Arica Institute, Inc. v. Palmer, 770 F. Supp. 188 (S.D.N.Y. 1991)

U.S. District Court for the Southern District of New York - 770 F. Supp. 188 (S.D.N.Y. 1991)
August 5, 1991

770 F. Supp. 188 (1991)

ARICA INSTITUTE, INC., Plaintiff,
v.
Helen PALMER and Harper & Row Publishers, Inc., Defendants.

No. 90 Civ. 5153 (RPP).

United States District Court, S.D. New York.

August 5, 1991.

*189 *190 Frankfurt, Garbus, Klein & Selz, New York City by Arthur J. Ginsburg, for plaintiff.

Schwab Goldberg Price & Dannay, New York City by Richard Dannay, for defendants.

 
OPINION AND ORDER

ROBERT P. PATTERSON, Jr., District Judge.

In an opinion and order dated April 9, 1991 the Court denied plaintiff's motion to enjoin release of the paperback edition of defendants' book The Enneagram in this copyright infringement action. Defendants now move pursuant to Rule 56 of the Federal Rules of Civil Procedure for summary judgment dismissing the complaint which also asserts claims for false designation of origin and common law unfair competition. The parties have asked the Court to decide the motion on the basis of the briefs, affidavits and evidence submitted in connection with the preliminary injunction motion and have waived oral argument. The facts are fully set forth in the Court's prior opinion, Arica Inst., Inc. v. Palmer, 761 F. Supp. 1056 (S.D.N.Y.1991). For the reasons set forth below, defendants' motion is granted.

 
DISCUSSION

Summary judgment is appropriate if the evidence offered demonstrates that there is no genuine issue as to any material fact and the moving party is entitled to judgment as a matter of law. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 106 S. Ct. 2505, 91 L. Ed. 2d 202 (1986). The burden rests on the moving party to demonstrate the absence of a genuine issue of material fact, Adickes v. S.H. Kress & Co., 398 U.S. 144, 157, 90 S. Ct. 1598, 1608, 26 L. Ed. 2d 142 (1970), and the Court must view the facts in the light most favorable to the non-moving party. United States v. Diebold, Inc., 369 U.S. 654, 655, 82 S. Ct. 993, 994, 8 L. Ed. 2d 176 (1962).

 
1. Copyright Infringement

It is undisputed that plaintiff has valid copyrights in its various training manuals, books and journals. To prove infringement, plaintiff must also demonstrate unauthorized copying by the defendant. See Warner Bros. Inc. v. American Broadcasting Cos., 654 F.2d 204, 207 (2d Cir. 1981). Copying may be inferred where a plaintiff establishes that the defendant had access to the copyrighted works and that there is substantial similarity between protected expression in the respective works. Id.

 
a. Access

Access to a copyrighted work may be inferred when the defendant has had a "reasonable opportunity to view" plaintiff's work before creating his or her *191 own work. See Gaste v. Kaiserman, 863 F.2d 1061, 1067 (2d Cir.1988). On a motion for summary judgment, plaintiff must show "`a reasonable possibility of access, not a bare possibility.'" Novak v. National Broadcasting Co., 752 F. Supp. 164, 168 (S.D.N.Y.1990) (quoting Ferguson v. National Broadcasting Co., 584 F.2d 111 (5th Cir.1978)). In other words, a finding of access to plaintiff's work may not be based on speculation or conjecture. See Ferguson, 584 F.2d at 113.

