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Reverse Confusion Suit Not Ironclad, but SmartSync Lives On

by | Apr 29, 2021 |

In a split decision, the US Court of Appeals for the Ninth Circuit vacated a district court’s summary judgment and remanded the case for trial in an action brought under the Lanham Act in order to resolve material issues of fact on likelihood of confusion/reverse confusion factors that remain in dispute. Ironhawk Technologies, Inc. v. Dropbox, Inc., Case No. 19-56347 (9th Cir. Apr. 20, 2021) (Smith, J.) (Tashima, J., dissenting)

Ironhawk developed computer software designed to transfer data efficiently in “bandwidth-challenged environments” and has marketed the software since 2004 using the name “SmartSync.” Ironhawk registered the SmartSync mark in 2007. In 2017, Dropbox launched a feature entitled “Smart Sync,” which allowed users to see and access files in their Dropbox cloud storage accounts without taking up space on their hard drive. Ironhawk sued Dropbox for trademark infringement and unfair competition in 2018, alleging that that Smart Sync intentionally infringed upon Ironhawk’s SmartSync trademark and was likely to cause confusion among consumers. The district court granted summary judgment in favor of Dropbox, concluding that “a reasonable trier of fact could not conclude that Dropbox’s use of Smart Sync is likely to cause consumer confusion.”

Ironhawk appealed, focusing primarily on its reverse confusion theory of infringement. Reverse confusion occurs where consumers dealing with the holder of the senior mark (Ironhawk) believe they are dealing with the junior (Dropbox). This occurs when someone who is only aware of the well-known junior (Dropbox) comes into contact with the lesser-known senior (Ironhawk) and incorrectly believes the senior is the same as, or affiliated with, the junior user because of the similarity of the two marks.

The Ninth Circuit first defined the relevant consumer market. This issue revolved around whether the relevant market should be limited to Ironhawk’s only active customer, the US Navy, or whether it should include commercial customers. Dropbox argued that the market should be limited to the Navy and that consequently the relevant consumer would be less likely to be confused as to the source or affiliation of SmartSync. In terms of procurement, it was undisputed that the Navy exercised significant care and effort. However, Ironhawk argued that it previously had a commercial customer, and that it actively markets and pursues business with other commercial businesses. The Court held that because Ironhawk had a previous commercial customer and had made recent attempts to acquire more commercial accounts, a reasonable jury could include the potential commercial customers in the relevant market.

The Ninth Circuit next turned to the “highly factual inquiry” of the eight Sleekcraft factors:

  • Strength of the mark
  • Proximity of the goods
  • Similarity of the marks
  • Evidence of actual confusion
  • Marketing channels used
  • Type of goods and likely level of care exercised by purchaser
  • Defendant’s intent in selecting the mark
  • Likelihood of expansion of the product lines.

For the first three factors, the Ninth Circuit found that a reasonable jury could find that:

  • Dropbox’s mark was commercially strong and would be able to swamp Ironhawk’s reputation.
  • The Smart [...]

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School’s Out: Trademark Settlement Agreement Enforceable

by | Apr 29, 2021 |

Addressing issues relating to jurisdiction, contract enforceability and trademarks, the US Court of Appeals for the First Circuit concluded that two schools that used similar names had a valid and enforceable settlement agreement obligating one school to pay for the other to change its name. The Commonwealth School, Inc. v. Commonwealth Academy Holdings LLC, Case No. 20-1112 (1st Cir. Apr. 14, 2021) (Selya, J.)

It came to the attention of a Boston private school, The Commonwealth School (the School), that a more recently founded private school in Springfield, Massachusetts, was operating under a similar name, Commonwealth Academy (the Academy). In 2016, the School brought suit against the Academy under the federal Lanham Act, claiming that the School had a trademark on its “Commonwealth School” name, and that “Commonwealth Academy” infringed on that trademark. The parties entered into settlement mediation, and agreed that the School would pay the Academy $25,000 and in return the Academy would change its name to “Springfield Commonwealth Academy.”

The district court issued an order that a settlement was reached. Three years passed, and the Academy took steps to change its name in promotional materials and on its website. But the School would not pay the Academy because it claimed the Academy still had the “Commonwealth Academy” name appearing prominently on its students’ basketball jerseys. At a hearing to resolve the dispute, the district court reversed its earlier order: the parties had not actually reached a settlement agreement because there had been no “meeting of the minds” for contract formation, despite the other steps the Academy took to fulfill the agreement. The district court dismissed the case because neither party showed cause to reopen the case. The Academy appealed, arguing that the district court erred in refusing to enforce the settlement agreement.

