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

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

109 F.3d 1394

United States Court of Appeals,
Ninth Circuit

March 27, 1997

OPINION

O'SCANNLAIN, Circuit Judge:

We must decide whether a poetic account of the O.J. Simpson double murder trial entitled The Cat NOT in the Hat! A Parody by Dr. Juice, presents a sufficient showing of copyright and trademark infringement of the well-known The Cat in the Hat by Dr. Seuss.

Penguin Books USA, Inc. ("Penguin") and Dove Audio, Inc. ("Dove") . . . appeal the district court's preliminary injunction prohibiting the publication and distribution of The Cat NOT in the Hat! A Parody by Dr. Juice, a rhyming summary of highlights from the O.J. Simpson double murder trial, as violating copyrights and trademarks owned by Dr. Seuss Enterprises, L.P. ("Seuss"), particularly from the book The Cat in the Hat.

. . .

In The Cat in the Hat, first published in 1957, [Theodor] Geisel [known as "Dr. Seuss"] created a mischievous but well meaning character, the Cat, who continues to be among the most famous and well recognized of the Dr. Seuss creations. The Cat is almost always depicted with his distinctive scrunched and somewhat shabby red and white stove-pipe hat. Seuss owns the common law trademark rights to the words "Dr. Seuss" and "Cat in the Hat," as well as the character illustration of the Cat's stove-pipe hat. Seuss also owns the copyright registrations for the books The Cat in the Hat, The Cat in the Hat Comes Back, The Cat in the Hat Beginner Book Dictionary, The Cat in the Hat Songbook, and The Cat's Quizzer. In addition, Seuss has trademark registrations for the marks currently pending with the United States Trademark Office. Seuss has licensed the Dr. Seuss marks, including The Cat in the Hat character, for use on clothing, in interactive software, and in a theme park.

In 1995, Alan Katz and Chris Wrinn, respectively, wrote and illustrated The Cat NOT in the Hat! satirizing the O.J. Simpson double murder trial. Penguin and Dove, the publishers and distributors, were not licensed or authorized to use any of the works, characters or illustrations owned by Seuss. They also did not seek permission from Seuss to use these properties.

Seuss filed a complaint for copyright and trademark infringement, an application for a temporary restraining order and a preliminary injunction . . . after seeing an advertisement promoting The Cat NOT in the Hat! prior to its publication. The advertisement declared:

Wickedly clever author "Dr. Juice" gives the O.J. Simpson trial a very fresh new look. From Brentwood to the Los Angeles County Courthouse to Marcia Clark and the Dream Team. The Cat Not in the Hat tells the whole story in rhyming verse and sketches as witty as Theodore [sic] Geisel's best. This is one parody that really packs a punch!

. . .

We must first determine whether The Cat NOT in the Hat! infringes on Seuss' rights under the Copyright Act of 1976 . . . . . . . Seuss alleges that Penguin and Dove made an unauthorized derivative work of the copyrighted works The Cat in the Hat, The Cat in the Hat Comes Back, The Cat's Quizzer, The Cat in the Hat Beginner Books Dictionary, and The Cat in the Hat's Song Book . . . .

. . .

III

Even if Seuss establishes a strong showing of copyright infringement . . ., Penguin and Dove maintain that the taking would be excused as a parody under the fair use doctrine. . . .

. . .

The first factor in a fair use inquiry is "the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes." . . . Under this factor, the inquiry is whether The Cat NOT in the Hat! merely supersedes the Dr. Seuss creations, or whether and to what extent the new work is "transformative," i.e., altering The Cat in the Hat with new expression, meaning or message.

Parody is regarded as a form of social and literary criticism, having a socially significant value as free speech under the First Amendment. This court has adopted the "conjure up" test where the parodist is permitted a fair use of a copyrighted work if it takes no more than is necessary to "recall" or "conjure up" the object of his parody. . . . Accordingly, the critical issue under this factor is whether The Cat NOT in the Hat! is a parody . . . .

We first examine the definition of parody.⁷ The parties disagree over the appropriate interpretation of Acuff-Rose's holding with respect to the definition of parody under the fair use exception. The Supreme Court of the United States in the Acuff-Rose case held that a rap group's version of Ray Orbison's song "Oh, Pretty Woman" was a candidate for a parody fair use defense.⁸ Justice Souter, the opinion's author, defined parody:

For the purposes of copyright law, the nub of the definitions, and the heart of any parodist's claim to quote from existing material, is the use of some elements of a prior author's composition to create a new one that, at least in part, comments on that author's works. . . . If, on the contrary, the commentary has no critical bearing on the substance or style of the original composition, which the alleged infringer merely uses to get attention or to avoid the drudgery in working up something fresh, the claim to fairness in borrowing from another's work diminishes accordingly (if it does not vanish), and other factors, like the extent of its commerciality, loom larger.

