Dr. Seuss Enters., L.P. v. Comicmix LLC, Case No.: 16-CV-2779 JLS (BGS)
| Decision Date | 12 March 2019 |
| Docket Number | Case No.: 16-CV-2779 JLS (BGS) |
| Citation | 372 F.Supp.3d 1101 |
| Parties | DR. SEUSS ENTERPRISES, L.P., a California limited partnership, Plaintiff, v. COMICMIX LLC, a Connecticut limited liability company; Glenn Hauman, an individual; David Jerrold Friedman a/k/a David Gerrold, and individual; and Ty Templeton, an individual, Defendants. |
| Court | U.S. District Court — Southern District of California |
Gina L. Durham, DLA Piper LLP, San Francisco, CA, James Kevin Spencer Stewart, Pro Hac Vice, Ryan Compton, Pro Hac Vice, DLA Piper LLP, Washington, DC, Marc E. Miller, Pro Hac Vice, Tamar Duvdevani, Pro Hac Vice, DLA Piper, LLP, New York, NY, Andrew Lawrence Deutsch, DLA Piper LLP, Los Angeles, CA, Stanley J. Panikowski, III, DLA Piper US, San Diego, CA, for Plaintiff.
Daniel G. Booth, Pro Hac Vice, Booth Sweet LLP, Cambridge, MA, Michael Licari, D'Egidio Licari Townsend & Shah, APC, San Diego, CA, for Defendants.
ORDER (1) GRANTING DEFENDANTS' MOTION FOR SUMMARY JUDGMENT, (2) DENYING PLAINTIFF'S MOTION FOR SUMMARY JUDGMENT, AND (3) DENYING AS MOOT PLAINTIFF'S MOTIONS TO STRIKE AND TO EXCLUDE
Presently before the Court are Plaintiff Dr. Seuss Enterprises, L.P.'s Motions to Exclude Gans Testimony Under Federal Rule of Evidence 702 ("Mot. to Exclude," ECF No. 104), for Summary Judgment ("Pl.'s MSJ," ECF Nos. 107, 109, 1151 ), and to Strike Declaration of Dan Booth ("Mot. to Strike," ECF No. 116) and Defendants ComicMix LLC, Glenn Hauman, David Jerrold Friedman a/k/a David Gerrold, and Ty Templeton's Motion for Summary Judgment Pursuant to Fed. R. Civ. P. 56 ( ECF Nos. 108, 110). Also before the Court are Plaintiff's response in opposition to Defendants' Motion for Summary Judgment ("Pl.'s MSJ Opp'n," ECF Nos. 119, 124); Defendants' responses in opposition to Plaintiff's Motion for Summary Judgment ( ECF Nos. 120, 125), Motion to Exclude (ECF No. 126), and Motion to Strike (ECF No. 133); Plaintiff's replies in support of its Motion to Exclude (ECF No. 141), Motion for Summary Judgment ("Pl.'s MSJ Reply," ECF Nos. 140, 143), and Motion to Strike (ECF No. 145); and Defendants' reply in support of their Motion for Summary Judgment ( ECF Nos. 130, 135). The Court heard oral argument on February 7, 2019. Having considered the Parties' arguments, the law, and the record, the Court GRANTS Defendants' Motion for Summary Judgment (ECF No. 108), DENIES Plaintiff's Motion for Summary Judgment (ECF No. 107), and DENIES AS MOOT Plaintiff's Motions to Exclude (ECF No. 104) and to Strike (ECF No. 116).
Plaintiff is the owner, by assignment, of the copyrights to the works of Theodor S. Geisel, the author and illustrator of the books written under the pseudonym "Dr. Seuss." Pl.'s Statement of Undisputed Material Facts in Support of Pl.'s MSJ ("SOF"), ECF No. 115-1, ¶¶ 1–4. Mr. Geisel wrote and illustrated the works at issue here: Oh, the Places You'll Go! ("Go! "); How the Grinch Stole Christmas! ("Grinch "); and The Sneetches and Other Stories ("Sneetches ") (collectively, the "Copyrighted Works"). Id. ¶¶ 2–7. The Copyrighted Works are duly registered for copyright with the Copyright Office and all copyrights remain in force. Id. ¶¶ 2–4. Although Mr. Geisel passed away in 1991, Plaintiff oversees a robust publishing program, working closely with its publishers to release anniversary editions, reissues in new formats or sizes, and updated editions of the iconic Dr. Seuss books, including the Copyrighted Works. Id. ¶¶ 51, 128–37.
Plaintiff also licenses authors and illustrators to publish additional works under the Dr. Seuss brand. Id. ¶¶ 51, 134–35. For example, Plaintiff's series The Cat In The Hat Learning Library includes books written and illustrated by other authors that are based upon and incorporate Mr. Geisel's works. Id. ¶ 134. This series includes titles such as Oh, the Things You Can Do That Are Good For You! , There's No Place Like Space! , and Oh, the Pets You Can Get! Id. ¶ 135. Plaintiff has also licensed the publication of several books that are derivative of the Copyrighted Works, including Go!: Oh, Baby! Go, Baby! ; Oh, the Places I'll Go! By ME, Myself ; Oh, Baby, the Places You'll Go! ; and Oh, the Places I've Been! Journal. Id. ¶ 142. These books continue the style of the original Dr. Seuss books, and Plaintiff provides close quality control to ensure consistency of style and quality. Id. ¶¶ 129–31.
