We may finally be at the end of a five-year litigation between Dr. Seuss Enterprises (DSE) and ComicMix. The latter produced a book called Oh, the Places You’ll Boldly Go!, a mash-up of Dr. Seuss and Star Trek that, though funny, was neither parodic nor fair use under any of the four factors according to the Ninth Circuit Court of Appeals as of December 2020. That court reversed the lower court’s finding of fair use and remanded rather than issue a decision on the infringement claim.
Both ComicMix and DSE filed motions. The former filed a Motion for Reconsideration as to the validity of the copyright registrations at issue; and the latter filed a Motion for Summary Judgment on a finding of copyright infringement. The district court denied both.
ComicMix’s Challenge to Registration
When this whole hullabaloo began, ComicMix initially argued that the copyright registrations in the Seuss works The Sneeches and Other Stories and Oh, the Places You’ll Go! were invalid due to the allegation that those group applications combined published and unpublished works. And because the Ninth Circuit in Unicolors v. H&M as since held that an application may be invalidated even where there is no intent to defraud the Copyright Office, ComicMix argued that the law has changed since it filed its original motion. The court disagreed, stating “…this Court’s Referral Order never addressed the intent-to-defraud issue in light of its finding that there were no known inaccuracies in Seuss’s copyright applications and registrations.”
Substantial Similarity and an Odd Conclusion
Of likely greater interest to rightsholders and copyright watchers is the district court’s finding that under the principle of this circuit’s “intrinsic test” for substantial similarity, that it was unable to decide that question in this case as a matter of law. So, what does that mean?
Assessing the similarity between an allegedly infringing work and the original work is always a mixed question of law and fact. In the Ninth Circuit, the court first applies an “extrinsic test,” whereby the plaintiff is required to identify the similarities between its work and the alleged copy. Next, the court reviews the evidence and first disregards any “copied” elements that are not protectable (e.g. line weight or style in a drawing) and then assesses the “thickness” of protection on the original work as a whole. For instance, when ComicMix made an almost verbatim copy of Seuss’s iconic “Star-Off Machine,” they copied a work with “thick” protection because it is highly original in both subject matter and style.
In the Ninth Circuit, once an analysis passes the “extrinsic test,” the question of similarity then proceeds to an “intrinsic test,” which asks whether an ordinary observer would perceive substantial similarity between the original work and the alleged copy with regard to “total concept and feel.” Although it is standard that a jury is the trier of fact in this circuit’s “intrinsic test,” Devlin Hartline of Hudson Institute tells me via email, “That’s a problem when it’s an obvious case like this one. The defendant’s entire purpose was to copy the total concept and feel. Now, it may go to the black box of a jury, but it would be better to have the judge’s reasoning on this in order to better develop the test. Other jurisdictions give the judges more leeway on this question.”
There is no question that Hartline is right about ComicMix’s intent to copy extensively, especially as the principals stated in testimony that they painstakingly set out to copy Seuss, even hoping that DSE might want to license Boldly!. Then, in the appellate court’s thorough rejection of fair use, it describes extensive copying—both quantitative and qualitative—which this district court reiterates for about seven pages. Nevertheless, this court concluded that it cannot grant summary judgment under the “intrinsic test” as a matter of law. The opinion states:
“…in light of the rarity of courts granting summary judgment in favor of copyright holders on the issue of copying in this Circuit, and the lack of any authorities doing so with regard to subject matter comparable to that at issue here—i.e., illustrated books of rhyming prose—the Court finds, on the record presently before it and viewing the facts and evidence in the light most favorable to ComicMix as the nonmovant, that Boldly ‘[is] not so similar to the protected [works] that no triable issue exists with respect to whether the total concept and feel of the works are substantially similar. Therefore, the issue of intrinsic similarity must be left for the jury.’”
How the court can use the language “not so similar” in this case, rather than simply rule that no reasonable jury could possibly mistake the similarities, is a bit of head-scratcher. Still, I think it’s a safe bet that this is likely the end of a long journey for ComicMix. The fair use defense is a dead issue, and by proceeding to trial, they would have to believe that a jury will somehow not see that Boldly! extensively copies Seuss’s works. As indicated in older posts about this case, I predict this one will serve as a very useful guide to future creators for where not to go when using existing creative works—especially famous ones.
