One of the last books written by Dr. Seuss, “Oh, The Places You’ll Go” is one of the bestselling books during graduation season each year.  The copyright for this book, like all of the works of Dr. Seuss, belongs to Dr. Seuss Enterprises, LP, which issues licenses for the creation of new works under the Dr. Seuss brand.  It also works closely to oversee licenses of its work, which it carefully vets.  As any parent (and even non-parent) knows, there are tons of Dr. Seuss-licensed works such as toys, video games and books.

In 2016, a group attempted to produce and market a book that would be a “mash up” of Dr. Seuss’ “Oh, The Places” and Star Trek, in which the crew of the USS Enterprise would be sent through the world inhabited by the characters of “Oh, The Places You’ll Go!”  A “mash up” is essentially a work that is created by combining “elements from two or more sources,” such as having specific movie characters inhabit a literary world, etc.

The plan was to create a new work called, “Oh The Places You’ll Boldly Go,” a play on words from the old Star Trek series that the crew was “boldly going where no man had gone before.”

ComicMix planned to publish and sell the Boldly book and started a successful crowdfunding campaign to raise money to produce it.  In late 2016, when Dr. Seuss Enterprises became aware of this proposed new work, it sent a cease and desist letter seeking to stop the publication of Boldly.  ComicMix responded that its Boldly book was a “fair use” of any copyright held by Dr. Seuss.  Nevertheless, Kickstarter stopped the crowdfunding campaign and the book remains unpublished.

Seuss filed suit against ComicMix and various individuals involved with the planned publication of Boldly claiming copyright infringement, trademark infringement and unfair competition. (This article will focus only on the copyright infringement claim.)  Both sides moved for summary judgment as to the copyright infringement claim and the district court granted ComicMix’s motion, finding that Boldly “was a fair use of” the Oh, The Places book.  The district court reached this finding despite ComicMix apparently not disputing that it tried to copy portions of Oh, The Places as accurately as possible.  There was apparently evidence that ComicMix intended Boldly “[to] keep to [Oh, The Places’] sentiment” and to reinforce the idea that “life is an adventure but it WILL be tough and there WILL be set backs and you should not despair them.”  In creating Boldly, a side-by-side chart comparing the text of the two books was created so that Boldly would “match the structure of” Oh, The Places.  It also closely mimicked many of the illustrations from that book (as well as a few other Dr. Seuss books).

Dr. Seuss appealed the district court’s ruling to the Ninth Circuit, which was asked to resolve the issue of whether Boldly was indeed a “fair use” of Oh, The Places.  There was evidence apparently in the record that the creators of Boldly thought it would fall plainly in the sphere of parody and therefore be considered fair use.  Although they apparently had some concerns, they apparently “did not consult a lawyer or pursue the option of a license [from Dr. Seuss].”  In hindsight, the Boldly creators may wish they had.

The Ninth Circuit began by focusing on the roots of the fair use doctrine.  They recognized that this doctrine is over 150 years old and was first considered in connection with an author copying the writings of George Washington for a biography.  In 1841, the U.S. Supreme Court held that this was “a justifiable use of the original materials, such as the laws recognizes as no infringement of the copyright.”  The doctrine of fair use was originally a court-developed doctrine until 1976 when Congress codified it into the Copyright Act.  Under the statute, “the fair use of a copyrighted work … is not an infringement of copyright.”  17 U.S.C. §107.  The doctrine of fair use is a defense that allows the courts to refuse to apply a strict application of the copyright statute when doing so “would stifle the very creativity which that law is designed to foster.”

In determining whether fair use exists, a court is to look at four factors set forth in section 107: (1) “the purpose and character of the use,” including whether it has a commercial nature or is for non-profit educational purposes; (2) “the nature of the copyrighted work;” (3) how much of the copyrighted work is being used in proportion to the whole; and (4) “the effect of the use upon the potential market for or value of the copyrighted work.”   The Ninth Circuit recognized that each of these factors are “to be explored and the results weighed together in light of the purposes of copyright.”  As will be discussed below, the Ninth Circuit concluded that all of these statutory factors weighed strongly in favor of Dr. Seuss and therefore concluded that Boldly did not make “fair use” of the Oh, The Places book.

The Ninth Circuit continued by recognizing that the first factor, i.e., “the purpose and character of the use,” is probably the most important since it will influence a court’s analysis under the other factors.  For instance, in examining the third factor, i.e., the amount and substantiality of the use, courts are to consider how this relates back the first factor as to whether it has a commercial or non-profit educational purpose.

The Ninth Circuit continued by noting that Boldly was intended to have a commercial purpose.  While this does not make it “presumptively unfair,” the Ninth Circuit turned to whether ComicMix’s use of the material from Oh, The Places book was “transformative” in nature.  The Ninth Circuit noted that a transformative work “adds something new with a further purpose or different character altering the first with new expression, meaning or message.”  That is a work that “merely supersedes the objects of the original creation” could not be transformative in the opinion of the Ninth Circuit. In essence, ComicMix was arguing that Boldly was a parody of Oh, The Places and therefore was transformative and thus fair use.

The Ninth Circuit noted that parody can fit within some of the factors that Congress intended to constitute fair use such as “criticism” or “comment.”  The Ninth Circuit defined parody as using “some elements of a prior author’s composition to create a new one that, at least in part, comments on that [original] author’s works.”  In other words, “a parody is a spoof, send-up, caricature, or comment on another work.”

