The opinion of the court was delivered by: Robert P. Patterson, Jr., District Judge.
Plaintiff, a non-profit educational institution, charges
defendants with copyright infringement in violation of the
Copyright Act of 1976, 17 U.S.C. § 101 et seq., trademark
infringement in violation of section 43(a) of the Lanham Act,
15 U.S.C. § 1125(a), and common law unfair competition.
Plaintiff moved by order to show cause for a preliminary
injunction pursuant to Rule 65 of the Federal Rules of Civil
Procedure. For the reasons set forth below, plaintiff's motion
Plaintiff Arica Institute, Inc. ("Arica") is a not-for-profit
tax-exempt educational institution founded in the state of New
York in 1971 by Oscar Ichazo ("Ichazo"). According to Arica's
Executive Director Elliott Dunderdale ("Dunderdale"), Arica
offers training for the whole human being focused on the
clarification of consciousness. Tr. at 270.*fn1 Arica operates
forty franchise training centers throughout the United States,
South America, Europe and Australia which have enrolled from
1971 to present approximately 250,000 students. Tr. at 279-80.
The history of Arica dates back to April 1971 when Oscar
Ichazo conducted the first Arica training in the city of Arica,
Chile.*fn2 Ichazo, born in Bolivia in 1931 and trained in Zen,
Sufism, Yoga, Buddhism, Confucianism, I Ching and the Kabbalah,
taught a system that is now known within Arica as the system of
"ego fixations." Tr. at 272-73, 290-291. Fifty-five people,
including John Lilly ("Lilly"), Joseph Hart ("Hart") and
Claudio Naranjo ("Naranjo"), attended the 1971 seminar in Chile
and tape recorded Ichazo's lectures. Tr. at 274-76. Upon
returning to the United States, every student except Naranjo
returned his or her tapes to Arica's archives. Arica
transcribed the lecture tapes and in 1973 registered them with
the Copyright Office as eight separate volumes which share the
title The Lectures of Oscar Ichazo. Pl. Exh. 15.
"Enneagons" or "enneagrams" are nine-pointed stars typically
surrounded by a circle.*fn3 It is undisputed that enneagrams
have appeared throughout history, although Elliott Dunderdale
("Dunderdale"), Executive Director of Arica since 1989,
testified that no one has used the enneagram in the way Arica
uses it "in terms of the process of the ego fixations as it
applies to human psyche." Tr. at 369. Dunderdale testified that
Arica uses enneagrams as "a map of process or a guide to
process." Tr. at 292. In simplest terms, the Arica system uses
a total of 108 enneagrams,*fn4 which Ichazo claims to have
"discovered,"*fn5 as a "method of working with the nine parts
of the body and nine parts of the human psyche," Tr. at 273,
and as a method of explaining "the [ego] fixations and the
ideas that cure them." Interviews with Oscar Ichazo (Arica
Institute Press 1982) at 13.
In addition to conducting training sessions, Arica publishes
various training manuals, books by Ichazo, and a journal
entitled The Arican. Over the years, Arica has obtained
copyright registrations for approximately 46 of these works.
Pl. Exh. 15. The copyrighted training manuals, including the
"Manual of the Arica Forty Day Training" and the "Three Month
Manual," are not available to the public — students are
required to return the manuals to Arica at the end of the
training. The student manuals, home study manuals and The
Arican can be purchased at Arica training centers and the book
Interviews with Oscar Ichazo is sold publicly in bookstores.
Tr. at 281-82.
Defendant Helen Palmer ("Palmer") is a psychology professor
who currently resides in California. According to Palmer,
Claudio Naranjo, a Chilean psychologist, had a personal falling
out with Ichazo after the 1971 training in Chile because
Naranjo wanted to apply psychological ideas to Ichazo's
material in order to "bring it into contemporary life and out
of secrecy." Tr. at 183-84. Palmer testified that it was
Naranjo who chose the English words associated with the points
on Ichazo's enneagrams because Ichazo spoke little English when
he lectured in Chile. Tr. at 201, 205.*fn7
After 1971, Ichazo and Naranjo both taught enneagram theory
using a method described as "intense, small group psychological
growth work." Pl. Exhs. 1, 9 at xiv (C. Tart, Preface to H.
Palmer, The Enneagram); Tr. at 225-28. Palmer began studying
under Claudio Naranjo in 1973. Tr. at 184. However at that
time, she was already familiar with enneagrams. Since 1965
Palmer had been associated with the Gurdjieff Society, an
international organization named for a scholar born in 1870 in
Russia named G.I. Gurdjieff. Tr. at 180. Palmer testified that
the enneagram diagram "is almost synonymous with Gurdjieff."
Tr. at 186. According to Palmer, Gurdjieff taught that the nine
points of an enneagram represented the Seven Deadly Sins
(anger, pride, envy, greed, gluttony, lust and sloth) plus two
additional sins Palmer believes were classified by Ichazo as
self-love and fear. Tr. at 186-87. Using the enneagram as a
guide, Gurdjieff identified nine "chief features" of
"temperament," Tr. at 191, or nine personality types. Palmer
testified that after studying with Naranjo she concluded that
Ichazo was teaching Gurdjieff-based material but claiming he
"got it on his own." Tr. at 207.
Palmer began teaching enneagram theory in 1974 when she
founded the Center for the Investigation and Training of
Intuition ("CITI"). Tr. at 172-73. CITI is located in Berkeley,
California and has a yearly enrollment of approximately 1500
students primarily from the psychological community, i.e.,
persons with bachelor's, master's or PhD degrees in psychology.
Tr. at 173-74.
