Dr. Seuss Enterprises, L.P. v. ComicMix LLC et al

Filing 194

ORDER: (1) Granting Joint Motion for Entry of Consent Judgment and Permanent Injunction; (2) Denying as Moot ECF No. 188 ; and Entering Consent Judgment and Permanent Injunction [ECF Nos. 188 ; 192 ]. Signed by Judge Janis L. Sammartino on 10/8/2021. (tcf)

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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., Case No.: 16-cv-02779-JLS-BGS Plaintiff, 12 13 v. 14 ORDER: COMICMIX LLC, et al., 15 (1) GRANTING JOINT MOTION FOR ENTRY OF CONSENT JUDGMENT AND PERMANENT INJUNCTION; Defendants. 16 17 (2) DENYING AS MOOT ECF No. 188; AND 18 19 (3) ENTERING CONSENT JUDGMENT AND PERMANENT INJUNCTION 20 21 [ECF Nos. 188; 192] 22 23 Presently before the Court is a Joint Motion for Entry of Consent Judgment and 24 Permanent Injunction, wherein the parties provide that they have agreed to resolve this 25 action in its entirety and move for entry of a Consent Judgment and Permanent Injunction. 26 (ECF No. 192.) Having considered the parties’ joint motion and the Consent Judgment 27 and Permanent Injunction submitted concurrently, and good cause appearing, the Court 28 hereby GRANTS the joint motion. Additionally, in light of the resolution of this case, 1 16-cv-02779-JLS-BGS 1 Plaintiff’s Motion for Reconsideration or, Alternatively, for Certification of Interlocutory 2 Appeal Under 28 U.S.C. § 1292(b) (ECF No. 188) is hereby DENIED as moot. 3 4 The Court hereby ENTERS the Consent Judgment and Permanent Injunction as follows: 5 CONSENT JUDGMENT AND PERMANENT INJUNCTION 6 WHEREAS, on November 10, 2016, Plaintiff Dr. Seuss Enterprises, Inc. (“DSE”) 7 initiated the above-captioned action by filing a complaint against ComicMix, LLC, Glenn 8 Hauman, David Jerrold Friedman a/k/a David Gerrold, and Ty Templeton (collectively, 9 “Defendants”) (all collectively, the “Parties”) for copyright infringement of five works by 10 Dr. Seuss: Oh, The Places You’ll Go! (“Go!”), How the Grinch Stole Christmas! 11 (“Grinch”), The Sneetches and Other Stories (“Sneetches”) (Go!, Grinch, and Sneetches 12 collectively the “DSE Works”), The Lorax, and Horton Hears a Who!; as well as trademark 13 infringement and unfair competition under the Lanham Act and California law relating to 14 Defendants’ unpublished work, Oh, The Places You’ll Boldly Go! (“Boldly”) (ECF No. 1); 15 WHEREAS, on June 9, 2017, the Court dismissed DSE’s trademark and unfair 16 competition claims on the grounds of nominative fair use, granting DSE leave to amend 17 (ECF No. 38); 18 WHEREAS, on June 22, 2017, DSE amended its complaint by adding a claim under 19 the Lanham Act for infringement of its trademark registered under United States 20 Trademark Registration No. 5,099,531, adding certain factual allegations, and otherwise 21 maintaining its claims against Defendants (ECF No. 39); 22 23 WHEREAS, Defendants filed their operative answer with affirmative defenses on December 22, 2017 (ECF No. 53); 24 WHEREAS, on May 21, 2018, the Court denied Defendants’ Motion for Issuance 25 of a Request to the Register of Copyrights (ECF No. 57) to opine on the validity of the Go! 26 and Sneetches copyright registrations (ECF No. 88); 27 /// 28 /// 2 16-cv-02779-JLS-BGS 1 WHEREAS, on May 21, 2018, the Court, applying the test set forth in Rogers v. 2 Grimaldi, 875 F.2d 994 (2d Cir. 1989), granted in part Defendants’ Motion for Partial 3 Judgment on the Pleadings (ECF No. 54) as to DSE’s trademark and unfair competition 4 claims related to the title of Go! (ECF No. 89); 5 WHEREAS, on March 12, 2019, the Court granted summary judgment in favor of 6 Defendants on DSE’s copyright infringement claim on the grounds that Boldly is fair use, 7 and on DSE’s remaining trademark and unfair competition claims on the grounds that DSE 8 did not have enforceable trademarks in an artistic style or an illustrated typeface, and 9 denied DSE’s Motion for Summary Judgment (the “MSJ Decision”) (ECF No. 149); 10 WHEREAS, on March 26, 2019, DSE appealed the MSJ Decision to the United 11 States Court of Appeals for the Ninth Circuit (“Ninth Circuit”) (No. 19-55348) (ECF Nos. 12 151; 152); 13 WHEREAS, on December 