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

United States District Court, S.D. California

June 9, 2017

DR. SEUSS ENTERPRISES, L.P., Plaintiff,
v.
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)

          Hon. Janis L. Sammartino United States District Judge

         Presently 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.

         BACKGROUND

         This 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! (“Go!”).

         Defendants 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.)

         Upon 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. ¶ 41.)

         Several 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 generally id.)

         LEGAL STANDARD

         Federal 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, the-defendant-unlawfully-harmed-me accusation.” 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).

         In 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.

         ANALYSIS

         Defendants 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.

         I. Copyright Claims and Fair Use

         Originally 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).

         “Fair 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)).

         In 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 educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation to the copyrighted ...

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