ComicMix Suffers Setback in Star Trek/Seuss Mashup Lawsuit

Revoking part of an order she handed down this summer, federal Judge Janis L. Sammartino ruled December 8 that Dr. Seuss Enterprises gets to engage both copyright and trademark claims in a lawsuit against ComicMix for a crowd-funded book project titled Oh, The Places You’ll Boldly Go!

The litigation began last November, during a Kickstarter campaign to fund Oh, The Places You’ll Boldly Go!, featuring the writing of David Gerrold, the art of Ty Templeton, and the editorial skills of ComicMix’s Glenn Hauman, Dr. Seuss Enterprises (DSE) filed suit for damages claiming the project infringed their copyright and trademark on Dr. Seuss’ Oh the Places You’ll Go!

The judge had dismissed the trademark infringement portion of the claims in June (“ComicMix Gains Partial Victory in Dr. Seuss Lawsuit Over Literary Mash-Up”), however, The Hollywood Reporter story “Lawsuit Over Mashup of ‘Star Trek’ and Dr. Seuss Gets Past Alpha Quadrant” said the judge has considered an amended complaint and is allowing all the claims to move forward including one for unfair competition. (Here’s the full opinion.)

The biggest difference is the analysis of trademark and quite notably, what is causing ComicMix some trouble on that front is the font of its title.

Nominative fair use is an important concept in trademark law, referring to certain allowances to use another’s mark for purposes like commentary, criticism, comparative advertising, or parody. The standards were articulated by an appeals court in 1992 in a case where newspapers used toll numbers to conduct polls of The New Kids on the Block.

Sammartino looks at three factors to determine whether ComicMix has an appropriate defense of nominative fair use in this dispute. On two of those factors — whether the product in question is readily identifiable without use of the trademark and whether ComicMix has done acts that would falsely suggest sponsorship or endorsement by Dr. Seuss Enterprises — the defendants get the edge. But ComicMix can’t dispense with the trademark and unfair competition claims thanks to that other factor — whether its use of Dr. Seuss’ mark is more than reasonably necessary to identify it.

The mark in question is the title, “Oh, the Places You’ll Go!”

Judge Sammartino explained:

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 [a precedent case]. 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 reference to Toho is a callback to a case made by Toho, the controller of the Godzilla intellectual property, against a book publisher in 1998.

Glenn Hauman portrayed the decision to ComicMix readers in a positive light, focusing on this part of the ruling — “Judge rules that an illustration style can’t be a trademark”.

Yesterday, Judge Janis Sammartino handed down a ruling in our ongoing case, Dr. Seuss Enterprises v. ComicMix, allowing the case to proceed to discovery while narrowing the allegations in significant ways.

Quoting from the decision:

Plaintiff cited no authority to support its assertion that its general “style” is a protectable trademark. Plaintiff only argues that the book can be subject to both trademark and copyright protection and that distinctive characters can qualify as trademarks. Plaintiff claims the Ninth Circuit has recognized Plaintiff owns trademark rights to “the character illustration of the Cat [in the Hat’s] ‘stove-pipe hat’.” But the illustration of the Cat’s hat is different than the general “illustration style” and non-specific “characters and backgrounds found throughout” Plaintiff’s books, in which Plaintiff asserts trademark rights now. And Plaintiff does not allege trademark rights in any specific character or background image in [Oh, The Places You’ll] Go! The Court is not holding illustrations of specific characters within Go! are precluded from trademark protection, but at this stage of the proceedings and based on the information in front of the Court, the Court finds that Plaintiff’s claimed general “illustration style” is not protectable.

Hauman continued:

…When we speak of an artist’s “trademark style” we’re not actually speaking of a legal trademark, and as such it’s not something that can be legally claimed.

And this means that if, say, Ty Templeton draws a portrait of me looking like I was drawn by Dr. Seuss, there’s not a thing Dr. Seuss Enterprises can do about it.

Of course, this is generally a good thing. This means that no artist can be charged with stealing someone else’s “trademark style” or the way they draw (or for that matter, how they shoot a photograph or a movie). We all learn from each other, we all influence each other— particularly in comics— and we all build on other works and artistic traditions and styles to create new works of art to tell stories.

The judge summed up her decision — “the Court again cannot say as a matter of law that Defendants’ use of Plaintiff’s copyrighted material was fair,” which could be up to a jury if the case goes to trial. She denied ComcMix et al’s motions to dismiss DSE’s claim of copyright infringement, trademark infringement and unfair competition.

[Thanks to Carl Slaughter for the story.]

