Dr. Seuss Enterprises, L.P. v. Comicmix LLC ( 2020 )

FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
DR. SEUSS ENTERPRISES, L.P., a No. 19-55348
California limited partnership,
Plaintiff-Appellant, D.C. No.
3:16-cv-02779-
v. JLS-BGS
COMICMIX LLC, a Connecticut
limited liability company; GLENN OPINION
HAUMAN, an individual; DAVID
JERROLD FRIEDMAN, AKA David
Gerrold, an individual; TY
TEMPLETON, an individual,
Defendants-Appellees.
Appeal from the United States District Court
for the Southern District of California
Janis L. Sammartino, District Judge, Presiding
Argued and Submitted April 27, 2020
Seattle, Washington
Filed December 18, 2020
Before: M. Margaret McKeown, N. Randy Smith, and
Jacqueline H. Nguyen, Circuit Judges.
Opinion by Judge McKeown
2 DR. SEUSS ENTERPRISES V. COMICMIX LLC
SUMMARY *
Copyright / Trademark
The panel reversed the district court’s summary
judgment in favor of defendants on a copyright infringement
claim and affirmed the district court’s dismissal and grant of
summary judgment in favor of defendants on a trademark
claim concerning the book Oh, the Places You’ll Boldly Go!,
a Dr. Seuss and Star Trek mash-up.
Reversing the district court’s summary judgment on the
copyright claim, and remanding, the panel held that
defendants’ use of Dr. Seuss’s copyrighted works, including
the book Oh, the Places You’ll Go! (“Go!”), was not fair use.
The panel concluded that all of the statutory factors weighed
against fair use, and no countervailing copyright principles
counseled otherwise. The purpose and character of Oh, the
Places You’ll Boldly Go! (“Boldly”) weighed against fair use
because defendants’ use was commercial and was not a
parody or otherwise transformative. The creative nature of
Go! and the amount and substantiality of the use of Go! also
weighed against fair use, as did the potential market for or
value of Seuss. The panel held that because fair use is an
affirmative defense, the burden is on defendants with respect
to market harm.
Affirming in part, the panel held that plaintiffs did not
have a cognizable trademark infringement claim because,
under the Rogers test, the Lanham Act did not apply. The
panel concluded that the allegedly valid trademarks in the
*
This summary constitutes no part of the opinion of the court. It
has been prepared by court staff for the convenience of the reader.
DR. SEUSS ENTERPRISES V. COMICMIX LLC 3
title, the typeface, and the style of Go! were relevant to
achieving Boldly’s artistic purpose, and the use of the
claimed Go! trademarks was not explicitly misleading.
COUNSEL
Stanley J. Panikowski (argued), DLA Piper LLP (US), San
Diego, California; Andrew L. Deutsch DLA Piper LLP
(US), Los Angeles, California; Tamar Y. Duvdevani and
Marc E. Miller, DLA Piper LLP (US), New York, New
York; for Plaintiff-Appellant.
Dan Booth (argued), Dan Booth Law LLC, Concord,
Massachusetts; Michael Licari, Sprinkle Lloyd & Licari,
LLP, San Diego, California; for Defendants-Appellees.
Jacqueline C. Charlesworth, Alter, Kendrick & Baron LLP,
New York, New York, for Amicus Curiae the Motion
Picture Association Of America, Inc.
Susan Kohlmann and Alison Stein, Jenner & Block LLP,
New York, New York; James Dawson, Jenner & Block LLP,
Washington D.C.; Keith Kupferschmid and Terry Hart,
Copyright Alliance, Washington D.C.; for Amicus Curiae
the Copyright Alliance.
Peter S. Menell, Berkeley Center For Law & Technology,
University of California, Berkeley School of Law, Berkeley,
California for Amici Curiae Professors Peter S. Menell,
Shyamkrishna Balganesh, and David Nimmer.
Dean S. Marks, Dean S. Marks, Attorney-at-Law, Sherman
Oaks, California for Amicus Curiae Sesame Workshop.
4 DR. SEUSS ENTERPRISES V. COMICMIX LLC
Mason A. Kortz, Cyberlaw Clinic, Harvard Law School,
Cambridge, Massachusetts, for Amici Curiae Electronic
Frontier Foundation, Organization For Transformative
Works, Public Knowledge, Francesca Coppa, David Mack,
and Magdalene Visaggio.
Phillip R. Malone, Juelsgaard Intellectual Property and
Innovation Clinic, Mills Legal Clinic at Stanford Law
School, Stanford, California, for Amici Curiae Intellectual
Property Law Professors.
Erik Stallman, Samuelson Law, Technology & Public Policy
Clinic, University of California, Berkeley School of Law,
Berkeley, California, for Amici Curiae Professors Mark A.
Lemley, Jessica Litman, Lydia Loren, Pamela Samuelson,
and Rebecca Tushnet.
DR. SEUSS ENTERPRISES V. COMICMIX LLC 5
OPINION
McKEOWN, Circuit Judge:
In Dr. Seuss’s classic book, Oh, the Places You’ll Go!
(Go!), the narrator counsels the protagonist on a path of
exploration and discovery. The book closes with this note
of caution:
I’m sorry to say so
But, sadly it’s true
That Bang-ups
And Hang-ups
Can happen to you.
If he were alive today, Dr. Seuss might have gone on to say
that “mash-ups can happen to you.”
Enter Oh, the Places You’ll Boldly Go! (Boldly).
Authored by Star Trek episodes author David Gerrold,
illustrated by Ty Templeton, and edited by fellow Trekkie
Glenn Hauman (collectively, ComicMix), Boldly is a mash-
up 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.” The creators thought their
Star Trek primer would be “pretty well protected by parody,”
but acknowledged that “people in black robes” may
disagree. Indeed, we do.
The question we consider is whether Boldly’s use of
Dr. Seuss’s copyrighted works is fair use and thus not an
infringement of copyright. Because all of the fair use factors
favor Dr. Seuss, we reverse the district court’s summary
judgment in favor of ComicMix on the copyright
infringement claim. We affirm, however, the Rule 12(c)
6 DR. SEUSS ENTERPRISES V. COMICMIX LLC
dismissal and the grant of summary judgment in favor of
ComicMix on the trademark claim.
BACKGROUND
Go! was the final book written by the late Theodor S.
