Dr. Seuss has appealed – they now want a do-over…so we’re at it again, get set for round two-over!

Just when you thought it was time to vamoose
From all of this talk of the law of Fair Use
Regarding the mash-up of Star Trek and Seuss
Here comes the sequel, we’ll call it “Part Deuce!“

And with that, I shall stop rhyming…although I can’t say the same for GLENN HAUMAN of ComicMix, the folks who, this past March, won a copyright infringement lawsuit filed against them by Dr. Seuss Enterprises (DSE). You can read more about the judge’s final ruling here.

The case involved an illustrated “mash-up” of Star Trek and Dr. Seuss titled Oh, The Places You’ll Boldly Go! This proposed book was written by “The Trouble with Tribbles” author DAVID GERROLD and illustrated by award-winning comic book artist TY TEMPLETON…with ComicMix doing the publishing. Back in late 2016, they held a Kickstarter that raised $30,000 but were quickly shut down by DSE, who later sued. The nearly two-year legal battle was a back-and-forth rollercoaster ride, with the lawsuit eventually being dismissed after the judge ruled Boldly to be Fair Use.

As I pointed out at the end of that previous blog, DSE always had the option to appeal the decision to the Ninth Circuit…something they did just two weeks after I published that blog, on the same day the district court entered Hon. Judge JANIS SAMMARTINO’s ruling officially into the record. The Plaintiff’s notice of appeal also asked for, and was granted, an extension of a few months in order to file their opening appellate brief…all 81 pages of it! (No, you don’t have to read it…although it is pretty interesting and very well-presented.)

DSE also submitted four amicus briefs, which are opinions submitted to the court by non-litigants who, even though they aren’t part of the lawsuit, still have a vested interest in the outcome of the case. In this instance, DSE got help from two professors from the Berkeley School of Law, three members of The Copyright Alliance, the Motion Picture Association of America, and The Sesame Workshop (yep, Big Bird is buddies with The Cat in the Hat!). That’s another 140 pages to add to your summer reading list. They mostly say the same thing…essentially that the judge got it wrong and here’s why they think so (and why the law backs up their belief).

It’s a little early in the process for me to start making predictions. After all, this is only the initial brief (which is anything but brief!), and ComicMix hasn’t had its chance to respond yet. I will try to summarize what arguments are being made in the appeal, however. But before I do, since we now have the opening brief from DSE, I reached out to Glenn Hauman for an initial statement from ComicMix.

As he’s done previously, Glenn responded poetically (with some pretty decent rhymes—including one in Latin!)…

The Seuss estate’s lawyers can’t bear that they lost,
They’ll fight to the end, no matter the cost.
“We couldn’t have failed! Why, there must be a catch!
We’ve got so much money, let’s try a rematch!”
They’ve gone back to court to file an appeal.
(We think they have none, and that’s how we feel.
We’re much more appealing! We speak for fair use!
And we will not stand for copyright abuse!)
The Seuss brief is warmed over— it just reheats
bad theories that already brought them defeats.

Same goes for their amicus curiae,
Those Grinches and Grouches and law profs. Query why
They bothered to re-repeat Seuss’s bad case,
filling hundreds of pages to help them save face.
The law profs are wrong! Just ask their law students!
Or read the pertinent fair use jurisprudence!
And as for the trademark claims, not to get cheeky,
but they raise not a peep from Seuss’s amici.
No friend of the court contends the book’s title
offends the First Amendment, which is vital.
And the art style trademark the Seuss estate claims?
In the amici’s eyes, it went up in flames.

So fasten your seat belts, we’re on to Round Two,
While they run up their hours and billables too.
When you see our response, then we think you’ll agree,
that nothing should alter the judge’s decree.
The judge meant what she said, she said what she meant.
The judge got it right, one hundred percent.
And to everyone out there who’s asking me, “Glenn,
when’s the book coming out?” I cannot say when—
because oh, here we go with this Oobleck AGAIN.

---

I love a good rhyming couplet, don’t you?

