ComicMix is currently embroiled in copyright and trademark litigation with Dr. Seuss Enterprises stemming from a crowd-funded book project called Oh, The Places You’ll Boldly Go! The project originated on the crowd-funding website Kickstarter. ComicMix intended to create a mashup of Dr. Seuss and Star Trek, and raised thousands of dollars to fund the project.
The lawsuit was filed at the end of 2016, and a federal court judge has recently ruled that the suit can proceed. Earlier, a U.S. District Court Judge had dismissed the trademark claims, allowing only the copyright claims to proceed. The claims were subsequently amended and are proceeding along with an additional claim for unfair competition.
This case, according to the District Court Judge, addresses an important and timely question about the new mashup culture, wherein two unique and independent creative concepts are mashed together. Courts are struggling to decide how this culture squares with the legal doctrine of nominative fair use. This doctrine allows for the use of another’s trademark for purposes such as commentary, criticism, comparative advertising, or parody. The legal standards for what constitutes fair use was articulated in 1992 after a number of newspapers used toll numbers to conduct polls on the popular band, The New Kids on the Block.
In trying to figure out whether ComicMix’s project constitutes nominative fair use, the Court considered whether the product is readily identifiable without the use of the trademark, and whether ComicMix falsely suggested that the project was sponsored by Dr. Seuss Enterprises. The trademark at issue was the title used and the font style.
The question still pending as the litigation proceeds is whether the use of the title, which the original use has sold over 650 million copies, was more than reasonably necessary. The most pressing issue in the case is that the mash-up used the exact same font as the Dr. Seuss original, even imitating exactly the unique shape of the original exclamation point. Because ComicMix was unable to establish fair use, the litigation was allowed to proceed to jury.
The licensing program of Dr. Seuss Enterprises currently allows other authors to publish books based off of its existing books and use of its characters. However, it does not have a licensing program that addresses the mash-up market. The company has stated if it decides to license mash-ups, it would be based on a new licensing program, not similar to or derived from its existing one.
Philadelphia Trademark Lawyers at Sidkoff, Pincus & Green P.C. Represent Clients in All Types of Intellectual Property Claims
To schedule a consultation with the Philadelphia trademark lawyers at Sidkoff, Pincus & Green P.C., call us today at 215-574-0600 or contact us online. We represent clients throughout Pennsylvania and New Jersey in all types of business litigation, including fair use, trademark, copyright, contract, tortious interference, and unfair competition claims.