The Ninth Circuit may be preparing to issue a ruling in a copyright fight over a Dr. Seuss-Star Trek mashup to clarify when use of an existing work is transformative enough to constitute fair use.
Transformative use generally allows copying an existing work if the new work changes its character to give it entirely new meaning. The case landed at the U.S. Court of Appeals for the Ninth Circuit after a lower court ruling that ComicMix LLC’s “Oh, the Places You’ll Boldly Go!” didn’t infringe Dr. Seuss’ classic because it sufficiently altered the character of the children’s book.
The appellate court’s three-judge panel on April 27 probed attorneys for Dr. Seuss Enterprises and ComicMix on whether Boldly went far enough to alter “Oh, the Places You’ll Go!” An author admitted the book “slavishly” mimicked the classic in the mashup, which shows Star Trek characters drawn in Dr. Seuss’ distinctive, colorful style.
The district court’s interpretation of transformative seemingly makes nearly anything fair use and would “sink the notion of copyright protection,” Circuit Judge M. Margaret McKeown said during arguments.
Given the number of issues the judges skeptically probed—including Seuss’ licensing of other Go! mash-ups, and the lower court’s requirement that Seuss, not ComicMix, establish damage—the lower court decision likely won’t emerge unscathed, copyright attorney Ken Parker of Haynes and Boone LLP said.
“Any one of those factors would likely be enough to reverse or remand. Together, I think you’re looking at 100%,” Parker said. “I think they will clarify what ‘transformative use’ is, particularly that mash-ups standing alone aren’t transformative.”
The Ninth Circuit could help clarify the parameters of transformative in fair use analyses, a concept that carries significant implications for the publishing and entertainment industries. That clarity in a circuit where many media and entertainment companies are based would help creators better understand how much they have to alter an existing work and its meaning to create something new from it.
This panel will probably at least remand the closely watched case for further analysis, attorneys said.
Weighing Derivative Rights
Seuss sued for copyright and trademark infringement to block the release of Boldly in 2016, alleging the book copied Seuss’ settings, artistic style and fonts. The U.S. District Court for the Southern District of California said Boldly wasn’t a parody but still “highly transformative.”
The court suggested that merely weaving new expressions into a work qualifies as transformative, but that’s a definition that “I certainly hadn’t seen before,” McKeown said during arguments. The question has also drawn substantial academic, entertainment industry and public interest group attention, with friend-of-the-court briefs supporting each side.
The Supreme Court introduced “transformative use” in Campbell v. Acuff-Rose Music Inc., a 1994 decision ruling that rap group 2 Live Crew’s parody of Roy Orbison’s Pretty Woman was fair use.
The parties dispute whether Boldly qualifies, or is merely a derivative of Go!. Copyright law explicitly protects creators’ rights to future derivative works.
The Ninth Circuit panel weighed derivative rights against fairly creating something new, and it seemed to be “leaning toward protecting the statutory derivative rights,” intellectual property attorney Ron DiCerbo of McAndrews, Held & Malloy, Ltd. said.
Margaret Esquenet, an IP attorney at Finnegan Henderson Farabow Garrett & Dunner LLP, said she found the panel “much more skeptical” of ComicMix than she expected given a recent trend of pro-fair use decisions.
The judges weren’t necessarily as skeptical of ComicMix as some suggested, but merely struggling with difficult issues, Dale Nelson of Donaldson + Callif LLP said. He hopes the panel, even if it remands the case, at least “preserves breathing room” for creatives giving new meaning to existing works.
The Supreme Court, given the importance of fair use in the entertainment industry, may eventually take interest in taking the case if the loser can articulate a circuit split on the definition of “transformative,” Esquenet said.
The district court also said Seuss failed to show Boldly would cause market harm, tipping another factor in the fair use analysis to ComicMix’s favor. But Circuit Judge N. Randy Smith said he couldn’t find a case that shifted the burden on any factor of fair use—which courts generally treat as an affirmative defense that a defendant must establish—to the original’s creator.
The burden-shift issue may be the court’s cleanest path for a remand, attorneys said. Proving a negative is “incredibly difficult,” DiCerbo acknowledged. But “established case law” places that burden on the accused infringer, he said.
“The easy way to push it back is to say there was a procedural error,” said DiCerbo, who thinks the court will find Boldly a derivative. “The law requires the defendant to establish no commercial harm, and that wasn’t analysis conducted.”
But the burden to establish infringement began with Seuss, and it made sense to ask the party with the relevant market information to establish some level of harm, copyright attorney David Rabinowitz of Moses & Singer LLP said.
And while Seuss has an active derivative works business, for most potential plaintiffs derivative harm is entirely hypothetical, he said.
Even if the burden-shifting issue prompts remand, the fair use outcome may circle back to the “transformative” question.
“If you have a transformative work, then the other factors become less important,” Esquenet said, largely echoing Campbell. “If it’s completely transformative, it’s hard to see how you’d have a market replacement.”