Back in 2016, we noted a dispute on foot between Dr Seuss Enterprises (DSE) and ComicMix. DSE had commenced proceedings in the District Court in San Diego, California against ComicMix for trade mark and copyright infringement and unfair competition. ComicMix had raised money for a book called Oh, The Places You’ll Boldly Go which is a Dr Seuss/Star Trek mash up. The book has the look and feel of a Dr Seuss book (a children’s adventure filled with wacky drawings and tight rhyming) but uses concepts from the classic television show, Star Trek.
But in the meantime, Fox Television’s defence of the title of one of its television shows was handed down as a binding precedent. That case was to do with Fox Television’s show Empire, which was concerned with a feuding family in the music industry. Empire Distribution, a record label, sued Fox for trade mark infringement. Fox prevailed ultimately in the 9th Circuit Court of appeals.
As a consequence, the court in the ComicMix case has now held that ComicMix is not liable for trade mark infringement. The reason is that DSE could not show any evidence that the title misleads as to the source of the work.
The issue of copyright is still on foot in court, but it is very likely that ComicMix will be able to rely on the fact its work is a highly transformative work and therefore falls within the fair use exemption, notwithstanding a failure by ComicMix in December 2017 to dismiss the copyright claim. That motion to dismiss failed because DSE was deemed to have adequately pleaded potential market harm, which when balanced against other fair use factors precludes finding of fair use for defendants as matter of law. In considering this argument, the court looked to the four fair use factors: (1) the purpose and character of the use, including whether the use was commercial in nature and whether the use was transformative; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion of the work used; and (4) the effect of the use on the potential market for the work. The court had to work out if it could presume market harm in this case — which the court concluded it could not, because the comic was transformative. DSE licensing out its concepts for use by third parties. The court found that DSE’s licensing program allowed others to publish books based on characters and elements from the Dr. Seuss books (a concept we find most unlikely since it would undermine the creative integrity of DSE’s concepts). Even if those books were not mash-ups like ComicMix’s , the court found that there was a potential market for mash-ups based on plaintiff’s past licensing programs and that this market “would not be unlikely.” The fourth factor therefore weighed in favour of DSE, as ComicMix’s production of the comic posed a potential harm to the market for plaintiff’s derivative works.
But, the court last year noted that ComicMix’s book is a” highly transformative work that takes no more than necessary to accomplish its transformative purpose and will not impinge on the original market for [DSE’s] underlying work.”
Missing still from the dispute are CBS (a television broadcaster) and Paramount Pictures (a motion picture studio), which together own rights in Star Trek. There is a precedent for both of these companies becoming involved: both companies sued the producers of a movie called Axanar, which had raised $1million via Kickstarter and Indiegogo. Axanar was to be based in the Star Trek universe. The allegation was copyright infringement. But there is a big difference between a substantive motion picture and a kids’ book with a limited circulation which raised $29575.
Oh, the Places You’ll Boldly Go has this notice on its Kickstarter page:
(But ComicMix continues its foray into mash-ups with Dr Cthulittle, a mix between Dr Doolittle and H.P. Lovecraft.)