Can the failure to consult with a lawyer be considered hubris when so many people do it? In looking at Dr. Seuss Enterprises, L.P. v. COMICMIX LLC et al., I can’t help but conclude that a little legal representation before marketing would have avoided “making a federal case out of it,” as they say.
The case involves a book that combined elements of two franchises, Star Trek and Dr. Seuss’s book, Oh The Places You’ll Go! (referred to as Go!). The defendants entitled their book a remarkably similar Oh The Places You’ll Boldly Go! (referred to as Boldly!).
Also remarkably similar were the illustrations and just about everything else, as was later admitted by the defendants.
The case originated in the Southern District of California, which issued a summary judgment in favor of the defendants on both the copyright and trademark claims. On appeal, the Ninth Circuit panel reversed the copyright portion of the district court’s ruling, applying the well known, four-step fair use analysis:
- Purpose and character of the use.
- Nature of the copyrighted work.
- Amount or substantiality of the portion used.
- Effect on the potential market.
The purpose and character of the use is the most important part. The court pointed to Campbell v. Acuff-Rose Music, Inc. In that case, they found that the derivative work (2 Live Crew’s “Pretty Woman”) was a parody because it commented on the original (Roy Orbison’s “Pretty Woman”). That started a trend of requiring the court to analyze whether certain uses are transformative — including whether it makes fun of and/or critiques the original.
Combining Star Trek with Dr. Seuss did not do anything to comment on the original work (Go!) because it was simply a vehicle for the ever-growing business of nostalgia. Although the defendants claimed the work was commenting on an alleged narcissistic quality in Dr. Seuss’s books — but that claim only surfaced after the lawsuit was originated.
The second qualification is the nature of the copyrighted work. Is it a creative work, or is it a more factual historical work? If it’s creative, like Dr. Seuss’s fantastical universe, it’s more likely to weigh in favor of the copyright holders.
The third quality of fair use is the amount and substantiality of the portions used. The court said not only did the Boldly! authors painstakingly copy whole pages from different Dr. Seuss books, but they took the “heart” of those drawings. The artist who was hired to do the mashup spent seven hours to make sure one element looked almost exactly the same. The fact that he was told to make it as close as possible to the original weighed heavily against the defendants.
The defense included in its arguments that, because they only copied five or six out of thousands of Dr. Seuss’s works, it was an insubstantial amount. This fell flat on the court. Acknowledging that the creator was so prolific, and had much more work that could have been stolen doesn’t mean that what was taken is qualitatively and substantially different from the original.
The last of the four factors for fair use is the effect of the use on the potential market for the value of the copyrighted works. Since the death of the author himself, the Dr. Seuss Company has licensed Go! to many different creators, and received fees from such licenses. That economic history clearly demonstrated that the copyright is valuable in the potential market. It didn’t help that the Boldly! defendants also wanted to release the book in time for high school and college graduations, hoping to cash in on purchases by Star Trek-nostalgic parents making gifts to their graduates.
After the case began, one of the defendants offered to “replace the stuff that’s too dead on.” Unfortunately, that readily showed that Boldly! could have been created without the wholesale copying of the original work. This was a poor admission to make.
It also did not help that the defendants admitted to several other things that were particularly egregious. One is that they did not discuss whether their book was fair use with a lawyer. They just decided their product “must be” defensible as a so-called parody. In their depositions, they testified that they were only “slightly concerned” about infringing Dr. Seuss.
In the end, the Ninth Circuit reversed the district court on copyright infringement. The moral of this story is plain to see: If in doubt, at least talk to an attorney first.
Mark S. Kaufman
Kaufman & Kahn
ka*****@*********hn.com
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