4:32pm PT by Eriq Gardner
Lawsuit Over Mashup of 'Star Trek' and Dr. Seuss Gets Past Alpha Quadrant
Thanks to federal judge's ruling Thursday, Dr. Seuss Enterprises gets to engage both copyright and trademark claims in a lawsuit against ComicMix for a crowd-funded book project titled Oh, The Places You'll Boldly Go!
The lawsuit was brought in November 2016 by the company that now enjoys intellectual property created by Theodor S. Geisel, after ComicMix raised tens of thousands of dollars on Kickstarter to create an amalgamation of Star Trek and Dr. Seuss.
In June, ComicMix claimed being "vindicated" after U.S. District Court Judge Janis Sammartino dismissed trademark claims under the doctrine of nominative fair use. At the time, the judge allowed the copyright claims, but also wrote that the book is "a highly transformative work that takes no more than necessary to accomplish its transformative purpose and will not impinge on the original market for Plaintiff's underlying work."
But now, in a case that Sammartino previously wrote presents an "important question regarding the emerging 'mash-up' culture," the judge has considered the amended complaint and is allowing all the claims to move forward, including one for unfair competition. (Here's the full opinion.)
The biggest difference is the analysis of trademark, and quite notably, what is causing ComicMix some trouble on that front is the font of its title.
Nominative fair use is an important concept in trademark law, referring to certain allowances to use another's mark for purposes like commentary, criticism, comparative advertising or parody. The standards were articulated by an appeals court in 1992 in a case where newspapers used toll numbers to conduct polls of The New Kids on the Block.
Sammartino looks at three factors to determine whether ComicMix has an appropriate defense of nominative fair use in this dispute. On two of those factors — whether the product in question is readily identifiable without use of the trademark and whether ComicMix has performed acts that would falsely suggest sponsorship or endorsement by Dr. Seuss Enterprises — the defendants get the edge. But ComicMix can't dispense with the trademark and unfair competition claims thanks to that other factor — whether its use of Dr. Seuss' mark is more than reasonably necessary to identify it.
The mark in question is the title, "Oh, the Places You'll Go!"
The U.S. Patent and Trademark Office will not register the title of a single creative work such as a book or movie unless it has acquired distinctiveness. The judge accepts general information about Dr. Seuss' books — more than 650 million copies sold, for instance — as being enough at this stage to deem as trademark-worthy "Oh, the Places You'll Go!" (ComicMix can still challenge that at a later point.)
The question, though, is whether the use of this title was more than reasonably necessary.
Although Sammartino defers for now whether Dr. Seuss Enterprises may claim trademark rights in the fonts used on covers and inside its books, the use of font nonetheless becomes important in examining the question.
"Defendants not only use the words 'Oh! The Places You’ll Go!' in the title of Boldly but also use the exact font used by Plaintiff," the judge writes. "The look of the lettering is unquestionably identical on both books, down to the shape of the exclamation point. This situation is similar to that in Toho. The Court finds it was unnecessary for Defendants to use the distinctive font as used on Go! to communicate their message (i.e., that Boldly is a mash-up of the Go! and Star Trek universes)."
(Toho refers to a 1998 case where the rights-holder to "Godzilla" once suing a book publisher.)
Because ComicMix isn't able to satisfy each factor of the nominative use defense, the judge finds its use of the mark is not shielded by the defense.
Sammartino largely doesn't depart from her copyright conclusion, specifically her refusal to rule as a matter of law that ComicMix has sufficient fair use grounds to throw out the copyright claims. That doesn't mean ComicMix won't be able to put fair use to a jury; only that it hasn't fully convinced the judge on the various factors at the moment.
The factor that gets extra attention this time is the effect of the use upon the potential market.
In her earlier decision, Sammartino accepted "a potential harm to Plaintiff's licensing opportunities," but found this presumed harm neutralized because Boldly "does not substitute for the original and serves a different market function than Go!"
The amended complaint put more emphasis on licensed works that incorporated Dr. Seuss material. This causes a bit of a shift in the judge's thinking, in favor of Dr. Seuss Enterprises.
"Plaintiff's current literary licensing program involves allowing other authors to publish books based off of Plaintiff’s books and even use Plaintiff's characters," she writes. "Although these books may not be mash-ups like Boldly, there is a potential market for a literary mash-up involving Plaintiff’s books; such a market would not be unlikely based on Plaintiff's past licensing programs. Defendant's production of Boldly may result in an adverse impact on Plaintiff's derivative market and the Court therefore finds there is potential harm to the market for Plaintiff's derivative works. Therefore, this factor weighs in favor of Plaintiff."