By Thomas Long, J.D.
An illustrated book titled Oh, the Places You’ll Boldly Go! did not make transformative use of Dr. Seuss’s copyrighted pictures and stories, although Lanham Act claims were properly dismissed under the Rogers test.
In a closely watched copyright and trademark dispute over a "mash-up" book imitating and combining features of the works of author/illustrator Dr. Seuss and the science fiction franchise Star Trek, the U.S. Court of Appeals has reversed a district court’s summary judgment in favor of the defendants on the copyright infringement claim and affirmed the district court’s dismissal and grant of summary judgment in favor the defendants. The Ninth Circuit held that the defendants’ use of Dr. Seuss’s copyrighted works in a book titled Oh, the Places You’ll Boldly Go! ("Boldly"), including the Seuss book Oh, the Places You’ll Go! ("Go!"), was not fair use, as the district court had determined. The appellate court held, however, that held that plaintiffs did not have a cognizable trademark infringement claim because the allegedly valid trademarks in the title, the typeface, and the style of Go! were relevant to achieving Boldly’s artistic purpose, and the use of the claimed Go! trademarks was not explicitly misleading (Dr. Seuss Enterprises, LP v. ComicMix LLC,December 18, 2020, McKeown, M.).
Plaintiff Dr. Seuss Enterprises, L.P., is an entity that owns and administers the intellectual property of the late author and artist Theodor Seuss "Ted" Geisel, known popularly as Dr. Seuss. The defendants were David Gerrold, an author who had written scripts for Star Trek television shows, including the iconic episode "The Trouble with Tribbles"; illustrator Ty Templeton; and Trek fan Glenn Hauman, the publisher of comic book company and co-defendant Comic Mix, LLC. Together they produced Boldly, a work that borrows graphical and other elements from Go! and other works by Dr. Seuss, and that uses Captain Kirk and the Starship Enterprise to tell readers that "life is an adventure but it will be tough." The defendants financed the mash-up book through a crowdfunding campaign.
Lower court proceedings. In 2016, DSE sued the defendants in the federal district court in San Diego, asserting claims for copyright infringement, trademark infringement under the Lanham Act, and unfair competition under California law. On December 7, 2017, the district court dismissed DSE’s trademark and unfair competition claims as barred under the doctrine of nominative fair use, but declined to find that the title of Boldly was entitled to First Amendment protection as an expressive work. The court also declined to dismiss DSE’s copyright claims. DSE filed an amended complaint, and ComicMix moved for judgment on the pleadings, seeking dismissal of the trademark and unfair competition claims. In May 2018 the court held that Boldly did not violate trademark rights in the title of Go! In March 2019, the court granted the defendants summary judgment on the copyright infringement claims, on the basis of a fair use defense. In the district court’s view, the highly transformative nature of the parody weighed in favor of finding fair use, in addition to the defendants taking no more than was necessary for their purpose, and the lack of evidence of harm to the market for DSE’s works. The district court also granted summary judgment in favor of the defendants on DSE’s remaining trademark infringement claims, holding that claims based on the alleged misappropriation of the stylized font of the Dr. Seuss books and Dr. Seuss’s unique illustration style were without merit. DSE appealed.
Copyright fair use—purpose and character. The Ninth Circuit reversed the district court’s fair use determination, holding that all of the fair use factors favored DSE. First, the appellate court determined that the first of the four fair use factors listed in Section 107 of the copyright act—the purpose and character of the infringing use—weighed "definitively" against the defendants. The defendants did not dispute that they tried to copy portions of Go! as accurately as possible, but they asserted that they had created a transformative work. The court noted that a transformative work "adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message."
An example of a transformative work is a parody. According to the Ninth Circuit, Boldly was not a parody, for purposes of copyright law, because Boldly did not critique or comment on Go!. The court rejected the defendants’ contention that Boldly was a parody "because it situated the ‘violent, sexual, sophisticated adult entertainment’ of Star Trek ‘in the context of [Dr. Seuss]’ to create a ‘funny’ book." The court explained that broadly mimicking Dr. Seuss’s style was not the same as critiquing it or holding it up to ridicule. Rather, the replacement of well-known Seuss elements and characters with features of Star Trek was done to tell the story of the Enterprise crew’s adventures, not to make a point about Go!