Geisel, better known by his pseudonym, “Dr. Seuss.” Many
of the dozens of books Dr. Seuss authored and illustrated
were wildly popular when they were published and have
remained so throughout the decades. “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” “[e]very 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. For simplicity,
we refer to the relevant Dr. Seuss works collectively as Go!.
Today, Dr. Seuss Enterprises, L.P. (Seuss) owns the
intellectual property in Dr. Seuss’s works, including the
copyrights in his books and the trademarks in his brand.
Seuss markets the books to children and adults. Seuss also
publishes reissues of the books, such as anniversary editions.
And Seuss licenses and oversees the creation of new works
under the Dr. Seuss brand. Seuss carefully vets the many
licensing requests it receives and works closely with the
licensees and collaborators to produce works based on Dr.
Seuss’s books.
The myriad licensed works that proliferate in the market
include fine art, toys, video games, stage productions,
motion pictures, and books that incorporate elements of Dr.
Seuss’s iconic works. 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
DR. SEUSS ENTERPRISES V. COMICMIX LLC 7
Go!; and Oh, the Places I’ve Been! A Journal. Seuss has
also entered into various collaborations to create new works
that target the audiences of Seuss and its collaborators. In
one well-known collaboration, The Jim Henson Company
and Seuss produced a television and book series called The
Wubbulous World of Dr. Seuss, featuring “muppetized” Dr.
Seuss characters.
Boldly is not a licensed work of Seuss. Nor is it a
collaboration or an otherwise authorized work.
Nevertheless, in May 2016, David Gerrold (author of Star
Trek episodes) and Glenn Hauman (Vice President of the
publishing company ComicMix LLC) decided to send the
Enterprise crew to a new literary world. Gerrold and
Hauman agreed to create a “Star Trek Primer”—a mash-up
of Star Trek and another well-known primer. A mash-up is
“something created by combining elements from two or
more sources,” such as “a movie or video having characters
or situations from other sources.” Mash-up,
Merriam-Webster Dictionary, https://www.merriam-
webster.com/dictionary/mash-up.
After considering Pat the Bunny and other primers,
Gerrold and Hauman decided to use Go! and to place 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. They hired Ty Templeton, an experienced
illustrator. ComicMix purposely crafted Boldly so that the
title, the story, and the illustrations “evoke” Go!.
ComicMix planned to publish and sell Boldly. An e-
commerce retailer, ThinkGeek, agreed to handle the
distribution and merchandizing of Boldly, and placed a
conditional order for 5,000 copies. In August 2016,
ComicMix started a successful crowdsourcing campaign on
8 DR. SEUSS ENTERPRISES V. COMICMIX LLC
Kickstarter to pay for production and other costs, eventually
raising close to $30,000. The campaign also drew the
attention of an editor at Andrews McMeel Publishing, who
proposed doing a direct sale publication of Boldly.
The fundraising effort raised more than eyebrows when
the Seuss organization became aware of Boldly. In
September and October of 2016, Seuss sent ComicMix a
cease-and-desist letter and two follow-up letters. ComicMix
responded that Boldly was a fair use of Go!. Seuss 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.
Seuss filed suit against Hauman, Gerrold, Templeton,
and ComicMix LLC in November 2016 for copyright
infringement, trademark infringement, and unfair
competition. The district court granted ComicMix’s Rule
12(c) motion and dismissed Seuss’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 ComicMix moved for summary judgment on the
remainder of the trademark infringement claim. The district
court granted ComicMix’s summary judgment motion and
denied Seuss’s motion, holding that Boldly was a fair use of
Go! and that the remainder of Seuss’s trademark
infringement claim failed. 1
ComicMix does not dispute that it tried to copy portions
of Go! as accurately as possible. Templeton urged the team
1
Although Seuss alleged unfair competition claims in the
Complaint, it failed to address them in its opening brief, and thus we do
not consider those claims here. See Indep. Towers of Wash. v.
Washington, 350 F.3d 925, 929 (9th Cir. 2003).
DR. SEUSS ENTERPRISES V. COMICMIX LLC 9
to “keep to [Go!’s] sentiment” that “life is an adventure but
it WILL be tough and there WILL be setbacks, and you
should not despair of them.” As for the text of Boldly,
Hauman created a side-by-side chart comparing the texts of
Go! and Boldly in order to “match the structure of Go!.”
Boldly also closely mimics many illustrations in Go!, as a
result of what ComicMix called “slavish[] copy[ing] from
Seuss.” In one instance, Templeton took “about seven
hours” to copy a single illustration because he “painstakingly
attempted to make” the illustration in Boldly “nearly
identical” to its Seussian counterpart.
The issue in this appeal is not whether Boldly infringed
Go!, but whether Boldly! was a fair use of Go!. 2 Gerrold and
Hauman thought they could either get a license or create a
parody, and concluded that Boldly “come[s] down well on
the side of parody” and does not infringe Seuss’s copyright.
Templeton agreed. Despite being “slightly concerned,”
ComicMix did not consult a lawyer or pursue the option of a
license. 3 This failure led to this lawsuit.
ANALYSIS
I. BOLDLY DOES NOT MAKE FAIR USE OF GO!
The fair use doctrine first took root in a case involving
the biography of our first president. Justice Story asked
whether copying the writings of President George
Washington for a biography was “a justifiable use of the
2
We received many thoughtful amicus briefs, and we thank amici
for their participation.
3
ComicMix also did not obtain a license for the use of Star Trek
material, but the intellectual property in Star Trek is not at issue in this
case.
10 DR. SEUSS ENTERPRISES V. COMICMIX LLC
original materials, such as the law recognizes as no
infringement of the copyright . . . .” See Folsom v. Marsh,
9 F. Cas. 342, 348 (C.C.D. Mass. 1841). Although fair use
was not codified until 1976, American copyright law has
always counterbalanced the exclusive rights of a copyright
with a fair use backstop. Under the statute, “fair use of a
copyrighted work . . . is not an infringement of copyright.”
17 U.S.C. § 107. “The fair use defense permits courts to
avoid rigid application of the copyright statute when, on
occasion, it would stifle the very creativity which that law is
designed to foster.” Dr. Seuss Enters., L.P. v. Penguin
Books USA, Inc., 109 F.3d 1394, 1399 (9th Cir. 1997)
(quotation marks and citation omitted).
