Appeal from an order of the United States District Court for the Southern District of New York, Shirley Wohl Kram, J., enjoining publication of the cover of a parody. Injunction vacated.
Feinberg and Newman, Circuit Judges, Mishler, District Judge.*fn*
Defendant Bantam Doubleday Dell Publishing Group, Inc. appeals from an order, dated August 2, 1989, of the United States District Court for the Southern District of New York, Shirley Wohl Kram, J., enjoining defendant-appellant from distributing Spy Notes, a parody of the Cliffs Notes series of paperback books published by plaintiff-appellee Cliffs Notes, Inc.*fn1 This appeal raises basic questions over application of trademark law to an allegedly infringing literary parody. For reasons given below, we vacate the injunction.
The appeal involves three principals, although only two of them are parties. The first is plaintiff-appellee, which publishes a series of study guides, known as Cliffs Notes. As many college students are aware, Cliffs Notes are condensed versions, with brief analyses, of various short stories, plays and books. The cover of a typical Cliffs Notes book lists the name of the work that is to be condensed and discussed in the pages that follow. Although appellee asserts that a variety of readers, and not just students, purchase Cliffs Notes, students apparently form the primary audience for the books. This is reflected in the roster of available Cliffs Notes, which contains most of the titles that one would expect to encounter in college literature and English classes.
The second principal is defendant-appellant, a well-known publishing company, which publishes Spy Notes. The third principal is Spy magazine, which appellant does not publish. Spy magazine contains a mixture of journalism, humor and satire. Its purpose is to provide political and social commentary in an entertaining manner, and its style of humor is quite sharp. Even though the magazine was founded only three years ago, it has a substantial circulation and has received considerable acclaim. Spy editors have been featured or interviewed in the press and on television. Recently, Spy magazine received the accolade of being itself the subject of a full-blown parody called "Sty," published by Random House.
Although Spy magazine is not a party to this lawsuit, it played a key role as one of the two creators, along with defendant-appellant, of Spy Notes. The idea behind Spy Notes was to create a double parody. First, Spy Notes would poke fun at certain novels--Tama Janowitz's Slaves of New York, Brett Ellis's Less Than Zero and Jay McInerney's Bright Lights, Big City--which a Spy editor described in the district court as defining "a genre of savvy, urban novels depicting the drug abuse, promiscuity and post-adolescent angst of the 1980s." The editor further noted that "[because] of their literary shortcomings and their familiarity to Spy readers, these novels were a natural target for Spy's satirical commentary." In addition, Spy Notes would satirize Cliffs Notes. Spy magazine editors thought that a study guide would provide an ideal vehicle for a parody of these works, because "[the] flat, straightforward, academic style" of Cliffs Notes "would appear incongruous with the cool, ironic, sophisticated, urbane novels and thus greatly enhance the humor of the satire." Furthermore, "because most college graduates and students have seen or heard of" Cliffs Notes, the readers of Spy and the audience targeted for Spy Notes would be "familiar with the format and style" of Cliffs Notes.
Appellant and the Spy editors produced Spy Notes, a one-time parody of Cliffs Notes. Appellant readily admitted that it copied the prominent features of Cliffs Notes in order to make Spy Notes an effective parody. Thus, just as a Cliffs Notes book does, Spy Notes lists on the cover the works it condenses, i.e., the three novels referred to above. In addition, the cover of Spy Notes replicates the distinctive, yellow color, black diagonal stripes and black lettering of Cliffs Notes, a design that is the subject of appellee's registered trademark.
At the same time, there are some important differences between the two books. (We will focus on the covers, as the district court did, because appellee's trademark protects the cover of Cliffs Notes; however, the humorous content of Spy Notes is also quite different from the serious condensation and analysis of Cliffs Notes). For example, the cover of Spy Notes, unlike that of Cliffs Notes, prominently states "A Satire" five times in bright red lettering (and the back similarly states it four times), bears the notation "A Spy Book" with the logo of Spy magazine against a bright red background, uses the word "Spy" four times, and shows a clay sculpture of New York City rather than the clay sculpture of a mountain that typically appears on Cliffs Notes. Also, the cover of Spy Notes contains red, blue and white -- colors that are not used on the cover of Cliffs Notes -- and bears wry notations not found on a Cliffs Notes cover, such as "All Those Other Hip Urban Novels Of The 1980s," and "Even Funnier Than The Originals." In addition, the Spy Notes cover price ($7.95) is substantially higher than that of Cliffs Notes ($3.50). Further, the cover of Spy Notes states prominently in red that it "Includes The Spy Novel-O-Matic Fiction-Writing Device!" This tool, which a prospective purchaser can inspect simply by opening Spy Notes, allows the "young, world-weary urban author" to create "16,765,056 different plot possibilities" by manipulating a card. A Cliffs Notes book contains no such obviously absurd shortcut to success. Finally, appellant plans to market Spy Notes in distinctive prepacks of 10 copies in a manner that prominently features the Spy name.
Early in July 1989, after the Spy Notes books had been bound but before the copies had been shipped to bookstores, appellee sued appellant. Appellee alleged that the cover of Spy Notes violated the Lanham Trade-Mark Act, because it would give consumers the false impression that Spy Notes was actually appellee's product. Appellee also asserted that the cover violated the New York common law of unfair competition, as well as section 368-d of the New York General Business Law. Appellee sought preliminary and final injunctions against the distribution of Spy Notes, and other relief.
On August 2, 1989, the district court granted a preliminary injunction, reaching only appellee's claims under section 43(a) of the Lanham Act.*fn2 The court rejected what it characterized as appellant's "general theory that the First Amendment gives the parodist unbridled freedom to use a registered trademark as part of a parody or satire," and went on to analyze appellee's trademark claims under the eight-factor balancing test of Polaroid Corp. v. Polarad Elec. Corp., 287 F.2d 492, 495 (2d Cir.), cert. denied, 368 U.S. 820, 82 S. Ct. 36, 7 L. Ed. 2d 25 (1961). Finding "a profound likelihood of confusion" between the cover of Spy Notes and that of Cliffs Notes, the district court held that appellee had demonstrated irreparable injury and a likelihood of success on the merits. The judge therefore preliminarily enjoined appellant from distributing the parody with its current cover design and ordered appellant to so advise the retail trade.
Since appellant had some 150,000 bound copies of Spy Notes ready to be distributed to the back-to-school market, and the school year was about to commence, appellant obtained an expedited appeal. We heard argument on Septemnber 1, and unanimously concluded that the preliminary injunction should not have been granted. Because of the urgency of the situation, on September 5 we ...