Judge Advances Suit Over Seuss-Star Trek Mashup Comic

SAN DIEGO (CN) – A federal judge has ruled a comic website can’t dodge copyright infringement claims for its reimagining of Dr. Seuss’ “Oh, the Places You’ll Go,” which incorporates “Star Trek” into the children’s classic.

In a 24-page order issued Thursday, U.S. District Judge Janis Sammartino found she could not say “as a matter of law” ComicMix’s use of Dr. Seuss Enterprises’ copyrighted material was fair use, and refused to dismiss Dr. Seuss’ claims.

ComicMix created a Kickstarter campaign to solicit funding for its reimagined version of the Dr. Seuss classic, which it wants to title “Oh, the Places You’ll Boldly Go.” The book combined aspects of the children’s book with “certain characters, imagery, and other elements from ‘Star Trek,’ the well-known science fiction entertainment franchise created by Gene Roddenberry.”

Perhaps predicting the issue of copyright infringement would be raised by Seuss Enterprises for its use of content from a handful of Dr. Seuss books, ComicMix noted on its Kickstarter webpage: “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 may 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,” the statement read, as quoted in Sammartino’s order.

Seuss Enterprises sent ComicMix a takedown letter after it learned of the Kickstarter campaign. Kickstarter later disabled ComicMix’s fundraising webpage.

ComicMix argues the copyright infringement claim is trumped by its right to fair use. But Seuss Enterprises pointed out it has published additional books stemming from “Oh, the Places You’ll Go,” including, “Oh! The Places I’ll Go,” and, “Oh, Baby! Go, Baby.”

Seuss Enterprises also publishes a series of books written and illustrated by other authors and artists which incorporates Seuss’ intellectual property, including “Oh, the Things You Can Do That Are Good For You,” “There’s No Place Like Space,” “Oh, The Pets You Can Get,” and others. The works are authorized by Seuss Enterprises but do not include Dr. Seuss’ name on the cover.

ComicMix claims its work is different than those licensed by Seuss Enterprises, and that “Oh, the Places You’ll Boldly Go” cannot cause harm to the market because it’s of a different thread and is a “mash-up” of the Seuss work and characters from another entertainment franchise, “Star Trek.”

But Sammartino disagreed with ComicMix’s take, pointing out Seuss Enterprises’ current licensing program with other authors and illustrators suggests “there is a potential market for a literary mash-up” that could be based on Seuss Enterprises’ past license programs.

“Defendant’s production of ‘Boldly’ may result in an adverse impact on plaintiff’s derivative market and the court therefore finds there is potential harm to the market for plaintiff’s derivative works,” Sammartino wrote.

She also found “Oh, the Places You’ll Go” may be protected as a valid trademark because she agrees the book title has taken on a “secondary meaning” to be associated with Dr. Seuss and not just as a book title. But Sammartino said the “illustration style” of the book is not protectable.

While Sammartino noted Comic Mix must reference Dr. Seuss’ book in their title since it is a “mash-up,” she finds the defendant is not shielded by nominative fair use since “it was unnecessary for defendants to use the distinctive font as used on ‘Go’ to communicate their message.”

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