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COPYRIGHT || JTS
CASTLE ROCK ENTERTAINMENT v. ISSUE: Whether the district court erred in ruling for Castle
Rock. NO.
CAROL PUBLISHING GROUP, INC.
150 F.3d 132 | July 10, 1998 | Walker HELD:
RIGHT TO PREPARE DERIVATIVE WORKS ON COPYRIGHT INFRINGEMENT
The SAT Copyright owners are granted a bundle of exclusive rights
FACTS which includes the right to reproduce the copyrighted work
Castle Rock is the producer of Seinfeld. in copies, and to prepare derivative works based on the
Castle Rock is the producer and copy- right owner of each copyrighted work.
episode of the Seinfeld television series. The series revolves
around the petty tribulations in the lives of four single, adult Two main components of copyright infringement:
friends in New York: Jerry Seinfeld, George Costanza, Elaine 1. plaintiff must show that his work was actually copied;
Benes, and Cosmo Kramer. 2. that the copying amounts to an improper or unlawful
appropriation.
Golub made The SAT which is published by Carol. It is only after actual copying is established that one claiming
Beth Golub, the author, and Carol Publishing Group, Inc., the infringement" then proceeds to demonstrate that the copying
publisher, of The Seinfeld Aptitude Test (The SAT), a 132-page was im- proper or unlawful by showing that the second work
book containing 643 trivia questions and answers about the bears "substantial similarity" to protected ex- pression in the
events and characters depicted in Seinfeld. earlier work.

The SAT is a trivia book regarding the Seinfeld series. The standard for determining copyright infringement is not
The book draws from 84 of the 86 Seinfeld episodes that had whether the original could be recreated from the allegedly
been broadcast as of the time The SAT was published. infringing copy, but whether the latter is substantially similar
Although Golub created the incorrect answers to the multiple to the former.
choice questions, every question and correct answer has as its
source a fictional moment in a Seinfeld episode. Copying here was acknowledged and undisputed by the
parties, as well as Castle Rocks ownership over the
The name "Seinfeld" appears prominently on the front and copyrights on Steinfeld the series.
back covers of The SAT, and pictures of the principal actors in
Seinfeld appear on the cover and on several pages of the book. Substantial similarity, defined.
On the back cover, a disclaimer states that "This book has not Substantial similarity requires that the copying [be]
been approved or licensed by any entity involved in creating or quantitatively and qualitatively sufficient to support the legal
producing Seinfeld." conclusion that infringement (actionable copying) has
occurred. The qualitative component concerns the copying of
Golub: The SAT is a natural outrgrowth of the series. expression, rather than ideas. The quantitative component
Golub has described The SAT as a "natural outgrowth" of generally concerns the amount of the copyrighted work that
Seinfeld which, "like the Seinfeld show, is devoted to the is copied which must be more than de minimis.
trifling, picayune and petty annoyances encountered by the
show's charac- ters on a daily basis." She created The SAT by SAT crossed the de minimis standard.
taking notes from Seinfeld programs at the time they were At the outset, we observe that the fact that the copying
aired on television and subsequently reviewing videotapes of appears in question and answer form is by itself without
several of the episodes, as recorded by her or various friends. particular consequence: the trivia quiz copies fragments of
Seinfeld in the same way that a collection of Seinfeld jokes or
The book was not initially questioned by Castle Rock. trivia would copy fragments of the series.
NBC, the network airing the series, even requested free copies
of the book and distributed them together with promotions One must look at the work aggregately in relation to the
for the program. original copyrighted work.
To determine the quantitative extent of the defendants'
But Castle Rock is still highly selective of its marketing copying, we must then decide whether to analyze sepa- rately
products associated to Seinfeld. the amount of expression copied from each individually
It only granted a license one Seinfeld book, The Entertainment copyrighted Seinfeld episode, or to analyze in the aggregate
Weekly Seinfeld Companion, and a production of a CD-ROM the amount copied from the eighty-four Seinfeld episodes.
that would include a discussion of the episodes and may Precedents tend to support the aggregate analysis.
include trivia questions/bank.
There is no distinction between the 84 episodes of the
Castle Rock notified Carol Publishing that it would sue if series and the 634-question quiz book.
they didnt desist. Nonethless, Carol continued the To consider the 634-questions as one work, would elevate the
distribution of The SAT, leading Castle Rock to carry on with conclusion that The SAT's copying of 643 fragments from 84
the filing of the suit alleging federal copyright and trademark individually copyrighted Seinfeld episodes is indistinguishable
infringement and state law unfair competition. Both parties from a case in which a 634-question trivia quiz book poses a
moved for summary judgment. few questions from each of 84 unre- lated television
programs, books, movies, or any combination of creative
District Court ruled for Castle Rock and ordered Carol works that do not consti- tute a discrete series of works. By
Publishing to pay $403K for damages, as well as to cease the copying not a few but 643 fragments from the Seinfeld
distribution of The SAT and to destroy all existing copies of television series, however, The SAT has plainly crossed the
the same. quantitative copying threshold.

