Case 3:16-cv-02779-JLS-BGS Document 39 Filed 06/22/17 PageID.419 Page 1 of 31 1 2 3 4 5 6 7 8 9 10 GINA L. DURHAM (Bar No. 295910) gina.durham@dlapiper.com DLA PIPER LLP (US) 555 Mission Street, Suite 2400 San Francisco, California 94105-2933 Tel: 415.836.2500 Fax: 415.836.2501 STANLEY J. PANIKOWSKI (Bar No. 224232) stanley.panikowski@dlapiper.com DLA PIPER LLP (US) 401 B Street, Suite 1700 San Diego, CA 92101 Tel: 619.699.2700 Fax: 619.699.2701 Attorneys for Plaintiff Dr. Seuss Enterprises, L.P. 11 Tamar Y. Duvdevani (admitted pro hac vice) tamar.duvdevani@dlapiper.com Marc E. Miller (admitted pro hac vice) marc.miller@dlapiper.com DLA PIPER LLP (US) 1251 Avenue of the Americas New York, New York 10020-1104 Tel: 212.335.4500 Fax: 212.335.4501 Ryan Compton (admitted pro hac vice) ryan.compton@dlapiper.com James Stewart (admitted pro hac vice) james.stewart@dlapiper.com DLA PIPER LLP (US) 500 Eight Street, NW Washington, D.C. 20004 Tel: 202.799.4000 Fax: 202.799.5000 12 UNITED STATES DISTRICT COURT 13 SOUTHERN DISTRICT OF CALIFORNIA 14 15 DR. SEUSS ENTERPRISES, L.P., a California limited partnership, Plaintiff, 16 17 v. 21 COMICMIX LLC, a Connecticut limited liability company; MR. GLENN HAUMAN, an individual; MR. DAVID JERROLD FRIEDMAN A/K/A DAVID GERROLD, an individual; and MR. TY TEMPLETON, an individual, 22 Defendants. 18 19 20 CASE NO.: 3:16-cv-02779-JLS-BGS FIRST AMENDED COMPLAINT FOR: 1. COPYRIGHT INFRINGEMENT; 2. TRADEMARK INFRINGEMENT; AND 3. UNFAIR COMEPTITION DEMAND FOR JURY TRIAL 23 24 25 26 27 28 DLA P IPER LLP (US) SAN FRA NCI S CO WEST\277519290.1 FIRST AMENDED COMPLAINT CASE NO. 3:16-CV-02779-JLS-BGS Case 3:16-cv-02779-JLS-BGS Document 39 Filed 06/22/17 PageID.420 Page 2 of 31 1 Plaintiff Dr. Seuss Enterprises, L.P. (“DSE”), by its attorneys, DLA Piper 2 LLP (US), brings this action for copyright infringement, trademark infringement, 3 and unfair competition against defendants ComicMix LLC (“ComicMix”), Mr. 4 David Jerrold Friedman a/k/a David Gerrold (“Gerrold”), Mr. Ty Templeton 5 (“Templeton”), and Mr. Glenn Hauman (“Hauman”) (collectively, “Defendants”), 6 and by and for their First Amended Complaint (the “First Amended Complaint”) 7 alleges as follows: 8 9 NATURE OF THE ACTION 1. This is an action for: (a) infringement of registered copyrights in 10 violation of the Copyright Act (17 U.S.C. § 101 et seq.); (b) federal trademark 11 infringement in violation of 15 U.S.C. § 1114; (c) unfair competition and passing 12 off in violation of 15 U.S.C. § 1125(a); and (d) violation of California Business and 13 Professions Code Section 17200, arising out of Defendants’ unauthorized 14 exploitation of the works of Theodor S. Geisel, better known under his pseudonym, 15 “Dr. Seuss,” one of the most successful children’s books authors and illustrators of 16 all time. Generations of children, and adults, around the world have been 17 entertained and instructed by Dr. Seuss’s whimsical stories, unique poetry and 18 drawing style, and beloved characters. Plaintiff DSE owns the intellectual property, 19 including copyrights and trademarks, in these treasured works—which includes 20 nearly 60 books published over more than a half-century—and it continues to 21 produce new original content, including books, animated and live-action television 22 and film adaptations, theatrical and other works and consumer products. 23 2. Defendants have created, without DSE’s authorization, a book entitled, 24 “Oh, The Places You’ll Boldly Go!” (the “Infringing Work”), and have solicited 25 investors to finance their mass production and distribution efforts for the Infringing 26 Work. The Infringing Work infringes DSE’s works by using innumerable 27 copyrighted elements of several well-known Dr. Seuss works, including the works’ 28 settings, illustrations, characters, prose, and themes. The Infringing Work -1- DLA P IPER LLP (US) SAN FRA NCI S CO WEST\277519290.1 FIRST AMENDED COMPLAINT CASE NO. 3:16-CV-02779-JLS-BGS Case 3:16-cv-02779-JLS-BGS Document 39 Filed 06/22/17 PageID.421 Page 3 of 31 1 unabashedly misappropriates DSE’s intellectual property to create the “look and 2 feel” of an authorized Dr. Seuss work, while also taking without authorization 3 intellectual property from another rights holder, the owner of intellectual property 4 in the Star Trek works. Upon information and belief, Defendants have raised nearly 5 $30,000 so far to produce the Infringing Work, and have agreed to a publishing 6 deal, intending to print and ship thousands of copies of the Infringing Work in time 7 for the 2016 holiday season. Upon information and belief, Defendants have already 8 distributed portions of the Infringing Work online in connection with their 9 fundraising efforts. Defendants, via the Infringing Work, not only appropriate 10 without authorization and blatantly infringe DSE’s valuable copyrights in the Dr. 11 Seuss works, but also mislead and deceive or are likely to mislead or deceive the 12 public as to the Infringing Work’s source and as to DSE’s approval, sponsorship, 13 endorsement, or licensing of the Infringing Work. Unless enjoined, Defendants 14 will cause irreparable injury to DSE’s goodwill, identity, and reputation, for which 15 DSE has no adequate remedy at law. 16 17 THE PARTIES 3. Plaintiff DSE is a California limited partnership which owns the 18 copyrights and trademarks, and all related rights to the characters, illustrations and 19 words of the works of Theodor S. Geisel, the author and illustrator of the well- 20 known children’s educational books written under the pseudonym “Dr. Seuss.” 21 4. Upon information and belief, defendant ComicMix is a limited liability 22 company organized and existing under the laws of the State of Connecticut with its 23 principal place of business located at 304 Main Avenue, Suite 194, Norwalk, 24 Connecticut 06851, and is doing business in and with the State of California as a 25 publisher and distributor of books, e-books, and webcomics. Upon information and 26 belief, defendant ComicMix markets, and intends to sell, reproduce, and distribute, 27 the Infringing Work throughout the United States, on the Internet, and in the State 28 of California. DLA P IPER LLP (US) SAN FRA NCI S CO WEST\277519290.1 -2FIRST AMENDED COMPLAINT CASE NO. 3:16-CV-02779-JLS-BGS Case 3:16-cv-02779-JLS-BGS Document 39 Filed 06/22/17 PageID.422 Page 4 of 31 1 5. Upon information and belief, defendant Hauman is an individual who 2 resides in the State of New Jersey and is the Co-founder, Vice President, Operations 3 and Production Manager of defendant ComicMix, and is doing business in and with 4 the State of California. Upon information and belief, defendant Hauman is the 5 editor of the Infringing Work. Upon information and belief, defendant Hauman 6 intends to sell, reproduce, and distribute, the Infringing Work throughout the United 7 States, on the Internet, and in the State of California. 