The opinion of the court was delivered by: JONES
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 defendants
(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.
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.
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].
III. PROBABILITY OF SUCCESS ON THE MERITS
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, 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.
1. Commonalities in Protected Expression
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, 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 stripes. The eyes are closed, inverted semi-circles; eyelashes are depicted in each with a few simple downward strokes. The ears are rounded with a single cavity. The feet slope unnaturally long and flat.
Exhibit 2 compares the famous cover of The Cat in the Hat with the back cover of The Cat Not in the Hat. The stove-pipe hat is again a commonality. The characters stand identically composed with long necks, narrow shoulders, and interlinked hands placed above a slightly paunchy belly. Both bear a vaguely mischievous expression formed by upraised eyebrows and a closed-lip smile, the smile created with a single upturned line and two small circles at either edge. The eyes are ovals, pupils depicted by small horseshoe-like semicircles within.
Exhibit 3 compares two illustrations from Horton Hatches the Egg with a page 31 of Penguin's work. Defendant's "Kato" shares Horton's smile, eyes, and upraised eyebrows. The bird depicted in Defendant's work shares Maysie Bird's tail of two ribbons; her upturned beak, closed eyes and silly smile; her downturned wings; the fold of her legs; the straight-line sketches at rear; and her flight pattern.
Exhibit 4 compares an illustration of Green Eggs and Ham with page 8 of Penguin's book. The only commonality the Court notices is the existence of a platter in both illustrations.
Exhibit 5 compares an illustration from How the Grinch Stole Christmas with an illustration from page 40 of Penguin's book. Both illustrations depict a chorus. However, Penguin's illustration, while it evokes the chorus in the Dr. Seuss original, does not seem to actually lift from the original.
Exhibit 6 compares another illustration from How the Grinch Stole Christmas with pages 27-28 of Penguin's book. In the original the Grinch trumpets through a large horn, while in Penguin's version a dog barks through an even larger horn. The Grinch and the dog bear no similarity. The horn is also rather differently depicted. Amplification depicted by straight lines emanating from a horn is a stock device. The Court finds no similarities of protectable expression in these works.
Exhibit 7 compares an illustration from The Sneetches with pages 19-20 of Penguin's book. Both depict the idea of entering and exiting a large machine. However, the machine is different, the creatures are different, and the setting is different. The idea of a whacky transformative machine may not be protected. The Court finds no improper appropriation evidenced in these works.
In sum, while the illustrations in Exhibits 4-7 do not show significant similarities, Exhibits 1-3 do evidence significant similarities.
2. Evidence that the Commonalities Arose through Copying
Copying is a question of fact that call for any evidence that would the trier of fact to conclude that discovered similarities in protected expression arose not from independent creation but from copying. Copying generally must be inferred from circumstantial evidence. Such evidence might consist of a showing of defendant's actual or likely access to the copyrighted work and similarities between the copyrighted work and the defendant's work; or a strong showing of similarities alone, without proof of access; or even from telling dissimilarities that betray the plagiarist's attempt to hide his tracks. Arnstein v. Porter, 154 F.2d 464, 468 (2d Cir. 1946) ("Of course, if there are no similarities, no amount of evidence of access will suffice to prove copying. If there is evidence of access and similarities exist, then the trier of facts must determine whether the similarities are sufficient to prove copying. . . . If evidence of access is absent, the similarities must be so striking as to preclude the possibility that plaintiff and defendant independently arrived at the same result."); Concord Fabrics, Inc. v. Marcus Bros. Textile Corp., 409 F.2d 1315, 1316 (2d Cir. 1969) ("We feel that the very nature of these differences only tends to emphasize the extent to which the defendant has deliberately copied the plaintiff.").
Defendant Katz has admitted that "the style of the illustrations and lettering used in [The Cat Not in the Hat!] were inspired by [The Cat in the Hat], " Decl. of Alan Katz in Opp. to Mot. for Prelim. Inj., P 9, and that in writing certain couplets, he "drew from" One fish two fish red fish blue fish. Decl. of Alan Katz in Supp. of Mot. for Reconsideration, P 5. These admissions alone are probably sufficient to permit a jury finding that protected elements of Dr. Seuss's text and illustrations found in Penguin's book got there through copying and not coincidence.
In addition, the declarations attached to Dr. Seuss's papers state what is common knowledge, that Dr. Seuss books fill libraries and bookstores worldwide. Thus it is quite likely that both Katz as writer and Wrinn as illustrator had access to Dr. Seuss's works.
Similarities are also rather clear. This is an intentional parody of the original, quite deliberately appropriating the most distinctive elements. Penguin's book mimics the illustration and rhyming style of Dr. Seuss. Although these elements are not copyrightable, they are relevant to whether copying took place. Beyond these general similarities, the similarities of protected ...