The factors that determine fair use have changed little
since Justice Story first announced them in Folsom and now
are reflected in § 107 of the Copyright Act of 1976 as the
following four non-exclusive factors:
(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
work as a whole; and
(4) the effect of the use upon the potential
market for or value of the copyrighted
work.
17 U.S.C. § 107(1)–(4); accord Folsom, 9 F. Cas. at 348.
Congress codified these factors without intending to disrupt
DR. SEUSS ENTERPRISES V. COMICMIX LLC 11
“the common-law tradition of fair use adjudication.”
Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 577
(1994) (citing H.R. Rep. No. 94-1476, p. 66 (1976)). The
fair use defense remains an “equitable rule of reason.” Sony
Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417,
448 (1984) (quoting H.R. Rep. No. 94-1476, p. 65).
Fair-use analysis, like the Go! protagonist’s life journey,
is “a Great Balancing Act.” All four factors are “to be
explored, and the results weighed together, in light of the
purposes of copyright.” Campbell, 510 U.S. at 578. The
Supreme Court teaches that we should eschew “bright-line
rules” and “categories of presumptively fair use,” and
instead engage in a “case-by-case analysis.” Id. at 577, 584.
As we have observed, fair use analysis can be elusive to the
point of “approaching ‘the metaphysics of the law, where the
distinctions are . . . very subtle and refined, and, sometimes,
almost evanescent.’” Monge v. Maya Mags., Inc., 688 F.3d
1164, 1171 (9th Cir. 2012) (quoting Folsom, 9 F. Cas. at
344). Not so with this case. Because all of the statutory
factors decisively weigh against ComicMix and no
countervailing copyright principles counsel otherwise, we
conclude that Boldly did not make fair use of Go!.
A. The Purpose and Character of Boldly Weigh
Against Fair Use
The first statutory factor examines “the purpose and
character of the use, including whether such use is of a
commercial nature or is for nonprofit educational purposes.”
17 U.S.C. § 107(1). This factor has taken on a heightened
significance because it influences the lens through which we
consider two other fair use factors. The third factor—the
amount and substantiality of use—“will harken back” to the
first factor. See Campbell, 510 U.S. at 586. And the fourth
factor, relating to market harm, is influenced by whether the
12 DR. SEUSS ENTERPRISES V. COMICMIX LLC
commercial use was transformative. See Monge, 688 F.3d
at 1181.
Although a commercial use is no longer considered
presumptively unfair, the nature of the work remains “one
element of the first factor enquiry.” Campbell, 510 U.S. at584–85. As explained below, Boldly is not transformative,
and its indisputably commercial use of Go! counsels against
fair use. See Penguin Books, 109 F.3d at 1401(commerciality “further cuts against the fair use defense”
when there is “no effort to create a transformative work”).
The term “transformative” does not appear in § 107, yet
it permeates copyright analysis because in Campbell, the
Court interpreted the “central purpose” of the first-factor
inquiry as determining “whether and to what extent the new
work is ‘transformative.’” Campbell, 510 U.S. at 579.
Transformative use of the original work can tip the first
factor in favor of fair use.
A transformative work “adds something new, with a
further purpose or different character, altering the first with
new expression, meaning, or message.” Id. On the other
hand, a work that “merely supersedes the objects of the
original creation” is not transformative. Id. (quotation marks
omitted). While the analysis of the first fair use factor “may
be guided by the examples given in the preamble to § 107,”
i.e., criticism, comment, news reporting, teaching,
scholarship, and research, id. at 578–79, not even these
works compel “a per se finding of fair use,” Monge, 688 F.3d
at 1173. Thus, we do not ask whether mash-ups can be fair
use—they can be—but whether Boldly is a transformative
work.
The purpose and character of a parody fits squarely into
preamble examples—particularly “criticism” and
DR. SEUSS ENTERPRISES V. COMICMIX LLC 13
“comment”—and has “an obvious claim” to transformative
use. Campbell, 510 U.S. at 579. By definition, a parody
must “use some elements of a prior author’s composition to
create a new one that, at least in part, comments on that
author’s works.” Id. at 580. The need “to mimic an original
to make its point” is the essence of parody. Id. at 580–81;
see Penguin Books, 109 F.3d at 1400 (a parody must
“conjure up” at least a part of “the object of [the] parody”).
In short, a parody is a spoof, send-up, caricature, or comment
on another work. A great example of a parody is the book
The Wind Done Gone, which parrots portions of Gone with
the Wind to offer a critical take on the book. See Suntrust
Bank v. Houghton Mifflin Co., 268 F.3d 1257, 1270–71 (11th
Cir. 2001) (“It is hard to imagine” how a parody that
attempts to “strip the romanticism” of slavery in Gone with
the Wind can be made “without depending heavily upon
copyrighted elements of that book.”). On the other hand, if
the commentary has no critical bearing on the
substance or style of the original
composition, which the alleged infringer
merely uses to get attention or to avoid the
drudgery in working up something fresh, the
claim to fairness in borrowing from another’s
work diminishes accordingly (if it does not
vanish), and other factors, like the extent of
its commerciality, loom larger.
Campbell, 510 U.S. at 580.
Boldly is not a parody. ComicMix does not seriously
contend that Boldly critiques or comments on Go!. Rather,
it claims Boldly is a parody because it situated the “violent,
sexual, sophisticated adult entertainment” of Star Trek “in
the context of [Dr. Seuss]” to create a “funny” book. We
considered and rejected this very claim in an appeal
14 DR. SEUSS ENTERPRISES V. COMICMIX LLC
involving another well-known book by Dr. Seuss—The Cat
in the Hat (Cat). The retelling of the O.J. Simpson double
murder trial in the world of Cat—in a book titled The Cat
NOT in the Hat! A Parody by Dr. Juice (Not)—was not a
parody of Cat. Penguin Books, 109 F.3d at 1396, 1401. We
explained that “broadly mimic[king] Dr. Seuss’[s]
characteristic style” is not the same as “hold[ing] his style up
to ridicule,” and that without a critique of Cat, all Not did
was “simply retell the Simpson tale” using the expressive
elements of Cat “to get attention or maybe even to avoid the
drudgery in working up something fresh.” Id. at 1401(quotation marks and citation omitted).
