Lead Opinion
Preface
We re-visit the doctrine of fair use in this action for copyright infringement brought to enjoin publication of the biography of Church of Scientology founder L. Ron Hub
I.
Procedural History
This action was preceded by lawsuits commenced in 1987 to enjoin publication in England and Canada (each of these suits was dismissed for laches) and in Australia (this suit ultimately was withdrawn). Despite the fact that an attorney representing the Church of Scientology had corresponded with Holt in May of 1986 in an effort to discourage publication of the book, no action to enjoin publication was commenced in the United States until the complaint in this action was filed in the Southern District of New York on May 4, 1988. Immediately after filing the complaint, New Era applied for a temporary restraining order.
Judge Leval, to whom this case was assigned in the district court, initially denied the temporary restraining order for laches, noting the following in a written decision dated May 13, 1988:
Never did the plaintiff take sufficient steps to obtain a copy of the book to determine whether it differed from the books published in England, Australia, and Canada. Never did the plaintiff ask Holt when it would be published. The plaintiff did not take any legal step until May 4 [1988] when it sought the temporary restraining order. By that time, as it turned out, the defendant had published the book, having printed and packed 12,000 copies, and having sent out review copies on April 27. With the exception of 3,000 copies that a trucker had failed to collect and which were waiting on the loading dock, the first printing had been shipped beyond the publisher’s control. To fill additional orders, Holt had scheduled a second print run for May 6.
New Era Publications International, ApS v. Henry Holt and Co.,
A week later, on May 20, 1988, after New Era agreed to post an undertaking to indemnify Holt for any “unrecoverable expenses” incurred by Holt during the period of delay, Judge Leval granted a temporary restraining order restraining distribution of the second printing of the book. According to a Stipulation signed by the parties on May 31, 1988 and approved by Judge Leval on June 3, 1988, “unrecoverable expenses” include “a pro rata share of the overhead, with respect to the 10,000 book second printing and any books from the first printing returned to Holt, as a result of the Temporary Restraining Order issued by the Court on May 20, 1988 and incurred with respect to the advance payment to the author, and for advertising and publicity.”
Thereafter, the parties proceeded with an expedited trial on submissions of evidence pertaining to the permanent injunction question. Judge Leval’s opinion and order denying the injunction was issued on Au
Also entered in the district court on August 11, 1988 was an order vacating the temporary restraining order but staying the vacatur for three weeks to maintain the status quo ante pending an application for expedited appeal. On August 80,1988, this Court granted New Era’s motion for an expedited appeal and continued the stay until oral argument. Following oral argument, on September 30, 1988, the stay was continued pending the decision of this Court.
II.
The Book
The publisher summarizes the contents of the book in a blurb printed on the book’s jacket:
Bare-Faced Messiah, the biography of L. Ron Hubbard, makes for extraordinary reading. From his early days as a penniless author of “pulp” science fiction stories to his mysterious end, Hubbard was often in the news, usually at odds with society, frequently in trouble with the law. Born in 1911, the son of a struggling Nebraska businessman, he led a wandering, wildly romantic youth in which his dreams and his realities often became confused.
While writing for the pulps in the 1930s he claimed to have made a discovery of such philosophical and psychological importance that it would change the world. From that discovery evolved the “science” of Dianetics which prospered briefly and then foundered in a sea of debt and writs. In 1952 Hubbard founded a far more ambitious program, Scientology, a new religion which claimed to give its adepts the ability to overcome all diseases of the mind and body....
For nearly ten years he sailed the oceans as the commodore of his own private navy, served by nymphet messengers in hot pants who dressed and undressed him and were trained like robots to relay orders in his tone of voice.
His last years were as peripatetic and unsettled as his youth, and far more paranoid. In 1980, fearing arrest, he disappeared and was never seen again. He died in January 1986 under circumstances as mysterious as his enigmatic life itself.
The tone of the book is set in the author’s Introduction:
For more than thirty years, the Church of Scientology has vigorously promoted an image of its founder, L. Ron Hubbard, as a romantic adventurer and philosopher whose early life fortuitously prepared him, in the manner of Jesus Christ, for his declared mission to save the world. The glorification of ‘Ron’, superman and saviour, required a cavalier disregard for facts: thus it is that almost every biography of Hubbard published by the church is interwoven with lies, half-truths and ludicrous embellishments. The wondrous irony of this deception is that the true story of L. Ron Hubbard is much more bizarre, much more improbable, than any of the lies.
