Castle Rock Entm’t, Inc. v. Carol Publ’g Grp., Inc., 150 F. 3d 132 (2d Cir. 1998).
Castle Rock Entertainment Inc. (Castle Rock) is the producer and copyright holder of the television series Seinfeld. Carol Publishing Group (Carol) published a trivia book, the Seinfeld Aptitude Test (“SAT”) containing 643 questions and answers about the events and characters in Seinfeld, written by Beth Golub. The SAT was based upon 84 Seinfeld episodes. Golub created the incorrect answers but the fictional facts from Seinfeld and dialogues were used throughout the book without Castle Rock’s approval or license. Castle Rock sued Carol for copyright and trademark infringement. The court held that Carol infringed Castle Rock’s copyrights in Seinfeld and that fair use did not apply.
While discussing fair use, the court made clear that the right to prepare derivative works belongs to the initial creator even when the creator has not yet entered (or does not plan to enter) the derivative market:
“[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…. Although Castle Rock has evidenced little if any interest in exploiting this market for derivative works based on Seinfeld, such as by creating and publishing Seinfeld trivia books (or at least trivia books that endeavour to satisfy the between-episode cravings of Seinfeld lovers), the copyright law must respect that creative and economic choice. It would not serve the ends of the Copyright Act – i.e., to advance the arts – if artists were denied their monopoly over derivative versions of their creative works merely because they made the artistic decision not to saturate those markets with variations of their original.”
Law in Style. 