Id. at 580 (citations omitted). The Court pointed out the difference between parody (in which the copyrighted work is the target) and satire (in which the copyrighted work is merely a vehicle to poke fun at another target): "Parody needs to mimic an original to make its point, and so has some claim to use the creation of its victim's (or collective victims') imagination, whereas satire can stand on its own two feet and so requires justification for the very act of borrowing." Id. As Justice Kennedy put it in his concurrence: "The parody must target the original, and not just its general style, the genre of art to which it belongs, or society as a whole (although if it targets the original, it may target those features as well)." Id. at 597. The Second Circuit in Rogers v. Koons, 960 F.2d 301, 310 (2d Cir.1992), also emphasized that unless the plaintiff's copyrighted work is at least in part the target of the defendant's satire, then the defendant's work is not a "parody" in the legal sense:

It is the rule in this Circuit that though the satire need not be only of the copied work and may . . . also be a parody of modern society, the copied work must be, at least in part, an object of the parody, otherwise there would be no need to conjure up the original work. . . . By requiring that the copied work be an object of the parody, we merely insist that the audience be aware that underlying the parody there is an original and separate expression, attributable to a different artist.

Similarly, the American Heritage Dictionary defines "parody" as a "literary or artistic work that broadly mimics an author's characteristic style and holds it up to ridicule."

We now turn our attention to The Cat NOT in the Hat! itself. The first two pages present a view of Los Angeles, with particular emphasis on the connection with Brentwood, given the depiction of the news camera lights. The story begins as follows:

A happy town
Inside L.A.
Where rich folks play
The day away.
But under the moon
The 12th of June.
Two victims flail
Assault! Assail!
Somebody will go to jail!
Who will it be?
Oh my! Oh me!

The third page reads: "One Knife? / Two Knife? / Red Knife / Dead Wife." This stanza no doubt mimics the first poem in Dr. Seuss' One Fish Two Fish Red Fish Blue Fish: "One fish / two fish / red fish / blue fish. Black fish / blue fish / old fish / new fish." For the next eighteen pages, Katz writes about Simpson's trip to Chicago, the noise outside Kato Kaelin's room, the bloody glove found by Mark Fuhrman, the Bronco chase, the booking, the hiring of lawyers, the assignment of Judge Ito, the talk show interest, the comment on DNA, and the selection of a jury. On the hiring of lawyers for Simpson, Katz writes:

A plea went out to Rob Shapiro
Can you save the fallen hero?
And Marcia Clark, hooray, hooray
Was called in with a justice play.
A man this famous
Never hires
Lawyers like
Jacoby-Meyers.
When you're accused of a killing scheme
You need to build a real Dream Team.
Cochran! Cochran!
Doodle-doo
Johnnie, won't you join the crew?
Cochran! Cochran!
Deedle-dee
The Dream Team needs a victory.

These stanzas and the illustrations simply retell the Simpson tale. Although The Cat NOT in the Hat! does broadly mimic Dr. Seuss' characteristic style, it does not hold his style up to ridicule. The stanzas have "no critical bearing on the substance or style of" The Cat in the Hat. Katz and Wrinn merely use the Cat's stove-pipe hat, the narrator ("Dr.Juice"), and the title (The Cat NOT in the Hat! ) "to get attention" or maybe even "to avoid the drudgery in working up something fresh." Acuff-Rose, 510 U.S. at 580. While Simpson is depicted 13 times in the Cat's distinctively scrunched and somewhat shabby red and white stove-pipe hat, the substance and content of The Cat in the Hat is not conjured up by the focus on the Brown-Goldman murders or the O.J. Simpson trial. Because there is no effort to create a transformative work with "new expression, meaning, or message," the infringing work's commercial use further cuts against the fair use defense.⁹ Id. at 578.

The second statutory factor, "the nature of the copyrighted work," ' 107(2), recognizes that creative works are "closer to the core of intended copyright protection" than informational and functional works, "with the consequence that fair use is more difficult to establish when the former works are copied." Acuff-Rose, 510 U.S. at 586. While this factor typically has not been terribly significant in the overall fair use balancing, the creativity, imagination and originality embodied in The Cat in the Hat and its central character tilts the scale against fair use.

The third factor asks whether "the amount and substantiality of the portion used in relation to the copyrighted work as a whole," ' 107(3), are reasonable in relation to the purpose of the copying. This factor really raises the question of substantial similarity discussed in the preceding section, rather than whether the use is "fair." The district court concluded that "The Cat in the Hat" is the central character, appearing in nearly every image of The Cat in the Hat. Penguin and Dove appropriated the Cat's image, copying the Cat's Hat and using the image on the front and back covers and in the text (13 times). We have no doubt that the Cat's image is the highly expressive core of Dr. Seuss' work.