The author purports to contrast factual and fictional accounts of Hubbard’s life in almost every chapter of the book, drawing upon information gleaned from numerous sources: newspaper stories and other published accounts; personal interviews; letters; memoranda; records of various court proceedings; materials obtained under the Freedom of Information Act from United States government agencies; publications of the Church of Scientology; and Hubbard’s own writings, published and unpublished. Hubbard was a prolific writer, and
The book proceeds in conventional chronological order, commencing in Chapter 1 (“A Dubious Prodigy”) with accounts of Hubbard’s ancestry and early childhood. The accounts presented by Hubbard are portrayed as exaggerated and untrue. For example, the book contradicts Hubbard’s claims that he was descended from a French Count on his mother’s side; that he grew up on an immense cattle ranch owned by his grandfather in Montana; and that he became a blood brother of the Pikuni Indians before he was ten years of age.
In Chapter 2 (“Whither did he Wander?”), the book refutes Church of Scientology publication descriptions of Hubbard’s teenage travels, said to have been financed by a wealthy grandfather: up and down the coast of China several times and to Tibet (where Hubbard lived with bandits who accepted him into their way of life); in western Manchuria (where he demonstrated his horsemanship to ruling warlords); to an unnamed island in the South Pacific (where he calmed the natives by exploring a cave believed to be haunted); and in the Philippines (where he learned in one night a native language known as Igoroti).
Disputed in Chapter 3 (“Explorer Man-qué”) are claims made in Mission Into Time, a Church of Scientology publication, that Hubbard: spent four years traveling in Asia; undertook the study of nuclear physics at George Washington University in one of the first courses ever taught in that subject at an American university; directed, at the age of twenty, the Caribbean Motion Picture Expedition, which provided research for the University of Michigan and underwater films for the Hydrographic Office; and led the West Indies Mineral Survey, said to be the first complete mineralogical survey of Puerto Rico. According to the book, the truth is that Hubbard traveled in China for two months in the company of his parents during the course of a year-long stay at the United States Naval Station in Guam, where his father was assigned as a naval officer; failed the course in molecular and atomic physics at, and never graduated from, George Washington University; started out to do research in the Caribbean on an expedition that never was completed and never produced any research that could be found at the University of Michigan or the Hydro-graphic Office; and spent some time in Puerto Rico but produced no known record of any mineralogical research there.
Both Chapters 2 and 3 include extensive quotations from Hubbard’s unpublished Asia Diaries of 1927-1929. Some of the quotations found in these chapters are set forth in Judge Leval’s comprehensive opinion and order denying the injunction sought by New Era. See
In later chapters the book treats with Hubbard’s successes as a pulp and science fiction writer, his admission to membership in the prestigious Explorers Club, his leadership of the “Alaskan Radio-Experimental Expedition” under the Club’s flag, and his 1941 commission as a reserve officer in the United States Navy. It also deals with information contradicting a number of claims made by Hubbard at various times and repeated in authorized publications: that he studied savage peoples and cultures in Central America between 1938 and 1941; that he was an experienced airplane pilot; that he salvaged the careers of Boris Karloff and Bela Lugosi as a Hollywood script writer; and that he was a seriously wounded war hero who was awarded twenty-one medals, to identify only a few of the contradicted claims.
The book describes how Hubbard brought to light his new “science of Dianetics,” first in an article in the magazine Astounding Science Fiction and then in a book entitled Dianetics, The Modem Science of Mental Health, which became a
The evolution of Dianetics into Scientology and of Scientology into a religion is fully recounted in the book. As founder of the Church of Scientology, Hubbard is depicted as a charlatan and poseur whose strange religious theories and practices were designed for the financial aggrandizement of the Church, and ultimately of Hubbard himself. See Foley v. Commissioner,
[in] 1967, L. Ron Hubbard raised a private navy, appointed himself Commodore, donned a dashing uniform of his own design and set forth on an extraordinary odyssey, leading a fleet of ships across the oceans variously pursued by the CIA, the FBI, the international press and a miscellany of suspicious government and maritime agencies.
Hubbard was accompanied in his travels on the high seas by his wife, children and a number of associates and assistants. Although he resigned as President of the Church of Scientology, he continued to conduct its affairs from his base at sea.
Hubbard’s surreptitious return to the United States is reported at Chapter 20 (“Running Aground”) and his subsequent excursion into producing films with Scientology themes is described at Chapter 21 (“Making Movies”). Also described in the latter chapter are the convictions on guilty pleas of nine Scientologists, including Hubbard’s wife, for offenses involving the burglary of government offices and the theft of government documents. The book intimates that Hubbard’s wife “took the rap” for a scheme that Hubbard set in motion to purge government records of matter unfavorable to him and to the Church of Scientology. Chapter 22 (“Missing, Presumed Dead”) concludes the book with an account of Hubbard’s mysterious demise.
