How The Muppets And A Font Choice Hurt The Star Trek / Dr. Seuss Mashup In Court

from the one-fish-two-fish-we-CAN-sue-fish dept

A little over a year ago, we wrote about an unfortunate case in which Dr. Seuss Enterprises decided to sue for copyright and trademark infringement over an attempt to create a (pretty funny) parody that mashed up Dr. Seuss with Star Trek, called "Oh, The Places You'll Boldly Go." As we noted at the time, this seemed to be a clear parody (which is protected by fair use). It was clearly transformative, and was commenting on the differences between Trek and Seuss. We also noted some extraordinary (and extraordinarily silly) claims in the lawsuit. The defendants in the case, Comicmix, won a round earlier this year, when the judge tossed out the trademark claims. However, he let the copyright claims stand for the time being. After, Dr. Seuss Enterprises filed an amended complaint on all the claims, leading to a new motion to dismiss.

Unfortunately, in a new ruling, the court has again denied the fair use claims on copyright, and also denied a new motion to dismiss on trademark grounds, meaning the case will move forward. And it's in large part due to the Muppets and a font. I only wish I were joking. You can read the ruling here. Since the court had previously done a copyright fair use four factors analysis, it mostly just points back to its previous ruling on the matter, but only adjusts its analysis of factor four -- the "effect of the use upon the potential market." The other factors split evenly (factor one in favor of Comicmix, factor two in favor of Seuss, factor three favoring neither).

So this ruling turns on what many courts (perhaps incorrectly...) believe is the most important factor: does this use harm the market for the copyright-covered work. Here, the discussion turns on whether or not this would undermine the Seuss Estate from licensing out its copyrights to someone to do a Star Trek mashup. Comicmix's argument is basically "come on, no one's doing that." Seuss's argument is "hey, look, we've done other mashups before"

Plaintiff states it has published “books that are derivative of [Go!]” such as Oh! The Places I’ll Go; Oh, Baby! Go, Baby!, and more.... Plaintiff states it also publishes a series of “books written and illustrated by other authors and artists that are based upon and incorporate the Dr. Seuss Intellectual Property” such as Oh, The Things You Can Do That Are Good for You!, There’s No Place Like Space!, Oh, The Pets You Can Get!, and more.... Plaintiff states “[n]otably, ‘Dr. Seuss’ does not appear on any of the [book] covers, and all of the covers include names of other authors, despite the fact that these works are authorized by DSE and are recognized by the public as Dr. Seuss works.”...

Defendants argue Boldly cannot cause any relevant market harm because Plaintiff’s licensed collaborations listed in the FAC are not works of Boldly’s type.... Defendants argue Plaintiff has not licensed and would not license “any derivate work that creates a hybrid of Dr. Seuss’s books with existing characters and imagery from a third party’s entertainment franchise. The first amended complaint does not give rise to a plausible claim that Boldly would cause any harm in any transformative market.” ... Defendants distinguish their mash-up from Plaintiff’s licensed derivatives and argue none of the books published as part of Plaintiff’s co-branding licensing program “are crossover works that integrate pre-existing characters or imagery from another entertainment franchise, such as Star Trek, with those of Dr. Seuss.”

The Seuss folks responded to this by pointing out that... they'd done a Muppets mashup with Seuss. Muppets!

Plaintiff argues it has in fact collaborated with others and created crossover works, such as through the creation of 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.”

That apparently is enough to convince the court that Seuss might possibly, some day, find a market to produce mashup Seuss / Star Trek works:

Although these books may not be mash-ups like Boldly, there is a potential market for a literary mash-up involving Plaintiff’s books; such a market would not be unlikely based on Plaintiff’s past licensing programs. Defendant’s production of Boldly may result in an adverse impact on Plaintiff’s derivative market and the Court therefore finds there is potential harm to the market for Plaintiff’s derivative works. Therefore, this factor weighs in favor of Plaintiff.