8 9 6. Upon information and belief, defendant Gerrold is an individual who resides in the State of California. Upon information and belief, defendant Gerrold 10 is a co-author of the Infringing Work. Upon information and belief, defendant 11 Gerrold intends to sell, reproduce, and distribute, the Infringing Work throughout 12 the United States, on the Internet, and in the State of California. 13 7. Upon information and belief, defendant Templeton is an individual 14 who resides in Toronto, Ontario, and is doing business in and with the State of 15 California. Upon information and belief, defendant Templeton is the illustrator of 16 the Infringing Work. Upon information and belief, defendant Templeton intends to 17 sell, reproduce, and distribute, the Infringing Work throughout the United States, on 18 the Internet, and in the State of California. 19 20 JURISDICTION AND VENUE 8. This action arises under the Copyright Act of 1976 (17 U.S.C. §§ 101, 21 et seq.) and the Federal Trademark Act of 1946, known as the Lanham Act (15 22 U.S.C. § 1125(a)). 23 9. This Court has subject matter jurisdiction over this action pursuant to 24 15 U.S.C. § 1121, and 28 U.S.C. §§ 1331 and 1338(a) and (b). This Court also has 25 subject matter jurisdiction over DSE’s related claims under state law pursuant to 28 26 U.S.C. § 1367(a). 27 28 DLA P IPER LLP (US) SAN FRA NCI S CO 10. This Court has personal jurisdiction over Defendants pursuant to Cal. Code Civ. Proc § 410.10 because some or all of them reside in this state, because -3WEST\277519290.1 FIRST AMENDED COMPLAINT CASE NO. 3:16-CV-02779-JLS-BGS Case 3:16-cv-02779-JLS-BGS Document 39 Filed 06/22/17 PageID.423 Page 5 of 31 1 all Defendants conduct continuous, systematic, and routine business within this 2 state and this District, and because all Defendants have personally and intentionally 3 planned, authorized, and facilitated infringing acts that have or will take place in 4 California. 5 11. Venue is proper in this District under 28 U.S.C. §§ 1391 (b) and 6 1400(a) because a substantial part of the events giving rise to DSE’s claims arose in 7 this District and because Defendants reside or may be found in this District. 8 FACTUAL ALLEGATIONS 9 A. The Dr. Seuss Intellectual Property 10 12. Theodor S. Geisel, under the pseudonyms Dr. Seuss and Theo LeSeig, 11 began writing and illustrating children’s books at least as early as 1937. Between 12 1937 and 1990, Theodor S. Geisel wrote, illustrated, and published almost 60 Dr. 13 Seuss and LeSeig books. After Theodor S. Geisel’s death in 1991, DSE published 14 additional Dr. Seuss books written and illustrated by Theodor S. Geisel. Most of 15 the Dr. Seuss books were written to entertain children, but more importantly, to 16 promote and stimulate children’s love of reading and literary skills. 17 13. Theodor S. Geisel authored the Dr. Seuss books in simple, rhyming, 18 repetitive prose, accompanied by his descriptions and illustrations of characters that 19 are distinctive, recognizable, and appealing to children. The Dr. Seuss characters 20 are often zany animals with human-like characteristics. The Dr. Seuss books are set 21 in distinctive, whimsical and fantastical landscapes and created in a style unique to 22 Dr. Seuss that makes them immediately recognizable as Dr. Seuss works. 23 14. The Dr. Seuss books are iconic, and among the most popular 24 children’s books of all time. The Dr. Seuss books have topped many bestseller 25 lists, sold over 650 million copies worldwide, and been translated into more than a 26 dozen languages. Children around the world read the Dr. Seuss books, and parents 27 and educators worldwide use the Dr. Seuss books to motivate children, teach 28 community values, and enhance literacy. -4- DLA P IPER LLP (US) SAN FRA NCI S CO WEST\277519290.1 FIRST AMENDED COMPLAINT CASE NO. 3:16-CV-02779-JLS-BGS Case 3:16-cv-02779-JLS-BGS Document 39 Filed 06/22/17 PageID.424 Page 6 of 31 1 15. The Dr. Seuss books and the Dr. Seuss characters are widely-known 2 and recognized throughout the world. Some of the most well-known Dr. Seuss 3 books, for example, are: Oh, the Places You’ll Go!; The Cat in the Hat; Horton 4 Hears a Who; How the Grinch Stole Christmas!; The Lorax; One Fish Two Fish 5 Red Fish Blue Fish; Green Eggs and Ham; Yertle the Turtle; Fox in Socks; and The 6 Sneetches and Other Stories. 7 16. The Dr. Seuss books and characters are original works of authorship 8 and constitute copyrightable subject matter under the Copyright Act, 17 U.S.C. §§ 9 101, et seq. The Dr. Seuss books and characters are duly registered for copyright 10 with the United States Copyright Office. These copyright registrations are 11 perfected and, where appropriate, have been renewed with the United States 12 Copyright Office and all registrations are in full force. The United States Copyright 13 Office has issued Certificates of Registration for these works that bear the numbers 14 identified in Appendix A (collectively, the “Dr. Seuss Copyrighted Works”). DSE 15 is the owner of all of these registrations and rights, by assignment. 16 17. In addition, DSE is the owner of registered and common law 17 trademark rights in multiple aspects of Dr. Seuss books and various goods that 18 function, individually and collectively, as indicators of source, and make those 19 goods immediately recognizable as deriving from Dr. Seuss. With respect to this 20 litigation, those aspects include in relevant part: (1) the title OH, THE PLACES 21 YOU’LL GO!; (2) the stylized font used consistently on the front and back covers, 22 spine, and title page of the Dr. Seuss books such that this use of the stylized font 23 has come to be recognized by consumers as a source identifier for Dr. Seuss, and 24 (3) the unique illustration style of the characters and backgrounds found throughout 25 Dr. Seuss books (collectively, the “Unregistered Dr. Seuss Marks”). 26 18. In connection with its trademark rights in multiple aspects of the Dr. 27 Seuss books and various goods, DSE owns a number of United States trademark 28 registrations. In fact, DSE uses Oh, The Places You’ll Go! as an identifier of source -5- DLA P IPER LLP (US) SAN FRA NCI S CO WEST\277519290.1 FIRST AMENDED COMPLAINT CASE NO. 3:16-CV-02779-JLS-BGS Case 3:16-cv-02779-JLS-BGS Document 39 Filed 06/22/17 PageID.425 Page 7 of 31 1 for a variety of goods including for books and other works and consumer products. 