On December 19, 2020, the 9th Circuit Court of Appeals definitively ruled that the Dr. Seuss-Star Trek "mash-up" titled Oh, The Places You'll Boldly Go was not fair use. Specifically, Boldly
At this point, it is quite clear that Boldly is a slavish copy of Oh, the Places You'll Go! and other Seuss works, with elements from Star Trek sprinkled in as the "special sauce." So, as to the third element of fair use, "the amount and substantiality of the portion used" is indeed quite enormous.
As to the fourth factor, market harm, ComicMix suddenly takes the untenable position that fair use is not an affirmative defense, for which ComicMix would bear the burden of proof, but is up to Dr. Seuss to prove market harm. This positon fails as both a matter of law and of fact. The 9th Circuit states:
"Not much about the fair use doctrine lends itself to absolute statements, but the Supreme Court and our circuit have unequivocally placed the burden of proof on the proponent of the affirmative defense of fair use. ComicMix tries to plow a new ground in contending that fair use is not an affirmative defense and that the burden shifts to Seuss to prove potential market harm. Campbell squarely forecloses this argument… Hence, ComicMix, as the proponent of the affirmative defense of fair use, ‘must bring forward favorable evidence about relevant markets.' (citation omitted) Because ComicMix's position is that it does not bear the burden of proof, it does not argue the adequacy of its scant evidence."[ref]Id. at 9-10[/ref]
But most importantly, and a point on which I have pounded the table for years, is that Boldly is clearly a derivative work, and one that negatively impact Seuss' ability to market the same.
"Nor does ComicMix address a crucial right for a copyright holder—the derivative works market, an area in which Seuss engaged extensively for decades. See 17 U.S.C. § 106(2). A relevant derivative works market includes ‘those that creators of original works would in general develop or license others to develop.' (citation omitted). Seuss has already vetted and authorized multiple derivatives of Go!, including the following books: Oh, The Things You Can Do That Are Good For You!; Oh, the Places I'll Go! By ME, Myself; Oh, Baby, the Places You'll Go!; and Oh, the Places I've Been! A Journal. Recently, Seuss announced that it has partnered with Warner Animation Group to adapt Go! into an animated motion picture, scheduled for theatrical release in 2027…Works like Boldly would curtail Go!'s potential market for derivative works. This is not a case where the copyist's work fills a market that the copyright owner will likely avoid, as is true for ‘a lethal parody' or ‘a scathing theater review.' (citation omitted). In fact, ComicMix hoped to get to one of the potential markets for Seuss's derivative works before Seuss, believing that Seuss would "want to publish it themselves and give [ComicMix] a nice payday."[ref]Id. at 10 (emphasis added)[/ref]
In sum, all of the factors of fair use work in favor of Seuss and against ComicMix.[ref]Id. at 1[/ref]
So, in the (almost) words of a famous character from the TV show Seinfeld –
"No Seuss for you!"
- Was not a "parody" of multiple works of Dr. Seuss
- Was not a "transformative" use
- Took a "substantial amount" and the "heart" of material authored by Dr. Seuss
- Had failed to carry the burden of proof as to the claim of fair use
- Was a commercial substitute for various derivative works licensed by Dr. Seuss Enterprises[ref]Dr. Seuss Enterprises LP v. ComicMixLLC 2020 WL 7416324 Ninth Circuit Court of Appeals 2020[/ref]
At this point, it is quite clear that Boldly is a slavish copy of Oh, the Places You'll Go! and other Seuss works, with elements from Star Trek sprinkled in as the "special sauce." So, as to the third element of fair use, "the amount and substantiality of the portion used" is indeed quite enormous.
As to the fourth factor, market harm, ComicMix suddenly takes the untenable position that fair use is not an affirmative defense, for which ComicMix would bear the burden of proof, but is up to Dr. Seuss to prove market harm. This positon fails as both a matter of law and of fact. The 9th Circuit states:
"Not much about the fair use doctrine lends itself to absolute statements, but the Supreme Court and our circuit have unequivocally placed the burden of proof on the proponent of the affirmative defense of fair use. ComicMix tries to plow a new ground in contending that fair use is not an affirmative defense and that the burden shifts to Seuss to prove potential market harm. Campbell squarely forecloses this argument… Hence, ComicMix, as the proponent of the affirmative defense of fair use, ‘must bring forward favorable evidence about relevant markets.' (citation omitted) Because ComicMix's position is that it does not bear the burden of proof, it does not argue the adequacy of its scant evidence."[ref]Id. at 9-10[/ref]
But most importantly, and a point on which I have pounded the table for years, is that Boldly is clearly a derivative work, and one that negatively impact Seuss' ability to market the same.
"Nor does ComicMix address a crucial right for a copyright holder—the derivative works market, an area in which Seuss engaged extensively for decades. See 17 U.S.C. § 106(2). A relevant derivative works market includes ‘those that creators of original works would in general develop or license others to develop.' (citation omitted). Seuss has already vetted and authorized multiple derivatives of Go!, including the following books: Oh, The Things You Can Do That Are Good For You!; Oh, the Places I'll Go! By ME, Myself; Oh, Baby, the Places You'll Go!; and Oh, the Places I've Been! A Journal. Recently, Seuss announced that it has partnered with Warner Animation Group to adapt Go! into an animated motion picture, scheduled for theatrical release in 2027…Works like Boldly would curtail Go!'s potential market for derivative works. This is not a case where the copyist's work fills a market that the copyright owner will likely avoid, as is true for ‘a lethal parody' or ‘a scathing theater review.' (citation omitted). In fact, ComicMix hoped to get to one of the potential markets for Seuss's derivative works before Seuss, believing that Seuss would "want to publish it themselves and give [ComicMix] a nice payday."[ref]Id. at 10 (emphasis added)[/ref]
In sum, all of the factors of fair use work in favor of Seuss and against ComicMix.[ref]Id. at 1[/ref]
So, in the (almost) words of a famous character from the TV show Seinfeld –
"No Seuss for you!"