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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF CALIFORNIA
`
` Case No.: 16-CV-2779 JLS (BGS)
`ORDER (1) DENYING
`DEFENDANTS’ MOTION FOR
`RECONSIDERATION AND
`(2) DENYING PLAINTIFF’S
`RENEWED MOTION FOR
`SUMMARY JUDGMENT
`
`(ECF Nos. 176, 177)
`
`DR. SEUSS ENTERPRISES, L.P.,
`a California limited partnership,
`
`
`Plaintiff,
`
`v.
`COMICMIX LLC, a Connecticut limited
`liability company; GLENN HAUMAN,
`an individual; DAVID JERROLD
`FRIEDMAN a/k/a DAVID GERROLD,
`an individual; and TY TEMPLETON,
`an individual,
`
`
`Defendants.
`
`
`Presently before the Court are Defendants ComicMix LLC, Glenn Hauman, David
`Jerrold Friedman, and Ty Templeton’s (collectively, “ComicMix” or “Defendants”)
`Motion for Reconsideration of Order Denying Motion for Issuance of Request to the
`Register of Copyrights Pursuant to 17 U.S.C. § 411(b) (“Reconsid. Mot.,” ECF No. 177)
`and Plaintiff Dr. Seuss Enterprises, L.P.’s (“Seuss” or “Plaintiff”) Renewed Motion for
`/ / /
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`I.
`
`
`Summary Judgment (“MSJ,” ECF No. 176).1 Also before the Court are Seuss’s opposition
`to the Reconsideration Motion (“Reconsid. Opp’n,” ECF No. 178), ComicMix’s reply in
`support of the Reconsideration Motion (“Reconsid. Reply,” ECF No. 181), ComicMix’s
`opposition to the MSJ (“MSJ Opp’n,” ECF No. 179), and Seuss’s reply in support of the
`MSJ (“MSJ Reply,” ECF No. 180). The Court took both matters under submission without
`oral argument pursuant to Civil Local Rule 7.1(d)(1). See ECF No. 182. Having
`considered the Parties’ arguments, the law, and the facts, the Court DENIES ComicMix’s
`Reconsideration Motion and DENIES Seuss’s MSJ for the reasons set forth below.
`BACKGROUND
`Factual and Procedural Background
`The Parties, who are intimately familiar with the facts of this case, do not submit
`new Statements of Fact in support of or in opposition to Seuss’s MSJ. Rather, Seuss
`“directs the Court to the Statement of Facts (‘SOF’) submitted in connection with its
`original motion for summary judgment,” MSJ at 3 n.1 (citing ECF No. 107-2), and, other
`than a brief, one-paragraph summary of the procedural history, ComicMix does not provide
`any recitation of the facts, see MSJ Opp’n. Accordingly, the Court incorporates by
`reference the factual and procedural background as set forth in its Order Granting
`Defendants’ Motion for Summary Judgment and Denying Plaintiff’s Motion for Summary
`Judgment (“MSJ Order,” ECF No. 149 at 2–13) and its Order Denying Defendants’ Motion
`for Issuance of Request to the Register of Copyrights (“Referral Order,” ECF No. 88 at 2–
`3).
`
`Seuss is the owner, by assignment, of the copyrights to the works of Theodor S.
`Geisel, the author and illustrator of the books written under the pseudonym “Dr. Seuss.”
`Pl.’s Statement of Undisputed Material Facts in Support of Pl.’s MSJ (“SOF”), ECF No.
`115-1, ¶¶ 1–4. Mr. Geisel wrote and illustrated the works at issue here: Oh, the Places
`
`
`
`1 Seuss filed what appears to be a substantively identical motion earlier the same day, see ECF No. 175,
`which the Court DENIES AS MOOT in light of the second filing.
`2
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`You’ll Go! (“Go!”); How the Grinch Stole Christmas! (“Grinch”); and The Sneetches and
`Other Stories (“Sneetches”) (collectively, the “Copyrighted Works”). SOF ¶¶ 2–7
`In 2016, Defendants set out to create Oh, the Places You’ll Boldly Go! (“Boldly!”).
`Each of Mr. Templeton, Mr. Gerrold, and Mr. Hauman testified that he considered Boldly!
