Last week, the Ninth Circuit Court of Appeals issued a fair use decision in Dr. Seuss Enterprises (DSE) v. ComicMix. After oral arguments were presented in April, I wrote about this case as an example from which creators could learn what not to do when they propose to make substantial use of protected works—especially very famous works. The lawsuit involves an unpublished book called Oh, the Places You’ll Boldly Go (Boldly), a Dr. Seuss/Star Trek mashup that principally uses material from Seuss’s Oh, the Places You’ll Go! (Go!).
The appellate panel held unequivocally that ComicMix’s fair use defense failed on all four factors, and I imagine this opinion will be cited for years to come because the court so clearly inked fresh lines around several fair use principles that many avid copyright critics have endeavored to blur or erase through litigation, academic writing, or public editorial.
To summarize, the Ninth Circuit opinion written by Judge McKeown held that Boldly was not a parody under factor one; that because the works copied are expressive, fair use did not favor ComicMix under factor two; that ComicMix’s use of the original works was both quantitatively and qualitatively substantial under factor three; and that Boldly represented significant potential harm to DSE’s market under factor four.
In that April post, I suggested a guideline for creators that if one truly intends to parody a work, especially a work that is instantly recognizable, that one need not engage in extensive, verbatim copying to achieve that result. In the case of Boldly, I maintain that the amount of detailed copying, which is weighed under fair use factor three, militates against ComicMix’s claim that the book is a parody at all, which is considered under factor one. As the opinion reminds us, the four factors of the fair use test are interdependent:
[The first] factor has taken on a heightened significance because it influences the lens through which we consider two other fair use factors. The third factor—the amount and substantiality of use—‘will harken back’ to the first factor. And the fourth factor, relating to market harm, is influenced by whether the commercial use was transformative.
Considering the factors in order, the court first held that:
Boldly is not a parody. ComicMix does not seriously contend that Boldly critiques or comments on Go!. Rather it claims Boldly is a parody because it situated the ‘violent, sexual, sophisticated adult entertainment’ of Star Trek ‘in the context of [Dr. Seuss]’ to create a ‘funny’ book. We considered and rejected this very claim in an appeal involving another well-known book by Dr. Seuss—The Cat in the Hat (Cat).
For discussion of that prior Cat case, see Stephen Carlisle’s post, but this clarification by the court in ComicMix cannot be overstated: copying existing works into novel contexts is not necessarily parody just because it is meant to be funny. And mashup, merely because it changes context, is not inherently parody. Moreover, when one is copying famous works, the user will more likely be seen as attempting to ride the coattails of the prior author’s notoriety, unless a clear element of commentary on the original work, like parody, is present in the new work. But citing the gold standard case on transformative use for the purpose parody, Campbell v. Acuff-Rose, the McKeown opinion reiterates, “Lacking ‘critical bearing on the substance or style of’ Go!, Boldly cannot be characterized as a parody.”
It is reasonable to assume that, if the court had found Boldly to be parodic, its third factor analysis would likely be more liberal regarding the amount of the original works used; but I would argue that the amount used is a fundamental reason why no parody can be said to exist in this particular case. After all, what was actually taken? Not ideas, which are not protectable, and certainly not Seuss’s meter or rhyming schemes, which are also not protectable. The primary expressions that were copied—and stylistically copied in minute detail—were a number of visual works belonging to DSE.
So, even if we were to strip away the verses, ignored intended literary expressions in either book, and exclude any knowledge of Star Trek, an ordinary observer, comparing ComicMix’s illustrations to Seuss’s originals, would not necessarily know that Image B is a parody of Image A.
To the contrary, the observer could very easily assume that Image B is a derivative work prepared by DSE because it painstakingly matches so many elements in Dr. Seuss’s original drawings. And according to the opinion, it was apparently ComicMix’s intention to prepare an unlicensed derivative work that they hoped DSE might acquire, hence at least one reason illustrator Ty Templeton spent so many hours copying Seuss’s drawings in such intricate detail.
Keeping our focus on the fact that what was copied was a collection of visual works, note this response from the opinion: “We also reject as ‘completely unconvincing’ ComicMix’s ‘post-hoc characterization of the work’ as criticizing the theme of banal narcissism in Go!.” It is not uncommon for defendants to concoct a “parody” narrative in response to an infringement claim, and/or to misconstrue, at the time of use, the meaning of “parody” as expression that intends to be funny through the language of a prior work (e.g. none of Randy Rainbow’s anti-Trump songs is a parody of the songs themselves*).
It is the work that has been copied that must be the target of the parody, or other commentary. So, how can a visual work that is meticulously faithful to the original hope to convey parody through the act of too much replication? Something about the subsequent work must cue the observer that a lampoon of the prior work is present. Otherwise, the new work will be considered a derivative work, which only the copyright owner has the right to prepare.
