Court of Appeals concludes that mash-up book did not make fair use of the Dr. Seuss estate's copyrighted works
Since we last reported on this case (in May of 2020), the Court of Appeals for the Ninth Circuit has issued its opinion on the matter, concluding that ComicMix, LLC ("ComicMix") cannot successfully claim a fair use defense against claims of copyright infringement by Dr. Seuss Enterprises ("Seuss").
The dispute arose after ComicMix created, secured crowd-funding for, and received a publishing offer for a mashup book titled Oh, the Places You'll Boldly Go! ("Boldly"), which combined visual and structural elements of Dr. Seuss's Oh the Places You'll Go! ("Go") and other Seuss books with characters and situations from the Star Trek franchise. ComicMix claimed that Boldly was a parody, but the court of appeals concluded that Boldly does not qualify as a parody. Furthermore, the court determined that all four fair use factors weighed against Boldly's use of Seuss's copyrights.
The court started its analysis by considering the purpose and character of Boldly, concluding that the work was commercial in nature and not transformative, since it merely superseded Go instead of adding something genuinely new. In addition, the court determined that Boldly did not qualify as a transformative parody since it did not serve to criticize or ridicule either the story of Go or the Seussian style it embodies. These conclusions about this factor lean against a finding of fair use.
The court then considered the next factor: the nature of Go, the copyrighted work. Since Go is definitely creative and thus subject to maximum copyright protection, this factor weighed against fair use, although the court acknowledged that this factor's weight is not very significant.
The analysis continued with the third factor as the court considered the amount and substantiality of the material taken from Go and the other Seuss works. The court's opinion included side-by-side comparisons of illustrations from Go and Boldly. The court concluded that ComicMix imitated close to 60% of Go as well as significant illustrations from two other Dr. Seuss books. This copying was both qualitatively and quantitatively significant, and this finding also weighed against a fair use judgment.
The court then considered the fourth and final fair use factor—the effect of ComicMix's use on the market value of Seuss's copyrighted works. ComicMix argued in oral arguments that fair use should not be characterized as an affirmative defense, seeking to avoid having the burden of proving a lack of market harm. The court explicitly rejected this argument, reaffirming that fair use is indeed an affirmative defense and that ComicMix did have the burden of proof in the fair use determination, a burden that it failed to meet with any significant evidence. On the other hand, the court took note of Go's ongoing sales success and of the fact that Seuss engages in significant licensing and collaboration activity with its intellectual property. Both of these markets would be undermined by "unrestricted and widespread" unlicensed copying like that engaged in by ComicMix, so this factor also weighs against fair use in this case.
Since all four factors weighed against fair use, the court concluded that the affirmative defense did not justify ComicMix's use of Seuss's copyrighted material and that the use was resultingly infringement. The court did, however, conclude that Seuss did not have an actionable trademark claim against ComicMix in the latter's use of the font, style, and title of Go, which was another intellectual property question at issue in the suit.
After the case was remanded to the trial court in California, Seuss filed a Motion for Summary Judgment and a Memorandum of Points and Authorities in support of the Motion, claiming that the mandate of the court of appeals requires a judgement in its favor on the copyright question and that ComicMix's infringement was wilfull, entitling Seuss to heightened statutory damages. ComicMix opposed this Motion, arguing in its Response that questions remain as to the validity of two of the copyrights concerned in the dispute, that its infringement was not willful, and that its infringement could still be characterized as de minimus. Seuss, in turn, filed a Reply to the Response, citing further points and authorities against the registration, innocent infringement, and de minimus arguments. Seuss did agree with ComicMix, though, that a jury trial would be appropriate for deciding the amount of damages.
It remains to be seen what the court will make of these arguments. Updates will be provided as they become available.