Dr. Seuss Enters., L.P. v. Penguin Books USA, Inc. - 109 F.3d 1394 (9th Cir. 1997)

Rule:

The eight-factor Sleekcraft test is used to analyze the likelihood of confusion question in all trademark infringement cases, both competitive and non-competitive. The eight factors are as follows: (1) strength of the mark, (2) proximity of the goods, (3) similarity of the marks, (4) evidence of actual confusion, (5) marketing channels used, (6) type of goods and the degree of care likely to be exercised by the purchaser, (7) defendant's intent in selecting the mark, (8) likelihood of expansion of the product lines. These factors are helpful guidelines not meant to be requirements or hoops that a district court need jump through to make the determination.

Facts:

Plaintiff, Dr. Seuss Enterprises, L.P., owned most of the trademarks and copyrights to the works of the late Theodor S. Geisel, the author and illustrator of the famous children’s educational books written under the pseudonym “Dr. Seuss.” In 1957, Geisel published the book The Cat in the Hat. 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. Defendants Penguin Books USA, Inc. ("Penguin") and Dove Audio, Inc. ("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. Seuss alleged that The Cat NOT in the Hat! misappropriated substantial protected elements of its copyrighted works, used six unregistered and one registered Seuss trademarks, and diluted the distinctive quality of its famous marks. The district court granted the motion for preliminary injunction. Defendants appealed.

Issue:

Was the grant of preliminary injunction in favor of plaintiff proper under the circumstances?

Answer:

Yes.

Conclusion:

The Court noted that in order to obtain a preliminary injunction, the moving party must show either: (i) a combination of probable success on the merits and the possibility of irreparable injury, or (ii) that serious questions were raised and the balance of hardships tips sharply in its favor. Under either formulation, the moving party must demonstrate a significant threat of irreparable injury, irrespective of the magnitude of the injury. In the present case, the Court held that the plaintiff demonstrated a strong likelihood of success on the copyright and trademark infringement claims. The Court noted that as for the objective analysis of expression, the district court’s preliminary injunction was granted based on the back cover illustration and the Cat’s Hat, not the typeface, poetic matter, whimsical style or visual style. For these reasons, the Court concluded that the district court's findings that Penguin and Dove infringed on Seuss' copyrights were not clearly erroneous. Moreover, the Court found that the defendants’ fair use defense was untenable. The Court further held that the district court's ruling was not clearly erroneous nor overbroad as the balance of hardships favored plaintiff on the trademark violations.