As an example, imagine a drawing of Cindy Lou Who that has borrowed just enough Seussian elements that we recognize her, but she is depicted sneering and giving the Grinch the finger in response to his bullshitting her about the Christmas tree. That image by itself would plausibly be a comment on the original work in the same spirit that “Pretty Woman” was held to parody “Oh, Pretty Woman.” And the parodist would not have to mimic Seuss in every scribble and hue to achieve this result.
The third factor asks whether “the amount and substantiality of the portion used in relation to the copyrighted work as a whole” favors a finding of fair use. And a component of this analysis is whether the defendant used only as much of the original work as was necessary to achieve the desired result. In this case, because the desired result (an alleged parody) was held do disfavor fair use, then, logically, it should not matter very much whether ComicMix quantitatively copied one page of Go! or, as the opinion notes, 60% of the book along with “significant illustrations from Grinch and two stories in Sneeches.”
While that is a substantial quantitative taking, I would maintain that it was the qualitative copying whereby the defendant “replicated, as much and as closely as possible from Go!, the exact composition, the particular arrangements of visual components, and the swatches of well-known illustrations” that should have doomed ComicMix under the third factor test. Again, it is not necessary to mimic the originals so precisely in order to achieve the desired result of parody—if that purpose had been achieved in any sense.
Importantly, this opinion also reminds us that the third prong does not ask how much work was copied relative to the complete works produced by the original author. I’ve seen this one before, often in music infringements, where a defendant argues that he only copied a song or two owned by an artist with a large catalog. Here, the court rejected as a legal fallacy ComicMix’s argument that it only copied portions of five books out of the sixty produced by Dr. Seuss. Reiterating the law for users everywhere, the opinion responds that, “Under ComicMix’s theory, the more prolific the creator, the greater license a copyist would have to copy and imitate the original works. Nothing supports that argument.”
Potential Market Harm
The court’s discussion of the fourth factor also contains several important reiterations of fair use doctrine from which any creator can learn a great deal and reminds us that “potential” is the most important word in this part of the statute. This is because “potential” implies three underlying considerations:
1) what would be the effect of the specific use at issue on the market or value of the original work?
2) what would be the effect if the same kind of use were widespread among multiple parties?
3) although the copyright owner has not exploited the work in the manner at issue, does the new use constitute a derivative work, which the author is not obligated to produce or license?
In consideration of all the above, the court found that Boldly was not a fair use under factor four. As I have tried to emphasize, the amount of verbatim copying done by ComicMix produced an unlicensed derivative work, and the court noted that this placed Boldly in direct conflict with other derivatives of Go!, which DSE has licensed for the market. But perhaps the most important statement by the court regarding factor four is that it soundly rejected ComicMix’s assertion that the plaintiff bears the burden to prove potential market harm.
Not much about fair use doctrine lends itself to absolute statements, but the Supreme Court and our circuit have unequivocally placed the burden of proof on the proponent of the affirmative defense of fair use. ComicMix tries to plow new ground in contending that fair use is not an affirmative defense and that the burden shifts to Seuss to prove potential market harm.
Not only is that a judicial smackdown of a largely academic theory that fair use is a “right” rather than an affirmative defense, but the court further stings ComicMix’s erroneous citation of the very case that so many copyright skeptics consider a standard bearer of this invalid doctrine. The boondoggle litigation colloquially known as the “Dancing Baby” case, in which the EFF, on behalf of Stephanie Lenz, sued Universal Music Group for wrongful takedown of her YouTube video, is about as close as litigation has come to upending the affirmative defense principle of fair use. But here, the Ninth Circuit, which ruled in Lenz, states:
In an effort to distinguish controlling precedent, ComicMix argues that in Lenz v. Universal Music Corp., we deviated from our precedent construing fair use as an affirmative defense. This view misreads Lenz, which involved fair use in a different corner of copyright law, the safe harbor for Internet service providers under the Digital Millennium Copyright Act (DMCA)….In no way did we deviate from our characterization of fair use as an affirmative defense under §107. To the contrary, in addition to clarifying that, unlike copyright misuse and laches, fair use is not an excuse to copyright infringement, we reiterated that ‘the burden of proving fair use is always on the putative infringer.’
Oh, the Places We Don’t Need to Go
As I say, I predict ComicMix will prove to be an important and instructive case going forward. It should not be misread as “the big guy defeating the little guy” because, in fact, if ComicMix’s legal arguments were supportable, such a ruling would make independent creators of fresh material more vulnerable to substantial takings by large entities. It also should not be understood as a referendum on mashups in general, as the court explicitly stated that mashups can be fair use, just not this one.
In the end, I personally have sympathy for the ComicMix guys, recognizing that they put a lot of work into a project based on some very dubious copyright theory. But especially because the trio of creators who decided create Boldly are all professionals with skills and talent, the underlying lesson remains that it is almost always better to invent than to copy—let alone to copy legendary works as extensively and precisely as was done in this case.
*I cite Randy Rainbow as an example typically misunderstood as parody, and make no comment on the legality of his videos re. copyright.
© 2020 – 2021, David Newhoff. All rights reserved.