`a parody, a mash-up, and a transformative work of the Copyrighted Works. See, e.g.,
`Declaration of Tamar E. Duvdevani in Support of Pl.’s MSJ (“Duvdevani Decl.”) Ex. 1,
`ECF No. 107-23 at 120:14–23; Duvdevani Decl. Ex. 2, ECF No. 107-24, at 68:7–8, 77:19–
`78; Duvdevani Decl. Ex. 3, ECF No. 107-25, at 75:23–76:11. However, each Defendant
`also testified that he copied the Copyrighted Works to create Boldly!. SOF ¶¶ 33, 51–54,
`56, 64.
`After learning about Boldly!, Seuss sent ComicMix three letters, dated September
`28, October 7, and October 25, 2016, demanding that ComicMix immediately cease all use
`of the Copyrighted Works. SOF ¶¶ 103–05. Seuss also sent a DMCA takedown notice to
`Kickstarter on October 7, 2016. Id. ¶ 68. ComicMix sent Seuss a responsive letter on
`October 28, 2016, which refused Seuss’s demands. SOF ¶¶ 106–08. Seuss filed this
`infringement action on November 10, 2016. ECF No. 1.
`As relevant to the present motions, on December 22, 2017, ComicMix filed a motion
`for issuance of a request to the Register of Copyrights pursuant to 17 U.S.C. § 411(b)(2),
`on the basis that Mr. Geisel’s copyright registration applications for Go! and Sneetches
`were knowingly and materially inaccurate and incomplete. See ECF No. 57. On May 21,
`2018, the Court denied ComicMix’s motion. See generally Referral Order. In the Referral
`Order, the Court concluded that neither of the copyright applications was based on
`inaccurate information, as neither of the works in question contained a “substantial”
`amount of the undisclosed previously published material, and accordingly the Court
`declined to issue a request to the Register of Copyrights. See id. at 8–10.
`On December 11, 2018, the Parties filed cross-motions for summary judgment. See
`ECF Nos. 107, 108. ComicMix sought summary judgment as to all of Seuss’s surviving
`claims on the ground that ComicMix was entitled to summary adjudication on its
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`affirmative defenses for fair use and the First Amendment. See generally ECF No. 108.
`Seuss sought summary judgment of ComicMix’s willful copyright infringement. See
`generally ECF No. 107. On March 12, 2019, the Court granted ComicMix’s motion as to
`the copyright infringement claims, finding ComicMix was entitled to its fair use defense.
`See MSJ Order at 33. ComicMix also sought summary judgment of the surviving
`trademark infringement claims on the grounds that neither a stylized font nor an illustration
`style is subject to trademark protection, and, even if they were, ComicMix’s use thereof
`merits First Amendment protection under Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989).
`See generally ECF No. 108. The Court agreed that an illustration style is not protectable,
`see MSJ Order at 34, and that the “use of Seussian typefaces, not in conjunction with an
`enforceable mark, cannot support a claim for violation of the Lanham Act.” Id. at 36–37.
`Accordingly, the Court granted ComicMix’s motion as to the surviving trademark and
`unfair competition claims. Id. at 35, 37. Given this disposition, the Court declined to
`address the First Amendment issues. Id. at 37. Further, given the Court’s determination
`that ComicMix was entitled to summary judgment on its fair use defense, the Court denied
`Seuss’s cross-motion. Id.
`On March 26, 2019, Seuss appealed the MSJ Order. See ECF No. 151. The Ninth
`Circuit heard oral argument on Seuss’s appeal on April 27, 2020. See Dr. Seuss Enters.,
`L.P. v. ComicMix LLC, 983 F.3d 443, 443 (9th Cir. 2020). On December 18, 2020, the
`Ninth Circuit issued its opinion affirming in part and reversing in part the MSJ Order. See
`id. The Court held a mandate hearing on March 5, 2021, during which the Court set a
`briefing schedule for any motions. See ECF No. 173. The present motions followed.
`II. The Ninth Circuit’s Opinion
`The Ninth Circuit reversed the Court’s grant of summary judgment in favor of
`ComicMix on the copyright infringement claim but affirmed the Court’s Rule 12(c)
`dismissal and grant of summary judgment in favor of ComicMix on the trademark claim.
