Dr. Seuss Enters., L.P. v. ComicMix LLC
| Decision Date | 09 August 2021 |
| Docket Number | Case No.: 16-CV-2779 JLS (BGS) |
| Citation | 553 F.Supp.3d 803 |
| 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, an 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, Dan Booth Law, Concord, MA, Michael Licari, Law Office of Michael Licari, La Mesa, CA, Thomas Carter Johnston, TC Johnston LLM Attorney at Law, San Diego, CA, for Defendant ComicMix LLC.
Daniel G. Booth, Dan Booth Law, Concord, MA, Thomas Carter Johnston, TC Johnston LLM Attorney at Law, San Diego, CA, for Defendants Mr. Glenn Hauman, Mr. David Jerrold Friedman, Mr. Ty Templeton.
ORDER (1) DENYING DEFENDANTS’ MOTION FOR RECONSIDERATION AND (2) DENYING PLAINTIFF'S RENEWED MOTION FOR SUMMARY JUDGMENT
Presently before the Court are Defendants ComicMix LLC, Glenn Hauman, David Jerrold Friedman, and Ty Templeton's (collectively, "ComicMix" or "Defendants") Motion for Reconsideration of Order Denying Motion for Issuance of Request to the Register of Copyrights Pursuant to 17 U.S.C. § 411(b) ( ECF No. 177) and Plaintiff Dr. Seuss Enterprises, L.P.’s ("Seuss" or "Plaintiff") Renewed Motion for Summary Judgment ("MSJ," ECF No. 176).1 Also before the Court are Seuss's opposition to the Reconsideration Motion ( ECF No. 178), ComicMix's reply in support of the Reconsideration Motion ( ECF No. 181), ComicMix's opposition to the MSJ ("MSJ Opp'n," ECF No. 179), and Seuss's reply in support of the MSJ ("MSJ Reply," ECF No. 180). The Court took both matters under submission without oral argument pursuant to Civil Local Rule 7.1(d)(1). See ECF No. 182. Having considered the Parties’ arguments, the law, and the facts, the Court DENIES ComicMix's Reconsideration Motion and DENIES Seuss's MSJ for the reasons set forth below.
The Parties, who are intimately familiar with the facts of this case, do not submit new Statements of Fact in support of or in opposition to Seuss's MSJ. Rather, Seuss "directs the Court to the Statement of Facts (‘SOF’) submitted in connection with its original motion for summary judgment," MSJ at 3 n.1 (citing ECF No. 107-2), and, other than a brief, one-paragraph summary of the procedural history, ComicMix does not provide any recitation of the facts, see MSJ Opp'n. Accordingly, the Court incorporates by reference the factual and procedural background as set forth in its Order Granting Defendants’ Motion for Summary Judgment and Denying Plaintiff's Motion for Summary Judgment ("MSJ Order," ECF No. 149 at 2–13) and its Order Denying Defendants’ Motion for Issuance of Request to the Register of Copyrights ("Referral Order," ECF No. 88 at 2–3).
Seuss 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"). SOF ¶¶ 2–7.
In 2016, Defendants set out to create Oh, the Places You'll Boldly Go! ("Boldly! "). Each of Mr. Templeton, Mr. Gerrold, and Mr. Hauman testified that he considered Boldly! a parody, a mash-up, and a transformative work of the Copyrighted Works. See, e.g. , Declaration of Tamar E. Duvdevani in Support of Pl.’s MSJ ("Duvdevani Decl.") Ex. 1, ECF No. 107-23 at 120:14–23; Duvdevani Decl. Ex. 2, ECF No. 107-24, at 68:7–8, 77:19–78; Duvdevani Decl. Ex. 3, ECF No. 107-25, at 75:23–76:11. However, each Defendant also testified that he copied the Copyrighted Works to create Boldly!. SOF ¶¶ 33, 51–54, 56, 64.
After learning about Boldly! , Seuss sent ComicMix three letters, dated September 28, October 7, and October 25, 2016, demanding that ComicMix immediately cease all use of the Copyrighted Works. SOF ¶¶ 103–05. Seuss also sent a DMCA takedown notice to Kickstarter on October 7, 2016. Id. ¶ 68. ComicMix sent Seuss a responsive letter on October 28, 2016, which refused Seuss's demands. SOF ¶¶ 106–08. Seuss filed this infringement action on November 10, 2016. ECF No. 1.