2 DSE currently owns eight United States trademark registrations, plus one pending 3 application, for OH THE PLACES YOU’LL GO, and one United States trademark 4 registration for OH, THE PLACES YOU'LL GO! 25TH ANNIVERSARY in 5 connection with a wide variety of goods, including books and electronic books, 6 across International Classes 06, 09, 16, 14, 21, 24, 25, 28, 30, 32, 35, 41. Of 7 particular relevance to this litigation, DSE owns United States Trademark 8 Registration No. 5,099,531 for OH THE PLACES YOU’LL GO in connection with 9 downloadable digital children’s books, among other goods (the “OTPYG E-Book 10 Mark”). The OTPYG E-Book Mark is distinctive and has acquired secondary 11 meaning in the minds of the public, and is readily associated with Theodor S. 12 Geisel, Dr. Seuss, and DSE. 13 19. As discussed in Paragraph 22 below, DSE is also the owner of a family 14 of common law trademarks deriving from the title Oh, The Places You’ll Go!, 15 which DSE has used in connection with the publication of several books and other 16 works that are derivative of Oh, The Places You’ll Go!, such as Oh, the Places I'll 17 Go! By ME, Myself, Oh, Baby, the Places You’ll Go!, and Oh, the Places I've Been! 18 Journal, and a live-action production titled Oh! The Stories You’ll Hear! 19 (collectively, the “OTPYG Title Marks”). The OTPYG Title Marks are distinctive 20 and have acquired secondary meaning in the minds of the public, and are readily 21 associated with Theodor S. Geisel, Dr. Seuss, and DSE. 22 20. The Unregistered Dr. Seuss Marks, the OTPYG E-Book Mark, and the 23 OTPYG Title Marks are referred to collectively as the “Dr. Seuss Marks,” and 24 together with the “Dr. Seuss Copyrighted Works,” are referred to collectively as the 25 “Dr. Seuss Intellectual Property”. The Dr. Seuss Marks are well-known and 26 recognized worldwide. The Dr. Seuss Marks are distinctive and have acquired 27 secondary meaning in the minds of the public, and are readily associated with 28 ///// DLA P IPER LLP (US) SAN FRA NCI S CO WEST\277519290.1 -6FIRST AMENDED COMPLAINT CASE NO. 3:16-CV-02779-JLS-BGS Case 3:16-cv-02779-JLS-BGS Document 39 Filed 06/22/17 PageID.426 Page 8 of 31 1 Theodor S. Geisel, Dr. Seuss, and DSE. As the owner of the Dr. Seuss Marks, DSE 2 enjoys extensive goodwill associated therewith. 3 21. DSE oversees a robust publishing program, which includes 4 anniversary editions, reissues in new formats or sizes, and updated editions of the 5 iconic Dr. Seuss books and posthumous releases of Dr. Seuss’s previously- 6 unpublished works, such as What Pet Should I Get?, published in 2015. DSE also 7 works with authors and illustrators to create additional authorized Dr. Seuss works. 8 22. DSE has published several books that are derivative of Oh, The Places 9 You’ll Go!, such as Oh, Baby! Go, Baby!, Oh, the Places I'll Go! By ME, Myself, 10 Oh, Baby, the Places You’ll Go!, and Oh, the Places I've Been! Journal, covers of 11 which are seen below. Accordingly, the consuming public has come to associate 12 these derivative works and the OTPYG Title Marks with Dr. Seuss, and 13 understands that additional works that include artwork from Oh, The Places You’ll 14 Go!, have titles similar to Oh, The Places You’ll Go!, and use the OTPYG Title 15 Marks originate from or are sponsored by Dr. Seuss. 16 17 18 19 20 21 22 23 24 25 26 27 28 -7- DLA P IPER LLP (US) SAN FRA NCI S CO WEST\277519290.1 FIRST AMENDED COMPLAINT CASE NO. 3:16-CV-02779-JLS-BGS Case 3:16-cv-02779-JLS-BGS Document 39 Filed 06/22/17 PageID.427 Page 9 of 31 1 2 3 4 5 6 7 8 9 23. 10 DSE also publishes several series, including, for example, the Bright 11 and Early series, which includes works by Dr. Seuss and other authors and 12 illustrators whose works reflect the same source-indicating whimsical, lyrical style 13 of Dr. Seuss’s books. Another DSE series, titled The Cat In The Hat Learning 14 Library, includes books written and illustrated by other authors and artists that are 15 based upon and incorporate the Dr. Seuss Intellectual Property, including the 16 OTPYG Title Marks. The Cat In The Hat Learning Library series includes titles 17 such as Oh, The Things You Can Do That Are Good For You!, There’s No Place 18 Like Space!, Oh, The Pets You Can Get!, and many more. Examples of the covers 19 of some of these works are seen below. Notably, “Dr. Seuss” does not appear on 20 any of the below covers, and all of the covers include names of other authors, 21 despite the fact that these works are authorized by DSE and are recognized by the 22 public as Dr. Seuss works. 23 ///// 24 ///// 25 ///// 26 ///// 27 ///// 28 ///// DLA P IPER LLP (US) SAN FRA NCI S CO WEST\277519290.1 -8FIRST AMENDED COMPLAINT CASE NO. 3:16-CV-02779-JLS-BGS Case 3:16-cv-02779-JLS-BGS Document 39 Filed 06/22/17 PageID.428 Page 10 of 31 1 2 3 4 5 6 7 8 9 10 24. In addition to publishing, DSE often licenses the Dr. Seuss Intellectual 11 Property in connection with the creation of new works based upon and 12 incorporating the Dr. Seuss Intellectual Property. DSE has licensed the Dr. Seuss 13 Intellectual Property in connection with the Seuss Landing attraction at the 14 Universal Islands of Adventure theme park in Orlando, Florida, which includes a 15 live-action production titled Oh! The Stories You’ll Hear! featuring many of Dr. 16 Seuss’s well-known and beloved characters and stories. DSE has also licensed the 17 Dr. Seuss Intellectual Property in connection with the production of several 18 children’s television series, including The Cat In The Hat Knows A Lot About That 19 educational series on PBS Kids and The Wubbulous World Of Dr. Seuss, a live- 20 action/puppet show produced by The Jim Henson Company featuring Dr. Seuss’s 21 well-known and beloved characters alongside new, Muppet-like characters created 22 by The Jim Henson Company. 23 25. DSE also oversees an extensive licensing and merchandising program 24 that extends the Dr. Seuss Intellectual Property across toys and games, children’s 25 apparel, young adult and adult apparel, puzzles and educational kits, home 26 furnishings, cards and stationery, hats, bags, accessories, party supplies, art, 27 collectibles, classroom materials, and fabrics. Such licensing activities have 28 included collaborations with other rights holders. Examples of such authorized co-9- DLA P IPER LLP (US) SAN FRA NCI S CO WEST\277519290.1 FIRST AMENDED COMPLAINT CASE NO. 3:16-CV-02779-JLS-BGS Case 3:16-cv-02779-JLS-BGS Document 39 Filed 06/22/17 PageID.429 Page 11 of 31 1 branding initiatives include everything from co-branded collegiate bibs to Dr. Seuss 2 Chuck Taylors®: 3 4 5 6 7 8 9 26. 