It takes an Empire to hold Dr. Seuss back: court revisits TM claim and rejects liability for mashup

Dr. Seuss Enterprises, L.P. v. ComicMix LLC, No. 16-CV-2779-JLS, 2018 WL 2306733 (S.D. Cal. May 22, 2018)

Twentieth Century Fox Television v. Empire Distribution, Inc., 875 F.3d 1192 (9th Cir. 2017), interprets and applies the test from Rogers v. Grimaldi, 875 F.2d. 994 (2d Cir. 1989), and convinced the district court to grant judgment on the pleadings to defendants here, who are trying to produce a Star Trek/Dr. Seuss mashup, Oh! The Places You’ll Boldly Go.  Previously, the district court relied on a footnote in Rogers indicating that the Second Circuit wouldn’t apply Rogers to confusingly similar titles.  But in Empire, the Ninth Circuit held that the Rogers test was applicable to titles generally, there being no point in changing the rule when the plaintiff asserted rights in a title and some danger in doing so, given that the First Amendment interests at stake come from the defendant’s expressive use and that titles are inherently less likely to convey association, authorship, or endorsement than other “marks.”

Dr. Seuss argued that the title wasn’t chosen for artistically relevant reasons but was chosen to “borrow from the rights holder or avoid the drudgery of creating something fresh.”  But the bar for artistic relevance is low, and it couldn’t be said that the title wasn’t at all relevant to the content; rather, it described the content of the book.

Nor was the title explicitly misleading.  Even survey evidence isn’t sufficient to show explicit misleadingness. “To be relevant, evidence must relate to the nature of the behavior of the identifying material’s user, not the impact of the use.”  There was no statement that Dr. Seuss endorsed or was involved in Boldly, and in fact the copyright page 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.” “Although the effectiveness of these disclaimers is disputed by Plaintiff, what cannot be disputed is that there is no statement in Boldly to the contrary.”  Nor was copying the lettering and font of the title and many characters relevant—that wasn’t enough to be an “explicit misstatement.”

However, the court clarified and limited its holding (which is just going to lead to more motion practice, this time based on ESS (the Pig Pen/Play Pen case)).  Last time, the court didn’t address the plaintiff’s claimed trademark rights in fonts and illustration style on the cover and in the contents of the book.  These remain for further litigation.  (Where Rogers and Dastar will meet, along with the various Sleptone cases).