Okay, let’s see if I can break this down for you all without writing a 90-page thesis paper. Ready?

WHAT AN APPEAL IS NOT

A lot of Americans don’t understand what it means to appeal a verdict in a lawsuit or criminal trial. It doesn’t simply mean, “We didn’t like the outcome, so let’s start over and have a completely new trial!” Instead, you have to convince three new judges that the first judge made a mistake (or two or ten). Hey, we’re all human; stuff happens.

But it’s not easy to convince one judge that another was wrong. Judges don’t like to be wrong—and let’s face it, they’re supposed to know the law and get it right!—and other judges are hesitant to overturn their colleagues’ rulings.

As a practical matter, speaking only very generally, plaintiffs’ appeals for reversals of judgements they don’t like succeed only about 18% of the time. So while it’s far from impossible for DSE to get what they’re looking for, it’ll be an uphill climb…especially in the Ninth Circuit Federal Appeals Court, which tends to be liberal and favor the “little guy” over the big “corporate bully” much of the time.

But if Judge Sammartino did make a mistake, and DSE can convince the three-judge appeals panel, then they just might get a new trial after all, and possibly even win part of the lawsuit without a trial. More on that at the end.

SO WHAT MISTAKE(S) DID THE JUDGE ALLEGEDLY MAKE?

There were actually two complaints in the original lawsuit: copyright infringement and trademark infringement, and the judge dismissed both. But because there are differences between the two kinds of infringements, I’ll tackle each separately…starting with copyright.

After nearly two years of motions and pleadings and responses and replies from both sides, Judge Sammartino finally ruled that Boldly was, as a matter of law, Fair Use and therefore protected by the First Amendment against any liability for copyright infringement. She therefore dismissed the copyright complaint entirely.

Needless to say, DSE doesn’t agree with her legal conclusions.

In order to understand what mistakes that DSE is arguing that the judge made, we need to briefly review the four aspects of Fair Use. As most of you already know, the concept of Fair Use is the “peace treaty” in the never-ending battle between copyright protection and freedom of speech (which are, by definition, mutually exclusive). In other words, you can’t copy someone else’s creative work…unless it’s determined to be a “fair use” of the source material. But how is Fair Use determined?

There are four factors that must be considered to determine whether something is or is not Fair Use…and DSE has problems with the judge’s determination of three of them. First, let’s talk about the one factor DSE does NOT have any problem with (and ComicMix doesn’t dispute)…

1. Is the original work worthy of copyright protection?

Yes, of course it is! Dr. Seuss’ entire body of work is original and very creative. No one in this case thought for a second that it wasn’t worthy of copyright protection. But that’s just one factor out of four.

2. How is the new work potentially using the original content?

Things like parody, criticism, or some kind of educational commentary are usually protected by Fair Use. But the judge ruled early on that Boldly did NOT fall into any of those categories. However, she did rule that the work was “highly transformative“….and this was a crucial part of her ultimate decision to dismiss. Although commercial in nature (which does not disqualify something from being Fair Use) and obviously using significant elements from Seuss’ original literary works, the resulting “mash-up” became something very different and unique.

And here is where DSE believes—and VERY strongly!—that the judge screwed up. Take a look at the following comparison of artwork from the original Seuss stories and the mash-up…

Now, obviously, the text is completely different. But is the artwork copied? Well, the ground is certainly the same (mostly), is yellow while the sky is green, and the pose of the Spock on the right is nearly identical to the north-going Zax. So as far as DSE is concerned, they “slavishly copied” the original.

Of course, the judge believed differently. While the right-side Spock might be standing like the north-going Zax, the mirror-Spock’s pose is unique. And of course, neither Spock is a Zax. Plus there’s a 3D chess board and children’s playground in the Boldly version that never existed in the original. So is copying just the lines of the sand (and little else) really crossing a line in the sand of “slavishly copying” as DSE says?

Before you answer, take a look at this page, as well…

Now, obviously Scotty is not Sylvester McMonkey McBean, the Sneeches have been replaced with Starfleet officers, and the money table is now a transporter console. But the machine is the exact same…line for line, color for color. And the facial expressions of everyone in the mash-up version appear to match nearly everyone in the original.

