“OH, THE PLACES YOU’LL BOLDLY GO!” wins a key FAIR USE victory in court!

Last November, a crowd-funded Star Trek project got sued for copyright and trademark infringement by a major rights holder.

No, not Axanar!  That was the previous year, silly (although the Axanar lawsuit was still going on when this other lawsuit was filed).  In this new case, however, the defendant was none other that renown Star Trek screenwriter/author DAVID GERROLD  (the man who gave us tribbles!) along with Marvel/DC (and others) comic book artist TY TEMPLETON and their publisher ComicMix, LLC.

Gerrold and Templeton had created a parody mash-up book based on Dr. Seuss’s beloved classic Oh, The Places You’ll Go!  In their new book, Dr. Seuss was mashed-up with Star Trek to create Oh, The Places You’ll Boldly Go! with pages that that adapted the originals on the left to look like the ones on the right:

The accompanying rhymes were obviously Seussian, as well…things like.

You can get out of trouble, any that’s knotty, because in a pinch you’ll be beamed out by Scotty.

Weird things will happen, and they usually do, to starship explorers and their marvelous crew.

They launched a Kickstarter in late 2106 and took in $30,000 before the rights owners of Dr. Seuss’ collected works had the campaign shut down for an alleged copyright violation.  The following month, a full infringement lawsuit was filed on behalf of Dr. Seuss Enterprises by law firm DLA PIPER, LLP.  Here is the 19-page Seuss Complaint if you’re interested in reading it.  It’s very similar to CBS and Paramount’s initial filing against Axanar, citing the same demands for $150,000 in statutory damages per violation PLUS attorneys fees.

The Axanar detractors were quick to pounce.  SHAWN P. O’HALLORAN, one of the most prolific posters of petulance and profanity, had this to say:

You believe its fair use? You would be mistaken. It’s intellectual property theft and they came right out in their campaign and acknowledged that they were poking the bear to get sued.  David Gerrold is a blatant IP theft [sic] who supports other blatant IP thieves such as Alec Peters…

O’Halloran was referring to the following message included in the “Risks and Challenges” section on their original Kickstarter page:

While we firmly believe that our parody, created with love and affection, fully falls within the boundary of fair use, 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.

But it’s looking like they might actually have a chance to win…

Now, don’t go popping the champagne corks just yet!  This case is far from over, and as of now, it is still going to trial.  But the scope of the lawsuit was just significantly reduced by Judge JANIS SAMMARTINO (a 2007 Bush appointee) of the 9th Circuit Federal Court (the same one were CBS/Paramount v. Axanar was filed) in a ruling that came out last Friday.

As I did with Axanar, let me try to simplify this as much as possible.  Unlike Axanar, where there was only a question of COPYRIGHT infringement put before the court, Dr. Seuss Enterprises also threw in TRADEMARK infringement.  There is a difference between the two, but in short, a trademark is usually a word (or words) or image that is/are closely associated with a particular company or product. A copyright is the ability to control the way that a property is used or marketed.  They intersect and overlap, but they are two different things.  CBS and Paramount could have included trademark infringement in their Axanar complaint, but they opted not to.  The Fair Use defense applies to both copyright and trademark with most of the same qualifications…including being transformative.

Last Friday, the judge in the Seuss case threw out the trademark infringement part of the complaint entirely, leaving only the question of copyright infringement.

In denying the claim of trademark infringement, Judge Sammartino said 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.

In explaining her conclusion, the judge discussed her analysis of the following images from each of the two books:

Plaintiff’s work depicts two similar-looking, fanciful “Zax” creatures arguing in the middle of a desert, with footprints to mark their arrival. Boldly takes the same desert landscape and footprints, and in the fanciful creatures’ place puts two similar-looking beings of seemingly Vulcan descent—one of which is drawn in the same position as his Dr. Seuss counterpart and one of which is transformed from the Dr. Seuss creatures’ aggressive stance into a contemplative pose—deep in the midst of playing some type of alien board game. Additionally, Boldly’s text reveals that the two Vulcan creatures are, in fact, the same person, unlike Go!’s distinct “North-Going” and “South-Going” Zaxes. Boldly therefore transforms the argumentative Zaxes and their corresponding depiction into a cloned Vulcan matching wits with himself over an alien boardgame. One Vulcan is positioned almost identically to his Zax counterpart to “conjure up” the Dr. Seuss work, while the other Vulcan is drawn anew and a board-game added in order to fully accomplish the work’s overall transformative purpose.

In other words, the judge looked specifically at how DIFFERENT the two images were, NOT at how similar.  (One wonders what would have happened if this judge had presided over the Axanar case!)

Judge Sammartino also brought up a VERY interesting conundrum facing both her as a judge and copyright/trademark holders in general: the growing number of mash-ups in the world.  Are they transformative enough to be protected under the umbrella of fair use?  As an example, take a look at this video and tell me whether you think it’s ripping off two different recording artists or if it has transformed both original pieces of music into an entirely new and original composition of its own…

(Yeah, those two song totally should NOT work together, but somehow they DO!  CRAZY!!!!)

Anyway, the judge had this to say on the matter:

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.

In other words, if I come right out and say, “Mash-ups are NOT fair use!” then that effectively shuts down an entire emerging genre and outlet for creative expression (which is kinda the opposite of what the First Amendment intended!).

This is not to say that mash-ups should always be protected under fair use either.  But the judge raises it as a QUESTION, not as a legal conclusion.  So if I create a montage video of my son Jayden playing little league baseball and put a music bed of John Fogarty’s “Centerfield” (you know the one–“Put me in coach, I’m ready to play…”) under the montage, is that a mash-up and transformative fair use?  Or am I just stealing from John Fogarty?  The legal determination could affect potentially billions of videos posted to Youtube, right?

As the case moves forward to trial, the judge has given the plaintiffs two weeks to amend their trademark claims.  The plaintiffs will also need to provide proof of any harm to the Seuss estate’s licensing opportunities.  If they can do that, the plaintiffs might still win.  And here’s why…

Had David Gerrold’s transformative work simply been classified a “parody” by the judge, it would have been game over…as parodies are almost always automatically protected as fair use by free speech laws.  However, the judge did NOT make that classification.  She simply qualified the new work as transformative, and those transformations argued (in the judge’s opinion) against the claim of trademark infringement.  Remember I said trademarks were words or images.  Well, the judge said that Gerrold and Templeton transformed those words and images enough to not violate a trademark.

But copyright is different and deals with the owner’s rights and abilities to control the sale and distribution of their intellectual property.  In this case, the question becomes, can and has the Seuss estate charged licensing fees for authorized mash-ups?  Do they plan to?  These will be important points to bring up because, on this question, the plaintiffs could actually WIN the case after all.

But if, in all these years, no one has ever sought to license Dr. Seuss for a mash-up, then the damages could be considered minimal.  If so, one of the elements of fair use is to consider the financial harm in the marketplace.  If there’s no real harm, then there’s no real damages to award.

So no, this case is far from over, my friends!

Now, some of you might be asking the question(s): What does this mean for Axanar?  If the defense wins THIS case, does it mean that Axanar can get a new trial?

No, no…a thousand times no.  The Axanar lawsuit is over and settled.  However, there is at least a little vindication in seeing a judge actually rule in FAVOR of a fair use defense for a change.  Many of the Axanar detractors were convinced that David Gerrold would go down in legal flames.  (And hey, he still might.)  But for all the detractor braggadocio declaring copyright and trademark law to be some kind of absolute where any unlicensed use was “theft”…well, the next time that happens, just throw Friday’s ruling by Judge Sammartino back at them.