SAN DIEGO – A federal judge in the U.S. District Court for the Southern District of California recently ruled on Dr. Seuss Enterprises LP's (DSE's) motions to strike several affirmative defenses by defendants in an ongoing infringement battle regarding two books.
“The court grants plaintiff’s (DSE) motion to strike 11 of defendants’ affirmative defenses,” U.S. District Judge Janis L. Sammartino said in her June 21 ruling. “In addition, five of the boilerplate defenses are stricken with leave to amend.” Defendants in the case – Comicmix LLC, Glenn Hauman, David Jerrold Friedman aka J. David Gerrold and Ty Templeton – had offered 36 affirmative defenses.
Background for the continuing lawsuit is offered in a previous court ruling by Sammartino on June 9, 2017. “This lawsuit concerns two literary works, one of which is alleged to have infringed the other. Plaintiff is the assignee and owner of various copyright registrations for and alleged trademark rights in the works of the late Theodor S. Geisel, better known under his pseudonym Dr. Seuss. One of Dr. Seuss’ best-known books and the one primarily at issue in this suit is 'Oh, the Places You’ll Go!' ('Go!')"
Judge Janis L. Sammartino
Defendants created a Kickstarter campaign to fund printing and distribution of an allegedly infringing work, “Oh, the Places You’ll Boldly Go!” ("Boldly"), defendants all took part in the creation of "Boldly," which combines aspects of various Dr. Seuss works with certain characters, imagery, and other elements from Star Trek, the well-known science fiction entertainment franchise created by Gene Roddenberry, court filings said.
As stated in the court documents, plaintiff Dr. Seuss alleges that "Boldly" misappropriates key elements of "Go!" and four other Dr. Seuss books. Defendants contest this point, and prior to the threat of litigation, stated on their Kickstarter page, “While we firmly believe that our parody, created with love and affection, fully falls within the boundary of fair use, there may be some people who believe that this might be in violation of their intellectual property rights.”
The fifth affirmative defense claimed by the defendants said, “plaintiff has incurred no damages and also expressed a sixth affirmative defense that defendants have made no profits. In disallowing these two affirmative defenses, Sammartino said, “An assertion that the plaintiff suffered no damages is not an affirmative defense because it is essentially an allegation that the plaintiff cannot prove the elements of its claims.”
She continued, “A claim of no profits implies the same conclusion. The court grants plaintiff’s motion and strikes these two affirmative defenses. The court’s ruling in this regard is not to be construed as establishing that plaintiff has proven that it suffered damages or that defendants have made profits.”
Defendants’ seventh affirmative defense said: “'Boldly' has never been published or sold and will not be published or sold unless and until defendants should prevail in this action. Any alleged injury to DSE is not immediate or irreparable, and DSE has an adequate remedy at law.”
Sammartino ruled, “Plaintiff argues this defense is not an affirmative defense and is redundant and unnecessary. The court disagrees. Defendants argue there is nothing to enjoin due to the status of 'Boldly.' This is not simply a reiteration of a denial of liability. The court denies plaintiff’s motion to strike this defense."
The ongoing case is still unresolved.
In closing, the judge said, “The court finds the boilerplate defenses noted here do not provide plaintiff with sufficient notice of defendants’ position. The court grants defendants leave to amend the defenses when they have sufficient information to provide fair notice of the nature of the defenses.”