18, 2020, the Ninth Circuit reversed the MSJ Decision as 14 to Defendants’ fair use defense to DSE’s copyright infringement claims related to the DSE 15 Works, affirmed the MSJ Decision as to dismissal of DSE’s trademark infringement and 16 unfair competition claims pursuant to the Rogers test, and remanded the action to this Court 17 for proceedings consistent with its opinion, Dr. Seuss Enters., L.P. v. ComicMix LLC, 983 18 F.3d 443 (9th Cir. 2020); 19 WHEREAS, on January 11, 2021, the Ninth Circuit provided notice of spreading the 20 mandate to this Court (ECF No. 165), which took effect on March 5, 2021, following a 21 hearing on the spreading of the mandate (ECF No. 174); 22 WHEREAS, on April 9, 2021, DSE filed a Renewed Motion for Summary Judgment 23 on its copyright infringement claims as to the DSE Works (ECF No. 176) and Defendants 24 filed a Motion for Reconsideration of the Court’s Order denying their Motion for Issuance 25 of Request to the Register of Copyrights (ECF No. 177); WHEREAS, on August 9, 2021, the Court denied both Parties’ April 9, 2021 26 27 motions (ECF No. 187); 28 /// 3 16-cv-02779-JLS-BGS 1 WHEREAS, on September 3, 2021, DSE filed a Motion for Reconsideration or, 2 Alternatively, for Certification of Interlocutory Appeal Under 28 U.S.C § 1292(b) 3 concerning the Court’s denial of its Renewed Motion for Summary Judgment (ECF No. 4 188); 5 6 WHEREAS, on September 15, 2021, Magistrate Judge Skomal issued a Scheduling Order resetting pretrial deadlines (ECF No. 189); 7 WHEREAS, on September 24, 2021, the Court extended the briefing schedule on 8 DSE’s Motion for Reconsideration or, Alternatively, for Certification of Interlocutory 9 Appeal Under 28 U.S.C § 1292(b) in light of the Parties’ settlement discussions (ECF Nos. 10 190; 191); 11 WHEREAS, the Parties have agreed to fully and finally resolve the remaining claims 12 in this action and all potential claims between them arising from the facts alleged in DSE’s 13 First Amended Complaint by consenting to entry by the Court of a judgment for copyright 14 infringement of the DSE Works and a permanent injunction, over which the Court will 15 exercise continuing jurisdiction for purposes of enforcement, on the terms and conditions 16 set forth herein; 17 18 19 20 21 THEREFORE, based on the Parties’ Joint Motion for Entry of Consent Judgment and Permanent Injunction: 1. Judgment is ENTERED in favor of DSE and against Defendants on DSE’s claim that Boldly infringes the copyrights owned by DSE in the DSE Works. 2. Defendants, and all of their officers, affiliates, directors, agents, servants, 22 employees, heirs, successors and assigns are hereby PERMANENTLY RESTRAINED 23 AND ENJOINED from any other infringement of copyrights in the DSE Works, including 24 but not limited to the sale, offer for sale, distribution, reproduction, marketing, display, 25 advertising, promoting, or otherwise exploiting Boldly or any portion thereof or any other 26 work substantially similar to Boldly as well as from assisting, aiding, or encouraging any 27 other person or business entity in engaging in or performing any of the activities referred 28 to herein, so long as any of the DSE Works are under copyright. 4 16-cv-02779-JLS-BGS 1 3. All claims, including any request or claim for damages, attorneys’ fees, or 2 costs, which any Party has asserted or could have asserted in this action, are hereby fully 3 and finally DISMISSED with prejudice. This paragraph shall not prevent DSE from 4 undertaking actions and proceedings to enforce the Permanent Injunction. 5 4. To the extent not covered by Paragraph 3 above, DSE’s claims that Boldly 6 infringes DSE’s copyrights in The Lorax and Horton Hears A Who!, and its claims that any 7 infringement was willful, are DISMISSED with prejudice. 8 5. The Court will exercise continuing jurisdiction over the Parties for purposes 9 of enforcement of this Consent Judgment and Permanent Injunction. 10 The Clerk of Court shall administratively close the case. 11 IT IS SO ORDERED. 12 Dated: October 8, 2021 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 5 16-cv-02779-JLS-BGS

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