Dr. Seuss Enters., L.P. v. Comicmix LLC

• Decision Date: 18 December 2020
• Docket Number: No. 19-55348,19-55348
• Citation: 983 F.3d 443
• Parties: DR. SEUSS ENTERPRISES, L.P., a California limited partnership, Plaintiff-Appellant, v. COMICMIX LLC, a Connecticut limited liability company; Glenn Hauman, an individual; David Jerrold Friedman, aka David Gerrold, an individual; Ty Templeton, an individual, Defendants-Appellees.
• Court: U.S. Court of Appeals — Ninth Circuit

983 F.3d 443

DR. SEUSS ENTERPRISES, L.P., a California limited partnership, Plaintiff-Appellant,

v.COMICMIX LLC, a Connecticut limited liability company; Glenn Hauman, an individual; David Jerrold Friedman, aka David Gerrold, an individual; Ty Templeton, an individual, Defendants-Appellees.

No. 19-55348

United States Court of Appeals, Ninth Circuit.

Argued and Submitted April 27, 2020 Seattle, Washington

Filed December 18, 2020

Stanley J. Panikowski (argued), DLA Piper LLP (US), San Diego, California; Andrew L. Deutsch DLA Piper LLP (US), Los Angeles, California; Tamar Y. Duvdevani and Marc E. Miller, DLA Piper LLP (US), New York, New York; for Plaintiff-Appellant.

Dan Booth (argued), Dan Booth Law LLC, Concord, Massachusetts; Michael Licari, Sprinkle Lloyd & Licari, LLP, San Diego, California; for Defendants-Appellees.

Jacqueline C. Charlesworth, Alter, Kendrick & Baron LLP, New York, New York, for Amicus Curiae the Motion Picture Association Of America, Inc.

Susan Kohlmann and Alison Stein, Jenner & Block LLP, New York, New York; James Dawson, Jenner & Block LLP, Washington D.C.; Keith Kupferschmid and Terry Hart, Copyright Alliance, Washington D.C.; for Amicus Curiae the Copyright Alliance.

Peter S. Menell, Berkeley Center For Law & Technology, University of California, Berkeley School of Law, Berkeley, California for Amici Curiae Professors Peter S. Menell, Shyamkrishna Balganesh, and David Nimmer.

Dean S. Marks, Dean S. Marks, Attorney-at-Law, Sherman Oaks, California for Amicus Curiae Sesame Workshop.

Mason A. Kortz, Cyberlaw Clinic, Harvard Law School, Cambridge, Massachusetts, for Amici Curiae Electronic Frontier Foundation, Organization For Transformative Works, Public Knowledge, Francesca Coppa, David Mack, and Magdalene Visaggio.

Phillip R. Malone, Juelsgaard Intellectual Property and Innovation Clinic, Mills Legal Clinic at Stanford Law School, Stanford, California, for Amici Curiae Intellectual Property Law Professors.

Erik Stallman, Samuelson Law, Technology & Public Policy Clinic, University of California, Berkeley School of Law, Berkeley, California, for Amici Curiae Professors Mark A. Lemley, Jessica Litman, Lydia Loren, Pamela Samuelson, and Rebecca Tushnet.

Before: M. Margaret McKeown, N. Randy Smith, and Jacqueline H. Nguyen, Circuit Judges.

McKEOWN, Circuit Judge:

In Dr. Seuss's classic book, Oh, the Places You'll Go! (Go! ), the narrator counsels the protagonist on a path of exploration and discovery. The book closes with this note of caution:

I'm sorry to say so

But, sadly it's true

That Bang-ups

And Hang-ups

Can happen to you.

If he were alive today, Dr. Seuss might have gone on to say that "mash-ups can happen to you."

Enter Oh, the Places You'll Boldly Go! (Boldly ). Authored by Star Trek episodes author David Gerrold, illustrated by Ty Templeton, and edited by fellow Trekkie Glenn Hauman (collectively, ComicMix), Boldly is a mash-up that borrows liberally—graphically and otherwise—from Go! and other works by Dr. Seuss, and that uses Captain Kirk and his spaceship Enterprise to tell readers that "life is an adventure but it will be tough." The creators thought their Star Trek primer would be "pretty well protected by parody," but acknowledged that "people in black robes" may disagree. Indeed, we do.

The question we consider is whether Boldly ’s use of Dr. Seuss's copyrighted works is fair use and thus not an infringement of copyright. Because all of the fair use factors favor Dr. Seuss, we reverse the district court's summary judgment in favor of ComicMix on the copyright infringement claim. We affirm, however, the Rule 12(c) dismissal and the grant of summary judgment in favor of ComicMix on the trademark claim.

BACKGROUND

Go! was the final book written by the late Theodor S. Geisel, better known by his pseudonym, "Dr. Seuss." Many of the dozens of books Dr. Seuss authored and illustrated were wildly popular when they were published and have remained so throughout the decades. "Dr. Seuss" was the top licensed book brand of 2017. Notably, Go! has been "the number-one book on The New York Times Best Sellers list" "[e]very year during graduation season." The other Dr. Seuss works that are at issue—How the Grinch Stole Christmas! (Grinch ) and The Sneetches and Other Stories (Sneetches )—also remain well-recognized. For simplicity, we refer to the relevant Dr. Seuss works collectively as Go! .