ComicMix Gains Partial Victory in Dr. Seuss Lawsuit Over Literary Mash-Up

Last November, during a Kickstarter campaign to fund Oh, The Places You’ll Boldly Go!, featuring the writing of David Gerrold, the art of Ty Templeton, and the editorial skills of ComicMix’s Glenn Hauman, Dr. Seuss Enterprises (DSE) filed suit for damages claiming the project infringed their copyright and trademark on Dr. Seuss’ Oh the Places You’ll Go!

ComicMix LLC moved to dismiss the lawsuit, and the motion was partially granted on June 9. U.S. District Court Judge Janis L. Sammartino dismissed the trademark infringement claims, but allowed the copyright claim to proceed, awaiting proof of any harm to the Dr. Seuss estate’s licensing opportunities. The estate has been given two weeks to amend its copyright infringement claims.

As ComicMix reports:

Judge Sammartino found that the book is “a highly transformative work that takes no more than necessary [from Dr. Seuss’s books] to accomplish its transformative purpose and will not impinge on the original market for Plaintiff’s underlying work” She emphasized that the case has broader significance: “…This case presents an important question regarding the emerging ‘mash-up’ culture where artists combine two independent works in a new and unique way. … 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.”

The court decision also explained why it rejected the motion to dismiss the copyright infringement claim.

In codifying the fair use doctrine, Congress set forth four non-exclusive factors for courts to consider in evaluating whether a particular use of a copyrighted work is fair:

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.

…As it stands in this case, factors one and four — which “…have ‘dominated the case law’ and are generally viewed as the most important factors[,] …currently stand in equipoise. Factor two weighs slightly in favor of Plaintiff [DSE], and factor three is neutral. And although it would appear that the purposes of copyright favor Defendants [ComicMix, et al], that determination is also a close and unsettled call. Ultimately, given the procedural posture of this motion and near-perfect balancing of the factors, the Court DENIES Defendants’ Motion to Dismiss. Specifically, without relevant evidence regarding factor four the Court concludes that Defendants’ fair use defense currently fails as a matter of law.

Doctor Seuss Enterprises has until June 23 to present evidence about the effect on the market for the work whose copyright is allegedly infringed.

ComicMix Moves For Dismissal of Seuss Lawsuit

oh-the-places-youll-boldly-go

File 770 reported in September a crowdsourced appeal for funds to publish Oh, The Places You’ll Boldly Go!, featuring the writing of David Gerrold, the art of Ty Templeton, and the editorial skills of ComicMix’s Glenn Hauman.

While the Kickstarter was in progress, Dr. Seuss Enterprises (DSE) objected, claiming that the project infringed their copyright on Dr. Seuss’ Oh the Places You’ll Go! They filed suit for damages on November 10 in Dr. Seuss Enterprises vs. David Gerrold, et al.

Now ComicMix’s Haumann reports his attorneys have filed a motion to dismiss the Dr. Seuss lawsuit on the grounds that Oh, The Places You’ll Boldly Go! constitutes fair use of any elements of Dr. Seuss books protected by copyright or trademark law.

A GeekNation article by Michael Hinman summarizes the contacts between DSE and ComicMix prior to the lawsuit:

Even at the start of the campaign, ComicMix acknowledged there could be problems moving forward with the book project, telling potential donors “there may be some people who believe that this might be in violation of their intellectual property rights. And we may have to spend time and money proving it to people in black robes. And we may even lose that.”

Just before the crowdfunding campaign was completed, raising nearly $30,000, Dr. Seuss Enterprises made a copyright claim to Kickstarter, forcing the company to remove the campaign and freeze the funds. That prompted an angry letter from ComicMix attorney Booth just before Halloween.

In that letter, Booth demanded the Seuss people to reinstate the campaign, especially since Kansas City-based Andrews McMeel Publishing had agreed to publish the book, and rush it for a Christmas release.

“Also anticipating Christmas sales, one vendor ordered 5,000 copies of the book as long as printing and shipping are completed by Nov. 11, but ComicMix expects to lose that order because, thanks to your notice, Kickstarter is withholding all $29,575 that the campaign raised, so ComicMix cannot use that money to cover the printing costs as intended.”

ComicMix’s response to the suit and its motion to dismiss are analyzed by Janet Gershen-Siegel at Semantic Shenanigans (“Seuss v. Gerrold, et al – Getting the Ball Rolling”). Her post includes links to copies of all the defense’s filings.