10 DSE’s primary focus is to protect the integrity of the Dr. Seuss books 11 while expanding beyond books into ancillary areas through this licensing program. 12 This effort is a strategic part of the overall mission to nurture and safeguard the 13 relationship consumers have with Dr. Seuss books and characters and to control the 14 goodwill associated with Dr. Seuss. 15 B. Defendants’ Infringing Use Of The Dr. Seuss Intellectual Property 16 27. Upon information and belief, Defendants’ Infringing Work is a book 17 which purports to be an amalgamation of the Dr. Seuss works and certain 18 characters, imagery, and other elements from Star Trek, the well-known science 19 fiction entertainment franchise created by Gene Roddenberry. 28. 20 21 the Infringing Work and has a meaningful role in its promotion and sale. 29. 22 23 Upon information and belief, defendant Templeton illustrated the Infringing Work and has a meaningful role in its promotion and sale. 30. 24 25 Upon information and belief, defendant Gerrold authored the text of Upon information and belief, defendant Hauman edited the Infringing Work and has a meaningful role in its promotion and sale. 31. 26 Upon information and belief, defendant ComicMix is publishing, 27 distributing, promoting, and marketing the Infringing Work. 28 ///// DLA P IPER LLP (US) SAN FRA NCI S CO WEST\277519290.1 -10FIRST AMENDED COMPLAINT CASE NO. 3:16-CV-02779-JLS-BGS Case 3:16-cv-02779-JLS-BGS Document 39 Filed 06/22/17 PageID.430 Page 12 of 31 1 32. Upon information and belief, when Defendants wrote, illustrated, and 2 edited the Infringing Work, and at all times relevant to this action, Defendants had 3 access to and copied the Dr. Seuss Copyrighted Works. 4 5 33. At all times relevant to this action, Defendants have acted without authorization or license from DSE. 6 34. At all times relevant to this action, Defendants have acted without 7 authorization or license from CBS Studios, Inc. (“CBS Studios”), the owner of the 8 intellectual property in Star Trek. 9 35. Defendants have misappropriated many of the most recognizable 10 protected elements of the Dr. Seuss Copyrighted Works into the Infringing Work, 11 including making wholesale slavish copies of the Dr. Seuss Copyrighted Works’ 12 distinctive illustrations and text. The Infringing Work misappropriates key 13 protected elements of Oh, The Places You’ll Go!, including without limitation its 14 title, story arc, characters, and illustrations. The Infringing Work also 15 misappropriates key protected elements of Horton Hears a Who, How the Grinch 16 Stole Christmas!, The Lorax, and The Sneetches and Other Stories, including 17 without limitation characters and illustrations therefrom. 18 19 36. Defendants have also misappropriated and, without permission, used the Dr. Seuss Marks in the Infringing Work. 20 37. Set forth below are several examples, among many, of Defendant’s 21 slavish copying of the Dr. Seuss Copyrighted Works, which attempt to recreate 22 entire pages from the Dr. Seuss Books with meticulous precision, and thereby 23 infringe both copyrights owned by DSE and the Dr. Seuss Marks: 24 ///// 25 ///// 26 ///// 27 ///// 28 ///// DLA P IPER LLP (US) SAN FRA NCI S CO WEST\277519290.1 -11FIRST AMENDED COMPLAINT CASE NO. 3:16-CV-02779-JLS-BGS Case 3:16-cv-02779-JLS-BGS Document 39 Filed 06/22/17 PageID.431 Page 13 of 31 1 2 Dr. Seuss Work Infringing Work Dr. Seuss Work Infringing Work 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 ///// 23 ///// 24 ///// 25 ///// 26 ///// 27 ///// 28 ///// DLA P IPER LLP (US) SAN FRA NCI S CO WEST\277519290.1 -12FIRST AMENDED COMPLAINT CASE NO. 3:16-CV-02779-JLS-BGS Case 3:16-cv-02779-JLS-BGS Document 39 Filed 06/22/17 PageID.432 Page 14 of 31 1 2 Dr. Seuss Work Infringing Work Dr. Seuss Work Infringing Work Dr. Seuss Work Infringing Work 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -13- DLA P IPER LLP (US) SAN FRA NCI S CO WEST\277519290.1 FIRST AMENDED COMPLAINT CASE NO. 3:16-CV-02779-JLS-BGS Case 3:16-cv-02779-JLS-BGS Document 39 Filed 06/22/17 PageID.433 Page 15 of 31 1 2 Dr. Seuss Work Infringing Work Dr. Seuss Work Infringing Work 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 ///// 21 ///// 22 ///// 23 ///// 24 ///// 25 ///// 26 ///// 27 ///// 28 ///// DLA P IPER LLP (US) SAN FRA NCI S CO WEST\277519290.1 -14FIRST AMENDED COMPLAINT CASE NO. 3:16-CV-02779-JLS-BGS Case 3:16-cv-02779-JLS-BGS Document 39 Filed 06/22/17 PageID.434 Page 16 of 31 1 Dr. Seuss Work 2 Infringing Work 3 4 5 6 7 8 9 10 11 38. Defendants have willfully misappropriated and used the Dr. Seuss 12 Marks in the Infringing Work with the intent to commercially benefit from the 13 popularity and extensive goodwill associated with the Dr. Seuss Marks. 14 39. Defendants deliberately wrote and illustrated the Infringing Work with 15 the intention of imitating the Dr. Seuss Marks, and creating confusion in the minds 16 of the relevant public as to the origin of the Infringing Work and/or deceiving the 17 public as to Dr. Seuss’s approval, sponsorship, endorsement, or licensing of the 18 Infringing Work. 19 40. For example, by willfully misappropriating the stylized font that DSE 20 uses consistently on the front and back covers, spine, and title page of the Dr. Seuss 21 books which consumers recognize as indicative of a Dr. Seuss book, willfully 22 misappropriating the title OH, THE PLACES YOU’LL GO!, and slavishly copying 23 Dr. Seuss’s unique illustration style, Defendants explicitly mislead and confuse 24 consumers as to the Infringing Work’s source and falsely suggest that the Infringing 25 Work is sponsored or endorsed by DSE. 26 41. Consumers have come to recognize the Dr. Seuss Marks, such as the 27 stylized font, the title OH, THE PLACES YOU’LL GO!, and the unique illustration 28 style, the OTPYG E-Book Mark, and the OTPYG Title Marks as associated with -15- DLA P IPER LLP (US) SAN FRA NCI S CO WEST\277519290.1 FIRST AMENDED COMPLAINT CASE NO. 3:16-CV-02779-JLS-BGS Case 3:16-cv-02779-JLS-BGS Document 39 Filed 06/22/17 PageID.435 Page 17 of 31 1 and originating from DSE as an authorized Dr. Seuss work. As such, Defendants’ 2 unauthorized use of these marks is highly likely to result in consumer confusion, 3 particularly in the ambit of children’s books where Plaintiff’s books and 4 Defendants’ work could appear in commerce side by side on the shelves of 5 bookstores and online. The inclusion of Defendants’ names on the Infringing 6 Work’s cover does not alleviate consumer confusion as to Dr. Seuss’s approval, 7 sponsorship, endorsement, or licensing of the Infringing Work. Indeed, as seen in 8 the images below Paragraph 20, it is often the case that DSE works incorporating 9 the Dr. Seuss Intellectual Property are authored and illustrated by individuals other 10 than Dr. Seuss and whose names appear on the cover, credits, and/or other 11 promotional materials, such as the books in the Bright and Early series and the Cat 12 In The Hat Learning Library series or the shows in The Cat In The Hat Knows A 13 Lot About That and The Wubbulous World Of Dr. Seuss children’s television series. 