Fair Use Error in Seuss/Trek Mash-Up Case Not Good for Small Creators

In order for copyright law to work for all the Whos in Whoville—the small and the tall—legal reasoning must apply equally whether the plaintiffs are major enterprises or kitchen-table start-ups. While it is understandably common in the court of public opinion to favor smaller defendants being sued by larger copyright owners, the fact is that when an error of law disfavors a large owner, it can have an even more profoundly negative effect on smaller creators.  This is a significant problem with the district court holding in Dr. Seuss Enterprises v. ComicMix LLC.  

In 2016 a group of creators, working under the name ComicMix copied Dr. Seuss’s iconic imagery from several classic works and combined these with themes and characters from Star Trek in order to produce a “mash-up” book called Oh, the Places You’ll Boldly Go!.  According to the creators’ testimony, the “Boldly” book was painstakingly designed to mimic Seuss—not only in illustration style, but composition, coloring, etc.—and a side-by-side comparison of the visual works shows that ComicMix “slavishly copied” nearly all of Seuss’s expressive elements in its pages.

Dr. Seuss Enterprises (DSE) sued ComicMix for copyright infringement, and the District Court for the Southern District Court of California held that “Boldly” is a fair use because it is “highly transformative.”  So, once again, this nettlesome doctrine is confusing courts as to the nature of derivative works.*  Because “Boldly” is not a work of commentary about — or parody of — the original, and is merely a different use of Seuss’s expressive elements, the district court erred by not recognizing it as a derivative work, which is the exclusive right of the copyright owner to produce.  Or not produce as he/she sees fit.  (See also, Stephen Carlisle posts here and here discussing this case.)

Fourth-Factor Fair Use Analysis is Troubling for Small Creators

Concurrent with this case being appealed to the Ninth Circuit, Copyright Alliance filed an amicus brief, which points to a specific error in the district court’s unfounded reasoning in its application of the fourth prong of the fair use test.  If the court’s rationale were to be upheld, it would be especially troubling to small, independent, and start-up creators. 

The fourth fair use factor considers the potential market harm to the rightsholder if the contested use were allowed; and that word potential is critical to this analysis because authors do not always know how, when, or why their protected work may be profitable in some new way.  Hence, the aforementioned exclusive right to prepare derivative works is a big part of that potential value, and exploiting that right is neither mandatory nor limited by a timeframe (other than the expiration of copyright itself).  Write a novel next year, and it is up to you to decide when—or if—you want to develop or approve a film adaptation.  The right to exploit your novel for a motion picture does not wane if you choose never to enter the film market or to enter that market many years after publication.

Consequently, when weighing potential market harm, one question the court is supposed to ask is whether the allegedly infringing work would be considered a derivative work under the exclusive rights granted by the copyright act.  If the answer to that question is yes, this weighs in favor of a finding that the contested use does present potential market harm.  And this is true regardless of a plaintiff’s ability to quantify the presumed value of that derivative market—especially if it implies a market she has not yet entered!    

So, because the district court erred in failing to recognize “Boldly” as a derivative work, it then exacerbated this problem by inventing what Copyright Alliance calls a “bright line standard” that does not exist in caselaw, whereby a plaintiff would be required to present evidence to prove the “substantial” market harm caused by the contested use. Now, forget about being a major player like Seuss for a moment and think about being the smallest Who on the dust-speck. 

Imagine being an indie comics author just beginning to get some recognition for your work on Instagram when you discover that some other party has started making merch or animated clips from your characters without license.  Then, when you sue to defend your work, the court says, Well, you weren’t in that market, so you can’t demonstrate how you could have sustained market harm. Or as the CA brief describes in its footnotes …

“One can readily imagine the first-time author whose only market data consists of modest profits from a first novel, with no existing licensing or sequel revenues, failing to show “substantial” harm after a playwright sells a script that co-opts the author’s central plot points and characters.”

This Catch-22 logic is the antithesis of the principle that fair use is meant to extend the purpose of copyright law. Instead, this court’s reasoning merely transfers the author’s derivative works right to another party for no reason other than the fact that the using party was the first to exploit a particular idea for a derivative.  By framing this ruling in those terms, it should be clear why a larger entity, which could expedite time-to-market, may be more likely to do harm to a smaller entity, or an individual, than the other way around.  

