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 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 9/20/16 Grow Scrolled Along With Me, The Pixel Is Yet To Be

(1) SUMMER IN ORCUS HAS LAUNCHED.  A certain T. Kingfisher has released the first chapter of a new serial, Summer in Orcus. Also known as Ursula Vernon, and RedWombat, Kingfisher filled readers in on the schedule…:

I will be posting links here as they go live, never fear! It will be up Tuesdays and Thursdays, and we’re going to try bonus content on Sundays–little snippets about the world of Orcus and so forth–once we’ve had a few weeks to settle in, and I’ll do my best to get an RSS feed working as well for people who don’t check back here frequently. Long-time readers will recognize the start of the story–“Hey! It’s the one with Baba Yaga!”–as having been posted here. Yup, that’s the one, and I finally finished it… I’m all nervous and stuff. This is such a weird little book and I’m still not sure if anyone will like it or if they will throw tomatoes, but by god, I wrote it anyway, and thanks to the awesome people on Patreon, I can offer it free to the world.

And the number of chapters

(Incidentally, I think there will be 34 chapters.)

Each chapter is supposed to run around 2500 words, but there’s a fair amount of fluctuation, just because I didn’t want to break some things off in mid-sentence. So there’s a few short ones and a few reeeeeally long ones. But I suppose we’ll make do.

The story begins this way:

Once upon a time there was a girl named Summer, whose mother loved her very very very much.

Her mother loved her so much that she was not allowed to play outside where someone might grab her, nor go away on sleepovers where there might be an accident or suspicious food. She was not allowed to go away to camp, where she might be squashed by a horse or bitten by diseased mosquitoes, and she most certainly was not allowed to go on the Ferris Wheel at the carnival because (her mother said) the people who maintain the machinery are lazy and not very educated and might get drunk and forget to put a bolt back on and the entire thing could come loose at any moment and fall down and kill everyone inside, and they should probably leave the carnival immediately before it happened….

(2) KICKSTARTER MEETS GOAL. The Kickstarter appeal for Oh, The Places You’ll Boldly Go! passed its $20,000 target. The Seuss/Star Trek parody mashup will be written by David Gerrold, with art by Ty Templeton. File 770 is celebrating by posting this image from the project, courtesy of editor Glenn Hauman.

oh-the-places-tribbles

(3) BUCK ROGERS IN THE 21-AND-A-HALF CENTURY. Two families who once owned the rights to Buck Rogers are involved in a lawsuit over a pitch one made to Syfy, despite it being generally believed the rights are now in the public domain, says The Hollywood Reporter.

Some believe that the fictional space explorer Buck Rogers, created in the 1920s by author Philip Francis Nowlan, is in the public domain. Notwithstanding this fact, Nowlan’s heirs are now on the defensive in a lawsuit that accuses them of breaching contact and diluting trademarks by pitching a “Buck Rogers” pilot to the Syfy Network.

Buck Rogers first appeared in Nowlan’s 1929 novella Armageddon 2419 A.D and became a popular character in comic strips, radio programs and a motion picture series. Nowlan was under contract with John F. Dille’s National Newspaper Service, and when the author died in 1940, his wife fought Dille over intellectual property ownership. In 1942, the lawsuit was settled with Nowlan releasing claims and rights to Dille in exchange for $1,750.

Last year, producer Don Murphy (TransformersNatural Born Killers, League of Extraordinary Gentlemen) wanted to make a film based on Armageddon 2419 A.D, and after receiving an objection from the licensing representative of the Dille Family Trust, he went to court to establish that “Buck Rogers” was in the public domain thanks to a failure to renew the copyright registration. But a Pennsylvania judge decided in March not to entertain the case due to a lack of “actual controversy.”

Meanwhile, the Dille Family Trust is suing the Nowlan Family Trust.

According to the lawsuit, an agent of the Nowlan family met with Syfy representatives this past December. As part of a pitch for a “Buck Rogers” series, the Nowlans provided a “series bible” setting forth characters and descriptions for potential use.

The Dille Family Trust claims that the pitch breached the 1942 agreement, and on Friday, a judge rejected a motion to dismiss the claim on the argument that the release of rights applied only to Nowlan’s late wife.