`ComicMix, 983 F.3d at 448.
`/ / /
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`As relevant to the present motions, the Ninth Circuit concluded that each of the four
`statutory fair use factors “decisively weigh[s] against ComicMix and no countervailing
`copyright principles counsel otherwise.” Id. at 451. As to the first factor, the purpose and
`character of the use, because Boldly! is “indisputably commercial” and not transformative,
`the Ninth Circuit found that the first factor weighs against fair use. Id. at 451–52. The
`Ninth Circuit concluded Boldly! is not a parody because it does not critique or comment
`on the Copyrighted Works by, for example, holding Dr. Seuss’s style up to ridicule or
`criticizing the “purported self-importance of [the Copyrighted Works’] characters.” Id. at
`452–53. Nor does replacing Seuss characters and elements with Star Trek material render
`the work transformative, as this replacement does not give Seuss’s work new purpose or
`meaning. Id. at 453. Boldly! lacks the benchmarks of transformative use, instead
`paralleling the Copyrighted Works’ purpose. Id. at 453–55.
`As to the second factor, the nature of the copyrighted work, the Copyrighted Works
`are creative and expressive works, which weighs against a finding of fair use. Id. at 456.
`As to the third factor, the amount and substantiality of the portion of the copyrighted work
`used, the quantitative amount of the Copyrighted Works taken by Boldly! “was
`considerable,” id., with close replication of well-known and significant illustrations from
`all of the Copyrighted Works and copying of 14 of Go!’s 24 pages, id. The Ninth Circuit
`also found the qualitative value used by Boldly! to be “substantial,” as Boldly! “took the
`heart of Dr. Seuss’s works” by, for example, taking the machine at the heart of Sneetches
`and repurposing it as a Star Trek transporter. Id. at 457–58.
`As to the fourth factor, the effect on the value or market for the copyrighted work,
`the Ninth Circuit found that the Court erred in shifting the burden of showing market harm
`to Seuss, resulting in a “skewed analysis” of this factor. Id. at 458. Weighing the factors,
`the Ninth Circuit concluded that ComicMix could not sustain its fair use defense and that
`this Court therefore erred in granting summary judgment in favor of ComicMix on the
`copyright infringement claim. Id. at 461.
`/ / /
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`However, the Ninth Circuit affirmed that Seuss’s trademark infringement claim fails
`as a matter of law. Id. Accordingly, the Ninth Circuit affirmed in part and reversed and
`remanded in part “for proceedings consistent with this opinion.” Id. at 463.
`COMICMIX’S MOTION FOR RECONSIDERATION
`ComicMix argues for reconsideration of the Referral Order. The Parties disagree as
`to the legal standard that applies to the motion. ComicMix argues that the Referral Order
`was an interlocutory order, see Reconsid. Mot. at 7, and, because the Ninth Circuit reversed
`in part the grant of summary judgment in ComicMix’s favor, the final judgment no longer
`has effect and the order is once more interlocutory and subject to reconsideration, see id.
`at 9 (citing Marketquest Grp., Inc. v. BIC Corp., No. 11-cv-0618-BAS-JLB, 2018 U.S.
`Dist. LEXIS 62359, at *9 (S.D. Cal. Apr. 12, 2018)). Thus, ComicMix argues for
`reconsideration under Federal Rule of Civil Procedure 54(b) based on an alleged significant
`change in controlling Ninth Circuit law as articulated in Unicolors, Inc. v. H&M Hennes
`& Mauritz, L.P., 959 F.3d 1194 (9th Cir. 2020) [hereinafter Unicolors]. See Reconsid.
`Mot. at 2–3. Seuss argues that the Referral Order merged into the Court’s final judgment,
`and the Ninth Circuit’s reversal did not affect the Referral Order; therefore, ComicMix’s
`Reconsideration Motion must be adjudicated under Federal Rule of Civil Procedure 60(b),
`which governs the reopening and reconsideration of final judgments. Reconsid. Opp’n at
`6.
`
`The Court finds it unnecessary to determine which standard applies, as ultimately,
`under either standard, the Court would have to find that the Ninth Circuit’s decision in
`Unicolors was a change in controlling law necessitating the revisiting of the Referral Order.