Boldly’s claim to a parody fares no better. Although
elements of Go! are featured prominently in Boldly, the
juxtapositions of Go! and Star Trek elements do not “hold
[Seussian] style” up to ridicule. Id. From the project’s
inception, ComicMix wanted Boldly to be a Star Trek primer
that “evoke[s]” rather than “ridicule[s]” Go!. Similarly,
Boldly’s use of the other Seuss works does not conjure up a
critique of Go!. Boldly’s replacement of Grinch’s “‘Whos
from Who-ville’ with the diverse crew and Kirk’s ‘lovers of
every hue,’” the redrawing of “a Sneetches machine to
signify the Enterprise transporter,” and the rendering of “the
‘lonely games’ played in Go!” as a “contemplative chess
match between two Spocks” were all used to tell the story of
the Enterprise crew’s adventures, not to make a point about
Go!. Lacking “critical bearing on the substance or style of”
Go!, Boldly cannot be characterized as a parody. Campbell,
510 U.S. at 580.
We also reject as “completely unconvincing”
ComicMix’s “post-hoc characterization of the work” as
criticizing the theme of banal narcissism in Go!. Penguin
Books, 109 F.3d at 1403; see also Castle Rock Ent., Inc. v.
DR. SEUSS ENTERPRISES V. COMICMIX LLC 15
Carol Publ’g Grp., Inc., 150 F.3d 132, 142 (2d Cir. 1998)
(ignoring similar “post hoc rationalizations”). The effort to
treat Boldly as lampooning Go! or mocking the purported
self-importance of its characters falls flat.
Nor is Boldly otherwise transformative. ComicMix
argues that even if Boldly is not a parody, Boldly is
transformative because it replaced Seuss characters and
other elements with Star Trek material. Again, the Cat case
repudiates ComicMix’s position. There, efforts to leverage
Dr. Seuss’s characters without having a new purpose or
giving Dr. Seuss’s works new meaning similarly fell short of
being transformative. The copyists “merely use[d]” what
Dr. Seuss had already created—e.g., “the Cat’s stove-pipe
hat, the narrator (“Dr. Juice”), and the title (The Cat NOT in
the Hat!)”—and overlaid a plot about the O.J. Simpson
murder trial without altering Cat “with ‘new expression,
meaning or message.’” Penguin Books, 109 F.3d at 1401(quoting Campbell, 510 U.S. at 578). For the same reasons,
ComicMix’s efforts to add Star Trek material on top of what
it meticulously copied from Go! fail to be transformative.
Notably, Boldly lacks the benchmarks of transformative
use. These telltale signs of transformative use are derived
from the considerations laid out in Campbell, our north star,
and Seltzer v. Green Day, Inc. from our circuit: (1) “further
purpose or different character” in the defendant’s work, i.e.,
“the creation of new information, new aesthetic, new
insights and understanding”; (2) “new expression, meaning,
or message” in the original work, i.e., the addition of “value
to the original”; and (3) the use of quoted matter as “raw
material,” instead of repackaging it and “merely
supersed[ing] the objects of the original creation.” See
Campbell, 510 U.S. at 579; Seltzer v. Green Day, Inc., 725
F.3d 1170, 1176 (9th Cir. 2013) (quoting Leval, Toward a
16 DR. SEUSS ENTERPRISES V. COMICMIX LLC
Fair Use Standard, 103 Harv. L. Rev. 1105, 1111 (1990)).
Boldly possesses none of these qualities; it merely
repackaged Go!.
Boldly’s claim to transformative use rests on the fact that
it has “extensive new content.” But the addition of new
expression to an existing work is not a get-out-of-jail-free
card that renders the use of the original transformative. The
new expression must be accompanied by the benchmarks of
transformative use. See, e.g., Seltzer, 725 F.3d at 1177–78;
Cariou v. Prince, 714 F.3d 694, 706 (2d Cir. 2013); Blanch
v. Koons, 467 F.3d 244, 251–52 (2d Cir. 2006).
Instead of possessing a further purpose or different
character, Boldly paralleled Go!’s purpose. In propounding
the same message as Go, Boldly used expression from Go!
to “keep to [Go!’s] sentiment.” Absent new purpose or
character, merely recontextualizing the original expression
by “plucking the most visually arresting excerpt[s]” of the
copyrighted work is not transformative. L.A. News Serv. v.
CBS Broad., Inc., 305 F.3d 924, 938–39 (9th Cir. 2002). By
contrast, reconstituting copyrighted expression was for a
new, transformative purpose when a “seven-second clip of
Ed Sullivan’s introduction of the [band] Four Seasons on
The Ed Sullivan Show” was used in the musical Jersey Boys,
not to introduce the band’s performance, but to serve “as a
biographical anchor” about the band. SOFA Ent., Inc. v.
Dodger Prods., Inc., 709 F.3d 1273, 1276, 1278 (9th Cir.
2013).
Boldly also does not alter Go! with new expression,
meaning, or message. A “‘transformative work’ is one that
alters the original work.” Perfect 10, Inc. v. Amazon.com,
Inc., 508 F.3d 1146, 1164 (9th Cir. 2007) (quoting
Campbell, 510 U.S. at 579). While Boldly may have altered
Star Trek by sending Captain Kirk and his crew to a strange
DR. SEUSS ENTERPRISES V. COMICMIX LLC 17
new world, that world, the world of Go!, remains intact. Go!
was merely repackaged into a new format, carrying the story
of the Enterprise crew’s journey through a strange star in a
story shell already intricately illustrated by Dr. Seuss.
Unsurprisingly, Boldly does not change Go!; as ComicMix
readily admits, it could have used another primer, or even
created an entirely original work. Go! was selected “to get
attention or to avoid the drudgery in working up something
fresh,” and not for a transformative purpose. Campbell, 510
U.S. at 580.
Most telling is ComicMix’s repackaging of Go!’s
illustrations. The Star Trek characters step into the shoes of
Seussian characters in a Seussian world that is otherwise
unchanged. ComicMix captured the placements and poses
of the characters, as well as every red hatch mark arching
over the handholding characters in Grinch’s iconic finale
scene, then plugged in the Star Trek characters. (The Seuss
images always appear to the left of the Boldly! images
juxtaposed in this opinion.)
ComicMix copied the exact composition of the famous
“waiting place” in Go!, down to the placements of the couch
and the fishing spot. To this, ComicMix added Star Trek
characters who line up, sit on the couch, and fish exactly like
the waiting place visitors they replaced. Go! continues to
carry the same expression, meaning, or message: as the
18 DR. SEUSS ENTERPRISES V. COMICMIX LLC
Boldly text makes clear, the image conveys the sense of
being stuck, with “time moving fast in the wink of an eye.”
