I mentioned the Dr. Seuss Enterprises, L.P. v ComicMix,
LLC case in two previous blog posts (here and here). Recently, the court District Court for the
Southern District of California issued a summary judgment in the case. In its ruling, the court found that the ComicMix
book, Oh, the Places You’ll Boldly Go!,
was entitled to a fair use finding and dismissed the case.
By
way of background, ComicMix launched a Kickstarter campaign in 2016 to fund a
mash-up book in the style of Dr. Seuss’ Oh,
the Places You’ll Go, but instead using characters from Star Trek: The Original Series. The
Kickstarter campaign raised almost $30,000, and ComicMix had discussions with
publishers and retailers about distributing the book. ComicMix did not seek to
license from either Seuss Enterprises or CBS/Paramount, the owners of Star Trek, because they believed their
work to be a parody and hence constituted fair use under copyright law. After
some back-and-forth correspondence between Seuss Enterprises and ComicMix,
Seuss Enterprises filed a copyright and trademark infringement lawsuit in
November 2016.
During
the next two years, the case wound its way through the litigation process.
Early on, the court found the work to not be a parody, but did believe it was
transformative. However, it declined to rule on the issue. Meanwhile, ComicMix
was able to get the trademark claims related to the title dismissed.
In
the most recent summary judgment ruling that addressed the remaining claims,
the court again revisited ComicMix’s fair use defense. After weighing all of
the fair use factors,[1]
the court found that the balance was close, but slightly favored ComicMix.
Working in ComicMix’s favor was that even though the work was commercial, the
court found it to be transformative. The court also found ComicMix’s book did
not take more material than was necessary for the creation of its book, and
Seuss Enterprises could not prove there would be market harm to its works, or
its licensing programs, if ComicMix’s book were to be released. The court also
ruled that Dr. Seuss’ illustration style was not a protectable trademark right,
and that the typeface used in the title of the work is also not a protectable
trademark.
A
few notes of caution for readers. First, this case is not yet over. Seuss Enterprises
could appeal the decision to an appellate court, and the outcome could be
different. Personally, I think the court has it right in this scenario, but one
can never be certain. Second, this decision only applies to the Dr. Seuss
elements incorporated into ComicMix’s book. If CBS/Paramount were to sue over
the Star Trek elements used in the
book, the analysis of the fair use factors could turn out differently. Finally,
as I’ve said before, fair use is a defense to copyright infringement, and it is
performed on a case-by-case basis. If someone thinks you are infringing on
their work, they will probably sue you, and a court will decide if it’s a fair
use. If that happens, it will take a significant amount of time and money to
settle the issue, as evidenced by ComicMix’s appeal for help funding this
litigation that I talked about last year.
Overall,
it is a good win for ComicMix, and it helps shed some light on how courts view mash-up
works in relationship to fair use. However, this does not mean that all mash-up
works are automatically entitled to fair use, and anyone creating them should proceed with caution.
The court opinion can be found here.
[1]“(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.” 17 U.S.C.
Sec. 107.