At the hearing, Helen Palmer ("Palmer") testified that she possessed only one of plaintiff's copyrighted works, Interviews with Oscar Ichazo, prior to writing The Enneagram, a guide to understanding human personality based on nine dominant personality types. Palmer has never enrolled in any training session offered by Arica. Arica's Executive Director Elliott Dunderdale testified that certain copyrighted works are not disseminated to the public at all and other works have limited dissemination. Plaintiff has failed to adduce any evidence raising a genuine issue of fact as to access to any work other than Interviews with Oscar Ichazo. See Vantage Point, Inc. v. Parker Bros., Inc., 529 F. Supp. 1204, 1213 (E.D.N.Y.1981), aff'd, 697 F.2d 301 (2d Cir.1982).

 
b. Substantial Similarity

The test of substantial similarity is whether "the ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard [the] aesthetic appeal [of the two works] as the same." Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960). Although substantial similarity is often a factual issue precluding summary judgment, the Second Circuit has recognized that summary judgment may be appropriate in copyright infringement actions "either because the similarity between the two works concerns only `non-copyrightable elements of the plaintiff's work' or because no reasonable jury, properly instructed, could find that the two works are substantially similar." Warner Bros. Inc. v. American Broadcasting Cos., 720 F.2d 231, 240 (2d Cir.1983) (quoting Hoehling v. Universal City Studios, Inc., 618 F.2d 972, 977 (2d Cir.), cert. denied, 449 U.S. 841, 101 S. Ct. 121, 66 L. Ed. 2d 49 (1980)) (citations omitted). See also Walker v. Time Life Films, Inc., 784 F.2d 44, 49 (2d Cir.) (district court may determine noninfringement as a matter of law), cert. denied, 476 U.S. 1159, 106 S. Ct. 2278, 90 L. Ed. 2d 721 (1986).

The Court in its prior opinion found numerous aspects of plaintiff's works uncopyrightable: Ichazo's system of nine ego fixations, the sequence or arrangement of the ego fixations within that system, individual words describing the traits of each ego fixation and the one- and two-word labels for points on the various enneagrams from which the system of ego fixations is derived. Any similarity between Ichazo's works and The Enneagram based on these non-copyrightable elements does not constitute copyright infringement. See Ring v. Estee Lauder, Inc., 874 F.2d 109, 109-10 (2d Cir.1989); Walker v. Time Life Films, Inc., 784 F.2d at 50-51. Accordingly, defendants' motion for summary judgment is granted insofar as plaintiff's infringement claim is based on these non-copyrightable elements. See Warner Bros. Inc., 720 F.2d at 240.

 
i. Interviews with Oscar Ichazo

Plaintiff submitted with its motion for a preliminary injunction a 388-page list of comparisons between text in plaintiff's various works and passages from The Enneagram. The list contains approximately 250 examples of expression allegedly copied from Interviews with Oscar Ichazo. Because Palmer concedes she had access to this work, these comparisons warrant careful scrutiny.

At least 200 of the 250 examples charge that Palmer copied single words such as "anger" or "indecision" from the labels appearing on the five enneagrams depicted in Interviews with Oscar Ichazo. Another 35 comparisons allege that Palmer copied ordinary phrases including "defensive," "personality," "essence," "absence," "false," "emotional life," "holy origin," "to gain love" and "he vacillates." Because neither the one-word enneagram labels nor the words and phrases common to psychological analysis possess the minimal level *192 of creativity necessary for copyright protection, these instances of similarity do not support plaintiff's claim for copyright infringement. See Alexander v. Haley, 460 F. Supp. 40, 46 (S.D.N.Y.1978) ("Words and metaphors are not subject to copyright protection."). See also Salinger v. Random House, Inc., 811 F.2d 90, 98 (2d Cir.) (copyright protects a "sequence of creative expression" but not an ordinary phrase in isolation), reh'g denied, 818 F.2d 252 (2d Cir.), cert. denied, 484 U.S. 890, 108 S. Ct. 213, 98 L. Ed. 2d 177 (1987). Accordingly, defendants' motion for summary judgment is granted insofar as plaintiff's infringement claim is based on similarities between these non-copyrightable elements. See Warner Bros. Inc. v. American Broadcasting Cos., 720 F.2d at 240.

