St. John's Law Review Volume 73 Number 4 Volume 73, Fall 1999, Number 4 Article 10 Copyright Infringement: Producers of Seinfeld Overcome Publisher's Fair Use Defense Using the Show's Strongest Weapon--Nothing: Castle Rock Entertainment, Inc. v. Carol Publishing Group, Inc. Shiri Rosental Follow this and additional works at: https://scholarship.law.stjohns.edu/lawreview This Comment is brought to you for free and open access by the Journals at St. John's Law Scholarship Repository. It has been accepted for inclusion in St. John's Law Review by an authorized editor of St. John's Law Scholarship Repository. For more information, please contact [email protected]. COMMENT COPYRIGHT INFRINGEMENT: PRODUCERS OF SEINFELD OVERCOME PUBLISHER'S FAIR USE DEFENSE USING THE SHOW'S STRONGEST WEAPON-NOTHING: CASTLE ROCK ENTERTAINMENT, INC. V. CAROL PUBLISHING GROUP, INC. The Constitution grants Congress the power "[t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries."' In line with these goals, the Copyright Act of 19762 grants copyright owners many exclusive rights, including the right to reproduce work, the right to prepare derivative works, and the right to distribute copies of the work.3 Unauthorized copying by another may constitute 1 U.S. CONST. art I, § 8, cl. 8. The underlying policy is that potential progress will be maximized if individuals are given sufficient incentive to make their work accessible to the public. See Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539, 558 (1985) (citing Mazer v. Stein, 347 U.S. 201, 209 (1954)). The protection individuals receive is limited to allow, and even encourage, the public to make further use of individuals' contributions. Thus, financial benefit to the creator is incidental rather than central to the doctrine. See Twentieth Century Music Corp. v. Aiken, 422 U.S. 151, 156 (1975) (discussing the balance between the economic incentive to the author and the need to promote availability of copyrighted materials to the public). Copyright limitations are necessary to further public interest but should not be so burdensome that they deprive authors of a fair share of the revenue generated by their works. See Stewart v. Abend, 495 U.S. 207, 229 (1990) (quoting REGISTER OF COPYRIGHTS, COPYRIGHT LAW REVISION, 87th CONG., 1st SESS., 6 (Comm. Print 1961)). Although protection is for a limited time, nothing prevents the author from hoarding his rights during that time. See Stewart, 495 U.S. at 228-29. The Supreme Court has held that a copyright holder can arbitrarily refuse to license a work. See Fox Film Corp. v. Doyal, 286 U.S. 123, 127 (1932). 2 See 17 U.S.C. §§ 101-803 (1976). 3 See 17 U.S.C. § 106 (1994). Section 106 provides in part: Subject to sections 107 through 120, the owner of copyright under this title has the exclusive rights to do and to authorize any of the following. 1239 1240 ST. JOHN'S LAW REVIEW [73:1239 infringement upon the rights of a valid copyright owner.4 This is not the case if the copied material is an idea 5 or fact 6 rather than (1) to reproduce the copyrighted work in copies or phonorecords; (2) to prepare derivative works upon the copyrighted work; (3) 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; .... Id. § 106. A derivative work is defined as one: based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, ficitionalization, motion picture version, sound recording, art reproduction, abridgement, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship, is a "derivative work." 17 U.S.C. § 101 (1994). 4 See Repp v. Webber, 132 F.3d 882, 889 (2d Cir. 1997), cert. denied, 119 S. Ct. 52 (1998); Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991). A plaintiffmust show both ownership of a valid copyright and unauthorized copying by the defendant. See Laureyssens v. Idea Group, Inc., 964 F.2d 131, 139 (2d Cir. 1992) (citing Rogers v. Koons, 960 F.2d 301, 306 (2d Cir. 1992)); Folio Impressions, Inc. v. Byer Cal., 937 F.2d 759, 763 (2d Cir. 1991); Weissmann v. Freeman, 868 F.2d 1313, 1320 (2d Cir. 1989)). The two issues to be proven by the plaintiff for a prima facie case of copyright infringement are actual copying and improper or unlawful appropriation. See FeistPublications, 499 U.S. at 361. 