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Penguin Random House LLC v. Frederick Colting d/b/a Moppet Books

District court finds that child-focused literary guides infringed copyrights in four famous novels and that literary guides did not qualify as fair use, granting summary judgment in favor of owners and exclusive licensees of copyrights in novels.

Copyright owners and exclusive licensees of the renowned novels Breakfast at Tiffany’s, The Old Man and the Sea, On the Road and 2001: A Space Odyssey sued Frederick Colting and Melissa Medina (d/b/a Moppet Books) over their publication of a series of children’s books, called “Kinderguides,” which contained — according to defendants — “condensed” and “simplified” versions of these popular classic novels. Plaintiffs claimed defendants’ “guides” infringed both their right of reproduction and their right to create derivative works in the four novels.

Plaintiffs moved for summary judgment on the issue of liability and on willfulness, and defendants cross-moved on the issue of liability and the defense of fair use. The court issued a “bottom line” order on July 28, 2017, in favor of plaintiffs on the liability issue but allowed defendants to engage in additional discovery on the issue of willfulness, leading plaintiffs to withdraw their motion for summary judgment on that issue. This September 8, 2017, decision provided an explanation for the court’s earlier order.

The court found that the relevant facts were largely undisputed. Plaintiffs owned valid copyrights in the four novels. Defendants’ “Kinderguides” leaned heavily on the original works, as the guides — which all were the same format — prominently displayed the name of the referenced novel, along with the word “Kinderguide” in large print on the covers, and contained a few dozen pages of “story summaries” in addition to a few pages of story and character analysis and quiz questions. Defendants also admitted that they had access to and relied upon plaintiffs’ works in preparing the guides. The parties also agreed that an established market exists for children’s books based on popular adult novels and that many authors license publication of children’s versions of works originally published for adults, although the parties disputed whether plaintiffs had licensed adaptations of their novels as children’s books.

The court first held that the guides infringed plaintiffs’ rights of reproduction as well as their right to exploit the market for derivative works based on their novels. After discussing various tests available for assessing whether two works were substantially similar, the court found that none of the tests were necessary in light of the fact that defendants explicitly based their guides on plaintiffs’ novels. The court rejected as an “exercise in sophistry” defendants’ argument that they had copied only unprotectable “fictional facts,” i.e., the characters and storylines within the novels. In doing so, the court observed that the Copyright Act’s protections were not limited to the literal text contained in the novels but extended to the “made-up facts” about characters and events therein. The “facts” that defendants copied were creative, and thus protectable, expression under the law.

The court also rejected defendants’ argument that the characters in plaintiffs’ novels were unprotectable, finding that the characters at issue were sufficiently delineated so as to be original, and thus subject to protection. The fact that defendants had copied not just the stock aspect of these characters but also their distinctive features further undermined defendants’ argument. Defendants’ argument that the events described in the novels were unprotectable scenes a faire was similarly rejected as “absurd.” The court noted that it was not necessary for a defendant to create the same “feel” or effect as the original novel or to include every plot twist or character in order to be infringing, citing a number of cases where unauthorized “guides” to movies and popular television shows were held to infringe on the original work.

Turning to plaintiffs’ claim that the guides infringed their right to create derivative works, the court identified the question of whether the guides changed the copyrighted material in such a way that the guide no longer represents the original work of authorship. A subsequent work that merely recasts the original in a different medium is a derivative work. Given that the majority of the guides were dedicated to retelling the stories contained in the novels but in a child-friendly format, the court held that defendants’ addition of a few brief pages of analysis, quiz material and author information did not change the purpose of the material and that the guides were, as a matter of law, unauthorized derivative works.

Second, the court rejected defendants’ arguments that the guides constituted fair use of the novels. After observing that fair use does not protect the right of others to produce works that the original authors might choose to produce themselves, and that Congress granted to copyright holders and authors the exclusive right to produce and license derivative works, the court cast the question as whether defendants’ children’s guides more closely approximated the kind of use reserved by Congress to copyright holders or the sort of use Congress intended to allow others to exploit, i.e., criticism or parody.

Defendants’ argument that their abridgement of the stories, removal of adult themes and addition of brief analysis were sufficiently transformative did not sway the court on the first fair-use factor, the purpose and character of the use. Rather, the court noted that abridgements were typically considered derivative works. Nor did defendants’ adaptations of the novels for a younger audience add any “new insights or understandings” to make them sufficiently transformative. The court likewise rejected defendants’ argument that the guides could qualify as educational criticism or commentary, given their lack of novel or original insight. The mere addition of a few pages of quiz questions and analysis would not provide a “safe harbor” for an otherwise infringing work, as the inclusion of copyrighted material (i.e., the extensive story summaries) was not for the purpose of commentary or criticism. As the court succinctly put it, “Fair use is not a jacket to be worn over an otherwise infringing outfit.”

In continuing its fair-use analysis, the court observed that the copyrighted works at issue here — fictional novels — are entitled to strong protection under the Copyright Act. Further, the third factor, the amount and substantiality of the portion of the copyrighted work used, likewise tilted in plaintiffs’ favor, given that nearly all defendants’ guides were devoted to retelling plaintiffs’ copyrighted stories. As to the fourth factor, the effect of the use upon the potential market for plaintiffs’ work, it was undisputed that a market exists for child adaptations of literary works, and the mere fact that plaintiffs had chosen not to market such adaptations did not affect the fair-use analysis. “Congress did not provide a use-it-or-lose-it mechanism for copyright protection,” the court explained.

Finally, the court rejected defendants’ argument that given plaintiffs’ failure to license any similar derivative works, the application of copyright protection served only to stifle the creation of new works that reference plaintiffs’ novels. The court declined defendants’ invitation to apply one standard when plaintiff has licensed derivative works and another when they have not done so, because the Copyright Act grants the same bundle of rights to copyright holders regardless of whether they have exploited those rights.

Summary prepared by Tal Dickstein and Erin Smith Dennis

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