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`Case 3:16-cv-02779-JLS-BGS Document 89 Filed 05/21/18 PageID.1311 Page 1 of 9
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`UNITED STATES DISTRICT COURT
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`SOUTHERN DISTRICT OF CALIFORNIA
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`
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` Case No.: 16-CV-2779-JLS (BGS)
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`ORDER GRANTING IN PART
`MOTION FOR PARTIAL
`JUDGMENT ON THE PLEADINGS
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`(ECF No. 54)
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`DR. SEUSS ENTERPRISES, L.P.,
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`Plaintiff,
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`v.
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`COMICMIX LLC; GLENN HAUMAN;
`DAVID JERROLD FRIEDMAN a/k/a
`JDAVID GERROLD; and TY
`TEMPLETON,
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`Defendants.
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`Presently before the Court is Defendants’ Motion for Partial Judgment on the
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`Pleadings, (“MJP,” ECF No. 54). Also before the Court is Plaintiff’s Response in
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`Opposition to the Motion, (“Opp’n,” ECF No. 60), and Defendants’ Reply in Support of
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`the Motion, (“Reply,” ECF No. 62). The Court held oral argument on the motion on April
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`17, 2018. After considering the Parties’ arguments and the law, the Court rules as follows.
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`Due to the multiple orders in this case that adequately summarize the factual
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`BACKGROUND
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`1
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`16-CV-2779-JLS (BGS)
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`background, the Court will not repeat the factual background here.1 (See ECF No. 51, at
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`2–3.)2 As to the procedural background, Plaintiff filed a Complaint against Defendants
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`for: (I) copyright infringement; (II) trademark infringement; and (III) unfair competition.
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`(“Compl.,” ECF No. 1.) Defendants filed a Motion to Dismiss the complaint. (ECF No.
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`8.) The Court granted in part and denied in part Defendants’ Motion. (“First MTD Order,”
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`ECF No. 38.) Specifically, the Court denied Defendants’ Motion to Dismiss Plaintiff’s
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`claim of copyright infringement (Count I) and granted Defendants’ Motion to Dismiss
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`Plaintiff’s claims of trademark infringement and unfair competition (Counts II and III).
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`(Id. at 20.) The Court granted Plaintiff leave to amend its Complaint and Plaintiff filed an
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`Amended Complaint, (“FAC,” ECF No. 39). Defendants again moved to dismiss the
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`Complaint, and the Court denied the motion. (“Second MTD Order,” ECF No. 51.)
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`Defendants then filed the present Motion seeking judgment on the pleadings as to
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`Plaintiff’s trademark and unfair competition claims.
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`LEGAL STANDARD
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`Any party may move for judgment on the pleadings “[a]fter the pleadings are
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`closed—but early enough not to delay trial.” Fed. R. Civ. P. 12(c). A motion for judgment
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`on the pleadings attacks the legal sufficiency of the claims alleged in the complaint. See
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`Patel v. Contemporary Classics of Beverly Hills, 259 F.3d 123, 126 (2d Cir. 2001). The
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`Court must construe “all material allegations of the non-moving party as contained in the
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`pleadings as true, and [construe] the pleadings in the light most favorable to the [non-
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`moving] party.” Doyle v. Raley’s Inc., 158 F.3d 1012, 1014 (9th Cir. 1998). “Judgment on
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`the pleadings is proper when the moving party clearly establishes on the face of the
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`pleadings that no material issue of fact remains to be resolved and that it is entitled to
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`judgment as a matter of law.” Hal Roach Studios, Inc. v. Richard Feiner & Co., Inc., 896
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`F.2d 1542, 1550 (9th Cir. 1990). “Analysis under Rule 12(c) is ‘substantially identical’ to
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`
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`1 The Court will continue to refer to Defendants’ book, Oh! The Places You’ll Boldly Go!, as “Boldly”
`and will refer to Plaintiff’s book, Oh! The Places You’ll Go!, as “Go!”
`2 Pin citations refer to the CM/ECF page numbers electronically stamped at the top of each page.
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`2
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`Case 3:16-cv-02779-JLS-BGS Document 89 Filed 05/21/18 PageID.1313 Page 3 of 9
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`analysis under Rule 12(b)(6) because, under both rules, ‘a court must determine whether
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`the facts alleged in the complaint, taken as true, entitle the plaintiff to a legal remedy.’”
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`Chavez v. United States, 683 F.3d 1102, 1108 (9th Cir. 2012).
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`ANALYSIS
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`Defendants base their Motion on the Ninth Circuit opinion Twentieth Century Fox
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`Television a Division of Twentieth Century Fox Film Corp. v. Empire Distribution, Inc.,
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`875 F.3d 1192 (9th Cir. 2017), which was issued on November 16, 2017 and interprets and
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`applies the test from Rogers v. Grimaldi, 875 F.2d. 994 (2d Cir. 1989).
