A very interesting report in the Hollywood Reporter… it looks as though commentary, criticism, comparative advertising or parody still wins out
Here’s the report
If ComicMix survives a legal challenge to its mashup of Star Trek and Dr. Seuss, and it boldly took a step in that direction Monday, it will be largely due to a judge’s mashup of a 1986 Federico Fellini film and the Fox hip-hop drama Empire.
ComicMix is fighting a lawsuit brought by Dr. Seuss Enterprises over a crowdfunded book project titled Oh, the Places You’ll Boldly Go!
Almost a year ago, ComicMix nearly got U.S District Court Judge Janis Sammartino to dismiss all trademark claims because of nominative fair use, a doctrine that allows someone to use another’s mark for purposes of commentary, criticism, comparative advertising or parody.
At the time, ComicMix also argued that its work merited First Amendment protection under a test established in Rogers v Grimaldi, a 1989 decision that resulted from a lawsuit brought by the actress Ginger Rogers over the Fellini film Ginger and Fred. The test directs judges to examine whether use of a mark has artistic relevance, and if so, whether the work is explicitly misleading. Although ComicMix’s Boldly appeared to Sammartino to meet the criteria for protection, the judge highlighted a footnote in the Rogers decision that provided an exception for “misleading titles that are confusingly similar to other titles.”
Thereafter, Dr. Seuss Enterprises amended its complaint and, with emphasis on the illustrative style in Dr. Seuss books, got Sammartino to reject a motion to dismiss in December. In taking a second look at nominative fair use, the judge examined whether Boldly‘s use of Dr. Seuss’ books was more than reasonably necessary to identify its own work as a parody — and the judge ruled at the time that defendants’ use of a distinctive font precluded dispensing with the trademark claims.
And but, something happened while all this was going down.
Fox Television was caught up in a fight over the title of Empire, its hit show about a feuding music-industry family. Empire Distribution — a record label and publishing company that has worked with such hip-hop artists as T.I., Snoop Dogg and Kendrick Lamar — had brought its own trademark claims, but Fox prevailed, thanks to the Rogers test. This case went all the way up to the 9th Circuit Court of Appeals, which affirmed Fox’s win.
Soon after Dr. Seuss Enterprises scored its victory in December, ComicMix pointed to the Empire case as having disavowed the Rogers footnote that had created an opening for trademark claims over titles.
Sammartino agrees, writing that the 9th Circuit “applies the Rogers test rather than the likelihood-of-confusion test” and that the 9th Circuit states “that the [Rogers] footnote had only ever been cited once by an appellate court, and even then the Second Circuit had rejected its applicability.”
So after then finding the title of Boldly has artistic relevance and how Dr. Seuss Enterprises can’t point to any evidence that the title explicitly misleads as to the source of the work, she grants judgment to ComicMix on the pleadings with respect to trademark claims.
There’s still the question of copyright, but ComicMix must be favored there as the judge wrote last year that the Boldly book is “a highly transformative work that takes no more than necessary to accomplish its transformative purpose and will not impinge on the original market for Plaintiff’s underlying work.”
Should ComicMix eventually beat those copyright claims, it won’t be due to Fellini or Empire, but rather 2 Live Crew, but that’s another story.