`The Court finds that it is not, and therefore reconsideration under any basis is improper.
`I.
`Summary of Unicolors
`In Unicolors, a jury had decided that the defendant, a clothing retailer, had infringed
`the copyright of the plaintiff, a company that creates textile and garment designs, by selling
`clothing with designs similar to the plaintiff’s copyrighted design. 959 F.3d at 1195. The
`plaintiff had applied for and received the copyright registration at issue in February 2011.
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`Id. at 1196. The registration was a “single-unit registration” of thirty-one designs, one of
`which was the allegedly infringed design. Id. Twenty-two of the designs covered by the
`registration, including the allegedly infringed design, bore the prefix “EH,” which meant
`they had been created in January 2011; the remaining nine bore the prefix “CEH,” which
`meant they were “confined” works designed in January 2011. Id. The plaintiff’s
`“confined” works were created for specific customers, who would receive exclusive use
`for several months. Id. The copyright registration indicated that all thirty-one designs had
`a January 15, 2011 date of first publication. Id.
`The defendant appealed the judgment against it, arguing that the copyright
`registration covering the design in question was invalid due to the inclusion of known
`inaccuracies in the registration application. Id. at 1197. Specifically, the defendant argued
`that the designs were improperly registered as a “single unit” because they were not first
`sold or offered for sale in an integrated manner, given that some of the works were
`displayed publicly in the plaintiff’s showroom and others were “confined” works sold
`separately and exclusively to individual customers. Id. at 1197–98. When presented with
`this issue, the district court had found against the defendant for two reasons. Id. at 1198.
`First, the district court had held that invalidation required a showing that the plaintiff had
`intended to defraud the Copyright Office, and no evidence of such an intent had been
`introduced. Id. Second, the district court found that all thirty-one designs were first
`“published” and made available to the public on the same day. Id.
`The Ninth Circuit found that the district court was wrong on both counts. Id. The
`Ninth Circuit acknowledged that its prior case law implied an intent-to-defraud
`requirement but noted that its recent decision in Gold Value International Textile, Inc. v.
`Sanctuary Clothing, LLC, 925 F.3d 1140, 1147 (9th Cir. 2019), clarified that no such
`requirement exists. 959 F.3d at 1198. The Ninth Circuit further held that a “single unit”
`registration requires that the collection of works first first published as a single, bundled
`collection; because the “confined” designs were not placed in the showroom for sale at the
`same time as the other designs, they were not “published” on the same date. Id. at 1198–
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`200. The Ninth Circuit further reasoned that the plaintiff knew that some of the designs on
`the registration were “confined” and therefore published separately to exclusive customers,
`satisfying the knowledge requirement of section 411(b). Id. at 1200. The Ninth Circuit
`therefore reversed the district court’s entry of judgment in favor of the plaintiff and
`remanded to the district court to submit an inquiry to the Register of Copyrights. Id. at
`1200–01.
`II.
`Summary of the Parties’ Positions
`ComicMix argues that Unicolors, which was decided after oral argument was held
`on Seuss’s appeal in this case, see Reconsid. Mot. at 3, is an intervening change in
`controlling law, see id. at 9. ComicMix argues that Unicolors “changed the nature of how
`courts in this Circuit are required to address such § 411(b) requests” by clarifying that
`“§ 411 is mandatory by its express terms.” Id. at 9. ComicMix relies on following
`language in Unicolors in making this argument:
`In practice, once a defendant alleges that (1) a plaintiff’s
`certificate of registration contains inaccurate information; (2)
`“the inaccurate information was included on the application for
`copyright registration”; and (3) the inaccurate information was
`included on the application “with knowledge that it was
`inaccurate,” a district court is then required to submit a request
`to the Register of Copyrights “to advise the court whether the
`inaccurate information, if known, would have caused [it] to
`refuse registration.” [17 U.S.C.] § 411(b)(1)–(2). In other
`words, courts may not consider in the first instance whether the
`Register of Copyrights would have refused registration due to the
`inclusion of known inaccuracies in a registration application.
