Oh, the Lawsuits You’ll Lose! Court rejects TM claim against Seuss/Trek mashup, signals (c) likely to go too

Dr. Seuss Enters., L.P. v. Comicmix LLC, 2017 WL 2505007,
No. 16cv2779 (C.D. Cal. Jun. 9, 2017)
Plaintiff owns the rights to Seuss’s Oh, the Places You’ll
Go! (Go!).  Defendants created a
Kickstarter for Oh, the Places You’ll Boldly Go! (Boldly), which combines aspects
of various Dr. Seuss works with “certain characters, imagery, and other
elements from Star Trek, the well-known science fiction entertainment franchise
created by Gene Roddenberry.” Boldly’s copyright page both states that “[t]his
is a work of parody, and is not associated with or endorsed by CBS Studios or
Dr. Seuss Enterprises, L.P.”
On the copyright claim, the court found that the only issue
where material facts would be necessary to resolve the fair use question was
market harm.  The sole allegation of
market harm was alleged usurpation of licensing opportunities.
In the Ninth Circuit, “an allegedly infringing work is
typically viewed as transformative as long as new expressive content or message
is apparent,” even without comment on the original, though “the degree to which
the new user exploits the copyright for commercial gain—as opposed to
incidental use as part of a commercial enterprise”—affects the overall balance
of this factor.  The court rejected
defendants’ argument that Boldly was a parody, which is a question of law.  Boldly was more appropriately labeled a
“mash-up.”  Mash-ups can be parodies when
they juxtapose the underlying works in such a way that it creates “comic effect
or ridicule,” but here “Boldly merely uses Go!’s illustration style and story
format as a means of conveying particular adventures and tropes from the Star
Trek canon.”
Despite that, Boldly was “no doubt transformative” by
creating a “completely unique work” (!!) from the two disparate worlds of Dr.
Seuss and Star Trek.
Go! tells the tale of a young boy
setting out on adventure and discovering and confronting many strange beings
and circumstances along his path. Boldly tells the tale of the similarly strange
beings and circumstances encountered during the voyages of the Star Trek
Enterprise, and it does so through Go!’s communicative style and method. Go!’s
rhyming lines and striking images, as well as other Dr. Seuss works, are often
copied by Boldly, but the copied elements are always interspersed with original
writing and illustrations that transform Go!’s pages into repurposed,
Star-Trek–centric ones.
Commerciality weighed against defendants, but on balance
this factor favored fair use.  Factor two:
not terribly significant, but the fact that the work was previously published
and highly successful weighed in favor of fair use, so the factor as a whole
tilted only slightly in the plaintiff’s favor. Factor three didn’t weigh
against defendants: many aspects of Go! and other Dr. Seuss works were used,
but none in their entirety. “Nor does Boldly copy more than is necessary to
accomplish its transformative purpose”:
The final image comparison in
Plaintiff’s Complaint is illustrative. Plaintiff’s work depicts two
similar-looking, fanciful “Zax” creatures arguing in the middle of a desert,
with footprints to mark their arrival. Boldlytakes the same desert landscape
and footprints, and in the fanciful creatures’ place puts two similar-looking
beings of seemingly Vulcan descent—one of which is drawn in the same position
as his Dr. Seuss counterpart and one of which is transformed from the Dr. Seuss
creatures’ aggressive stance into a contemplative pose—deep in the midst of
playing some type of alien board game.  Additionally,
Boldly’s text reveals that the two Vulcan creatures are, in fact, the same
person, unlike Go!’s distinct “North-Going” and “South-Going” Zaxes. Boldly
therefore transforms the argumentative Zaxes and their corresponding depiction
into a cloned Vulcan matching wits with himself over an alien boardgame. One
Vulcan is positioned almost identically to his Zax counterpart to “conjure up”
the Dr. Seuss work, while the other Vulcan is drawn anew and a board-game added
in order to fully accomplish the work’s overall transformative purpose.
Market effect: defendants are at a disadvantage in this
procedural posture, given plaintiff’s allegations that it commonly licensed its
works.  Thus harm could be presumed at
this stage, though that was neutralized some by Boldly’s lack of substitution
due to its transformativeness.  “Boldly’s
market relies on consumers who have already read and greatly appreciated Go!
and Dr. Seuss’s other works, and who simultaneously have a strong working
knowledge of the Star Trek series. It is therefore unlikely that Boldly would
severely impact the market for Dr. Seuss’s works.”
Ultimately, “if fair use was not viable in a case such as
this, an entire body of highly creative work would be effectively foreclosed,”
though each case must be analyzed on its own merits.  The court decided that defendants couldn’t win
on this issue as a matter of law—though its discussion suggested that it might
be hard for plaintiff to develop actual evidence of market harm.
Trademark and unfair competition claims were based on (1)
the title Oh, the Places You’ll Go!; (2) “the stylized font” used in Dr.
Seuss’s books; and (3) “the unique illustration style of the characters and
backgrounds” of Dr. Seuss’s books.
Defendants argued for the application of Rogers v. Grimaldi as a matter of First
Amendment doctrine.  Plaintiff argued
that Rogers itself required a
determination of consumer confusion, but that’s not so. There was no question
that use of the alleged trademarks was relevant to Boldly’s artistic purpose:
the point was to be a mash-up, so “Go!’s title, font, and Dr. Seuss’s
illustration style must be employed to evoke Go! and the other Dr. Seuss works
here at issue.” Nor did Boldly explicitly mislead as to source or content.  Aside from changing the cover imagery and
title to invoke Star Trek characters and the famous, split-infinitive opening
line, Boldly “explicitly announces on its cover that it is authored not by Dr.
Seuss but instead ‘by David Gerrold & Ty Templeton.’” The copyright page
even includes an explicit disclaimer that “[t]his is a work of parody, and is
not associated with or endorsed by CBS Studios or Dr. Seuss Enterprises, L.P.”
Defendants didn’t like Rogers,
attacking its inflexibility, but the Ninth Circuit thinks that’s the point
(quoting Brown v. EA):
[A] balance need not be designed to
find each of the sides weightier with equal frequency. The language in Rogers is clear. “[T]hat balance will
normally not support application of the [Lanham] Act unless the [use of the
trademark or other identifying material] has no artistic relevance to the
underlying work whatsoever….” The Rogers
test is applicable when First Amendment rights are at their height—when
expressive works are involved—so it is no surprise that the test puts such
emphasis on even the slightest artistic relevance. “Intellectual property
rights aren’t free: They’re imposed at the expense of future creators and of
the public at large,” and the Rogers
test applies when this expense is most significant.
However, Rogers
explicitly incorporates an exception for “misleading titles that are
confusingly similar to other titles.” Thus, Rogers
didn’t justify dismissing claims related to the alleged trademark in Go!’s

Fortunately, nominative fair use was there to beam
defendants out of danger.  Plaintiff
argued that this couldn’t be decided on a motion to dismiss, but it can.  Defendants satisfied each element of the
test.  Plaintiff argued that the third
factor (do nothing else to cause confusion) required an assessment of likely
confusion, but the Ninth Circuit has clearly indicated that nominative fair use
replaces the usual multifactor test. The third factor does not analyze likelihood of confusion, but instead simply requires
“that the user do ‘nothing that would, in conjunction with the mark, suggest
sponsorship or endorsement by the trademark holder.’ ” Plaintiff’s allegations
of willful trading on Dr. Seuss’s goodwill didn’t matter—“a defendant may
intend to or willfully use a mark without any desire to explicitly mislead
consumers.”  Allegations of a deliberate
intent to deceive the public were “no more than [a] conclusion[ ]…not
entitled to the assumption of truth.” 

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