Children Book Versions of Classic Novels Not Fair Use

In July 2017, Southern District Judge Jed Rakoff granted summary judgment to the plaintiffs on all nine of the infringement counts, while ruling against the defendants on fair use. But Judge Rakoff permitted the defendants to raise an advice of counsel defense as to willfulness, taking into account statements made by defense counsel in court. That left the willfulness issue to be determined at trial scheduled for this month.

In September 2017, District Judge Rakoff issued his written ruling on his July order.

The defendants claimed their guides were intended to “introduce” the novels to children “through colorfully illustrated story summaries and kid-friendly analyses.” But the district court noted the KinderGuides weren't “even superficially distinct from the respective novels. Instead, they are explicitly based on plaintiffs' Novels.”

But the defendants argued that the characters, plots and settings in the underlying the novels were not protectable by copyright but “a collection of made-up facts.” The district court, however, distinguished historical facts from those events and characters created by an author that become “fictitious expression,” noting: “This exercise in sophistry, however, which confuses the difference between historical or independently-existing facts and fictional details created by a novelist, finds no support in applicable law.”

The defendants argued further that the characters in the novels were “stock characters” that did not warrant copyright protection. Judge Rakoff disagreed, finding the characters to be sufficiently delineated and that the defendants copied their distinctive qualities. Finally, the defendants argued that the plots of the novels were comprised of incidents, characters or settings that were indispensable or standard fare in novel writing. The court found the defendants' theory “absurd.” “By any reasonable comparison,” Judge Rakoff wrote, “defendants' Guides copy substantial aspects of the themes, characters, plots, sequencing, pace, and settings of plaintiffs' Novels. Indeed, that is their stated purpose.”

Judge Rakoff then formally addressed whether the KinderGuides were “derivative works” of the original novels. The district judge noted that in the case at hand, “The issue turns on whether the guide changes the copyrighted material in such a way that the guide no longer represents the original 'work of authorship.'”

Judge Rakoff relied on the decision in Warner Bros. Entertainment Inc. v. RDR Books, 575 F. Supp. 2d 513 (S.D.N.Y. 2008), where the Southern District ruled that an A-to-Z reference guide based on the world of Harry Potter was not a derivative work because it did not merely retell the original Harry Potter stories. In the case of the KinderGuides, Judge Rakoff found that aside from a two pages of analysis, some quiz questions and author information, the guides essentially told the plaintiffs' tales. Therefore, the KinderGuides were derivative works.

As to the fair use defense, in considering the purpose and character of the KinderGuides, Judge Rakoff observed that abridgements are generally considered to be derivative works not permitted by fair use. Removing the adult themes and adding educational pages were not “transformative” because they added no new insights into the novels. In open court, Judge Rakoff noted, the defendants' counsel had stated that his client “went to great lengths” to achieve fair use protection. Counsel said that “the very fact that we have these [educational] sections in the book” was “to make these books fair use.” The district judge emphasized, however, that such an approach to fair use was misguided, warning that “one cannot add a bit of commentary to convert an unauthorized derivative work into a protectable publication.”

On the effect that the defendants' guides could have on the potential market for the underlying novels, the defendants emphasized that the plaintiffs had never licensed their novels for children. Judge Rakoff responded, “It suffices, as a matter of law, that plaintiffs might change their minds.”

The defendants also argued the fact that the plaintiffs were heirs, trusts and estates of the original authors, rather than the authors themselves, should favor a fair use finding. The defendants claimed the plaintiffs explicitly sought to stifle the creation of new works, that the plaintiffs' “sole interest” was “to prevent the creation of wholly new works that reference their own.” Unmoved, Judge Rakoff observed that because a copyright owner has chosen not to exploit certain rights does not mean that others can exploit them: “Congress did not provide a use-it-or-lose it mechanism for copyright protection.”

Under the facts in Penguin Random House, the defendants were in a weak position to advance a fair use defense and should have settled the dispute out of court. Their assertion that they “went to great lengths” to assure that their guides would not infringe seems contrived and hollow. As Judge Rakoff remarked, fair use “is not a jacket to be worn over an otherwise infringing outfit.”

In response to a comment request, the Penguin Random House and Simon & Schuster legal departments jointly responded about the fair use claim: “The assertion was not supported by the facts: the supplemental sections were incidental to the retelling of these famous stories and amounted to nothing more than window dressing. It was a fairly obvious masquerade.”

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Vincent Peppe is an attorney based in Nashville, TN, and an Entertainment and Music Business faculty member at Belmont University. Email: [email protected].

In 2016, Frederik Colting and Melisa Medina planned to launch a series of 50 children's books, each book summarizing a great novel. They began by publishing versions of Truman Capote's Breakfast at Tiffany's, Ernest Hemingway's The Old Man and the Sea, Jack Kerouac's On the Road and Arthur C. Clarke's 2001: A Space Odyssey. They called their colorfully illustrated summaries KinderGuides. The front covers of the books prominently displayed the titles of the novels, the names of the authors, the word KinderGuides and, in much smaller print, “Early Learning Guides to Culture Classics.”

