Geisel v. Poynter Products, Inc.

Majority - HERLANDS, District Judge

Yes, the absolute sale of cartoons to a magazine in 1932, without an express reservation of rights, transferred all common law and statutory copyright rights to the magazine, thereby allowing its successor to create and market derivative dolls based on those cartoons and to truthfully use the cartoonist's pen name, “Dr. Seuss,” in connection with advertising, provided such use does not falsely imply his endorsement or approval. The Court first found that, based on the custom and usage in the 1932 magazine trade and corroborated by Liberty Magazine’s permanent purchase records, Geisel’s sale of the cartoons constituted an assignment of “all rights” or “complete rights” to Liberty Magazine. These terms were understood to have their literal meaning, signifying a totality of rights, including common law copyright and the right to secure statutory copyright, without any reservation of rights by Geisel. This finding negates Geisel’s claim that Liberty Magazine held the copyright in trust for him or that he retained any equitable rights. Citing Pushman v. New York Graphic Society and Dam v. Kirk La Shelle Co., the Court affirmed that, absent reservation, all rights pass with an absolute and unconditional sale. As the copyright owner, defendant Liberty Library Corporation (as successor to Liberty Magazine) therefore had the right to create three-dimensional derivative figures from the two-dimensional cartoons, as established by King Features Syndicate v. Fleischer. Regarding the use of the name “Dr. Seuss,” the Court determined that defendants’ initial advertising prior to March 12, 1968, did create a false impression of Geisel’s endorsement or authorization, violating Section 43(a) of the Lanham Act. A permanent injunction was issued against such deceptive use. However, the Court held that defendants’ revised advertising after April 9, 1968, which clearly stated the dolls were “Based on Liberty Magazine Illustrations by Dr. Seuss” and credited Don Poynter as the creator, did not violate the Lanham Act. This was based on the principle articulated in Societe Comptoir De L'Industrie Cotonniere Etablissements Boussac v. Alexander’s Department Stores, Inc., Prestonettes, Inc. v. Coty, and Champion Spark Plug Co. v. Sanders, which permits a commercial entity to truthfully describe its goods as based on a work, even if using the original creator's name, as long as it does not deceive the public or falsely imply sponsorship. The Court found the phrase “based on” accurately characterized the “genetic link” between the cartoons and the dolls, and that morphological differences were acceptable industry transformations. All other claims by plaintiff were dismissed. The right of privacy claim under New York Civil Rights Law §§ 50, 51 failed because “Dr. Seuss” is a pen name, not an actual name protected by the statute. Furthermore, a statutory exception permits the use of an author’s name in connection with their sold artistic productions, and the dolls were deemed “substantially related” to the cartoons. The defamation claim was dismissed as the Court found the dolls to be attractive, of good quality, and the advertising did not falsely attribute creation or approval to Geisel. Finally, the conspiracy to injure (prima facie tort) claim was dismissed due to lack of evidence of malice or intent to injure and failure to prove special damages.