Last time, we began looking at the intriguing case of the Dr. Seuss/Star Trek “mash-up” book Oh, the Places You’ll Boldly Go! by DAVID GERROLD and TY TEMPLETON. Last November, they got sued by Dr. Seuss Enterprises for copyright infringement, trademark infringement, and unfair competition. The defense quickly filed a motion to dismiss the case. After a brief extension, the judge issued a ruling last month. (For more details, read yesterday’s blog.)
The motion to dismiss centered around the “mash-up” being protected as “fair use.” And while judges do not usually rule on fair use this early in a case, the Honorable Janis L. Sammartino of the 9th Circuit Federal Court did (again for reasons explained in yesterday’s blog).
So did the fair use defense work or not? What did the judge say???
In short, it’s a tie. She called it a “near-perfect balancing of the factors” of fair use. And what does that mean? Get comfy, folks, ’cause Jonny’s gonna do his best to break this down into layperson’s English for you all…
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?
Is CBS switching back from copyright infringement lawsuits to cease & desist letters? It’s hard to read the tea leaves when it comes to a multi-billion dollar corporation, but we may have just gotten a clue.
The year 2016 was a turbulent and uncertain time for the world of Star Trek fan films. It began with a copyright infringement lawsuit against Alec Peters and AXANAR, and then by the summer, fans were presented with a series of fan film guidelines listing the things fans were and were not allowed to do if they wanted to avoid legal action on the part of CBS and Paramount.
But were lawsuits now the “new normal”? Would fan films that violated the guidelines find themselves dragged into court for expensive litigation? The studios weren’t saying. For many years, most fan film producers had (perhaps naively) assumed that the worst that would happen would be they’d get a call (or letter or e-mail) from the studios saying, “Stop what you’re doing.” Even Alec Peters himself figured he’d probably get a call long before ever being served with a multi-million dollar lawsuit. Man, was he wrong!
Ironically, had the studios simply sent Alec a cease & desist letter instead of suing, they could have saved themselves nearly a million dollars in attorneys fees and 12 months of polarizing publicity with likely a similar result of a scaled-down Axanar. But that’s a “what if” scenario that we’ll never see played out in this universe.
But here’s a question: did CBS’s and Paramount’s experience with the year-long Axanar lawsuit leave a bad enough taste in the studio execs’ mouths that they’ve decided to dial things back from battlestations to just yellow alert? Are the studios ready to return to good ol’ fashioned cease & desist letters to get the job done?
The answer to this question might come from another copyright infringement lawsuit going on right now involving Star Trek…and Dr. Seuss!
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…