ComicMix also copied a scene in Sneetches, 4 down to
the exact shape of the sandy hills in the background and the
placement of footprints that collide in the middle of the page.
Seussian characters were replaced with Spocks playing
chess, making sure they “ha[d] similar poses” as the original,
but all ComicMix really added was “the background of a
weird basketball court.”
ComicMix likewise repackaged Go!’s text. Instead of
using the Go! story as a starting point for a different artistic
or aesthetic expression, Hauman created a side-by-side
comparison of the Go! and Boldly texts in order “to try to
match the structure of Go!.” This copying did not result in
the Go! story taking on a new expression, meaning, or
4
The illustration comes from a story called The Zax.
DR. SEUSS ENTERPRISES V. COMICMIX LLC 19
message. Because Boldly “left the inherent character of the
[book] unchanged,” it was not a transformative use of Go!.
Monge, 688 F.3d at 1176.
Although ComicMix’s work need not boldly go where
no one has gone before, its repackaging, copying, and lack
of critique of Seuss, coupled with its commercial use of Go!,
do not result in a transformative use. The first factor weighs
definitively against fair use.
B. The Nature of Go! Weighs Against Fair Use
The second statutory factor considers the “the nature of
the copyrighted work.” 17 U.S.C. § 107(2). This factor
“recognizes that creative works are ‘closer to the core of
intended copyright protection’ than informational and
functional works, ‘with the consequence that fair use is more
difficult to establish when the former works are copied.’”
Penguin Books, 109 F.3d at 1402 (quoting Campbell, 510
U.S. at 586). Hence, Boldly’s copying of a creative and
“expressive work[]” like Go! tilts the second factor against
fair use. Campbell, 510 U.S. at 586.
This factor also considers whether the copied work is
unpublished, a consideration that is not relevant for the Seuss
works. “[T]he unpublished nature of a work is a key, though
not necessarily determinative, factor tending to negate a
defense of fair use,” because a copyist’s initial publication
of the work undermines “the author’s right to control the first
public appearance of his undisseminated expression.”
Harper & Row, Publishers Inc. v. Nation Enter., 471 U.S.
539, 554–55 (1985) (quotation marks omitted). But the
converse is not necessarily true; neither Harper & Row nor
any principle of fair use counsels that the publication of the
copyrighted work weighs in favor of fair use. See 4 William
F. Patry, Patry on Copyright § 10:139.30 (2020) (explaining
20 DR. SEUSS ENTERPRISES V. COMICMIX LLC
that “the fact that a work is published does not mean that the
scope of fair use is per se broader”).
Mindful that the second factor “typically has not been
terribly significant in the overall fair use balancing,”
Penguin Books, 109 F.3d at 1402, we conclude that the
creative nature of Go! weighs against fair use.
C. The Amount and Substantiality of the Use of Go!
Weigh Against Fair Use
The third statutory factor asks whether “the amount and
substantiality of the portion used in relation to the
copyrighted work as a whole” favor fair use. 17 U.S.C.
§ 107(3). We consider both “the quantitative amount and
qualitative value of the original work used in relation to the
justification for that use.” Seltzer, 725 F.3d at 1178. This
factor circles back to the first factor because “the extent of
permissible copying varies with the purpose and character of
the use.” Campbell, 510 U.S. at 586–87.
The quantitative amount taken by Boldly is substantial.
To be sure, we understand that “[t]he inquiry under this
factor is a flexible one, rather than a simple determination of
the percentage of the copyrighted work used.” Monge, 688
F.3d at 1179. That said, ComicMix’s copying was
considerable—it copied “14 of Go!’s 24 pages,” close to
60% of the book, and significant “illustrations from Grinch
and two stories in Sneetches.” Crucially, ComicMix did not
merely take a set of unprotectable visual units, a shape here
DR. SEUSS ENTERPRISES V. COMICMIX LLC 21
and a color patch there. 5 For each of the highly imaginative
illustrations copied by ComicMix, it replicated, as much and
as closely as possible from Go!, the exact composition, the
particular arrangements of visual components, and the
swatches of well-known illustrations.
ComicMix’s claim that it “judiciously incorporated just
enough of the original to be identifiable” as Seussian or that
its “modest” taking merely “alludes” to particular Seuss
illustrations is flatly contradicted by looking at the books.
During his deposition, Boldly illustrator Templeton detailed
the fact that he “stud[ied] the page [to] get a sense of what
the layout was,” and then copied “the layout so that things
are in the same place they’re supposed to be.” The result
was, as Templeton admitted, that the illustrations in Boldly
were “compositionally similar” to the corresponding ones in
Go!. In addition to the overall visual composition,
Templeton testified that he also copied the illustrations down
to the last detail, even “meticulously try[ing] to reproduce as
much of the line work as [he could].”
5
We are cautious not to overzealously decompose visual expression
into its abstract, and thus unprotectable, units, because that would mean
that any amount of taking by ComicMix would be permissible. See
Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1003 (2d Cir. 1995)
(critiquing the view that “there can be no originality in a painting because
all colors of paint have been used somewhere in the past” (citation
omitted)).
22 DR. SEUSS ENTERPRISES V. COMICMIX LLC
Again, we turn to Boldly itself for illustrative examples.
Here, ComicMix replicated the overall composition and
placement of the shapes, colors and detailed linework.
ComicMix also took the overall composition of a Seuss
illustration—the placement of the tree, the hills, and the
white space surrounding these elements. The trees in both
versions have the same exact number, bends, and lengths of
branches, with the same branch in both versions hoisting a
dangling figure. ComicMix’s “‘verbatim’ copying of the
original” weighs against fair use. Campbell, 510 U.S. at 589.
The qualitative value used by Boldly is also substantial.
The qualitative analysis often asks if the copyist took the
“heart,” that is, “the most valuable and pertinent portion,” of
the work. L.A. News Serv., 305 F.3d at 940. Taking “the
‘heart’ of each individual copyrighted picture,” tilts the third
factor against fair use. Monge, 688 F.3d at 1178.