The book draws extensively upon the published writings of Hubbard in Dianetics and Scientology as well as upon various bulletins Hubbard issued to his followers. Judge Leval found sixty-nine instances of the use of published material in the biography. Since he found all but three of these uses noninfringing or “fair,” the opinion of the district court focuses on the use of previously unpublished materials.
III.
District Court Opinion
Applying the rule of fair use established in the copyright law, 17 U.S.C. § 107, and explicated by the Supreme Court in Harper & Row, Publishers, Inc. v. Nation Enterprises,
conclude[s] that there is a body of material of small, but more than negligible size, which, given the strong presumption against fair use of unpublished material, cannot be held to pass the fair use test
and therefore finds,
under mandate of the Salinger opinion, that Bare-Faced Messiah to some degree infringes Hubbard’s copyrights in some of his previously unpublished works.
The district court’s determination is arrived at after a close examination of the
Turning to the first statutory fair use factor, the purpose and character of the use, 17 U.S.C. § 107(1), the district court opinion first reviews the overall purpose and character of the work and then addresses the fair use purposes of individual passages. As to the former, the court concludes that the biography is “a serious book of responsible historical criticism,” and therefore eligible for fair use consideration despite “defendant’s profit-making objective.” Id. at 1507. As to the latter, the court finds a powerfully compelling fair use purpose in using Hubbard’s own words to reveal Hubbard’s character traits and the bizarre quality of his ideas.
According to the opinion, verbatim quotation is necessary to demonstrate Hubbard’s dishonesty in the accounts he gave of his early life as put forward by the Church of Scientology. “It is incompatible with the ends of fair research and criticism to accuse of dishonesty without being permitted to specify what were the dishonest words.” Id. at 1510. Specific passages must be set out, it is said, to show the subject’s boastfulness, pomposity, grandiosity, pretension and self-importance, because “[i]t is the subject’s conception of himself that the biographer seeks to convey.” Id. at 1512. Hubbard’s paranoia supposedly is demonstrated by certain letters and Church bulletins. The Asia Diaries are quoted “in mockery, to show Hubbard’s bigotry, bias and coarse lack of taste.” Id. at 1513. Cruelty and disloyalty are displayed in two letters having to do with a bigamous marriage, and the employment of Hubbard’s words in this instance is said to “serve[ ] a strong fair use purpose.” Id.
The book quotes from a letter written by Hubbard to the FBI accusing his estranged wife of being a communist, and from bulletins written by Hubbard urging his followers to “attack” those who oppose them, “to illustrate Hubbard’s aggressiveness and vicious scheming tactics against perceived enemies.” Id. Cynicism is illustrated by a letter to a confidant discussing Scientology’s financial potential and in a lecture praising the advantages of deceit. Excerpts taken from Dianetics: The Modern Science of Mental Health, a Hubbard work that remains a best seller, The History of Man, a book establishing the foundations of Scientology, and an unpublished letter boasting of Hubbard’s ability to heal are said to provide examples of derangement, insanity and bizarre pseudo-science. There is a compelling fair use purpose as to each of the excerpts, according to the opinion, because “[t]he biographer/critic should not be required simply to express ... conclusions without defending them by example.” Id. at 1517. The opinion views with approval the lifting of various passages from earlier works “to illustrate Hubbard’s egocentric self-perception in his early diaries,” id., and to “convey a capsule character
As to the first statutory factor, then, the opinion concludes that the “great majority” of quotations in the book demonstrate “a powerfully compelling fair use purpose that could not be accomplished without use of the subject’s own words” but that “in a few instances of quotation of unpublished material,” there is a “much less compelling fair use justification.” Id. at 1520. The opinion observes that the passages involved in the “few instances” referred to “undoubtedly play a role in filling out the biographer’s portrait” and may “fall short of demonstrating a sufficiently powerful claim of a fair use purpose to satisfy the test of ‘narrower’ scope for unpublished material.” Id.
Examining the third statutory factor, amount and substantiality of the portion used in relation to the copyrighted work as a whole, 17 U.S.C. § 107(3), the district court finds New Era’s count of 201 instances of infringement exaggerated but concludes that “there remains a substantial amount of taking of protected expression sufficient to raise a serious problem of copyright infringement if the takings are not protected by fair use.” Id. at 1522. In the opinion of the district court the fourth statutory factor, effect of the use upon the potential market value of the copyrighted work, 17 U.S.C. § 107(4), said by the Supreme Court to be “the single most important element of fair use,” Harper & Row,
The ultimate conclusion of the opinion as to fair use is that the use of published materials is “fair” but that the book is infringing in “some degree” in respect of unpublished materials. That conclusion is arrived at with some reluctance:
As to the book overall, were it not for the ruling of the Court of Appeals in Salinger, I would conclude that fair use has been adequately demonstrated.... Here the demonstration of fair use is far more compelling. Many of the takings of Salinger’s expression were for the purpose of enlivening that text with Salinger’s expressive genius_ Hubbard’s expression is taken primarily to show character flaws in a manner that cannot be accomplished without use of his words.