(4) YOUR BUSINESS. Amanda S. Green’s “It’s A Business” at Mad Genius Club is a good admonition for new writers who still have stars in their eyes about the money they imagine will be rolling in.

But, Amanda, you get those huge advances and you don’t have to work any longer.

Wrong.

And this is where you have to remember that this is a business. Most advances, especially for “new” authors fall in the four-digit range. Yes, some new authors get more but they are the except and not the rule. You don’t get the advance all at one time and you aren’t going to see any more money from the publisher until you have earned out the advance and, believe me, that doesn’t happen very often. How can it when publishers use Bookscan to determine how many books are sold instead of a simple inventory tracker program?

That means you have to make sure you have a way to pay your bills between advances. This is why the vast majority of writers aren’t full-time writers. They have families to feed and are like me. They like having a roof over their heads and food in the fridge. Even if your first book is a success, you don’t know that the second book will be. More importantly, if you are publishing traditionally, you have no guarantee that the readers will remember you two years or more after your first book by the time the second book comes out. Remember, when you publish traditionally, you have no control over when your book is released and you are just one of many the publisher is having to slot into a finite number of slots per month.

(5) VOTE BOTH. Ryk E. Spoor, who has both self-pubbed and been published by Baen, warns about “The False Dichotomies of Publishing”.

Thus, while there are indeed two divisions of publishing, it’s not really a simple matter of choice in deciding which one you want. The only people for whom it is such a choice are those who are so successful that they know that anything they write can be sold to a traditional publisher – people like Stephen King, for example. Such people know that they can even write “niche” books and get them published by a big publishing house because their other, more popular books will pay for these occasional low-profit ventures. Most of us, however, are not and will never be in that category.

Another common false dichotomy is “have no control over your manuscript, or have complete freedom with self-publishing”. While there have been, and probably still are, some publishers with really, really bad editors that will take apart manuscripts for their own entertainment, for the most part publishers aren’t there to dictate how you should write your stuff; after all, if they dictate it all to you, why not just write it themselves? As I have discussed before, the purpose of having editors is to make your work better but still in essence yours.

This points to the falsity on the flip side as well. Sure, you can have complete control of your work, write it and throw it right up on Amazon without anyone saying a word against it. But that’s almost certainly doing your work a terrible disservice. There may, possibly, be a few people who are so very good at separating themselves from their own work that they can honestly and dispassionately examine and edit that work. But I have never met someone like that. You need exterior views, and preferably a viewpoint that doesn’t have a vested interest in agreeing with you that your work is perfect.

(6) MORE WRITING CAREER ADVICE. Here are some tips for getting your novel published during a Skeleton Apocalypse.

(7) ROCKET TO THE MORGUE MOON. So that’s what happened to all the pizza boxes we stuffed in the time machine. Click here.

(8) THE HERMIONE GRANGER BOOKS. Sarah Gailey writes a fascinating analysis of “Hermione Granger: More Than a Sidekick” at Tor.com.

This is something that the Harry Potter fan community has been discussing for years: Hermione drives the story because she has her own story. No one in their right mind would trust 13-year-old Harry Potter with a Time Turner, but Hermione gets one and she deserves it. She dates a celebrity, and she outsmarts Rita Skeeter, and she does those things in the background of Harry’s story. She convinces Harry to be a figurehead in the fight against Voldemort, and she creates Dumbledore’s Army. She schedules the DA meetings, she creates the consequences for DA defectors, she creates the galleons that allow the DA to communicate in code. She researches horcruxes and how to destroy them. She rereads all of Hogwarts: A History. She shows up with the tools and the knowledge and prevents Harry and Ron from standing around looking perplexed while the world ends around them. She saves everyone’s bacon all the time by being smarter and better-prepared than anyone else. Those two boys would be dead a thousand times over without her intervention.

She gets her own story, if you know how to look for it. She has her own narrative that’s completely separate from Harry’s. But does that make her a hero?

(9) TODAY’S BIRTHDAY BOY

  • Born September 20, 1948 – George R.R. Martin

(10) PUPPIES SUBTRACTED. Aaron doesn’t have his own alternate trophies to give out, nevertheless he offers his ”Random Thought – 2016 ‘What Could Have Been’ Hugo Finalists” at Dreaming of Other Worlds.

