Star Trekkin’ across the universe of fair use

I like Star Trek better than Dr. Seuss, ok?
Dr. Seuss Enters., L.P. v. ComicMix LLC, No. 16-CV-2779 JLS
(BGS) (S.D. Cal. Mar. 12, 2019)
DSE owns the copyrights to the works of Theodor S. Geisel, better
known as Dr. Seuss. It licenses additional works under the Dr. Seuss brand,
including Oh, the Things You Can Do That Are Good For You!; Oh, the Pets You
Can Get!; Oh, Baby! Go, Baby!; Oh, the Places I’ll Go! By ME, Myself; Oh, Baby,
the Places You’ll Go!; and Oh, the Places I’ve Been! Journal. Seuss’s Oh, the
Places You’ll Go! is a very popular gift for graduates, is DSE’s best-selling
book, and is the perennial number one selling book on The New York Times Best
Sellers list each spring during graduation season.  DSE also extensively licenses other
entertainment products and merchandise, including “The Wubbulous World of Dr.
Seuss, a television and book series with The Jim Henson Company that featured ‘muppetized’
Dr. Seuss characters; Grinch Panda Pop, a digital game that combines Jam City’s
Panda character with the Grinch character; Dr. Seuss Funko figurines, which
combine Funko Inc.’s distinctive toy designs with Dr. Seuss characters; and a
line of Comme des Garçons clothing combining Comme des Garçons’ well-known
heart design with Grinch artwork.”
David Gerrold has written Star Trek episodes (including some
of the most beloved), and suggested to defendant Hauman that, “if we could get
a license, we should do a Star Trek Primer.” The original idea was to combine
Star Trek themes with Pat the Bunny, “although they also considered using Fun
with Dick & Jane, Goodnight Moon, and The Very Hungry Caterpillar, before
finally settling on Go!” Hauman invited defendant Templeton to join the project:
“this would be Seuss-style [(Star Trek: The Original Series)] backgrounds,” and
that “we’re going to want the cover and at least a background art piece for
promotions, as well as be able to use the cover for posters, mugs, and all the
merchandise that will push this thing over the top.” Templeton responded, “Holy
CRAP that’s a cool idea. The title is like printing money. I’m totally in.”
Each of the three testified that they considered Boldly a parody, a mash-up,
and a transformative work.  
Hauman scanned a copy of Go! because he wanted to “parallel [Go!]
as close as [he] c[ould]” Although Gerrold wrote his first draft “from scratch”
and without access to Go!, he later rewrote the text to more closely match Go!
Hauman created a side-by-side comparison of the text, to assist in their effort
“to parallel the structure of [Go!].” Templeton’s illustration of one page took
him about seven hours because he “painstakingly attempted to make” his
illustration “nearly identical” in certain respects to one illustrated by Dr.
Seuss.  He testified that this was “essential
to the parody . . . that people recognize the source material in poses since
they WON’T be seeing the Grinch or the Whos or the Gox” or any other character
from Dr. Seuss, and Templeton was therefore “concerned if we try to completely
ignore everything about the source material the gags fall apart.”
Defendants included two disclaimers on the copyright page of
the unpublished draft. The first read: “This is a work of fair use, and is not
associated with or endorsed by CBS Studio or Dr. Seuss Enterprises, L.P.” Id.
The second stated, “Copyright Disclaimer under section 107 of the Copyright Act
1976, allowance is made for ‘fair use’ for purposes such as criticism, comment,
news reporting, teaching, scholarship, education, research, and parody.”
Along with working on a deal with ThinkGeek to distribute
the book, defendants launched a Kickstarter for Boldly. The “Risks and
Challenges” section included: “While we firmly believe that our parody, created
with love and affection, fully falls within the boundary of fair use, there may
be some people who believe that this might be in violation of their
intellectual property rights. And we may have to spend time and money proving
it to people in black robes. And we may even lose that.” They raised nearly
$30,000.
An editor at publisher Andrews McMeel Publishing (AMP) saw
the Kickstarter page, reached out to defendants, and subsequently presented a
proposal to AMP’s Acquisitions Committee for publishing Boldly, describing the
intended audience as “Graduates and parents of graduates (college, high school,
8th grade); fans of Star Trek; fans of Dr. Seuss.” AMP’s VP of Sales advised seeking
“an on-sale date” that would allow them to “try and capture some grad biz.”
