In a case described by the judge as presenting an “important question regarding the emerging ‘mash-up’ culture,” a jury will consider the copyright and trademark claims raised by a Star Trek version of Dr. Seuss’s Oh, the Places You’ll Go!
Dr. Seuss Enterprises sued ComicMix over its plan to publish Oh, the Places You’ll Boldly Go! after the authors launched a Kickstarter campaign to fund printing and distribution. The defendants countered that their book—which combines aspects of various Dr. Seuss works with “certain characters, imagery, and other elements from Star Trek”—was a parody and constituted fair use of the Dr. Seuss publications.
But U.S. District Court Judge Janis L. Sammartino denied the defendants’ motion to dismiss, concluding that the court could not say as a matter of law that their use of copyrighted material was fair or that they had proven each element of a nominative fair use trademark infringement defense.
The court had previously considered the four fair use factors and found factor one (the purpose and character of the use) to weigh in favor of the defendants and the fourth factor (the effect of the use upon the potential market for or value of the copyrighted work) to weigh in favor of the plaintiff. Factor two weighed slightly in favor of the plaintiff and factor three was neutral.
Thereafter, Dr. Seuss Enterprises filed an amended complaint that provided new information as to the fourth fair use factor. It explained that it commonly licenses its work and collaborates with other rights holders to produce works such as Oh, the Pets You Can Get! In light of this information, Judge Sammartino reconsidered her analysis with regard to the effect that defendants’ use had upon the potential market for or value of the copyrighted work; she left her analysis of the other three factors in place.
The defendants attempted to distinguish their mash-up from these licensed derivatives because it was a crossover work integrating preexisting characters from a separate entertainment franchise—Star Trek—with those of Dr. Seuss. The court was not persuaded.
“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,” the court wrote. “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. Defendants’ 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.”
With the balance of the fair use factors shifting even more in the plaintiff’s favor due to the allegations of potential market harm, the court denied the defendants’ motion to dismiss the copyright infringement claim based on a fair use defense.
Turning to the trademark and unfair competition claims, Judge Sammartino found the defendants’ work was not shielded by a defense of nominative fair use. The defendants met the first factor—that their work would not be readily identifiable without use of the trademark at issue—because Boldly needed to utilize Dr. Seuss’s title in order to reference the underlying Dr. Seuss work.
However, the defendants used more of the mark than “reasonably necessary to identify the product,” the court found, and thereby failed the second factor for nominative fair use. “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 court said. “The look of the lettering is unquestionably identical on both books, down to the shape of the exclamation point. … 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).”
While the court determined the defendants did nothing to suggest that the plaintiff sponsored or endorsed Boldly, because they could not satisfy the second factor of the nominative fair use defense, the court denied their motion to dismiss the trademark and unfair competition claims.
To read the order in Dr. Seuss Enterprises v. ComicMix, LLC, click here.
Why it matters: The California federal court decision provides an interesting analysis of copyright and trademark considerations in mash-ups involving protected works. Although the court had previously dismissed the trademark claim, the plaintiff’s amended complaint regarding the font size and lettering was sufficient to preclude a nominative fair use defense. Copyright claims will also move forward as the plaintiff successfully presented to the court a potential market for derivative works that the defendants allegedly infringed.