DR. SEUSS ENTERPRISES V. COMICMIX LLC 23
ComicMix took the heart of Dr. Seuss’s works. For
example, ComicMix’s copying of a Sneetches illustration
exhibits both the extensive quantitative and qualitative
taking by ComicMix. Sneetches is a short Seuss story about
two groups of Sneetches: the snooty star-bellied Sneetches
and the starless ones. The story’s plot, the character, and the
moral center on a highly imaginative and intricately drawn
machine that can take the star-shaped status-symbol on and
off the bellies of the Sneetches. Different iterations of the
machine, the heart of Sneetches, appear in ten out of twenty-
two pages of the book. See Penguin Books, 109 F.3d at 1402(the element that “appear[s] in nearly every image of [Cat]”
is “the highly expressive core of Dr. Seuss’[s] work”).
ComicMix took this “highly expressive core” of
Sneetches. Templeton testified that “the machine in the Star-
Bellied Sneetches story” was “repurposed to remind you of
the transporter” in Star Trek. Drawing the machine “took
. . . about seven hours” because Templeton tried to “match”
the drawing down to the “linework” of Seuss. He
“painstakingly attempted” to make the machines “identical.”
In addition to the machine, Boldly took “the poses that the
Sneetches are in” so that “[t]he poses of commander Scott
and the Enterprise crew getting into the machine are
similar.” Boldly also captured the particular “crosshatch” in
how Dr. Seuss rendered the machine, the “puffs of smoke
coming out of the machine,” and the “entire layout.”
24 DR. SEUSS ENTERPRISES V. COMICMIX LLC
Finally, we cannot countenance ComicMix’s argument
that the amount taken is not substantial because ComicMix
used only five out of almost sixty Dr. Seuss books. This is
fake math that distorts the result because ComicMix has
identified the wrong denominator; the third factor looks at
“the amount and substantiality of the portion used in relation
to the copyrighted work as a whole,” not to the entire corpus
of the author. 17 U.S.C. § 107(3) (emphasis added). Under
ComicMix’s theory, the more prolific the creator, the greater
license a copyist would have to copy and imitate the original
works. Nothing supports that argument.
Given the absence of a parody or a transformative work,
ComicMix offers no justification for the commercial
exploitation and the extensive and meticulous copying of
Go!. In fact, after the case was initiated, Gerrold offered to
“replace the stuff that’s too dead on,” demonstrating that the
mash-up “based on Dr. Seuss’s artwork” could have been
created without wholesale copying of the work. The third
factor weighs decisively against fair use.
D. The Potential Market for or Value of Seuss
Weighs Against Fair Use
The fourth and final fair use factor considers “the effect
of the use upon the potential market for or value of the
copyrighted work.” 17 U.S.C. § 107(4). Courts must
address “not only the extent of market harm caused by the
particular actions of the alleged infringer, but also ‘whether
unrestricted and widespread conduct of the sort engaged in
by the defendant would result in a substantially adverse
impact on the potential market’ for the original” and “the
market for derivative works.” Campbell, 510 U.S. at 590(quotation marks and citations omitted). Having found that
Boldly was transformative—a conclusion with which we
disagree—the district court also erred in shifting the burden
DR. SEUSS ENTERPRISES V. COMICMIX LLC 25
to Seuss with respect to market harm. That shifting, which
is contrary to Campbell and our precedent, led to a skewed
analysis of the fourth factor.
Mindful of the Court’s directive to “eschew[]
presumptions under this factor, we refrain from presuming
harm in the potential market” for commercial uses and
“determine it in the first instance.” Monge, 688 F.3d at 1181.
Still, we recognize that ComicMix’s non-transformative and
commercial use of Dr. Seuss’s works likely leads to
“cognizable market harm to the original.” Campbell, 510
U.S. at 591; see Penguin Books, 109 F.3d at 1403 (“Because,
on the facts presented, [the defendants’] use of [the Cat]
original was nontransformative, and admittedly commercial,
we conclude that market substitution is at least more certain,
and market harm may be more readily inferred.”).
Not much about the fair use doctrine lends itself to
absolute statements, but the Supreme Court and our circuit
have unequivocally placed the burden of proof on the
proponent of the affirmative defense of fair use. ComicMix
tries to plow a new ground in contending that fair use is not
an affirmative defense and that the burden shifts to Seuss to
prove potential market harm. Campbell squarely forecloses
this argument: “[s]ince fair use is an affirmative defense, its
proponent would have difficulty carrying the burden of
demonstrating fair use without favorable evidence about
relevant markets.” Campbell, 510 U.S. at 590 (footnote
omitted); see also Harper & Row, 471 U.S. at 561. We have
echoed that principle. “[F]air use is an affirmative defense,”
thus requiring the defendant to “bring forward favorable
evidence about relevant markets.” Penguin Books, 109 F.3d
at 1403; see Monge, 688 F.3d at 1170 (“As with all
26 DR. SEUSS ENTERPRISES V. COMICMIX LLC
affirmative defenses, . . . the defendant bears the burden of
proof” on fair use.). 6
In an effort to distinguish controlling precedent,
ComicMix argues that in Lenz v. Universal Music Corp., we
deviated from our precedent construing fair use as an
affirmative defense. 815 F.3d 1145 (9th Cir. 2016). This
view misreads Lenz, which involved fair use in a different
corner of the copyright law, the safe harbor for Internet
service providers under the Digital Millennium Copyright
Act (DMCA). We held that to avoid liability under 17
U.S.C. § 512(f), a copyright holder must “consider the
existence of fair use before sending a takedown
notification.” Id. at 1151, 1153; see 17 U.S.C.
§ 512(c)(3)(A). More pointedly, we examined the nature of
fair use emphatically “for the purposes of the DMCA,” and
explicitly went on to note that in that context, “fair use is
uniquely situated in copyright law so as to be treated
differently than traditional affirmative defenses.” Lenz, 815
F.3d at 1153. In no way did we deviate from our
characterization of fair use as an affirmative defense under
§ 107. To the contrary, in addition to clarifying that, unlike
copyright misuse and laches, fair use is not an excuse to
copyright infringement, we reiterated that “the burden of
proving fair use is always on the putative infringer.” Id. at
1152–53 (quoting Bateman v. Mnemonics, Inc., 79 F.3d
1532, 1542 n.22 (11th Cir. 1996)).
Hence, ComicMix, as the proponent of the affirmative
defense of fair use, “must bring forward favorable evidence
6
Although the Eleventh Circuit has suggested that it is sometimes
“reasonable to place on Plaintiffs the burden of going forward with
evidence on” the fourth factor, see Cambridge Univ. Press v. Patton, 769
F.3d 1232, 1279 (11th Cir. 2014), we have never adopted this view.