`
`959 F.3d at 1197. ComicMix further argues that the intent-to-defraud requirement was
`“unclear” at the time this Court issued its order on the Referral Motion, and that “Unicolors
`further clarifies” this issue. Reconsid. Mot. at 10. ComicMix argues that, “[b]ecause the
`Court exercised its discretion rather than first soliciting and obtaining the Register of
`Copyrights’ opinion,” the Referral Order must be altered under Unicolors. Id. at 11.
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`Seuss argues that Unicolors is not an intervening change in controlling law because
`it “did not disapprove of, much less change, long-standing precedent permitting district
`courts to weed out meritless 17 U.S.C. § 411(b)(2) motions by initially determining
`whether an [sic] copyright application actually contains an inaccuracy known to the
`applicant and denying motions where no such inaccuracy is present.” Reconsid. Opp’n at
`9. Because this Court followed that long-standing procedure in denying the Referral
`Motion, reconsideration is not necessary. Id. In support of its position, Seuss cites to
`Roxana Towry Russell v. Walmart Incorporated, No. CV 19-5495-MWF (JCX), 2020 WL
`9073046, at *4 (C.D. Cal. Oct. 16, 2020), a case post-dating Unicolors in which “Walmart
`argued that because it has alleged that Plaintiff submitted inaccurate information in her
`copyright registration applications, the Court has no discretion to deny its Remand Motion
`and must refer the matter to the Register of Copyrights,” but the district court disagreed.
`2020 WL 9073046, at *4. The court noted that “[r]ecent Ninth Circuit case law is
`consistent with this gatekeeping procedure,” and Unicolors only remanded with
`instructions to submit an inquiry to the Register of Copyrights “after finding that the
`application contained ‘known inaccuracies.’” Id. at *5 (citation omitted).
`On reply, ComicMix contends that there was no Ninth Circuit law interpreting
`section 411(b) until Gold Value in 2019, which held that a showing of fraud is not required,
`and that Unicolors subsequently made clear that a defendant need only “allege”
`inaccuracies in the application, not “prove” them. Reconsid. Reply at 4–5 (citations
`omitted). ComicMix cites to two post-Unicolors district court cases for its position:
`Yellowcake, Inc. v. Morena Music, Inc., No. 1:20-cv-0787 AWI BAM, 2021 WL 795823
`(E.D. Cal. May 5, 2021); and Fashion Ave. Sweater Kniths, LLC v. Poof Apparel Corp.,
`No. 2:19-cv-06302-CJC-JEM, 2020 WL 7861970 (C.D. Cal. Dec. 3, 2020). Id. at 5.
`III. Analysis
`The Court agrees with Seuss’s interpretation of Unicolors and the extent to which it
`changed—or rather, failed to change—Ninth Circuit law. Although Unicolors would have
`been an intervening change in controlling law were the question of “what it means to
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`publish multiple works as a ‘single unit’” at issue, 959 F.3d at 1199 (footnote omitted)
`(noting that “this court has never previously addressed [this question]”), there was no
`change in controlling law with regard to the issues raised by ComicMix, see Teamsters
`Loc. 617 Pension & Welfare Funds v. Apollo Grp., Inc., 282 F.R.D. 216, 224 (D. Ariz.
`2012) (explaining that, in the context of Rule 59(e), “cases which generally or substantively
`alter existing law, such as by overruling it, or creating a significant shift in a court’s
`analysis,” are intervening changes in law warranting relief, whereas “cases which merely
`confirm, clarify or explain existing case law do not provide a basis for relief”).
`The section of Unicolors ComicMix contends is a change in how courts are required
`to address section 411(b) requests is nothing more than a brief summary of the already
`existing law in the Ninth Circuit. Further, Unicolors does not itself change the law
`concerning intent-to-defraud, but merely confirms the prior clarification of the standard
`contained in Gold Value. At any rate, this Court’s Referral Order never addressed the
`intent-to-defraud issue in light of its finding that there were no known inaccuracies in
`Seuss’s copyright applications and registrations. See generally Referral Order. Thus, the
`alleged statements of new controlling law cited by ComicMix are merely restatements or
`clarifications of existing law that neither necessitate nor permit this Court’s revisiting of
`the Referral Order.