The First Circuit addressed three main issues on appeal: (1) whether there was appellate jurisdiction to hear the appeal, (2) whether the district court had subject matter jurisdiction to hear the initial settlement agreement dispute, and (3) on the merits, whether the settlement agreement was a validly formed contract.

The First Circuit concluded it had jurisdiction to review the district court’s dismissal order. Generally, under the final judgment rule, only final decisions are appealable. But here, the order at issue was merely interlocutory, meaning it was issued during the course of litigation. The Academy claimed the order was in fact reviewable because the order resulted in the case’s dismissal, and thus it should fall under the merger doctrine exception, where interlocutory orders merge into final judgments. The Court considered this in the context of the School’s failure to prosecute, and whether the order actually fell under an exception to the exception – i.e., where a dismissal is based on a failure to prosecute, it does not fall under the merger doctrine. In its analysis, the Court considered the policy considerations underlying the merger doctrine: to preserve integrity of the final judgment rule by preventing any reward for bad faith tactics. Here, the School, as the [...]

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You Want Some “Metchup” with That?

by | Apr 22, 2021 |

The US Court of Appeals for the Fifth Circuit found no infringement by a large, well-known company that used the registered mark of an individual whose own use was local and generated only a few sales and minimal profits. The Court vacated and remanded the case to determine whether plaintiff had abandoned the mark. Dennis Perry v. H.J. Heinz Co. Brands, L.L.C., Case No. 20-30418 (5th Cir. Apr. 12, 2021) (Graves, J.)

In 2010, Dennis Perry created a condiment concoction in his home kitchen that he named “Metchup,” constituting a blend of private label mustard and ketchup, and a blend of mayonnaise and ketchup. Perry sold the concoction in the lobby of his small motel in Louisiana. The US Patent & Trademark Office granted registration for his trademark “Metchup” and after five years declared his mark “incontestable.” Perry had slow sales, however, only selling about 60 bottles with $50 total profit over the years. Perry had a Facebook page for his product, but did not advertise or sell the product in stores or online.

Meanwhile, Heinz produced a condiment called “Mayochup,” a blend of mayonnaise and ketchup, that it began selling in the United States in 2018. Heinz held an online naming contest to promote its product, and when one participant suggested the name “Metchup,” Heinz posted a mock-up picture with the “Metchup” name, along with other proposals. Heinz’s counsel saw Perry’s trademark registration, but because Heinz was not actually selling a product named “Metchup” and there were so few indications that Perry’s product was actually being sold, Heinz concluded that Perry’s mark was not in use and could be used in its promotion. When Perry saw Heinz’s posting, he sued for trademark infringement.

The district court found that while Perry may have once had a valid trademark registration for “Metchup,” there was no likelihood of confusion with the Heinz product and the mark had been abandoned as a consequence of de minimis use. Perry appealed.

The Fifth Circuit analyzed the dispute based on the eight-factor likelihood of confusion test. The Court found three factors weighed in Perry’s favor:

  • Product similarity: Both products were mixed condiments.
  • Potential purchaser care: Consumers would exercise less care for a low-priced condiment.
  • Mark similarity: Both products used the same word “Metchup,” although the Court noted that the packaging design looked very different.

The Court also found five factors weighed in Heinz’s favor:

  • The type of mark on the spectrum (i.e., whether the name is related to what the product is): Here, the mark was “suggestive” because it was a mash-up of names related to the sauces used.
  • Outlet and purchaser identity: The parties targeted different markets because Perry had limited sales in one motel, while Heinz targeted online and at almost all grocery stores.
  • Advertising identity: Perry did not advertise besides his one Facebook page without online sales, while Heinz had large-scale advertising and sales.
  • Defendant’s intent: Heinz did not intend to infringe because it assumed Perry’s mark was no longer [...]

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Triple Trouble: Unauthorized Trademark Use among Organizations with Nearly Identical Name

by | Apr 1, 2021 |

The US Court of Appeals for the District of Columbia Circuit affirmed a district court ruling that the use of nearly identical marks by a military order, a related foundation and a funding organization was likely to cause confusion. Military Order of the Purple Heart Service Foundation, Inc. v. Military Order of the Purple Heart of the United States of America, Inc., Case No. 19-7167 (DC Cir. Mar. 16, 2021) (non-precedential).

