District court dismisses trademark infringement claim related to the title of defendants’ work Oh, the Places You’ll Boldly Go!, finding under recent Ninth Circuit precedent that title did not violate Lanham Act because it merited First Amendment protection under both prongs of Rogers test.
Plaintiff Dr. Seuss Enterprises L.P., the assignee and owner of various copyrights and trademarks in the works of Dr. Seuss, brought suit for copyright and trademark infringement, and unfair competition, against defendant ComicMix LLC, Glenn Hauman, David Jerrold Friedman, David Gerrold and Ty Templeton. Plaintiff alleged that defendants’ “mash up” work Oh, the Places You’ll Boldly Go!, which combines elements of the Dr. Seuss book Oh, the Places You’ll Go! and various Dr. Seuss works with “certain characters, imagery, and other elements from the ‘Star Trek’ science fiction entertainment franchise created by Gene Roddenberry,” misappropriated key elements of Oh, the Places You’ll Go! and four other Dr. Seuss books. Defendants argued that Boldly is fair use.
After the district court initially dismissed plaintiff’s trademark and unfair competition claims (read our summary of the district court’s decision here), plaintiff filed an amended complaint, to which defendants filed a renewed motion to dismiss the copyright and trademark claims. The court declined to dismiss the amended claims (including the claim that the title of defendants’ work violated the Lanham Act) at that time (read our summary of the court’s decision here). Following a recent Ninth Circuit decision regarding the use of similar titles in expressive works, Twentieth Century Fox Television v. Empire Distribution, Inc., defendants moved for judgment on the pleadings arguing that their use of the Dr. Seuss title Oh, the Places You’ll Go! merited First Amendment protection under Rogers v. Grimaldi, the leading Second Circuit case involving similarity of titles in expressive works.
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.” While the court previously held on defendants’ motion to dismiss that both prongs of the Rogers test were met, it declined to dismiss the trademark claims, relying on footnote 5 of the Rogers case, which suggested an exception that would allow for lawsuits over “misleading titles that are confusingly similar to other titles.”
Since the district court’s initial decision, however, the Ninth Circuit ruled in Empire Distribution that the Rogers exception “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 precedent dictating that the Rogers test should apply in cases involving expressive works. (Read our summary of the Ninth’s Circuits decision here)
Applying the Rogers test, as now interpreted by the Ninth Circuit in Empire Distribution, the court noted that the “artistic relevance” prong is a low bar. The level must merely be “above zero” and that only the use of a trademark with no artistic relevance whatsoever to the underlying work would not be entitled to First Amendment protection. The court reiterated its previous conclusion that defendants’ use of plaintiff’s alleged trademark was relevant to the artistic purpose of Boldly, rejecting plaintiff’s argument that the Boldly title was chosen to “borrow from the rights holder or avoid the drudgery of creating something fresh,” and not for any artistic purpose. Noting the “above zero” threshold, the court concluded that “[i]t cannot be said that the title of Boldly is not at all relevant to the content of the book,” because “while it obviously also refer[s] to and us[es] the title of Go!, [it] describes and is relevant to its own content.”
To satisfy the second prong of the Rogers test, the junior user must show that its work does not explicitly mislead as to the source or content of the work. Even survey evidence of consumer confusion is not sufficient an “explicit indication, overt claim or explicit misstatement” that caused the confusion. The work’s copyright page, however, stated that it is a “work of parody, and is not associated with or endorsed by CBS Studios or Dr. Seuss Enterprises, L.P.” The court rejected plaintiff’s argument that this disclaimer and others were insufficient, finding that “[a]lthough the effectiveness of these disclaimers is disputed by plaintiff, 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.” The court also found that defendants’ use of the text and the lettering and font of Go!’s title was not enough to be an “explicit misstatement.”
Finding both Rogers prongs satisfied, the court held that the title of Boldly did not violate the Lanham Act, and granted defendants’ motion for judgment on the pleadings with respect to the title of defendant’s work.