The Ninth Circuit also opined that Boldly was not otherwise transformative because the mash-up merely "leverage[d] Dr. Seuss’s characters without having a new purpose or giving Dr. Seuss’s works new meaning." Moreover, Boldly was meant to serve the same purpose as Go! and to convey a similar message and sentiment. The court noted that Hauman had created a side-by-side comparison of the Go! and Boldly texts in order "to try to match the structure of Go!." Said the court, "This copying did not result in the Go! story taking on a new expression, meaning, or message."
Copyright fair use—nature of copyrighted work. Next, the Second Circuit decided that Boldly’s copying of a creative and expressive work" tilted the second factor—the nature of the copyrighted work—against fair use. There was no dispute that Go! was a creative work of the type generally afforded strong copyright protection.
Copyright fair use—amount and substantiality of use. The third fair use factor examines the amount and substantiality of the portion of the copyrighted work used in the infringing work. Courts consider both the quantitative amount and qualitative value of the original work used in relation to the justification for that use. "The quantitative amount taken by Boldly is substantial," the court said. The defendants copied 14 of Go!’s 24 pages—almost 60% of the book—as well as significant illustrations from other Seuss stories. The court found it significant that Boldly "replicated, as much and as closely as possible from Go!, the exact composition, the particular arrangements of visual components, and the swatches of well-known illustrations." The mash-up also "took the heart"—the most valuable and pertinent potion—of DSE’s copyrighted images.
"Given the absence of a parody or a transformative work, ComicMix offers no justification for the commercial exploitation and the extensive and meticulous copying of Go!," said the court. "In fact, after the case was initiated, Gerrold offered to ‘replace the stuff that’s too dead on,’ demonstrating that the mash-up ‘based on Dr. Seuss’s artwork’ could have been created without wholesale copying of the work." Accordingly, this factor also weighed against fair use.
Copyright fair use—effect on market or value. The last fair use factor—sometimes called the most important one—is the effect of the infringing work on the market for or value of the copyrighted work. The district court—having made an erroneous finding that Boldly was transformative—erred further in shifting the burden of proof on this factor to DSE. Although the Ninth Circuit expressed reluctance to make a presumption on market harm, it opined that "ComicMix’s non-transformative and commercial use of Dr. Seuss’s works likely leads to ‘cognizable market harm to the original.’" The defendants contended that they did not have the burden of proof on this issue and therefore presented only "scant" evidence on its behalf. An expert report proffered by the defendants was premised on the mistaken premise that Boldly was transformative. Accordingly, the defendants did not meet their burden on the market effects factor. The court also said it was likely that the mash-up could injure DSE by usurping a potential market for licensed works. Because all four factors favored DSE, the appellate court concluded that the defendants could not sustain a fair use defense.
Trademark infringement. DSE asserted that the defendants infringed its registered and common law trademarks in the title of Go!, as well as common law trademarks in the "Seussian style of illustration" and "the Seussian font. Seuss’s trademark infringement claim failed as a matter of law, the court held. Because Boldly was an expressive work, the court applied the Rogers test to determine whether the Lanham Act applied. Under the Rogers test, the trademark owner does not have an actionable Lanham Act claim unless the use of the trademark is either (1) not artistically relevant to the underlying work or (2) explicitly misleads consumers as to the source or content of the work. According to the court, even if they were valid marks, the title, the typeface, and the style of Go! were relevant to achieving Boldly’s artistic purpose. Nor was the use of the claimed Go! trademarks "explicitly misleading" as to its source. The cover conspicuously listed Gerrold and Templeton, not Seuss, as authors, and Boldly contained a disclaimer stating that it was "not associated with or endorsed by" Seuss.
This case is No. 19-55348.
Attorneys: Stanley J. Panikowski (DLA Piper LLP) for Dr. Seuss Enterprises, L.P. Dan Booth (Dan Booth Law LLC) and Michael Licari (Sprinkle Lloyd & Licari LLP) for ComicMix LLC.
Companies: Dr. Seuss Enterprises, L.P.; ComicMix LLC
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