Palmer's book The Enneagram, published by HarperCollins in
hardback in November 1988,*fn8 opens with the passage:
The Enneagram is an ancient Sufi teaching that
describes nine different personality types and
their interrelationships. The teaching can help us
to recognize our own type and how to cope with our
issues; understand our work associates, lovers,
family, and friends; and to appreciate the
predisposition that each type has for higher human
capacities such as empathy, omniscience, and love.
Pl. Exhs. 1, 9 at 3. The Enneagram is 392 pages long and is
divided into two sections, "Orientation to the Enneagram" and
"The Nine Points of the Enneagram." The book also contains a
preface by Charles Tart, a short appendix and notes.
Palmer equates Ichazo's nine "ego fixations" with nine basic
personality types. Tr. at 224. Palmer credits Ichazo with
correctly placing the types around the nine-pointed star "so
that the relationships among the types could be verified
through interviews." Pl.Exhs. 1, 9 at 47. Palmer's nine
personality types are described at length in the nine central
chapters of The Enneagram which have titles such as "Point One:
The Perfectionist," "Point Two: The Giver," "Point Three: The
Performer," etc.*fn9 Palmer testified that she chose the
chapter titles from terms currently used in psychological
typing. Tr. at 212-13. Each chapter contains a banner listing
the main features of that particular personality type. The
terms in the banners features are derived from an all-inclusive
chart on page 50 of The Enneagram showing seven enneagrams. The
text of each chapter profiles that personality type and
concludes with two lists, "What helps [Ones, Twos, etc.]
Thrive" and "What [Ones, Twos, etc.] Should Be Aware Of."
Palmer testified that her sources for The Enneagram included
(1) information she learned from lectures given by Claudio
Naranjo in the early 1970's;*fn10 (2) the Gurdjieff ideas and
material with which she was already familiar;*fn11 (3) a
chapter entitled "The Arica Training" by Hart and Lilly first
published in Charles Tart's Transpersonal Psychologies (Harper
& Row 1975);*fn12 (4) Interviews with Oscar Ichazo (Arica
Institute Press 1982), a collection of interviews by
journalists and members of Arica;*fn13 and (5) conclusions she
has reached from interviews of her students since 1976.*fn14
Palmer has never attended an Arica training and testified that
she has never inspected any Arica works deposited in the
Library of Congress nor seen copies of any of plaintiff's works
other than Interviews with Oscar Ichazo. Tr. at 237-40, 300.
On February 20, 1991, six months after the initiation of this
lawsuit, HarperCollins decided to print 35,000 paperback copies
of The Enneagram for tentative release on March 12, 1991. Tr.
at 449; Pl.Exh. 30. The paperback version of The Enneagram is
substantially identical to the hardcover version except for its
soft cover. Def.Exh. DD. The paperback does, however, contain a
newly-added one-page notice appearing after the preface
relating to this litigation which states that neither Palmer
nor HarperCollins is affiliated with Arica and that The
Enneagram is neither endorsed nor authorized by Arica Institute
or Oscar Ichazo.*fn15 HarperCollins shipped approximately
21,000 copies of the paperback from its central warehouse on
March 11-14, 1991, primarily to fill back orders dating from
September 1990. Tr. at 449-51.*fn16
Lewis Gillenson, a publishing expert, testified that unlike
mass paperbacks, which are sold primarily in drugstores or
transit stations, trade paperbacks are more expensive and are
sold in college and general bookstores. Tr. at 158. Gillenson
testified that as a general rule, a trade paperback will
outsell the hardcover edition of the same book by a ratio of
5:1 or 6:1. Tr. at 159. William Baker, HarperCollins'
vice-president/controller responsible for book distribution in
and after 1971, testified that there is a 1:1 relationship
between sales of hardcovers and trade paperbacks published by
HarperCollins. Tr. at 461.
Arica and HarperCollins began exchanging letters in June
1988, prior to the publication of the hardcover edition of
The Enneagram, when attorneys for Arica were supplied with
galleys and thereafter sent HarperCollins various copyright and
trademark registrations and a copy of Conversations with Oscar
Ichazo. Def.Exh. P; Tr. at 147, 316. On April 13, 1989 Arica
provided HarperCollins with simple charts comparing phrases
appearing in The Enneagram with phrases appearing in Arica's
copyrighted material. Pl.Exh. 4; Tr. at 79-80; Pl.Exhs. 23-25
(full-size charts). On March 9, 1990 Arica provided
HarperCollins with 23 pages of written comparisons which
substantially repeated the information contained in the charts.
Arica filed its complaint in this action on August 6, 1990.
On August 24, 1990 defendants served interrogatories requesting
Arica to identify the specific copyrighted expression it
alleges was copied (and its source) and the corresponding
material in Palmer's The Enneagram. Arica's interrogatory
answers and objections, in the form of a 388-page list of
comparisons (Pl.Exh. 26) which Dunderdale claims he and his
wife compiled for over four months, Tr. at 341, were not served
on defendants until a March 12, 1991 hearing before this Court
at which plaintiff requested a temporary restraining order to
halt release of the paperback edition of The Enneagram. The
Court denied plaintiff's request and held a preliminary
injunction hearing on March 15 and 18, 1991.
Defendants label plaintiff's attempt to halt the release of
the paperback edition of The Enneagram as an effort to prevent
"heresy" not copyright infringement.*fn17 The Court agrees.
Elliott Dunderdale, Executive Director of Arica, testified
that Palmer's The Enneagram:
. . created a tremendous confusion among those
people who have taken Arica trainings, people who
are likely to take Arica trainings and people who
have taken her trainings. . . . [T]he only person
who picks the fixation in the Arica system is
still Oscar Ichazo. . . . [P]eople are led to
believe that they can pick their own fixation
arbitrarily and they do. . . ...