With the amended complaint, the court also revisits the trademark claim... and allows it to move forward as well, reversing its earlier ruling. It finds that Seuss's trademark is valid here, and then says that Comicmix's use does not meet the standards for nominative fair use (in trademark law, that basically means did you just use the trademark to identify the thing that you're talking about). The real failing by Comicmix? Going a bit overboard in using the identical font in their title. Really:

Defendants not only use the words “Oh! The Places You’ll Go!” in the title of Boldly but also use the exact font used by Plaintiff. The look of the lettering is unquestionably identical on both books, down to the shape of the exclamation point. This situation is similar to that in Toho. 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). The Court concludes Defendants have not satisfied this nominative fair use factor.

I find this... puzzling. Again, the use of the font is the same issue as the use of the other Seussian design: to evoke the world of Seuss in which to land their parody.

So, Comicmix is 0-for-2 at this point -- and have the Muppets and a font to blame. Ouch.

This by no means that the case is over. It can still go through discovery and summary judgment and, then possibly a trial. And it's still possible that Comicmix could win -- but it's also going to be expensive to keep going.

In the meantime, I'm still left wondering why this is a good move by Dr. Seuss Enterprises. It's a beloved brand acting like a bully, pissing off tons of fans. Why not just let the Star Trek / Dr. Seuss fans have their fun for a bit and use the goodwill to sell more of its own books. I mean, I imagine the temptation among many people who would buy the mashup book would be to also get a copy of the Seussian original if they don't already own it. But, alas, in this day and age, so many organizations feel they have to go legal against everyone.


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  • icon
    Ryunosuke (profile), 19 Dec 2017 @ 11:04am

    TLDR this article

    We will take you to court.
    we will also claim our tort.
    You cannot use our Trek.
    Without cutting us a big fat cheque.

    You cannot claim Fair Use.
    for our definition is very loose.
    We have thrown money at our Judge.
    On our claims, we will not budge.


    We will continue to sue.
    Even if it looks like a zoo.
    We will have our money.
    Because rhyming is our honey.

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

  • This comment has been flagged by the community. Click here to show it
    identicon
    Anonymous Coward, 19 Dec 2017 @ 11:44am

    Hey Masnick- you still haven’t told us: to watch Silicon Valley did you subscribe to HBO or did you pirate it?

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

  • icon
    Ninja (profile), 19 Dec 2017 @ 11:50am

    So basically what they are saying is that because some copyright owner might produce some parody with something someday then there's no fair use in parodies.

    Wouldn't that be illegal as hell and some sort of artistic prior restraint because fuck, anything you may create may also be created by someone. So, really, let's not producing anymore art and science because a fucking arts, science and whatever because somebody that has infinite copyrights may have the same idea.

    No, seriously, copyright has to be scrapped, forbidden and avoided like the plague.

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

  • icon
    That One Guy (profile), 19 Dec 2017 @ 12:46pm

    Nah

    I mean, I imagine the temptation among many people who would buy the mashup book would be to also get a copy of the Seussian original if they don't already own it.

    After what they've done here, think I'd pass.

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

  • icon
    orbitalinsertion (profile), 19 Dec 2017 @ 12:46pm

    Oh, the sales you could have made

    (Any exclamation marks omitted for fear of personal safety.)

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

  • icon
    That Anonymous Coward (profile), 19 Dec 2017 @ 2:12pm

    I am happy to see the estate prevail!

    Now as soon as they can bring Dr. Seuss back from the DEAD he can enter into negotiations with Paramount to perhaps produce a Seussian Star Trek book.

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

    • icon
      crade (profile), 19 Dec 2017 @ 4:54pm

      Re: I am happy to see the estate prevail!

      I am sure if his estate could bring him back from the dead they would not.

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

      • icon
        That One Guy (profile), 20 Dec 2017 @ 3:10am

        Re: Re: I am happy to see the estate prevail!

        Oh I dunno, if they thought they could restart the clock on the copyright timer easier that way than having to deal with the 'time to buy a few politicians' season that rolls around any time it starts looking like something might actually enter the public domain they'd probably at least consider it.

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

        • icon
          That Anonymous Coward (profile), 20 Dec 2017 @ 3:36pm

          Re: Re: Re: I am happy to see the estate prevail!