14 42. Defendants have slavishly copied and used the Dr. Seuss Marks in 15 their entirety in the Infringing Work, particularly on the Infringing Work’s front 16 cover, back cover, and spine, and title page, where consumers typically find source- 17 identifying information, which exceeds any legitimate referential purpose for such 18 use and creates confusion in the minds of the relevant public as to the origin of the 19 Infringing Work and/or deceiving the public as to Dr. Seuss’s approval, 20 sponsorship, endorsement, or licensing of the Infringing Work. 21 43. Indeed, Defendants could have created their own unique content and 22 illustrations and refrained from blatantly using Dr. Seuss indicia and still have 23 gotten their point across, but they did not. Instead, Defendants have simply 24 slavishly copied many of the most recognizable and protected elements of the DSE 25 Works in order to get attention and trade off DSE’s goodwill, and to avoid the 26 drudgery in working up something fresh. 27 28 DLA P IPER LLP (US) SAN FRA NCI S CO 44. While Defendants included a disclaimer inside the Infringing Work, this disclaimer is ineffective and does not alleviate the potential for consumer -16WEST\277519290.1 FIRST AMENDED COMPLAINT CASE NO. 3:16-CV-02779-JLS-BGS Case 3:16-cv-02779-JLS-BGS Document 39 Filed 06/22/17 PageID.436 Page 18 of 31 1 confusion. The disclaimer, which is purposely printed in inconspicuously small, 2 fine lettering on the Infringing Work’s third page, states: “This is a work of parody, 3 and is not associated with or endorsed by CBS Studios or Dr. Seuss Enterprises, 4 L.P.” Upon information and belief, consumers are not likely to view a fine-print 5 disclaimer located on the third page of a book prior to purchase. Rather, upon 6 information and belief, consumers look primarily at the front cover, back cover, and 7 spine of a book prior to purchase. Defendants, however, did not include a 8 disclaimer on the Infringing Work’s front cover, back cover, or spine. Accordingly, 9 the disclaimer is ineffective and does not alleviate the potential for consumer 10 confusion as to Dr. Seuss’s approval, sponsorship, endorsement, or licensing of the 11 Infringing Work. Moreover, the act of blatantly taking intellectual property from 12 two rights holders and calling it a parody or a “mash-up” does not transform 13 infringement into parody or any other form of fair use. 14 45. Defendants, without permission, have willfully copied many elements 15 of the Dr. Seuss books that are protected by the copyrights owned by DSE, and 16 intend to further infringe those copyrights by acts of reproduction, distribution, 17 display, and unauthorized creation of derivative works. 18 46. It is not uncommon for DSE to license the Dr. Seuss Intellectual 19 Property in connection with the creation of new works based upon, and 20 incorporating, the Dr. Seuss Intellectual Property. As mentioned herein and 21 discussed above in Paragraphs 21-22, such licensing activities have included 22 collaborations with other rights holders, such as The Jim Henson Company, 23 Universal Studios, and Converse, for example. In addition, as also mentioned 24 herein and exemplified under Paragraph 19 above, DSE has created or caused to be 25 created works derivative to Oh, The Places You’ll Go! Here, however, Defendants 26 created the Infringing Work without license or authorization from DSE, and thereby 27 usurped DSE’s licensing opportunities and explicitly caused confusion as to DSE’s 28 sponsorship or approval of the Infringing Work. -17- DLA P IPER LLP (US) SAN FRA NCI S CO WEST\277519290.1 FIRST AMENDED COMPLAINT CASE NO. 3:16-CV-02779-JLS-BGS Case 3:16-cv-02779-JLS-BGS Document 39 Filed 06/22/17 PageID.437 Page 19 of 31 1 47. As a result of Defendants’ aforementioned use of the Dr. Seuss Marks 2 in the Infringing Work, the relevant universe of consumers, including potential 3 purchasers of books in the State of California, are likely to be misled and confused 4 as to the nature, origin, and sponsorship of the Infringing Work, and are likely to 5 form the false impression that the Infringing Work has been authored, approved, 6 licensed, sponsored, endorsed, guaranteed by, or is in some way affiliated with 7 Theodor S. Geisel, Dr. Seuss, DSE, and the Dr. Seuss Marks. 8 9 48. Upon information and belief, defendants have been running a campaign to fund printing and distribution of the Infringing Work on Kickstarter, 10 , a crowdfunding website where parties can raise money for 11 various projects. The Kickstarter page reproduced pages from the Infringing Work. 12 13 49. infringement presents “Risks and challenges” to their project: 14 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. And we may have to spend time and money proving it to people in black robes. And we may even lose that. 15 16 17 18 19 On its Kickstarter page, Defendants admit that their blatant and willful 50. After learning of Defendants’ unauthorized use and planned uses of 20 the Dr. Seuss Intellectual Property in the Infringing Work, on or about September 21 28, 2016, the undersigned counsel for DSE sent Defendants a letter asserting DSE’s 22 exclusive rights in the Dr. Seuss Intellectual Property, and stating that Defendants’ 23 use thereof was an infringement of DSE’s rights. The letter demanded that 24 Defendants immediately cease all use of the Dr. Seuss Intellectual Property. 25 51. Defendants did not respond to the September 28, 2016 letter. 26 52. On or about October 7, 2016, the undersigned counsel for DSE sent 27 Defendants an additional letter reiterating its previous demands, and requesting 28 Defendants’ immediate substantive response thereto. -18- DLA P IPER LLP (US) SAN FRA NCI S CO WEST\277519290.1 FIRST AMENDED COMPLAINT CASE NO. 3:16-CV-02779-JLS-BGS Case 3:16-cv-02779-JLS-BGS Document 39 Filed 06/22/17 PageID.438 Page 20 of 31 1 2 53. Defendants did not substantively respond to the October 7, 2016 letter 54. On or about October 7, 2016, the undersigned counsel for DSE sent a either. 3 4 notice, pursuant to 17 U.S.C. § 512(c)(1)(C), to Kickstarter asserting DSE’s 5 exclusive rights in the Dr. Seuss Copyrighted Works, and stating that Defendants’ 6 use thereof was an infringement of DSE’s rights. 