After the lawsuit begain, Gerrold suggested that re-drawing
the illustrations could be a “way out” of the litigation and Templeton offered
to revise the artwork to follow Go! less closely. Later, ThinkGeek contacted
Hauman for an update, as it would “LOVE to be able to offer [Boldly] for
Graduation.” Mr. Hauman replied, “I would LOVE to offer it to you, but the
lawsuit grinds on.” Boldly remained unpublished.
Previous rulings in the case held that Boldly was
transformative, but DSE urged the court to reconsider in light of Oracle
America, Inc. v. Google LLC, 886 F.3d 1179 (Fed. Cir. 2018), which held that Google’s
use of Oracle’s Java program was not transformative, despite the fact that
Google only used 37 of the 166 Java SE API packages and created its own
implementing code. But Google copied those 37 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.”  There was no verbatim copying of
text or illustrations; the borrowed elements were always adapted or
transformed. This was highly transformative. Nor did Boldly have “the same
intrinsic purpose and function as Go!,” i.e., “providing an illustrated book,
with the same uplifting message that would appeal to graduating high school and
college seniors.” DSE holds no monopoly over an illustrated book with an
uplifting message, and defendants’ is tailored to fans of Star Trek’s Original
Series. As to good/bad faith, discussing the necessity of a license and
determining that Boldly was a “fair use parody” without seeking the advice of
counsel isn’t bad faith. Even if it’s a derivative work under §101, it can
still be a fair use, since all the §106 rights—including the right to
create/authorize derivative works—are limited by §107.
Nature of the work: weighs only slightly in DSE’s favor
because Go! is creative but long and widely published.
Amount used: though “there is no dispute that Boldly copies
many aspects of Go!’s and other Dr. Seuss illustrations[,] . . . Boldly does
not copy them in their entirety[,]” but rather “infuse[s each] with new meaning
and additional illustrations that reframe Seuss images from a unique Star-Trek
viewpoint.” Nor did Boldly “copy more than is necessary to accomplish its
transformative purpose.” DSE pointed to defendants’ emails weighing the
possibility of creating “whole new artwork, not specifically based on any
individual drawing by Seuss, but close enough to his style to match the text”
as evidence that Defendants “could have taken far less from Go! to create a
‘mash-up.’”  The court disagreed. It’s
always possible to argue that an infringement defendant could have used less.  Here, defendants sought to “mash up” the Star
Trek original series with Go! in particular, rather than “Dr. Seuss” in
general.
The court found Leibovitz v. Paramount Pictures Corp., 137
F.3d 109 (2d Cir. 1998), analogous. That case cautioned that, “[i]n assessing
the amount and substantiality of the portion used, [the court] must focus only
on the protected elements of the original.” For the cover of each work, for
example, DSE could claim copyright protection in “the unique, rainbow-colored
rings and tower,” but not “any disc-shaped item tilted at a particular angle.”  And on Boldly’s cover, “Defendants drew a
similarly-shaped but decidedly non- Seussian spacecraft—the USS Enterprise—at
the same angle and placed a red-and-pink striped planet where the larger of two
background discs appears on the original cover.” Boldly’s cover also features a
figure whose arms and hands are posed similarly to those of Go!’s narrator “and
who sports a similar nose and eyes, but Boldly’s narrator has clearly been
replaced by Captain Kirk, with his light, combed-over hair and gold shirt with
black trim, dark trousers, and boots.” Captain Kirk was not the unnamed “boy”
protagonist of Go! “Finally, instead of a Seussian landscape, Boldly’s cover is
appropriately set in space, prominently featuring stars and planets.” To sum up,
“portions of the old work are incorporated into the new work but emerge imbued
with a different character.” Indeed, defendants here took less from DSE both
quantitatively and qualitatively than Paramount did in Liebovitz, which “incorporated nearly the entirety of the
plaintiff’s photograph, except for superimposing a different face onto the body.”
Here, defendants took only “discrete elements”: “cross-hatching, object
placements, certain distinctive facial features, lines written in anapestic
tetrameter.” Those are indeed significant, but defendants didn’t use Dr. Seuss’
words, his character, or his universe. This was no more than necessary for
their purposes: a “mash-up” of Go! and Star Trek.
Market effect: where a work is highly transformative, market
harm could not be presumed, and it hadn’t been shown. DSE didn’t meet its
burden by showing that it licensed a lot of other stuff and arguing that if
mash-ups were okay, “the entire market for authorized collaborative works would
be threatened.” Instead, the “potential harm to [Plaintiff]’s market remains
hypothetical.” The court found that Boldly didn’t substitute for the original
and served a different market function than Go!, targeting “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.”
Although Boldly was supposed to be “safe” for kids, it wasn’t targeted at them.
