United States District Court, S.D. California
DR. SEUSS ENTERPRISES, L.P., Plaintiff,
COMICMIX LLC; GLENN HAUMAN; DAVID JERROLD FRIEDMAN a/k/a JDAVID GERROLD; and TY TEMPLETON, Defendants.
ORDER GRANTING IN PART AND DENYING IN PART MOTION TO
DISMISS (ECF NO. 8)
Janis L. Sammartino United States District Judge
before the Court is Defendant ComicMix LLC's Motion to
Dismiss (“MTD”), (ECF No. 8), Plaintiff Dr. Seuss
Enterprises, L.P.'s Response in Opposition to the Motion
to Dismiss (“Opp'n”), (ECF No. 22), and
Defendant's Reply in Support of the Motion to Dismiss
(“Reply”), (ECF No. 32). Also before the Court
are Defendant's Request for Judicial Notice
(“RJN”), (ECF No. 8-2), Plaintiff's Response
in Opposition to the Request for Judicial Notice (“RJN
Opp'n”), (ECF No. 23), and Defendant's Reply in
Support of the Request for Judicial Notice (“RJN
Reply”), (ECF No. 33). The Court previously vacated the
hearing on the Motion to Dismiss and took the matters under
submission without oral argument pursuant to Civil Local Rule
7.1(d). (ECF No. 35.) After considering the Parties'
arguments and the law, the Court GRANTS IN PART and DENIES IN
PART Defendant's Motion to Dismiss.
lawsuit concerns two literary works, one of which is alleged
to have infringed the other. Plaintiff is the assignee and
owner of various copyright registrations for and alleged
trademark rights in the works of the late Theodor S. Geisel,
better known under his pseudonym “Dr. Seuss.”
(E.g., Compl. ¶¶ 1, 3, ECF No. 1.) One of
Dr. Seuss's best-known books-and the one primarily at
issue in this suit-is Oh, the Places You'll Go!
created a Kickstarter campaign in order to fund printing and
distribution of an allegedly infringing work, Oh, the
Places You'll Boldly Go!
(“Boldly”). (See Id. ¶
34.) Defendants all took part in the creation of
Boldly. (Id. ¶¶ 2, 4-7, 19-22.)
Boldy combines aspects of various Dr. Seuss works
with “certain characters, imagery, and other elements
from Star Trek, the well-known science fiction
entertainment franchise created by Gene Roddenberry.”
(Id. ¶ 18.) Plaintiff alleges that
Boldly “misappropriates key elements” of
Go! and four other Dr. Seuss books. (Id.
¶ 26.) Defendants contest this point, and prior to the
threat of litigation noted on their Kickstarter page that:
While we firmly believe that our parody, created with love
and affection, fully falls within the boundary of fair use,
there may be some people who believe that this might be in
violation of their intellectual property rights. And we may
have to spend time and money proving it to people in black
robes. And we may even lose that.
(Id. ¶ 35.) Further, Boldly's
copyright page both states that “[t]his is a work of
parody, and is not associated with or endorsed by CBS Studios
or Dr. Seuss Enterprises, L.P.[, ]” and includes the
following text: “Copyright Disclaimer under section 107
of the Copyright Act 1976, allowance is made for ‘fair
use' for purposes such as criticism, comment, news
reporting, teaching, scholarship, education, research, and
parody.” (RJN Ex. 5, ECF No. 15-1, at 2.)
learning of Boldly and the corresponding Kickstarter
campaign, Plaintiff sent Defendants two letters over the span
of approximately ten days asserting their exclusive rights in
the relevant Dr. Seuss works. (Id. ¶ 36, 38.)
When Defendants did not respond to the first letter,
Plaintiff on the same day sent a takedown notice to
Kickstarter and a second letter to Plaintiff. (Id.
¶ 37, 39, 40). Kickstarter disabled access to
Defendants' campaign later that day. (Id. ¶
weeks later Plaintiff's Counsel and Defendants'
Counsel exchanged letters; Defendants argued their use of Dr.
Seuss's intellectual property was fair, threatened suit,
and advised Plaintiff that Defendants would send a
counter-notice to Kickstarter to reinstate the
Boldly campaign. (Id. ¶¶ 42-44.)
