Dr. Seuss Enterprises, L.P. v. ComicMix LLC et al, No. 3:2016cv02779 - Document 88 (S.D. Cal. 2018)
Court Description: ORDER Denying Defendants' 57 Motion for Issuance of Request to the Register of Copyrights. Signed by Judge Janis L. Sammartino on 5/21/2018. (mpl)
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1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 SOUTHERN DISTRICT OF CALIFORNIA 10 11 DR. SEUSS ENTERPRISES, L.P., 12 13 14 15 16 Case No.: 16-CV-2779-JLS (BGS) ORDER DENYING DEFENDANTS’ MOTION FOR ISSUANCE OF REQUEST TO THE REGISTER OF COPYRIGHTS Plaintiff, v. COMICMIX LLC; GLENN HAUMAN; DAVID JERROLD FRIEDMAN a/k/a JDAVID GERROLD; and TY TEMPLETON, (ECF No. 57) 17 18 Defendants. 19 20 Presently before the Court is Defendants’ Motion for Issuance of Request to the 21 Register of Copyrights, (“MTN,” ECF No. 57-1). Also before the Court is Plaintiff’s 22 Opposition to the Motion, (“Opp’n,” ECF No. 69), and Defendants’ Reply in Support of 23 the Motion, (“Reply,” ECF No. 74). 24 Defendants filed their Motion pursuant to 17 U.S.C. § 411(b)(2). Defendants allege 25 Plaintiff’s copyright applications for Oh, the Places You’ll Go! (“Go!”) and The Sneetches 26 and Other Stories (“Sneetches”) are based on inaccurate information. Defendants request 27 the Court “request the Register of Copyrights to advise the court whether the inaccurate 28 information, if known, would have caused the Register of Copyrights to refuse 1 16-CV-2779-JLS (BGS) 1 registration.” (MTN 7 (quoting 17 U.S.C. § 411(b)(2)).) 2 BACKGROUND 3 Dr. Seuss, aka Theodor Seuss Geisel, wrote children’s books between 1937 and 4 1990. Dr. Seuss also wrote and illustrated stories published in Redbook magazine in the 5 1950s, including “The Sneetches” in the July 1953 issue and “The Zax” in the March 1954 6 issue. (MTN 9.)1 The copyright notices in these two issues of Redbook identify the 7 publisher, McCall Corporation (“McCall”), as the proprietor of the copyrights. (ECF No. 8 57-4.) Defendants allege Dr. Seuss did not separately obtain a copyright registration for 9 either story or renew the copyright for either story. (MTN 9–10.)2 10 One of Dr. Seuss’s books at issue in the present Motion is The Sneetches and Other 11 Stories which was published in 1961. The first two stories in the book are “The Sneetches” 12 and “The Zax” which Defendants allege are derivative works “substantially based on the 13 stories published in Redbook in July 1953 and March 1954, with more illustrations and 14 with the texts revised and expanded.” (Id. at 10.) Nothing on the copyright page of the 15 Sneetches references the Redbook stories. (Id.) When Dr. Seuss applied to register the 16 copyright for Sneetches, he did not inform the Copyright Office of the Redbook stories. 17 (See ECF No. 57-7 (copyright application for Sneetches).)3 Dr. Seuss also did not inform 18 the Copyright Office of the stories when he renewed the application for Sneetches in 1989. 19 (MTN 11.) In contrast, as Defendants note, when Dr. Seuss registered for a copyright in 20 Yertle the Turtle and Other Stories three years after he registered Sneetches, he stated on 21 the application: “Approximately one-third of the illustrations in this volume are new and 22 the text of the three stories (previously published in Redbook Magazine and copyrighted) 23 has been slightly changed throughout.” (See ECF No. 57-9, at 1.) 24 25 26 27 28 1 Pin citations refer to the CM/ECF page numbers electronically stamped at the top of each page. Plaintiff has proven otherwise, as discussed herein. 3 At the time, line 5 of the application stated: “If any substantial part of this work has been previously published, give a brief general statement of the new matter in this version. New matter may consist of compilation, translation, abridgment, editorial revision, and the like, as well as additional text or pictorial matter.” Dr. Seuss left this line blank. (See ECF No. 57-7.) 2 2 16-CV-2779-JLS (BGS) 1 Another short work written by Dr. Seuss is “The economic situation clarified: A 2 prognostic re-evaluation” (hereinafter, “Economic Situation”), first published in the June 3 15, 1975 issue of The New York Times Magazine. The New York Times obtained a 4 copyright for the collective work as the owner, (ECF No. 57-10), and obtained a renewal 5 registration in the collective work in 2003. “Economic Situation” is a short work printed 6 on a background image. The image, with changes, appears in Go! (See MTN 12, 14 7 (artwork compared).) When Dr. Seuss applied to the Copyright Office to register the 8 copyright in Go!, he did not reference “Economic Situation” in the application. 