BASIL MAGUIGAD | GAITA MASANGKAY | KAT NIETO | JO SANTOS | TYN SISON | ALLEN UY
(79) COPYRIGHT || JTS
Although Seinfeld could not be "recreated" from The SAT, 2. the nature of the copyrighted work;
Castle Rock has nevertheless established both the 3. the amount and substantiality of the portion used in
quantitative and qualitative components of the substantial relation to the copyrighted work as a whole; and
similarity test, establishing a prima facie case of copyright 4. the effect of the use upon the potential market for or value
infringement. of the copyrighted work.
Note that the 4 grounds are not exclusive.
OTHER TESTS RE: COPYRIGHT INFRINGEMENT In its application, it permits and requires the courts to avoid
Ordinary observer test. rigid application of the copyright statute, when, on occasion, it
"Two works are substantially similar where 'the ordinary would stifle the very creativity which that law is designed to
observer, unless he set out to detect the disparities, would be foster and should be thus determined in a case-by-case basis.
disposed to overlook them, and regard [the] aesthetic appeal [of
the two works] as the same.'" The ultimate test of fair use, therefore, is whether the
copyright law's goal of "promoting the Progress of Science
Castle Rock has a plausible claim that there is a common and useful Arts, would be better served by allowing the use
aesthetic appeal between the two works based on The SAT's than by preventing it."
plain copying of Seinfeld and Golub's statement on the back
cover that the book was designed to complement the APPLICATION
aesthetic appeal of the television series. The SAT is for commercial use.
This tends to weigh against a finding of fair use. Nonetheless,
Total concept and feel test. the Court has already acknowledge in a previous case that
Analyzes "the similarities in such aspects as the total concept nearly all of the illus- trative uses listed in the preamble
and feel, theme, characters, plot, sequence, pace, and setting" paragraph of 107, including news reporting, comment, criti-
of the original and the allegedly infringing works. cism, teaching, scholarship, and research . . . are generally
conducted for profit in this country," and "no man but a
The total concept and feel test, however, is simply not helpful blockhead ever wrote, except for money. Therefore, the first
in analyzing works that, because of their different genres and requirement is not given much weight.
media, must neces- sarily have a different concept and feel.
Indeed, many "derivative" works of different genres, in which What is more critical under the first facture is whether and to
copyright owners have exclusive rights, may have a different what extent is the new work 'transformative.'" If "the
total con- cept and feel from the original work. secondary use adds value to the original--if [copyrightable
expression in the original work] is used as raw material,
Fragmented literal similarity test. transformed in the creation of new information, new
Focuses upon copying of direct quotations or close aesthetics, new insights and understandings-- this is the very
paraphrasing. type of activity that the fair use doctrine intends to protect for
the enrichment of so- ciety." In short, "the goal of copyright, to
Quantitative analysis considers the amount of copying not promote science and the arts, is generally furthered by the
only of direct quotations and close paraphrasing, but also of creation of transformative works."
all other protectable expression in the original work.
The SAT has no transfomative purpose.
Comprehensive nonliteral similarity test. The book does not contain commentary or analysis about
Examines whether "the fundamental essence or structure of Seinfeld, nor does it suggest how The SAT can be used to
one work is duplicated in another." research Seinfeld; rather, the book simply poses trivia ques-
tions. The SAT's plain purpose, therefore, is not to expose
Anent the 2 immediately preceding tests, the direct Seinfeld's "nothingness," but to satiate Seinfeld fans' passion
quotations or close paraphrases that The SAT copied from the for the "nothingness" that Seinfeld has elevated into the realm
Seinfeld series are few and al- most irrelevant to The SAT, of protectable creative expression.
undue focus upon these isolated quotations could improperly
distract us from inquiring as to whether substantial similarity The fact that The SAT so minimally alters Seinfeld's original
exists between Seinfeld and The SAT. expression in this case is further evidence of The SAT's lack of
transformative purpose. To be sure, the act of testing trivia
ON FAIR USE DOCTRINE about a creative work, in question and answer form, in-
Fair use doctrine, defined. volves some creative expression. While still minimal, it does
"In truth, in literature, in science and in art, there are, and can be, require posing the questions and hid- ing the correct answer
few, if any, things, which in an abstract sense, are strictly new among three or four incorrect ones.
and original throughout. Every book in literature, science and art,
borrows, and must necessarily borrow, and use much which was The scope of fair use is narrower in fictional works, as
well known and used before." opposed to factual works.
Carol Publishing concede that the scope of fair use is
Per statute: somewhat narrower with respect to fictional works, such as
The fair use of a copyrighted work . . . for purposes such as Seinfeld, than to factual works. Because, as a general rule, fair
criticism, comment, news reporting, teaching (including multiple use is more likely to be in factual works than in fictional
copies for classroom use), scholarship, or re- search, is not an works.
infringement of copyright. In determining whether the use made
of a work in any particular case is a fair use the factors to be The copying done in The SAT is not covered by fair use
considered shall include-- because it is more for entertainment than that of a
1. the purpose and character of the use, including whether transformative purpose.
such use is of a com- mercial nature or is for nonprofit The inquiry must focus upon whether "the extent of . . .
educational purposes; copying" is consistent with or more than necessary to further
BASIL MAGUIGAD | GAITA MASANGKAY | KAT NIETO | JO SANTOS | TYN SISON | ALLEN UY
(79) COPYRIGHT || JTS
"the purpose and character of the use." This is because ven
substantial quotations might qualify as fair use in a review of
a published work or a news account of a speech" but not in a
scoop of a soon-to-be-published memoir.). "By focusing on the
amount and substantiality of the original work used by the
secondary user, we gain insight into the purpose and
character of the use as we consider whether the quantity of
the material used was reasonable in relation to the purpose of
the copying.