Under this factor, we also turn our attention "to the persuasiveness of a parodist's justification for the particular copying done, and the enquiry will harken back to the first of the statutory factors, for, as in prior cases, we recognize that the extent of permissible copying varies with the purpose and character of the use." Acuff-Rose, 510 U.S. at 586. Katz and Wrinn insist that they selected The Cat in the Hat as the vehicle for their parody because of the similarities between the two stories: Nicole Brown and Ronald Goldman were surprised by a "Cat" (O.J.Simpson) who committed acts contrary to moral and legal authority. The prosecution of Simpson created a horrible mess, in which the defense team seemed to impose "tricks" on an unwilling public, resulting in a verdict that a substantial segment of the public regarded as astonishing. Just as The Cat in the Hat ends with the moral dilemma of whether the children should tell their mother about their visitor that afternoon, Katz and Wrinn maintain that The Cat NOT in the Hat! ends with a similar moral dilemma:

JUICE
+ST
JUSTICE
Hmm ... take the word JUICE.
Then add ST.
Between the U and I, you see.
And then you have JUSTICE.
Or maybe you don't.
Maybe we will.
And maybe we won't.
Cause if the Cat didn't do it?
Then who? Then who?
Was it him?
Was it her?
Was it me?
Was it you?
Oh me! Oh my!
Oh my! Oh me!
The murderer is running free.

In their Opening Brief, Penguin and Dove characterize The Cat NOT in the Hat! ("Parody") as follows:

The Parody is a commentary about the events surrounding the Brown/Goldman murders and the O.J. Simpson trial, in the form of a Dr. Seuss parody that transposes the childish style and moral content of the classic works of Dr. Seuss to the world of adult concerns. The Parody's author felt that, by evoking the world of The Cat in the Hat, he could: (1) comment on the mix of frivolousness and moral gravity that characterized the culture's reaction to the events surrounding the Brown/Goldman murders, (2) parody the mix of whimsy and moral dilemma created by Seuss works such as The Cat in the Hat in a way that implied that the work was too limited to conceive the possibility of a real trickster "cat" who creates mayhem along with his friends Thing 1 and Thing 2, and then magically cleans it up at the end, leaving a moral dilemma in his wake.

We completely agree with the district court that Penguin and Dove's fair use defense is "pure shtick" and that their post-hoc characterization of the work is "completely unconvincing."

The fourth fair use factor is "the effect of the use upon the potential market for or value of the copyrighted work." ' 107(4). Under this factor, we consider both the extent of market harm caused by the publication and distribution of The Cat NOT in the Hat! and whether unrestricted and widespread dissemination would hurt the potential market for the original and derivatives of The Cat in the Hat. The Second Circuit has characterized this factor as calling for the striking of a balance "between the benefit the public will derive if the use is permitted and the personal gain the copyright owner will receive if the use is denied. The less adverse effect that an alleged infringing use has on the copyright owner's expectation of gain, the less public benefit need be shown to justify the use." MCA, Inc. v. Wilson, 677 F.2d 180, 183 (2d Cir.1981) (citations omitted). The good will and reputation associated with Dr. Seuss' work is substantial. Because, on the facts presented, Penguin and Dove's use of The Cat in the Hat original was nontransformative, and admittedly commercial, we conclude that market substitution is at least more certain, and market harm may be more readily inferred.

Since fair use is an affirmative defense, Penguin and Dove must bring forward favorable evidence about relevant markets. Given their failure to submit evidence on this point, instead confining "themselves to uncontroverted submissions that there was no likely effect on the market for the original," we conclude that "it is impossible to deal with the fourth factor except by recognizing that a silent record on an important factor bearing on fair use disentitle[s] the proponent of the defense," Penguin and Dove, to relief from the preliminary injunction. Acuff-Rose, 510 U.S. at 590-594.

In light of the fair use analysis, we conclude that the district court's finding that Seuss showed a likelihood of success on the merits of the copyright claim was not clearly erroneous . . . .

. . .

For the foregoing reasons, we affirm the district court's order granting a preliminary injunction prohibiting the publication and distribution of the infringing work.

AFFIRMED.

⁷ Because debate still surrounds the proper definition of parody following Acuff-Rose, we briefly explore the word itself for guidance. Parody is one of four types of satire: diatribe, narrative, parody and burlesque. Highet, The Anatomy of Satire 13-14 (1962). The term has as its etymology the word "parodia" with the literal translation of "a song sung beside something."

⁸ Our analysis does not take into account whether The Cat NOT in the Hat! is in good or bad taste. As Justice Holmes explained, "[i]t would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of [a work], outside of the narrowest and most obvious limits." Acuff-Rose, 510 U.S. at 582 (quoting Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 251 (1903)).

⁹ Penguin and Dove emphasize that the Court in Acuff-Rose held that it was error to rule that the commercial, profit-making nature of the defendant's exploitation created a presumption of no fair use defense, overshadowing the other factors to be weighed as to fair use. We agree. However, the district court's problem with the fair use defense on these facts was not with the commercial nature of the accused work. The court found that The Cat NOT in the Hat! was not entitled to a parody fair use defense because it failed to target the original work.