Id. at 1524. Nevertheless, the district court identifies forty-four passages from unpublished works “as to which a fair use purpose is not convincingly shown,” leading it to observe: “I cannot conclude that the Court of Appeals would accord fair use protection to all of Miller’s quotations, or that the biography as a whole would be considered non-infringing.” Id.
Notwithstanding its recognition of the rule that injunctions generally are granted to prevent copyright infringement, the district court has “no difficulty concluding that this is one of those special circumstances in which the interests of free speech overwhelmingly exceed the plaintiff’s interest in an injunction.” Id. at 1528. Perceiving that Salinger creates a daunting obstacle to a fair use defense against the use of unpublished materials, the district court discerns a need to “focus with new intensity on the potential conflict between the copyright and freedom of speech.” Id. at 1526. Here, according to the opinion of the district court, an injunction would suppress an interesting study of an important figure, with resultant injury to the public interest in free speech. Under such circumstances, an injunction should be denied, since “[a]n award of damages for profits ... can protect the copyright holder with far less injury to the public interest in freedom of speech than an injunction.” Id. at 1527. The permanent injunction sought here is denied by the district court because of the prohibitive expense and waste involved in republishing after deletion of infringing passages, the public’s deprivation of an important historical study and the failure of an injunction to serve any copyright interest, as well as the
IV.
Analysis
We agree that a permanent injunction should be denied, but for a reason wholly different from any of those set forth in the district court’s opinion. Moreover, we disagree with a great deal of what is said in the opinion.
First, we do not share some of the district court’s views respecting the proper application of the four fair use factors in this case. It seems clear to us that the first statutory fair use factor, purpose of the use, weighs in favor of Holt, while the remaining three factors, nature of the copyrighted work, amount and substantiality of the portion used, and effect of the use upon the market, all weigh in favor of New Era. The book under examination here is no different from the Salinger biography in its statutory fair use purpose classification: “criticism,” “scholarship” or “research.” See Salinger,
The district court opinion adds a gloss to the second fair use factor — nature of the copyrighted work — that we think should be removed. While we made it clear in Salinger that unpublished works normally enjoy complete protection, the district court would parse this factor also with a distinction. In this instance the distinction is between the use of protected expression to “enliven” text and the use of protected expression to communicate “significant points” about the subject. We see no need for such an approach. Where use is made of materials of an “unpublished nature,” the second fair use factor has yet to be applied in favor of an infringer, and we do not do so here. “Since the copyrighted letters are unpublished, the second factor weighs heavily in favor of [New Era].” Id.
We agree with the district court’s analysis of the third fair use factor and with its finding that a substantial amount of taking remains even after correcting for New Era’s overcounting. Our analysis of the fourth fair use factor, effect of the copyrighted work, differs substantially from that of the district court. Since the district court accepted New Era’s contention that it would commission an authorized biography of Hubbard and that all Hubbard’s writings, published and unpublished, would be made available for that purpose, it is difficult to conclude, as does the district court, that the book published by Holt would have no effect on the market for New Era’s forthcoming book. We disagree with Judge Leval on the application of the fourth fair use factor, as we did in Salinger, finding here as we did there that “some impairment of the market seems likely” and that “[t]he fourth fair use factor weighs slightly in [the copyright owner’s] favor.” Id. at 99.
Following an exhaustive analysis of the doctrine of fair use, the district court finds in any event that a small, but more than negligible, body of unpublished material cannot pass the fair use test, given the strong presumption against fair use of unpublished work. Although we would char
Nor are we persuaded by any of the other reasons given by the district court for denying an injunction following its rejection of the fair use defense and its finding of infringement. The public would not necessarily be deprived of an “interesting and valuable historical study,”
Nevertheless, equitable considerations dictate denial of injunctive relief in this action. The prejudice suffered by Holt as the result of New Era’s unreasonable and inexcusable delay in bringing the action invokes the bar of laches. See Goodman v. McDonnell Douglas Corp.,
[Holt] had made clear since Mr. Rintoul’s defiant letter in the summer of 1986 that it had no interest either in cooperating with [New Era] or in entering into discussions of infringements. There is no good reason why [New Era] should have waited until May [1988] to seek provisional orders of restraint. An earlier application would have permitted the court to explore the issues of law without causing [Holt] catastrophic harm.
