Dr. Seuss Enterprises, L.P. v. Comicmix LLC
9th Cir. Dec. 18, 2020 (2020)
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Rule of Law:
A commercial work that extensively copies the creative expression and style of a copyrighted original, without true transformative purpose or criticism, does not qualify as fair use, particularly if it targets the original's market. For trademarks in expressive works, the Lanham Act does not apply unless the use is not artistically relevant or is explicitly misleading, as governed by the Rogers test.
Facts:
- Theodor S. Geisel, known as "Dr. Seuss," authored and illustrated numerous popular books, including "Oh, the Places You'll Go!" ("Go!"), "How the Grinch Stole Christmas!" ("Grinch"), and "The Sneetches and Other Stories" ("Sneetches"), which are widely recognized and highly successful.
- Dr. Seuss Enterprises, L.P. (Seuss) owns the intellectual property rights, including copyrights and trademarks, for Dr. Seuss's works, and actively licenses and oversees the creation of many new works and collaborations based on the original books.
- In May 2016, David Gerrold (a Star Trek episodes author) and Glenn Hauman (Vice President of ComicMix LLC) decided to create a "Star Trek Primer" by combining elements from Star Trek with another well-known primer.
- Gerrold and Hauman chose "Go!" as the primer to mash up with Star Trek and hired illustrator Ty Templeton to create the artwork.
- ComicMix (Gerrold, Hauman, and Templeton) purposefully designed their book, "Oh, the Places You'll Boldly Go!" ("Boldly"), to "evoke" "Go!" in its title, story, and illustrations, aiming to closely match the structure and extensively copy the visual compositions and text from Dr. Seuss's works.
- ComicMix intended to commercially publish and sell "Boldly," securing a conditional order for 5,000 copies from an e-commerce retailer and launching a successful Kickstarter crowdsourcing campaign in August 2016, which raised nearly $30,000.
- Seuss became aware of "Boldly" through ComicMix's fundraising efforts.
- "Boldly" remains unpublished.
Procedural Posture:
- In September and October 2016, Dr. Seuss Enterprises, L.P. (Seuss) sent cease-and-desist letters to ComicMix; ComicMix responded that "Boldly" constituted fair use.
- Seuss also sent a takedown notice under the Digital Millennium Copyright Act to Kickstarter, which then removed ComicMix’s campaign and blocked the pledged funds.
- In November 2016, Seuss filed suit against Glenn Hauman, David Gerrold, Ty Templeton, and ComicMix LLC (collectively "ComicMix") in the United States District Court for the Southern District of California, alleging copyright infringement, trademark infringement, and unfair competition.
- The district court granted ComicMix’s Rule 12(c) motion for judgment on the pleadings, dismissing Seuss’s trademark infringement claim as it related to the title of "Boldly."
- The parties subsequently filed cross-motions for summary judgment on the copyright infringement claim, and ComicMix also moved for summary judgment on the remaining trademark infringement claim.
- The district court granted ComicMix’s motion for summary judgment and denied Seuss’s motion, ruling that "Boldly" was a fair use of "Go!" and that Seuss’s remaining trademark infringement claim failed.
- Dr. Seuss Enterprises, L.P. (Plaintiff-Appellant) appealed the district court's grants of summary judgment to the United States Court of Appeals for the Ninth Circuit.
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Issue:
Does a commercial "mash-up" book that extensively copies the visual and textual expression and style of Dr. Seuss's copyrighted works, without providing genuine critique or commentary, qualify as fair use under 17 U.S.C. § 107, thereby exempting it from copyright infringement?
Opinions:
Majority - McKeown
No, ComicMix’s commercial mash-up book, "Oh, the Places You’ll Boldly Go!", does not qualify as fair use of Dr. Seuss’s copyrighted works because all four statutory factors for fair use weigh against it, leading to a conclusion of copyright infringement. The court first addressed the purpose and character of the use, finding it weighed heavily against fair use. "Boldly" was undisputedly commercial and not transformative. It was not a parody because it did not critique or comment on the substance or style of "Go!"; instead, it sought to "evoke" its sentiment and "merely repackaged" the original work, leveraging Dr. Seuss's material to "get attention or to avoid the drudgery in working up something fresh." The court noted that "Boldly" lacked the benchmarks of transformative use, which include adding new information, aesthetic, insights, understanding, or value to the original, or using the original as raw material for a different artistic expression. Next, the nature of the copyrighted work also weighed against fair use because Dr. Seuss's books are highly creative and expressive works, placing them "closer to the core of intended copyright protection" where fair use is more difficult to establish. Regarding the amount and substantiality of the portion used, the court found ComicMix's copying substantial, both quantitatively and qualitatively. ComicMix replicated "14 of Go!’s 24 pages" (nearly 60%), along with significant illustrations from "Grinch" and "Sneetches," meticulously copying exact compositions, visual arrangements, and linework, taking the "heart" of Dr. Seuss’s works. The argument that this was a small fraction of Dr. Seuss's entire body of work was rejected as "fake math." Finally, the effect of the use upon the potential market for or value of the copyrighted work weighed against fair use. The court clarified that fair use is an affirmative defense, and thus ComicMix bore the burden of proving no market harm, which it failed to do. "Boldly" intentionally targeted the same graduation market as "Go!" and directly competed with Seuss’s extensive derivative works market. Unrestricted and widespread conduct of this kind would undermine Seuss’s potential market and disincentivize the creation of original illustrated books, contrary to copyright's purpose. The court also affirmed the district court’s dismissal and summary judgment on the trademark infringement claim. Applying the Rogers test, the court concluded that the use of Dr. Seuss’s trademarks (title, typeface, style) in "Boldly" was artistically relevant to the work's purpose as a mash-up and was not "explicitly misleading" to consumers about the source of the work. Factors such as the inclusion of new expressive content beyond the mark itself, the listing of Gerrold and Templeton as authors on the cover, and an explicit disclaimer that "Boldly" was "not associated with or endorsed by" Seuss prevented the use from being explicitly misleading.
Analysis:
This case reinforces the rigorous standard for establishing fair use, particularly for commercial uses of highly creative works. It clarifies that merely adding new content or combining existing works (mash-up) is not inherently transformative if the new work primarily repackages the original without genuine critique, comment, or new meaning. The opinion strongly reiterates that fair use is an affirmative defense, placing the burden of proof, including market harm, squarely on the alleged infringer. Furthermore, it applies the Rogers test to maintain a high bar for trademark infringement claims involving expressive works, balancing artistic freedom with trademark protection by requiring artistic relevance and a showing of explicitly misleading conduct.
