On remand from Ninth Circuit, district court denies Dr. Seuss Enterprises’ renewed motion for summary judgment in copyright infringement suit against makers of Dr. Seuss/Star Trek mash-up book, ruling that issue of subjective substantial similarity should be left to jury.
Plaintiff Dr. Seuss Enterprises L.P., the assignee and owner of various copyrights and trademarks in the works of Theodor S. Geisel, famously known as Dr. Seuss, sued ComicMix LLC, Glenn Hauman, David Jerrold Friedman and Ty Templeton in 2016, asserting copyright and trademark claims based on defendants’ work Oh, the Places You’ll Boldly Go!—a mash-up of elements from various Dr. Seuss books, including Oh, the Places You’ll Go!, and certain elements from the Star Trek franchise. Plaintiff alleged that Boldly! infringed its copyrights by using several protected elements of Dr. Seuss’ works like settings, drawings, characters, prose and themes.
The district court granted ComicMix’s motion for summary judgment in 2019, ruling that Boldly! constituted fair use. The Ninth Circuit reversed and remanded the district court’s decision in December 2020, holding that the fair use defense was unavailable to defendants because Boldly! lacked the benchmarks of transformative use and failed to give Dr. Seuss’ works new purpose or meaning. (Read our summary of the district court’s decision here and the Ninth Circuit decision here.) The U.S. Supreme Court denied defendants’ petition for a writ of certiorari in June.
Seuss Enterprises subsequently renewed its motion for summary judgment. As to copyright ownership, the district court held that though ComicMix moved the court to seek the invalidation of the copyright registrations for the Dr. Seuss works at issue, the motion was denied and the presumption of validity afforded to those certificates remained intact.
As to copying, ComicMix admitted to copying portions of Dr. Seuss’ works as accurately as possible for the mash-up; individual defendants had testified that they had copies of Oh, the Places You’ll Go! in front of them while working on verses and illustrations for Boldly!
However, the district court acknowledged that it is a rarity for a plaintiff copyright holder to move for summary judgment on infringement and for such a motion to be granted. Under Ninth Circuit precedent, the standard for summary judgment for plaintiffs on the issue of copying is that the works are “so overwhelmingly similar that the possibility of independent creation is precluded.” Historically, cases meeting this standard are limited to where the works are nearly identical.
In determining substantial similarity, the court applied the Ninth Circuit’s two-pronged analysis consisting of an objective “extrinsic test” and a subjective “intrinsic test.” The extrinsic test, which compares the specific objective elements of the works at issue, can be satisfied if the copyrighted work and the accused work contain sufficient overlapping elements such as theme, characters and setting, among others.
Relying on the Ninth Circuit opinion, the district court held that Seuss Enterprises satisfied the extrinsic test. Boldly! copied nearly 60% of Oh, the Places You’ll Go! and other Dr. Seuss books, and Boldly! objectively overlapped several concrete elements of Dr. Seuss’ works, including “exacting replication of iconic illustrations,” “placements and poses of characters” and in some instances the “entire layout” of the original work.
Having satisfied the extrinsic test, the district court then turned to the intrinsic test, which is subjective and asks whether the ordinary, reasonable person would find the “total concept and feel” of the two works to be substantially similar. Despite holding that the two works are extrinsically similar, the district court concluded that Boldly! is not so similar to the protected works “that no triable issue exists with respect to whether the total concept and feel of the works is substantially similar.” Thus, the court left this question to the jury and denied Seuss Enterprises’ motion for summary judgment.
Summary prepared by Linna Chen and Marwa Abdelaziz