Dr. Seuss Enters., Ltd. P'ship v. ComicMix Ltd. Liab. Co. - 983 F.3d 443 (9th Cir. 2020)

Rule:

The factors that determine fair use have changed little since first announced in case law and now are reflected in 17 U.S.C.S. § 107 of the Copyright Act of 1976 as the following four non-exclusive factors: (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;(2) the nature of the copyrighted work;(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and(4) the effect of the use upon the potential market for or value of the copyrighted work. Congress codified these factors without intending to disrupt the common-law tradition of fair use adjudication. The fair use defense remains an equitable rule of reason.

Facts:

Oh, the Places You'll Go! (Go!) was the final book written by the late Theodor S. Geisel, better known by his pseudonym, "Dr. Seuss." Notably, Go! has been "the number-one book on The New York Times Best Sellers list" "[e]very year during graduation season." For simplicity, we refer to the relevant Dr. Seuss works collectively as Go!. Today, Dr. Seuss Enterprises, L.P. (Seuss) owns the intellectual property in Dr. Seuss's works, including the copyrights in his books and the trademarks in his brand. Oh, the Places You'll Boldly Go! (Boldly) is not a licensed work of Seuss. Nor is it a collaboration or an otherwise authorized work. Nevertheless, in May 2016, David Gerrold (author of Star Trek episodes) and Glenn Hauman decided to send the Enterprise crew to a new literary world. Gerrold and Hauman agreed to create a "Star Trek Primer"—a mash-up of Star Trek and another well-known primer. A mash-up is "something created by combining elements from two or more sources," such as "a movie or video having characters or situations from other sources." Gerrold and Hauman decided to use Go! and to place the Enterprise crew in a colorful Seussian landscape full of wacky arches, mazes, and creatures—a world that is familiar to Dr. Seuss readers but a strange new planet for Captain Kirk's team. They hired Ty Templeton, an experienced illustrator. ComicMix purposely crafted Boldly so that the title, the story, and the illustrations "evoke" Go!. In September and October of 2016, Seuss sent ComicMix a cease-and-desist letter and two follow-up letters. ComicMix responded that Boldly was a fair use of Go!. Seuss also sent Kickstarter a takedown notice under the Digital Millennium Copyright Act; Kickstarter took down the campaign and blocked the pledged funds. Boldly remains unpublished. Seuss filed suit against Hauman, Gerrold, Templeton, and ComicMix LLC in November 2016 for copyright infringement, trademark infringement, and unfair competition. The district court granted ComicMix's Rule 12(c) motion and dismissed Seuss's trademark infringement claim as it relates to the title of Boldly. The parties then filed cross-motions for summary judgment on the copyright claim, and ComicMix moved for summary judgment on the remainder of the trademark infringement claim. The district court granted ComicMix's summary judgment motion and denied Seuss's motion, holding that Boldly was a fair use of Go! and that the remainder of Seuss's trademark infringement claim failed.

Issue:

Was Boldly's use of Dr. Seuss's copyrighted works fair use and thus not an infringement of copyright?

Answer:

No.

Conclusion:

The court reversed the district court's summary judgment in favor of defendants on a copyright infringement claim and affirmed the district court's dismissal and grant of summary judgment in favor of defendants on a trademark claim concerning the book Oh, the Places You'll Boldly Go!, a Dr. Seuss and Star Trek mash-up. Reversing the district court's summary judgment on the copyright claim, and remanding, the panel held that defendants' use of Dr. Seuss's copyrighted works, including the book Go!, was not fair use. The court concluded that all of the statutory factors weighed against fair use, and no countervailing copyright principles counseled otherwise. The purpose and character of  Boldly weighed against fair use because defendants' use was commercial and was not a parody or otherwise transformative. The creative nature of Go! and the amount and substantiality of the use of Go! also weighed against fair use, as did the potential  market for or value of Seuss. The court held that because fair use is an affirmative defense, the burden is on defendants with respect to market harm. Affirming in part, the court held that plaintiffs did not have a cognizable trademark infringement claim because, under the Rogers test, the Lanham Act did not apply. The court concluded that 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.