9 LEGAL STANDARD 10 A certificate of registration from the Copyright Office constitutes “prima facie 11 evidence of the validity of the copyright and of the facts stated in the certificate.” 17 U.S.C. 12 § 410(c). “To rebut the presumption [of validity], an infringement defendant must simply 13 offer some evidence or proof to dispute or deny the plaintiff’s prima facie case of 14 infringement.” United Fabrics Int’l, Inc. v. C&J Wear, Inc., 630 F.3d 1255, 1257 (9th Cir. 15 2011). A defendant may rebut the presumption of validity by showing evidence that the 16 certificate of registration contains inaccurate information that: (1) was included with 17 knowledge that it was inaccurate; and (2) would have caused the Register of Copyrights to 18 refuse registration. 19 certificates do not invalidate a copyright and thus do not bar infringement actions, unless 20 the alleged infringer has relied to its detriment on the mistake, or the claimant intended to 21 defraud the Copyright Office by making the misstatement.” Urantia Found. v. Maaherra, 22 114 F.3d 955, 963 (9th Cir. 1997). “Absent intent to defraud and prejudice, inaccuracies 23 in copyright registration do not bar actions for infringement.” Harris v. Emus Records 24 Corp., 734 F.2d 1329, 1335 (9th Cir. 1984). 17 U.S.C. § 411(b)(1). “[I]nadvertent mistakes on registration 25 In a case where inaccurate information as described in § 411(b)(1) is alleged, “the 26 court shall request the Register of Copyrights to advise the court whether the inaccurate 27 information, if known, would have caused the Register of Copyrights to refuse 28 registration.” 17 U.S.C. § 411(b)(2). 3 16-CV-2779-JLS (BGS) 1 2 ANALYSIS I. Plaintiff’s Argument 3 Plaintiff argues there is no inaccuracy in the applications for Sneetches or Go! 4 because material from the prior works comprised insignificant portions of the books and 5 Plaintiff was not required to disclose reuse of Dr. Seuss’s own prior creations. (Opp’n 7.) 6 Plaintiff argues Defendants did not prejudicially rely on the alleged omissions and argues 7 Dr. Seuss did not fraudulently conceal the prior works from the Copyright Office. (Id.) “The Sneetches” and “The Zax” 8 A. 9 Plaintiff agrees the Dr. Seuss wrote these two stories and that they were published 10 in Redbook. Plaintiff agrees that McCall was the copyright owner and obtained copyright 11 registrations for both issues. But in 1956, McCall assigned to Dr. Seuss the copyright to 12 these two works. (Opp’n 8; see ECF No. 69-8.) 13 Plaintiff agrees that Dr. Seuss registered the Sneetches book in 1961 and agrees that 14 Line 5 of the application was left blank. (Opp’n 9.) Plaintiff also notes that the illustration 15 at issue in the instant case (i.e., the illustration from Sneetches that Plaintiff states is used 16 by Defendants in Defendants’ book) was not in the Redbook Sneetches story nor the 17 Redbook Zax story. (Id.) Plaintiff agrees Dr. Seuss did reference other Redbook stories in 18 his copyright applications for other books such as Yertle the Turtle and Other Stories, but 19 Plaintiff argues the copyright for each book “presents its own unique set of facts regarding 20 whether a ‘substantial part’ of the prior work was used.” (Id. at 21.) “Economic Situation” 21 B. 22 Plaintiff agrees that Dr. Seuss wrote “Economic Situation” and that the New York 23 Times Company obtained copyright registration in the collective work in 1975 as the owner 24 and a renewal copyright in 2003. (Id.) But, Plaintiff states Dr. Seuss owned the copyright 25 in “Economic Situation” at the time Go! was registered for copyright in 1990. Plaintiff 26 states “‘Economic Situation’ was a contribution to a collective work, and under 17 U.S.C. 27 § 201(c) of the 1976 Act, Dr. Seuss, as the author and contributor of the work, was deemed 28 to be the sole copyright owner in ‘Economic Situation.’” (Id.) See 17 U.S.C. § 201(c) 4 16-CV-2779-JLS (BGS) 1 (“Copyright in each separate contribution to a collective work is distinct from copyright in 2 the collective work as a whole, and vests initially in the author of the contribution.”). 