Literary Copyright Cases Writers and Publishers Should Know

by Isabella Hyun

Humans have always told stories in the literary and written forms—a time-honored tradition spanning over millennia. Whether conveyed in the form of books, plays, manuscripts, or news publications, these works and the authors and publishers that make them possible are an integral part of the creative community and of society at large.

Over the years, the subject matter of these stories and the mediums in which they are expressed have evolved. Simultaneously, so too have the copyright protections afforded to them and their respective creators through important literary copyright cases and the U.S. Copyright Act.

This blog reviews a few of the most significant doctrines and court cases for writers and publishers to know in copyright law by looking at some of the seminal literary copyright cases that have influenced legal protection for written works.

**Examining Copyrightable Elements in a Literary Work: Nichols v. Universal Pictures Corp.**

One of the most basic questions to first answer when discussing copyright protection for literary works is: What is copyrightable? This question was analyzed in the 1930 literary copyright case Nichols v. Universal Pictures Corp. In Nichols, a playwright wrote a comedic play about a Jewish family and an Irish Catholic family whose fathers attempted to prevent their children from marrying. Universal Pictures later produced a comedy film, in which the fathers from a Jewish family and an Irish Catholic family attempt to prevent their children from marrying. The playwright subsequently sued Universal Pictures for copyright infringement of her work.

The Second Circuit ultimately found that there was no copyright infringement because the movie did not take any copyrightable elements from the play. Importantly, the court first declared that copyright protection “cannot be limited literally to the text,” because someone who steals the work would then be able to escape liability by simply making minor edits, or “immaterial violations” to the work. Therefore, the question at hand was whether there was enough “substantial similarity” between the two works to show that unauthorized copying occurred.

The court found that there was not enough similarity between the two works beyond the similar themes, concluding that both the general plot idea and the characters of a Jew and an Irishman were far too generalized to warrant protection. As Judge Hand wrote, “A comedy based upon conflicts between Irish and Jews, into which the marriage of their children enters, is no more susceptible of copyright than the outline of Romeo and Juliet.”

Additionally, the stories were found to be quite different, for example with religion being a driving force in one work yet completely absent in the other. While the movie and the play did contain the same four characters of the lovers and the fathers, the characters had very differing personality traits between the two works. For example, one Jewish father was described as “affectionate, warm and patriarchal,” whereas the other Jewish father was “tricky, ostentatious, and vulgar.” Similarly, one Irish father was deemed a symbol for religious fanaticism yet the other was found a “grotesque hobbledehoy.” Therefore, while the overarching matters of the works were similar, the storyline and characters were not.

Thus, while copyright protection is not limited to the precise text of a literary work, the presence of mere similar ideas and themes in literary plots are not considered protectable elements, nor are the existence of “stock” characters without more detailed characteristics and traits.

Establishing Joint Authorship: Thomson v. Larson

Many creative works are the result of collaborative undertakings and exchanges between people, rather than the result of one creator acting alone. This principle eventually led to the development of the doctrine ofjoint authorship, which defines a joint work as a work that is “prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole.” Over the years, courts have established standards to determine whether a contributor to a work is considered a joint author. An illustration of these factors can be seen in the 1998 literary copyright case Thomson v. Larson.

In Thomson, a dramaturg, Lynn Thomson, sued the estate of a playwright, Jonathan Larson, for edits she had contributed to his award-winning Broadway musical Rent. In 1995, the plaintiff was hired by the overseeing theater company to help Larson clarify the storyline of the script, and she intensively worked on it with him in his apartment for months. After Larson died, Thomson sought compensation as a joint author of the work.

In its opinion, the Second Circuit looked to a test set out in the 1991 case Childress v. Taylor regarding mutual intent. Whereas the text of the Copyright Act states only that co-authors must intend that their contributions be merged into a unitary whole, Childress set forth a more nuanced inquiry of intent, looking to the “factual indicia of ownership and authorship, such as how a collaborator regarded herself in relation to the work in terms of billing and credit, decisionmaking, and the right to enter into contracts.”

Applying the Childress mutual intent standard in Thomson, the court ultimately held that the plaintiff had failed to establish that Larson had ever intended a co-authorship relationship with her because (1) Larson had sole decision-making authority over the script and final approval over all changes to Rent; (2) Larson credited the plaintiff on the script as “dramaturg” rather then as an author; and (3) because Larson listed himself as the sole author in all his contracts regarding Rent. Additionally, Larson had “absolutely, vehemently and totally” rejected previous suggestions to hire a bookwriter. He had also been recorded as wanting to make Rent “entirely his own project,” evidenced by his written agreement with a previous collaborator, Aronson, that Aronson would “not … be considered an active collaborator or co-author of Rent.”

