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

983 F.3d 443 (9th Cir. 2020)

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Nature of the Case

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Facts

Boldly is a mashup that borrows liberally-graphically and otherwise-from Go! and other works by Dr. Seuss, and that uses Captain Kirk and his spaceship Enterprise to tell readers that 'life is an adventure but it will be tough.' Ds thought their Star Trek primer would be 'pretty well protected by parody.' Go! was the final book written by 'Dr. Seuss.' 'Dr. Seuss' was the top licensed book brand of 2017. Notably, Go! has been 'the number-one book on The New York Times Best Sellers list' 'every year during graduation season.' The other Dr. Seuss works that are at issue-How the Grinch Stole Christmas! (Grinch) and The Sneetches and Other Stories (Sneetches)-also remain well-recognized. P owns the intellectual property in Dr. Seuss's works, including the copyrights in his books and the trademarks in his brand. P markets the books to children and adults. P also publishes reissues of the books, such as anniversary editions. P licenses and oversees the creation of new works under the Dr. Seuss brand. Go! alone is the basis for several authorized derivative works such as the following books: Oh, the Things You Can Do that Are Good for You!; Oh, the Places I'll Go! By ME, Myself; Oh, Baby, the Places You'll Go!; and Oh, the Places I've Been! A Journal. In one well-known collaboration, The Jim Henson Company and P produced a television and book series called The Wubbulous World of Dr. Seuss, featuring 'muppetized' Dr. Seuss characters. Boldly did not get a license nor was it a collaboration. Ds placed the Enterprise crew in a colorful Seussian landscape full of wacky arches, mazes, and creatures-a world that is familiar to Dr. Seuss readers but a strange new planet for Captain Kirk's team. An e-commerce retailer, ThinkGeek, agreed to handle the distribution and merchandizing of Boldly and placed a conditional order for 5,000 copies. D raised $30,000 on Kickstarter to pay for production and other costs. P sent D a cease-and-desist letter and two follow-up letters. D responded that Boldly was a fair use of Go!. P also sent Kickstarter a takedown notice under the Digital Millennium Copyright Act; Kickstarter took down the campaign and blocked the pledged funds. Boldly remains unpublished. P sued Ds for copyright infringement, trademark infringement, and unfair competition. The district court granted dismissed P's trademark infringement claim as it relates to the title of Boldly. The parties then filed cross-motions for summary judgment on the copyright claim, and D moved for summary judgment on the remainder of the trademark infringement claim. The court granted D's summary judgment motion and denied Seuss's motion, holding that Boldly was a fair use of Go! and that the remainder of P's trademark infringement claim failed. P appealed.