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Dr. Seuss/Star Trek Mashup Not Fair Use, Ninth Circuit Says (3)

Dec. 18, 2020, 5:08 PM; Updated: Dec. 18, 2020, 9:34 PM

A book that mashed up elements of Star Trek with scenes from Dr. Seuss’ “Oh, the Places You’ll Go!” wasn’t protected from Dr. Seuss Enterprises LP’s copyright claims by the fair use doctrine, the Ninth Circuit ruled Friday.

In a case that tested the limits of fair use, the U.S. Court of Appeals for the Ninth Circuit rejected the Southern District of California’s finding that the book was safe from Seuss Enterprises’ suit because it made a transformative use of Seuss’ stories. All of the factors in the fair use analysis weighed against a finding of fair use, the court said, remanding the copyright claims.

Former Star Trek writer David Gerrold wrote “Oh, the Places You’ll Boldly Go!,” which combined Star Trek characters, settings, and concepts with a Seussian art style and storytelling that mimicked Seuss’ book. ComicMix planned to publish and sell the book. Seuss Enterprises shut down a Kickstarter campaign to pay the book’s production costs and sued for copyright and trademark infringement.

The decision emphasized that merely combining protected works “isn’t a get-out-of-jail-free card” without altering the inherent character of the work, upholding past precedents including a landmark ruling involving another Dr. Seuss book.

It also rejected ComicMix LLC’s argument that its work parodied Seuss’ book, saying that was a stretch and after-the-fact justification.

“It’s an early Christmas present for media companies, and it’s a lump of coal for creators of fan fiction,” copyright attorney Aaron Moss of Greenberg Glusker Fields Claman & Machtinger LLP said, noting content industries had been “shaking in their boots” at the notion of the lower court being affirmed. “You can’t simply combine two works and claim that that is sufficiently transformative when there’s not some parody or underlying criticism of the works.”

Copyright attorney Jacqueline C. Charlesworth of Alter Kendrick & Baron LLP—who wrote a friend-of-the-court brief on behalf of the Motion Picture Association—called the decision “an important corrective on the meaning of transformative use, which many courts have misinterpreted.”

No Ridicule

The Ninth Circuit was unconvinced by Gerrold and ComicMix’s argument that “Boldly” was protected from the copyright claims because it was a transformative parody of Seuss’ work.

“Although elements of Go! are featured prominently in Boldly, the juxtapositions of Go! and Star Trek elements do not hold Seussian style up to ridicule,” the court said. “From the project’s inception, ComicMix wanted Boldly to be a Star Trek primer that ‘evokes’ rather than ‘ridicules’ Go!.”

“Lacking critical bearing on the substance or style of Go!, Boldly cannot be characterized as a parody,” the court said.

The Ninth Circuit also found Gerrold’s book didn’t otherwise transform Seuss’ works. “Boldly” didn’t have a different purpose or character from Seuss’ book, create new insights into Seuss’ work, or give it new meaning, among other things.

‘Completely Unconvincing’

ComicMix argued “Boldly” lampooned Seuss’ book’s purported theme of banal narcissism, but the court rejected that as “completely unconvincing” and a “post-hoc justification.”

Moss said that in rejecting after-the-fact justification, this decision “seems to put a stop to the more flexible notions of what parody can be” occasionally adopted by lower courts.

“You kind of look at it and scratch your head, and say there’s no way anyone thought about it at the time they were writing,” Moss said of ComicMix’s argument that it was lampooning Seuss’ book.

Nothing substantial separated the case from a 1997 Ninth Circuit decision where another Seuss book was found to have been infringed, the court said. There the court said “The Cat NOT in the Hat! A Parody by Dr. Juice” about the O.J. Simpson trial copied from “The Cat in the Hat” without adding any commentary on Seuss’ work, but merely used his creative style as a vehicle to retell a story.

“It was so contrary to all the principles that were articulated in ‘The Cat NOT in the Hat,’ which have been repeated” in other cases, copyright attorney Helene Freeman of Phillips Nizer LLP said. “Part of the problem with fair use is for some it comes down to ‘I like it, this is great and people should have the opportunity to do this.’ Which isn’t what it is.”

‘Get-Out-of-Jail-Free’

Though “Boldly” added “extensive new content” to Seuss’s work, “the addition of new expression to an existing work is not a get-out-of-jail-free card that renders the use of the original transformative,” the court said.

“Although ComicMix’s work need not boldly go where no one has gone before, its repackaging, copying, and lack of critique of Seuss, coupled with its commercial use of Go!, do not result in a transformative use,” the court said.

All of the other factors in the fair use analysis also weighed in Seuss Enterprises’ favor. Among other things, “Boldly” used a substantial amount of Seuss material, including “the heart” of his works, and would “curtail Go!'s potential market for derivative works,” the court said.

The court also appeared to perceive dishonesty in ComicMix arguments beyond the after-the-fact parody argument, copyright attorney Robyn C. Crowther of Steptoe & Johnson LLC said. She noted criticism of its decision not to seek an attorney despite awareness of possible liability, sheer extent of the copying, and targeting of the graduation gift market—also a target for “Go!” sales.

“All those seem to have irritated the Ninth Circuit, and you never want the court citing those types of facts and arguments in their opinion,” she said.

Having found “Boldly” wasn’t protected by fair use, the Ninth Circuit remanded for further proceedings in the copyright case.

But the appeals court affirmed that the book’s use of Seuss Enterprises’ trademarks was permitted because it was artistically relevant to the work and didn’t explicitly mislead consumers as to its source.

Judge M. Margaret McKeown wrote the opinion, joined by Judges N. Randy Smith and Jacqueline H. Nguyen.

DLA Piper US LLP represents Seuss. Dan Booth Law represents Gerrold and ComicMix.

The case is Dr. Seuss Enters. LP v. ComicMix LLC, 9th Cir., No. 19-55348, 12/18/20.

(Updated in 7th paragraph with comment from copyright attorney Jacqueline C. Charlesworth.)

To contact the reporters on this story: Blake Brittain in Washington at bbrittain@bloomberglaw.com; Kyle Jahner in Washington at kjahner@bloomberglaw.com

To contact the editors responsible for this story: Rob Tricchinelli at rtricchinelli@bloomberglaw.com; Nicholas Datlowe at ndatlowe@bloomberglaw.com; Renee Schoof at rschoof@bloombergindustry.com

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