Location: An alternate, better reality.

Comments: At the outset I want to make clear that this post is not an evaluation of what the 2016 list of Hugo finalists would have been had the E Pluribus Hugo system been in effect for the nomination process. I’ll be posting about that at a later date. What this post is is an attempt to figure out what the 2016 list of Hugo finalists would have looked like had the Sad and Rabid Puppy campaigns never existed. It is, quite simply, an attempt to expunge those votes attributable to the Sad and Rabid Puppy nominators to see who would have been Hugo finalists in their absence. This post is also an attempt to assess the impact Sad and Rabid Puppy campaigns once that information is at hand.

(11) NOWHERESVILLE. The article “Solitude, Space Junk and Sea Monsters: the Eeriness of Point Nemo” begins with an attention-getting question:

Q: What do sci fi pioneer Jules Verne, horror writer H.P. Lovecraft and the Russian space programme have in common?

A: Their overlapping interest in an inhospitable corner of the South Pacific, only recently identified as the remotest part of the world’s oceans – Point Nemo.

Nowhere in the world can you find a place further from dry land than Point Nemo. This oceanic pole of inaccessibility (1) is located at 48°52.6’S 123°23.6’W…..

Decades before Point Nemo was named, and before satellites started raining down, H.P. Lovecraft used these lonely waters as the setting for R’lyeh, a “nightmare corpse city (…) built in measureless eons beyond history by the vast, loathsome shapes that seeped down from the dark stars”.

In The Call of Cthulhu (1928), R’lyeh is described as “a coast-line of mingled mud, ooze, and weedy Cyclopean masonry which can be nothing less than the tangible substance of earth’s supreme terror … loathsomely redolent of spheres and dimensions apart from ours”.

The sunken city is the prison of the giant monster Cthulhu, part octopus, part human, part dragon: “There lay great Cthulhu and his hordes, hidden in green slimy vaults”. His followers pray for his regeneration, repeating the phrase: Ph’nglui mglw’nafh Cthulhu R’lyeh wgah’nagl fhtagn (“In his house at R’lyeh, dead Cthulhu waits dreaming”).

(12) LET’S KEEP IT REAL. There’s yet one more thing against the law in California. “Gov. Brown signs law that cracks down on fake celebrity autographs”.  In a way, you might have expected Gov. Schwarzenegger to have applied his autograph to such a law first….

An autographed collectible sold in California will need to come with a certificate that verifies it’s not a forgery under legislation signed by Gov. Jerry Brown.

Brown signed the bill Friday to crack down on selling items with fake celebrity signatures.

The proposal won the support of actor Mark Hamill earlier this year.

Best known for his portrayal of Luke Skywalker in “Star Wars” films, Hamill often uses his Twitter account to sort out whether something has his genuine signature on it or has been forged.

(13) ORIGIN OF BOOKS. Inspired by the current competition between digital and paper books, the BBC looks back to the mysterious origin of the book.

The evidence is sparse but telling: archaeologists have discovered a few key scraps of papyrus whose text unexpectedly continues from the front to the back, and whose neat margins one might expect to find in a paged book. And that is exactly what these fragments are: they are leaves from the first paged books the world had ever seen. We know that the Romans called this new kind of book the codex (from caudex or tree trunk, because of its similarity to their wooden writing tablets), but how the codex came to be in the first place is shrouded in mystery. The first written mention of the codex appears in the words of a Roman poet named Martial, who encouraged his readers to buy his books in this new, paged format:

“You who long for my little books to be with you everywhere and want to have companions for a long journey, buy these ones which parchment confines within small pages: give your scroll-cases to the great authors – one hand can hold me.”

Written between 84 and 86 CE, Martial’s sales pitch tells us not only that paged books were known of in the First Century CE but also that some of them, at least, were made from a new material called parchment.

(14) ABSTRACT DISNEY. This video by user “2veinte” called Disney Classics 1 is a recreation of classic Disney scenes just done with geometric shapes. It was done for the Disney Channel.

[Thanks to Camestros Felapton, Mark-kitteh, JJ, Johan P, John King Tarpinian, iphinome, Hampus Eckerman, Steven H Silver, and Martin Morse Wooster for some of these stories. Title credit goes to File 770 contributing editor of the day Lis Carey.]