Court determines that mash ups of copyrighted works can be fair use. SEUSS v. COMICMIX

A copyright is a set of exclusive rights granted to the creator of a new expressive work. Paintings, books, sculptures and movies are some of the types of art that are granted copyright protection. When a creator makes a new work they are granted the exclusive right to reproduce, distribute, display, perform, transmit and make derivative works based on the original. If someone other than the copyright owner of a copyrighted work exercises one of these exclusive rights, that can be considered copyright infringement. A copyright owner can file a lawsuit to stop copyright infringement with an injunction, and get monetary damages for copyright infringement which has occurred.

Copyright law grants a copyright owner some powerful rights, but those rights are not unlimited. Because copyright law protects artistic creations, and many artists draw inspiration from the work of their peers copyright law has some exceptions which will allow one artist to borrow some material from another artist. Fair use is an important exception to the rights granted by copyright law. A fair use is any copying of copyrighted material done for a limited and “transformative” purpose, such as to comment upon, criticize, or parody a copyrighted work. Such uses can be done without permission from the copyright owner.

When a court is presented with a fair use defense to copyright infringement, the court will review several factors to determine whether a use is in fact a fair use. The four factors judges consider are: (1) the purpose and character of the use (2) the nature of the copyrighted work (3) the amount and substantiality of the portion taken, and (4) the effect of the use upon the potential market for the copyrighted work. The outcome of a case when a fair use defense is asserted is not easy to predict because the defense is dependent on the facts of the case. Therefore it is useful to review cases to learn how courts have ruled in the past.

A recent case in which a defendant successfully asserted a fair use defense is DR. SEUSS ENTERPRISES, L.P. v. COMICMIX LLC, 16-CV-2779 (S.D.CA 2019). This case involved the combination, or mash-up of two icons pop culture, Dr. Suess and Star Trek. The Plaintiff owns the copyright of a series of books by the famous author Dr. Seuss. One of the copyrighted books is entitled Oh, the Places You’ll Go! (“Go!”). Plaintiff publishes the works and licenses the works for use in other entertainment products. Defendants combined elements of Go! and the sci-fi franchise Star Trek to create the book Oh, the Places You’ll Boldly Go! (“Boldly”). Defendants intended Boldly to be a parody and copied liberally from Go! to parallel its visual style and textual structure. In two disclaimers on the copyright page of their unpublished draft and in a public Kickstarter funding campaign, Defendants expressed their view that Boldly was a fair use of Go! Plaintiff subsequently brought suit alleging copyright infringement of Go! and four other Seuss works. On Defendants’ first motion to dismiss, the trial court found Boldly was transformative, but the trial court concluded that the fair use factors where almost perfectly balanced and denied the defendant’s motion to dismiss. After Plaintiff filed an amended complaint to revive its related trademark claims, Defendants filed a second motion to dismiss. Reexamining the fourth factor, effect upon the potential market for the original work, the trial court concluded that the potential harm to derivative works favored Plaintiff and thus denied Defendants’ motion.

The defendant appealed the trial court’s decision to the Court of Appeals for the Ninth Circuit. The Ninth Circuit found that Boldly is a fair use and granted summary judgment for the defendant. In its analysis, the Ninth Circuit reviewed each of the fair use factors. (1) The purpose and character of the use, favored the defendant – Boldly was highly transformative, because elements adapted from Go! were transformed to fit the theme of Boldly and not copied directly. (2) The nature of the copyrighted work, favored the plaintiff because Go! is highly creative. (3) The amount and substantiality of the portion taken, did not weight against the defendant because the defendant’s copying of Go! was not more than necessary for the purpose of creating a “mash-up” of Go! and Star Trek. (4) The effect of the use upon the potential market for the copyrighted work, this factor was considered neutral because the plaintiff presented insufficient evidence that Boldly would impact Plaintiff’s profits in the children’s book market.

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