Mash-Up of Dr. Seuss Classic and Star Trek Is Not Fair Use: Ninth Circuit
Law stated as of 21 Dec 2020
•
USA (National/Federal)
•
by Practical Law Intellectual Property & Technology
PRACTICAL LAW
•
21 Dec 2020
In Dr. Seuss Enterprises, L.P. v. ComicMix LLC, the US Court of Appeals for the Ninth Circuit held that a mash-up of Star Trek and Dr. Seuss's Oh, the Places You'll Go! did not constitute fair use of the latter.
On December 18, 2020, in Dr. Seuss Enterprises, L.P. v. ComicMix LLC, the US Court of Appeals for the Ninth Circuit reversed the US District Court for the Southern District of California's grant of summary judgment on a copyright infringement claim, holding that the work in question—a mash-up of Dr. Seuss's classic book Oh, the Places You'll Go! and Star Trek—did not constitute fair use ( (Dec. 18, 2020)).
This case involves the defendant ComicMix LLC's illustrated book entitled Oh, the Places You'll Boldly Go! The book puts the well-known Star Trek characters in a colorful, Seussian landscape full of the whimsical design elements featured in many Dr. Seuss stories and tells the same general story as Dr. Seuss's original. It was undisputed that ComicMix purposefully created its work so that the title, story, and illustrations evoke Oh, the Places You'll Go!, including by hiring an experienced illustrator to mimic the visual elements of the Dr. Seuss book. The ComicMix work was not licensed by Dr. Seuss nor authorized in any way.
In 2016:
In response to ComicMix's Kickstarter crowdsourcing campaign to pay for production of its book, Dr. Seuss Enterprises, L.P. (Seuss) sent a cease-and-desist letter and two follow-up letters.
ComicMix responded that its work was a fair use of the Dr. Seuss work.
In response to a takedown notice from Seuss, Kickstarter took down the campaign and blocked the pledged funds. ComicMix's book was never published.
Seuss filed suit alleging, in relevant part, copyright infringement and trademark infringement.
After multiple motions, the district court granted summary judgment, holding that:
Seuss's copyright infringement claim failed because the ComicMix work was a fair use of the Dr. Seuss work.
Seuss's trademark infringement claim failed under the test established in Rogers v. Grimaldi for use of trademarks in expressive works (875 F.2d 994 (2d Cir. 1989)).
On appeal of the copyright claim, ComicMix did not dispute that it copied portions of the Dr. Seuss original work. The only issue was whether the copying was a fair use. The Ninth Circuit held that it was not because all four factors of the fair use test weighed against a fair use finding. With respect to the important first-factor, the court found that ComicMix's use of the original Dr. Seuss work is not transformative because:
ComicMix's work was not a parody because:
it did not critique or comment on the original work;
a post-hoc characterization of the ComicMix's work as criticizing the theme of banal narcissism in the original work was not convincing.
ComicMix's work was not otherwise transformative because, as in Penguin Books, the work repackaged what Dr. Seuss already created and merely overlaid a new plot without changing the expression, meaning, or message of the original.
ComicMix's addition of new content did not render the use transformative as the new material was not accompanied by the benchmarks of transformative use.
ComicMix's work did not possess a further purpose or different character and simply paralleled the original work's purpose and put forth the same message.
ComicMix's work altered the Star Trek universe by sending its characters to a new world, but it did not alter the world created and intricately detailed by Dr. Seuss. The work depicted Star Trek characters simply stepping into the shoes of the characters of the original Dr. Seuss work.
ComicMix could have based its story on any work, but selected the Dr. Seuss work only to get attention or to avoid the drudgery of creating something fresh.
With respect to the other three factors, the court found:
The second factor weighed against fair use because Dr. Seuss's work was highly creative and expressive.
The third factor weighed against fair use because:
the quantity of material copied from the original Dr. Seuss works was substantial and ComicMix closely replicated the exact composition, visual component arrangements, and swatches of well-known illustrations from the original work;
the qualitative value of the copying was substantial because ComicMix copied the highly expressive core (the "heart") of the Dr. Seuss original; and
the fact that ComicMix copied from only five of Dr. Seuss's almost 60 books was not relevant, because this factor looks at the amount copied from the allegedly infringed work, not an author's entire body of work.
The fourth factor weighed against fair use because:
the defendant had the burden to show that its use did not cause undue harm to the potential market of the original and its derivative works;
the district court erred in shifting that burden to Seuss;
the non-transformative nature of ComicMix's work led to a greater certainty of market substitution and therefore market harm;
the evidence showed that ComicMix intentionally targeted the same school graduation market as the Dr. Seuss original; and
ComicMix did not address the copyright holder's right to the derivative works market, which would be curtailed by works like ComicMix's mash-up, and Dr. Seuss routinely authorized derivative works based on the original.
With respect to Seuss's trademark infringement claim, the Ninth Circuit affirmed the district court's holding that the claim failed the Rogers test because the trademarks in the ComicMix work have artistic relevance—a low bar—and the trademarks do not explicitly mislead about the source of the work (875 F.2d 994, 999 (2d Cir. 1989)). The court explained that including a well-known name in the title of a book is not explicitly misleading if it only implicitly suggests endorsement or sponsorship.
End of Document
Resource ID w-028-9414Document Type Legal update: archive
Products
PL US Sector Media & Entertainment, PLC US Intellectual Property and Technology, PLC US Law Department