The SAT's purpose was entertainment, not commentary. Such
an argument has not been advanced on appeal, but if it had
been, it would not disturb our conclusion that, under any fair
reading, The SAT does not serve a critical or otherwise
transformative purpose.

The SAT may usurp the market for derivative works of
the Sienfeld series in relation to trivia books, etc.
Under the final factor, our concern is not whether the
secondary use suppresses or even destroys the market for the
original work or its potential derivatives, but whether the
secon- dary use usurps or substitutes for the market of the
original work. It must also "take account . . . of harm to the
market for derivative works," id., defined as those markets
"that creators of original works would in general develop or
license others to develop."

Unlike parody, criticism, scholarship, news reporting, or other
transformative uses, The SAT substitutes for a derivative
market that a television program copyright owner such as
Castle Rock would in general develop or license others to
develop. Because The SAT borrows exclusively from Seinfeld
and not from any other television or entertainment programs,
The SAT is likely to fill a market niche that Castle Rock would
in general develop.

Copyright law must respect the creative and economic
choice of the copyright owner.
Although Castle Rock has evidence little if any interest in
exploiting this market for derivative works based on Seinfeld,
such as by creating and publishing Seinfeld trivia books, the
copyright law must respect that creative and economic
choice.

Secondary users may not exploit markets that original
copyright owners may exploit.
Just as secondary users may not exploit markets that original
copyright owners would "in general develop or license
others to develop" even if those owners had not actually
done so, copyright owners may not preempt exploitation of
transformative markets, which they would not "in general
develop or license others to develop," by actually developing
or licensing others to develop those markets.

DISPOSITION
Undoubtedly, innumerable books could "expose" the
"nothingness" or otherwise comment upon, criticize, educate
the public about, or research Seinfeld and contemporary
television culture. The SAT, however, is not such a book. For
the reasons set forth above, the judgment of the district court
is affirmed.

BASIL MAGUIGAD | GAITA MASANGKAY | KAT NIETO | JO SANTOS | TYN SISON | ALLEN UY