The estate of the late author Theodor Seuss Geisel, better known as Dr. Seuss, and David Gerrold, a writer for Star Trek, have been locked in an intellectual property dispute over trademarks and copyrights for over a year now. Dr. Seuss’s estate filed a lawsuit against Gerrold that claims that Gerrold illegally infringes upon Dr. Seuss’s copyright and trademark works.
At issue is a comic that was co-written by Gerrold called “Oh the Places You’ll Boldly Go.” The comic combines recognizable elements from both the Star Trek universe and Dr. Seuss’s copyrights. The estate of Dr. Seuss has also filed claims of copyright infringement, trademark infringement, and unfair competition against the illustrator of the comic, Ty Templeton; the publisher of the comic, ComicMix; and the co-founder of ComicMix, Glenn Hauman.
In response, ComicMix filed motions to dismiss the lawsuit on the grounds that the use of Dr. Seuss’s copyright work was allowable under the fair use doctrine. While Judge Sammartino did partially grant ComicMix’s motion to dismiss by agreeing that ComicMix’s trademark use constituted nominative use and was therefore allowable, Judge Sammartino rejected ComicMix’s arguments that the use of Dr. Seuss’s copyrighted elements was similarly defensible under the doctrine of fair use.
Copyright Dispute – Fair Use Doctrine
At the heart of the copyright dispute is the complaint that Gerrold and ComicMix incorporate several copyrighted elements of Dr. Seuss’s works. The estate of Dr. Seuss argues that the infringed elements include, but are not limited to, stylized font, unique illustration style, characters, and backgrounds found throughout Dr. Seuss’s original work.
Judge Sammartino refused to grant ComicMix’s motion to dismiss, finding that a cursory examination of the comic reveals that the font used in both works is identical, and that the amount of copyrighted elements used by Gerrold and ComicMix was far more than necessary to communicate their message. As such, Judge Sammartino refused to grant the motion to dismiss on grounds of nominative fair use.
Nominative Fair Use Defense
Nominative fair use is an affirmative defense available to defendants accused of infringement. Basically, it allows a defendant to legally use a third-party’s intellectual property if they are only using it as a reference to describe that product or to compare it to their own. While nominative use still constitutes actual use, it is generally not illegal because it often falls under the fair use doctrine. Generally, courts will allow defendants to use another’s intellectual property if that good or service cannot be identified without direct reference or use of the content.
Trademark Fair Use Defense
For example, in trademarks the defendant may make nominative use of a third-party’s trademark if they only use the mark in a manner as necessary and do not participate in any action that could be misconstrued as endorsement by the actual trademark owner. Courts often also note that such nominative use does not dilute the trademark.
Legal Opinion for Trademark and Copyright Use
As the fair use doctrine can be rather confusing, especially in its application to copyrights and trademarks, it would behoove content creators to consult with experienced legal counsel before creating content that references or makes use of third-party content. Many content creators mistakenly believe that if their work uses less than ten percent of the original work, or if the work is a parody, they automatically qualify for protection under fair use. Such misunderstanding of the law can often cost content creators significant time and money. As such, it’s important to consult experienced legal counsel regarding how best to proceed with your content creation and the protection of such intellectual property assets.
Klemchuk LLP is an Intellectual Property (IP), Technology, Internet, and Business law firm located in Dallas, TX. The firm offers comprehensive legal services including litigation and enforcement of all forms of IP as well as registration and licensing of patents, trademarks, trade dress, and copyrights. The firm also provides a wide range of technology, Internet, e-commerce, and business services including business planning, formation, and financing, mergers and acquisitions, business litigation, data privacy, and domain name dispute resolution. Additional information about the litigation law firm and its litigation attorneys may be found at www.klemchuk.com.
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Also published on Medium.