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`I.
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`Background
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`In their first motion to dismiss, Defendants argued that Plaintiff’s trademark claims
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`should be dismissed because Boldly merits First Amendment protection under Rogers v.
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`Grimaldi. Under the Rogers two-prong test, the title of an expressive work does not violate
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`the Lanham Act “unless the title has no artistic relevance to the underlying work
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`whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the
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`source or the content of the work.” Mattel Inc. v. MCA Records, Inc., 296 F.3d 894, 902
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`(9th Cir. 2002) (internal quotation marks omitted) (quoting Rogers, 875 F.2d at 999). This
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`test “insulates from restriction titles with at least minimal artistic relevance that are
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`ambiguous or only implicitly misleading but leaves vulnerable to claims of deception titles
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`that are explicitly misleading as to source or content, or that have no artistic relevance at
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`all.” Rogers, 875 F.2d at 1000.
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`The first Rogers prong requires that Defendants’ use of Plaintiff’s mark be relevant
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`to the underlying work. If this prong is satisfied, the second prong dictates that the use
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`may not explicitly mislead consumers about the source or content of the work. In their
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`prior motion, Defendants argued Boldly’s use of Go!’s title and “fonts and illustrations that
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`recall Dr. Seuss’s style” are “directly relevant to a creative work that addresses the
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`relationship between Go! and other Dr. Seuss works and the Star Trek universe.” (ECF
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`No. 8-1, at 29.) As to the second prong, Defendants argued there is nothing misleading
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`about Boldly. (Id.) In response, Plaintiff pointed to what it deemed “the most relevant
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`3
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`16-CV-2779-JLS (BGS)
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`portion of Rogers”—footnote 5. This footnote states that the outlined “limiting
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`construction would not apply to misleading titles that are confusingly similar to other titles.
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`The public interest in sparing consumers this type of confusion outweighs the slight public
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`interest in permitting authors to use such titles.” Rogers, 875 F.2d at 999 n.5.
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`In its order on the motion to dismiss, this Court analyzed the Rogers test. As to the
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`first prong, it held there is no question that “Defendants’ invocation of Plaintiff’s alleged
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`trademarks is relevant to Boldly’s artistic purpose.” (First MTD Order 15.) As to the
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`second prong, the Court held that Boldly does not explicitly mislead as to its source or
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`content. (Id.) The Court then referenced the exception in footnote 5. (Id. at 17.) The
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`Court stated that the Ninth Circuit had not “directly addressed this exception,” but other
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`district courts have determined that the exception is applicable. The Court therefore held
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`it would not dismiss Plaintiff’s trademark claims on First Amendment grounds under
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`Rogers. (Id. at 17.) Defendants now argue the Rogers footnote has been disavowed by
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`the Ninth Circuit in Empire Distribution and Boldly’s use of Plaintiff’s pled trademark
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`claims “merits First Amendment protection under both prongs of the Rogers test.” (MJP
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`11.)
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`II.
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`Twentieth Century Fox Television v. Empire Distribution, Inc.
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`Twentieth Century Fox Television a Division of Twentieth Century Fox Film Corp.
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`v. Empire Distribution, Inc., 875 F.3d 1192 (9th Cir. 2017) involved a dispute between
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`Empire Distribution (“Empire”), the well-known record label, and Twentieth Century Fox
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`Television and Fox Broadcasting Company (“Fox”). Fox premiered a television show
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`titled Empire, which portrays a fictional music label named “Empire Enterprises.” Fox
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`promoted the show and the music from the show through performances and goods bearing
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`the show’s “Empire” brand. Empire sent Fox a claim letter demanding Fox stop using the
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`Empire trademark. Fox filed suit, “seeking a declaratory judgment that the Empire show
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`and its associated music releases do not violate Empire Distribution’s trademark rights
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`under either the Lanham Act or California law.” Empire, 875 F.3d at 1195. Fox moved
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`for summary judgment, which the district court granted, and Empire appealed.
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`4
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`16-CV-2779-JLS (BGS)
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`In analyzing the claim, the Ninth Circuit noted that when “the allegedly infringing
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`use is the title of an expressive work,” it applies the Rogers test rather than the likelihood-
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`of-confusion test. Id. at 1196. Expressive works are treated differently from other covered
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`works “because (1) they implicate the First Amendment right of free speech, which must
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`be balanced against the public interest in avoiding consumer confusion; and (2) consumers
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`are less likely to mistake the use of someone else’s mark in an expressive work for a sign
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`of association, authorship, or endorsement.” Id. Accordingly, “the title of an expressive
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`work does not violate the Lanham Act ‘unless the title has no artistic relevance to the
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`underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly
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`misleads as to the source or the content of the work.’” Id. (quoting Rogers, 875 F.2d at
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`999).
