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United States District Court, Southern District of New York

August 5, 1991


The opinion of the court was delivered by: 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.


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 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 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 comparisons — fewer than twenty — allege 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

  ". . . but he does not
  take responsibility for
  cultivating his
  (p. 14)

  ". . . he feels how far
  he is from being able
  to love and act
  (p. 14)

  "In the same way, the
  remedy for indolence is in
  come way the remedy which
  cures all egos — the idea of holy love." (p. 14)

  "The indolent type goes
  out looking for the love
  and meaning he feels
  deprived of;

  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, the seeker is ignorant about himself. He
  believes he knows all about other people." (p. 14)

  "He believes he knows all
  about other people. . . ."
  (p. 14)

Palmer, The Enneagram

  ". . . by the Nine taking
  responsibility for
  finding out what is
  really essential in
  life." (p. 364)

  ". . . love out of habit
  rather than because the
  feeling is alive."
  (p. 363)

  ". . . the ways in which
  each type opens to
  love . . ." (p. 9)

  ". . . then it inevitably
  leads to the sense of
  having lost what is most
  important in life."
  (p. 353)

  ". . . are more aware of
  what others want than
  they are able to know
  what they want themselves."
  (p. 129)

  ". . . see all points of
  view;" (p. 40)

  ". . . always know what
  other people want . . ."
  (p. 359)

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:


  "In essence . . .; there
  is no conflict within the
  person between head, heart,
  and stomach. . . ."
  (p. 9)

Palmer, The Enneagram

  "In essence we are like
  young children: there
  is no conflict between
  our thoughts, our
  emotions, or our
  (p. 18)


  "A contradiction develops
  between the inner feelings
  of the child and the outer
  social reality to which he
  must conform."
  (p. 9)

  "Personality forms a
  defensive layer over the
  essence. . . ."
  (p. 9)

Palmer, The Enneagram

  "A contradiction developed
  between the child's central
  trust of the environment
  and the family reality,
  which must be obeyed."
  (Id. p. 19)

  "From the point of view of
  a psychology that includes
  a concept of essence,
  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.*fn1 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 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 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

    (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.

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. Show-time/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 on Counts 2 and 3 of the complaint is granted. This case is ordered closed.


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