A smaller number of comparisonsfewer than twentyallege that Palmer copied longer passages from Interviews with Oscar Ichazo. Even viewing these comparisons in the light most favorable to the plaintiff, no reasonable jury could find substantial similarity of copyrighted expression:

 
    Interviews with
    Oscar Ichazo                     Palmer, The Enneagram
    "... but he does not             "... by the Nine taking
    take responsibility for          responsibility for
    cultivating his                  finding out what is
    essence."                        really essential in
    (p. 14)                          life." (p. 364)
    "... he feels how far            "... love out of habit
    he is from being able            rather than because the
    to love and act                  feeling is alive."
    authentically."                  (p. 363)
    (p. 14)
    "In the same way, the            "... the ways in which
    remedy for indolence is in       each type opens to
    come way the remedy which        love ..." (p. 9)
    cures all egos  the
    idea of holy love."
    (p. 14)
    "The indolent type goes          "... then it inevitably
    out looking for the love         leads to the sense of
    and meaning he feels             having lost what is most
    deprived of;                     important in life."
    ....                             (p. 353)
    The indolent fixation
    is at the head of the
    enneagon because it
    focuses on the most universal
    aspect of the ego's
    deprivation.... 
    the idea of holy love."
    (p. 14)
    "But in a perverse way,          "... are more aware of
    the seeker is ignorant about     what others want than
    himself. He believes he          they are able to know
    knows all about other            what they want themselves."
    people." (p. 14)                 (p. 129)
    "He believes he knows all        "... see all points of
    about other people...."          view;" (p. 40)
    (p. 14)
                                     "... always know what
                                     other people want ..."
                                     (p. 359)
 
*193
    Interviews with
    Oscar Ichazo                     Palmer, The Enneagram
                                      "... feel themselves
                                        merging into what they
                                        suppose other people
                                        are feeling." (p. 369)
                                      "They report that they can
                                        describe another
                                        person's point of view
                                        far better than their
                                        own." (p. 371)
                                      "The task is to learn to
                                        tell the difference
                                        ... to sense the
                                        condition of
                                        others.... a lifelong
                                        habit of perceiving
                                        others through their
                                        own bodies. Their
                                        habit is to sense
                                        others within
                                        themselves...."
                                        (p. 374)
                                      "Nines are often more able
                                        to describe the
                                        other's feelings than
                                        they are able to
                                        recognize their own."
                                        (p. 361)
                                      "Nines say that it is
                                        for [sic] easier to
                                        know the inner
                                        condition of others
                                        than it is to find a
                                        viewpoint of their
                                        own." (p. 346-47)
                                      "Nines can identify with
                                        other people's
                                        emotional needs,
                                        often feeling
                                        another's dilemma
                                        within themselves."
                                        (p. 362)

Accordingly, defendants' motion for summary judgment is granted as to these passages. See Warner Bros. Inc. v. American Broadcasting Cos., 720 F.2d at 240.

What remains are the following three passages which could be found to exhibit substantial similarity to copyrighted expression:

 
    Arica                          Palmer, The Enneagram
    "In essence ...; there         "In essence we are like
    is no conflict within the      young children: there
    person between head, heart,    is no conflict between
    and stomach...."               our thoughts, our
    (p. 9)                         emotions, or our
                                   instincts."
                                   (p. 18)
*194 Arica Palmer, The Enneagram "A contradiction develops "A contradiction developed between the inner feelings between the child's central of the child and the outer trust of the environment social reality to which he and the family reality, must conform." which must be obeyed." (p. 9) (Id. p. 19) "Personality forms a "From the point of view of defensive layer over the a psychology that includes essence...." a concept of essence, (p. 9) personality develops in order to protect and defend essence from injury in the material world." (p. 19-20)

Defendants may be liable for copyright infringement based on these instances of copying unless the fair use defense, see infra, applies.

