Dr. Seuss Enterprises, LP v. ComicMix LLC, No. 19-55348 (9th Cir. 2020)
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The Ninth Circuit reversed the district court's summary judgment in favor of defendants on a copyright infringement claim and affirmed the district court's dismissal and grant of summary judgment in favor of defendants on a trademark claim concerning the book "Oh, the Places You'll Boldly Go!," (the mash-up) a Dr. Seuss and Star Trek mash-up.
The panel held that the mash-up does not make fair use of "Oh, the Places You'll Go!" (the original work). The panel explained that the purpose and character of the mash-up; the nature of the original work; the amount and substantiality of the original work; and the potential market for or value of Seuss, all weigh against fair use. The panel concluded that the bottom line is that ComicMix created, without seeking permission or a license, a non-transformative commercial work that targets and usurps the original work's potential market, and ComicMix cannot sustain a fair use defense. The panel also held that Seuss does not have a cognizable trademark infringement claim against ComicMix because the Lanham Act did not apply under the Rogers test. In this case, the allegedly valid trademarks in the title, the typeface, and the style of the original work were relevant to achieving the mash-up's artistic purpose, and the use of the claimed original work trademarks was not explicitly misleading.
Court Description: Copyright / Trademark The panel reversed the district court’s summary judgment in favor of defendants on a copyright infringement claim and affirmed the district court’s dismissal and grant of summary judgment in favor of defendants on a trademark claim concerning the book Oh, the Places You’ll Boldly Go!, a Dr. Seuss and Star Trek mash-up. Reversing the district court’s summary judgment on the copyright claim, and remanding, the panel held that defendants’ use of Dr. Seuss’s copyrighted works, including the book Oh, the Places You’ll Go! (“Go!”), was not fair use. The panel concluded that all of the statutory factors weighed against fair use, and no countervailing copyright principles counseled otherwise. The purpose and character of Oh, the Places You’ll Boldly Go! (“Boldly”) weighed against fair use because defendants’ use was commercial and was not a parody or otherwise transformative. The creative nature of Go! and the amount and substantiality of the use of Go! also weighed against fair use, as did the potential market for or value of Seuss. The panel held that because fair use is an affirmative defense, the burden is on defendants with respect to market harm. Affirming in part, the panel held that plaintiffs did not have a cognizable trademark infringement claim because, under the Rogers test, the Lanham Act did not apply. The panel concluded that the allegedly valid trademarks in the DR. SEUSS ENTERPRISES V. COMICMIX LLC 3 title, the typeface, and the style of Go! were relevant to achieving Boldly’s artistic purpose, and the use of the claimed Go! trademarks was not explicitly misleading.
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