Plaintiff commenced this suit shortly thereafter. (See
Rule of Civil Procedure 12(b)(6) permits a party to raise by
motion the defense that the complaint “fail[s] to state
a claim upon which relief can be granted, ” generally
referred to as a motion to dismiss. The Court evaluates
whether a complaint states a cognizable legal theory and
sufficient facts in light of Federal Rule of Civil Procedure
8(a), which requires a “short and plain statement of
the claim showing that the pleader is entitled to
relief.” Although Rule 8 “does not require
‘detailed factual allegations, ' . . . it [does]
demand more than an unadorned,
Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting
Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555
(2007)). In other words, “a plaintiff's obligation
to provide the ‘grounds' of his
‘entitle[ment] to relief' requires more than labels
and conclusions, and a formulaic recitation of the elements
of a cause of action will not do.” Twombly,
550 U.S. at 555 (citing Papasan v. Allain, 478 U.S.
265, 286 (1986)). A complaint will not suffice “if it
tenders ‘naked assertion[s]' devoid of
‘further factual enhancement.' ”
Iqbal, 556 U.S. at 677 (citing Twombly, 550
U.S. at 557).
order to survive a motion to dismiss, “a complaint must
contain sufficient factual matter, accepted as true, to
‘state a claim to relief that is plausible on its
face.' ” Id. (quoting Twombly,
550 U.S. at 570); see also Fed. R. Civ. P. 12(b)(6).
A claim is facially plausible when the facts pled
“allow the court to draw the reasonable inference that
the defendant is liable for the misconduct alleged.”
Iqbal, 556 U.S. at 677 (citing Twombly, 550
U.S. at 556). That is not to say that the claim must be
probable, but there must be “more than a sheer
possibility that a defendant has acted unlawfully.”
Id. Facts “‘merely consistent with'
a defendant's liability” fall short of a plausible
entitlement to relief. Id. (quoting
Twombly, 550 U.S. at 557). Further, the Court need
not accept as true “legal conclusions” contained
in the complaint. Id. This review requires
context-specific analysis involving the Court's
“judicial experience and common sense.”
Id. at 678 (citation omitted). “[W]here the
well-pleaded facts do not permit the court to infer more than
the mere possibility of misconduct, the complaint has
alleged-but it has not ‘show[n]'-‘that the
pleader is entitled to relief.' ” Id.
move to dismiss Plaintiff's Complaint in its entirety,
arguing that: (1) Plaintiff's copyright claims fail
because Defendants' work is shielded by the fair use
doctrine; and (2) Defendants' use of Plaintiff's
alleged trademarks are shielded by (A) the First Amendment,
and (B) the doctrine of nominative fair use such that
Plaintiff's trademark claims fail, thus also causing (C)
Plaintiff's unfair competition claims to fail. (MTD
1-24.) The Court addresses each argument in turn.
Copyright Claims and Fair Use
articulated in case law, and later codified by the Copyright
Act of 1976, the doctrine of “fair use” shields
from infringement particular uses of a copyrighted work.
Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569,
576-77 (1994); 17 U.S.C. § 107. This is because
“courts have recognized that when a second author uses
another's protected expression in a creative and
inventive way, the result may be the advancement of learning
rather than the exploitation of the first writer.”
Maxtone-Graham v. Burtchaell, 803 F.2d 1253, 1259
(2d Cir. 1986).
use is a mixed question of law and fact, ” and
therefore is usually adjudicated either at trial or on a
motion for summary judgment where no material facts are in
dispute. Leadsinger, Inc. v. BMG Music Pub., 512
F.3d 522, 530 (9th Cir. 2008) (citing Harper & Row
Publishers, Inc. v. Nation Enters., 471 U.S. 539, 560
(1985)). However, a fair use defense may occasionally be
resolved on a motion to dismiss when it is appropriately
raised and there are no material facts in dispute.
Id. Nonetheless, “in light of a court's
narrow inquiry at this stage and limited access to all
potentially relevant and material facts needed to undertake
the analysis, courts rarely analyze fair use on a 12(b)(6)
motion.” Browne v. McCain, 611 F.Supp.2d 1073,
1078 (C.D. Cal. 2009) (citing Four Navy Seals v. Assoc.
Press, 413 F.Supp.2d 1136, 1148 (S.D. Cal. 2005);
Dr. Seuss Enters., L.P. v. Penguin Books USA, Inc.,
109 F.3d 1394, 1403 (9th Cir. 1997)).
codifying the fair use doctrine, Congress set forth four
non-exclusive factors for courts to consider in evaluating
whether a particular use of a copyrighted work is fair:
(1) the purpose and character of the use, including whether
such use is of a commercial nature or is for nonprofit
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in
relation to the copyrighted ...