Cir. 2001), the owners of the copyright to Gone With the Wind sued the publisher that owned the rights to The Wind Done Gone, a critique of the depiction of slavery and the Civil-War era American South and that used and drew upon the characters and story line from Gone with the Wind. The district court found the newer book infringed on the copyright of decedent's book, that irreparable injury could be presumed, and granted a preliminary injunction. On appeal, the publisher argued that there was no substantial similarity between the two works or, in the alternative, that the doctrine of fair use, 17 U.S.C.S. § 107, protected the newer book because it was primarily a parody. The 11th Circuit found that the newer book was clearly a parody, a specific criticism of and rejoinder to the decedent's book, that it provided social benefit by shedding light on the earlier work. Although fair use was an affirmative defense, the trustee had the burden of proof to obtain injunctive relief. It was also apparent that there would be little risk of market substitution, as the works were unlikely to be confused. In vacating the preliminary injunction against publication of The Wind Gone Wrong, the 11th Circuit stated that

the court held First Amendment privileges are also preserved through the doctrine of fair use. Until codification of the fair-use doctrine in the 1976 Act, fair use was a 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." Section 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 any use of a copyright is permitted to fulfill 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 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.").

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 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.

Sun Trust, 268 F.3d at 1264-65