3 Plaintiff agrees one of the illustrations in Go! is “based upon” an illustration in 4 “Economic Situation.” (Opp’n 9.) Plaintiff does not dispute that Dr. Seuss filed an 5 application in 1990 to register the copyright in Go! and the copyright was issued. Plaintiff 6 agrees the copyright application for Go! did not disclose “Economic Situation.” (Id. at 7 10.)4 8 In sum, Plaintiff did not disclose the prior works (the Redbook stories and 9 “Economic Situation”) in the applications for the books Sneetches and Go!. But, Plaintiff 10 makes various arguments why Defendants’ Motion should be dismissed. The issue is 11 twofold: (1) were the copyright registrations for Sneetches and Go! based on inaccurate 12 information, and if so, (2) is there evidence of prejudice to Defendants or of an intent to 13 defraud the Copyright Office by Plaintiff? 14 II. Were the Applications Inaccurate? 15 Plaintiff argues the registrations for the two books were accurate, and that “[a] 16 registrant was not obligated to disclose in an application that the work makes use of a 17 portion of a prior work of the same author.” (Opp’n 14.) Plaintiff also argues the prior 18 works are not a substantial part of the later works. 19 A. 20 The Sneetches and Other Stories The Court first analyzes the copyright application for the Sneetches book. 21 1. Same Author vs. Third Party 22 The law is somewhat divided as to whether the author is required to disclose prior 23 works on a copyright application even if those prior works were created by the author 24 himself. Under 17 U.S.C. § 409(9), “[t]he application for copyright registration . . . shall 25 26 27 28 Plaintiff also does not dispute that in 1991, “Dr. Seuss filed an application to correct the copyright claimants shown in the registration for Go!” changing the claimant from the Geisels to the Geisels as Trustees of a Trust Agreement. (Opp’n 10.) The Copyright Office thereafter issued a corrected registration. 4 5 16-CV-2779-JLS (BGS) 1 include . . . in the case of a compilation or derivative work, an identification of any 2 preexisting work or works that it is based on or incorporates, and a brief, general statement 3 of the additional material covered by the copyright claim being registered.” Some courts 4 have held disclosure is not required if the prior work was created by the same author. The 5 court in Frank Betz Associates, Inc. v. J.O. Clark Construction, LLC, No. 3:08-cv-159, 6 2010 WL 2253541, at *11 (M.D. Tenn. May 30, 2010), held “[t]he issue raised by § 409(9) 7 is whether and to what extent the derivative design incorporates elements designed by 8 someone else.” Where the evidence indicates that plaintiff created derivative designs based 9 on its own original designs, “the concerns that § 409(9) raises are not implicated.” Id. 10 Similarly, the court in Robert L. Stark Enterprises, Inc. v. Neptune Design Group, LLC, 11 No. 1:16 CV 264, 2017 WL 1345195, at *9 (N.D. Ohio Apr. 12, 2017), stated “[t]o the 12 extent defendant owns a valid copyright in [the prior] plans, the Court finds that on the 13 facts of this case, the failure to disclose the plans as pre-existing material when registering 14 later works, standing alone, would not invalidate the subsequent registration.” The court 15 reasoned, “[a]s the copyright would have simply incorporated plans created by defendant, 16 its failure to identify those plans as pre-existing materials does not implicate Section 409(9) 17 of the Copyright Act.” Id.; see also Dorchen/Martin Assocs., Inc. v. Brook of Cheboygan, 18 Inc., No. 11-10561, 2012 WL 4867608, at *6 (E.D. Mich. Oct. 15, 2012) (finding that the 19 plaintiff was the author of the prior plan, which was used to create the new plan, and “[t]o 20 deny Plaintiff protection for that plan, simply because it failed to identify an earlier version 21 it created and incorporated, would contravene the purpose of rule 409(9)”). 22 In contrast, other courts and scholars have held the opposite. See Lennar Homes 23 Tex. Sales & Mktg., Ltd. v. Perry Homes, LLC, 117 F. Supp. 3d 913, 925 (S.D. Tex. 2015) 24 (“Even if the registrant owns both the derivative work and the underlying work, § 409(9) 25 still requires disclosure.”); see also William F. Patry, Patry on Copyright § 17:112 (2015) 26 (stating it is “incorrect that applications need not disclose in Space 6 [of the copyright 27 application] that the work is a derivative work if the preexisting work is also owned by the 28 applicant”). Indeed, as explained in this treatise: 6 16-CV-2779-JLS (BGS) 1 The purpose of disclosure on Space 6 is twofold: to permit the Copyright Office to determine whether the new material is sufficient to support the derivative registration, and to place on the public record a clean separation of the original, preexisting work from the derivative work so that copyright in the original work is not impermissibly extended through successive registrations for undisclosed variations. 