 
ii. Training Manuals, Study Manuals, Lectures and the Arican Journal

Apart from Interviews with Oscar Ichazo, plaintiff claims The Enneagram infringes 45 other copyrighted works. Plaintiff has failed, however, to demonstrate either access or substantial similarity as to these works. Many instances of alleged infringement listed in plaintiff's comparisons involve one- and two-word similarities not actionable under the copyright laws because they are based on non-copyrightable elements of plaintiff's works. No reasonable jury could find similarity, let alone substantial similarity, in the remaining comparisons.[1] Accordingly, defendants' motion for summary judgment dismissing all claims of copyright infringement except the claim based on plaintiff's book Interviews with Oscar Ichazo is *195 granted. See Warner Bros. Inc. v. American Broadcasting Cos., 720 F.2d at 240.

 
c. Fair Use

To resolve defendants' motion as to the three passages from Interviews with Oscar Ichazo identified above, the Court must determine whether the use, though unauthorized, was a fair use. Section 107 of the Copyright Act of 1976 provides:

 
Notwithstanding the provisions of section 106, the fair use of a copyrighted work, ... for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include
 
(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
 
(2) the nature of the copyrighted work;
 
(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
 
(4) the effect of the use upon the potential market for or value of the copyrighted work.

17 U.S.C. § 107 (1988).

The Court finds that all of the non-exclusive factors listed in § 107 favor defendants. The purpose and character of The Enneagram can be described as a combination of comment, criticism, scholarship and research. For this reason, the first factor favors defendants. See Maxtone-Graham v. Burtchaell, 803 F.2d 1253, 1260-62 (2d Cir.1986), cert. denied, 481 U.S. 1059, 107 S. Ct. 2201, 95 L. Ed. 2d 856 (1987). Whether or not a work is published is critical to its nature under the second fair use factor because "the scope of fair use is narrower with respect to unpublished works." Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 564, 105 S. Ct. 2218, 2232, 85 L. Ed. 2d 588 (1985). Because Interviews with Oscar Ichazo is a published work, the second fair use factor also tips in defendants' favor.

The third fair use factor the amount and substantiality used favors defendants because the three passages listed above constitute a minor if not minuscule portion of the 181-page Interviews with Oscar Ichazo and cannot be said to comprise the qualitative "heart" of the work. Cf. Harper & Row, 471 U.S. at 564-65, 105 S. Ct. at 2232-33. In the quoted passages, Ichazo is responding to questions relating to his theory of personal fulfillment. The book as a whole more broadly describes Ichazo's life and experiences and the purpose of Arica as a mystical school.

The Supreme Court has deemed the fourth fair use factor the effect of the use upon the potential market for or value of the copyrighted work the single most important element of fair use. Id. at 566, 105 S. Ct. at 2233. In general, if a defendant's use is for commercial gain, the likelihood of impairment to the market value of plaintiff's work may be presumed. See Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417, 451, 104 S. Ct. 774, 793, 78 L. Ed. 2d 574 (1984). However, because fair use is an equitable rule of reason and each case must be decided on its own facts, Harper & Row, 471 U.S. at 560, 105 S. Ct. at 2230, the Court finds that the fourth factor favors defendants Helen Palmer and HarperCollins. The Court rejects plaintiff's argument that Palmer's imperfect exposition of Ichazo's ideas, only three minor passages of which are actionable, will create confusion and cause a loss of revenue to plaintiff. Publication of the paperback edition of The Enneagram will not impair either the value of or the potential market for Interviews with Oscar Ichazo. The books cover different topics and appeal to different readers. Plaintiff's book is in the nature of a biography while The Enneagram is more of a psychological self-help tool. Rejecting the fair use defense in this case would stifle the very creativity the copyright laws are designed *196 to foster. Accordingly, defendants' motion for summary judgment dismissing Count 1 of the complaint is granted. See Maxtone-Graham v. Burtchaell, 803 F.2d at 1260-65 (fair use defense properly sustained as a matter of law).

 
2. False Designation of Origin and Common Law Unfair Competition/Palming Off

Count 2 of the complaint alleges:

 
21. Defendants have caused and are causing goods, namely the Infringing Work, to enter into interstate commerce with the following false designations and representations connected therewith:
 
(a) The Infringing Work includes the subtitle "The Definitive Guide to the Ancient System [of the Enneagram] for Understanding Yourself and Others In Your Life", when in fact the "system" described in The Infringing Work is not an ancient system but instead was created solely by Oscar Ichazo in the 1960's.
 