DR. SEUSS ENTERPRISES V. COMICMIX LLC 27
about relevant markets.” Penguin Books, 109 F.3d at 1403.
Because ComicMix’s position is that it does not bear the
burden of proof, it does not argue the adequacy of its scant
evidence. ComicMix principally relies on the expert report
of Professor Joshua Gans. The entire report is premised on
Boldly being transformative, which it is not, and on the
expert’s misunderstanding about fair use and U.S. copyright
law. But even if we put aside the false premises of the report,
and, for the sake of argument, credit its methodology and
conclusions, the report fails to account for key fourth-factor
considerations. 7 We conclude that ComicMix did not meet
its burden on the fourth factor.
First, ComicMix sidesteps the fact that it intentionally
targeted and aimed to capitalize on the same graduation
market as Go!. The planned release date for the first
publication of Boldly was scheduled to launch “in time for
school graduations.” ComicMix acknowledged that
Boldly’s use of Go! will “resonate so much, especially as a
graduation gift for folks who grew up reading Seuss.” The
assertion that the two works target different age groups is
undermined by ComicMix’s own admission that Boldly is
“safe” for five-year-olds and “a perfect gift for children and
adults of all ages.”
Nor does ComicMix address a crucial right for a
copyright holder—the derivative works market, an area in
which Seuss engaged extensively for decades. See 17 U.S.C.
§ 106(2). A relevant derivative works market includes
7
Seuss moved to exclude the Gans report under Federal Rule of
Evidence 702. The district court denied the motion as moot because it
did not rely on the report. We do not review the district court’s ruling or
otherwise offer our view on the motion. We simply note that even if the
Gans report is an admissible expert opinion, it would be insufficient to
tilt the fourth factor in ComicMix’s favor.
28 DR. SEUSS ENTERPRISES V. COMICMIX LLC
“those that creators of original works would in general
develop or license others to develop.” Campbell, 510 U.S.
at 592. Seuss has already vetted and authorized multiple
derivatives of Go!, including 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. Recently, Seuss
announced that it has partnered with Warner Animation
Group to adapt Go! into an animated motion picture,
scheduled for theatrical release in 2027. See Dave McNary,
Dr. Seuss’ ‘Cat in the Hat’ Spinoff and ‘Oh, The Places
You’ll Go’ Getting Movie Adaptations, Variety (Oct. 1,
2020).
Works like Boldly would curtail Go!’s potential market
for derivative works. This is not a case where the copyist’s
work fills a market that the copyright owner will likely
avoid, as is true for “a lethal parody” or “a scathing theater
review.” Campbell, 510 U.S. at 591–92. In fact, ComicMix
hoped to get to one of the potential markets for Seuss’s
derivative works before Seuss, believing that Seuss would
“want to publish it themselves and give [ComicMix] a nice
payday.”
Crucially, ComicMix does not overcome the fact that
Seuss often collaborates with other creators, including in
projects that mix different stories and characters. Seuss
routinely receives requests for collaborations and licenses,
and has entered into various collaborations that apply
Seuss’s works to new creative contexts, such as the
television and book series entitled The Wubbulous World of
Dr. Seuss, a collaboration with The Jim Henson Company,
famous for its puppetry and the creation of other characters
like the Muppets. Other collaborations include a digital
game called Grinch Panda Pop, that combines Jam City’s
DR. SEUSS ENTERPRISES V. COMICMIX LLC 29
Panda character with a Grinch character; figurines that
combine Funko Inc.’s toy designs with Seuss characters; and
a clothing line that combines Comme des Garçons’ heart
design with Grinch artwork.
ComicMix takes issue with Seuss’s apparent choice not
to license a mash-up based on Dr. Seuss’s works sans Dr.
Seuss’s characters. We say “apparent” because ComicMix
only infers, from Seuss’s style guide for its licensees, that
Seuss will not license a Seuss–Star Trek mash-up. But, of
course, that claim is speculative because ComicMix never
asked for a license or permission. Also, the law does not
limit the scope of the relevant market to products that are
already made or in the pipeline. “The potential market . . .
exists independent of the [copyright owner]’s present
intent.” Monge, 688 F.3d at 1181. Seuss certainly has the
right to “the artistic decision not to saturate those markets
with variations of their original,” Castle Rock Ent., 150 F.3d
at 146, and it has the right “to change [its] mind,” Worldwide
Church of God v. Phila. Church of God, Inc., 227 F.3d 1110,
1119 (9th Cir. 2000).
Finally, ComicMix does not address a central aspect of
market harm set out in Campbell—“whether unrestricted
and widespread conduct of the sort engaged in” by
ComicMix would undermine Seuss’s potential market. 510
U.S. at 590 (quotation marks and citation omitted). This
aspect is particularly significant here because of Seuss’s
strong brand. ComicMix’s effort to use Seuss’s success
against it falls flat. As noted by one of the amici curiae, the
unrestricted and widespread conduct of the sort ComicMix
is engaged in could result in anyone being able to produce,
without Seuss’s permission, Oh the Places Yoda’ll Go!, Oh
the Places You’ll Pokemon Go!, Oh the Places You’ll Yada
30 DR. SEUSS ENTERPRISES V. COMICMIX LLC
Yada Yada!, and countless other mash-ups. 8 Thus, the
unrestricted and widespread conduct of the sort engaged in
by ComicMix could “create incentives to pirate intellectual
property” and disincentivize the creation of illustrated
books. Monge, 688 F.3d at 1182. This is contrary to the goal
of copyright “[t]o promote the Progress of Science.” U.S.
Const. art. I, § 8, cl. 8.
The bottom line is that ComicMix created, without
seeking permission or a license, a non-transformative
commercial work that targets and usurps Go!’s potential
market. ComicMix did not carry its burden on the fourth
factor. Based on our weighing of the statutory factors “in
light of the purposes of copyright,” we conclude that
ComicMix cannot sustain a fair use defense. See Campbell,
510 U.S. at 578. The district court erred in granting
summary judgment in favor of ComicMix.
II. SEUSS DOES NOT HAVE A COGNIZABLE TRADEMARK
INFRINGEMENT CLAIM AGAINST COMICMIX
Seuss also claims that ComicMix infringed its registered
and common law trademarks in the title of Go!, as well as
common law trademarks in the “Seussian style of
illustration” and “the Seussian font.” We do not express a
view as to whether the Seussian style of illustration and font
are valid common law trademarks, because Seuss’s
trademark infringement claim fails as a matter of law.
