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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UNITED STATES DISTRICT COURT

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SOUTHERN DISTRICT OF CALIFORNIA

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DR. SEUSS ENTERPRISES, L.P.,

Case No.: 16-cv-02779-JLS-BGS

Plaintiff,

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v.

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ORDER:

COMICMIX LLC, et al.,

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(1) GRANTING JOINT MOTION
FOR ENTRY OF CONSENT
JUDGMENT AND PERMANENT
INJUNCTION;

Defendants.

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(2) DENYING AS MOOT ECF No.
188; AND

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(3) ENTERING CONSENT
JUDGMENT AND PERMANENT
INJUNCTION

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[ECF Nos. 188; 192]

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Presently before the Court is a Joint Motion for Entry of Consent Judgment and

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Permanent Injunction, wherein the parties provide that they have agreed to resolve this

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action in its entirety and move for entry of a Consent Judgment and Permanent Injunction.

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(ECF No. 192.) Having considered the parties’ joint motion and the Consent Judgment

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and Permanent Injunction submitted concurrently, and good cause appearing, the Court

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hereby GRANTS the joint motion. Additionally, in light of the resolution of this case,
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Plaintiff’s Motion for Reconsideration or, Alternatively, for Certification of Interlocutory

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Appeal Under 28 U.S.C. § 1292(b) (ECF No. 188) is hereby DENIED as moot.

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The Court hereby ENTERS the Consent Judgment and Permanent Injunction as
follows:

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CONSENT JUDGMENT AND PERMANENT INJUNCTION

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WHEREAS, on November 10, 2016, Plaintiff Dr. Seuss Enterprises, Inc. (“DSE”)

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initiated the above-captioned action by filing a complaint against ComicMix, LLC, Glenn

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Hauman, David Jerrold Friedman a/k/a David Gerrold, and Ty Templeton (collectively,

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“Defendants”) (all collectively, the “Parties”) for copyright infringement of five works by

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Dr. Seuss: Oh, The Places You’ll Go! (“Go!”), How the Grinch Stole Christmas!

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(“Grinch”), The Sneetches and Other Stories (“Sneetches”) (Go!, Grinch, and Sneetches

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collectively the “DSE Works”), The Lorax, and Horton Hears a Who!; as well as trademark

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infringement and unfair competition under the Lanham Act and California law relating to

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Defendants’ unpublished work, Oh, The Places You’ll Boldly Go! (“Boldly”) (ECF No. 1);

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WHEREAS, on June 9, 2017, the Court dismissed DSE’s trademark and unfair

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competition claims on the grounds of nominative fair use, granting DSE leave to amend

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(ECF No. 38);

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WHEREAS, on June 22, 2017, DSE amended its complaint by adding a claim under

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the Lanham Act for infringement of its trademark registered under United States

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Trademark Registration No. 5,099,531, adding certain factual allegations, and otherwise

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maintaining its claims against Defendants (ECF No. 39);

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WHEREAS, Defendants filed their operative answer with affirmative defenses on
December 22, 2017 (ECF No. 53);

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WHEREAS, on May 21, 2018, the Court denied Defendants’ Motion for Issuance

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of a Request to the Register of Copyrights (ECF No. 57) to opine on the validity of the Go!

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and Sneetches copyright registrations (ECF No. 88);

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///

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///
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16-cv-02779-JLS-BGS

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WHEREAS, on May 21, 2018, the Court, applying the test set forth in Rogers v.

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Grimaldi, 875 F.2d 994 (2d Cir. 1989), granted in part Defendants’ Motion for Partial

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Judgment on the Pleadings (ECF No. 54) as to DSE’s trademark and unfair competition

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claims related to the title of Go! (ECF No. 89);

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WHEREAS, on March 12, 2019, the Court granted summary judgment in favor of

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Defendants on DSE’s copyright infringement claim on the grounds that Boldly is fair use,

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and on DSE’s remaining trademark and unfair competition claims on the grounds that DSE

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did not have enforceable trademarks in an artistic style or an illustrated typeface, and

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denied DSE’s Motion for Summary Judgment (the “MSJ Decision”) (ECF No. 149);

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WHEREAS, on March 26, 2019, DSE appealed the MSJ Decision to the United

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States Court of Appeals for the Ninth Circuit (“Ninth Circuit”) (No. 19-55348) (ECF Nos.