In therefore determining whether someone is a joint author of work, courts look to the factual circumstances surrounding ownership and authorship to determine whether mutual intent of co-authorship existed, including factors such as overall decisionmaking abilities, billing and crediting, and contractual agreements.

Explaining the First Sale Exception: Kirtsaeng v. John Wiley & Sons

One of the exclusive rights that copyright owners have in their works is the exclusive right of distribution. Under § 106 of the Copyright Act, copyright owners have the right to “distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending.”

One of the main exceptions to the right of distribution is the first sale exception. Section 109(a) of the Copyright Act states that the “owner of a particular copy or phonorecord lawfully made under this title, or any person authorized by such owner, is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy or phonorecord.” In other words, if a copyright owner sells a copy of their work, the first sale exception allows the buyer of that copy to then redistribute or sell that particular copy. For example, if you buy a physical copy of a book and then give it away to one of your friends, that would not be considered an infringing distribution under the first sale exception.

The limits of this doctrine have been tested over the years. In a 2013 case before the Supreme Court, Kirtsaeng v. John Wiley & Sons, the Justices wrestled with the applicability of the first sale exception to copies of works that are made and sold abroad. In Kirtsaeng, a book publisher sued an individual who had been buying the publisher’s textbooks in Thailand, flying to the United States, and then reselling the books for lower prices than the prices at which the American editions were sold. The textbooks he bought were authorized by the book publisher to only be sold in Asia, Africa, Europe, and the Middle East—not in the United States. The Second Circuit concluded that the phrase “lawfully made under this title” meant that the first sale exception did not apply to copies of works made abroad, and Kirtsaeng appealed the decision to the Supreme Court.

In its opinion, the Supreme Court held that the individual’s resale of the textbooks was permissible under the first sale exception. Specifically, the Court clarified that the meaning of the phrase “lawfully made under this title” did not have a geographical limitation, but instead referred to any copy lawfully made under the Copyright Act. Even though the textbooks in this case were manufactured outside the United States, the books were legally produced and sold in the country where Kirtsaeng bought them. As a result, the Court found that under the first sale doctrine, the subsequent resales of the books at lower prices in the United States did not infringe the publisher’s exclusive distribution rights.

This decision ultimately expanded the first sale doctrine by extending its applicability to works manufactured and published outside the United States, eliminating any geographical boundaries surrounding its jurisdictional reach.

Determining Fair Use

One of the most important exceptions in copyright law is the fair use exception. In general, this exception permits the use of a copyrighted work for certain purposes such as news reporting, criticism, parody, scholarship, and research, despite lack of authorization or permission from the copyright owner.

One of the first literary copyright cases to outline the principles of fair use was Folsom v. Marsh in 1841, which concerned the copying of writings by President George Washington for a biography. In Folsom, famed Justice Joseph Story laid the groundwork for the rise of a fair use jurisprudence, declaring that “we must often, in deciding questions of this sort, look to the nature and objects of the selections made, the quantity and value of the materials used, and the degree in which the use may prejudice the sale, or diminish the profits, or supersede the objects, of the original work.” One hundred thirty-five years later, these principles were codified in § 107 of the Copyright Act.

Today, in determining whether the use of a work qualifies for the fair use exception, § 107 outlines four factors, all of which a court must consider and balance when making a fair use determination: (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work. In addition, one test that has become a key consideration in recent fair use cases is whether the use’s purpose is “transformative” under the first fair use factor. This transformative test and each of the fair use factors have since been clarified or explained further in a multitude of literary copyright cases.

Harper & Row v. Nation Enterprises (1985): In this case, The Nation Magazine (“The Nation”) published copyrighted material from unpublished memoirs of President Ford, of which the magazine had obtained an unauthorized manuscript copy. Harper & Row Publishers (“Harper”) owned the right to publish the memoirs. After The Nation published the excerpts, Harper lost out on a licensing deal with Time Magazine, which had originally paid Harper to publish some excerpts from the memoir. The Supreme Court found that The Nation’s reproduction of the unpublished copyrighted material did not qualify for the fair use exception. Importantly, under the third factor, the stolen excerpts were found by the Court to be qualitatively substantial material representing the “heart of the book,” which weighed against a fair use finding. This principle is significant because the Court established that the third factor is not just a narrow, quantitative analysis of the amount of the underlying work used—in this case, 300 to 400 words out of the 2,250 word article were stolen—but rather that it also refers to how qualitatively important the material is.