The allegedly infringing use of trademarks in an
expressive work like Boldly raises the threshold question of
whether the Lanham Act applies. The Rogers test, first
8
Brief of Amici Curiae of Professors Peter S. Menell, Shyamkrishna
Balganesh, and David Nimmer in Support of Petitioners at 2.
DR. SEUSS ENTERPRISES V. COMICMIX LLC 31
articulated by the Second Circuit and later adopted by our
court, balances artistic free expression and trademark rights
to determine whether the Lanham Act applies. See Rogers
v. Grimaldi, 875 F.2d 994, 999 (2d Cir. 1989); Mattel, Inc.
v. MCA Records, Inc., 296 F.3d 894, 902 (9th Cir. 2002)
(adopting the Rogers test); E.S.S. Entm’t 2000, Inc. v. Rock
Star Videos, Inc., 547 F.3d 1095, 1099 (9th Cir. 2008)
(expanding the Rogers test from the use of a trademark in a
title to the body of the expressive work). Under the Rogers
test, the trademark owner does not have an actionable
Lanham Act claim unless the use of the trademark is “either
(1) not artistically relevant to the underlying work or (2)
explicitly misleads consumers as to the source or content of
the work.” VIP Prods. LLC v. Jack Daniel’s Props., Inc.,
953 F.3d 1170, 1174 (9th Cir. 2020) (quotation marks
omitted). Neither of these prongs is easy to meet.
As to the first prong, any artistic relevance “above zero”
means the Lanham Act does not apply unless the use of the
trademark is explicitly misleading. Twentieth Century Fox
Television v. Empire Distribution, Inc., 875 F.3d 1192, 1198
(9th Cir. 2017) (citing E.S.S. Entm’t, 547 F.3d at 1100); see
also Brown v. Elec. Arts, Inc., 724 F.3d 1235, 1245 (9th Cir.
2013) (explaining that “even the slightest artistic relevance”
is enough). Boldly easily surpasses this low bar: as a mash-
up of Go! and Star Trek, the allegedly valid trademarks in
the title, the typeface, and the style of Go! are relevant to
achieving Boldly’s artistic purpose.
Nor is the use of the claimed Go! trademarks “explicitly
misleading,” which is a high bar that requires the use to be
“an ‘explicit indication,’ ‘overt claim,’ or ‘explicit
misstatement’” about the source of the work. Brown, 724
F.3d at 1245. Thus, although titling a book “Nimmer on
Copyright,” “Jane Fonda’s Workout Book,” or “an
32 DR. SEUSS ENTERPRISES V. COMICMIX LLC
authorized biography” can explicitly misstate who authored
or endorsed the book, a title that “include[s] a well-known
name” is not explicitly misleading if it only “implicitly
suggest[s] endorsement or sponsorship.” Rogers, 875 F.2d
at 999–1000 (emphasis added).
Boldly is not explicitly misleading as to its source,
though it uses the Seussian font in the cover, the Seussian
style of illustrations, and even a title that adds just one
word—Boldly—to the famous title—Oh, the Places You’ll
Go!. Seuss’s evidence of consumer confusion in its expert
survey does not change the result. The Rogers test drew a
balance in favor of artistic expression and tolerates “the
slight risk that [the use of the trademark] might implicitly
suggest endorsement or sponsorship to some people.” Id. at
1000.
A contrary result is not compelled by our recent decision
in Gordon v. Drape Creative, Inc., involving a registered
trademark for, among other things, greeting cards. 909 F.3d
257 (9th Cir. 2018). The mark—“Honey Badger Don’t
Care”—is a popular comical statement that represents an
“aggressive assertion of apathy.” Id. at 268–69. The
defendant created greeting cards featuring, on the front, a
honey badger and an indication of the occasion the card is
designed for (birthday, Halloween, etc.), and on the inside,
the punchline: “Honey Badger Don’t Care.” Id. at 260–62.
Gordon “demonstrate[d] Roger’s outer limits,” where the
defendant’s expressive work consisted of the mark and not
much else. Id. at 261, 268–69. Under this scenario, the court
concluded that there was a triable issue of fact as to whether
the mark was explicitly misleading. Id. at 271.
DR. SEUSS ENTERPRISES V. COMICMIX LLC 33
Boldly does not test the “outer limits” of Rogers. We
reiterated in Gordon that because “use of a trademark alone”
is not necessarily determinative, two “more relevant
consideration[s]” weigh in evaluating whether the mark is
explicitly misleading: (1) “the degree to which the junior
user uses the mark in the same way as the senior user” and
(2) “the extent to which the junior user has added his or her
own expressive content to the work beyond the mark itself.”
Gordon, 909 F.3d at 270–71 (quoting E.S.S. Entm’t, 547
F.3d at 1100) (citing Rogers, 875 F.2d at 999). Here,
ComicMix has used the marks in an illustrated book just as
Seuss did, but unlike with the greeting cards in Gordon,
ComicMix has “added . . . expressive content to the work
beyond the mark itself.” Id. at 270. Also, the cover
conspicuously lists David Gerrold and Ty Templeton, not
Dr. Seuss, as authors, and Boldly states that it is “not
associated with or endorsed by” Seuss. In consideration of
“all the relevant facts and circumstances,” the alleged use of
Seuss’s trademarks is not explicitly misleading. Id. at 269
(quoting Rogers, 875 F.2d at 1000 n.6). We affirm the
district court’s denial of Seuss’s trademark claim because the
Lanham Act does not apply here.
CONCLUSION
This appeal involves two different contexts in which an
author’s expression collides with the intellectual property
rights in existing works. Here, the results for the copyright
and the trademark claims diverge. Although Boldly did not
make fair use of the copyrighted expression in Go!, Boldly’s
use of Go! trademarks was permitted under the Rogers test.
Accordingly, we affirm the district court’s Rule 12(c)
dismissal and summary judgment in favor of ComicMix as
to the trademark infringement claim, but reverse and remand
34 DR. SEUSS ENTERPRISES V. COMICMIX LLC
the district court’s grant of summary judgment in favor of
ComicMix as to copyright fair use.
AFFIRMED in PART; REVERSED and
REMANDED in PART for proceedings consistent with
this opinion.
Each party shall pay its own costs on appeal.