On May
21, 2018, the U.S. District Court for the Southern District of California
granted a Motion for Judgment on the Pleadings filed by the creators of a Dr. Seuss-Star
Trek mash-up parody book entitled “Oh, the Places You’ll Boldly Go!” (the “Boldly”
book) against trademark infringement claims brought by Dr. Seuss Enterprises LP (the owner of the
intellectual property rights associated with the Dr. Seuss books). See Dr. Seuss Enterprises, L.P. v. ComicMix LLC et al, Case No. 16-cv-02779 (S.D. Cal.) (decision here).
Previously, Defendants argued that Plaintiff’s trademark infringement claims should be dismissed because Defendants’ title choice was protected by the First Amendment under the limiting construction provided for in the landmark case Rogers v. Grimaldi, 75 F.2d. 994 (2nd Cir. 1989):
Previously, Defendants argued that Plaintiff’s trademark infringement claims should be dismissed because Defendants’ title choice was protected by the First Amendment under the limiting construction provided for in the landmark case Rogers v. Grimaldi, 75 F.2d. 994 (2nd Cir. 1989):
Under the Rogers two-prong test, the title of an
expressive work does not violate the Lanham Act “unless the title has no
artistic relevance to the underlying work whatsoever, or, if it has some
artistic relevance, unless the title explicitly misleads as to the source or
the content of the work.” Mattel Inc. v. MCA Records, Inc., 296 F.3d
894, 902 (9th Cir. 2002) (internal quotation marks omitted) (quoting Rogers,
875 F.2d at 999). This test “insulates from restriction titles with at least
minimal artistic relevance that are ambiguous or only implicitly misleading but
leaves vulnerable to claims of deception titles that are explicitly misleading
as to source or content, or that have no artistic relevance at all.” Rogers,
875 F.2d at 1000.
Defendants
had argued that there is nothing misleading about its “Boldly” book title and that
the use of the title was directly relevant to the underlying creative work. Plaintiff focused its opposition on a
specific portion of the Rogers
decision – footnote 5 – to argue that this case was different. That footnote 5 stated that the outlined
“limiting construction would not apply to misleading titles that are
confusingly similar to other titles. The public interest in sparing consumers
this type of confusion outweighs the slight public interest in permitting
authors to use such titles.” Rogers, 875 F.2d at 999 n.5.
In its
order on the motion to dismiss, the Court found that Defendants’ invocation of
Plaintiff’s trademarks was relevant to the book’s artistic purposes and that
the title did not explicitly mislead as to its source or content. However, with respect to the footnote
exception, while the Ninth Circuit had not directly addressed such exception,
because other district courts had determined that the exception is applicable,
the Court decided that it would not dismiss Plaintiff’s trademark claims on
First Amendment grounds pursuant to Rogers.
However,
on November 16, 2017, the Ninth Circuit Court of Appeals issued its opinion in
the case Twentieth Century Fox Television a Division of Twentieth Century
Fox Film Corp. v. Empire Distribution, Inc., 875 F.3d 1192 (9th Cir.
2017). This case involved a dispute
between a record label named Empire Distribution and the companies behind the television
show Empire (and its portrayal of a fictional music label named “Empire
Enterprises”). As expected, the Ninth
Circuit invoked the Rogers test in deciding if the allegedly infringing
use of EMPIRE as the title of an expressive work was protected by the First
Amendment.
Empire
Distribution had argued that the limiting construction of the Rogers test did not apply because of
footnote 5. However, the Ninth Circuit
rejected Empire’s argument for an exception based on footnote 5 – nothing that
the footnote had only ever been cited once by an appellate court, and even then
the Second Circuit had rejected its applicability. 875 F.3d at 1197 (citing Cliffs Notes, Inc. v. Bantam
Doubleday Dell Publ’g Grp., Inc., 886 F.2d 490 (2d Cir. 1989)). The Ninth Circuit stated “[t]he exception the
footnote suggests may be ill-advised or unnecessary” because identifying
confusingly similar titles “has the potential to duplicate either the
likelihood-of-confusion test or the second prong of Rogers” and
“conflicts with our precedents, which ‘dictate that we apply the Rogers test
in [Lanham Act] § 43(a) cases involving expressive works.’” Id. (alternation
in original) (quoting Brown v. Elec. Arts, Inc., 724 F.3d 1235, 1241–42
(9th Cir. 2013)).
With this
revised interpretation of the Rogers
test in hand, the Court then reevaluated Defendants’ use of the Boldly title under the First
Amendment. The Court reaffirmed its
previous findings that Defendants’ invocation of Plaintiff’s alleged trademark
is relevant to Boldly’s artistic purpose
As well-put by the court in CI Games S.A. v.
Destination Films, No. 2:16-cv-5719-SVW-JC, 2016 WL 9185391 (C.D. Cal. Oct.
25, 2016): “It is clear to the Court that the artistic relevance prong of the Rogers
test is meant to ensure that the title in question uses the potential
trademark to express or describe its own content rather than merely to attract
notoriety using a trademark in its title that is irrelevant to the underlying
work.” Id. at *6.
As for
the second prong – whether the alleged use explicitly misleads as to the source
or content of the work – the question is “whether there was an ‘explicit
indication,’ ‘overt claim,’ or ‘explicit misstatement’ that caused . . .
consumer confusion.” Brown, 724 F.3d at 1245. (quoting Rogers,
875 F.2d at 1001). The Court noted that
not only did no such statement appear in Defendants’ work, but that Defendants
actually went out of their way on the Boldly copyright page to inform
readers that it was a work of parody that was not associated with or endorsed
by Dr. Seuss. While Plaintiff disputed
the effectiveness of such disclaimers, “what cannot be disputed is that there
is no statement in Boldly to the contrary, i.e., that the work is associated
with or endorsed by Plaintiff.” (emphasis in original). Moreover, Defendants’ use of similar text and
design for their book title is not enough to be an “explicit misstatement.” Without any clear evidence that the title of Boldly
explicitly misleads as to the source of the work, the Court found that the
second prong had been satisfied by Defendants.
With both
prongs of the Rogers test satisfied,
the Court ruled that Defendants were entitled to a judgment on the pleadings as
to Plaintiff’s trademark claims relating to the title of Boldly. While Plaintiff had also pled trademark
rights in the font and illustration style, because the Court had not determined
if Plaintiff had protectable trademark rights in the font and illustration
style of the Dr. Seuss book and only analyzed the title of the book (which it
had previously determined was a protectable trademark when it analyzed
Defendants’ Boldly book title), the
Court’s dismissal of Plaintiff’s trademark claims was limited to just those relating
to the title of Boldly.