If New Era promptly had sought an adjudication of its rights, the book might have been changed at minimal cost while there still was an opportunity to do so. At this point, however, it appears that a permanent injunction would result in the total destruction of the work since it is not economically feasible to reprint the book after deletion of the infringing material. 695
Epilogue
The judgment of the district court is affirmed. The stay heretofore granted by this Court is vacated. The mandate shall issue forthwith.
Concurrence Opinion
(concurring):
While I agree that the denial of an injunction should be affirmed and hence concur, it seems to me unnecessary for the majority opinion to do anything other than affirm the denial of an injunction for laches (even though I would only remand were that the only issue). While I do not completely agree with Judge Leval’s fair use analysis, it seems to me the majority unnecessarily goes out of its way to take issue with Judge Leval’s opinion, New Era Publications Int’l, ApS v. Henry Holt and Co.,
Ordinarily, in the interests of brevity I would confine this concurrence to my points of disagreement with the majority, relegating to an appendix my very limited disagreement with Judge Leval on his fair use analysis. But because “[f]air use is a mixed question of law and fact,” Harper & Row, Publishers, Inc. v. Nation Enterprises,
I. Background
The book, Bare-Faced Messiah, is a biography of sorts, largely based upon Freedom of Information Act materials from U.S. Navy, Federal Bureau of Investigation, Central Intelligence Agency and other United States agency records; numerous interviews with Scientologists, friends, enemies, and relatives of Hubbard; newspaper stories and published materials about the man; Hubbard’s own extensive writings, involving literally millions of words, published and unpublished; and court records and testimony in various tax, bankruptcy, divorce, and other proceedings. Like Judge Leval, I believe it unnecessary to assess the accuracy of Miller’s reports or the justification for his conclusions. Nonetheless, there is no reason, and I do not see the majority doing otherwise, to quarrel with the judge’s finding that the book “appears to make responsible use of its material” and hence is “a serious work of criticism and comment on a highly newsworthy subject.”
It bears mention that Messiah gives due credit in the preface to a dedicated member of the Church of Scientology for more than a decade, one Gerry Armstrong, who, when given permission to research an official biography of Hubbard, is said to have gone through six filing cabinets of material, only to become totally disillusioned with contradictory material on Hubbard’s family background, naval and academic careers, fraudulent business background, tax evasion and
II. Judge Leval’s Opinion
For examples of Messiah’s use of copyrighted material, I would refer the reader to Judge Leval’s comprehensive analysis of New Era’s claims. See
The first twenty-two pages of the Leval appendix catalog sixty-nine quotations or references to published materials. Of these, with only three exceptions,
This appeal instead concerns quotations from the unpublished Hubbard writings. Judge Leval’s appendix lists 132 passages from unpublished works which New Era claims infringed its copyright. Seventy-three of these came from Hubbard’s Asia Diaries written in 1927-29, when Hubbard was a young man. Most of the Asia Dia
Judge Leval found that 91 of the 132 passages from unpublished works were fairly used or did not infringe upon the unpublished Hubbard writings and that the remaining 41 were unfairly used. The Asia Diaries were the source of all but four of those unfairly used passages. Set out in the margin is a table which summarizes Messiah’s, use of Hubbard’s writing and Judge Leval’s findings.
Judge Leval’s principal conclusions on the unpublished works may be summarized as follows:
1. The first conclusion. Harper & Row, supra, and Salinger, supra, do not preclude a finding of fair use as to unpublished materials, but they do argue strongly against it and place a burden on the user to “establish a highly convincing case in favor of fair use.”
2. The second conclusion. Holt met its burden in this case as to the great majority of unpublished materials. Salinger and Judge Leval’s own Craft v. Kobler,
3. The third conclusion. As to the book overall, Judge Leval found that fair use was adequately demonstrated, far
4. The fourth conclusion. While an injunction ordinarily issues to prevent copyright infringement, Judge Leval found this case “drastically different,” since (1) Messiah was not an example of “profiteering by appropriating the creative effort and genius of another” or other “opportunistic free riding”; (2) the infringing portions are “insignificant”; and (3) an injunction would “diminish public knowledge,” so First Amendment concerns are implicated. Id. at 1525. Therefore, Judge Leval concluded, all of the circumstances of this case required the denial of a permanent injunction. The majority disagrees. Majority op. at 584-585.
III. Discussion
A. Fair Use Doctrine
I need not here review the background of the defense of fair use. There is a very good book on the subject, one that has been cited by the United States Supreme Court and is referred to by the majority. See W. Patry, The Fair Use Privilege in Copyright Law (1985) (hereinafter Patry); Harper & Row,
Because Salinger is not the beginning and the end of fair use law, previous Second Circuit cases involving biographies, public figures and public information do, I think, need reference. Rosemont Enterprises, Inc. v. Random House, Inc.,
Whether the privilege may justifiably be applied to particular materials turns initially on the nature of the materials, e.g., whether their distribution would serve the public interest in the free dissemination of information and whether their preparation requires some use of prior materials dealing with the same subject matter.