7 8 55. On or about October 7, 2016, Kickstarter disabled access to Defendants’ campaign, pursuant to 17 U.S.C. § 512(g). 9 56. On or about October 25, 2016, the undersigned counsel for DSE sent 10 Defendants an additional letter reiterating its previous demands, and requesting 11 Defendants’ immediate substantive response thereto. 12 57. On or about October 28, 2016, counsel for Defendant ComicMix sent a 13 letter to the undersigned counsel for DSE responding to DSE’s October 7 takedown 14 notice to Kickstarter, refusing DSE’s demands to cease all use of the Dr. Seuss 15 Intellectual Property, threatening to pursue claims for tortious interference, unfair 16 business practices, and violations of 17 U.S.C. § 512(f), and advising that 17 Defendants would be sending a counter-notice, pursuant to 17 U.S.C. § 512(g)(3), 18 to Kickstarter to reinstate its campaign. 19 20 58. On or about October 31, 2016, counsel for Defendant ComicMix sent a counter-notice, pursuant to 17 U.S.C. § 512(g)(3), to Kickstarter. 21 59. On or about February 27, 2017, counsel for CBS Studios, the owner of 22 the intellectual property in Star Trek, sent Defendants a letter asserting CBS 23 Studios’ exclusive rights in the intellectual property in Star Trek, and stating that 24 Defendants’ use thereof was an infringement of CBS Studios’ rights. The letter 25 demanded that Defendants immediately cease all use of the intellectual property in 26 Star Trek. 27 ///// 28 ///// DLA P IPER LLP (US) SAN FRA NCI S CO WEST\277519290.1 -19FIRST AMENDED COMPLAINT CASE NO. 3:16-CV-02779-JLS-BGS Case 3:16-cv-02779-JLS-BGS Document 39 Filed 06/22/17 PageID.439 Page 21 of 31 1 COUNT I Copyright Infringement, 17 U.S.C. § 106 (Against All Defendants) 2 3 4 5 60. DSE repeats and realleges every allegation in Paragraphs 1 through 59 of its First Amended Complaint as if fully set forth herein. 61. The Dr. Seuss Copyrighted Works constitute copyrightable subject 6 matter under the Copyright Act, 17 U.S.C. §§ 101, et seq. DSE has recorded the 7 copyrights in and to the Dr. Seuss Copyrighted Works with the United States 8 Copyright Office and have complied with all applicable statutory registration and 9 renewal requirements, and with the requirements of 17 U.S.C. §411 regarding 10 11 registration of copyrights preceding an infringement action. 62. Upon information and belief, in direct violation of DSE’s exclusive 12 rights, Defendants have directly infringed, and unless enjoined by this Court, will 13 continue to infringe the copyrights in the Dr. Seuss Copyrighted Works by, among 14 other things: a. Preparing unauthorized derivative works of the Dr. Seuss 15 Copyrighted Works in the form of the Infringing Work; 16 b. Reproducing copyrighted elements of the Dr. Seuss Copyrighted 17 Works in the Infringing Work; 18 19 c. Distributing copies of the Infringing Work, which contains 20 copyrighted elements of the Dr. Seuss Copyrighted Works; 21 d. Displaying or causing display of the Infringing Work, which 22 contains copyrighted elements of the Dr. Seuss Copyrighted 23 Works. 24 63. As a direct and proximate result of the foregoing acts, DSE has been 25 damaged and has suffered, and will continue to suffer, significant damages, in an 26 amount to be proved at trial. 27 28 DLA P IPER LLP (US) SAN FRA NCI S CO 64. Upon information and belief, Defendants have infringed the copyrights in the Dr. Seuss Copyrighted Works with actual or constructive knowledge of -20WEST\277519290.1 FIRST AMENDED COMPLAINT CASE NO. 3:16-CV-02779-JLS-BGS Case 3:16-cv-02779-JLS-BGS Document 39 Filed 06/22/17 PageID.440 Page 22 of 31 1 DSE’s rights such that said acts of copyright infringement were, and continue to be, 2 willful and intentional. 3 65. In addition, Defendants’ violations of the Copyright Act have caused 4 and, unless enjoined by this Court, will continue to cause irreparable injury to DSE. 5 DSE is therefore entitled to a preliminary and permanent injunction enjoining and 6 restraining Defendants from infringing the copyrights in the Dr. Seuss Copyrighted 7 Works, including but not limited to continuing to reproduce, distribute, display, 8 market, advertise, promote, produce, sell, or offer for sale the Infringing Work or 9 any works that are derivative of or copied from the Dr. Seuss Copyrighted Works. 10 COUNT II Lanham Act Violation, 15 U.S.C. § 1114 (Against All Defendants) 11 12 13 66. DSE repeats and realleges every allegation in Paragraphs 1 through 65 of its First Amended Complaint as if fully set forth herein. 14 67. DSE owns United States Trademark Registration No. 5,099,531 for 15 OH THE PLACES YOU’LL GO in connection with downloadable digital 16 children’s books, among other goods, which, as alleged above, is referred to as the 17 OTPYG E-Book Mark. 18 68. The OTPYG E-Book Mark is distinctive and has acquired secondary 19 meaning in the minds of the public, and is readily associated with Theodor S. 20 Geisel, Dr. Seuss, and DSE. 21 69. Defendants’ unauthorized use of DSE’s OTPYG E-Book Mark, or a 22 confusingly similar copy or colorable imitation thereof, in connection with the sale, 23 offering for sale, distribution, or advertising of the Infringing Work is highly likely 24 to cause confusion, or to cause mistake, or to deceive as to Dr. Seuss’s approval, 25 sponsorship, endorsement, or licensing of the Infringing Work in violation of 15 26 U.S.C. § 1114(1). 27 ///// 28 ///// DLA P IPER LLP (US) SAN FRA NCI S CO WEST\277519290.1 -21FIRST AMENDED COMPLAINT CASE NO. 3:16-CV-02779-JLS-BGS Case 3:16-cv-02779-JLS-BGS Document 39 Filed 06/22/17 PageID.441 Page 23 of 31 1 70. As a direct and proximate result of the foregoing acts, DSE has been 2 damaged and has suffered, and will continue to suffer, significant damages, in an 3 amount to be proved at trial. 4 71. Defendants’ use of the OTPYG E-Book Mark, or a confusingly similar 5 copy or colorable imitation thereof, in connection with the sale, offering for sale, 6 distribution, or advertising of the Infringing Work was and is without consent from 7 DSE, and constitutes willful and intentional infringement of DSE’s OTPYG E- 8 Book Mark. Pursuant to 15 U.S.C. § 1117(a), DSE is entitled to recover its 9 reasonable attorneys’ fees incurred in this action. 