2 3 4 5 6 Id. Further, the current edition of the Compendium of U.S. Copyright Office Practices 7 states “[t]he U.S. Copyright Office has a longstanding practice of precluding previously 8 published material from a claim in a collective work or derivative work, even if the author 9 of the collective work or derivative work is the author of the previously published material 10 and owns all of the rights in that material.” U.S. Copyright Office, Compendium of U.S. 11 Copyright Office Practices, § 1008.2 (3d ed. 2017) (hereinafter “Compendium”).5 12 The Court agrees with the latter determinations. The purpose of the statute requiring 13 disclosure is better served when disclosure is made whether the previously published 14 material was copyrighted and/or written by the author or by a third party.6 It is immaterial 15 whether Dr. Seuss or another party owned the copyrights for the Redbook stories and 16 “Economic Situation.” But, this finding does not resolve Plaintiff’s Motion, and the Court 17 now must determine whether the prior works should have been disclosed on the copyright 18 application for the Sneetches book. 19 2. Substantiality 20 Plaintiff states the book Sneetches has 245 lines of poetry, and 22 of these draw 21 measure from the Redbook stories “The Sneetches” and “The Zax” and the illustrations in 22 the stories are different than those in the book. (Opp’n 16.) Indeed, in piece-mailing the 23 24 25 26 27 28 5 The Compendium is a manual published by the Copyright Office and provides guidance to copyright applicants and others regarding practices and principles of copyright law. The interpretation of copyright law in the compendium is “entitled to judicial deference if reasonable.” Batjac Prods. Inc. v. GoodTimes Home Video Corp., 160 F.3d 1223, 1231 (9th Cir. 1998). 6 See also Compendium, Glossary (defining “unclaimable material” as including “(i) previously published material; (ii) previously registered material; (iii) material that is in the public domain; and/or (iv) copyrightable material that is not owned by the claimant named in the application”). Notably, this does not distinguish between previously published material owned by the author or by a third party. 7 16-CV-2779-JLS (BGS) 1 works and dividing them up line by line, it is evident that the amount of lines used in the 2 books is not significant. However, it is also evident that the first two stories in the 3 Sneetches book are really an expansion and elaboration of two Redbook stories. 4 At the time Dr. Seuss filled out the copyright registration for Sneetches, the 5 application asked whether “any substantial part of this work has been previously 6 published.” (See ECF No. 57-7.) The Court finds that the Redbook stories, which although 7 formed the idea behind part of the Sneetches book, were not a “substantial part” of the 8 work. Although the stories are the basis for two out of four stories in the Sneetches book, 9 the book elaborated on the stories and included a great amount of new and different 10 material. It cannot be said that the two short stories composed a “substantial” part of the 11 book and therefore the copyright application for Sneetches is not based on inaccurate 12 information. The Court DENIES Defendants’ Motion as it relates to the copyright 13 registration of Sneetches. B. Oh, The Places You’ll Go! 14 15 As to Go!, Plaintiff states the book contains 25 illustrations,7 only one of which “is 16 claimed by [Defendants] to be derivative of the illustration of Economic Situation’” and 17 Dr. Seuss was not required to disclose this incorporation. (Id. at 18.)8 18 When Dr. Seuss registered the copyright for Go!, Section 5 of the application asked 19 the applicant: “Has registration for this work, or for an earlier version of this work, already 20 been made to the Copyright Office?” (ECF No. 57-13, at 2.) Dr. Seuss checked no. The 21 Court finds this was not erroneous; simply because one illustration from Go! was 22 previously published does not mean there is an “earlier version” of the work.9 Section 6 23 24 25 26 27 28 7 Defendants dispute this and argue there are 22 illustrations. In 1990, the Geisels assigned rights to Tri-Star Pictures, Inc. to produce a motion picture based on Go! (Opp’n 10.) Defendants argue Plaintiff intentionally failed to disclose “Economic Situation” in the copyright application for Go! because disclosure of the prior work would have “complicated and made less valuable, if not threatened altogether” this deal with Tri-Star. (MTN 24.) 