An attempted Star Trek themed variation of a Dr. Seuss classic will not “live long and prosper.” In Dr. Seuss Enterprises, L.P. v. ComicMix, LLC, a federal appellate court held that a “mash-up” combining elements from Star Trek and Dr. Seuss was not sufficiently “transformative” and therefore failed to satisfy the fair use doctrine in violation of copyright law. According to ABA Litigation Section leaders, this case marks the importance of understanding the elements necessary for a variation to be protected by the fair use doctrine as defined by Section 107 of the Copyright Act of 1976.
Dr. Seuss Enterprises, L.P. (Seuss) sued ComicMix in the U.S. District Court for the District of Southern California, alleging copyright infringement of the children’s book, Oh, the Places You’ll Go! (Go!). The suit was filed after ComicMix produced a “mash-up” of the Seuss version called Oh, the Places You’ll Boldly Go! (Boldly!), consisting of a combination of artistic elements from both Seuss and Star Trek. The variation borrowed “liberally—graphically and otherwise—from Go! and other works by Dr. Seuss” and used “Captain Kirk and his spaceship Enterprise to tell readers that ‘life is an adventure, but it will be tough.’”
ComicMix moved for summary judgment, arguing that its mash-up was protected by the fair use doctrine, which permits the unlicensed use of copyright-protected works in circumstances where the alteration is considered “transformative,” such that a “new expression, meaning, or message” was added to the original work. The district court held that the variation was “highly transformative” of Go! and granted summary judgment in favor of ComicMix.
Seuss appealed the decision to the U.S. Court of Appeals for the Ninth Circuit, contesting the transformative nature of Boldly! The central question was whether Boldly!’s use of Seuss’s copyrighted works constituted fair use and, thus, was not an infringement of copyright. The appeals court reversed the lower court’s decision, concluding that “all of the fair use factors favor Dr. Seuss” rather than ComicMix.
On appeal, the court recited the factors that determine fair use as reflected in section 107 of the Copyright Act of 1976: “(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.” The court held that each of these factors favored Seuss.
As to the purpose and character of the use, the court explained that “[a]lthough a commercial use is no longer considered presumptively unfair, the [commercial] nature of the work remains ‘one element of the first factor enquiry.’” Boldly! was held to be an “indisputably commercial use of Go!”
With the first consideration favoring Seuss, the court then held that there was nothing sufficiently transformative about Boldly! that would satisfy elements two or three of the inquiry. Rather, the court explained that the Star Trek variation “merely supersedes the objects of the original creation” absent a “new expression, meaning, or message.” The court continued to reason that the creative nature of Go! and the significant portion of it that was copied in Boldly! weighed heavily in favor of Seuss.
Finally, as to element four, the negative effect on the market value for Seuss foreclosed a finding of fair use in this instance.
Litigation Section leaders were struck by how heavily the court’s opinion favored Seuss. “The decision went into great detail to effectively explain that there was an awful lot of evidence to support that this was in no way fair use,” observes Michael D. Steger, New York, NY, cochair of the Section’s Intellectual Property Litigation Committee. “While the interplay between the four factors often does not lend itself to bright line rules, the court came down fairly definitively on each factor in favor of Seuss based on pretty damning evidence that the mash-up was a painstaking copy of the original work,” explains Steger.
“ComicMix certainly did not have the court’s sympathy,” opines Paula M. Bagger, Boston, MA, cochair of the Section’s Commercial & Business Litigation Committee. “On each prong, it seemed as though the defendant missed by a mile,” she asserts. However, “one important thing that the court did in this decision is reining in what it means to be transformative. ComicMix tried to push that boundary, and the court closed the door on it,” notes Bagger.
According to Steger, a better practice in this instance would have been to seek a license from Seuss. “This was not a close call,” Steger suggests. “A potentially effective approach would have been to seek a license, which the court noted that ComicMix chose not to do,” he adds. On the other hand, while “seeking a license would have been effective if granted,” counters Bagger, “if Seuss had refused, it is unclear how that might have been considered in the court’s analysis. At bottom, the court seemed unimpressed that a mash-up is transformative without a critical or aesthetic point.”
