Salinger v. Colting: New Standard, More Questions

by John Aquino on 01/31/12

 

Written for the Maryland State Bar Association’s Intellectual Property Section’s Annual Law Update, June 2011

A case in which a federal appeals court vacated a district court’s granting of a preliminary injunction barring the publication of a book using characters from an American classic set a new standard for a preliminary injunction in intellectual property infringement cases and also once again did not address the issue whether barring such use by defendants is inconsistent with First Amendment case law.

Vacating a preliminary injunction, the U.S. Court of Appeals for the Second Circuit in Salinger v. Colting, 2d Cir., No. 09-2878-cv, 4/30/10, remanded the matter for reconsideration under the standard set forth by the Supreme Court in eBay Inc. v. MercExchange LLC, 547 U.S. 388 (2006).

The original plaintiff, J.D. Salinger, authored  the classic novel The Catcher in the Rye, which was published in 1951, a story told from the point of view of a young man named Holden Caulfield. A reclusive author, Salinger did not publish any works after 1965, never authorized new narratives involving Caufield, and, except for 1949 film adaptation of one of his short stories, did not permit derivative works of his writings.

In May 2009, Swedish writer Fredrik Colting published a book in England under the pseudonym “J.D. California” titled 60 Years Later: Coming Through the Rye, which features “Mr. C,” a man in his 70s, whose narration style is similar to that of Holden Caulfield's. The Colting book also includes a character based on Salinger himself. On the book jacket of the novel when it was first released, 60 Years Later was described as “a marvelous sequel to one our most beloved classics.”

The novel was scheduled to be published in the United States in September 2009, but Salinger filed a complaint in the U. S. District Court for the Southern District of New York against Colting and his publishers and distributors, alleging that Colting's book constituted an unauthorized sequel to Catcher in the Rye. Salinger sought a permanent injunction barring the reproduction, publication, advertisement, distribution, and other dissemination of the J.D. California book.

Colting responded that 60 Years Later was not, and was never intended to be, a sequel to Catcher but rather, “a critical examination of the character Holden and the way he is portrayed in [Catcher], the relationship between Salinger and his iconic creation, and the life of a particular author as he grows old but remains imprisoned by the literary character he created." Colting emphasized that a main character in 60 Years Later--Salinger himself, who narrates portions of the novel--did not appear in Catcher and that the Mr. C character evolved from a two-dimensional and absurd version of a sixteen-year-old into a real person with a rich life completely apart from Catcher.

Judge Deborah A. Batts issued a preliminary injunction, barring distribution of the Colting book in the United States. Salinger v. Doe, No. 09-cv-5095 (S.D.N.Y., July 1, 2009). Using the four factors of “fair use” in response to Colting’s evoking of that defense, Batts held that the Holden character was not sufficiently “transformative” of Catcher under Campbell v. Acuff-Rose Music Inc, 510 U.S. 569, 579 (1994) in that it  did not constitute a parody of  either Catcher or Caufield, although it might parody Salinger himself.

Colting appealed the injunction, arguing, among other things, that his use of the Caufield character was actually justified by the Supreme Court’s ruling in Campbell, which held that a commercial parody can qualify as fair use. Following Salinger's death in January 2009, his claim was taken up by Colleen M. Salinger and Matthew R. Salinger, as trustees of the J.D. Salinger Literary Trust.

New Test, Remand Necessary

In the appeals court decision, Senior Judge Guido Calabresi noted that once a plaintiff in a copyright infringement case has established a likelihood of success on the merits, the Second Circuit, in cases such as Richard Feiner & Co. v. Turner Entertainment Co., 98 F.3d 33 (2d Cir. 1996), has presumed that the plaintiff is likely to suffer irreparable harm in the absence of a preliminary injunction.

Colting argued that this standard, however, was in conflict with the Supreme Court's eBay decision, which required that, in a patent infringement case, an injunction should be issued to a prevailing patent owner only after application of a traditional four-part equitable test.

Recognizing that the eBay decision involved a patent infringement action and a permanent injunction, rather than a copyright action and a preliminary injunction, as was the case in Salinger, the court nevertheless agreed with Colting's argument.

“We hold today that eBay applies with equal force (a) to preliminary injunctions (b) that are issued for alleged copyright infringement,” the court said.

The court found nothing in the Supreme Court's decision that would limit its application to patent cases. “On the contrary, eBay strongly indicates that the traditional principles of equity it employed are the presumptive standard for injunctions in any context,” the court said.