It still “touches on more adult subjects, including ‘lovers . . . [who]’ll
never be back for an episode two.’ Even the illustrations are imbued with
sexual innuendo, with one page depicting a number of women (and possibly one
man) with whom Captain Kirk has slept,” showing him pulling on his boots as a
signifier of post-coital status.  As
Gerrold testified, Boldly was intended “for adults who are familiar with all
the episodes [of Star Trek]” and “would not work for kids who have not seen the
episode[s].”
Go!’s graduation and derivative markets were a closer
question, but DSE still introduced no evidence that graduation substitution
purchases were likely. And these defendants clearly intended to market Boldly
to fans of Star Trek. “Although it is certainly conceivable that some would-be
purchasers of Go! would instead purchase Boldly for a Trekkie graduate, there
is a dearth of evidence or expert testimony permitting the Court to extrapolate
the likely effect—if any—that Boldly may have on Plaintiff’s sales of Go!”
So too with DSE’s derivative market. There was no evidence
tending to show that it would lose licensing opportunities or revenues as a
result of publication of Boldly or similar transformative works. DSE’s argument
“risks circular reasoning,” in that “it is a given in every fair use case that
plaintiff suffers a loss of a potential market if that potential is defined as
the theoretical market for licensing the very use at bar.” DSE’s proprietary “Style
Guide” supported defendants’ argument that Boldly was not part of a traditional
or likely to develop argument. DSE instructs its licensees not to show
characters with items “not from [the Seuss] world” and not to “use Seuss
characters with third party’s characters.” Licensees are also not supposed to
“make up Seuss-like rhymes.” Boldly broke those rules, e.g., “Your big ship
will take you to alien skies. / It’s the best that we’ve got for your great
enterprise.” Licensing derivative works doesn’t allow a copyright owner to
squelch transformative ones.
On balance, this was a fair use, and defendants won summary
judgment on the copyright claims.
Surviving trademark claims: the court previously kicked out
claims based on Boldly’s title, but did not rule on defendants’ alleged
misappropriation of “the stylized font that [Plaintiff] uses consistently
throughout the Dr. Seuss books” and “Dr. Seuss’s unique illustration style.” The
court determined that these were not protectable elements under trademark
law.  DSE’s survey purported to show that
“24% of consumers are confused as to origin [of Boldly] because Defendants
deliberately used [Plaintiff’s distinctive illustration style and font].” But
“[c]ourts have almost uniformly said no” trademark protection exists for an
artistic style.  [Citing McCarthy; a see
also for Dastar.]  This is copyright’s job.
Typeface: As Jacqueline Lipton explains, “a typeface is the
artistic creation of a typeface designer, while a font is the result of an
industrial process to enable the reproduction of typefaces in the printing
process.” Jacqueline D. Lipton, To (c) or Not to (c)? Copyright and Innovation
in the Digital Typeface Industry, 43 U.C. Davis L. Rev. 143, 148 (2009)
(footnote omitted). A typeface is no more susceptible of trademark protection
than a general style. “Although The New Yorker may trademark the name of the
typeface or its mark in that stylized typeface, see THE NEW YORKER,
Registration No. 0844606, it cannot trademark (or copyright, see 37 C.F.R. §§
202.1(a), (e)) the typeface itself.”  It
couldn’t, therefore, turn to trademark to protect against another’s use of its
typefaces, even if there was de facto secondary meaning.  The court was bolstered in its conclusion by
evidence that “Boldly does not use th[e] ‘Seuss font[s]’” DSE urges licenses to
use in its Style Guide.  [This isn’t
fully played out in the opinion, but the reason that defendants’ use of a
different typeface matters is that trademark protection in a style or typeface
would be essentially boundless—as long as confusion was allegedly likely,
people could be sued for getting too close in their own expressive works.]
Previously, the court had first concluded that defendants
hadn’t made a nominative use because they’d taken too much of the Go! trade
dress in lettering the titles, including the shape of the exclamation point.
But on review of Twentieth Century Fox Television v. Empire Distributions,
Inc., 875 F.3d 1192 (9th Cir. 2017), it then found that “the title of Boldly .
. . is relevant to its own content” and didn’t explicitly mislead as to source.
Now, it reasoned that use of Seussian typefaces, not in conjunction with an
enforceable mark, couldn’t support a claim for violation of the Lanham Act or
California’s UCL. It therefore didn’t need to address defendants’ Rogers argument.
Bonus: here’s John Oliver’s Oh! parody from his recent segment on online shaming:

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