          I'm not sure, they might be pissed to be out of a job.
          Wouldn't that be interesting to see him come back, see what they have done, & sue them for destroying his legacy.

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

  • icon
    crade (profile), 19 Dec 2017 @ 4:16pm

    This is the problem with estates inheriting this stuff. Any successful work inevitably causes spoiled brats that don't do anything but abuse the author's work and tarnish their good name with immoral lawsuits

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

  • identicon
    Anonymous Coward, 19 Dec 2017 @ 6:17pm

    I have no sympathy for the defendants in this case because they are doing exactly what that moron, Alec Peters tried to do with his "so-called" alleged "Star Trek Axanar" movie. You cannot, and I repeat, CANNOT take someone else's copyrighted works, produce professional items using that copyrighted content, and use it to profit and then call it fair use.

    I hope DSE successfully sues Comicmix's company right out of existence because they did violate DSE's copyright, they knew what they were doing is wrong, and they tried to claim "fair use" in order to wiggle free of this lawsuit. The judge, simply put, was not buying into Comicmix's argument.

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

    • icon
      crade (profile), 19 Dec 2017 @ 8:46pm

      Re:

      Exactly.. This is why family guy and galaxy quest and the simpsons and spaceballz and the scary movie franchise and spinoffs and etc etc ad nauseam were never made. Just can't do that shit. Not possible at all.

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

    • identicon
      Anonymous Coward, 19 Dec 2017 @ 9:18pm

      Re:

      Have you ever heard of the word cosplay? Look it up, then maybe try a second draft of your crap post.

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

    • identicon
      Slightly Rumpled, 19 Dec 2017 @ 10:31pm

      Re:

      Considering 1/3 of your homily contained trademarked words I'd be watching out for the Karma bus if I were you. You can't use other's content/property like that!

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

    • icon
      That One Guy (profile), 20 Dec 2017 @ 3:07am

      'They made my stuff look worse in comparison' is not a valid legal argument

      Last I checked commercial use was one of the things to be considered in determining fair use, and even commercial use doesn't automatically disqualify something as fair use.

      Likewise a requirement that any fair use must be below the quality of the original simply doesn't exist to my knowledge, though you are of course welcome to present your evidence to the contrary.

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

  • identicon
    Anonymous Coward, 19 Dec 2017 @ 7:35pm

    So you pronounce Seuss

    as SUE US?

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

    • identicon
      Anonymous Coward, 19 Dec 2017 @ 9:48pm

      Re: So you pronounce Seuss

      Nope-
      It’s US-SUE

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

    • icon
      The Wanderer (profile), 20 Dec 2017 @ 4:43pm

      Re: So you pronounce Seuss

      Technically, although most people probably pronounce it as "Sue-ss", I'm given to understand that - as spoken in the name of the original artist - it would actually have been pronounced "Zoyss".

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

    • identicon
      Talmyr, 21 Dec 2017 @ 1:39am

      Re: So you pronounce Seuss

      I hope someone at Viacom/CBS/whoever sues Dr Seuss Enterprises over their obviously bogus and infringing use of the word "Enterprise".

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

  • icon
    John85851 (profile), 20 Dec 2017 @ 10:03am

    "In the meantime, I'm still left wondering why this is a good move by Dr. Seuss Enterprises."
    This is the same move that the NFL uses for the words "Super Bowl":
    The companies charge money to license out their property, whether it's a Seuss book or "Super Bowl". But then someone comes along and makes an unlicensed version. The company almost has no choice but to sue, if only to protect the investments from the licensees. After all, if anyone could make a mashup/ parody/ satire version, then why should people pay for a license?

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

    • identicon
      Wendy Cockcroft, 28 Dec 2017 @ 2:28am

      Re:

      Mad idea: stop the bloody rent-seeking! Copyright needs shorter terms and I'm getting so fed up of the nickel-and-diming that I'm finding myself increasingly on the "ban copyright" side of the argument.

      I used to be all over copyright but this kind of thing is putting me off.

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


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