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`The Ninth Circuit first determined whether the Rogers test applied to the Empire
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`mark. Empire had argued that the limiting construction from Rogers would not apply due
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`to footnote 5. The Ninth Circuit stated that the footnote had only ever been cited once by
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`an appellate court, and even then the Second Circuit had rejected its applicability. Id. at
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`1197 (citing Cliffs Notes, Inc. v. Bantam Doubleday Dell Publ’g Grp., Inc., 886 F.2d 490
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`(2d Cir. 1989)). The Ninth Circuit stated “[t]he exception the footnote suggests may be ill-
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`advised or unnecessary” because identifying confusingly similar titles “has the potential to
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`duplicate either the likelihood-of-confusion test or the second prong of Rogers” and
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`“conflicts with our precedents, which ‘dictate that we apply the Rogers test in [Lanham
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`Act] § 43(a) cases involving expressive works.’” Id. (alternation in original) (quoting
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`Brown v. Elec. Arts, Inc., 724 F.3d 1235, 1241–42 (9th Cir. 2013)).
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`In sum, the court found the first Rogers prong is satisfied because it could not say
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`that Fox’s use of the “Empire” mark “has no artistic relevance to the underlying work
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`whatsoever.” Id. at 1198. The court noted there is no requirement that the junior work
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`refer to the senior work, i.e., the word “Empire” did not need to refer to Empire
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`Distribution. Id. The court also found the second prong is satisfied because Fox’s show
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`“contains no overt claims or explicit references to Empire Distribution” and is not explicitly
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`5
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`16-CV-2779-JLS (BGS)
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`

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`Case 3:16-cv-02779-JLS-BGS Document 89 Filed 05/21/18 PageID.1316 Page 6 of 9
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`misleading. Id. The court thus affirmed the district court’s grant of summary judgment
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`in favor of Fox for the trademark infringement, trademark dilution, unfair competition, and
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`false advertising claims.
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`III. Discussion
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`The Court now evaluates Plaintiff’s trademark claims under the Rogers test as it has
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`been interpreted by the Ninth Circuit.
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`A. First Rogers Prong
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`As to the first Rogers prong, “only the use of a trademark with ‘no artistic relevance
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`to the underlying work whatsoever’ does not merit First Amendment protection. In other
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`words, the level of relevance merely must be above zero.” E.S.S. Entm’t 2000, Inc. v. Rock
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`Star Videos, Inc., 547 F.3d 1095, 1100 (9th Cir. 2008). “A mark that has no meaning
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`beyond its source-identifying function is more likely to be used in a way that has ‘no artistic
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`relevance to the underlying work whatsoever,’ [citation] because the work may be ‘merely
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`borrow[ing] another’s property to get attention,’ [citation].” Id. at 1198 (quoting Mattel,
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`296 F.3d at 901–02; and citing Dr. Seuss Ents., L.P. v. Penguin Books USA, Inc., 109 F.3d
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`1394, 1401 (9th Cir. 1997)).
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`This Court previously found that Defendants’ invocation of Plaintiff’s alleged
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`trademarks is relevant to Boldly’s artistic purpose. (First MTD Order 15.) Plaintiff argues
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`the title of Boldly was not chosen for artistically relevant reasons but was chosen to “borrow
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`from the rights holder or avoid the drudgery of creating something fresh.” (Opp’n 16
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`(citing Empire, 875 F.3d at 1198 and Penguin, 109 F.3d at 1401).) The Court disagrees.
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`As mentioned above, the “artistic relevance” test is a low bar—the level must merely be
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`“above zero.” Brown, 724 F.3d at 1243. It cannot be said that the title of Boldly is not at
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`all relevant to the content of the book. As well-put by the court in CI Games S.A. v.
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`Destination Films, No. 2:16-cv-5719-SVW-JC, 2016 WL 9185391 (C.D. Cal. Oct. 25,
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`2016): “It is clear to the Court that the artistic relevance prong of the Rogers test is meant
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`to ensure that the title in question uses the potential trademark to express or describe its
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`own content rather than merely to attract notoriety using a trademark in its title that is
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`6
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`16-CV-2779-JLS (BGS)
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`irrelevant to the underlying work.” Id. at *6. This Court agrees and finds the title of Boldly,
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`while obviously also referring to and using the title of Go!, describes and is relevant to its
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`own content. This prong is met.
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`B. Second Rogers Prong
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`The second prong of the Rogers test requires a junior user to show that its work does
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`not explicitly mislead as to the source or content of the work. Mattell, 296 F.3d at 902. “It
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`is well established that the use of a mark alone is not enough to satisfy this prong of the
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`Rogers test.” Brown, 724 F.3d at 1245. The question is “whether there was an ‘explicit
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`indication,’ ‘overt claim,’ or ‘explicit misstatement’ that caused . . . consumer confusion.”