Time Inc. v. Bernard Geis Associates,
Meeropol v. Nizer was a series of cases brought by the sons of Ethel and Julius Rosenberg to restrain Louis Nizer’s book, The Implosion Conspiracy. In the first Meeropol v. Nizer,
On an expanded record in 1976, the Meer-opols’ supplemental complaint was heard on a motion by defendants for summary judgment. Id. at 1203. Judge Gagliardi held, not altogether persuasively to some, see Patry at 79-80:
[Cjourts in recent years have come to recognize that there are occasionally situations in which the copyright holder’s interest in a maximum financial return must occasionally be subordinated to the greater public interest in the development of arts, science, and industry.
Iowa State University Research Foundation, Inc. v. American Broadcasting Cos.,
Finally, in Roy Export Co. Establishment v. Columbia Broadcasting System, Inc.,
In sum, before Salinger the Second Circuit recognized that public interest in the subject matter and the necessity for the use are important components of fair use, and that the fair use doctrine is an áppro-priate way to resolve conflicts between copyright law and the First Amendment. At the same time, the commercial motives of a user will count against fair use, and so will the likelihood of undermining the market for the protected work. A court should consider the use in both quantitative and qualitative terms. Following the Supreme Court’s decision in Harper & Row, more attention has been given to the additional issue of how significant it is that the material copied was unpublished.
B. Fair Use in Messiah
Neither appellant nor the majority opinion disputes Judge Leval’s conclusion about Hubbard’s published works: that all the quotations or paraphrases from these works were either non-infringing or fairly used (or implicitly de minimis, see note 1 supra).
It is true that Salinger said that a “biographer has no inherent right to copy the ‘accuracy’ or the ‘vividness’ of the letter writer’s expression. Indeed, ‘vividness of expression’ is precisely an attribute of the author’s expression that he is entitled to protect.”
I agree with Judge Leval: words that are facts calling for comment are distinguishable from words that simply enliven text. The law recognizes that words themselves may be facts to be proven. For example, in evidence law, words of independent legal significance, such as a contract or slander, are verbal acts and not hearsay. See McCormick on Evidence § 249, at 732-33 (3d ed. 1984). According to Messiah, Hubbard lied, boasted, etc. These are actions. In order to prove his point, Messiah 's author must recount those actions— i.e., he must quote Hubbard’s lies, boasts, etc. Thus, in Salinger’s words, see
Judge Leval offers a colorful hypothetical to support this argument: a popular, benign mayor who has sent memoranda to opponents in various conflicts threatening to “cut your heart out,” “castrate you,” and “bust your kneecaps.”
There are a few quotations which I nevertheless concede are indistinguishable from those held to be improper in Salinger, and here I part company — but only a little — from Judge Leval. There are, for example, quotations from eight passages in short-story outlines and drafts to show Hubbard’s teenage style of writing. The district court thought that these quotations could properly be used. Salinger makes it very clear, however, that quotations used merely to demonstrate writing style may not qualify for the fair use defense.
As to the second factor, the nature of the copyrighted work, Harper & Row says that “the scope of fair use is narrower with respect to unpublished works” because “the author's right to control the first public appearance of his expression weighs against such use of the work before its release.” Thus, the fact that a work is unpublished is a “critical element of its ‘nature.’”
Salinger interpreted narrower “scope” to refer to the “diminished likelihood that
The second factor, as I see it, helps to define the burden that is placed upon a defendant to justify its use of copyrighted material. Holt must justify its use more convincingly under section 107’s other factors when quoting from Hubbard’s unpublished writings than when quoting from his published works. See
The third factor is the amount and sub-stantiality of the portion of the copyrighted work used. Paraphrase as well as actual quotation must be considered. Salinger,
The amount and substantiality of the quotations used in this case are easily distinguishable from Harper & Row and Salinger, a matter which the majority opinion unfortunately glosses over. I have said that the quotations from the Asia Diaries are mostly found in Chapters 2 and 3, which deal in part with Hubbard’s travels. Qualitatively, they are quite insignificant: as I mentioned above, the quotations are necessary to substantiate the author’s factual assertions. However, they are not nearly so important as, in Salinger’s words, to “make the book worth reading.”
I now turn to the fourth factor set out in section 107, “the effect of the use upon the potential market for or value of the copyrighted work.” Harper & Row tells us that this “is undoubtedly the single most important element of fair use.”
