In the latest round of the battle over a Star Trek version of Dr. Seuss’s Oh, the Places You’ll Go!, a California federal court judge has ruled the junior publication’s title did not violate trademark law.
Dr. Seuss Enterprises sued ComicMix over its plan to publish Oh, the Places You’ll Boldly Go! after the authors launched a Kickstarter campaign to fund printing and distribution costs. The defendant countered that the book—which combines aspects of various Dr. Seuss works with “certain characters, imagery and other elements from Star Trek”—was a parody and constituted fair use of the Dr. Seuss publication.
Last December, U.S. District Court Judge Janis L. Sammartino denied the defendant’s motion to dismiss, concluding that the court could not say as a matter of law that its use of copyrighted material was fair or that it had proven each element of a nominative fair use trademark infringement defense.
The defendant responded with another attempt to chip away at the case, seeking partial judgment on the pleadings with regard to the title of the publication. ComicMix based the motion on the Ninth Circuit’s recent interpretation of the Second Circuit’s decision in Rogers v. Grimaldi in 1989.
Rogers established a two-prong test and concluded that the title of an expressive work may permissibly be used under the Lanham Act “unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.”
In footnote 5 of Rogers, however, the federal appellate panel added that the “limiting construction would not apply to misleading titles that are confusingly similar to other titles. The public interest in sparing consumers this type of confusion outweighs the slight public interest in permitting authors to use such titles.” Dr. Seuss Enterprises pointed to this footnote to argue that Boldly’s title was “confusingly similar” to its own.
While Judge Sammartino initially agreed, the defendants renewed their motion after the Ninth Circuit issued a recent opinion in Twentieth Century Fox v. Empire Distribution, Inc., which involved a dispute between the Empire record label and Fox, which airs a television show titled “Empire” about a fictional music label named “Empire Enterprises.”
In the process of applying the Rogers test in the Empire dispute, the Ninth Circuit rejected the use of footnote 5 as “ill-advised or unnecessary,” noting that it has only been cited once by an appellate court and that the Second Circuit itself has rejected its applicability.
In evaluating Dr. Seuss Enterprises’ trademark claim under the Rogers test as interpreted by the Ninth Circuit, Judge Sammartino found that the defendant’s invocation of the trademarks was relevant to Boldly’s artistic purpose. With a low bar that must merely be “above zero” for artistic relevance, “[i]t cannot be said that the title of Boldly is not at all relevant to the content of the book,” the court wrote. “[T]he title of Boldly, while obviously also referring to and using the title of Go!, describes and is relevant to its own content. This prong is met.”
As for the second prong of Rogers, the court found the title of Boldly did not explicitly mislead as to the source or content of the work. The use of the mark alone is not enough to satisfy this prong, and Boldly’s copyright page included a statement that the publication was a work of parody and was not associated with or endorsed by Dr. Seuss Enterprises.
“Although the effectiveness of these disclaimers is disputed by Plaintiff, what cannot be disputed is that there is no statement in Boldly to the contrary, i.e., that the work is associated with or endorsed by Plaintiff,” the court wrote. “Plaintiff has not pointed to, and is not able to point to, any evidence that the title of Boldly explicitly misleads as to the source of the work, thus, the second prong of Rogers is satisfied. Because both Rogers prongs are satisfied, Defendant is entitled to judgment on the pleadings as to Plaintiff’s trademark claims.”
To read the order in Dr. Seuss Enterprises v. ComicMix LLC, click here.
Why it matters: In this most recent round, the case continues to provide new analysis in the area of copyright and trademark law in the context of mash-ups involving protected works. While several issues remain to be decided—such as whether the plaintiff has protectable trademark rights in the font and illustration style of Go!—the defendant was able to leverage the Ninth Circuit’s recent interpretation of the Rogers test to successfully argue the title of Boldly does not violate the Lanham Act.