Judge Sotomayor on the 'fact/expression dichotomy' and fair use: good news for copyright owners

Thanks to THR, Esq., I am reminded that Judge Sonia Sotomayor wrote at least one significant copyright opinion while on the District Court [UPDATE: in addition to Tasini]. And, while we shouldn't draw too many conclusions from just one decision, after re-reading her opinion in Castle Rock Entertainment v. Carol Publishing Group, Inc., 955 F.Supp. 260, 274 (S.D.N.Y.1997), aff'd, 150 F.3d 152 (2d. Cir. 1998). I think it's fair to say that copyright owners should have nothing to fear from, and should probably be quite pleased with, President Obama's pick. Let's take a closer look.

The case involved The Seinfeld Aptitude Test ("SAT"), a trivia book consisting of 643 trivia questions testing readers' knowledge of the events and characters depicted in the TV show Seinfeld. SAT's publisher, Carol, never got permission from Castle Rock, which owns the copyright in the show. Castle Rock sued for copyright infringement and related Lanham Act/unfair competition claims. Judge Sotomayor's opinion addressed the parties' cross motions for summary judgment on the copyright and unfair competition claims, which she said "raise a variety of difficult and interesting questions concerning the proper scope of copyright protection as it extends to popular television programming."

Judge Sotomayor first addressed the threshhold issue of whether Carol copied protected expression. Carol argued that it only copied "uncopyrightable facts about the Seinfeld show." But Judge Sotomayor rejected that theory, I think correctly:

SAT does not pose "factual" questions about the Seinfeld show; it does not ask who acts in the program, who directs or produces the show, how many seasons it has run, etc. Instead, SAT poses questions about the events depicted during episodes of the Seinfeld show. The facts depicted in a Seinfeld episode, however, are quite unlike the facts depicted in a biography, historical text, or compilation. Seinfeld is fiction; both the “facts” in the various Seinfeld episodes, and the expression of those facts, are plaintiffs creation. Thus, while defendants' book does not report plot developments and digest programs, as in Twin Peaks, SAT is devoted to questions concerning creative components of Seinfeld. In other words, by copying "facts" that plaintiff invented, SAT "appropriate[s] [plaintiffs] original contributions."

Next, Judge Sotomayor found willfulness in Carol's infringement:

The parties have not briefed the question of damages, and the Court is hesitant to make a finding of willfulness outside the context of the damages question which it implicates. Nevertheless, the record provides clear evidence, at a minimum, of defendants' reckless disregard for the possibility that their conduct amounted to copyright infringement. See Twin Peaks, 996 F.2d at 1382. First, defendants were on notice that Seinfeld is a protected work: each televised episode commences with a copyright notice.... Also, all the defendants are sophisticated with respect to such matters. Defendant Golub is an attorney. Mr. Shragis, Carol's publisher, testified that his company has had experience with the copyright laws, and that he is familiar with the requirements of those laws.... Finally, Carol continued to publish and distribute SAT after receiving actual notice from plaintiff demanding that Carol cease and desist publication.... In other words, defendants continued in their infringement even “after receiving a specific warning.” See Twin Peaks, 996 F.2d at 1382.

Judge Sotomayor next conducted a thorough and sophisticated fair use analysis. On the first factor, she found that SAT was transformative -- but that that was not the end of the story. Judge Sotomayor smartly explained that a work can be "transformative," but still be an infringing derivative work:

The Court's finding that SAT is a transformative work, though important, is not dispositive in defendant's favor. Indeed, it is a basic axiom of copyright law that the unauthorized production of derivative works can give rise to a successful claim of infringement. See 1 Nimmer § 3.06, at 3-34.4; see also Rogers v. Koons, 751 F.Supp. 474 (S.D.N.Y.1990) (rejecting fair use claim raised by defendant charged with unauthorized creation of a derivative work), aff'd 960 F.2d 301 (2d Cir.), cert. denied, 506 U.S. 934 (1992). And a derivative work, by definition, transforms an original. See17 U.S.C. § 101 (defining a “derivative work” as one which is “based upon,” but which “recast[s], transform [s], or adapt[s],” an original); see also Durham Industries, Inc. v. Tomy Corp., 630 F.2d 905 (2d Cir.1980) (explaining that in order to be classified as a derivative, a work must contain some “substantial, not merely trivial, originality”). Thus, to hold that the transformative nature of a work automatically shields it from a successful claim would be to reject an unassailable proposition-i.e., that the unauthorized production of a derivative can support a claim for infringement. The question of whether a work is transformative must therefore be most decisive when answered in the negative. If a work is not transformative, “fair use should perhaps be rejected without further inquiry into the other factors.” Pierre N. Leval, Toward a Fair Use Standard, 103 Harv.L.Rev. 1105, 1116 (1990). Where, as here, a work is transformative, the crux of the fair use analysis remains: the Court must proceed with a careful consideration of the remaining three factors, while merely granting defendants an advantage at the outset.

(footnote omitted).

On the second factor, she easily found that the work was fictional, and on the third, that although the SAT took a relatively small quantitative portion of Seinfeld, it "appropriates essential elements of Seinfeld," thus supporting a finding for the plaintiff on that factor.

On the fourth factor, Judge Sotomayor correctly honed in on the proper inquiry:

[T]he Court must consider not only whether SAT detracts from interest in Seinfeld, or even whether SAT occupies markets that plaintiff intends to enter; the analysis is whether SAT occupies derivative markets that plaintiff may potentially enter.

And she determined that the market for trivia books about Seinfeld is properly the exclusive domain of Seinfeld's copyright owner -- even though it had not (at least not yet) actually produced or licensed any such books:

In a manner of speaking, plaintiff has exercised its control over derivative markets for Seinfeld products, if only by its decision to refrain from inundating those markets. Indeed, artists express themselves not merely by deciding what to create from their original work, but by deciding what not to create as well. Cf. Harper & Row, 471 U.S. at 559 (“freedom of thought and expression ‘includes both the right to speak freely and the right to refrain from speaking at all.’ ”) (citations omitted). It would therefor not serve the ends of the Copyright Act-i.e., to advance the arts-if artists were denied their monopoly over derivative versions of their creative works merely because they made the artistic decision not to saturate those markets with variations of their original. Where nothing in the nature of criticism or parody is at issue, this creative choice must be respected.

Summing it all up, Judge Sotomayor concluded:

Though there are numerous competing considerations which make this decision a difficult one, the Court is persuaded that, on balance, SAT does not represent a fair use of Seinfeld. Only one of the four statutory factors favors defendant, and then, only by a generous understanding of what it means for a work to be “transformative.” Plaintiff prevails with respect to each of the remaining three factors: Seinfeld is a work of fiction, and such works are accorded special status in copyright law; SAT draws upon “essential” elements of Seinfeld, and it draws upon little else; and, most importantly, SAT occupies a market for derivatives which plaintiff-whatever it decides-must properly be left to control. In short, SAT does not make fair use of Seinfeld, and plaintiff must accordingly be granted summary judgment on its claim of copyright infringement. See Wright, 953 F.2d at 740 (“a party need not ‘shut-out’ her opponent on the four factor tally to prevail.”).

On appeal, the Second Circuit affirmed -- though it disagreed with Judge Sotomayor's conclusion that SAT was indeed "transformative."

All in all, Judge Sotomayor's Castle Rock opinion is very solid, and demonstrates a deep understanding of copyright. She may be on the left politically, but nothing in this opinion suggests she is on the copyleft.