Thus, I agree with the district court’s ultimate conclusion that most of the material, including all of the published and much of the unpublished writings, is entitled to the fair use defense. I also agree with Judge Leval that the unpublished material that is not entitled to this defense is both quite small in quantity and most limited in quality, and that its marketability would in no way be affected by the publication of Messiah. To hold otherwise is in
C. The Remedy
I come then to the truly critical question which the majority opinion, starting with different premises, deals with by reference solely to the Act and its constitutional underpinning: does the publication of even a small, but more than negligible, body of infringing material entitle the copyright holder to an injunction? The district court refused to enjoin further distribution of Bare-Faced Messiah.
Rather, the suppression of Messiah would, as Judge Leval said, operate as a prior restraint and “implicate[ ] concerns of the First Amendment.” Id. Judge Leval observed that earlier cases (e.g., Rosemont, Meeropol) avoided suppressing critical biographies by finding fair use. “Since Salinger,” however, the conflict between freedom of speech and the injunctive remedy is “inescapable.” Id. at 1526. The judge concluded, and I agree, that “[tjhere may ... be instances where solicitude for the author’s commercial entitlements, especially in first publication, will motivate a court to protect his compensation right by denying a finding of fair use, while solicitude for a free press and free public discussion will require denial of an injunction.” Id. He supported this view by citing the permissive language of the Copyright Act, 17 U.S.C. § 502 (the court “may ... grant ... final injunctions”); past cases, e.g., Dun v. Lumbermen’s Credit Ass’n,
I recognize the counter from Salinger that “[i]f [an author] copies more than minimal amounts of (unpublished) expressive content, he deserves to be enjoined,”
I believe, however, that Judge Leval’s denial of the injunction — a remedy for infringement — can be supported on grounds that do recognize these arguments and the cited authorities. Enjoining publication of a book is not to be done lightly. The power to enjoin, in this as in any case, must be exercised with a delicate consideration of all the consequences. See Rosemont,
I think that the denial of an injunction was appropriate here for four reasons. First, the “economic incentive” for the creation and dissemination of ideas that is provided by the Copyright Act, Harper & Row,
Second, the public interest militates against granting an injunction in this case. “Courts of equity may, and frequently do, go much farther both to give and withhold relief in furtherance of the public interest than they are accustomed to go when only private interests are involved.” Mercoid Corp. v. Mid-Continent Inv. Co.,
Biographies, of course, are fundamentally personal histories and it is both reasonable and customary for biographers to refer to and utilize earlier works dealing with the subject of the work and occasionally to quote directly from such works. This practice is permitted because of the public benefit in encouraging the development of historical and biographical works and their public distribution, e.g., so “that the world may not be deprived of improvements, or the progress of the arts be retarded.”
Rosemont,
Third, a non-injunctive remedy provides the best balance between the copyright interests and the First Amendment interests at stake in this case. In the words of Professor Goldstein, Copyright and the First Amendment, 70 Colum.L.Rev. 983, 1030 (1970):
To be actionable, invasions of the copyright must effect economic harm and ... an award of damages should be preferred to the injunctive remedy. Since copyright property has economic value only, the principle would permit any public participation in the property which does not tend to impair its value. The preference for damages over injunctive relief is a corollary of the requirement of demonstrable injury. From a first amendment viewpoint, the effect of an injunction is to restrain the infringing expression altogether — an effect which goes beyond what is necessary to secure the copyright property. An award of monetary damages, which permits the infringing expression at a reasonable cost, is more tolerable from a first amendment point of view.
Finally, even without reference to the doctrine of unclean hands, see supra note 5, the fact that a good argument can be made, as the majority holds and as English and Canadian courts held, that the delay in New Era’s proceeding with this case amounted to laches, see Goodman v. McDonnell Douglas Corp.,
Applying traditional equitable principles, then, I would hold that Judge Leval did not abuse his discretion in declining to issue an injunction against publication of Messiah, leaving New Era a damages claim as to the
Notes
. The three exceptions, where quotations of Hubbard’s published writings were found to be not fairly used, are de minimis or insignificant under the other fair use factors such as marketability. Warner Bros., Inc. v. American Broadcasting Cos.,
. Summary of Bare-Faced Messiah's use of published and unpublished materials and of Judge Leval’s findings
Noninfringement or fair use found by Judge Leval Unfair use found by Judge Leval Totals
Use of published materials 66 3 69
Use of unpublished materials 91 41 132
(of which: from Asia Diaries) (36) (37) (73)
Totals 157 44 201
. [A]s to Hubbard’s sentence, “The trouble with China is, there are too many Chinks here,” there is no fact reported in it which the biographer has an interest in narrating. What is interesting is that Hubbard said it.
