In a culturally adventuresome legal dispute, ComicMix has successfully defended its mashup of Star Trek and Dr. Seuss against a lawsuit brought by Dr. Seuss Enterprises.
Almost a year ago, ComicMix beat back trademark claims over a crowdfunded book project titled Oh, the Places You’ll Boldly Go! In that decision, the judge referenced a 1986 Federico Fellini film and the Fox hip-hop drama Empire before coming to the conclusion that the work in controversy wasn’t explicitly misleading about its association with the company that owns Dr. Seuss rights.
Now comes the follow-up summary judgment ruling on the copyright end, with U.S. District Judge Janis Sammartino invoking a hot dispute over the use of computer code, the promotional poster to Naked Gun 33?: The Final Insult and viral videos. Ultimately, the judge is convinced that Oh, the Places You’ll Boldly Go! makes fair use of Dr. Seuss’ Oh, the Places You’ll Go.
In an attempt to foreclose a successful fair use defense, Dr. Seuss Enterprises pointed to the Federal Circuit’s 2018 decision in Oracle America, Inc. v. Google. That case deals with copyrighted Java API code and whether Google infringes when it makes its own version intended to allow software programs to communicate with each other. It’s a high-stakes battle that has a good shot of being taken up by the Supreme Court. When it comes to the purpose and character of Boldly, Dr. Seuss analogizes the book to what Google did with Java.
“The Court does not find Oracle persuasive,” responds the judge, addressing what she sees as the key distinction. “in Oracle, the Defendants copied the 37 SE API packages wholesale, while in Boldly ‘the copied elements are always interspersed with original writing and illustrations that transform Go!’s pages into repurposed, Star-Trek-centric ones.’ Defendants did not copy verbatim text from Go! in writing Boldly, nor did they replicate entire illustrations from Go! Although Defendants certainly borrowed from Go! — at times liberally — the elements borrowed were always adapted or transformed. The Court therefore concludes, as it did previously that Defendants’ work, while commercial, is highly transformative.”
That’s just one factor in the fair use analysis. The judge finds that the factor of the nature of the copyrighted work — Dr. Seuss’ Oh, the Places You’ll Go — slightly favors the plaintiff before addressing the amount and substantiality of the portion used.
Here’s where Sammartino finds the “most analogous” situation to be when famed photographer Annie Leibovitz took on Paramount Pictures over a portrait of a pregnant Leslie Nielsen on the poster to Naked Gun 33?. Leibovitz asserted it was an impermissible rip-off of her famous Vanity Fair cover of Demi Moore. That case went to the Second Circuit Court of Appeals, which stressed that the amount and substantiality used must focus only on the protected elements. The basic pose of a nude, pregnant body and the positions of the hands “had been placed into the public domain by painters and sculptors long before Botticelli,” wrote the appellate judge before ultimately concluding that Paramount took enough artistic elements (lighting, camera angle etc.) to weigh against a fair use. (Paramount ultimately won because it was nevertheless a parody.)
Applied to this situation, the judge says Dr. Seuss can claim copyright protection “in the unique, rainbow-colored rings and tower on the cover of Go!” but not “any disc-shaped item tilted at a particular angle.”
“But that is essentially what Plaintiff attempts to do here,” the judge continues. “Instead of replicating Plaintiff’s rainbow-ringed disc, Defendants drew a similarly-shaped but decidedly non- Seussian spacecraft — the USS Enterprise — at the same angle and placed a red-and-pink striped planet where the larger of two background discs appears on the original cover.”
Instead of Dr. Seuss’ narrator, it’s Captain Kirk, and instead of a Seussian landscape, the cover is set in the stars.
“In short, portions of the old work are incorporated into the new work but emerge imbued with a different character,” states the opinion. “Further, Defendants here took less from Plaintiff’s copyrighted works both quantitatively and qualitatively than the defendant in Leibovitz.”
That puts ComicMix up 2-to-1 headed into the fourth and final factor — the all-important discussion of the market effect of the use of copyright.
Sammartino asked Dr. Seuss to identify any evidence that the mash-up is likely to harm the market for its iconic book and licensed derivatives. She comes away less than impressed with what plaintiff offered up. She writes that “harm to Plaintiff’s potential market for Go! cannot be presumed” and with a lengthy nod to a dispute about viral videos on YouTube, there’s discussion about what really serves as marketplace substitutes.
When it comes to Oh, the Places You’ll Boldly Go!, the judge concludes that it isn’t likely usurp its predecessor’s position in the children’s book market because ComicMix has targeted those familiar with both the Seuss and Trek canon with a work that includes some sexual innuendo (hello, Captain Kirk). The derivatives market is called a “closer question,” but the judge notes that Dr. Seuss has “introduced no evidence tending to show that it would lose licensing opportunities or revenues as a result of publication of Boldly or similar works.”
The fourth factor is deemed favorable to neither party.
Balancing it all together, the judge finds fair use from a transformative “highly creative” work that took “took no more than was necessary for their purposes” even if Boldly was commercial endeavor that may or may not provoke marketplace harm.