As relevant to the present motions, on December 22, 2017, ComicMix filed a motion for issuance of a request to the Register of Copyrights pursuant to 17 U.S.C. § 411(b)(2), on the basis that Mr. Geisel's copyright registration applications for Go! and Sneetches were knowingly and materially inaccurate and incomplete. See ECF No. 57. On May 21, 2018, the Court denied ComicMix's motion. See generally Referral Order. In the Referral Order, the Court concluded that neither of the copyright applications was based on inaccurate information, as neither of the works in question contained a "substantial" amount of the undisclosed previously published material, and accordingly the Court declined to issue a request to the Register of Copyrights. See id. at 8–10.
On December 11, 2018, the Parties filed cross-motions for summary judgment. See ECF Nos. 107, 108. ComicMix sought summary judgment as to all of Seuss's surviving claims on the ground that ComicMix was entitled to summary adjudication on its affirmative defenses for fair use and the First Amendment. See generally ECF No. 108. Seuss sought summary judgment of ComicMix's willful copyright infringement. See generally ECF No. 107. On March 12, 2019, the Court granted ComicMix's motion as to the copyright infringement claims, finding ComicMix was entitled to its fair use defense. See MSJ Order at 33. ComicMix also sought summary judgment of the surviving trademark infringement claims on the grounds that neither a stylized font nor an illustration style is subject to trademark protection, and, even if they were, ComicMix's use thereof merits First Amendment protection under Rogers v. Grimaldi , 875 F.2d 994 (2d Cir. 1989). See generally ECF No. 108. The Court agreed that an illustration style is not protectable, see MSJ Order at 34, and that the "use of Seussian typefaces, not in conjunction with an enforceable mark, cannot support a claim for violation of the Lanham Act." Id. at 36–37. Accordingly, the Court granted ComicMix's motion as to the surviving trademark and unfair competition claims. Id. at 35, 37. Given this disposition, the Court declined to address the First Amendment issues. Id. at 37. Further, given the Court's determination that ComicMix was entitled to summary judgment on its fair use defense, the Court denied Seuss's cross-motion. Id.
On March 26, 2019, Seuss appealed the MSJ Order. See ECF No. 151. The Ninth Circuit heard oral argument on Seuss's appeal on April 27, 2020. See Dr. Seuss Enters., L.P. v. ComicMix LLC , 983 F.3d 443, 443 (9th Cir. 2020). On December 18, 2020, the Ninth Circuit issued its opinion affirming in part and reversing in part the MSJ Order. See id. The Court held a mandate hearing on March 5, 2021, during which the Court set a briefing schedule for any motions. See ECF No. 173. The present motions followed.
The Ninth Circuit reversed the Court's grant of summary judgment in favor of ComicMix on the copyright infringement claim but affirmed the Court's Rule 12(c) dismissal and grant of summary judgment in favor of ComicMix on the trademark claim. ComicMix , 983 F.3d at 448.
As relevant to the present motions, the Ninth Circuit concluded that each of the four statutory fair use factors "decisively weigh[s] against ComicMix and no countervailing copyright principles counsel otherwise." Id. at 451. As to the first factor, the purpose and character of the use, because Boldly! is "indisputably commercial" and not transformative, the Ninth Circuit found that the first factor weighs against fair use. Id. at 451–52. The Ninth Circuit concluded Boldly! is not a parody because it does not critique or comment on the Copyrighted Works by, for example, holding Dr. Seuss's style up to ridicule or criticizing the "purported self-importance of [the Copyrighted Works’] characters." Id. at 452–53. Nor does replacing Seuss characters and elements with Star Trek material render the work transformative, as this replacement does not give Seuss's work new purpose or meaning. Id. at 453. Boldly! lacks the benchmarks of transformative use, instead paralleling the Copyrighted Works’ purpose. Id. at 453–55.
As to the second factor, the nature of the copyrighted work, the Copyrighted Works are creative and expressive works, which weighs against a finding of fair use. Id. at 456. As to the third factor, the amount and substantiality of the portion of the copyrighted work used, the quantitative amount of the Copyrighted Works taken by Boldly! "was considerable," id. , with close replication of well-known and significant illustrations from all of the Copyrighted Works and copying of 14 of Go! ’s 24 pages, id. The Ninth Circuit also found the qualitative value used by Boldly! to be "substantial," as Boldly! "took the heart of Dr. Seuss's works" by, for example, taking the machine at the heart of Sneetches and repurposing it as a Star Trek transporter. Id. at 457–58.
As to the fourth factor, the effect on the value or market for the copyrighted work, the Ninth Circuit found that the Court erred in...
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