Dr. Seuss Enterprises v. Penguin Books USA, Inc.

• Decision Date: 29 April 1996
• Docket Number: No. 96-0302 J (RBB).,96-0302 J (RBB).
• Citation: 924 F. Supp. 1559
• Parties: DR. SEUSS ENTERPRISES, L.P., a California limited partnership, Plaintiff, v. PENGUIN BOOKS USA, INC., a corporation; Dove, Inc., a corporation; Dove II, Inc., a corporation, Michael Viner, an individual; Alan Katz, an individual; and Chris Wrinn, an individual, Defendants.
• Court: U.S. District Court — Southern District of California

924 F. Supp. 1559

DR. SEUSS ENTERPRISES, L.P., a California limited partnership, Plaintiff, v. PENGUIN BOOKS USA, INC., a corporation; Dove, Inc., a corporation; Dove II, Inc., a corporation, Michael Viner, an individual; Alan Katz, an individual; and Chris Wrinn, an individual, Defendants.

No. 96-0302 J (RBB).

United States District Court, S.D. California.

April 29, 1996.

COPYRIGHT MATERIAL OMITTED

Gray, Cary, Ware and Freidenrich, San Diego, CA, for Dr. Seuss Enterprises, L.P.

Vincent Cox, Gary M. Grossenbacher, Leopold, Petrich and Smith, Los Angeles, CA, for Penguin Books USA, Inc., Dove Audio Inc.

ORDER MODIFYING PRELIMINARY INJUNCTION

JONES, District Judge.

I. INTRODUCTION

Defendant Alan Katz conceived and wrote The Cat Not in the Hat! A Parody by Dr. Juice, a work poised to supply a "fresh new look" at the O.J. Simpson double-murder trial. Katz's rhymes, the illustrations provided by Chris Wrinn, and the book's packaging by the manufacturer defendants¹ (the individual and corporate defendants are referred to collectively hereinafter as "Penguin") mimic the distinctive style of the family of works created by Theodor S. Geisel, better known as Dr. Seuss.²

Dr. Seuss's works are designed to hold a child's interest through playful rhymes and illustrations which describe and depict extremely fanciful creatures and situations. Penguin's book appears to wander through Dr. Seuss's works, picking up an illustration here, a rhyme there, to create a "wickedly clever" "Dr. Juice" "who tells the whole story of the O.J. Simpson double-murder trial in rhyming verse and sketches as witty as Theodore sic Geisel's best." See Exhibit 8.

Dr. Seuss's complaint alleges that Penguin's work takes substantial protected elements of Dr. Seuss's copyrighted works; that it uses six unregistered and one registered Dr. Seuss trademarks; and that it dilutes the distinctive quality of these famous marks. Accordingly, Dr. Seuss brings suit under the enforcement provisions of copyright code, 17 U.S.C. §§ 501-02; the Lanham Act, 15 U.S.C. § 1125(a); and the Federal Trademark Dilution Act of 1995, 15 U.S.C. § 1125(c)(1). Penguin does not contest Dr. Seuss's allegations that it relied upon Dr. Seuss's books in creating its own, but rather argues that its use was non-infringing.

The Court's Order Granting Preliminary Injunction found a strong likelihood that Penguin had taken substantial protected expression from the copyrighted works The Cat in the Hat, Horton Hatches the Egg, and One fish two fish red fish blue fish, and that Dr. Seuss would prevail at trial against Penguin's fair use defense. The Court found that the trademark claim raised serious questions presenting a fair ground for litigation, and that the balance of hardships favored Dr. Seuss. The Court did not find a reasonable likelihood of success on the dilution claim.

On the basis of newly discovered evidence and arguments reasonably omitted at the preliminary injunction hearing, Penguin requested reconsideration of the findings of fact and conclusions of law in that Order. Dr. Seuss requested that the activities enjoined be broadened to reflect the Court's findings of fact. Finding merit in both requests, the Court substitutes this Order and modifies its findings of fact and conclusions of law as indicated herein.

The Court still finds a strong likelihood of success on the claim that Penguin took substantial protected expression from The Cat in the Hat, and that it will prevail at trial against a fair use defense. The Court does not find a strong likelihood of success on the copyright claims based on the works One fish two fish red fish blue fish and Horton Hatches the Egg. The trademark and dilution findings remain unchanged. The finding of a strong likelihood of success on the copyright claim raises a presumption of irreparable harm. This alone entitles Dr. Seuss to an injunction. The finding that the trademark claims present serious questions for litigation, coupled with the finding that the balance of hardships tips markedly in Dr. Seuss's favor presents an independent ground for granting an injunction. Accordingly, the injunction shall continue as modified until the conclusion of the trial on the merits.

II. STANDARD GOVERNING PRELIMINARY INJUNCTIONS

Courts within the Ninth Circuit may issue a preliminary injunction if the following standard is met.

