A judge has allowed a lawsuit to proceed against the creators of Oh, the Places You’ll Boldly Go!—a nearly page-for-page remix of the Dr. Seuss classic Oh, the Places You’ll Go! and Star Trek. This decision reverses an earlier ruling.

After receiving a new court filing, US District Judge Janis Sammartino found that ComicMix, the company behind the new work, could not so easily have the case dismissed.

“Thus, after again weighing the fair use factors, the Court finds Defendants’ fair use defense fails as a matter of law,” Judge Sammartino wrote in a December 7 order.

The new book originally raised tens of thousands of dollars on Kickstarter before being pulled down in October 2016. The spat quickly resulted in this lawsuit, Dr. Seuss Enterprises v. ComicMix LLC, which was filed in federal court in San Diego in November 2016. Dr. Seuss Enterprises (DSE) represents the works of the now-deceased but still iconic children’s book author, Theodor Geisel.

DSE argued that ComicMix’s new mashup infringed on its intellectual property rights, while ComicMix argued that it was allowed under the fair use doctrine of American copyright law. That notion allows for certain remixes to be created and sold under certain conditions without violating the original copyright.

ComicMix filed a motion to dismiss the case, and, by June 2017, Judge Sammartino ruled in favor of ComicMix but allowed DSE to file again.

“Applying the fair use factors in the manner Plaintiff outlines would almost always preclude a finding of fair use under these circumstances,” she wrote in a June 2017 order. “However, if fair use was not viable in a case such as this, an entire body of highly creative work would be effectively foreclosed.”

Weeks later, DSE filed an amended complaint, clearly outlining other authorized new versions like There’s No Place Like Space! and attractions at theme parks, among other locales. After hearing further argument on the case, Judge Sammartino found that not only was ComicMix in possible violation of DSE’s copyright of the work, but that it also may run afoul of DSE’s trademark of the title and the artistic style of that title.

“Defendants not only use the words [‘Oh, the Places You’ll Go!’] in the title of Boldly but also use the exact font used by Plaintiff,” the judge continued. “The look of the lettering is unquestionably identical on both books, down to the shape of the exclamation point.”

On those grounds, ComicMix could not have the case dismissed after all.

All’s fair in love and use

Ars contacted several legal experts who argued that all may not be lost for ComicMix just yet.

Barton Beebe, a law professor at New York University and expert in IP law, emailed Ars to say that, while it makes sense that the lawsuit was not dismissed at this stage, the facts seem to be in ComicMix’s favor.

“A central question under copyright fair use is what impact the defendant’s conduct has on the potential market for or value of the copyrighted work,” he wrote.

Professor Beebe continued:

This potential market can include the market for licensing derivatives from the copyrighted work, like sequels or translations. So we ask if ComicMix is doing something without authorization and for free that people would or should typically pay Dr. Seuss Enterprises to be able to do—and if DSE says no, then people can’t do it. (If you think this is circular, you’re right).

Similarly, Jennifer Rothman, a law professor at Loyola Law School, agreed and emailed: “Dr. Seuss likely would not have given permission for this use… considering such possible licensing revenue could thwart the fair use defenses in virtually any instance where licensing is possible.”

However, other scholars pointed out that this case is similar to a previous case that also involves DSE, known as Dr. Seuss Enterprises v. Penguin Books. In that 1997 ruling by the 9th US Circuit Court of Appeals, the court found that a publisher could not simply just use the vehicle of The Cat in the Hat to rehash the OJ Simpson murder trial in a comical way without parodying the copyrighted work itself.

“The defendants asserted in their Kickstarter campaign that their use of the Dr. Seuss story was intended to be an homage, which is really the opposite of ridicule,” Annemarie Bridy, a law professor at the University of Idaho, emailed.

“That’s not to say that the defendants’ mashup can’t be fair use, but their lack of a critical purpose does undermine both their characterization of their work as a parody and their reliance on the Supreme Court’s parody fair use precedent.”

No further hearings have been scheduled, for now.

https://arstechnica.com/?p=1233045