10 72. Defendants’ violations of 15 U.S.C. § 1114(1) have also caused, and, 11 unless enjoined by this Court, will continue to cause, irreparable injury to DSE 12 which is not fully compensable in monetary damages. DSE is therefore entitled to a 13 permanent injunction enjoining and restraining Defendants from use of the OTPYG 14 E-Book Mark or any other mark that is confusingly similar to the OTPYG E-Book 15 Mark. 16 COUNT III Lanham Act Violation, 15 U.S.C. § 1125(a) (Against All Defendants) 17 18 19 73. DSE repeats and realleges every allegation in Paragraphs 1 through 72 of its First Amended Complaint as if fully set forth herein. 20 74. The Dr. Seuss Marks are distinctive and have acquired secondary 21 meaning in the minds of the public, and are associated with Theodor S. Geisel, Dr. 22 Seuss, and DSE. 23 75. Defendants’ use of the Dr. Seuss Marks and any colorable imitation of 24 DSE’s Dr. Seuss Marks in the Infringing Works, is a use in commerce of any word, 25 term, name, symbol, or device, or combination thereof, and a false designation of 26 origin, which is likely to cause confusion or mistake in the public mind or to 27 deceive the public, as to the affiliation, connection or association of Defendants 28 ///// DLA P IPER LLP (US) SAN FRA NCI S CO WEST\277519290.1 -22FIRST AMENDED COMPLAINT CASE NO. 3:16-CV-02779-JLS-BGS Case 3:16-cv-02779-JLS-BGS Document 39 Filed 06/22/17 PageID.442 Page 24 of 31 1 with Theodor S. Geisel, Dr. Seuss, and DSE, or as to the origin, sponsorship, or 2 approval of Defendants’ goods, services, or commercial activities by DSE. 3 76. Defendants’ willful misappropriation of the stylized font that DSE uses 4 consistently throughout the Dr. Seuss books, willful misappropriation of the title 5 OH, THE PLACES YOU’LL GO!, and slavish copying of Dr. Seuss’s unique 6 illustration style explicitly misleads and confuses consumers as to the Infringing 7 Work’s source and falsely suggests that the Infringing Work is sponsored or 8 endorsed by DSE. 9 77. Defendants’ fine-print disclaimer buried on the Infringing Work’s 10 third page is ineffective and does not alleviate the potential for consumer confusion 11 as to DSE’s approval, sponsorship, endorsement, or licensing of the Infringing 12 Work. 13 14 78. Defendants’ acts constitute false designation of origin, false endorsement, and unfair competition in violation of 15 U.S.C. § 1125(a)(1)(A). 15 79. As a direct and proximate result of the foregoing acts, DSE has been 16 damaged and has suffered, and will continue to suffer, significant damages, in an 17 amount to be proved at trial. 18 80. Defendants’ conduct has been intentional and willful and is calculated 19 specifically to trade off the goodwill that DSE has developed in its Dr. Seuss 20 Marks. Pursuant to 15 U.S.C. § 1117(a), DSE is entitled to recover its reasonable 21 attorneys’ fees incurred in this action. 22 81. In addition, Defendants’ violations of 15 U.S.C. § 1125(a) have caused 23 and, unless enjoined by this Court, will continue to cause irreparable injury to 24 DSE’s goodwill, business identity and reputation. DSE is therefore entitled to a 25 preliminary and permanent injunction enjoining and restraining Defendants from 26 use of the Infringing Works or any other mark that is confusingly similar to DSE’s 27 Dr. Seuss Marks. 28 ///// DLA P IPER LLP (US) SAN FRA NCI S CO WEST\277519290.1 -23FIRST AMENDED COMPLAINT CASE NO. 3:16-CV-02779-JLS-BGS Case 3:16-cv-02779-JLS-BGS Document 39 Filed 06/22/17 PageID.443 Page 25 of 31 1 2 3 4 5 6 COUNT IV California Statutory Unfair Competition, Business and Professions Code § 17200 (Against All Defendants) 82. DSE repeats and realleges every allegation in Paragraphs 1 through 81 of its First Amended Complaint as if fully set forth herein. 83. DSE is the exclusive owner of the common law trademark rights in the 7 Dr. Seuss Marks. No license or authorization has been granted to Defendants to use 8 any of these marks, or variations thereon. 9 84. Defendants, with full knowledge of the public awareness and value of 10 the Dr. Seuss Marks, have traded on the goodwill associated with them and have 11 misled and will continue to mislead the public into assuming a connection between 12 DSE and the Infringing Work by Defendants’ continued use of the Dr. Seuss 13 Marks, even though such use is not authorized by DSE. 14 85. By willfully misappropriating the stylized font that DSE uses 15 consistently throughout the Dr. Seuss books, willfully misappropriating the title 16 OH, THE PLACES YOU’LL GO!, and slavishly copying Dr. Seuss’s unique 17 illustration style, Defendants have explicitly mislead and confused consumers as to 18 the Infringing Work’s source and falsely suggest that the Infringing Work is 19 sponsored or endorsed by DSE constituting unfair competition within the meaning 20 of California Business and Professions Code Section 17200 et seq. 21 86. By falsely suggesting a connection with or sponsorship by DSE, 22 Defendants’ use of the Dr. Seuss Marks has caused and is likely to cause public 23 confusion constituting unfair competition within the meaning of California 24 Business and Professions Code Section 17200 et seq. 25 87. In addition, Defendants’ violations of California Business and 26 Professions Code Section 17200 et seq. have caused and, unless enjoined by this 27 Court, will continue to cause irreparable injury to DSE’s goodwill, business identity 28 and reputation. DSE is therefore entitled to a permanent injunction enjoining and -24- DLA P IPER LLP (US) SAN FRA NCI S CO WEST\277519290.1 FIRST AMENDED COMPLAINT CASE NO. 3:16-CV-02779-JLS-BGS Case 3:16-cv-02779-JLS-BGS Document 39 Filed 06/22/17 PageID.444 Page 26 of 31 1 restraining Defendants from use of the Infringing Works or any other mark that is 2 confusingly similar to DSE’s Dr. Seuss Marks. 3 PRAYER FOR RELIEF 4 WHEREFORE, DSE requests that the Court grant the following relief: 5 A. 6 A judgment against Defendants, determining and adjudging: 1. that Defendants have willfully infringed and are infringing 7 copyrights in the federally registered Dr. Seuss Copyright 8 Works under 17 U.S.C. § 106; 9 2. that Defendants have willfully infringed and are infringing 10 DSE’s rights in United States Trademark Registration No. 11 5,099,531 by using a reproduction, copy, or colorable imitation 12 of DSE’s OTPYG E-Book Mark that is likely to cause 13 confusion, mistake, or to deceive, in violation of 15 U.S.C. § 14 1114(1); 15 3. that Defendants have willfully committed and are committing 16 acts of false designation of origin, false or misleading 17 description of fact, or false or misleading representation in 18 violation of DSE’s rights under 15 U.S.C. § 1125(a) and 19 California state law; 20 4. that Defendants have willfully and deliberately competed 21 unfairly with DSE in violation of DSE’s rights under 15 U.S.C. 22 § 1125(a) and California state law; 23 B. An Order preliminarily and permanently enjoining Defendants, their 