Oh, the Places You’ll Go! by Dr. Seuss is a classic. A staple of children’s libraries and graduation gifts, many of us can quote the book from memory. Recently two authors and die-hard fans of Star Trek decided to capitalize on Dr. Seuss’s popular book, creating Oh, the Places You’ll Boldly Go!, a Star Trek oriented parody. Unfortunately, Dr. Seuss Enterprises didn’t laugh, suing the two authors and their company, ComicMix, for trademark violations.

The Kickstarter-backed book was a primer on Star Trek lore, inserting Star Trek characters into the beloved Dr. Seuss book, including its pastel illustrations. According to a three-panel judge of the U.S. Court of Appeals for the Ninth Circuit, the ComicMix used large portions of the Dr. Seuss original, including small details of the illustrations. Lawyers for ComicMix argued that the book publication was “fair use” as a parody or transformative work. The Ninth Circuit disagreed. “The creators thought their Star Trek primer would be ‘pretty well protected by parody,’ but acknowledged that ‘people in black robes’ may disagree. Indeed, we do,” wrote Judge McKeown for the Ninth Circuit.

Under the “fair use doctrine,” a work is considered fair use if it is somehow “transformative” and “adds something new, with a further purpose or different character, altering the first with new expression, meaning or message.” Parodies are permitted as fair use even though they may mimic the original work because they provide commentary or criticism of the original.

Here, the Ninth Circuit held that the ComicMix book wasn’t a parody or a transformative work, merely repacking Star Trek characters into the storyline and illustrations of the Dr. Seuss book. The court opined, “Although ComicMix’s work need not boldly go where no one has gone before, its repackaging, copying, and lack of critique of Seuss, coupled with its commercial use of ‘Go!,’ do not result in a transformative use.”

As part of the appeal, the Ninth Circuit didn’t find that ComicMix violated the Dr. Seuss trademarks and affirmed the lower court’s denial of the trademark claim. The fair use case will now head back to the U.S. District Court for the Southern District of California to proceed to trial.

If you need advice on copyright, trademark, or other intellectual property matters, contact Carrie Ward at 856-354-7700 or email her at cward@earpcohn.com.