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`Id. (quoting Rogers, 875 F.2d at 1001). The Ninth Circuit has held that even if a party
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`produces survey evidence that shows consumers believed that the trademark owner
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`endorsed the allegedly infringing work, this would not be enough to support a claim of
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`explicit misleading. Id. at 1245–46. “To be relevant, evidence must relate to the nature of
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`the behavior of the identifying material’s user, not the impact of the use.” Id. at 1246. For
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`example, if a party produced evidence of “statements made in materials” accompanying
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`the allegedly infringing work that explicitly mislead consumers, this may be sufficient. Id.
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`Here, if Defendants had included a leaflet or a statement within Boldly that stated
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`Plaintiff endorsed or was involved in the production of Boldly, this may be sufficient.
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`There is no such statement, in fact, the opposite is true. Boldly’s copyright page states that
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`“[t]his is a work of parody, and is not associated with or endorsed by CBS Studios or Dr.
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`Seuss Enterprises, L.P.,” and includes the following text: “Copyright Disclaimer under
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`section 107 of the Copyright Act 1976, allowance is made for ‘fair use’ for purposes such
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`as criticism, comment, news reporting, teaching, scholarship, education, research, and
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`parody.” (MJP 5–6.) Although the effectiveness of these disclaimers is disputed by
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`Plaintiff, what cannot be disputed is that there is no statement in Boldly to the contrary, i.e.,
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`that the work is associated with or endorsed by Plaintiff.
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`Plaintiff argues that Defendants have taken more than just the mark because they
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`used the title Oh! The Places You’ll Go! and copied the lettering and font of the title and
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`16-CV-2779-JLS (BGS)
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`many of the illustrated characters. (Opp’n 21.) Indeed, this Court has found that “[t]he
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`look of the lettering is unquestionably identical on both books, down to the shape of the
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`exclamation point.” (Second MTD Order 21.) But, Defendants’ use of the text and design
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`of Go!’s title is not enough to be an “explicit misstatement.” See Rogers, 875 F.2d at 999
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`(giving as examples of “explicit” endorsement the phrases “an authorized biography” or
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`“Jane Fonda’s Workout”); see also Brown, 724 F.3d at 1246 (“The risk of
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`misunderstanding, not engendered by any explicit indication on the face of the [work], is
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`so outweighed by the interest in artistic expression as to preclude application of the
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`[Lanham] Act.” (quoting ETW Corp. v. Jireh Publ’g, Inc., 332 F.3d 915 (6th Cir. 2003))).
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`Plaintiff has not pointed to, and is not able to point to, any evidence that the title of
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`Boldly explicitly misleads as to the source of the work, thus, the second prong of Rogers is
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`satisfied. Because both Rogers prongs are satisfied, Defendant is entitled to judgment on
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`the pleadings as to Plaintiff’s trademark claims.
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`CONCLUSION AND ORDERS
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`With this finding, the Court now clarifies which claims are to be dismissed. As
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`noted in the prior order, Plaintiff has pled trademark rights in the title of, fonts on and
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`within, and illustrations within Go!. The Court stated it was unnecessary to determine at
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`that time “whether Plaintiff may claim trademark rights in the fonts used on covers of books
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`other than Go! or the font used within Go!.” (Second MTD Order 14.) The Court
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`determined the title Go! is a protectable trademark and analyzed Defendants’ “use of Go!’s
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`title (the words of the title and the title’s design on the book covers).” (Id.) The Court also
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`found it could not say at the motion to dismiss stage that Plaintiff’s asserted general
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`“illustration style” is a protectable trademark but it did not find that the illustrations within
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`Go! are precluded from trademark protection. (Id. at 15.) Therefore, the Court has not
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`held whether or not Plaintiff has protectable trademark rights in the font and illustration
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`style of Go! and the Court has only analyzed the title of Go! as it appears on the cover of
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`the book. In this order, the Court is only finding that the title of Boldly does not violate the
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`Lanham Act. Thus, the Court GRANTS Defendants’ Motion for Judgment on the
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`8
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`16-CV-2779-JLS (BGS)
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`Pleadings as to Counts II and III of the First Amended Complaint as they relate to the title
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`of Boldly. Further, as the Court stated previously, “if claims relying on the exact same
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`factual conduct are validly dismissed under the Lanham Act, they should also be dismissed
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`under California Unfair Competition law.” (First MTD Order 19 (citing E.S.S. Entm’t, 547
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`F.3d at 1101).) Because Plaintiff’s unfair competition claims are based on the same factual
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`conduct as its trademark claims, the Court GRANTS Defendants’ Motion for Judgment on
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`the Pleadings as to Count IV of the First Amended Complaint as it relates to the title of
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`Boldly.
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`IT IS SO ORDERED.
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`Dated: May 21, 2018
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`16-CV-2779-JLS (BGS)
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