In Dr. Seuss Enterprises v. ComicMix, a much-watched copyright fair use case, a federal appellate court last month overturned a fair use decision by the lower court, finding that ComicMix’s book was an infringement of Dr. Seuss’s copyright.The lower court had concluded that ComicMix’s Oh, the Places You’ll Boldly Go!, which mimicked the artwork from the Dr. Seuss book Oh, the Places You’ll Go!,combining it with characters and elements from the Star Trek universe,was a fair use of the Dr. Seuss property. It was a decision that startled many in the copyright community since the ComicMix book was a clear knock-off of the Dr. Seuss book, borrowed far too much to say it merely “conjured up” the original, and was sold in the same market in direct competion with the original. The Ninth Circuit disagreed with the district court, stating that “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.” 

ComicMix admitted that it had copied from the Dr. Seuss book and explained how its illustrators spent hours painstakingly making their illustrations “compositionally similar” and even “copied the [Seuss] illustrations down to the last detail.” It defended its copying by arguing that the new book was fair use as a parody of the Dr. Seuss book, and that it had “transformed” the original work. The appeals court disagreed, concluding that there was no attempt to critique or comment on the original: “Absent new purpose or character, merely recontextualizing the original expression by ‘plucking the most visually arresting excerpt[s]’ of the copyrighted work is not transformative.” The court found the fact that ComicMix admitted that it could have mashed up the Star Trek universe with another work (such as Pat the Bunny) or created an entirely original work especially damning, saying that the Seuss work was chosen “‘to get attention or to avoid the drudgery in working up something fresh,’ and not for a transformative purpose.”

WHY IT WASN’T FAIR USE

The Ninth Circuit performed a detailed analysis of the four fair use factors, especially on the meaning of transformative use and its place within the fair use doctrine, as well as the need to consider the effect of the new use on the licensing market for the original. This analysis was welcome, given how broadly courts have interpreted transformative and expanded fair use in recent years. The appellate court concluded that none of the four factors of the fair use analysis (the purpose of the use, the nature of the work, the amount taken of the original work, and the impact on the market for the original) favored a finding of fair use. It found that (i) ComicMix’s mashup had a commercial purpose and was not sufficiently transformative to overcome that purpose, (ii) the highly creative nature of the Dr. Seuss work weighed against a finding of fair use, (iii) the new work took a substantial amount from the original work both quantitatively and qualitatively (“ComicMix took the heart of Dr. Seuss’s works”), and (iv) ComicMix didn’t meet its burden of showing that there was no harm to the market for the Seuss work. The court stated, “we recognize that ComicMix’s non-transformative and commercial use of Dr. Seuss’s works likely leads to ‘cognizable market harm to the original.’”

The court pointed out that ComicMix’s argument that there was no harm to the market failed to even address one of Dr. Seuss’s crucial rights—the right to create and authorize the creation of derivative works, a right which the plaintiff had successfully exploited for decades. The Ninth Circuit found that the defendant’s work usurped Dr. Seuss’s potential market and that “the unrestricted and widespread conduct of the sort engaged in by ComicMix could ‘create incentives to pirate intellectual property’ and disincentivize the creation of illustrated books.”

WHAT ABOUT TRADEMARK INFRINGEMENT?

In mashup situations such as this one (where the title of the original work was actually incorporated into that of the new work), questions of trademark infringement may also arise. Here, the Ninth Circuit upheld the lower court’s finding that the defendant had not infringed upon Dr. Seuss’s trademarks since ComicMix’s use of the trademarks in the title, typeface, and style was “artistically relevant” to ComicMix’s purpose, and therefore permitted under the trademark law. While the title did imply a connection to Dr. Seuss, the court looked to the fact that the cover conspicuously listed the names of the authors of the new work (who are not Dr. Seuss) and stated that the work is “not associated with or endorsed by” Dr. Seuss.