9 Similarly, the Court finds no error in the two other sections of the application referenced by Defendants. (MTN 16.) Section 1 of the form asked: “If this work was published as a contribution to a periodical, serial, or collection, give information about the collective work in which the contribution appeared.” Dr. 8 8 16-CV-2779-JLS (BGS) 1 of the application titled “Derivative Works or Compilation” asks the applicant to 2 “[i]dentify any preexisting work or works that this work is based on or incorporates.” (Id.) 3 Dr. Seuss left this section blank. 4 Plaintiff does not appear to argue that Go! is not a derivative work, but argues that 5 under the law at the time, Dr. Seuss only was required to disclose the prior work if a 6 substantial amount of the prior work was incorporated in the derivative work. (Opp’n 18.) 7 A “derivative work” is defined as “a work based upon one or more preexisting works, such 8 as [an] art reproduction, abridgment . . . or any other form in which a work may be recast, 9 transformed, or adapted [or] [a] work consisting of editorial revisions, annotations, 10 elaborations, or other modifications, which, as a whole, represent an original work of 11 authorship.” 17 U.S.C. § 101. The registration for a derivative work does not cover any 12 “preexisting material” employed in the work. 17 U.S.C. § 103b. Thus, in the registration 13 application for a derivative work, the applicant must disclaim such material. Compendium, 14 §§ 503.5, 507.2; see 17 U.S.C. § 409(9) (“The application for copyright registration . . . 15 shall include . . . in the case of a compilation or derivative work, an identification of any 16 preexisting work or works that it is based on or incorporates, and a brief, general statement 17 of the additional material covered by the copyright claim being registered.”). Assuming 18 Go! is a derivative work, its registration should identify any preexisting work that it is 19 based on or incorporates. 20 Plaintiff argues that the amount of preexisting work in Go! is not substantial and 21 therefore did not need to be disclosed. Indeed, “[t]he incorporation of insubstantial 22 amounts of preexisting material or of noncopyrightable material need not be disclosed.” 23 Pantry, § 17:112. The Court agrees with Plaintiff. The Court finds that Go! did not 24 incorporate a substantial amount of preexisting material from “Economic Situation.” 25 “Economic Situation” was a poem published on a background artwork consisting of images 26 27 28 Seuss left this line blank and the Court finds no inaccuracy in this answer. Section 2 of the form asked: “Was this contribution to the work a ‘work made for hire’?” Dr. Seuss checked no and the Court finds no inaccuracy in this answer. 9 16-CV-2779-JLS (BGS) 1 of walking figures. (See MTN 12.) This background artwork, without the poem, and with 2 small changes made, is used on one page of Go!. (See id. at 14.). The use of the prior work 3 does not constitute an “appreciable” or “substantial” amount.10 See Pantry, § 17:112 (“If 4 the work does not contain an appreciable amount of unclaimable material, spaces 6(a) and 5 6(b) of the application may be left blank.”); see also Compendium, § 621.8(B) (same). 6 The Court finds that because Go! does not contain an appreciable nor a substantial 7 amount of unclaimable material, the publication of the “Economic Situation” was not 8 required to be disclosed by Dr. Seuss in Go!’s copyright application. The Court DENIES 9 Defendants’ Motion as it relates to the copyright registration of Go! 10 CONCLUSION 11 For the foregoing reasons, the Court DENIES Defendants’ Motion. 12 IT IS SO ORDERED. 13 Dated: May 21, 2018 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 The words “substantial amount” and “appreciable amount” are both used by the Copyright Office, and “substantial amount” was used in the second edition of the Compendium. See U.S. Copyright Office, Compendium of U.S. Copyright Office Practices § 108.04 (2d ed. 1984). As the Copyright Office recently noted: Applicants should add a disclaimer if the work contains an “appreciable” amount of previously published material. This requirement was stated throughout the 2014 version of the Compendium. But in a few places the Office inadvertently used the word “substantial” in place of the word “appreciable.” The Public Draft corrected these oversights, and . . . these corrections do not represent a change in the Office’s current policy. U.S. Copyright Office, Compendium of U.S. Copyright Office Practices, 82 Fed. Reg. 45,625, 45,626 n.2 (Sept. 29, 2017) (citations omitted). 10 10 16-CV-2779-JLS (BGS)
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