This case involved a dispute among three entities: the Military Order of the Purple Heart of the United States of America, Inc. (Order); the Military Order of the Purple Heart Service Foundation, Inc. (Foundation); and the Military Order of the Purple Heart Service Foundation Holdings, LLC (Holdings). The Order provides charitable services to veterans, and the Foundation funds the Order’s operations. Holdings is owned by the Foundation and licensed the Order to use Holdings’ “Purple Heart” word mark in connection with charitable fundraising for specific approved projects. The funding agreement between the parties was made in 2016, and the use of the trademark was agreed to in 2017. Following a warning from the Foundation in 2018 that the Order’s funding might be reduced for 2019 because of financial problems, the Order began fundraising on its own, at times purposely diverting funds away from the Foundation while using the “Purple Heart” mark without Holdings’ permission.

The Foundation and Holdings sued the Order for breach of the 2016 funding agreement, breach of the 2017 licensing agreement, and trademark infringement. The Order filed its own suit for breach of the funding agreement. The cases were consolidated and the district court ruled that the Order’s use of the mark without permission violated the licensing agreement and two provisions of the Lanham Act. The Order appealed.

The DC Circuit agreed that the Order’s use of Holdings’ mark was in plain violation of the parties’ 2017 agreement. The agreement stated that the Order could use the mark “only in connection with charitable fundraising for specific projects that are approved by [Holdings] and are consistent with [the Order’s] mission statement.” Thus, the Order’s fundraising advertisements using the mark without permission were inconsistent with the agreement.

The DC Circuit also found that the Order’s use of the “Purple Heart” mark was likely to cause confusion. Not only are the names of these entities nearly identical, but the Order’s national commander admitted at trial that the public frequently confuses the Order and the Foundation. Citing its 1982 Foxtrap precedent, the Court concluded that consumer confusion is likely where the marks in issue are identical and the record contains evidence that the businesses are sufficiently related so as to be connected in the mind of the relevant public.



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Waiver in PTO Trademark Appeals Applies “Per Decision, Not Per Case”

by | Mar 24, 2021 |

Addressing a “narrow question of statutory interpretation,” the US Court of Appeals for the Fourth Circuit reversed the district court’s dismissal of a trademark case for lack of subject matter jurisdiction, holding that a party that appeals a Trademark Trial & Appeal Board (TTAB) decision to the US Court of Appeals for the Federal Circuit may, after remand to and issuance of a new decision by the TTAB, seek review of the new decision in federal district court. Snyder’s-Lance, Inc. v. Frito-Lay N.A., Inc., Case No. 19-2316 (4th Cir. Mar. 17, 2021) (Wynn, J.)

Princeton Vanguard, a snack food producer, applied to register its mark “Pretzel Crisps” on the principal register. Frito-Lay opposed. The TTAB denied Princeton Vanguard’s application, concluding that the mark was generic.

Under the Lanham Act, Princeton Vanguard could appeal the TTAB’s original decision to either the Federal Circuit under 15 USC § 1071(a) or federal district court under § 1071(b). Princeton Vanguard elected a direct appeal to the Federal Circuit pursuant to § 1071(a), thus waiving its right to district court review. The Federal Circuit concluded that the TTAB applied the wrong legal standard in evaluating whether Princeton Vanguard’s mark was generic and remanded the case to the TTAB. The TTAB again concluded that Princeton Vanguard’s mark was generic. This time, Princeton Vanguard appealed to a federal district court pursuant to § 1071(b).

The district court sua sponte dismissed the case for lack of subject matter jurisdiction, concluding that Princeton Vanguard’s appeal of the original decision to the Federal Circuit pursuant to § 1071(a) precluded Princeton Vanguard from appealing the second decision to a district court pursuant to § 1071(b). Princeton Vanguard appealed.

On appeal, the Fourth Circuit concluded that the statutory text of the Lanham Act supported Princeton Vanguard’s argument in favor of jurisdiction. The Court explained that Princeton Vanguard’s waiver of its right to district court review of the original TTAB decision pursuant to § 1071(a) did not apply to any subsequent decisions in the same case, and that the waiver applied “per decision, but not per case.”

The Court rejected Frito-Lay’s argument that Princeton Vanguard was taking a second bite at the apple by seeking re-review in federal district court of issues already decided by the Federal Circuit, reasoning that Princeton Vanguard was seeking district court review of the second, separate decision that had not been reviewed by the Federal Circuit. The Court stressed, however, that the Federal Circuit’s review of the TTAB’s original decision was binding as to issues it decided.

