In a season where expressing gratitude is taking flight, I’m going on record with my appreciation of Judge Margaret McKeown. With clarity and panache, and a bit of her own rhymes, she laid to rest a strained decision regarding fair use and set out clearly the prevailing analysis for the Ninth Circuit of the four-factor fair use test. Dr. Seuss Enterprises v. ComicMix LLC.  Along the way, she debunked the tendency to view as “transformative” any use that makes even a slight change to a copyrighted work. Thank you, Judge McKeown and the authors of the excellent amici curiae briefs that no doubt aided her analysis!
The Mashup Case
Dr. Seuss Enterprises (Seuss), the plaintiff-appellant from the March 2019 Southern District of California decision below, won on its copyright infringement claim against ComicMix LLC (Comic Mix) and the three individuals responsible for mashing up the characters, drawings, and storyline of the Seuss original book Oh, The Places You Will Go! (Go!) with recognizable Star Trek-inspired characters into Oh, The Places You Will Boldly Go! (Boldly!).
Looking for a sure hit in book sales, ComicMix’s two creators thought if they could just copy the Seuss success with Go! and salt in some Star Trek elements, they would unleash a new universe of buyers. Their ambition led them to envision a primer that would “place the Star ship Enterprise crew in a colorful Seussian landscape full of wacky arches, mazes and creatures, a world that is familiar to Dr. Seuss readers, but a strange new planet for Captain Kirk’s team.”
The artist hired may have been too talented. He “painstakingly attempted to make” the illustrations in Boldly “nearly identical” to those in Go! And he succeeded. They really did look like Seussian imagery. The creators also took pains to match the structure of their text to the structure of Go! The result in their own words was “slavish copying” from the Seuss original. But they firmly believed they were creating a loving parody of Go!
The creators found an e-commerce platform willing to handle merchandising and distribution. They began a Kickstarter campaign to pay for production costs. Notably, they did not consult with counsel before launching. In the “Risks and Challenges” section of their Kickstarter site, they mused that they might wind up before people in black robes to defend their creation.
They managed to raise $30,000. But the campaign also attracted the attention of Suess, owners of copyright in the Go! books. To the cease and desist letters that inevitably followed, ComicMix responded that theirs was a fair use. (They engaged counsel.) They admitted that they copied portions of Go! But they claimed that copying was permitted, likely as a “parody.”
What Happened in the Lower Court to Set Up the Appeal
A complicated procedural history below culminated in defendants filing a motion for summary judgment on plaintiff’s claims of copyright and trademark infringement. They asserted fair use as a defense on the copyright claim. The Southern District had previously held for defendants on a motion to dismiss on the grounds that Boldly! was transformative, though it did not find that Boldly! was a parody. In the March 2019 decision, it sustained that ruling and also found for defendants on the important fourth fair use factor– market harm. Despite strong evidence to the contrary, the court was not persuaded that Boldly! intruded on Seuss’s own robust licensing programs for Go! or diminished the value of future opportunities. The court reasoned that Seuss’s market for children’s books would not be usurped. The potential readers of Boldly! would be older people who greatly appreciated Go! and who simultaneously have a strong working knowledge of the Star Trek series, it wrote. The court was untroubled by defendants’ curtailing Seuss’s exclusive right to create derivative works. That right could not block what the court considered defendants’ transformative work. Seuss appealed with dispatch.
Analyzing the Fair Use Factors
Judge McKeown took pains to analyze each of the four fair use factors under Section 107 of the Copyright Act. I’m especially grateful for the analysis on transformative use and the discussion of the importance of the derivative works market. The case should be recommended reading for law school students and copyright lawyers of all persuasions. Here, I’ll focus on two aspects of the decision.
The First Factor: Purpose and Character of the Use (Section 107(1) and the Parody Defense
Analyzing the first factor –the purpose and character of the use –she clearly explains that while a commercial use is not presumptively unfair, the nature of the work remains one element of this inquiry. In Campbell, the Supreme Court treated the central purpose inquiry as the need to determine “whether and to what extent the new work is ‘transformative.’ Judge McKeown notes that transformative use can tip the first factor in favor of fair use.
Returning to Campbell and Section 107 of the Copyright Act, she asks whether this mashup in particular is a transformative work? Defendants’ emails suggest they wanted to adopt the mantle of parody. But parody under the law has a specific meaning. A parody is a “spoof, send-up, caricature, or comment on another work.” It has to have some critical bearing on the substance or style of the original work. It has to have some thought behind it. If it merely uses a work to get attention or avoid the drudgery in working up something fresh, Campbell teaches, the claim to fairness in borrowing from another work diminishes accordingly.
The Ninth Circuit had already been clear on this point in the (in)famous Cat NOT in the Hat! case from the 1990s. Just mimicking the characteristic style of Dr. Seuss is not the same as “holding his style up to ridicule.” Borrowing expressive elements without a critique of the original work may get public attention, but it does not equate to parody. And the Boldly defendants’ attempts to explain their work after the fact as mocking the narcissism of the central characters of Go! also fell flat. Boldly! is not a parody of Go!