The four guides shared the same format: featured illustrations, one-line quotations by the authors of the novels, an illustration of the underlying novel's author, and “Story Summary,” “Main Characters,” “Key Words,” “Quiz Questions” and “Analysis” sections. In January 2017, the owners of the copyrights to the novels filed a copyright infringement suit against Colting and Medina in the U.S. District Court for the Southern District of New York. The case is a useful tale for lawyers who advise publishers on either side of such a dispute. Penguin Random House LLC v. Colting, 17-cv-386.

The complaint alleged two counts for each of the four KinderGuides: a general infringement claim and violation of the right to make derivative works. The complaint's ninth count alleged infringement in the character of Holly Golightly from Breakfast at Tiffany's. The plaintiffs moved for summary judgment on liability and willfulness. The defendants filed their own motion for summary judgment on the issues of liability and on a fair use defense.

In July 2017, Southern District Judge Jed Rakoff granted summary judgment to the plaintiffs on all nine of the infringement counts, while ruling against the defendants on fair use. But Judge Rakoff permitted the defendants to raise an advice of counsel defense as to willfulness, taking into account statements made by defense counsel in court. That left the willfulness issue to be determined at trial scheduled for this month.

In September 2017, District Judge Rakoff issued his written ruling on his July order.

The defendants claimed their guides were intended to “introduce” the novels to children “through colorfully illustrated story summaries and kid-friendly analyses.” But the district court noted the KinderGuides weren't “even superficially distinct from the respective novels. Instead, they are explicitly based on plaintiffs' Novels.”

But the defendants argued that the characters, plots and settings in the underlying the novels were not protectable by copyright but “a collection of made-up facts.” The district court, however, distinguished historical facts from those events and characters created by an author that become “fictitious expression,” noting: “This exercise in sophistry, however, which confuses the difference between historical or independently-existing facts and fictional details created by a novelist, finds no support in applicable law.”

The defendants argued further that the characters in the novels were “stock characters” that did not warrant copyright protection. Judge Rakoff disagreed, finding the characters to be sufficiently delineated and that the defendants copied their distinctive qualities. Finally, the defendants argued that the plots of the novels were comprised of incidents, characters or settings that were indispensable or standard fare in novel writing. The court found the defendants' theory “absurd.” “By any reasonable comparison,” Judge Rakoff wrote, “defendants' Guides copy substantial aspects of the themes, characters, plots, sequencing, pace, and settings of plaintiffs' Novels. Indeed, that is their stated purpose.”

Judge Rakoff then formally addressed whether the KinderGuides were “derivative works” of the original novels. The district judge noted that in the case at hand, “The issue turns on whether the guide changes the copyrighted material in such a way that the guide no longer represents the original 'work of authorship.'”

Judge Rakoff relied on the decision in Warner Bros. Entertainment Inc. v. RDR Books , 575 F. Supp. 2d 513 (S.D.N.Y. 2008), where the Southern District ruled that an A-to-Z reference guide based on the world of Harry Potter was not a derivative work because it did not merely retell the original Harry Potter stories. In the case of the KinderGuides, Judge Rakoff found that aside from a two pages of analysis, some quiz questions and author information, the guides essentially told the plaintiffs' tales. Therefore, the KinderGuides were derivative works.

As to the fair use defense, in considering the purpose and character of the KinderGuides, Judge Rakoff observed that abridgements are generally considered to be derivative works not permitted by fair use. Removing the adult themes and adding educational pages were not “transformative” because they added no new insights into the novels. In open court, Judge Rakoff noted, the defendants' counsel had stated that his client “went to great lengths” to achieve fair use protection. Counsel said that “the very fact that we have these [educational] sections in the book” was “to make these books fair use.” The district judge emphasized, however, that such an approach to fair use was misguided, warning that “one cannot add a bit of commentary to convert an unauthorized derivative work into a protectable publication.”

On the effect that the defendants' guides could have on the potential market for the underlying novels, the defendants emphasized that the plaintiffs had never licensed their novels for children. Judge Rakoff responded, “It suffices, as a matter of law, that plaintiffs might change their minds.”

The defendants also argued the fact that the plaintiffs were heirs, trusts and estates of the original authors, rather than the authors themselves, should favor a fair use finding. The defendants claimed the plaintiffs explicitly sought to stifle the creation of new works, that the plaintiffs' “sole interest” was “to prevent the creation of wholly new works that reference their own.” Unmoved, Judge Rakoff observed that because a copyright owner has chosen not to exploit certain rights does not mean that others can exploit them: “Congress did not provide a use-it-or-lose it mechanism for copyright protection.”

Under the facts in Penguin Random House, the defendants were in a weak position to advance a fair use defense and should have settled the dispute out of court. Their assertion that they “went to great lengths” to assure that their guides would not infringe seems contrived and hollow. As Judge Rakoff remarked, fair use “is not a jacket to be worn over an otherwise infringing outfit.”

In response to a comment request, the Penguin Random House and Simon & Schuster legal departments jointly responded about the fair use claim: “The assertion was not supported by the facts: the supplemental sections were incidental to the retelling of these famous stories and amounted to nothing more than window dressing. It was a fairly obvious masquerade.”

*****
Vincent Peppe is an attorney based in Nashville, TN, and an Entertainment and Music Business faculty member at Belmont University. Email: [email protected].