While children may be the intended readers for many of Dr. Seuss' works, adults buy them, too, and Plaintiff therefore markets the works to both children and adults. Id. ¶¶ 146–49. Other Dr. Seuss works, including Go! , are also aimed at teenagers and adults, and are therefore marketed to both age groups. Id. ¶¶ 147–48. Additionally, Go! is a very popular gift for graduates, and is Plaintiff's best-selling book, and the perennial number one selling book on The New York Times Best Sellers list each spring during graduation season. Id. ¶¶ 141, 148.
Plaintiff is not just a publisher; it is also in the entertainment business, licensing Dr. Seuss works for development of films, television, stage productions, theme parks, and museum exhibitions. Id. ¶ 138. Plaintiff also runs an extensive product licensing and merchandising program. Id. ¶¶ 138–39, 144. In fact, in 2017, Plaintiff was named the top licensed book brand according to NPD, a market industry research firm. Id. ¶ 159. Importantly for purposes of this case, Plaintiff collaborates with other intellectual property holders on collaborations that combine Dr. Seuss' works with those holders' creations to develop new works and products that have combined appeal to larger audiences. Id. ¶¶ 150–56. For example, Plaintiff and its partners have created The Wubbulous World of Dr. Seuss , a television and book series with The Jim Henson Company that featured "muppetized" Dr. Seuss characters; Grinch Panda Pop , a digital game that combines Jam City's Panda character with the Grinch character; Dr. Seuss Funko figurines, which combine Funko Inc.'s distinctive toy designs with Dr. Seuss characters; and a line of Comme des Garçons clothing combining Comme des Garçons' well-known heart design with Grinch artwork. Id. ¶¶ 154–56. Many more collaborations are in the works. Id. ¶ 156.
Plaintiff receives numerous offers from parties wishing to work with DSE on a collaboration or license Plaintiff's intellectual property. Id. ¶ 157. Plaintiff approaches these offers selectively, and when Plaintiff considers whether to pursue a collaboration with another intellectual property holder, it first carefully vets the collaborator. Id. ¶ 130. If Plaintiff decides to move forward, it works extensively with the collaborator and maintains tight control over the work. Id. ¶ 129, 131.
Mr. Gerrold has written Star Trek episodes for Paramount Pictures, the producer of the Star Trek television show. Declaration of Tamar Duvdevani in Support of Pl.'s MSJ ("Duvdevani Decl.") Ex. 2, ECF No. 107-24, at 16:14–17:24. In May 2016, Mr. Gerrold suggested to Mr. Hauman that, "if we could get a license, we should do a Star Trek Primer." SOF ¶ 8. The original idea was to combine Star Trek themes with the pre-school book Pat the Bunny , id. ¶ 9, although they also considered using Fun with Dick & Jane , Goodnight Moon , and The Very Hungry Caterpillar , id. ¶ 15, before finally settling on Go!
Mr. Templeton is an illustrator adept at copying other illustrators' styles. Id. ¶ 32. In June 2016, Mr. Hauman invited Mr. Templeton to join the project, instructing Mr. Templeton that "this would be Seuss-style [ (Star Trek : The Original Series) ] backgrounds," Duvdevani Decl. Ex. 25, ECF No. 107-39, at 423,3 and that "we're going to want the cover and at least a background art piece for promotions, as well as be able to use the cover for posters, mugs, and all the merchandise that will push this thing over the top." Id. at 424. Mr. Templeton responded, SOF ¶ 30.
With the team in place, Defendants set out to create Oh, the Places You'll Boldly Go! ("Boldly "). Although concerned about their project's legal risk, Mr. Gerrold and Mr. Hauman concluded that their proposed project would likely qualify as a "parody" of the source material and therefore constitute a fair use. Id. ¶¶ 10–12, 16–18, 23–24. Each of Mr. Templeton, Mr. Gerrold, and Mr. Hauman testified that he considered Boldly a parody, a mash-up, and a transformative work. See, e.g. , Duvdevani Decl. Ex. 1, ECF No. 107-23, at 120:14–23; Duvdevani Decl. Ex. 2 at 68:7–8, 77:19–78; Duvdevani Decl. Ex. 3, ECF No. 107-25, at 75:23–76:11. They also did not anticipate that Boldly would compete with Go! or any other of the Copyrighted Works. See, e.g. , Duvdevani Decl. Ex. 2 at 43:3–45:1; Duvdevani Decl. Ex. 3 at 185:18–186:3.
But each Defendant also testified that he copied from the Copyrighted Works to create Boldly. SOF ¶¶ 33–34, 52–55, 57, 65. Indeed, Mr. Hauman scanned a copy of Go! to Mr. Gerrold because he wanted to "parallel [Go! ] as close as [he] c[ould]." Id. ¶ 34. Although Mr. Gerrold had written his first draft "from scratch" and without access to Go! , he later rewrote Boldly 's text to more closely match Go! Id. ¶ 35. Mr. Hauman created a side-by-side comparison of Go! 's and Boldly 's text, id. ¶¶ 34, 57, to assist himself and Mr. Gerrold in their effort "to parallel the structure of [Go! ]." Duvdevani Decl. Ex. 2 at 95:7–8.
Mr. Templeton testified as to his process for illustrating Boldly :
I would have the original book open to what I was looking at. I would rough out the positions the characters are in. After I was satisfied with the position that the characters are in being similar enough to evoke the original source...
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COPYRIGHT AND THE CREATIVE PROCESS.
...Art Infringement Cases, 26 YALE J.L. & HUMANS. 143, 171 (2014). (335) See, e.g., Dr. Seuss Enters., L.P. v. ComicMix LLC, 372 F. Supp. 3d 1101, 1116 (S.D. Cal. 2019), aff'd in part, rev'd in part, 983 F.3d 443 (9th Cir. 2020), cert. denied, 141 S. Ct. 2803 (mem.) (336) Liz Brown, Remixi......