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.]