Sunday, December 20, 2020

Do Dr. Seuss and Fair Use (Comic)Mix? - Part 3


            The Ninth Circuit Court of Appeals recently issued a decision in the Dr. Seuss Enterprises, L.P. v. ComicMix LLC case I’ve been following for a while. (You can find my post initial post on the case here, and the post on the district court decision.) After Seuss lost at the district court on its trademark and copyright infringement claims, it appealed. The Ninth Circuit’s ruling overturned the lower court’s decision favoring ComicMix’s fair use defense and upholding the dismissal of Seuss’ trademark claims.

            To summarize the background, ComicMix decided to publish a book titled Oh, the Places You’ll Boldly Go! that was a mash up of Star Trek and Dr. Seuss. It raised almost $30,000 on Kickstarter, and ComicMix was having discussions with retailers and publishers about further distributing the book. However, ComicMix did not obtain a license from either Seuss or CBS/Viacom (the owners of Star Trek). Seuss sent cease-and-desist letters to ComicMix, but ComicMix believed its book to be protected by fair use. Seuss filed a lawsuit alleging copyright infringement, trademark infringement, and unfair competition in 2016.  In a summary judgment action, the district court ruled in favor of ComicMix by finding that it was a fair use and there was no trademark infringement. Seuss appealed.

            The Ninth Circuit reviewed the district court’s analysis of ComicMix’s fair use defense and found the court improperly evaluated and weighed the fair use factors. I’ve discussed fair use before, but as a reminder, the factors are:

(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.

In evaluating the above factors, the Ninth Circuit disagreed with the district court’s conclusion, particularly in relation to factors one and four.

In analyzing the first fair use factor, whereas the district court found the work to be transformative, the Ninth Circuit did not. The Ninth Circuit determined the book was not a parody as it did not comment upon Dr. Seuss’ works, was not transformative, and primarily used Dr. Seuss’ work as a means to better commercialize its own work. The court placed considerable emphasis on the fact that ComicMix slavishly recreated scenes from Oh, the Places You’ll Go! and other Seuss works in its book.  The copying and recreation of the works was also determinative in finding against ComicMix on factor three.

Finally, the Ninth Circuit disagreed with the district court’s analysis of factor four. The district court acknowledged that there might be market harm to Seuss by allowing the publication of ComicMix’s book, but it found that Seuss failed to submit sufficient evidence to show harm. However, the Ninth Circuit emphasized that fair use is an affirmative defense to copyright infringement, and the defendant carries the burden of proving fair use. The burden was on ComicMix to show that there would not be market harm. ComicMix failed to do so, and the Ninth Circuit found it likely Seuss would be harmed, particularly in its ability to continue authorizing derivative works. In concluding its analysis of the fourth factor, the court said, “The bottom line is that ComicMix created, without seeking permission or a license, a non-transformative commercial work that targets and usurps Go!’s potential market.” (slip opinion at page 30).

I found interesting the court’s emphasis on ComicMix’s dedicated copying of Seuss works, its disregard for seeking a license, or opinion of counsel. Particular quotes that jumped out to me were: “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.” (slip opinion at page 5) and “Despite being ‘slightly concerned,’ ComicMix did not consult a lawyer or pursue the option of a license.” (slip opinion at page 9) Reading comments like this, you know the defendant is going to be in trouble. I also thought it interesting to note the court mentioned that ComicMix also did not seek a license from the owners of Star Trek. Overall, the opinion definitely took a hostile opinion to the activities of ComicMix.

As a creator, it is important to remember that fair use is a defense. I’ve stated it many times, but claiming your work is fair use will not protect you from a lawsuit. Fair use is evaluated on a case-by-case basis, and educated opinions can vary. For instance, while I would not have advised ComicMix to proceed with their book relying on a fair use defense, as I’ve always thought it a long shot, I also thought the district court’s decision was sound. Apparently I was wrong.

When you use someone’s copyrighted work in your own, you are inviting trouble. If you do so, you should proceed cautiously and carefully and take efforts to make it a fair use.

You can find the court’s opinion here.

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