The standard applied by the district court, derived from the Second Circuit's own jurisprudence, was in conflict with the Supreme Court's pronouncement, the court said. The court then set forth the test to be applied when considering whether to issue a preliminary injunction in a copyright case, in order to be consistent with eBay:

First, as in most other kinds of cases in our Circuit, a court may issue a preliminary injunction in a copyright case only if the plaintiff has demonstrated “either (a) a likelihood of success on the merits or (b) sufficiently serious questions going to the merits to make them a fair ground for litigation and a balance of hardships tipping decidedly in the [plaintiff]'s favor.” … Second, the court may issue the injunction only if the plaintiff has demonstrated “that he is likely to suffer irreparable injury in the absence of an injunction.” … The court must not adopt a “categorical” or “general” rule or presume that the plaintiff will suffer irreparable harm (unless such a “departure from the long tradition of equity practice” was intended by Congress). … Instead, the court must actually consider the injury the plaintiff will suffer if he or she loses on the preliminary injunction but ultimately prevails on the merits, paying particular attention to whether the “remedies available at law, such as monetary damages, are inadequate to compensate for that injury.” … Third, a court must consider the balance of hardships between the plaintiff and defendant and issue the injunction only if the balance of hardships tips in the plaintiff's favor. … Finally, the court must ensure that the “public interest would not be disserved” by the issuance of a preliminary injunction.

The court cautioned again that irreparable harm could not be presumed upon a finding of likelihood of success on the merits.

Since only the first factor of the four-part test had been applied, the court vacated the injunction and remanded the question for further consideration.

The court did state some agreement with the district court’s assessment that the defendants would not prevail with their fair use defense, noting that the book jacket had described 60 Years Later as a sequel to Catcher and not a critique of Salinger and his persona. The court did add, however, “It may be that a court can find the fair use factor favors a defendant even when the defendant and his work lack a transformative purpose.”

The district court closed the case in January 2011 as the result of a settlement between the parties under which the defendants agreed not to distribute the book in the United States or Canada until Catcher entered the public domain and to change the title. They remained free to sell and distribute the book in all other countries.

Decision’s Impact

The Second Circuit’s decision immediately raised concern that plaintiffs in copyright, patent, or trademark infringement cases, now deprived of the “free pass” that resided in the presumption of irreparable harm, would have difficulty in obtaining a preliminary injunction.[i] Some responded that in satisfying the requirement of proof of irreparable harm plaintiffs should look to such factors as loss of market share, loss of incentive to create, and market confusion.[ii] And, for now, the ruling is limited to the jurisdiction of the Second Circuit.

Another impact of the decision may be one of absence in that the appeals court did not address Coltin’s parody/fair use issue.  In many ways, the case is similar to Suntrust Bank v. Houghton-Mifflin Co., 11^th Cir., No. 01-12200, 5/20/01, which involved an unauthorized sequel to Margaret Mitchell’s Gone with the Wind by Alice Randall titled Wind Done Gone.  The Margaret Mitchell estate sued Randal and her publisher for copyright infringement claiming that Wind Done Gone was an unauthorized derivative work of Gone with the Wind. The U.S. District Court for the District of Georgia granted the estate a preliminary injunction. The defendants argued that the work was a commentary and in the broader sense a parody of the Mitchell novel in that it was told from the perspective of slaves on the Tara plantation. As parody, Randall contended the work was protected under the Supreme Court’s ruling in Campbell. The U.S. Court of Appeals for the Eleventh Circuit vacated the injunction, and the case was settled in 2002 when the publisher agreed to make an unspecified donation to Morehouse College in Georgia in exchange for Mitchell’s estate dropping the litigation. As a result, the sequel as “parody” issue was never litigated.

Faced with going forward after appeals court reversals, in both cases, the plaintiffs chose to settle, presumably on the belief that a loss would have had long-term ramification for authors, publishers, filmmakers, and all participants in intellectual property.

The unanswered question only raises more. Could, for example, a filmmaker, using the character of Father O’Malley in the 1944 film Going My Way, portray him as a pedophile and claim fair  use protection against charges of copyright infringement because the new film was a parody/commentary of the pedophile/priest scandal of the last few years?

As a result of Salinger, plaintiffs in any intellectual property infringement litigation now face a different, and some will say more difficult, standard in moving for a preliminary injunction. The case also left for another day whether authors may publish sequels to classic works using the argument that they are parodies under Campbell, although the Salinger court did raise the possibility that a court could find the fair use factors favor a defendant even when the defendant and his or her work lack a transformative purpose.