Practice Note: If the TTAB issues multiple decisions in the same proceeding, each decision is considered a separate decision for purposes of waiver under §§ 1071(a) (b), even if the decisions implicate similar issues.



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Click Fraud: Predicate to False Designation of Origin

by | Mar 11, 2021 |

The US Court of Appeals for the Fifth Circuit affirmed that pay-per-click advertisers may be liable under the Lanham Act for “click fraud.” WickFire, LLC v. Laura Woodruff et al., Case No. 17-50340 (5th Cir. Feb. 26, 2021) (Owen, J.)

WickFire and TriMax Media are advertisers that compete in the pay-for-performance search engine marketing business, also known as pay-per-click marketing. In this type of marketing, every time a user clicks on an advertisement, the advertiser pays the search engine (i.e., Google) a small fee. If the user makes a purchase on the merchant’s site, the merchant pays the advertiser a commission. When a pay-per-click campaign runs smoothly, the advertiser pays a small amount for a click, the click results in a sale, and the commission to the advertiser is more than the advertiser paid for the click.

WickFire filed a lawsuit against TriMax, alleging that TriMax violated Section 43 of the Lanham Act by committing “click fraud” through repeatedly clicking on WickFire’s ads without any intent to make a purchase, and created false advertisements that were made to appear as though they belonged to WickFire, among other state law claims. Section 43(a) of the Lanham Act prohibits a person from making, “in connection with any goods or services,” a “false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which . . . is likely to cause confusion . . . as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities.” WickFire alleged that the ads included a trademark and links to a WickFire website designed to aggregate coupons for online merchants.

The case went to trial, and a jury found for WickFire with respect to the state law claims and the false advertising claim (although it did not award any damages for violation of the Lanham Act). The jury determined that TriMax misrepresented WickFire as the source of advertisements by placing ads containing identifying information distinct to WickFire in a manner that was likely to cause confusion. TriMax filed for judgment as a matter of law and for a new trial. The district court denied the motions and entered judgment. TriMax appealed.

On appeal, TriMax alleged that WickFire’s Lanham Act claim was foreclosed by the Supreme Court’s decision in Dastar v. Twentieth Century Fox. The Fifth Circuit disagreed. The Court explained that WickFire was not concerned with protecting an original idea, as Fox attempted to do in Dastar. Instead, WickFire was trying to protect the genuineness of its brand.

TriMax next argued that it was entitled to judgment as a matter of law because the jury did not have a legally sufficient evidentiary basis to find for WickFire. The Fifth Circuit thought otherwise, holding that it did not need to decide whether the evidence was sufficient as a matter of law because the jury did not award WickFire damages to the claim. The Court noted that since the jury found that there were no damages, WickFire [...]

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Agreement to One Is Not Consent to All

by | Feb 25, 2021 |

Addressing a myriad of issues involving unauthorized use of professional models’ photographs for gentlemen’s clubs’ promotional materials, the US Court of Appeals for the Second Circuit held that the district court erred in its interpretation of “consent,” and vacated and remanded to adjudicate the scope of the consent given. The Second Circuit simultaneously affirmed the district court’s dismissal of claims under the Lanham Act and New York corporate and libel law. Electra v. 59 Murray Enterprs., Case No. 19-235 (2d Cir. Feb. 9, 2021) (Pooler, J.)

Eleven famous female models, including celebrity Carmen Electra, brought claims against three gentlemen’s clubs for using photographs of the models without permission. Plaintiffs had posed for the photographs for modeling agencies and signed release agreements for those agencies to use the photos. The clubs were given these photographs through third-party contractors that used the images to promote social events, including advertisements on the clubs’ website and social media. Plaintiffs never provided the clubs with any authorization or written consent to use their photos, nor were they compensated. Plaintiffs maintained that they do not endorse the clubs and were harmed by the unauthorized use of their likeness in association with prurient activities that the clubs promote. The clubs argued that their contractors obtained the images from a catalogue source that they believed had all rights in the images.

The main issues on appeal were whether plaintiffs had provided their “written consent” to the clubs to use their photos when they signed releases with their own agencies (despite never authorizing the clubs to use the photos), and whether the releases barred their claims.

Of the 11 plaintiffs, only six were not time barred, and of those, only two had disputed terms of their agreements. The Court opined for those two plaintiffs.

