Comicmix Wins Against Dr. Seuss Estate On Trademark Infringement Claim, Copyright Claim In Serious Jeopardy

from the beam-me-mashup dept

Last year, Mike wrote about an interesting case between a small group of enterprising comic artists and Dr. Seuss Enterprises. Comicmix artists had created a parody mashup of Dr. Suess' Oh The Places You'll Go and the Star Trek universe to create Oh The Places You'll Boldly Go, a rather sweet take on both franchises. The creators of this new work setup a crowdfunding campaign, which the Dr. Seuss estate halted with takedown notices. The case ended up in court, with the Seuss estate claiming that the new work infringed both its copyright and trademark rights. The creators, along with Ken "Popehat" White, claimed all of this was well within the boundaries of Fair Use.

Well, the judge for the case has now ruled on the trademark matter, and it's a big win for Comicmix. Additionally, while the copyright claim survives for now, the judge makes it clear that things aren't looking great for that claim either.

Now, the United States District Court for the Southern District of California court has ruled on the trademark question and found that there is no valid trademark claim thanks to "nominative fair use," and also indicated that it would be favorably disposed to fair use defenses on the copyright question.

The estate has two weeks to prove copyright damages and to amend its trademark claims.

It's difficult to see how the Seuss Estate is possibly going to go about demonstrating copyright damages. Given the judge's review of the material and her analysis thus far on the copyright question, the copyright claim has a hell of a hill to climb. The Seuss estate argued that adjudicating the matter of Fair Use on the copyright claim at the motion to dismiss stage was inappropriate because of all the facts required to make that assessment. The judge didn't buy that, largely because the singular claim of harm made by the estate was the claim that it lost out on the opportunity to license the work at all.

As a threshold matter, Plaintiff argues that “while possible in rare instances to decide fair use at the pleading stage, it is inappropriate here, where significant material facts are necessary to make a determination of fair use.” (Opp’n 9.) However, the only genuine fact Plaintiff points to is that “the issue of whether the Defendants’ use . . . will appreciably harm the value of [Plaintiff’s] Works or . . . market simply cannot be made without discovery and further development of the record on this issue.” (Id. at 15–16.) And Defendants point out that Plaintiff’s sole allegation of market harm is that Defendants “usurped DSE’s licensing opportunities.” (Reply 4 (citing Compl. ¶ 32).) Thus, as long as the Court takes Plaintiff’s allegation of market harm as true, Defendants are otherwise correct that “[t]he complaint, and documents sufficiently referenced therein or otherwise subject to judicial notice, are sufficient to enable the Court to evaluate the issue of fair use.” (MTD 6.) In particular, the Complaint itself raises the issue of fair use, (Compl. ¶ 35), and the contents of the two primary books and other relevant works are before the Court and not in reasonable dispute, (RJN Exs. 5, 6).1 Accordingly, the Court concludes that fair use analysis is appropriate on this Motion to Dismiss and addresses each factor in turn.

As a bonus, the judge also acknowledges that mashup art is an emerging medium and states that bending to the claim by the Seuss estate would effectively kill off an entire form of art.

This case presents an important question regarding the emerging “mash-up” culture where artists combine two independent works in a new and unique way. See, e.g., Art Term, Postmodernism, Tate, http://www.tate.org.uk/art/art-terms/p/postmodernism (last visited Apr. 28, 2017) (“Often mixing different artistic and popular styles and media, postmodernist art can also consciously and self-consciously borrow from or ironically comment on a range of styles from the past.”). Applying the fair use factors in the manner Plaintiff outlines would almost always preclude a finding of fair use under these circumstances. However, if fair use was not viable in a case such as this, an entire body of highly creative work would be effectively foreclosed.

In other words, shuttering an entire art form is not the purpose of copyright law at all, hence this sort of Fair Use defense. It's as eloquent a nod to why creativity ought not be stifled in favor of protectionism as I've seen in a court document and should be required reading for any judge ruling on matters of Fair Use.

