Last week, I wrote a blog about what is rapidly becoming the second biggest copyright infringement lawsuit involving Star Trek in the last year. But this time it isn’t CBS and Paramount doing the suing, it’s Dr. Seuss Enterprises. And the target isn’t a fan film but rather a “mash-up” book that takes the characters, settings, and concepts of Star Trek and presents them in a style inspired by (the plaintiffs say “slavishly copied from”) the classics of Dr. Seuss.
The authors of the mash-up, entitled Oh, the Places You’ll Boldly Go!, include Star Trek “The Trouble with Tribbles” writer DAVID GERROLD and award-winning comic book artist TY TEMPLETON. Together with their publisher, ComicMix, they were sued last November for both copyright and trademark infringement, along with unfair competition, by Dr. Seuss Enterprises, the owners of all the works of Dr. Seuss. This lawsuit is seeking $150,000 in damages per infringement (of which there were multiple instances provided in the filing), for a potential judgment in the MILLIONS! And all of this for a small, grass-roots book project that took in only $30,000 in a Kickstarter last September (pledged money that is now being held by Kickstarter pending the outcome of this case) and has never been published.
(If you’re wondering how the non-publication of a book could cost the copyright owners millions of dollars in damages, well, sit tight. We’ll get to that in part 2.)
Anyway, last month, the judge in the case, the Honorable Janis L. Sammartino of the 9th Circuit Federal Court (yeah, the same court where the Axanar case was filed—but a totally different judge), made a series of significant pre-trial rulings. Among these were the dismissal of the trademark infringement and unfair competition portions of the complaint and declaring that the fair use defense was valid but still “too close to call” (my words, not hers) due to a lack of evidence of financial harm.
Many thought the case was pretty much over, but it wasn’t. So what happens now?
If you’re thinking this is gonna be another one of Jonathan’s long legal blogs, you’re probably right. But I’ll be walking you through it in helpful layperson’s English…and I guarantee you’ll come out of it much better informed. Ready?
After dismissing the two claims of trademark infringement and unfair competition, the judge allowed the plaintiffs two weeks to file an amended complaint to justify reinstating those claims. The new filing was submitted on June 22, and here it is, if you’re curious:
Last Friday, the defense team filed a new Motion to Dismiss, which you can read here if you like:
The defense is trying to convince the judge to re-dismiss the two claims of trademark infringement and unfair competition, and also trying again to dismiss the copyright infringement claim…thereby ending the lawsuit completely.
So now the judge must rule again. Will things be different this time? Will the entire case be dismissed? Or will the mash-up authors be back to dealing with three complaints and not just one?
To understand where the case is at the moment (as we await the judge’s ruling on this new motion to dismiss), it’s important to understand what has already happened. But first, I need to dispel a couple of misconceptions that are spiraling around social media, some from members of the supportive side, others by members of the detracting side.
Not a parody
Many supporters (along with the authors and publisher) initially believed the mash-up to qualify as a parody. And if true, then it would likely have been “game over” for the plaintiff, as most parodies are protected speech under the First Amendment and can be successfully defended against infringement lawsuits by claiming “fair use” (more on that shortly).
The judge, however, decided that a “mash-up” itself was NOT automatically a parody by definition. Here’s what she said (don’t worry, I’ll translate after):
…a “parody ‘may loosely target an original’ as long as the parody ‘reasonably could be perceived as commenting on the original or criticizing it, to some degree.’
In the present case, Defendants’ work is most appropriately termed a literary and pictorial “mash-up” (defining term as “something created by combining elements from two or more sources: such as specific “characters or situations”). Such works may, of course, also be parodies when they juxtapose the underlying works in such a way that it creates “comic effect or ridicule.”
However, there is no such juxtaposition here; Boldly merely uses Go!’s illustration style and story format as a means of conveying particular adventures and tropes from the Star Trek canon. And although Defendants argue generally that “Boldly uses Dr. Seuss’s own works in service of a group-oriented counterpoint to the Go! individualist ideal,” the Court cannot conclude that such a “parodic character may reasonably be perceived.”
Wake up! (Yeah, that was kinda dry, wasn’t it?)
In other words, the ComicMix folks aren’t really commenting on or criticizing Dr. Seuss and/or Star Trek. They’re just putting the two properties together into a new artistic presentation. So…mash-up? Yes. Parody? No.
And thus, the one thing which could have stopped this lawsuit on a dime was now off the table. So what WAS still on the table?
Many detractors (both of this mash-up and also of Axanar before it) hold in their minds the misconception that copying is against the law…period. End of sentence. End of lawsuit. Pay the penalty and be gone with thee!
Not so fast.
Copyright protections are of course important, but so too is the right of freedom of expression in America. And so the First Amendment of the U.S. Constitution crashes directly into copyright law! If certain things are forbidden to say in certain ways without first getting permission, then what happens to free speech? If someone is exercising their right to protest and disagree with, say, a TV show—and is forbidden from showing any portion of that TV show as part of their protest (obviously, the studio won’t give permission to a protester)—then a sacred right of free expression in our country disappears.
On the other other hand, if anyone can say or write or draw or produce anything without constraint, then what’s the point in owning or protecting a copyright in the first place?
So the two opposing forces (free speech and copyright protection) are carefully balanced out and managed by the concept of “fair use.” Depending on certain factors (four of them), potentially infringing material may be determined to be allowable after all. Or not. That is ultimately up to a jury to decide…or, more recently, just a judge. That happened with Axanar when Judge Gary Klausner ruled the fair use defense in that case to be invalid.
And the judge in this case just ruled on fair use, as well…albeit with a different result.
Too early for fair use? Apparently not!
Usually, fair use is decided much later in the process of the lawsuit. The first thing that usually happens when someone is sued is that the defendant’s attorneys file a motion to dismiss (which happened here, of course). Judges don’t usually rule on fair use at this early point because no actual evidence has been submitted yet.
Instead, the judge will either wait until after discovery when he or she makes their pre-trial summary judgments (as happened with Axanar when that judge ruled fair use to be an invalid defense) or else let the jury decide at trial.
This “mash-up” case, however, was the rare exception when the judge considered fair use as part of her deliberations at the motion for dismissal stage. Why? Two reasons:
1) The defense’s primary argument for dismissal was that the allegedly infringing work was protected by fair use. So how could the judge properly consider the motion without looking at fair use, right? She really had no choice.
2) There aren’t any material facts in dispute. In other words, neither side is arguing about what was created. The pages of artwork and passages of text are out there in the complaint for the judge to examine.
I know what you’re gonna say! “So why wasn’t Axanar’s claim of fair use decided on earlier, as well? If Judge Klausner had ruled fair use to be invalid at the start of everything, that case might have settled before the summer…saving months of legal battles and hundreds of thousands in legal fees!”
The reason is actually pretty simple. The final Axanar film had not been produced yet, and even the script itself was still changing. So there were facts still in dispute. Would the final film be made as a mockumentary and be transformative? Was a mockumentary format in and of itself transformative enough? The two sides disagreed, and so the judge couldn’t rule until more evidence and testimony was collected.
Okay, I can see your eyes starting to glaze over. But we’re about to get into the “good stuff.” So take a brief rest and be sure to come back tomorrow.
Next time we look at the four factors of fair use in this case and how they could be in a state of “near-perfect balance.” What does that even mean???