Dr. Seuss Enterprises, L.P. v. ComicMix LLC
3:16-cv-02779
S.D. Cal.Jun 9, 2017Background
- Plaintiff Dr. Seuss Enterprises (DSE) owns copyrights (and alleges common-law trademark rights) in Dr. Seuss works, principally Oh, the Places You’ll Go! (Go!).
- Defendants (ComicMix, Gerrold, Templeton, et al.) created a Star Trek/Dr. Seuss mash-up book, Oh, the Places You’ll Boldly Go! (Boldly), and ran a Kickstarter for publication; Boldly’s materials include a fair-use/parody disclaimer.
- DSE sent cease-and-desist letters and a takedown to Kickstarter; Kickstarter disabled the campaign; DSE then sued for copyright infringement, trademark infringement, and unfair competition.
- Defendants moved to dismiss, asserting (1) fair use as a complete defense to the copyright claims, and (2) First Amendment, Rogers, and nominative fair use defenses to trademark and unfair-competition claims.
- The parties submitted the two works and related materials; the court considered fair-use on the motion to dismiss because the works were before the court and authenticity was undisputed.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Boldly is noninfringing fair use of Go! | Boldly will harm DSE’s licensing market and fair-use is fact-intensive not resolvable on 12(b)(6) | Boldly is highly transformative (a mash-up) and copies no more than necessary; fair use can be decided now because works are before court | Denied dismissal on copyright: fair-use factors are balanced and, absent further factual record on market harm, fair use cannot be resolved for DSE as a matter of law (factors nearly in equipoise) |
| Whether Boldly is a parody (purpose/character factor) | Boldly comments on or criticizes Go! (parody) | Boldly is not a parody but is transformative mash-up combining Dr. Seuss and Star Trek | Court: Not a parody, but is transformative; purpose/character factor favors defendant overall |
| Whether trademark claims are precluded by First Amendment (Rogers test) | Rogers test inapplicable; trademark claims can proceed | Use of title/style has artistic relevance and Boldly contains explicit disclaimers and authorship attribution, so Rogers protects expression unless explicitly misleading | Court: Rogers applies; artistic relevance above zero; no explicit misleading—Rogers bar to Lanham Act asserted in part (but court declined to rule on confusingly-similar-title exception at this stage) |
| Whether nominative fair use bars trademark claims | N/A (argued that analysis is premature) | Use of Go! title is nominative fair use: title needed to identify the referenced work; no more than necessary; no false endorsement | Court: Grants dismissal of trademark claims on nominative fair use grounds but gives DSE leave to amend limited to addressing the confusingly-similar-title issue under Rogers |
Key Cases Cited
- Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (U.S. 1994) (sets out fair-use framework and importance of transformative purpose)
- Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) (artistic works: Lanham Act applies only when avoiding consumer confusion outweighs free-expression interest)
- E.S.S. Entm’t 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir. 2008) (adopts Rogers approach in Ninth Circuit)
- Brown v. Elec. Arts, Inc., 724 F.3d 1235 (9th Cir. 2013) (applies Rogers and explains requirement of explicit misleading conduct)
- Leadsinger, Inc. v. BMG Music Pub., 512 F.3d 522 (9th Cir. 2008) (fair use may be resolved on motion to dismiss in rare circumstances)
- Seltzer v. Green Day, Inc., 725 F.3d 1170 (9th Cir. 2013) (transformative use analysis and effect of commercial nature)
- Mattel, Inc. v. Walking Mountain Prods., 353 F.3d 792 (9th Cir. 2003) (discusses parody, transformation, and Rogers context)
- New Kids on the Block v. News Am. Pub., Inc., 971 F.2d 302 (9th Cir. 1992) (nominative fair use doctrine explained)
- Toyota Motor Sales, U.S.A., Inc. v. Tabari, 610 F.3d 1171 (9th Cir. 2010) (sets three-part test for nominative fair use)