The Memo of Points and Authorities filed with the court outlines the defense’s arguments for dismissal. Here are two excerpts illustrating their main justifications. The memo itself also contains highly-detailed narrative comparisons showing the differences between the original work and ComicMix’s takeoff.

Introduction: Oh, the Uses Seuss Sues!

Defendant ComicMix LLC (“ComicMix”) respectfully moves the Court for an order dismissing this matter for failure to state a claim pursuant to Fed. R. Civ. P. 12(b)(6), on the grounds that ComicMix’s allegedly infringing book constitutes fair use of any elements of Dr. Seuss books protected by copyright or trademark law.

This case presents a simple question: May an author’s estate use the courts to stymie publication of a book that makes critical, parodic use of the author’s books? On the facts alleged, the answer must be no. The Copyright Act, the Lanham Act and the First Amendment fully protect ComicMix’s right to comment and build on Dr. Seuss’ works. The law does not place his beloved books above parody, beyond critical commentary, or past the reach of cultural transformation and nominative use….

Copyright law limits the scope of DSE’s claims.

DSE alleges that Boldly infringes its copyrights to Go!’s title, “story arc,” and characters and illustrations from Go!, Horton Hears a Who, How the Grinch Stole Christmas! (“Grinch”), The Lorax, and The Sneetches and Other Stories. Doc. 1 ¶ 26. Yet copyright covers few of those elements, and Boldly infringes none….

DSE declines to identify any such well-delineated character, leaving its allegation of character “misappropriation” wholly speculative. No character in Go! meets this standard. The one character to appear more than once (except perhaps some elephants, who do not reappear in Boldly) is the protagonist, a walking cipher. The boy has no name or dialogue and few distinguishing characteristics beyond his yellow knit-cap and onesie. This lightly sketched everyman lacks the “distinctive character traits” required to be protectable by copyright. Towle, 802 F.3d at 1020.  Further, Boldly does not copy any Dr. Seuss character or its traits. In the boy’s place is the Enterprise’s captain, wearing the uniform of Star Trek commanding officers (a gold shirt with an arrowhead insignia over the left breast, and black trousers) or a spacesuit, or on one page, a green tunic like Captain Kirk sometimes wore. His spiky, adult hairstyle is not covered by a child’s knit-cap. Boldly’s wholly distinct characters do not infringe on any protectable character trait of the original. Nor does Boldly infringe on Go!’s simple, episodic storyline. See RJN Ex. 6. In Go!, the boy decides to leave town. He joins a balloon race, taking the lead before getting stuck in a tree. He lands in a “Slump,” comes to a place with unmarked streets, and has a hard time deciding where to turn. In confusion, he races down the road to “The Waiting Place,” where “everyone is just waiting.” He escapes to watch a musical performance by a “Boom Band”, then to join a parade of banner-flying elephants, and then to play on a convoluted ball-field. His athletic skill makes him world-famous, but he is again left all alone to face more scary things. Copyright does not protect the general plot line of an adventurer persevering as he faces both emotional and physical highs and lows. “The copyright of a story covers what is new and novel in it.” Bradbury v. CBS, 287 F.2d 478, 485 (9th Cir. 1961). “General plot lines are not protected by copyright law.” Cavalier v. Random House, Inc., 297 F.3d 815, 823 (9th Cir. 2002) (internal citations omitted). “Familiar stock scenes and themes that are staples of literature are not protected.” Id.

Any story element in Go! that is not too generic to warrant copyright protection is not copied in Boldly, which depicts no confusing streets, balloon races, Slump, Waiting Place, music, elephants, or parades. The Go! boy’s one idiosyncrasy, a talent for playing an unusual multi-player sport, also does not recur in Boldly. Instead, Boldly is filled with allusions to episodes of the original Star Trek series. Any similarities between the plot lines of Boldly and Go! are generic and unprotectable.

The judge has allowed the plaintiff until January 19 to file its opposition to the motion to dismiss. Thereafter, ComicMix will have three weeks to file any reply. And the judge set a hearing for March 16, 2017.

Pixel Scroll 11/13/16 ROFLMPO – Rolling On File, Laughing My Pixels Off

(1) LITIGATION. File 770 reported in September about the Kickstarter appeal raising funds for Oh, The Places You’ll Boldly Go!, featuring the writing of David Gerrold, the art of Ty Templeton, and the editorial skills of ComicMix’s Glenn Hauman.

The holders of the Dr. Seuss rights have objected and sued for damages reports TMZ.com in “Oh, The Lawsuits You’ll See”.

Dr. Seuss‘ stories should NOT be rehashed with Vulcans or Klingons in the mix — at least not without permission … according to a new lawsuit.

