I’m a judge, not a media theorist, Jim: NFU doesn’t protect use of Dr. Seuss font in mashup case

Dr. Seuss Enterprises, L.P. v. ComicMix LLC, No. 16-CV-2779
(C.D. Cal. Dec. 7, 2017)
Though the court dismissed the first trademark/copyright
infringement complaint against this Star Trek/Dr. Seuss mashup, the amended
complaint survives.
Copyright: It’s still transformative, but the complaint
added information about the fourth fair use factor.  Dr. Seuss’s earlier complaint alleged that it
was not uncommon for it to license its works and collaborate with other rights
holders; the court presumed a potential harm to licensing opportunities, but
still found that Oh, The Places You’ll
Boldly Go
“does not substitute for the original and serves a different
market function” given that “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.”  The amended complaint alleged that Dr. Seuss
had published derivative works of Go! such as Oh! The Places I’ll Go and other
works based on the Dr. Seuss IP such as Oh, The Things  You Can Do That Are Good for You!  “Dr. Seuss” doesn’t appear on the book covers,
which include names of other authors, even though they’re recognized by the
public as Dr. Seuss works.  ComicMix
argued that none of these were “crossover works that integrate pre-existing
characters or imagery from another 
entertainment franchise, such as Star Trek, with those of Dr. Seuss.” Dr.
Seuss argued that The Wubbulous World of Dr. Seuss, “a live action/puppet show
produced by the Jim Henson Company featuring Dr. Seuss’s well-known and
beloved  characters alongside new,
Muppet-like characters created by The Jim Henson Company,” showed that Boldly was the kind of derivative work
that Dr. Seuss had the right to develop and could develop or license others to
develop.
The court declined to presume market harm, because of the
transformativeness of Boldly.  Still, factor four weighed in Dr. Seuss’s
favor.  On the allegations of the
complaint, there’s a potential market for literary mash-ups, and such a market
wouldn’t be unlikely based on Dr. Seuss’s past licensing programs. Motion to
dismiss denied, as before.
Dr. Seuss secured an even better result on its
trademark/unfair competition claims, which had previously been dismissed. Dr.
Seuss claimed trademark rights to (1) the title Go!; (2)  “the stylized font used consistently on the
front and back covers, spine, and title page of 
the Dr. Seuss books such that this use of the styled font has come to be
recognized by  consumers as a source
identifier for Dr. Seuss,” and (3) “the unique illustration style of the  characters and backgrounds found throughout
Dr. Seuss books.”  Dr. Seuss also claimed
registrations for Go!; Go! 25th Anniversary, and for a trademark in connection
with downloadable digital children’s books, among other goods, as well as a
family of  common law trademarks deriving
from the title of Go!
Based on the allegations of the complaint, Dr. Seuss alleged
protectable marks in the Go! title, and it was unnecessary to determine whether
it could claim separate rights in the fonts used on other book covers or inside
the book.  Illustration style cannot be a
protectable mark, even if particular characters can be.
Nominative fair use (should have gone with Rogers, as this result illustrates, no
pun intended): The fact that defendants’ use wasn’t exact wasn’t disqualifying,
especially given the complaint’s allegations of misappropriation/use of the
marks. Likewise, NFU can apply as long a defendant uses the plaintiff’s mark to
describe the plaintiff’s product, even if the ultimate goal is to describe the
defendant’s own product, which is what happened year.  And the product (the underlying work) wasn’t
readily identifiable without use of the mark. 
And defendants didn’t do anything other than use the mark that would
suggest sponsorship or endorsement; people might not read the disclaimer on the
third page, but disclaimers aren’t required.
However, factor two was the problem: the use was more than
reasonably necessary (I think the court is saying that this is true for
purposes of the motion to dismiss, not definitively, but I’m not sure) because
defendants didn’t just use the words, but also the font of the original, “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).”  Aviva USA Corp. v. Vazirani, 902 F. Supp. 2d
1246 (D. Ariz. 2012), applied NFU even though the defendant there used the
“distinctive colors and font” of plaintiff’s mark, but that was part of a “very
obvious negative  commentary directed
toward [plaintiff]” that could not lead to confusion.  [Again you see the benefit of Rogers.]

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