To obtain a preliminary injunction, the moving party must show either (1) a combination of probable success on the merits and the possibility of irreparable injury or (2) that serious questions are raised and the balance of hardships tips sharply in its favor. These formulations are not different tests but represent two points on a sliding scale in which the degree of irreparable harm increases as the probability of success on the merits decreases. Under either formulation, the moving party must demonstrate a significant threat of irreparable injury, irrespective of the magnitude of the injury.

Big Country Foods, Inc. v. Board of Education, 868 F.2d 1085, 1088 (9th Cir.1989) (internal citations omitted). The plaintiff's burden of showing a likelihood of success on the merits includes the burden of showing a likelihood that it would prevail against any affirmative defenses raised by the defendant. Atari Games Corp. v. Nintendo of America Inc., 975 F.2d 832, 837 (Fed.Cir.1992) (citing Gutierrez v. Municipal Court of the Southeast Judicial District, County of Los Angeles, 838 F.2d 1031, 1038-45 (9th Cir.1988) (Title VII claim)).

The exigencies of preliminary relief often prevent the movant from procuring supporting evidence in a form that would meet Rule 56(e)'s requirement of evidence admissible at trial. Such evidence may yet be considered by the court, which has discretion to weight the evidence as required to reflect its reliability. See 11A Charles Alan Wright et al., Federal Practice and Procedure § 2949 at 215-18 (1995) hereinafter Wright.

Whether it grants or denies the application for a preliminary injunction, Rule 52(a) requires that the court "set forth the findings of fact and conclusions of law which constitute the grounds for its action." Fed. R.Civ.P. 52(a) ("In granting or refusing interlocutory injunctions the court shall similarly set forth the findings of fact and conclusions of law which constitute the grounds of its action."). If the Court decides to grant the application, the order should provide sufficient detail that a reasonable person would be able to read the order alone to determine exactly what is proscribed and why. Fed. R.Civ.P. 65(d) ("Every order granting an injunction and every restraining order shall set forth the reasons for its issuance; shall be specific in its terms; shall describe in reasonable detail, and not by reference to the complaint or other document, the act or acts sought to be restrained."); 11A Wright, at § 2955, at 308-09.

III. PROBABILITY OF SUCCESS ON THE MERITS

A. Copyright Claim

To prove copyright infringement, the plaintiff must show "(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original." Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 1296, 113 L.Ed.2d 358 (1991). As the Supreme Court's phrasing of the standard implies, the copyright laws do not forbid all copying, but only that copying that appropriates protected elements of a copyrighted work. Sid & Marty Krofft Tel. Prods., Inc. v. McDonald's Corp., 562 F.2d 1157, 1165 (9th Cir.1977) ("To constitute an infringement, the copying must reach the point of unlawful appropriation, or the copying of the protected expression itself.") (internal quotation marks omitted). A finding of infringement therefore consists of three sub-parts: (1) that the defendant's work shares protected elements of the plaintiff's work; (2) that the commonalities arise not from independent creation but from copying; and (3) that the plaintiff owns a valid copyright in the work.³

1. Commonalities in Protected Expression

a. Similarities in Text

The Dr. Seuss work One fish two fish red fish blue fish begins in exactly that manner: "One fish/two fish/red fish/blue fish." In the Defendant's work we find the passage "One knife?/Two knife?/Red knife/Dead wife." The recurring theme of Horton Hatches the Egg is "And I said what I meant .../An elephant's faithful/One hundred per cent!" Defendant's work contains the passage "He said what he meant/A houseguest is faithful/One hundred percent."

The Dr. Seuss passages that bear such a striking similarity to those of "Dr. Juice" certainly contain sufficient originality to qualify as protected expression. In the first passage, Dr. Seuss creates a pleasing rhythm and whimsical effect through the use of two perfectly rhyming, monometric couplets, unified by epistrophe. His use of these literary devices represents several significant expressive choices protected by copyright, and appropriated in their entirety in the infringing work. Cf. Feist, 499 U.S. at 357-59, 111 S.Ct. at 1294 (copyright protects those elements of the work that owe their origin to the author, including, in the case of factual works, original decisions as to the selection, coordination, and arrangement of facts). The dissimilarities between the works — the punctuation and capitalization; the absence of Dr. Seuss's use of assonance between the first word of the second and fourth lines; the loss of the epistrophe in the fourth — probably owe more to the storytelling requirements of the satire than any creative decisions by Defendant Katz. Again, in the second passage, Dr. Seuss's choices as to stanza type (tercet), rhyme (masculine perfect), assonance, and accent are all protectable and all appropriated.

b. Similarities in Illustrations

Exhibit 1 compares a drawing of the character the Cat in the Hat with the cover art of Defendant's book. The hat in both works is a stove-pipe hat with five thick alternately dark and light...