Ninth Circuit reverses district court and holds that unauthorized Dr. Seuss and Star Trek mash-up book titled Oh, the Places You’ll Boldly Go! was not fair use of Seuss’ copyrights because the book did not parody or critique Seuss’ works, it copied extensively from Seuss’ books and it was likely to usurp Seuss’ market for derivative works.
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 copyright and trademark claims based on defendants’ work Oh, the Places You’ll Boldly Go!—a “mash up” of elements from various Seuss books, including Oh, the Places You’ll Go!, and certain characters, imagery and other elements from the Star Trek science fiction franchise. In creating Oh, the Places You’ll Boldly Go!, ComicMix sought to “evoke” the title, story and illustrations of the Seuss works, placing Star Trek’s Captain Kirk and his crew in “a colorful Seussian landscape full of wacky arches, mazes and creatures.” ComicMix intended to copy aspects of the Seuss works as accurately as possible and to make the book available for sale to the public. After twice denying defendants’ motion to dismiss plaintiff’s copyright infringement claim on fair use grounds, but granting defendants’ motion to dismiss plaintiff’s trademark claim with leave to amend, the district court on cross-motions for summary judgment dismissed plaintiff’s copyright infringement claim, ruling that Oh, the Places You’ll Boldly Go! was fair use. The district court concluded that the mash-up was highly transformative and copied no more than was necessary from the Seuss works to accomplish its transformative purpose, and that plaintiff had presented only hypothetical market harm. 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 Seuss’ books, finding that neither was entitled to trademark protection. Read our summary of the district court’s decision here.
On plaintiff’s appeal, the Ninth Circuit reversed the district court’s dismissal of the copyright claim, finding that all four of the fair use factors weighted decisively against defendants.
Noting that the Supreme Court’s holding in Campbell v. Acuff-Rose Music, Inc.—that the central purpose of the first-factor analysis is “whether and to what extent the new work is ‘transformative’”—has permeated the fair use analysis, the Ninth Circuit determined that Oh, the Places You’ll Boldly Go! is not transformative of the original Seuss works. The court rejected ComicMix’s argument that its book is a parody of the Seuss works, finding that while the book juxtaposes elements of the Seuss works with Star Trek elements, it does so by merely mimicking Seuss’ style without critiquing or commenting on that style or the Seuss works. Furthermore, the appellate court was not convinced that ComicMix’s book was otherwise transformative, after considering additional Supreme Court and Ninth Circuit guidance on whether a work is transformative, including (1) whether defendant’s work has a “further purpose or different character” than the original work, such as “the creation of new information, new aesthetic, new insights and understanding”; (2) whether defendant’s work has added value to the original in the form of a “new expression, meaning or message”; and (3) whether the expression from the original work was used as “raw material” or whether it was simply repackaged to “supersed[e] the objects of the original creation.”
ComicMix argued that it had added “extensive new content”—the Star Trek elements—to the Seuss works, but the court reasoned that the mere addition of new content “is not a get-out-of-jail-free card that renders the use of the original transformative.” ComicMix’s book simply took the Seussian elements and implanted them into its book alongside Star Trek elements “to get attention or to avoid the drudgery in working up something fresh, and not for a transformative purpose.” The court pointed to a number of illustrations in the ComicMix book that were intended to be near-exact re-creations of illustrations from the Seuss works, plus Star Trek elements, and concluded that no new expression, meaning or message had been added. The first factor therefore weighed against a finding of fair use.
The second factor looks to the nature of the original copyrighted work. While noting that the second factor is not typically consequential in the balancing of the fair use factors, the court stated that creative works are “closer to the core of intended copyright protection” than informational works and that fair use is more difficult to establish when expressive works are copied. Accordingly, the Ninth Circuit held that the second factor weighed against a finding of fair use.
The court then turned to the third fair use factor, which looks at “the amount and substantiality of the portion used in relation to the copyrighted work as a whole,” and found that ComicMix’s book took substantial amounts from the Seuss works, both quantitatively and qualitatively. Quantitatively, the court noted that Oh, the Places You’ll Boldly Go! copied 14 of 24 pages from Oh, the Places You’ll Go! (roughly 60% of the book) as well as significant illustrations from other Seuss works. In doing so, ComicMix sought to replicate the Seuss illustrations as closely as possible, copying the visual composition, shapes, colors and detailed linework of each illustration, and then adding Star Trek elements to them. Qualitatively, the court held that ComicMix had taken the “heart” of the Seuss works, pointing to the replication in ComicMix’s book of a machine at the core of Seuss’ The Sneetches and Other Stories to repurpose it as a Star Trek teleporter. ComicMix argued that the third factor weighed in its favor because it had used materials from only five of Seuss’ nearly 60 books, but the court rejected the argument, stating that the third factor looks at the amount used in relation to individual copyrighted works, not in relation to the copied author’s entire catalog.
Last, the court analyzed the fourth fair use factor, which looks at “the effect of the use upon the potential market for or value of the copyrighted work.” The court began by determining that, contrary to ComicMix’s arguments and the trial court’s ruling, fair use is an affirmative defense to copyright infringement and defendant has the burden of showing that its use was fair. While courts should not presume that the market for the original work will be harmed solely based on the fact that the new work was created for commercial purposes, in this instance, given the non-transformative nature of Oh, the Places You’ll Boldly Go! and its commercial nature, the Ninth Circuit concluded that ComicMix’s book “likely leads to cognizable market harm to the original.” The court pointed to the fact that ComicMix intended to target the market of consumers buying books for school graduates, consumers who have for many years given Seuss’ Oh, the Places You’ll Go! as a gift. The court also concluded that ComicMix’s book curtails Seuss’ ability to exploit the derivative works market, pointing to a number of licensed works Seuss has authorized or actively co-produced, including books such as Oh, Baby, the Places You’ll Go!, and the announcement of an animated motion picture adaptation of Oh, the Places You’ll Go! slated to be released by Warner Animation Group in 2027. Notably, the appellate court explained that a central aspect of the fourth factor looks to “whether unrestricted and widespread conduct of the sort engaged in” by ComicMix would undermine Seuss’ potential market. Finding that widespread copying of Seussian elements in mash-ups with other popular content would inhibit Seuss’ ability to control its derivative works market and could incentivize piracy of intellectual property, the court held that the fourth factor weighs against a finding of fair use.
The Ninth Circuit also examined the district court’s dismissal of Seuss’ trademark claims on summary judgment. Plaintiff asserted both statutory and common-law trademark claims regarding ComicMix’s use of the title Oh, the Places You’ll Go! and the Seussian style of illustrations and font used in ComicMix’s book. The court applied the Rogers v. Grimaldi test, under which a “trademark owner does not have an actionable Lanham Act claim unless the use of the trademark ‘either (1) [is] not artistically relevant to the underlying work or (2) explicitly misleads consumers as to the source or content of the work.’” Noting that the first prong of the Rogers test requires only that the artistic relevance of the use of the senior mark be “above zero,” the court held that ComicMix meets that threshold because the use of the Seuss marks—the title and visual style of the work—was relevant to ComicMix’s goal of creating a mash-up of Oh, the Places You’ll Go! and Star Trek. Further, the court held that ComicMix’s book is not explicitly misleading as to its source, noting the conspicuous listing of its author and illustrator (not Seuss) on the cover as well as a disclaimer in the book that it is not associated with or endorsed by Seuss. Finding that ComicMix satisfied the Rogers test and that the Lanham Act therefore does not apply, the Ninth Circuit affirmed the district court’s dismissal of Seuss’ trademark claims.
Summary prepared by Tal Dickstein and Kyle Petersen