`The cases on which ComicMix relies on reply are not persuasive in arguing the
`contrary. In Yellowcake, the court cited to the same statement of the legal standard from
`Unicolors on which ComicMix relies, but ultimately the court ended up seeking
`supplemental briefing on the invalidity issue where the authorship information in judicially
`noticed registration documents was inconsistent with the ownership interest claimed in a
`counterclaim, in which case “[t]he Counterclaim therefore indicates that the registrations
`contain incorrect information in terms of authorship.” 2021 WL 795823, at *19. That the
`court ordered supplemental briefing, rather than simply accepting the allegation of
`inaccurate information, supports the view that Unicolors does not mandate that a court
`refer all requests made under section 411(b) to the Register of Copyrights. Indeed, the
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`Court was explicit that, “[i]f, after reviewing the supplemental information, the Court is
`satisfied that there is inaccurate information that is part of the registrations and that was
`included in the applications to the Copyright Office, the Court will send an inquiry as
`required by § 411/Unicolors.” Id.
`Similarly, the court in Fashion Avenue did not simply accept at face value allegations
`of inaccurate information in referring a validity issue to the Register of Copyrights. As the
`earlier decision actually electing to refer the issue to the Register of Copyrights makes
`clear, both allegations in the complaint and evidence presented by the defendants tended
`to show that the designs at issue were published before registration, raising a genuine issue
`as to the copyright’s validity. See Fashion Ave. Sweater Knits, LLC v. Poof Apparel Corp.,
`No. CV1906302CJCJEMX, 2020 WL 7862132, at *3 (C.D. Cal. Oct. 28, 2020). Thus,
`both Yellowcake and Fashion Avenue suggest that the district court’s gatekeeping function
`under section 411(b) remains intact post-Unicolors, as the district court in Russell explicitly
`held. Accordingly, the Court DENIES ComicMix’s Reconsideration Motion.
`SEUSS’S RENEWED MOTION FOR SUMMARY JUDGMENT
`Legal Standards
`A.
`Summary Judgment
`Under Federal Rule of Civil Procedure 56(a), a party may move for summary
`judgment as to a claim or defense or part of a claim or defense. Summary judgment is
`appropriate where the Court is satisfied that there is “no genuine dispute as to any material
`fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a);
`Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). Material facts are those that may affect
`the outcome of the case. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). A
`genuine dispute of material fact exists only if “the evidence is such that a reasonable jury
`could return a verdict for the nonmoving party.” Id. When the Court considers the
`evidence presented by the parties, “[t]he evidence of the non-movant is to be believed, and
`all justifiable inferences are to be drawn in his favor.” Id. at 255.
`/ / /
`
`I.
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`The initial burden of establishing the absence of a genuine issue of material fact falls
`on the moving party. Celotex, 477 U.S. at 323. The moving party may meet this burden
`by identifying the “portions of ‘the pleadings, depositions, answers to interrogatories, and
`admissions on file, together with the affidavits, if any,’” that show an absence of dispute
`regarding a material fact. Id. When a plaintiff seeks summary judgment as to an element
`for which it bears the burden of proof, “it must come forward with evidence which would
`entitle it to a directed verdict if the evidence went uncontroverted at trial.” C.A.R. Transp.
`Brokerage Co. v. Darden Rests., Inc., 213 F.3d 474, 480 (9th Cir. 2000) (quoting Houghton
`v. South, 965 F.2d 1532, 1536 (9th Cir. 1992)).
`Once the moving party satisfies this initial burden, the nonmoving party must
`identify specific facts showing that there is a genuine dispute for trial. Celotex, 477 U.S.
`at 324. This requires “more than simply show[ing] that there is some metaphysical doubt
`as to the material facts.” Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574,
`586 (1986). Rather, to survive summary judgment, the nonmoving party must “by her own
`affidavits, or by the ‘depositions, answers to interrogatories, and admissions on file,’
`designate ‘specific facts’” that would allow a reasonable fact finder to return a verdict for
`the non-moving party. Celotex, 477 U.S. at 324; Anderson, 477 U.S. at 248. The non-
`moving party cannot oppose a properly supported summary judgment motion by “rest[ing]
`on mere allegations or denials of his pleadings.” Anderson, 477 U.S. at 256.
`B.