Using these frameworks, the Ninth Circuit concluded that Boldly was not a parody in that it did not critique nor comment on Oh, The Places.  Rather, at best, Boldly merely took the characters from Star Trek and attempted “to create a `funny’ book” by “mashing” them up with Oh, The Places book.  The Ninth Circuit concluded that there was nothing in Boldly that was intended to ridicule, criticize, or even comment upon Dr. Seuss’ work in his Oh, The Places book.

Facing the rejection of its parody claim, ComicMix argued that Boldly was still transformative because it replaced Dr. Seuss’ characters and added other elements with Star Trek material.   The Ninth Circuit reasoned that in order for a work to be truly transformative, it must satisfy three factors: (1) “further purpose or different character” in the defendant’s work, i.e., “the creation of new information, new esthetic, new insights and understanding;” (2) “new expression meaning or message in the original work, i.e., the addition of value to the original;” and (3) the use of quoted matter as “raw material” instead of repackaging it and “merely superseding the objects of the original creation.”  The Ninth Circuit concluded that Boldly had none of these characteristics.

ComicMix next argued that it was still transformative because it had “extensive new content.”  The Ninth Circuit rejected this holding that “the addition of new expression to existing work is not a get out of jail free card that renders the use of the original transformative.”  Rather, the new material still has to be transformative to constitute fair use. The Ninth Circuit concluded that because the creators of Boldly intended to “keep to [Oh, The Places] sentiment, it had no new purpose but merely [plucked out] the most visually arresting excerpts.”  The Ninth Circuit further concluded that Boldly did nothing to alter the expression, meaning or message of Oh, The Places.  Most troubling for the Ninth Circuit was that the evidence showed that ComicMix apparently repackaged many of the illustrations from the Oh, The Places book.  [The Ninth Circuit’s opinion includes side-by-side comparisons of the illustrations from the two books.]  Furthermore, the Ninth Circuit reasoned that instead of using Oh, The Places as a starting point to make new work, the creators of Boldly tried “to match the structure of [Oh, The Places].”  Thus, the Ninth Circuit concluded that the first factor weighed against fair use.

The second factor the Ninth Circuit evaluated was to consider “the nature of the copyrighted work.”  In essence, “creative work are `closer to the core of intended copyright protection’ than informational or functional works `with the consequence that fair use is more difficult to establish when the former workers are copied’.”  Given the obviously creative nature of Dr. Seuss’s Oh, The Places, the court found that this factor also weighed against fair use.

Turning to the third factor, i.e., the amount and substantiality of the portion used in comparison to the whole, the court noted that it was to look at both the quantative amount and qualitative value of the original work in relation to the justification for the fair use.  Once again, this factor circles back to the first factor, which dealt with the purpose and character of the use.

The Ninth Circuit concluded that quantitatively Boldly took a substantial amount of work from Oh, The Places.  While this was to be a flexible standard, the Ninth Circuit found it important that ComicMix had essentially copied 14 of the 24 pages from Oh, The Places, i.e., about 60% of the book. The illustrator for Boldly testified that not only had he studied each page of Oh, The Places to get a sense of the what the layout was, but he then “copied `the layout so that things are in the same place they are supposed to be’.”  Thus, the Ninth Circuit concluded that given the absence of parody and/or transformative work, there was really no excuse for the commercial exploitation and extensive copying of Oh, The Places by Boldly.  Thus, this third factor weighed against a finding of fair use.

Finally, the Ninth Circuit considered the effect on the potential market as well as who has the burden of proof on this issue. The district court had apparently put the burden on Dr. Seuss to show how Boldly had harmed it in the marketplace.  The Ninth Circuit held that this was error because fair use is an affirmative defense and thus ComicMix, as the defendant, had the burden to “bring forward favorable evidence about relevant markets.”  In light of this burden, the Ninth Circuit concluded that ComicMix had not met its burden to satisfy the fourth factor.

The Ninth Circuit appeared troubled by what it perceived as ComicMix attempting to side-step the evidence that “it intentionally targeted and aimed to capitalize on the same graduation market as” Oh, The Places.  ComicMix apparently timed the release of its Boldly book to coincide with school graduations.  The Ninth Circuit also reasoned that ComicMix was ignoring that its book would harm the derivative market for Oh, The Places, i.e., the right of Dr. Seuss to license derivative works based on it.  ComicMix apparently tried to argue that Dr. Seuss had never licensed Oh, The Places, without the use of Dr. Seuss characters and therefore would be unlikely to license a work involving Star Trek characters.  However, the Ninth Circuit said this was a problem of ComicMix’s creation because it never asked for a license.  Finally, the Ninth Circuit concluded that in light of Dr. Seuss’ strong brand, it was entitled to extra protection in the market from others seeking to capitalize on its copyrighted works.

The Ninth Circuit’s decision in Dr. Seuss Enterprises v. ComicMix, LLC, is a good primer on the application of the “fair use” doctrine as well as the respective burdens of proof for the parties to marshal their evidence.  It is also a sober reminder for creators to consult with legal counsel as to whether their proposed work truly is a “fair use” or can constitute parody, rather than taking their chances in the courts.  You may not like the places where you end up.