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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Filed Under: copyright, dr. seuss, fair use, fonts, licensing, muppets, parody, star trek, trademark
Companies: comicmix, dr. seuss enterprises
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TLDR this article
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.
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He can keep trying to hide but I’m going to ask him about this until he answers.
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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.
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Copyright is about to get much, much worse.
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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.
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(Any exclamation marks omitted for fear of personal safety.)
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I am happy to see the estate prevail!
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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.
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Re: Re: Re: I am happy to see the estate prevail!
Wouldn't that be interesting to see him come back, see what they have done, & sue them for destroying his legacy.
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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.
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'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.
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So you pronounce Seuss
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It’s US-SUE
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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?
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I used to be all over copyright but this kind of thing is putting me off.
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