5 "In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work." 17 U.S.C. § 102(b). Copyright law does not protect ideas, although the way they are expressed may be protected. See Craft v. Kobler, 667 F. Supp. 120, 123 (S.D.N.Y. 1987). Direct quotation or copying of a copyrighted work is infringement unless justification is shown. See 17 U.S.C. § 106. Protected writing is also infringed by close paraphrase. See Salinger v. Random House, Inc., 811 F.2d 90, 97 (2d Cir. 1987). The difference between idea and expression is not always easy to determine. See Reyher v. Children's Television Workshop, 533 F.2d 87, 91 (2d Cir. 1976). Copyright does not protect thematic concepts or scenes that necessarily follow from common plot situations. See id. These are often referred to as "scenes a faire." Id. For example, an author's story about a quarrel between a Jewish and an Irish father whose children's marriage leads to their reconciliation, was not infringed upon by a film with a common storyline. See Nichols v. Universal Pictures Corp., 45 F.2d 119 (2d Cir. 1930). 6 Facts cannot be copyrighted, but compilations of facts are within the subject matter of copyright. See Feist Publications, 499 U.S. at 344-45. There is a prerequisite of originality for copyright protection. See id. To qualify as "original" a work must be independently created by an author and must show a minimal degree of creativity. See id. Facts, in and of themselves, do not satisfy constitutionally mandated originality requirement of copyright. See id. at 346-48. Facts do not owe their origin to an author. See id. Factual compilations, on the other hand, may be found to have a minimal degree of originality and will then qualify for copyright 1999] CASTLE ROCK ENTERTAINMENT4 1241 an expression, or if the copied material falls within the realm of a fair use,7 such as: criticism, comment, news reporting, teaching, scholarship, or research. protection. See id. at 348. If so, the protection will only extend to original elements of the work. See id. For example, an original manner in which facts are expressed or an original format in which facts are arranged will be protected. See id. at 348-49. The underlying facts, however, may be freely exploited. See id, see also National Basketball Ass'n v. Motorola, Inc., 105 F.3d 841, 847 (2d Cir. 1997) (explaining that although a broadcast is copyrightable, the actual event, such as a basketball game, is not, because broadcasts have an author unlike the underlying events which do not). Note that there are cases in which the informational value of the facts presented cannot be separated from the expression itself. If the public interest in disseminating such facts is great, a court will probably hold that an appropriation of the facts by one other than the copyright holder is fair use. See Monster Communications v. Turner Broad. Sys., Inc., 935 F. Supp. 490, 494 (S.D.N.Y. 1996) (explaining that the protection afforded to film footage of Muhammed Ali and George Foreman training for a fight in Zaire must be balanced with the public's need for having competing biographers tell the fighters' stories). For a case in which the type of informational content weighed heavily against the copyright holder, see Time Inc. v. Bernard Geis Assocs., 293 F. Supp. 130 (S.D.N.Y. 1968), where defendant's unauthorized usage of the Zapruder film of the Kennedy assassination was found to be fair use, largely due to public interest. See Arica Inst., Inc. v. Palmer, 970 F.2d 1067 (2d Cir. 1992) (determining that ego fixations cannot be copyrighted, because they are a factual discovery rather than a philosophical creation); see also New Era Publications Int'l v. Carol Publ'g Group, 904 F.2d 152 (2d Cir. 1990) (dealing with publication of L. Ron Hubbard's writing on The Church of Scientology). 7 See Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539, 547 (1985) (explaining that copyright owner's rights exclude facts and ideas, and fair use). Note that another possible defense to copyright infringement is that the use of the copied material was de miniris. If this defense is applicable it should be made prior to a fair use defense. If the court finds that the copying was de minimis, no cause of action will lie for copyright infringement and there will be no need to reach the issue of fair use. See Sandoval v. New Line Cinema Corp., 147 F.3d 215 (2d Cir. 1998) (affirming district court's holding that defendant's use of plaintiff's photographs was de minimis, but stating it was error to resolve a fair use claim without first determining whether the infringement was de minimis); Ringgold v.