The Doc’s camp just filed suit against ComicMix, which thought it’d be neat to make a ‘Star Trek‘ version of “Oh, the Places You’ll Go!” In the docs, obtained by TMZ, the Seuss’ co. says ComicMix fused elements of the classic book with their own story, and even jacked actual prose from the original … all without asking.

They say ComicMix knew damn well it was doing the Doc dirty because its Kickstarter page for the project mentioned they might have to go to court to prove their work was parody and not a violation of copyright. They acknowledged, “we may even lose.”

Team Seuss is suing for damages. A lawyer for ComicMix tells us they love Dr. Seuss and hope to resolve the suit amicably.

(2) NATIONAL GEOGRAPHIC MARS SERIES. Don’t wait until the November 14 premiere. Stream the Mars premiere now.

The year is 2033, and humanity’s first crewed mission to Mars is about to become a reality. As a clock counts down the final 90 seconds to landing, an expert crew of astronauts endures the final harrowing moments before touching down on the red planet. Even with the best training and resources available, the maiden crew of the Daedalus spacecraft must push itself to the brink of human capability in order to successfully establish the first sustainable colony on Mars. Set both in the future and in the present day, the global miniseries event MARS blends feature film-caliber scripted elements set in the future with documentary vérité interviews with today’s best and brightest minds in modern science and innovation, illuminating how research and development is creating the space technology that will enable our first attempt at a mission to Mars.

(3) TAOS TOOLBOX. Walter Jon Williams announced today the “Most Famous Author in the World” George R.R. Martin will be joining the Taos Toolbox faculty as a special guest. The Taos Toolbox Writers Workshop takes place June 18-July 1, 2017.

George was our guest for the very first Taos Toolbox, and now he’s consented to return for our tenth anniversary. We’re pleased and flattered to have him, even if it’s only once per decade.

The other faculty are Walter Jon Williams, Nancy Kress, with special lecturers Steven Gold and E.M. Tippets.

(4) DINO DUTY. Tastes great? Less filling?  “Jurassic World 2 Will Be Both a Jurassic World Sequel and Jurassic Park 5, Says J. A. Bayona” at CinemaBlend.

Earlier today, I had the great pleasure of sitting down one-on-one with J.A. Bayona in promotion of his upcoming movie A Monster Calls, and it was towards the end of our chat that we talked a bit about his next project. I posed the aforementioned question to the filmmaker, and he not only enjoyed the challenge of the query, but explained why his installment in the dinosaur franchise will be both Jurassic World 2 and Jurassic Park 5.

(5) TOVAR OBIT. Lupita Tovar, the Mexican actress who starred in the 1931 Spanish-language version of Dracula that was shot at the same time on the same sets as the Bela Lugosi picture has died at the age of 108 according to The Hollywood Reporter.

… Lupita returned to Mexico to great acclaim to star in Santa (1932), her country’s first talking film, and later appeared in The Invader (1936) opposite Buster Keaton, Blockade (1938) with Henry Fonda, South of the Border (1939) with Gene Autry and The Westerner (1940) with Gary Cooper….

Lupita Tovar’s daughter is Susan Kohner, who earned an Oscar nomination for portraying the young woman who rejects her black mother (Juanita Moore) and tries to pass herself off as white in the 1959 Douglas Sirk melodrama Imitation of Life.

Other survivors include her grandchildren Chris Weitz and Paul Weitz, Kohner’s sons, who shared an Oscar screenplay nomination for About a Boy (2002).

Tovar was married to Czech-born producer and Hollywood agent Paul Kohner, who represented the likes of Greta Garbo, John Huston, Lana Turner, Ingmar Bergman, Yul Brynner, David Niven, Billy Wilder and Charles Bronson, from 1932 until his death in 1988.

(6) DRACULA EN ESPAÑOL. For those unfamiliar with the movie, here’s some background: “Night Shift: 6 Reasons to Watch Universal’s Spanish-language Dracula (1931)”.

They worked like children of the night, shooting from sundown to sunrise. Directed by a man who didn’t know a word of their language, the Spanish-speaking actors filmed an obscure alternative version of what would become one of the most famous movies of all time.

“Above all,” explains Lupita Tovar, the film’s heroine, “we wanted our version to be the best.” And, in many ways, it is.

For those of us who’ve watched and rewatched the Lugosi version, the simultaneously shot Drácula opens up a mind-boggling parallel universe—one with much improved camerawork and often more convincing acting.