Under New York Civil Rights Law §§ 50-51 (statutory right of privacy and publicity), it is a misdemeanor to “use for advertising purposes, or for the purposes of trade, the name, portrait or picture of any living person without having first obtained the written consent of such person.” This protects both private individuals and those in the public eye, such as the plaintiffs, if they did not give written permission for that particular use. In deciding whether plaintiffs gave their consent for lawful use, the Second Circuit explained that there is no consent if the use exceeds the terms of the agreement, a factual inquiry into the text and terms of the releases.

The district court granted the clubs summary judgment under § 51 claims, finding that each plaintiff with a timely claim had entered into a “comprehensive” release that “grant[ed] the releasee unlimited rights to the use of the images at issue.” The plaintiffs argued that the district court erred in so finding because the record did not contain releases for the images at issue. The district court did not address whether the releases constituted written consent, but mused that it would be “inconsistent” with the statute for plaintiffs to sign unlimited releases and [...]

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Fairness Is the Limit for Asserting False Advertising Claims

by | Feb 11, 2021 |

Addressing whether Lanham Act claims for false advertising or false association under § 43(a) (15 USC § 1125(a)) are subject to a statute of limitations, the US Court of Appeals for the Fourth Circuit concluded that the sole time limit on bringing such claims is the equitable doctrine of laches. Belmora LLC v. Bayer Consumer Care AG, Case No. 18-2183 (4th Cir. Feb. 2, 2021) (Floyd, J.)

The facts of the underlying dispute are straightforward. Bayer has sold the pain reliever naproxen as FLANAX in Mexico since 1972 and in the United States as ALEVE. Belmora began selling naproxen under the name FLANAX in the United States in 2004, where it used similar packaging and described the drug as one sold successfully in Mexico. Both companies tried to register the mark with the US Patent & Trademark Office, where proceedings unfolded. Ultimately, in April 2014, the Trademark Trial and Appeal Board cancelled Belmora’s trademark registration, finding that Belmora had blatantly misused FLANAX by drawing on the popularity of Bayer’s Mexican product. Two months later, Bayer brought claims against Belmora under § 43(a) of the Lanham Act and California unfair competition law in the US District Court for the Central District of California. The suit was transferred to the Eastern District of Virginia, where Belmora moved to dismiss, arguing that § 43(a) and state law claims were barred by the statute of limitations. Bayer replied that § 43(a) had no statute of limitations, and that the time to bring the state law claims had been tolled during the Board’s proceedings. The district court granted both of Belmora’s motions, and the appeal followed.

Because there is no express statute of limitations for a § 43(a) claim, the question before the Court was whether to assume that Congress intended that the most analogous state law statute of limitations apply, or to apply either the most analogous federal statute or common law laches doctrine. “Conclud[ing] that § 43(a) is one such federal law for which a state statute of limitations would be an unsatisfactory vehicle for enforcement,” the Court held that laches was more appropriate, for primarily two reasons. First, the statutory text provides that § 43(a) damages are subject to the principles of equity, which would include the doctrine of laches. Second, the Court found persuasive the law of the Third, Seventh and Ninth Circuits, which each apply laches as to restrict the timeliness of as § 43(a) action. That said, the Court emphasized that on remand, the district court should consider the period for bringing a similar state action as part of the laches analysis, especially because the Fourth Circuit employs a presumption that claims brought after the expiration of the most-analogous statute-of-limitations are barred by laches.

The Court noted that Bayer could overcome a presumption of laches, and cited three factors for the district court to consider:

  • Bayer’s knowledge (or lack thereof) of Belmora’s adverse use
  • Whether Bayer’s delay was inexcusable or unreasonable
  • Whether Belmora had been unduly prejudiced by [...]

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IP Implications of the Consolidated Appropriations Act, 2021

by | Jan 14, 2021 | , ,

On December 27, 2020, Congress signed the Consolidated Appropriations Act, 2021, into law. The omnibus act includes new legislation affecting patent, copyright and trademark law. A brief summary of key provisions is provided below.

Patents – Section 325 Biological Product Patent Transparency

42 USC § 262(k) was amended to require that the US Food and Drug Administration (FDA) provide the public with more information about patented biological products. Within six months, the FDA must make the following information available to the public on its Database of Licensed Biological Products or “Purple Book,” and it must update the list every 30 days:

  • A list of each biological product, by nonproprietary name, for which a biologics license is in effect
  • The license date and application number
  • The license and marketing status (as available)
  • Exclusivity periods

The amendment requires that the holders of a license to market a biologic drug now disclose all patents believed to be covering that drug. The new law is designed to prevent errors that could delay biosimilars from coming to the market.