(b) Defendants have promoted the Infringing Work by describing Palmer as the leading teacher and practitioner of the system described in The Infringing Work when, in fact, Arica and its founder Oscar Ichazo are the source of all information concerning the system described in the Infringing Work.

Thus, in Count 2, plaintiff claims these alleged misrepresentations are likely to cause confusion among the purchasing public in violation of § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). In Count 3 of the complaint, plaintiff charges defendants with common law unfair competition and palming off. "Palming off" is an attempt by one person to induce customers to believe that his or her product is actually that of another. See Ralston Purina Co. v. Thomas J. Lipton, Inc., 341 F. Supp. 129, 135 (S.D.N.Y.1972). In both Counts 2 and 3, proof of likelihood of confusion is essential for plaintiff to prevail. See Wonder Labs, Inc. v. Procter & Gamble Co., 728 F. Supp. 1058, 1064 (S.D.N.Y.1990).

The paperback version of The Enneagram contains a one-page notice at the beginning of the book which reads in part:

 
Arica Institute Press is the publisher of numerous books and other publications written by Oscar Ichazo that describe Mr. Ichazo's theories of the "enneagons." Ms. Palmer has developed theories about the use of the enneagram in understanding human personality and its relationship to aspects of higher awareness that are different and distinct from those expounded by Mr. Ichazo. Neither Helen Palmer nor HarperCollins is affiliated with Arica Institute, Inc., nor has this book been endorsed or authorized by Arica Institute, Inc. or by Mr. Ichazo.[2]

Disclaimers are a favored method of alleviating consumer confusion as to source or sponsorship. Consumers Union of United States, Inc. v. General Signal Corp., 724 F.2d 1044, 1053 (2d Cir.1983), reh'g denied, 730 F.2d 47 (2d Cir.), cert. denied, 469 U.S. 823, 105 S. Ct. 100, 83 L. Ed. 2d 45 (1984). But see Home Box Office, Inc. v. Showtime/The Movie Channel Inc., 832 F.2d 1311, 1315-17 (2d Cir.1987) ("heavy burden" on defendant to demonstrate effectiveness of disclaimer). Palmer's disclaimer is prominent and discloses the competitive relationship, if any, between the parties in a unambiguous manner. Cf. Rossner v. CBS, Inc., 612 F. Supp. 334, 340 (S.D.N.Y.1985). In addition, as long as the defendant has taken reasonable precautions to distinguish its product from that of plaintiff, a finding of palming off will not be justified. Ralston Purina, 341 F. Supp. at 135. On this record, plaintiff has made no showing of likelihood of confusion raising a triable issue of fact. Accordingly, defendants' motion for summary judgment *197 on Counts 2 and 3 of the complaint is granted. This case is ordered closed.

IT IS SO ORDERED.

NOTES

[1] Several examples were listed in the Court's prior opinion. Other examples include:

 
    Arica                           Palmer, The Enneagram
    "They make a pretense of        "[Ones] learned to
    perfection. There is a          monitor themselves
    fear of being seen in their     severely in order to
    imperfection."                  avoid making mistakes
    (Three Month Training           that would come to other
    manual, p. 155)                 people's attention."
                                    (p. 72)
    "Laziness is with the           "Most Nines have an
    passion of finding always       elaborate repertoire of
    justifications for being        ways in which they can
    asleep. It is a passion         forget their real
    that don't want to change.      priorities, and they can
    He will defend his laziness     be fiercely defensive about
    ... with justifications."       giving them up."
    (Lecture # 45A, p. 6)           (p. 352)
    "The fixation doesn't take
    care of the essence, always
    forgets it."
    (Three Month Manual, p. 155)

[2] In the text of The Enneagram, Palmer has always acknowledged Oscar Ichazo's contributions to enneagram theory.