24 officers, agents, representatives, servants, employees, attorneys, successors and 25 assigns, and all others in active concert or participation with Defendants from: 26 1. infringing the copyrights in the Dr. Seuss Copyrighted Works, 27 including but not limited to continuing to reproduce, distribute, 28 display, market, advertise, promote, produce, sell, or offer for -25- DLA P IPER LLP (US) SAN FRA NCI S CO WEST\277519290.1 FIRST AMENDED COMPLAINT CASE NO. 3:16-CV-02779-JLS-BGS Case 3:16-cv-02779-JLS-BGS Document 39 Filed 06/22/17 PageID.445 Page 27 of 31 1 sale the Infringing Work or any works that are derivative of or 2 copied from the Dr. Seuss Copyrighted Works; 3 2. manufacturing, assembling, producing, distributing, offering for 4 distribution, circulating, selling, offering for sale, advertising, 5 importing, promoting, or displaying any simulation, 6 reproduction, counterfeit, copy, or colorable imitation of the 7 OTPYG E-Book Mark or any mark confusingly similar thereto; 8 3. manufacturing, assembling, producing, distributing, offering for 9 distribution, circulating, selling, offering for sale, advertising, 10 importing, promoting, or displaying any simulation, 11 reproduction, counterfeit, copy, or colorable imitation of the Dr. 12 Seuss Marks or any mark confusingly similar thereto; 13 4. using any false designation of origin or false description or 14 statement which can or is likely to lead the public or individuals, 15 erroneously to believe that the Infringing Work has been 16 provided, produced, distributed, offered for distribution, 17 circulation, sold, offered for sale, imported, advertised, 18 promoted, displayed, licensed, sponsored, approved, or 19 authorized by or for DSE, when such is not true in fact; 20 5. engaging in any other activity constituting an infringement of 21 the Dr. Seuss Intellectual Property, or of DSE’s rights in, or 22 right to use or to exploit the Dr. Seuss Intellectual Property; and 23 6. assisting, aiding, or abetting any other person or business entity 24 in engaging in or performing any of the activities referred to in 25 subparagraphs (1) through (5) above. 26 C. An award to DSE, at its election prior to entry of final judgment, of 27 statutory damages of up to $150,000 for each separate Dr. Seuss Copyrighted Work 28 infringed, for willful infringement pursuant to 17 U.S.C. § 504(c), or DSE’s actual -26- DLA P IPER LLP (US) SAN FRA NCI S CO WEST\277519290.1 FIRST AMENDED COMPLAINT CASE NO. 3:16-CV-02779-JLS-BGS Case 3:16-cv-02779-JLS-BGS Document 39 Filed 06/22/17 PageID.446 Page 28 of 31 1 damages sustained as a result of Defendants’ acts of copyright infringement 2 according to proof and Defendants’ profits obtained as a result of their acts of 3 copyright infringement according to proof; 4 D. An Order requiring Defendants to account and pay over to DSE all 5 gains, profits, and advantages derived by them as a result of its infringement of the 6 Dr. Seuss Marks to the full extent provided for by Section 35 of the Lanham Act, 7 15 U.S.C. § 1117; 8 9 E. An award to DSE of such damages as it has sustained by reason of Defendants’ infringement of the Dr. Seuss Marks; and that, because of the willful 10 nature of said infringement, the Court enter judgment for DSE for three times of the 11 amount of said damages, pursuant to Section 35 of the Lanham Act, 15 U.S.C. § 12 1117; 13 F. An award to DSE of its costs and expenses incurred in the 14 investigation and prosecution of this action, including reasonable attorneys’ fees, 15 pursuant to 17 U.S.C. § 505 and Section 35 of the Lanham Act, 15 U.S.C. § 1117; 16 and 17 G. Such other and further relief as the Court deems just and proper. 18 19 Dated: June 22, 2017 20 21 22 23 24 25 26 27 DLA PIPER LLP (US) Of Counsel: Tamar Y. Duvdevani (pro hac vice) Marc E. Miller (pro hac vice) DLA PIPER LLP (US) 1251 Avenue of the Americas New York, New York 10020-1104 Tel: 212.335.4500 Fax: 212.335.4501 28 -27- DLA P IPER LLP (US) SAN FRA NCI S CO By: /s/ Gina Durham GINA L. DURHAM (Bar No. 295910) 555 Mission Street, Suite 2400 San Francisco, California 941052933 Tel: 415.836.2500 Fax: 415.836.2501 WEST\277519290.1 FIRST AMENDED COMPLAINT CASE NO. 3:16-CV-02779-JLS-BGS Case 3:16-cv-02779-JLS-BGS Document 39 Filed 06/22/17 PageID.447 Page 29 of 31 1 2 3 4 5 Ryan Compton (pro hac vice) James Stewart (pro hac vice) DLA PIPER LLP (US) 500 Eight Street, NW Washington, D.C. 20004 Tel: 202.799.4000 Fax: 202.799.5000 6 STANLEY J. PANIKOWSKI 401 B Street, Suite 1700 San Diego, CA 92101 Tel: 619.699.2700 Fax: 619.699.2701 Attorneys for Plaintiff Dr. Seuss Enterprises, L.P. 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -28- DLA P IPER LLP (US) SAN FRA NCI S CO WEST\277519290.1 FIRST AMENDED COMPLAINT CASE NO. 3:16-CV-02779-JLS-BGS Case 3:16-cv-02779-JLS-BGS Document 39 Filed 06/22/17 PageID.448 Page 30 of 31 1 2 3 4 DEMAND FOR JURY TRIAL DSE hereby demands a trial by jury on all issues and claims so triable. Dated: June 22, 2017 5 DLA PIPER LLP (US) 6 7 Of Counsel: 8 Tamar Y. Duvdevani (pro hac vice) Marc E. Miller (pro hac vice) DLA PIPER LLP (US) 1251 Avenue of the Americas New York, New York 10020-1104 Tel: 212.335.4500 Fax: 212.335.4501 9 10 11 12 13 14 15 16 17 18 Ryan Compton (pro hac vice) James Stewart (pro hac vice) DLA PIPER LLP (US) 500 Eight Street, NW Washington, D.C. 20004 Tel: 202.799.4000 Fax: 202.799.5000 By: /s/ Gina Durham GINA L. DURHAM (Bar No. 295910) 555 Mission Street, Suite 2400 San Francisco, California 94105-2933 Tel: 415.836.2500 Fax: 415.836.2501 STANLEY J. PANIKOWSKI 401 B Street, Suite 1700 San Diego, CA 92101 Tel: 619.699.2700 Fax: 619.699.2701 Attorneys for Plaintiff Dr. Seuss Enterprises, L.P. 19 20 21 22 23 24 25 26 27 28 -29- DLA P IPER LLP (US) SAN FRA NCI S CO WEST\277519290.1 FIRST AMENDED COMPLAINT CASE NO. 3:16-CV-02779-JLS-BGS Case 3:16-cv-02779-JLS-BGS Document 39 Filed 06/22/17 PageID.449 Page 31 of 31 1 2 3 4 5 6 7 8 9 10 11 12 APPENDIX A: COPYRIGHTED DR. SEUSS WORKS 1. How the Grinch Stole Christmas!, U.S. Copyright Registration No. A 312043, Renewal Registration No. RE 238319. 2. The Lorax, U.S. Copyright Registration No. A 301289, Renewal Registration No. RE 805038. 3. Horton Hears a Who, U.S. Copyright Registration No. A 152927, Renewal Registration No. RE 115184. 4. The Sneetches and Other Stories, U.S. Copyright Registration No. A 543386, Renewal Registration No. RE 425704. 5. Oh, the Places You’ll Go!, U.S. Copyright Registration No. VA- 430950. 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -30- DLA P IPER LLP (US) SAN FRA NCI S CO WEST\277519290.1 FIRST AMENDED COMPLAINT CASE NO. 3:16-CV-02779-JLS-BGS