Copyrights – The CASE Act of 2020

The Consolidated Appropriations Act incorporates the Copyright Alternative in Small-Claims Enforcement (CASE) Act of 2020, as well as legislation designed to increase criminal penalties for the unauthorized digital streaming of copyright-protected content. The CASE Act includes revisions to the Copyright Act, 17 USC §§ 101 et seq., with the goal of creating a new venue for copyright owners to enforce their rights instead of having to file an action in federal court.

The Copyright Claims Board

The CASE Act established the Copyright Claims Board (a small claims court), which is designed to serve as an alternative forum where parties may voluntarily seek to resolve certain copyright claims regarding any category of copyrighted work. A party may opt out upon being served with a claim, choosing instead to resolve the dispute in federal court. A party to a proceeding before the Board may, but is not required to, be represented by a lawyer. A party may also be represented by a law student who is qualified under applicable law, and who provides such representation on a pro bono basis. The Board consists of three copyright claims officers who may conduct individualized proceedings to resolve disputes and must issue written decisions setting forth their factual findings and legal conclusions.

Procedural Matters

The Board must follow the law in the federal jurisdiction in which the action could have been brought if filed in federal court. Because jurisdictional conflicts may arise where a dispute may have been brought in multiple jurisdictions, the CASE Act provides that the Board may apply the law of the jurisdiction that the Board determines has the most significant ties to the parties and the conduct at issue.

Although formal motion practice is not permitted, discovery is allowed on a limited basis, including requests for documents, written interrogatories and written requests for admission. The Board may consider evidence, documentary and (non-expert) testimony, without the application of formal [...]

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This Mashup Is Not a Place You’ll Go – Seuss Copyright Will ‘Live Long and Prosper’

by | Jan 7, 2021 | ,

Presented with a publishing company defendant’s mashup of Dr. Seuss’ copyrighted works with Star Trek in a work titled Oh, the Places You’ll Boldly Go!, the US Court of Appeals for the Ninth Circuit tackled claims of both copyright and trademark infringement, including the defense of fair use and the use of trademarks in expressive works. The Ninth Circuit reversed the district court’s summary judgment in favor of defendants on the copyright infringement claim and affirmed the district court’s dismissal and grant of summary judgment in favor of defendants on the trademark claim. Dr. Seuss Enterprises, L.P. v. ComicMix LLC, et al., Case No. 19-55348 (9th Cir. Dec. 18, 2020) (McKeown, J.)

Seuss Enterprises owns the intellectual property in the works of late author Theodor S. Geisel, better known as Dr. Seuss. Seuss Enterprises carefully yet prolifically licenses the Dr. Seuss works and brand across a variety of entertainment, media, art and consumer goods, including derivative works of Dr. Seuss’ final book, and graduation favorite, Oh, the Places You’ll Go! When Seuss Enterprises encountered a Kickstarter campaign to raise funds for the Oh, the Places You’ll Boldly Go! mashup work created by ComicMix (a company whose employees include an author of Star Trek episodes), it filed suit for copyright and trademark infringement. The district court granted ComicMix’s motion for summary judgment, holding that the Boldly work was a fair use of Dr. Seuss’s Oh, the Places You’ll Go! and that Seuss Enterprises did not have a cognizable trademark infringement claim under the Lanham Act. Seuss Enterprises appealed.

On appeal, ComicMix asserted its defense of fair use by arguing that its copying of the Dr. Seuss works (described at one point in the record as painstaking attempts to create “identical” illustrations) resulted in a parody of the works. The Ninth Circuit examined the facts under the four non-exclusive factors of fair use reflected in § 107 of the Copyright Act:

  • The purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes
  • The nature of the copyrighted work
  • The amount and substantiality of the portion used in relation to the copyrighted work as a whole
  • The effect of the use upon the potential market for, or value of, the copyrighted work.

Remarking that the outcome of the purpose and character of the use factor influences the assessment of the third and fourth factors, the Ninth Circuit concluded that the Boldly work was not transformative as a parody or otherwise, and that the “indisputably commercial” nature of the work weighed against fair use. The Court explained that a parody exists only if the resulting work critiques or comments on the underlying copyrighted work. The Ninth Circuit cited its decision in another Seuss case (Dr. Seuss Enters. v. Penguin Books), which involved the retelling of the O.J. Simpson murder trial through the lens of The Cat in the Hat. Here, the Court similarly found that Boldly only “evokes” Oh, the Places [...]

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