IP Law Daily Fair use protects Dr. Seuss and Star Trek ‘mashup’ parody
Wednesday, March 13, 2019

Fair use protects Dr. Seuss and Star Trek ‘mashup’ parody

By Peter Reap, J.D., LL.M.

A kickstarter funded Dr. Seuss and Star Trek ‘mashup’ was highly transformative and copyright owner Dr. Seuss Enterprises alleged only speculative harm to its market.

The creators of a "mashup" work that parodied both Dr. Seuss and the Star Trek entertainment franchise were entitled to summary judgment on their fair use defense to a copyright infringement claim brought by Dr. Seuss Enterprises (DSE), the owner of the copyright in the works of Theodor S. Geisel, the author and illustrator of the books written under the pseudonym "Dr. Seuss," the federal district court in San Diego has decided. The highly transformative nature of the parody weighed in favor of the finding of fair use, in addition to the defendants taking no more than was necessary for their purpose and DSE alleged only speculative harm to its market. In addition, DSE’s remaining trademark infringement claims, premised on the defendants’ alleged misappropriation of the stylized font of the Dr. Seuss books and Dr. Seuss’s unique illustration style were without merit. The defendants were granted summary judgment on those claims and the similarly premised unfair competition claims (Dr. Seuss Enterprises, L.P. v. ComicMix LLC, March 12, 2019, Sammartino, J.).

In 2016, DSE sued ComicMix LLC and three individuals (collectively, the defendants) for copyright infringement, trademark infringement under the Lanham Act, and unfair competition under California law. DSE alleged that the defendants’ crowdfunded book project titled, Oh, the Places You'll Boldly Go! ("Boldly") violated DSE’s copyrights and trademarks in the deceased author’s well-known book, Oh! The Places You’ll Go! ("Go"). Boldly was an amalgamation of Star Trek and Dr. Seuss’s books. On December 7, 2017, the court dismissed DSE’s trademark and unfair competition claims as barred under the doctrine of nominative fair use, but declined to find that the title of Boldly was entitled to First Amendment protection as an expressive work. The court also declined to dismiss DSE’s copyright claims. DSE filed an amended complaint, and ComicMix moved for judgment on the pleadings, seeking dismissal of the trademark and unfair competition claims. In May 2018 the court held that Boldly did not violate trademark rights in the title of the DSE book Oh! The Places You’ll Go!. Before the court were motions by both sides for summary judgment on the remaining claims.

Copyright infringement and fair use. The defendants sought summary adjudication on DSE’s copyright infringement claim on the grounds that Boldly is a fair use. At the motion to dismiss stage, the court concluded that, "although Boldly fails to qualify as a parody[,] it is no doubt transformative." Further, while "there is no question that Defendants created their work for profit[,] . . . weigh[ing] against Defendants . . ., its weight is slight given both the transformative nature of the work . . . and the fact that Boldly does not supplant the market for Go! or other relevant Dr. Seuss works." Accordingly, the court concluded that, "on balance, this factor weighs in favor of finding Defendants’ use to be fair." The defendants now urged the court to reconsider this finding but the court was unpersuaded.

There was a key difference in the case cited by the defendants, Oracle America, Inc. v. Google LLC, 886 F.3d 1179 (Fed. Cir. 2018), and this case, the court reasoned. In Oracle, the defendants copied the 37 SE API packages wholesale, while in Boldly "the copied elements are always interspersed with original writing and illustrations that transform Go!’s pages into repurposed, Star Trek-centric ones." The defendants did not copy verbatim text from Go! in writing Boldly, nor did they replicate entire illustrations from Go! The court therefore concluded, as it had previously, that the defendants’ work, while commercial, was highly transformative. Further, the court was not persuaded that Boldly has the same intrinsic purpose and function as Go!. The court therefore reaffirmed its prior conclusion and determined, on balance, that this first fair use factor weighed in favor of finding the defendants’ use to be fair.

