Yesterday in part 1, we discussed the copyright side of the infringement lawsuit that was filed by Dr. Seuss Enterprises (DSE) against Star Trek “Tribbles” creator DAVID GERROLD and comic book artist TY TEMPLETON for their proposed “mash-up” book Oh, The Places You’ll Boldly Go! The project generated $30,000 in a Kickstarter that was promptly shut down (and the donations frozen) when DSE asserted their ownership of the Dr. Seuss property. A lawsuit quickly followed in late 2016 accusing the mash-up creators and their publisher ComicMix of both copyright AND trademark infringement (two different things, as I’ll explain shortly).
It’s now a year later, and a whole flurry of legal posturing has been going on back and forth…before the trial even gets started! During the summer, Judge JANIS L. SAMMARTINO of the Ninth Circuit Federal Court in San Diego dismissed the trademark complaint portion of the lawsuit, leaving only the copyright claim to adjudicate. And even there, it looked like the judge was leaning strongly in favor of accepting a fair use defense from “Team Mash-up” (as I like to call them) and dismissing the rest of the case, as well.
But DSE was not about to go gently into that good night! And after pulling out all the legal stops, and after a court hearing at the end of last month, Judge Sammartino just issued an Order Denying Motion to Dismiss that not only allowed the copyright portion of the lawsuit to continue and go to trial, but DSE lawyers also convinced her to CHANGE HER MIND and reinstate the trademark complaint!
How the heck did that happen???
Yesterday, I explained the reasons that the judge didn’t grant a fair use defense on the question of copyright infringement. Today, we’ll take a look at the trademark side of things and discover why we can blame Godzilla for the judge’s decision to resurrect the trademark question…