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 title.

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.”