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151; 152);

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WHEREAS, on December 18, 2020, the Ninth Circuit reversed the MSJ Decision as

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to Defendants’ fair use defense to DSE’s copyright infringement claims related to the DSE

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Works, affirmed the MSJ Decision as to dismissal of DSE’s trademark infringement and

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unfair competition claims pursuant to the Rogers test, and remanded the action to this Court

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for proceedings consistent with its opinion, Dr. Seuss Enters., L.P. v. ComicMix LLC, 983

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F.3d 443 (9th Cir. 2020);

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WHEREAS, on January 11, 2021, the Ninth Circuit provided notice of spreading the

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mandate to this Court (ECF No. 165), which took effect on March 5, 2021, following a

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hearing on the spreading of the mandate (ECF No. 174);

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WHEREAS, on April 9, 2021, DSE filed a Renewed Motion for Summary Judgment

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on its copyright infringement claims as to the DSE Works (ECF No. 176) and Defendants

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filed a Motion for Reconsideration of the Court’s Order denying their Motion for Issuance

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of Request to the Register of Copyrights (ECF No. 177);
WHEREAS, on August 9, 2021, the Court denied both Parties’ April 9, 2021

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motions (ECF No. 187);

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WHEREAS, on September 3, 2021, DSE filed a Motion for Reconsideration or,

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Alternatively, for Certification of Interlocutory Appeal Under 28 U.S.C § 1292(b)

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concerning the Court’s denial of its Renewed Motion for Summary Judgment (ECF No.

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188);

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WHEREAS, on September 15, 2021, Magistrate Judge Skomal issued a Scheduling
Order resetting pretrial deadlines (ECF No. 189);

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WHEREAS, on September 24, 2021, the Court extended the briefing schedule on

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DSE’s Motion for Reconsideration or, Alternatively, for Certification of Interlocutory

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Appeal Under 28 U.S.C § 1292(b) in light of the Parties’ settlement discussions (ECF Nos.

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190; 191);

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WHEREAS, the Parties have agreed to fully and finally resolve the remaining claims

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in this action and all potential claims between them arising from the facts alleged in DSE’s

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First Amended Complaint by consenting to entry by the Court of a judgment for copyright

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infringement of the DSE Works and a permanent injunction, over which the Court will

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exercise continuing jurisdiction for purposes of enforcement, on the terms and conditions

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set forth herein;

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THEREFORE, based on the Parties’ Joint Motion for Entry of Consent Judgment
and Permanent Injunction:
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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.
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Defendants, and all of their officers, affiliates, directors, agents, servants,

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employees, heirs, successors and assigns are hereby PERMANENTLY RESTRAINED

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AND ENJOINED from any other infringement of copyrights in the DSE Works, including

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but not limited to the sale, offer for sale, distribution, reproduction, marketing, display,

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advertising, promoting, or otherwise exploiting Boldly or any portion thereof or any other

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work substantially similar to Boldly as well as from assisting, aiding, or encouraging any

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other person or business entity in engaging in or performing any of the activities referred

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to herein, so long as any of the DSE Works are under copyright.
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3.

All claims, including any request or claim for damages, attorneys’ fees, or

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costs, which any Party has asserted or could have asserted in this action, are hereby fully

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and finally DISMISSED with prejudice. This paragraph shall not prevent DSE from

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undertaking actions and proceedings to enforce the Permanent Injunction.

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4.

To the extent not covered by Paragraph 3 above, DSE’s claims that Boldly

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infringes DSE’s copyrights in The Lorax and Horton Hears A Who!, and its claims that any

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infringement was willful, are DISMISSED with prejudice.

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The Court will exercise continuing jurisdiction over the Parties for purposes

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of enforcement of this Consent Judgment and Permanent Injunction.

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The Clerk of Court shall administratively close the case.

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IT IS SO ORDERED.

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Dated: October 8, 2021

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