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Oh, the places you won’t go - Fair use defense fails for mashup

June / July 2021 IP Newsletter

The fair use defense to copyright infringement traces its roots back to an 1841 case involving the use of George Washington’s writings for a biography. To say things have become more complicated is an understatement, as demonstrated by a recent fair use case that considered a “mashup” combining elements of Dr. Seuss with elements of the TV show “Star Trek.”

Culture clash

“Oh, the Places You’ll Boldly Go!” is a mashup book that borrows from the works of Theodor S. Geisel (aka Dr. Seuss), including his perennial graduation season best seller “Oh, the Places You’ll Go!” The court referred to the challenged book as “Boldly” and the collective Seuss works as “Go!.”

Dr. Seuss Enterprises (Seuss) owns the copyrights in Geisel’s books and markets them to children and adults. It licenses and oversees the creation of new works under the Dr. Seuss brand and carefully vets the many licensing requests it receives.

Licensed works include fine art, toys, video games, stage productions, movies and books that incorporate elements of Dr. Seuss’s works. Go!, for example, is the basis for several authorized derivative works. Boldly wasn’t a licensed work of Seuss or a collaboration or otherwise authorized use.

In 2016, Seuss became aware of a crowdsourcing campaign by ComicMix to pay for the production and other costs related to publication of Boldly. It subsequently sued ComicMix for, among other things, copyright infringement. The trial court dismissed the claims before trial, holding that Boldly was a fair use of Go!. The plaintiff appealed.

Live long and prosper — or not

The U.S. Copyright Act lays out four non-exclusive factors (identified below) for determining whether use of a copyrighted work is considered fair use. Fair use is assessed on a case-by-case basis, with all of the factors explored and the results weighed together in light of the purposes of copyright law.

The U.S. Court of Appeals for the Ninth Circuit found that all four factors decisively weighed against the defendant:

The purpose and character of the use (including whether the use is commercial or for nonprofit educational purposes). The court explained that the central purpose of the inquiry into this factor is to determine whether and to what extent the new work is “transformative.” A transformative work “adds something new, with a further purpose or different character, altering the first [work] with new expression, meaning or message.”

The court rejected the defendant’s argument that its use was transformative because it was a parody. Boldly, the court said, didn’t hold up the Seuss works to ridicule or criticism. Its repackaging, copying and lack of critique of Seuss — coupled with its commercial use of Go! — didn’t result in a transformative use.

The nature of the copyrighted work. Creative works, the court noted, are closer to the core of intended copyright protection than informational works, so fair use is harder to establish for the use of such works. Boldly’s copying of a creative and “expressive work” like Go! tilted the second factor against fair use.

The amount and substantiality of use of the portion used compared with the copyrighted work as a whole. The third factor considers both the quantitative and qualitative value of the original work used. The defendant copied close to 60% of Go!, along with significant illustrations and two stories from other books. Qualitatively, the court found that the defendant “took the heart of Dr. Seuss’s works,” highlighting the extensive and meticulous copying.

The effect of the use on the potential market for or value of the copyrighted work. The defendant targeted and aimed to capitalize on the same graduation market as Go!. And, the court said, works like Boldly would curtail Go!’s potential market for derivative works.

Not yet the final frontier

In the absence of any countervailing copyright principles indicating otherwise, the appellate court concluded that Boldly didn’t make fair use of Go!. It therefore sent the case back to the lower court for trial on the claims of copyright infringement.

Sidebar: Trademark claims shot down

The plaintiff in the Dr. Seuss case (see main article) also claimed that the defendant infringed its trademarks in the title of “Oh, The Places You’ll Go!” as well as in the “Seussian style of illustration” and “the Seussian font.” The U.S. Court of Appeals for the Ninth Circuit rejected those claims, though, holding that the federal trademark law didn’t apply.

The Lanham Act doesn’t apply unless the use of the trademark at issue either: 1) isn’t artistically relevant to the underlying work or 2) explicitly misleads consumers about the source or content of the work. The court found that the defendant’s work easily surpassed the low bar of artistic relevance because the alleged trademarks in the title, typeface and style of the plaintiff’s work were relevant to achieving the defendant’s artistic purpose.

The bar on the second prong of the test is higher, and the plaintiff fell short there, too. A title that includes a well-known name, the court said, isn’t explicitly misleading if it only implicitly suggests endorsement or sponsorship.

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