Last week, the U.S. Court of Appeals for the Ninth Circuit issued an opinion in Seuss Enters., L.P. v. ComicMix LLC, 19-55348 (December 18, 2020), reversing the district court’s summary judgment in favor of the defendant and holding the defendant could not sustain a fair use defense. It also affirmed summary judgment granted to the defendant on the plaintiff’s trademark infringement claim.
In 2016, defendant (ComicMix) agreed with an author of Star Trek episodes to create a mash-up of Star Trek and the Dr. Seuss primer Oh, the Places You’ll Go! (Go!). It called the mash-up Oh, the Places You’ll Boldly Go! (Boldly Go!). The creators thought their mash-up would be “pretty well protected by parody,” but acknowledged “people in black robes may disagree.” (According to the Ninth Circuit, “Indeed, we do.”)
Dr. Seuss Enterprises, L.P. (“Seuss”) owns the intellectual property in Dr. Seuss’s works. Seuss sued ComicMix for copyright and trademark infringement. The district court dismissed the trademark infringement claim under Rule 12(c). The district court also granted ComicMix’s summary judgment and dismissed the copyright infringement claim, citing fair use. Seuss appealed.
The Ninth Circuit found that all four statutory fair use factors weighed decisively against ComicMix, resulting in no fair use. With respect to the first factor, the purpose and character of the use, the Court found the mash-up commercial and not transformative. The Court found that the accused mash-up was not a parody because it was not a spoof, caricature, send-up, or comment on another work. Merely adding Star Trek characters on top of meticulous copying of Go! failed to be transformative. The Court noted several figures used in Boldly Go! closely mimicked figures from Go! and other Seuss works.
The remaining factors also weighed against fair use. The nature of Go! was creative and expressive. The amount of work taken by Boldly Go! was substantial, by quantity and quality.
The defendant failed to meet its burden to show lack of harm to the value or market for the copyrighted work. The market for Boldly Go! paralleled the market for Go!
The Court also affirmed the dismissal of the trademark infringement claim because the accused use was artistically relevant to the underlying work and was not explicitly misleading.