And so we wait for two weeks to see what, if any, documented claim of harm the Seuss Estate can work up for its copyright claim. I expect we will all be underwhelmed.


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  • identicon
    Christenson, 16 Jun 2017 @ 12:22pm

    Market Harm? No, Benefit...just not ALL OF IT!

    I'm betting that defendants here can show the mashup actually increased interest in Dr Seuss and HELPED the market for his generally wonderful books!

    Seems Dr Seuss estate just wanted ALL OF THE BENEFITS! NO ONE ELSE ALLOWED IN THEIR SANDBOX!

    reply to this | link to this | view in chronology ]

    • icon
      Vidiot (profile), 16 Jun 2017 @ 1:35pm

      Re: Market Harm? No, Benefit...just not ALL OF IT!

      Hold on, now... fair is fair! The Seuss Estate probably stayed up late nights and weekends thinking up all those witty rhymes, and based on the copyright dates, even the as-yet-unborn beneficiaries of the Estate must have worked their prenatal fingers to the bone drawing all those whimsical characters. They richly deserve the spoils of the good Doctor's mighty labors.

      (I'd insert a Seussian parody here, but everything I come up with seems to rhyme with "Nantucket"...)

      reply to this | link to this | view in chronology ]

      • identicon
        Anonymous Coward, 19 Jun 2017 @ 7:53am

        Re: Re: Market Harm? No, Benefit...just not ALL OF IT!

        I think once the person who created the work DIES, any copyright of that work dies along with him or her and it then goes into the Public Domain. In no way should others be allowed to now make money off of it for pretty much forever it seems these days. Very little it seems now goes into the Public Domain.

        reply to this | link to this | view in chronology ]

  • icon
    Mason Wheeler (profile), 16 Jun 2017 @ 12:34pm

    With all these cases we see about estates causing trouble for people building on the existing work, does anyone else get the feeling that the portion of copyright that covers derivative works should terminate at the death of the author, even if other protections linger?

    reply to this | link to this | view in chronology ]

    • identicon
      Anonymous Coward, 16 Jun 2017 @ 1:31pm

      Re:

      That's a sensible idea, but it's much more likely that the rights of the dead will be further increased to encourage them to create more.

      reply to this | link to this | view in chronology ]

    • identicon
      Anonymous Coward, 16 Jun 2017 @ 7:34pm

      Re:

      That is a great idea. It shouldn't affect the existing works, but could enhance their sales by continued attention and new generations of fans based on new work availability.

      reply to this | link to this | view in chronology ]

  • icon
    Unanimous Cow Herd (profile), 16 Jun 2017 @ 12:54pm

    I wonder what the good doctor would say about this if he were still around

    One troll, two troll
    Rhyme in your work
    And we'll sue troll.

    I didn't know the author personally, but I'm pretty sure he would have appreciated the mashup.

    reply to this | link to this | view in chronology ]

  • icon
    orbitalinsertion (profile), 16 Jun 2017 @ 1:07pm

    Is it your job to act as a proxy for Mike to hate on artists?


    (I realize i can't even say this with a straight face anymore.)

    reply to this | link to this | view in chronology ]

  • icon
    Roger Strong (profile), 16 Jun 2017 @ 1:26pm

    Mashup art is an emerging medium...

    ...And Dr. Seuss Enterprises doesn't want someone else's mashup to hurt their negotiations to merge their universe with either DC or Marvel's.

    With pot being legalized, the market for a Dr. Seuss / Deadpool mashup is only getting larger.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 16 Jun 2017 @ 5:11pm

    Don't you just love it when copyright law is actually enforced?

    reply to this | link to this | view in chronology ]

  • identicon
    Pixelation, 16 Jun 2017 @ 10:10pm

    Nice to see the Snooches losing.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 17 Jun 2017 @ 2:26am

    Misread the headline

    I misread the headline at first to mean that they accidentally destroyed their IP rights through a spurious lawsuit. Boy that would be great if it was an established norm. How much more careful their lawsuits would be if their IPs were made of glass.

    reply to this | link to this | view in chronology ]


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