In addition to creating a burden of proof for the plaintiff that has no basis in the history of fourth-factor analysis, the district court in Seuss v. ComicMix went so far as to dismiss evidence that DSE had already pursued various derivative-works collaborations and is preparing to do more of same in the future.  So, even with a plaintiff who could come rather close to providing quantifiable evidence of potential market harm, this court still dismissed DSE’s claim in this regard as “merely hypothetical.”  

More specifically, as the Copyright Alliance brief describes, the court “penalized [DSE] for both non-entry into a market and successful entry into other, existing markets.”  In other words, ComicMix’s fair use defense was supported by the fact that DSE had not yet entered the specific mash-up “opportunity” ComicMix had exploited; BUT the defense was also strengthened by the fact that DSE had been successful with other derivatives in general.  

Presumably, the “logic” here seeks to define “potential market harm” as the extent to which an infringer may capture some fraction of the rightsholder’s market—as long as the rightsholder is already financially successful.  That is not the purpose of fair use; and upholding this reasoning could be devastating to the author with much shallower pockets than a DSE.  

Courts do not weigh fair use based on which owners have been “successful enough” to tolerate a particular infringement.  Among other problems, such reasoning literally penalizes success.  “This unfair double-standard would effectively force copyright owners who wish to protect their works to enter all markets while at the same time being careful not to be too successful in those markets,” states the Copyright Alliance brief.  That is an aberration of the purpose of copyright law and, therefore, the purpose of the fair use doctrine.  

* A brief written for this case by Professors Peter S. Menell, Shyamkrishna Blaganesh, and David Nimmer cites both Judge Leval, the author of the “transformative” doctrine, and Justice Souter’s opinion in the seminal Campbell case stating, “it is clear they did not intend for fair use to swallow a large portion of the right to prepare derivative works.”

© 2019, David Newhoff. All rights reserved.

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  • Love your blog and especially this post. The amicus briefs make a lot of points we agree with. Would love to chat with you about your views on copyright sometime. Check us out at the Digital Justice Foundation (digitaljusticefoundation.org)

  • Dolores Catherino

    As expressed in the court’s decision:
    “This case presents an important question regarding the emerging ‘mash-up’ culture where artists combine two independent works in a unique way. If fair use is negated in cases like this then this entire body of highly creative work would be foreclosed.”

    “However, this presumed harm is neutralized somewhat by the fact that Boldly is not a substitute for the original and serves a different market function than Go!. Boldly’s market relies on consumers who have already read and greatly appreciated Go! and Dr. Seuss’s other works, and who simultaneously have a strong working knowledge of the Star Trek series. It is therefore unlikely that Boldly would severely impact the market for Dr. Seuss’s works.”

    “Every book in literature, science and art, borrows, and must necessarily borrow, and use much which was well known and used before.” Campbell, 510 U.S. at 575. “Accordingly, recognizing that science and art generally rely on works that came before then and rarely spring forth in a vacuum, the Act limits the rights of a copyright owner regarding works that build upon, reinterpret, and reconcile existing works.” Walking Mountain, 353 F.3d at 799.

    Most relevantly, in 1994 the Supreme Court emphasized that the “most important” aspect of the fair use analysis was whether the purpose and character of the use was “transformative.” Campbell v. Acuff-Rose Music

    • While we could debate the “importance of mashup culture,” Boldly is a derivative work by any anaylysis. The court had no reason to wander off into cultural commentary here. Had ComicMix emulated, rather than slavishly copied Seuss, the consideration might be more nuanced; but those are not the facts.

  • Fair-use is not required, those doing the combining can either obtain a license like everyone else, or alter stuff enough so that they aren’t directly copying. If ones work requires a close resemblance to an other work in order to attract an interest and following then one has not really been independently creative, one is more like a Clash tribute band playing all the songs in a style reminiscent of Dean Martin.

    • Fair use of course obviates the need for a license, and in this case, DSE would presumably not have granted a license. But you’re right that ComicMix made no effort to meet the standards of fair use. They just got lucky to find a court that misread the law. Suspect it may not end that way on appeal, but we’ll see. One of these days, the amount of confusion sown by the “transformative” doctrine is going to end up at the Supreme Court.

      On another note, playing Clash songs a la Dean Martin requires the same compulsory license as playing them in their traditional style. The one difference is that the composers cannot deny the license to use the underlying work unless the work itself is substantially altered, like major lyrics changes etc. Yes, the example may be parodic in nature, but that would not matter if the Martin recordings are merely different performances of Clash songs. Compulsory license has it covered, so to speak.

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