`Copyright Infringement
`“A plaintiff bringing a claim for copyright infringement must demonstrate ‘(1)
`ownership of a valid copyright, and (2) copying of constituent elements of the work that
`are original.’” Funky Films, Inc. v. Time Warner Entm’t Co., L.P., 462 F.3d 1072, 1076
`(9th Cir. 2006) (quoting Feist Pubs., Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991)).
`A “copyright registration creates a presumption of ownership.” Micro Star v.
`Formgen Inc., 154 F.3d 1107, 1110 (9th Cir. 1998) (citing Triad Sys. Corp. v. Se. Express
`Co., 64 F.3d 1330, 1335 (9th Cir. 1995)). “To rebut the presumption [of validity], an
`infringement defendant must simply offer some evidence or proof to dispute or deny the
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`plaintiff’s prima facie case of infringement.” United Fabrics Int’l, Inc. v. C&J Wear, Inc.,
`630 F.3d 1255, 1257 (9th Cir. 2011) (quoting Lamps Plus, Inc. v. Seattle Lighting Fixture
`Co., 345 F.3d 1140, 1144 (9th Cir. 2003)) (internal quotation marks omitted).
`“The second prong of the infringement analysis contains two separate components:
`‘copying’ and ‘unlawful appropriation.’” Skidmore as Tr. for Randy Craig Wolfe Tr. v.
`Led Zeppelin, 952 F.3d 1051, 1064 (9th Cir. 2020) (citation omitted). To establish copying,
`the plaintiff can rely on direct evidence of copying or can show either: “(1) the two works
`in question are substantially similar and the defendant had access to the subject work; or
`(2) that the works are strikingly similar.” Corbello v. Valli, 974 F.3d 965, 973 (9th Cir.
`2020) (citation omitted); Malibu Textiles, Inc. v. Label Lane Int’l, Inc., 922 F.3d 946, 952
`(9th Cir. 2019) (citations omitted). “On the other hand, the hallmark of ‘unlawful
`appropriation’ is that the works share substantial similarities.” Skidmore, 952 F.3d at 1064
`(citing Newton v. Diamond, 388 F.3d 1189, 1193 (9th Cir. 2004)) (emphasis in original).
`“In assessing whether particular works are substantially similar, or strikingly similar,
`this Circuit applies a two-part analysis: the extrinsic test and the intrinsic test.” Unicolors,
`Inc. v. Urban Outfitters, Inc., 853 F.3d 980, 985 (9th Cir. 2017). “The extrinsic test
`requires plaintiffs to show overlap of concrete elements based on objective criteria.” Id.
`(internal quotation marks and citations omitted). “The extrinsic test requires a three-step
`analysis: (1) the plaintiff identifies similarities between the copyrighted work and the
`accused work; (2) of those similarities, the court disregards any that are based on
`unprotectable material or authorized use; and (3) the court must determine the scope of
`protection (“thick” or “thin”) to which the remainder is entitled ‘as a whole.’” Corbello,
`974 F.3d at 974 (citation omitted).
`“Only if the extrinsic analysis succeeds does the so-called ‘intrinsic’ analysis takes
`place.” Id. (citation omitted). “[T]he intrinsic test is subjective and asks whether the
`ordinary, reasonable person would find the total concept and feel of the works to be
`substantially similar.” Urban Outfitters, 853 F.3d at 985 (internal quotation marks and
`citations omitted). When it comes to applying the intrinsic test, “a district court may grant
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`summary judgment for plaintiffs on the issue of copying when the works are so
`overwhelmingly similar that the possibility of independent creation is precluded.” Id. at
`987.
`II. Analysis
`A.
`Summary of the Parties’ Positions
`Seuss seeks summary judgment of willful copyright infringement against ComicMix
`and an award of heightened statutory damages. MSJ at 7. As to the first element of
`copyright infringement, Seuss argues that the Court previously determined that Seuss’s
`copyright registrations were valid, and ComicMix did not cross-appeal that decision;
`accordingly, ComicMix cannot now attack the validity of Seuss’s copyrights. Id. at 8. As
`to the second element, Seuss claims that ComicMix “did not deny” that Boldly! copied
`directly and extensively from the copyrighted works in question and is substantially similar
`to protected elements in those works; rather, “[ComicMix] argued only that their extensive
`copying was fair use and therefore n