Literary history’s littered with simply awful book titles: Jane Austen, for example, had First Impressions as the draft name of her second novel before she decided it better would be Pride and Prejudice. Jaqueline Susann skipped titling her pot-boiler novel They Don’t Build Statues to Businessmen and called it Valley of the Dolls, while F. Scott Fitzgerald vacillated about the handle for his novel, dubbed at one point Trimalchio in West Egg, before he picked The Great Gatsby. And what’s there to be said about the big ol’ writer’s egg the late, great 20th-century novelist Philip Roth might have laid had his publisher let him keep as part of his ouevre A Jewish Patient Begins his Analysis before changing its title to Portnoy’s Complaint?
A great title can make or break a book, clearly. But if it’s good enough for one tome, can it be mostly cribbed and popped on to another? Maybe, if it’s the oh-so-close title of a kid’s book classic and a crowd-funded, parody mashup with fictional elements of Star Trek and Dr. Seuss, or so U.S. District Judge Janis Sammartino in San Diego has recently decided.
With a tip of the cap to The Hollywood Reporter and legal analyst Eriq Gardner for posting the ruling, part of a larger case filed by Dr. Seuss Enterprises LP against ComicMix LLC, Sammartino has found that the comedic work titled Oh, the Places You’ll Boldly Go! did not infringe on a trademark held by the estate of Theodor Seuss Geisel, aka Dr. Seuss, for his final book Oh, the Places You’ll Go!
Dr. Seuss’ estate seemingly has spent more time in federal court than in Whoville, with the suit against ComicMix for copyright and trademark infringement first filed in 2016. It followed the self-described adoring fanboy Geisel satirists raising tens of thousands of dollars on Kickstarter to create a mash-up with characters from the legendary television and movie production Star Trek and situations in Places, the best-seller, often gifted at graduations, that sought to chronicle the ups and downs of a kid’s journey through life. The Dr. Seuss estate complained, got the Kickstarter campaign pulled, only to see it relaunched, and, finally, came the trademark and copyright infringement suit.
Last December, Sammartino nearly dismissed all trademark claims against ComicMix, based on the creatives’ nominative fair use defense. It allows the use of a mark for commentary, criticism, comparative advertising, or parody. ComicMix had also argued their work was entitled to First Amendment protections under the test outlined in Rogers v. Grimaldi, 875 F.2d 994 (1989), a case in which actress Ginger Rogers, who had been a legendary dance partner of actor Fred Astaire, sued over the Federico Fellini film Ginger and Fred. The test, outlined by an appellate court, asks whether use of a mark has artistic relevance, and, if so, whether the work is explicitly misleading. Sammartino said he could see granting ComicMix’s Boldly protection, yet refused to dismiss the mark claim, citing a Rogers footnote. It provided an exception for “misleading titles that are confusingly similar to other titles.”
In last week’s ruling, Sammartino had second thoughts, rooted in a recent decision in the senior and controlling U.S. Court of Appeals for the Ninth Circuit. There, Fox Television prevailed, mostly on a First Amendment basis, in an infringement dispute over the title of Empire, its hit show about a feuding music-industry family. Empire Distribution, a record label that releases digital music from hip-hop artists including Snoop Dogg, T.I. and Kendrick Lamar, had sued Fox, asserting mark infringement. In finding for Fox, the appellate ruling also disavowed the Rogers footnote, Sammartino agreed, opening up his acceptance of a key ComicMix defense in the unrelated case before him. “The Ninth Circuit stated the exception the footnote suggests may be ill-advised or unnecessary,” the district court judge wrote.
Sammartino still must determine the copyright claims in the case, which has generated considerable commentary and analysis, especially over the role and place for the mash-up. This “new form” has attracted lots of intellectual property and literary attention, as if Pride and Prejudice and Zombies or Little Women and Werewolves and Sense and Sensibility and Sea Monsters had sprung up as a cool thing out of nowhere. But what kind of mashup cases might be hotly contested if curious slammed-together titles and plots like the Connecticut Yankee in King Arthur’s Court or Frankenstein or Scheherazade were just arriving on the scene?