Suntrust Bank v. Houghton Mifflin (2001): In this literary copyright case, Houghton Mifflin published a book called The Wind Done Gone, intended as a parody of the 1936 novel Gone With The Wind. The Wind Done Gone critiqued the original novel’s romantic depiction of slavery and the American South during the Civil War, which it accomplished via the appropriation of core characters, plots, and famous scenes. Suntrust Bank, the trustee of Gone With The Wind’s author and owner of the book’s copyrights, brought suit against Houghton Mifflin for infringement. The Eleventh Circuit ultimately found that the use of Gone With The Wind qualified for the fair use exception, despite the new book’s commercial nature. Most of the court’s analysis circled back to the parodic nature of The Wind Done Gone, noting that its principal use “rebut[ted] and destroy[ed] the perspective, judgments, and mythology” of Gone With The Wind’s depiction of an idealized antebellum South, and that the author could not have specifically criticized the original book without depending heavily on the copyrighted elements. Under the first fair use factor, The Wind Done Gone was therefore considered as transformative, weighing the first factor in favor of a fair use finding, because it altered the meaning and purpose of the underlying work via its parodic content.

Authors Guild v. Google (2015): In this case, the Authors Guild sued Google for the scanning and digitizing of over twenty million books without permission or license as part of its Google Books project. Google’s product allowed users to search the scanned text of these literary works and view “snippets” of the text in the user’s search results. Under the first fair use factor, the Second Circuit found that Google’s scanning and uploading of entire books for text-searching purposes was “highly transformative” compared to the purpose of the original books because Google’s purpose was to convey information about the books, not to convey the books themselves. Additionally, the court held that there was not enough “amount and substantiality” of the original text used in the project because Google limited the amount of text that it displayed to users, and because the public could not access the complete digitized copies. Notably, the court also found that the limited text made available by Google did not provide a significant market substitute for the underlying works, as the use “augment[ed] public knowledge by making available information about [p]laintiffs’ books without providing the public with a substantial substitute for matter protected.” Therefore, the fourth factor also weighed in favor of a fair use finding.

Dr. Seuss Enterprises v. ComicMix (2020): In this case, Dr. Seuss Enterprises, which owned the copyrights to the book Oh, the Places You’ll Go! (“Go!”), sued ComicMix for their book entitled Oh, the Places You’ll Boldly Go! (“Boldly”). Boldly was a mash-up of Go! and the science fiction enterprise Star Trek and used many of Go!’s visual and textual elements to mimic its style. The Ninth Circuit found that Boldly was not a parody because it did not critique or comment on the original work, but rather directly imitated Go!’s style and purpose. Therefore, Boldly was not a transformative use because it did not alter the meaning or message of the original work, which weighed against a finding of fair use under the first factor. Additionally, under the fourth factor, the two works targeted the same actual and potential market of graduating students, so Boldly negatively impacted Go!’s market for derivative works. As a result, the court found Boldly did not qualify for the fair use exception.

Controlled Digital Lending as Fair Use? Hachette v. Internet Archive

As seen in the cases above, the limits of how far the doctrine of fair use should stretch continue to be tested and debated. The most recent literary copyright case of significance in this area is Hachette v. Internet Archive.

This case concerned the Internet Archive, a website which provides public access to millions of scanned and digitized entire copyrighted books for free without license or authorization. In 2020, four major publishing companies—HarperCollins, Penguin Random House, Wiley, and Hachette—sued the Internet Archive (“IA”) for the infringement of tens of thousands of books on its website to which they owned the copyrights. In response, IA declared that their website issued books to the public under a program they referred to as Controlled Digital Lending (“CDL”), under which people can “check out” digital copies of books for up to two weeks, which they argued was transformative and therefore excepted under the fair use doctrine.

In his opinion, Judge Koeltl of the Southern District of New York found that IA’s actions did not qualify for the fair use exception. The judge soundly rejected IA’s arguments under the first factor, stating that there was “nothing transformative about IA’s copying and unauthorized lending of the Works in Suit … IA simply scans the Works in Suit to become e-books and lends them to users [for] free.” Additionally, the court found that IA’s unlicensed scans directly impacted the thriving market for lawfully licensed and authorized e-books, which also weighed against a finding of fair use under the fourth factor.

In siding with the publishers, Judge Koeltl avoided any negative effects that the case would have had on the legal scope of copyright protections for publishers and authors. However, IA has indicated they will appeal the decision. Future courts can look to Judge Koeltl’s opinion to affirm that IA’s fair use arguments are completely unsupported by existing copyright case law, as the Copyright Alliance also argued in its amicus brief in support of the publishers.

Conclusion

We hope the few literary copyright cases reviewed in this blog is helpful for writers and publishers in learning about some of the most important legal principles and court cases surrounding the protection of literary works in copyright law. Doctrines such as substantial similarity, joint authorship, first sale, and fair use all make up part of the robust ecosystem of protection for the creative expression of writers. As seen in Hachette, these principles will continue to be challenged and developed as courts adapt to the advancement of technology and its implications for copyrighted works, but courts can reach the right decisions by upholding copyright laws that protect and incentivize both creators and the creation of new works for the public good.

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