The court wouldn’t eat them.
The good Doctor Seuss, he of eggs and ham of non-normative coloring, lavished us with a vibrant and joyful collection of literary and graphic works over his decades-long career. Many a child can recall formative experiences with Seuss’s chapeau-residing feline, and the gifting of his Oh, The Places You’ll Go has become an evergreen graduation season tradition. Not to mention that Seuss’s Grinch endures as a holiday icon on par with the esteemed bearded guy up north, and does so despite Jim Carrey’s besmirchment. Born Theodor Seuss Geisel, his literary legacy resides in the pantheon of the all-time greats of the genre, amongst your Silversteins, your Berenstains, your Dahls.
Of late, though, Seuss, or specifically his estate, has spent more time in federal court than in Whoville, as it has been tied up in a long-running intellectual property dispute. The hubbitybub arose when a company named ComicMix, LLC began marketing and selling an illustrated book entitled, “Oh, The Places You’ll Boldly Go!” As is apparent from the clumsy title, this work bites largely from Seuss’s venerable ode to possibility and potential. When Seuss alleged infringement, ComicMix responded that it had “transformed” Seuss’s work by adding some Star Trek references (such as the titular “Boldly,” which space nerds know alludes to the starship Enterprise) and as such was entitled to exploit as much of Seuss’s canonical artwork and creativity as it saw fit without Seuss’s consent.
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The argument is not the strongest, particularly because certain of the settings, characters, and other graphic artwork in the defendant’s book appear to be traced entirely from Seuss’s original illustrations, and the appeal and value of defendant’s book is almost wholly dependent on the Seuss and Star Trek material and association. Perhaps acknowledging this, the defendant has spent much time litigating not the infringement question, but the esoteric technical requirements for U.S. copyright registration applications. ComicMix argues that years ago Seuss failed to properly complete his application to register his works and these errors alone should result in the case being dismissed.
This technical registration argument is one often relied upon by infringers to evade liability or delay adjudication on the merits. The Seuss case is already ancient, bearing a November 2016 vintage, but the defendant has not yet even filed its answers (technically ComicMix filed answers but then withdrew them to assert additional challenges to the pleadings). One of the reasons the case has dragged to the extent it has is ComicMix’s misguided registration challenge. It argued that Seuss’s registrations fail under a relatively new provision in the Copyright Act that requires a case to be stayed and referred to the Copyright Office upon a showing of a knowing and substantive error in the copyright registration for the work at issue.
This provision was meant to protect artists and copyright holders, too many of whose cases had been adjudicated against them because of an error in the confounding one-page government form that constitutes a copyright registration application. Congress amended 17 U.S.C. § 411(b) of the Act to preclude such a result, codifying requirements of fraud and materiality and then, upon such findings, a mandatory referral of the matter to the Copyright Office to determine if the fraud would have resulted in the Copyright Office rejecting the application. Without all three, the registration challenge must fail. This reflected Congress’s intent to have infringement cases decided on the merits, not on whether the one-page form was correctly completed years go. But, as with many well-intentioned provisions, it has been exploited to diabolical ends. The provision has been seized upon by copyright infringers who seek Copyright Office review upon the discovery of even a misplaced comma on an artist’s registration. In doing so, they hope to delay litigation and impose further burdens on artists and copyright holders.
Seuss’s case illustrates this problem. ComicMix argued to the court that Seuss should lose the case because he had not checked boxes on his registration forms stating that the works were derivative works and incorporated portions that had been previously published. Neither of these putative mistakes have anything to do with the substance of the case — whether Seuss created and owns the work and ComicMix copied same — but are instead technical errors of the type that are irrelevant under the Copyright Act.
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Given the relative practical unimportance of a copyright registration — the vast majority of artists never apply for even a single registration for any of their work and a registration is not required for copyright protection to accrue — it is disconcerting to see the courts spend so much time addressing registration challenges. Particularly because, as the Seuss court notes, “[a]bsent intent to defraud and prejudice, inaccuracies in copyright registration do not bar actions for infringement.” But, despite this acknowledgement, and an additional citation to United Fabrics Int’l, Inc. v. C&J Wear, Inc., 630 F.3d 1255, 1257 (9th Cir. 2011) (disclosure: your author argued this appeal for the prevailing party before the Ninth Circuit), which establishes that a challenge requires “some evidence or proof to dispute or deny the plaintiff’s prima facie case of infringement[,]” the court spent many months and 10 pages of an order addressing ComicMix’s wholly baseless challenge to Seuss’s registrations.
The court engages in these unnecessary machinations because it eschews the pronouncement in United Fabrics that a challenge to the registration must “dispute or deny the plaintiff’s prima facie case of infringement.” Notably, a plaintiff makes out a prima facie case by establishing ownership of a work and copying. The putative errors seized upon by ComicMix — whether or not a work was published at a certain time or was a derivative work — have absolutely nothing to do with ownership or copying. Indeed, it does not appear to be disputed that Seuss owns the works claimed to be infringed or that ComicMix copied portions of same. As such, these challenges do not go to Seuss’s prima facie case and thus do not come close to being sufficient to have the case adjudicated. At most, they are Horton hearing a Whatever, as the court eventually concludes in rejecting the challenge.
Scott Alan Burroughs, Esq. practices with Doniger / Burroughs, an art law firm based in Venice, California. He represents artists and content creators of all stripes and writes and speaks regularly on copyright issues. He can be reached at [email protected], and you can follow his law firm on Instagram: @veniceartlaw.