Because there was no dispute that DES’s copyrighted works were highly creative but had also been long and widely published, the court concluded as before that the second factor, the nature of the copyrighted use, slightly favored DSE. As for the third factor, the amount and substantiality of the portion used, the defendants took discrete elements of DSE’s copyrighted works: cross-hatching, object placements, certain distinctive facial features, lines written in anapestic tetrameter. Yes, these elements were significant to the copyrighted works, but the defendants ultimately did not use Dr. Seuss’ words, his character, or his universe. The court therefore stood by its prior conclusion that the defendants took no more from the copyrighted works than was necessary for the defendants’ purposes, i.e., a "mash-up" of Go! and Star Trek, and that, consequently, this factor did not weigh against the defendants.

The final factor, the market effect of the use, favored neither party, the court held. DSE failed to sustain its burden to demonstrate by a preponderance of the evidence that Boldly was likely substantially to harm the market for Go! or licensed derivatives of Go! Instead, the "potential harm to [Plaintiff]’s market remains hypothetical." Boldly was not likely to usurp Go!’s market as a children’s book, according to the court. Despite its admittedly Seussian appearance, Boldly was clearly not a children’s book and there was a minimal risk that Boldly would usurp Go!’s market to the extent it is targeted to children (either directly or through their parents).

The closer question concerned Go!’s graduation and derivative markets, the court observed. DSE claimed, for example, that "Boldly was intended to compete with, and thus supplant, Go! in the market for graduation gifts." Although it was certainly conceivable that some would-be purchasers of Go! would instead purchase Boldly for a Trekkie graduate, there was a dearth of evidence or expert testimony permitting the court to extrapolate the likely effect—if any—that Boldly may have on DSE’s sales of Go! The same was true of DSE’s derivative market. Under these circumstances, in which DSE failed to introduce evidence tending to demonstrate that the challenged work would substantially harm the market for its copyrighted works, the court concluded that this factor favored neither party.

Weighing all four of the factors, the court concluded that they favored the defendants and granted their motion for summary judgment as to fair use. Despite Boldly’s commercial nature, the work was highly transformative, the first factor of the fair use analysis therefore weighed in favor of the defendants. DSE’s copyrighted works were also highly creative, although they had also long been in publication, resulting in the second factor slightly favoring DSE. Although the defendants borrowed heavily from Go! and the other copyrighted works, the defendants took no more than was necessary for their purposes; consequently, this factor did not weigh against the defendants. Finally, the court concluded that the harm to DSE’s market remained speculative.

Trademark infringement and unfair competition claims. DSE’s surviving trademark and unfair competition claims were premised upon the defendants’ alleged misappropriation of "the stylized font that [Plaintiff] uses consistently throughout the Dr. Seuss books" and "Dr. Seuss’s unique illustration style." In ruling on the defendants’ motion to dismiss, the court concluded that, "at this stage of the proceedings and based on the information in front of the Court, . . . Plaintiff’s claimed general ‘illustration style’ is not protectable." The court declined to change its finding at this stage, and granted summary judgment on these claims to the extent they were premised on DSE’s artistic style.

Similarly, the defendants were granted summary judgment on the claims premised on the font used in the DSE works. Having earlier concluded that the title of Boldly did not violate the Lanham Act, the court now concluded that the defendants’ use of Seussian typefaces, not in conjunction with an enforceable mark, cannot support a claim for violation of the Lanham Act or, consequently, California’s Unfair Competition Law.

This case is No. 3:16-cv-02779-JLS-BGS.

Attorneys: Gina L. Durham (DLA Piper LLP) for Dr. Seuss Enterprises, L.P. Daniel G. Booth (Booth Sweet LLP) and Michael Licari (D'Egidio Licari Townsend & Shah, APC) for ComicMix LLC.

Companies: Dr. Seuss Enterprises, L.P.; ComicMix LLC

MainStory: TopStory Copyright Trademark CaliforniaNews

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