Nor should a biographer/critic be limited to stating her conclusions about the subject’s choice of words. It would be preposterous to restrict Miller to writing something like, “Hubbard used a vulgar derogatory epithet exhibiting snobbish bigoted disdain for the Chinese.” That would be at once unfair to the biographer, the subject, and the readership, which can reasonably demand to know “What did he say? Let us be the judge of whether it was vulgar, snobbish or bigoted.”
. I note that Judge Leval, in so holding, declined to rely on two factors alluded to in the briefs on appeal. First, Judge Leval did not rely on the fact that most of the unpublished materials here at issue — including the Asia Diaries— became part of a court record and in that sense were published in the California Superior Court litigation in which the Church sought to recover them from its member Armstrong who it claimed had taken them without permission. Judge Leval decided that any display of those materials in the California litigation was over the Church’s objection and that, as a matter of principle, being forced to sacrifice a right in order to bring a lawsuit to enforce it would make the right chimerical.
Second, Judge Leval did not rely on the fact that, as New Era argued in the district court, the private nature of the Hubbard documents should favor a finding of infringement. He pointed out that “the protection of privacy is not the function of our copyright law." Id. at 1504. While an action under state law for a violation of the right of privacy is not preempted by the Copyright Act, such a right is not available once the subject of the publication is deceased, particularly where the writer was a public figure like Hubbard. Id. Case law supports Judge Leval's view that a person's privacy right terminates at death. Cordell v. Detective Publication, Inc.,
If, as some commentators have suggested, e.g., Note, Fair Use of Unpublished Materials in the Second Circuit: The Letters of the Law, 54 Brooklyn L.Rev. 417, 457-60 (1988), tacit concerns for Salinger's privacy in some way informed the Salinger opinion, those concerns are not present here. On privacy and the law of copyright, see Judge Newman’s informative Manges lecture, in 12 Colum.-VLA J.L. & Arts 459, 460 n. 2 (1988), refuting the commentators’ suggestion.
. Mention should also be made of the "concurring” opinion in Rosemont of Chief Judge Lum-bard — an opinion joined by Judge Hays — which looked to the equitable doctrine of clean hands in light of Hughes’ alleged attempt to suppress unfavorable biographies,
Judge Leval did not consider the doctrine of unclean hands, though the English trial court which denied an interim injunction sought by the Church of Scientology against Messiah's author and Penguin Books said that the Church’s litigation was "oppressive" and "not bona fide launched to protect any legitimate interest of the church in preserving confidentiality in information contained in Mr. Miller’s biography." Church of Scientology of California v. Miller, slip op. at 16 (Ch. Oct. 9, 1987), aff’d, Ch. 1986 C. No. 6140 (C.A. Oct. 22, 1987). Were appellants to have prevailed on this appeal, the allegations presented in the affidavit of W. Mallory Rintoul, Esq., the Secretary and General Counsel of Henry Holt and Company, Inc., in the joint appendix at 883 with attached materials, would in my opinion have called for an examination of the "clean hands” of appellants. This, like the majority's consideration of laches, necessarily follows from the fact that New Era sought injunc-tive relief; these are equitable defenses to an equitable remedy, sought in connection with an equitable doctrine.
. New Era does question — the majority does not —whether letters filed with various government agencies or applications thereto should be considered published, since Hubbard sent them to the agencies before the Freedom of Information Act was adopted. Holt argues, on the other hand, that Hubbard’s letter or applications to government agencies were published.
I think that Holt has the better of the argument. While before the FOIA the letters may have been sent with an expectation of privacy, that expectation no longer existed after Hubbard’s death. Moreover, publication occurred in a very real sense when Hubbard wrote the government agency or official in question. Cf. Restatement (Second) of Torts § 577 (1977) (publication of defamatory material). Finally, the FOIA does not apply only to materials that arrived in government files after its enactment.
To be sure, the act of placing a "work” in a public file where it is available for inspection is not a publication under 17 U.S.C. § 101, at least after January 1, 1978, 1 Nimmer%% 4.07, at 4-39 to -40, 4.10 at 4-49 and cases cited, because the work has not been distributed. Nonetheless, although case law on this is nonexistent, I think that letters or applications to government agencies seeking or promoting action by the agencies are not "works of authorship” in the copyright sense of 17 U.S.C. § 102. Cf. id. § 2.03[A], at 2-24 (Congress did not use its full constitutional powers over "writings” in the Act).
. Appellants suggest that all that would be required would be revision of the book so as to delete the infringing portions and to report facts and ideas. The district court found, however, that "the expense and waste involved in republishing after deleting infringing material would be prohibitive."