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For those looking to create an unauthorized derivative of a Dr. Suess book a federal appeals court is likely one of the places you’ll go. The 9th Circuit on Friday reversed a finding that a Star Trek-Dr. Seuss mash-up was a fair use of Theodor S. Geisel’s work.
Dr. Seuss Enterprises sued ComicMix back in 2016 over Oh, the Places You’ll Boldly Go!, its Star Trek-centric version of Geisel’s popular book Oh, the Places You’ll Go! In March 2019, U.S. District Judge Janis Sammartino deemed it a transformative, “highly creative” work and found it to be a fair use.
Suess appealed and on Friday the 9th Circuit reversed Sammartino’s summary judgment with regard to the copyright infringement claim. The panel found that not one of the four fair use factors weighed in ComicMix’s favor.
Circuit Judge M. Margaret McKeown begins the opinion with a quote from Seuss’ book:
I’m sorry to say so
But, sadly it’s true
Can happen to you.
“If he were alive today,” McKeown continues, “Dr. Seuss might have gone on to say that ‘mash-ups can happen to you.’ … The creators thought their Star Trek primer would be ‘pretty well protected by parody,’ but acknowledged that ‘people in black robes’ may disagree. Indeed, we do.”
The 9th Circuit finds that Boldly isn’t a parody and isn’t transformative, much like a predecessor case involving an O.J. Simpson murder trial take on The Cat in the Hat.
“Boldly’s claim to transformative use rests on the fact that it has ‘extensive new content,'” writes McKeown. “But 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. … 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.”
With regard to the other fair use factors — the nature of the work, the amount and substantiality of the use, and the effect on the market — the appellate panel also sided with Seuss. (Read the full opinion below.)
The 9th Circuit affirmed Sammartino’s decision with regard to the trademark claim. It found, under the Rogers test, that the Lanham Act doesn’t apply because Boldly‘s use of “the allegedly valid trademarks in the title, the typeface, and the style of Go! are relevant to achieving Boldly’s artistic purpose” and the use wasn’t “explicitly misleading.”
Dr. Seuss Enterprises was represented by a team from DLA Piper including Stanley Panikowski, Andrew Deutsch, Tamar Duvdevani and Marc Miller.
The company on Friday sent The Hollywood Reporter a statement in response to the decision. “Dr. Seuss Enterprises, L.P. (DSE) is thrilled with the Ninth Circuit’s decision that defendants’ unauthorized use of Dr. Seuss’s Oh, the Places You’ll Go! was not fair use,” it reads. “The court found that defendants ‘took the heart of Dr. Seuss’s works’ in their infringing ‘mash-up’ and affirmed DSE’s right to decide whether and how its beloved characters and stories may be adapted. DSE recognizes the broad-reaching significance of this appellate decision and is committed to protecting Dr. Seuss’s works to ensure that each generation may experience the amazing stories and worlds he created.”
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