Today, Dr. Seuss Enterprises, L.P. (Seuss) owns the intellectual property in Dr. Seuss's works, including the copyrights in his books and the trademarks in his brand. Seuss markets the books to children and adults. Seuss also publishes reissues of the books, such as anniversary editions. And Seuss licenses and oversees the creation of new works under the Dr. Seuss brand. Seuss carefully vets the many licensing requests it receives and works closely with the licensees and collaborators to produce works based on Dr. Seuss's books.

The myriad licensed works that proliferate in the market include fine art, toys, video games, stage productions, motion pictures, and books that incorporate elements of Dr. Seuss's iconic works. Go! alone is the basis for several authorized derivative works such as the following books: Oh, the Things You Can Do that Are Good for You! ; Oh, the Places I'll Go! By ME, Myself ; Oh, Baby, the Places You'll Go! ; and Oh, the Places I've Been! A Journal . Seuss has also entered into various collaborations to create new works that target the audiences of Seuss and its collaborators. In one well-known collaboration, The Jim Henson Company and Seuss produced a television and book series called The Wubbulous World of Dr. Seuss , featuring "muppetized" Dr. Seuss characters.

Boldly is not a licensed work of Seuss. Nor is it a collaboration or an otherwise authorized work. Nevertheless, in May 2016, David Gerrold (author of Star Trek episodes) and Glenn Hauman (Vice President of the publishing company ComicMix LLC) decided to send the Enterprise crew to a new literary world. Gerrold and Hauman agreed to create a "Star Trek Primer"—a mash-up of Star Trek and another well-known primer. A mash-up is "something created by combining elements from two or more sources," such as "a movie or video having characters or situations from other sources." Mash-up , Merriam-Webster Dictionary, https://www.merriam-webster.com/dictionary/mash-up.

After considering Pat the Bunny and other primers, Gerrold and Hauman decided to use Go! and to place the Enterprise crew in a colorful Seussian landscape full of wacky arches, mazes, and creatures—a world that is familiar to Dr. Seuss readers but a strange new planet for Captain Kirk's team. They hired Ty Templeton, an experienced illustrator. ComicMix purposely crafted Boldly so that the title, the story, and the illustrations "evoke" Go! .

ComicMix planned to publish and sell Boldly . An e-commerce retailer, ThinkGeek, agreed to handle the distribution and merchandizing of Boldly , and placed a conditional order for 5,000 copies. In August 2016, ComicMix started a successful crowdsourcing campaign on Kickstarter to pay for production and other costs, eventually raising close to $30,000. The campaign also drew the attention of an editor at Andrews McMeel Publishing, who proposed doing a direct sale publication of Boldly .

The fundraising effort raised more than eyebrows when the Seuss organization became aware of Boldly . In September and October of 2016, Seuss sent ComicMix a cease-and-desist letter and two follow-up letters. ComicMix responded that Boldly was a fair use of Go! . Seuss also sent Kickstarter a takedown notice under the Digital Millennium Copyright Act; Kickstarter took down the campaign and blocked the pledged funds. Boldly remains unpublished.

Seuss filed suit against Hauman, Gerrold, Templeton, and ComicMix LLC in November 2016 for copyright infringement, trademark infringement, and unfair competition. The district court granted ComicMix's Rule 12(c) motion and dismissed Seuss's trademark infringement claim as it relates to the title of Boldly . The parties then filed cross-motions for summary judgment on the copyright claim, and ComicMix moved for summary judgment on the remainder of the trademark infringement claim. The district court granted ComicMix's summary judgment motion and denied Seuss's motion, holding that Boldly was a fair use of Go! and that the remainder of Seuss's trademark infringement claim failed.¹

ComicMix does not dispute that it tried to copy portions of Go! as accurately as possible. Templeton urged the team to "keep to [Go! ’s] sentiment" that "life is an adventure but it WILL be tough and there WILL be setbacks, and you should not despair of them." As for the text of Boldly , Hauman created a side-by-side chart comparing the texts of Go! and Boldly in order to "match the structure of Go! ." Boldly also closely mimics many illustrations in Go! , as a result of what ComicMix called "slavish[ ] copy[ing] from Seuss." In one instance, Templeton took "about seven hours" to copy a single illustration because he "painstakingly attempted to make" the illustration in Boldly "nearly identical" to its Seussian counterpart.

The issue in this appeal is not whether Boldly infringed Go! , but whether Boldly! was a fair use of Go! .² Gerrold and Hauman thought they could either get a license or create a parody, and concluded that Boldly "come[s] down well on the side of parody" and does not infringe Seuss's copyright. Templeton agreed. Despite being "slightly concerned," ComicMix did not consult a lawyer or pursue the option of a license.³ This failure led to this lawsuit.

ANALYSIS

I. BOLDLY DOES NOT MAKE FAIR USE OF GO!

The fair use doctrine first took root in a case involving the biography of our first president. Justice Story asked whether copying the writings of President George Washington for a biography was "a justifiable use of the original materials, such as the law recognizes as no infringement of the copyright ...." See Folsom v. Marsh , 9 F....