Drilling Down on Transformative Use
Judge McKeown takes the extra step for which my gratitude is especially keen. She tackles the defendants’ argument and ruling below that Boldly! is somehow otherwise transformative of Go! And in doing so, she debunks a growing tendency in lower courts to view “transformative” uses in the most banal sense.
Rather, she writes, there are certain benchmarks to determine transformative use, “telltale signs” derived from considerations laid out in Campbell and the Ninth Circuit’s Seltzer v. Green Day Inc. In summary, these are: 1) a further purpose or different character, meaning the creation of new information, new aesthetic, new insights and understanding in the defendant’s work; 2) the addition of value to the original work, such as “new expression, meaning or message”; and 3) the use of quoted matter as “raw material” instead of repackaging it and merely superseding the objects of the original creation.
How does Boldly! Stack Up?
Using defendants’ testimony and close examination of the two books, she deftly eviscerates their fair use defense regarding transformative use. Boldly! paralleled Go!’s purpose and propounded the same message, she writes. Rather than possessing anything fresh, it merely re-contextualized the original Seuss expression. It did not offer any further purpose or character. Nor does Boldly! alter the original Seuss work with new expression, meaning or message. The world of Go! remains intact, even if Star Trek characters now enter that world.
Judge McKeown analyzes the defendants’ repackaging of Go!’s illustrations with the vigor of one who knows this Seussian world rather well. “Comic Mix captured the placements and poses of the characters, as well as every red hatch mark arching over the handholding characters of Grinch’s iconic finale scene, then plugged in the Star Trek characters.” She comments on the elements of scenes which the artist copied, down to the “exact shape of the sandy hills in the background and the placement of footprints that collide in the middle of the page.”
And she recounts that ComicMix repackaged the text of Go! Instead of using Go! as a starting point for a different artistic or aesthetic expression, the writer for Boldly! tried “to match the structure of Go!” The Boldly book “left the inherent character” of the Seuss original unchanged. Judge McKeown wrote: “Although Comic Mix’s work need not boldly go where no one has gone before, its repackaging, copying, and lack of critique of Seuss, coupled with its commercial use of Go!, do not result in a transformative use.”
The conclusion? The first factor weighs definitively against fair use.
The Derivative Works Market and Section 107(4)
The fourth factor of the fair use test set out in Section 107 looks at “the effect of the use upon the potential market for or value of the copyrighted work.” Recall that one of the exclusive rights of a copyright owner under Section 106 is the right to prepare derivative works based upon the copyrighted work.
In this case, Seuss had engaged for decades in extensive licensing of its properties. It had vetted and authorized multiple derivatives of the original Go! book; it had recently announced that it would partner with Warner Animation Group to adapt Go! into an animated movie. Works like defendants’ Boldly!, said the court, would curtail Go!’s potential market for derivative works.
Authorized Licensing and Mashups Had Occurred
The defendants also failed to overcome the fact that Seuss already exploited its rights via collaborations with other companies. These licensed “mashups” mixed stories and characters and created Seussian worlds populated by Muppets or Pandas or other third-party elements. The evidence was strong that Seuss was exercising its derivative use rights in an active fashion. The law does not limit the scope of the relevant market to products that are already made or in the pipeline. A copyright owner has the right to the “artistic decision not to saturate those markets with variations of the original.” It can decide for itself when and how to license uses or not to do so for a spell. It has the right to change its mind.
And Boldly! was not the kind of work like scathing satire or commentary that a copyright owner would choose to avoid and whose market niche might legitimately be filled by someone else. Creating and publishing Boldly! was simply co-opting an opportunity. Defendants’ emails indicated that they hoped to be the first to enter into the Star Trek universe with Seuss characters; they even expected a possible payday for their initiative. But that initiative led them into territory that rightfully belongs to Seuss.
A central aspect of market harm is whether a defendant would undermine the potential market for derivative works that otherwise belongs to the copyright owner. Seuss’s strong brand made this aspect “particularly significant” according to Judge McKeown. The unrestricted and widespread conduct of the sort ComixMix engages in could result in anyone being able to produce, without Seuss’s permission, a variety of mashups with other famous branded characters from Yoda to Pokemon. Unless checked, the type of conduct engaged in by ComicMix, would “create incentives to pirate intellectual property” and disincentivize the creation of new works. This is contrary to the goal of copyright, wrote Judge. McKeown.
A collective sigh of relief must have been audible this holiday season from authors, book publishers, animation and movie studios, dramatists, composers and other copyright owners whose characters and works have attracted a loyal following. Judge McKeown delivered them the best gift of all. Clarity under the law. At least in the Ninth Circuit.
 Dr. Seuss Enterprises LP v. ComicMix LLC, 2020 U.S.P.Q.2d (9th Cir. 2020)
 Dr. Seuss Enters. v. ComicMix LLC , 372 F. Supp. 3d 1101 (S.D. Cal. 2019)
 Unless otherwise indicated, quotations are from Judge McKeown’s decision.
 Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994)
 17 U.S.C. §107.
 Dr. Seuss Enters., L.P. v. Penguin Books USA Inc., 109 F. 3d 1394 (9th Cir. 1997)
 Seltzer v. Green Day, Inc. 725 F. 3d 1170 (9th Cir. 2013)
 17 U.S.C. § 106(2).
 U.S Const. art I, §8, cl. 8.