The Ninth Circuit Disallows Fair Use Defense for Dr. Seuss-Star Trek “Mashup”
Steven T. Lowe
On December 18, 2020, the Ninth Circuit ruled that ComicMix’s comic book mashup of Dr. Seuss and Star Trek was not protected by the “fair use” doctrine in copyright law. A mashup is a work created by combining elements from two or more sources.
ComicMix had created a comic book called “Oh, the Places You’ll Boldly Go!” that combined Dr. Seuss’ classic illustrated book entitled “Oh, the Places You’ll Go!” with elements from the television show Star Trek. In 2019, a federal judge had ruled that ComicMix’s comic book was different enough from the original works that such a satire qualified for immunity under the “fair use” doctrine. The fair use doctrine is a principle of law whereby some uses of copyrighted works are not considered infringements because they are so different or are being used for educational purposes, parody, or other uses which are considered “fair.” Dr. Seuss’ estate sought the appealed ruling.
The Ninth Circuit determined that the comic book’s copying of the Seuss book’s illustrations was so substantial and meticulous that merely replacing some visual elements with Star Trek iconography was not enough. The court also dismissed the notion of the comic book qualifying as a parody, since the work’s mimicry of the Seussian style was not used to comment or critique the original.
The three-judge panel further ruled that ComicMix’s work unlawfully intrudes upon the market reserved to the original book’s copyright holder. They pointed out that the Seuss estate regularly licenses the rights to the classic books, thus authorizing the intellectual property to be used to create “derivative works.” A derivative work is a creative work based on or derived from one or more already existing works. Since the copyright holder routinely exploits this market by licensing derivative works, the court found that ComicMix’s unlicensed copying of “Oh, the Places You’ll Go!” could undermine the Seuss estate’s potential market.
The opinion did, however, side with ComicMix in upholding the dismissal of the Seuss estate’s trademark cause of action. To arrive at this ruling, the court applied a principle of law that favors protections for “expressive works” over trademark claims, so long as there is some artistic relevance of the trademark to the work and there is no explicitly misleading impression regarding “sponsorship.” The Ninth Circuit concurred with the lower court that ComicMix’s work did not explicitly create such a misleading impression, and therefore the trademark claims were properly dismissed.
By throwing out the fair use defense for the copyright claims, though, the court breathed new life into the lawsuit, with the case proceeding forward to resolve the copyright infringement claims.
Dr. Seuss Enterprises is represented by Tamar Y. Duvdevani, Stanley J. Panikowski, and Andrew Deutsch of DLA Piper. ComicMix is represented by Dan Booth of Dan Booth Law LLC.
The case is Dr. Seuss Enterprises LP v. ComicMix LLC et al., case number 19-55348, in the U.S. Court of Appeals for the Ninth Circuit.
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