District court grants summary judgment holding that “mash-up” of Dr. Seuss’s Oh, the Places You’ll Go! with elements from Star Trek franchise constituted fair use, concluding that mash-up work was highly transformative and copied no more than necessary from Dr. Seuss works to accomplish its transformative purpose, and that plaintiff presented only hypothetical market harm.
Dr. Seuss Enterprises L.P., the assignee and owner of various copyrights and trademarks in the works of Theodor S. Geisel, famously known as Dr. Seuss, sued ComicMix LLC, Glenn Hauman, David Jerrold Friedman and Ty Templeton, asserting claims based on defendants’ work Oh, the Places You’ll Boldly Go! — a “mash-up” of elements from various Dr. Seuss books, including Oh, the Places You’ll Go! and “certain characters, imagery, and other elements” from the Star Trek science fiction franchise.
The district court twice denied defendants’ motion to dismiss plaintiff’s copyright infringement claim on fair use grounds, but granted defendants’ motion to dismiss plaintiff’s trademark claim with leave to amend (read our summaries of the district court’s decisions here and here). When both plaintiff and defendant moved for summary judgment, the remaining claims included copyright infringement, trademark infringement premised on Dr. Seuss’ illustration style and typeface, and related unfair competition claims.
The court dismissed plaintiff’s copyright claim, ruling that Oh, the Places You’ll Boldly Go! was fair use. In assessing the fair use factors, the court primarily relied on the same reasoning as in its prior decisions.
On the first factor, the purpose and character of the use, the court adhered to its prior rulings that, while Oh, the Places You’ll Boldly Go! did not constitute a parody, defendants’ work was highly transformative. While defendants’ work “liberally” borrowed from plaintiff’s work, “the elements borrowed were always adapted or transformed” by placing Star Trek characters and objects in place of traditional Seussian characters and shapes. The court also rejected plaintiff’s argument that defendants’ work was an infringing derivative of plaintiff’s work, because the exclusive right to prepare derivative works is limited by the fair use doctrine.
With respect to the second fair use factor, the nature of the copyrighted use, the parties agreed that there was no reason for the court to depart from its prior rulings that this factor weighed slightly in plaintiff’s favor and therefore the court offered no further analysis.
On the third fair use factor, the amount and substantiality of the portions of the copyrighted work used, the court again followed its prior rulings, finding that this factor weighed in defendants’ favor. Despite defendants’ acknowledgment that they “slavishly cop[ied] from Dr. Seuss,” the court found that defendants had copied no more than was necessary for their transformative purpose. In making this determination, the court relied on the Second Circuit’s decision in Leibovitz v. Paramount Pictures Corp., which held that “in assessing the amount and substantiality of the portion used, the court must focus only on the protected elements of the original.” The court determined that, while defendants “took discrete elements of [Dr. Seuss’ works]: cross-hatching, object placements, certain distinctive facial features, lines written in anapestic tetrameter,” which “are elements significant to” Dr. Seuss’ works, defendants “ultimately did not use Dr. Seuss’ words, his characters, or his universe.”
Finally, addressing whether defendants’ work harmed the market for plaintiff’s work, the court departed from its prior ruling. In its first decision on defendants’ motion to dismiss, the court presumed market harm based on allegations in the complaint, though the court noted that this presumption was “neutralized somewhat” because defendants’ work did not substitute for plaintiff’s. Instead, the court ruled that defendants’ market relied on consumers who already knew of and appreciated Dr. Seuss books and were also Star Trek fans.
After discovery and on summary judgment, the court found this factor weighed in defendants’ favor, because plaintiff had not met its burden to establish market harm by a preponderance of evidence, a burden that is placed on plaintiff when the work is transformative. The evidence of market harm that plaintiff presented was dismissed by the court as hypothetical. First, plaintiff established that “Oh, the Places You’ll Go!” reaches No. 1 on The New York Times best-seller list each spring during graduation season, but did not offer any evidence that defendants’ intended release of their work during graduation season was likely to materially affect plaintiff’s market. Second, plaintiff offered evidence that it had published many derivative works and had a “robust licensing program,” arguing that “unrestricted and widespread conduct of the sort engaged in by defendants would harm Plaintiff’s licensing program.” Once again, however, the court found that plaintiff had not offered any evidence of the likely impact of defendants’ work on plaintiff’s market. Because three of the four fair use factors weighed in defendants’ favor, the court found defendants’ work was fair use as a matter of law, and granted defendants’ motion for summary judgment.
The court also dismissed plaintiff’s claims for trademark infringement and unfair competition premised on defendants’ use of the typeface and general illustration style associated with Dr. Seuss books, finding that neither was entitled to trademark protection.
Summary prepared by Tal Dickstein and Sarah Levitan Perry