This is a lavish, artful film in its own right, so much more than the “bonus feature” it’s listed as on home releases. If I haven’t hooked you already, here’s why any movie buff or horror fan needs to see Drácula.

(7) TODAY IN HISTORY

  • November 13, 1933 The Invisible Man premieres. Did you know: in order to achieve the effect that Claude Rains wasn’t there when his character took off the bandages, James Whale had him dress completely in black velvet and filmed him in front of a black velvet background.
  • November 13, 1940 — Walt Disney’s Fantasia premiered at the Broadway Theater in New York; first film to attempt to use stereophonic sound.

(8) TODAY’S BIRTHDAY GIRL

  • Born November 13, 1955 — Whoopi Goldberg

(9) TODAY’S BIRTHDAY BOY

  • Born November 13, 1947 – Joe Mantegna, who appeared in both the stage production and the Disney movie of Ray Bradbury’s Wonderful Ice Cream Suit.

(10) NORTHBOUND SEASON 2. Production has begun on GeekNation sci-fi series Northbound Season 2. Watch the Season 2 Teaser.

Northbound is a post-apocalyptic webseries set in a North American wilderness soon after a mysterious, cataclysmic event killed millions in a single day. Season 1 of the series is available to view for free exclusively through the entertainment website, GeekNation. The filmmakers are comprised of a Michigan and Los Angeles-based team that is dedicated to shooting in Michigan, and contributing to the long-term growth of the Upper Peninsula region.

Season 1, and the upcoming Season 2 of Northbound are designed as a prelude series to a feature film titled Northstar. Taken as a whole, The Northstar Saga will tell the story of a father as he works to discover why his daughter was one of the rare survivors to be rendered comatose after The Cataclysm. His journey will put him into contact (and inevitable conflict) with others that are struggling to rebuild lives, communities and an overall sense of purpose in a hazardous new world.

northbound-northtar

(11) PHILOSOPHICAL APPROACH. Ethan Mills reviews the movie Arrival (beware copious spoilers) at Examined Worlds.

Director Denis Villeneuve has created a beautiful adaptation, from the striking cinematography to Jóhann Jóhannsson’s unnervingly sublime score. Amy Adams portrays the quiet strength and struggle of the main character, Dr. Louise Banks. I think I speak for most of my fellow college professors when I say it’s great to see a college professor depicted in a movie as a full human being rather than a pompous jerk, an emotionless egghead, or the absent-minded comic relief.

(12) STYLING ALIENS. In the Washington Post, Stephanie Merry takes the aliens in Arrival as a cue to look at how Hollywood has looked at aliens in sf films of the past 40 years, including Close Encounters, Mars Attacks! and Edge of Tomorrow. Beware mild spoilers in “The aliens in ‘Arrival’ are stunning. How do they compare to other film creatures?”

The aliens in “Arrival” are spectacular, and that’s no small feat. In most “first contact” movies, the otherworldly creatures almost always let us down. Either they’re predictable — you know, little green men speaking an echoey, indecipherable language or stereotypical “Greys” with the big eyes and the egghead — or they look fake.

Carlos Huante tested many iterations with director Denis Villeneuve before they settled on the final design for “Arrival,” which came out this week and follows a linguist (Amy Adams) who’s trying to understand what these visitors want. The creature artist first considered a very conventional look but also tried out beings that were more like stone creatures; ones composed of stacks of paper; and egg-shaped critters ambling around on spider legs.

(13) ROLL ‘EM. Victoria Silverwolf at Galactic Journey finds fiction sometimes parallels Hollywood in “[November 13, 1961] (Un)moving Pictures (December 1961 Fantastic)”.

Back to the movies.  Point, by John T. Phillifent (perhaps better known under his pen name John Rackham), deals with a group of filmmakers who travel to Venus to make their latest blockbuster.  The proposed feature involves beautiful female Venusians, and seems intended to provide a bit of satire of silly science fiction movies such as Queen of Outer Space.  Although the author’s description of Venus is a bit more realistic than that, it’s still not terribly plausible.  The Planet of Love is a very dangerous place, inhabited by all kinds of deadly creatures, but its atmosphere is breathable, and humans can walk around on its hot, steamy surface without spacesuits.  The plot deals with a pilot who agrees to take the film crew into the Venusian wilderness.  As you might expect, things quickly go very wrong, and the story turns into a violent account of survival in a hostile environment.  All in all it’s a fairly typical adventure yarn, competent but hardly noteworthy.  Two stars.

[Thanks to Martin Morse Wooster, and John King Tarpinian for some of these stories. Title credit goes to File 770 contributing editor of the day John Winkelman.]