So is the second illustration really transforming the first one into something completely new and unique? The judge said “yes,” but DSE says “no.” Which conclusion will the appellate court judges agree with?

Well, again, before you answer, let’s move onto the third factor…

3. How much of the original work was used?

In general, the more you copy, the weaker your argument is for Fair Use. So the question is: did ComicMix and illustrator Ty Templeton copy more than they needed to or only as much as they needed to in order to create a work that could be considered a “mash-up” of Star Trek and Dr. Seuss? Remember that the judge had already ruled that a mash-up could be considered transformative in this case. So the question now was: did ComicMix copy too much? The judge ultimately answered that with a “no.”

DSE believes, again VERY strongly, that this was another mistake. Let’s take a look at some more artwork comparisons…

The background is the exact same. All ComicMix did was to add in eleven characters from Star Trek TOS drawn in the Seussian style. Granted, drawing those characters was a lot of work. But if you look at the amount of the original material that was copied, the answer is nearly 100% (they just dressed up the original kid as Captain Kirk instead of leaving him in pajamas). But aside form that, line for line, color for color, ComicMix copied 100% of the original artwork. How is copying 100% NOT using too much?

Here’s another example…

So ComicMix pretty much copied all of the important artwork from the original (rocks, grass, tree), ditched the balloons, swapped the little boy for the little Kirk, and added three “Seussian style” Klingons. Too much?

Unlike this blog, DSE’s filing spends two dozen pages making their argument (lest you think that I write too much!), including citing a case from 1997 about a mash-up of The Cat in the Hat and the OJ Simpson trial (yes, that really happened)…

In that very similar case, the judge ruled that the work was not parody and not Fair Use, and Penguin Books (a huge publisher) was enjoined from ever releasing it.

For some strange reason, the DSE attorneys did NOT bring up this precedent during their previous arguments in front of Judge Sammartino…even though DSE actually won that case! Whether their failure to cite the ruling in the lower court will count against DSE on appeal is anyone’s guess. However, this wasn’t the only established caselaw that DSE cited in their brief.

4. Will the new work potentially harm the original copyright holder financially?

There were two ways, DSE argued initially, that Boldly could do them financial harm. First, assuming that Go! and Boldly were both sitting on the bookstore shelf, the parents and/or friends of a Trekkie graduating from high school or college might see the Star Trek mash-up and buy that instead of the original version.

The judge didn’t go for that argument, as DSE has sold 12.5 million copies of Go! over the decades (with sales increasing during the past four years) while ComicMix was printing only 5,000 copies to be sold primarily online…hardly a threat to DSE’s profitability.

The second financial harm, argued DSE, was in the loss of potential licensing opportunities in the future. If other publishers decided to create unlicensed mash-ups of their own—instead of purchasing such a license from DSE first—then DSE would lose revenue they would otherwise have collected.

On this point, the judge felt it wasn’t enough to simply imagine this worst case scenario. Because she had ruled early on that Boldly was transformative, the Plaintiffs needed to prove that they would lose licensees in the future…and they failed to show that. In fact, their style guide for licensees actually instructs them not to show characters with items “not from [the Seuss] world” and not to “use Seuss characters with third party’s characters.” In other words, their own style guide precludes a mash-up with Star Trek or any other non-Seuss intellectual property.

Needless to say, DSE did not agree with this ruling either, and they pointed to two significant mistakes that they believe were made by the judge.

The first was the question of who had to prove what proof. The judge said that because Boldly was transformative, the Defendants didn’t have to prove that there was NOT potential market harm, but rather the Plaintiffs had to prove that there WOULD be harm…something DSE failed to do. The judge’s mistake, argues DSE, is that Boldly should never have been classified as transformative in the first place! And so, if it’s not a transformative work, then the burden of proof falls back to ComicMix to prove that Boldly will not harm DSE…something that ComicMix likewise failed to do. You got that? DSE simply thinks it was ComicMix that failed to prove what they needed to prove…not DSE.

