Yesterday, I recounted the two-year history of Star Trek‘s “other” major infringement lawsuit. Back in 2016, tribble creator DAVID GERROLD and comic book artist TY TEMPLETON teamed up to create what they considered to be a parody mash-up of Star Trek and Dr. Seuss, a book they intended to call Oh, the Places You’ll Boldly Go! Along with publisher ComicMix, they launched a Kickstarter which took in about $30,000 before being shut down when Dr. Seuss Enterprises (DSE) sued all three of them for both copyright and trademark infringement. No money was ever collected from the crowd-funding campaign.
It’s just over two years later, and after a roller coaster ride for both plaintiff and defendants (see Part 1), we’re now in the final weeks before the start of the actual trial in early spring.
Or are we?
Following long months of motion-filing, jockeying for position with Judge JANIS SAMMARTINO of the Federal Ninth Circuit, and collecting pre-trial testimony and documents from witnesses during the discovery phase, it’s time for one final “Hail Mary” pass from each side.
Yesterday, I reviewed the defense team’s motion to dismiss the case (read it here in its entirety) on the grounds that DSE didn’t really prove any realistic monetary damages (meaning that the mash-up should be considered as Fair Use and the complaint dismissed) and also that DSE’s remaining two trademark claims from font and art style weren’t valid. The defense arguments were solid and generally convincing…at least to me.
But then I read through the plaintiff’s motion for summary judgment. Like the defense team, DSE would like this case to end before it ever goes to court (and they rack up another six figures in legal bills!). But while Team Mash-up wants the judge to dismiss the lawsuit entirely, DSE would prefer the judge to rule that the defendants are obviously liable for multiple counts of willful copyright and trademark infringement and should be forced to pay hundreds of thousands of dollars in damages. And why trouble a jury when the final verdict is so obvious?
Are the plaintiffs as convincing as the defendants? Let’s take a look…
DR. SEUSS ENTERPRISE’S ARGUMENT
The main thing that DSE’s lawyers try to do in their motion is to use the defendants own words against them…and they’re quite damning. Again, I invite you to read the full plaintiff’s motion here for every quote that’s listed (as I have room for only a few).
These quotes from the defendants—specifically writer David Gerrold, artist Ty Templeton, and publisher Glen Hauman—were obtained during the discovery phase through testimony and (I’m guessing) e-mail communications that were legally required to be provided by all parties.
The Plaintiffs build most of their argument around trying to destroy the judge’s “near-perfect balancing” of Fair Use that she described in a previous ruling. The first thing they do in their latest filing is attempt to convince the judge to reverse her classification of the mash-up as “transformative.” That determination was a major point in the defense’s favor in claiming Fair Use. If the mash-up could instead be classified as a copy of Oh, the Places You’ll Go! or as a derivative work, any Fair Use defense would essentially fly out the window.
DSE also worked to underscore their claim that Boldly! would indeed cause them financial harm. To do this, the motion recounts the details of the conception of the project, calling attention to interchanges like this one between Glen Hauman and Ty Templeton…
GLEN – “this would be Seuss-style TOS backgrounds”…”we’re going to want the cover and at least a background art piece for promotions, as well as be able to use the cover for posters, mugs, and all the merchandise that will push this thing over the top.”
TY – “Holy CRAP that’s a cool idea. The title is like printing money. I’m totally in.”
And it gets worse…
In his testimony, Ty stated:
I would have the original book open to what I was looking at. I would rough out the positions the characters are in. After I was satisfied with the position that the characters are in being similar enough to evoke the original source material, I would render them as carefully as I could.
The motion goes on to state…
Templeton further testified that his “copying” of one page took him “about seven hours” because he “painstakingly attempted to make” his illustration “nearly identical” to Seuss’s. (SOF ¶ 52.) And although Templeton testified that he “would study the page,” and then “meticulously try to reproduce as much of the line work,” as he could, his first drafts were not “close enough;” Hauman instructed him to “go closer to” Go!. (SOF ¶ 36, 48, 52.) Templeton later admitted, “I did, in fact, slavishly copy from Seuss,” to illustrate Boldly. (SOF ¶ 53.)
Oy! The plaintiffs also discuss how ComicMix contacted ThinkGeek with the intention of using the money from the Kickstarter to fund a run of 5,000 printed copies that could be rolled out by graduation season. Although Oh, the Places You’ll Go! was originally written as a children’s book, it has frequently been given to high school and college graduates as a fun and sentimental gift. ComicMix, according to the filing, was well aware of this and convinced ThinkGeek to time their book release so that Boldly! might be gifted to graduating Star Trek and sci-fi fans.
You can probably see where this is all going. If Team Mash-up did, in fact, “slavishly copy” the original, then maybe Boldly! isn’t so transformative after all. If the judge agrees, then the Fair Use claim all but collapses. In addition, if parents and friends buy copies of Boldly! instead of the original Seuss book to give to graduates, then there’s some specific financial injury in the marketplace that DSE can point to…and it doesn’t take much to convince a judge.
The motion also makes ample use of a recent appeals ruling in an infringement case filed by Oracle against Google concerning Oracle’s API Java software. The Ninth Circuit Court of Appeals overturned a major Fair Use ruling by a lower court, and many elements of that higher court ruling are favorable to DSE’s arguments.
Among these are a finding of bad faith in the Oracle/Google case, and DSE’s attorney is trying hard to show that here, too. They conclude with the following:
Defendants, led by Hauman: (1) recognized the need for a license yet went forward without one, even when questioned about licenses by third parties; (2) never consulted a lawyer as to whether Boldly was indeed a fair use; (3) ignored DSE’s letters in order “to keep the [publishing] schedule”; (3) opted for a version of Boldly that “meticulously” copied Go! despite discussed alternatives; and even (4) publicly acknowledged that they might get sued and “might even lose.”
Both sides are playing for keeps, and playing hard. So what do I think is going to happen next?
Well, only one of my legal eagles is following this case and thinks it could easily go either way…or it could simply go to trial. The judge realized the significance of this case when it comes to setting precedent about the fledging “art form” (if that’s indeed what it is) of the mash-up when she wrote:
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.
As such, Judge Sammartino might not want to rule on this case from the bench and instead let a jury decide.
But my legal eagle did point out two major things to consider:
1) “When a judge has previously made a ruling—in this case that the work in question is transformative—a flag is planted. It’s difficult, although not impossible, to get a judge to admit to being wrong and change a decision.”
2) That said, my friend also pointed out that Judge Sammartino has changed her mind before when she reinstated in the Trademark Infringement action after having previously dismissed it.
There’s also a possibility, I’m told, that the judge might make a ruling just before the hearing if she doesn’t think anything said in court will change her mind. Often, this is done as a way to encourage the sides to negotiate a settlement before the hearing…especially if one side is pretty sure the judge’s ruling won’t be favorable.
But in this case, there’s not a lot to settle. DSE wants to destroy Team Mash-up utterly. There’s no middle ground for ComicMix, Dave, and Ty to offer up any olive branch. Likewise, if the judge is inclined to dismiss the case entirely, then DSE has no other option besides appeal.
Since the two memoranda were filed in December, both sides have also submitted responses. Replies to those responses are due on January 14. After that, the next stop is the courtroom on January 31 at 1:30pm in San Diego (assuming the government shutdown doesn’t delay the court date). And the judge’s final decision, if there is one, might take days or even weeks to come down.
In the meantime, if I get a chance, I’ll try to write up a blog to analyze the two responses, as it’s fascinating to see the two legal teams deflect each others’ attacks! Maybe I shoulda been a lawyer…