The second mistake is what I like to call the “What if everybody else…” argument. So let’s assume that the original ruling stands and Boldly gets published. Sure, there’s only 5,000 copies out there, or maybe even double or triple that assuming sales are robust. That’s still just a blip compared to the hundreds of thousands of copies of Go! that are sold each year.

But what happens when another publisher decides to do a mash-up of Dr. Seuss and Star Wars or Dr. Seuss and Marvel superheroes or any of countless other properties from Doctor Who to The Simpsons to Hello Kitty to Stranger Things to Fortnight. With the door open to all of those potential mash-ups, DSE could suddenly be facing the death of a thousand paper cuts with never-ending competition from a parade of mash-ups all stealing their sales. It’s an intriguing argument…although again, purely hypothetical. Will the appellate judges go for it? We’ll find out…

WHAT ABOUT THE TRADEMARK PART OF THE LAWSUIT?

This part will be shorter than the copyright part, folks…promise! The trademark complaint was initially divided into three elements: the title itself (Oh, The Places You’ll Boldly Go! is nearly identical to Oh, The Places You’ll Go!), the typeface used for the title (same as the original), and the Dr. Seuss artistic style.

The judge ruled early on that the mash-up title itself is protected by the First Amendment, and so that element of the complaint was almost immediately dismissed. In her final ruling a few months later, the other two trademark complaints were also dismissed. The typeface portion was dismissed because typefaces cannot be trademarked…only the specific use of them for logos like HOT WHEELS or THE NEW YORKER magazine. Since the mash-up adds Boldly to the title, it’s not an exact match. And also, the title of the original book as a logo was never trademarked in the first place.

As for the “Seussian”artistic style, she also felt that such a claim was far too broad and didn’t qualify for any trademark protection. The characters can be trademarked but not the entire artistic style.

DSE’s brief spends about six pages on this, but in short, they argue that the First Amendment does not necessarily protect the Boldly book title, and that the typeface and artistic style are, indeed, worthy of trademark protection. While it’s not clear how convincing DSE’s argument, it’s perhaps not a good sign that none of the four amicus briefs mentions the trademark question at all. But, hey…never hurts to try, right?

SO WHAT HAPPENS NEXT?

It’ll be a little while until our next update. Glenn Hauman informed me that, like DSE, ComicMix’s attorney asked for, and was granted, a time extension to respond. So that’ll be a few more months at least.

But let’s fast forward to contemplate the ruling from the Ninth Circuit Court of Appeals…which could well be a year or two away. While I won’t pretend to be able to read the tea leaves on this one (especially with only the first appellate brief having been filed), I can tell you that there are a few possible outcomes…

1. The lower court ruling is upheld on appeal…in which case, DSE has the option to appeal to the entire Ninth Circuit for a review and opinion by all of the judges. If that happens, expect to be reading about this case until the Vulcans land in Montana!

2. DSE wins on both their copyright and trademark appeals. If this happens, then the appeals court will rule that Boldly is NOT Fair Use and, in the best scenario for DSE, grant an immediate summary judgment against ComicMix for damages and attorneys fees. But there will still be a new trial for the trademark claims, as DSE isn’t asking for a summary judgment there. Instead, they’re requesting (if they win on appeal) a jury trial on the trademark questions to determine the facts regarding their font, artistic style, and the title of the book itself.

3. The whole thing is booted back to the lower court…trademark AND copyright (or just copyright). It’s possible that the appellate judges decide they want to do this the old-fashioned way and let a jury decide whether Boldly (and mash-ups in general) is or is not Fair Use. As I discussed in a previous blog, for more than three centuries, Fair Use was decided by juries as a determination of fact. Only in the last 30 years or so have judges begun ruling on Fair Use before trial as a determination of law. This is mostly because many judges don’t always trust juries to “get it right.”

So if the appellate court orders the case sent back for a jury trial, well, we pick up our story where it left off back in March. But this time it’ll get to play out with in court…

…and I’ll have a LOT more to talk about!