Big Fair Use Win For Mashups: 'Oh, The Places You'll Boldly Go!' Deemed To Be Fair Use
from the set-phasers-to-fair-use dept
It's been roughly two years since we last had any update on the lawsuit that was brought by the estate of Dr. Seuss against ComicMix, a group of artists that created a mashup book in the styles of Dr. Seuss and Star Trek. The suit was over trademark and copyright rights, with the court ruling against the estate two years ago on the trademark claim. At the time of the ruling, the court gave the estate two weeks to prove there was any real harm done on the copyright side, after already ruling the trademark uses were fair use. Given the context of the judge's comments in the request, it was clear the Suess Estate had a hell of a hilll to climb.
A hill that now, nearly two years on, appears to have been insurmountable, as the firm representing ComicMix has announced that it has prevailed on the fair use copyright claims as well.
On March 12, 2019, after more than two years of litigation, the United States District Court for the Southern District of California (DSE’s home court) gave a learned, thoroughly reasoned decision that strongly affirms the fair use doctrine. District Judge Janis L. Sammartino reaffirmed her earlier findings that Oh, the Places You’ll Boldly Go! is a highly transformative work that takes no more from the Dr. Seuss books than necessary for its purposes. Under those circumstances, she found that DSE could only defeat the fair use defense by demonstrating that publishing the book would be likely to cause market harm to DSE, and she found that it failed to do so, leaving its claims of market harm simply hypothetical.
As for the trademark claims, Judge Sammartino had already found that the First Amendment protected the use of the title of Oh, the Places You’ll Go! in the title of the Defendants’ book. At the summary judgment stage, she determined that there is no such thing as a trademark in an artistic style, and that DSE does not have an enforceable trademark in the typeface used for the title, so the use of a Seussian typeface for Oh, the Places You’ll Boldly Go! is not trademark infringement.
The ruling itself is, as the law firm states, thoroughly reasoned. It takes the requests for summary judgement from both parties in turn, before taking on the question of fair use itself. Again, the analysis here is detailed, but the court's central ruling is whether or not Boldly interferes with the Seuss' works marketability:
Further, the Court is not persuaded that Boldly “has the same intrinsic purpose and function as Go!,” i.e., “providing an illustrated book, with the same uplifting message that would appeal to graduating high school and college seniors,” see Pl.’s MSJ at 17, or that Defendants “act[ed] in bad faith.” See id. at 17. While Boldly may be an illustrated book with an uplifting message (something over which Plaintiff cannot exercise a monopoly), it is one tailored to fans of Star Trek’s Original Series. See, e.g., Duvdevani Decl. Ex. 2 at 67:1–68:3. Further, that Defendants discussed the necessity of a license and determined that Boldly was a “fair use parody” without seeking the advice of counsel does not amount to bad faith.
The court then turns to the nature of the use of the original work. The court had originally ruled for ComicMix's motion to dismiss specifically on the question of how Boldly used Seuss' work, noting that the use of the work was both not a complete copying of the original and that it was obviously infused with new meaning. The Seuss Estate then argued that Oracle America Inc. v. Google LLC resolved that mashing two properties together in the way that Boldly does would not result in a work suddenly becoming fair use if the copying of the Seuss work was deemed to be substantial.
The court was not impressed.
Examining the cover of each work, for example, Plaintiff may claim copyright protection in the unique, rainbow-colored rings and tower on the cover of Go! Plaintiff, however, cannot claim copyright over any disc-shaped item tilted at a particular angle; to grant Plaintiff such broad protection would foreclose a photographer from taking a photo of the Space Needle just so, a result that is clearly untenable under—and antithetical to—copyright law.
But that is essentially what Plaintiff attempts to do here. Instead of replicating Plaintiff’s rainbow-ringed disc, Defendants drew a similarly-shaped but decidedly nonSeussian spacecraft—the USS Enterprise—at the same angle and placed a red-and-pink striped planet where the larger of two background discs appears on the original cover. See Duvdevani Decl. Ex. 31, ECF No. 115-11, at 450. Boldly’s cover also features a figure whose arms and hands are posed similarly to those of Plaintiff’s narrator and who sports a similar nose and eyes, but Boldly’s narrator has clearly been replaced by Captain Kirk, with his light, combed-over hair and gold shirt with black trim, dark trousers, and boots.5 Id. Captain Kirk stands on a small moon or asteroid above the Enterprise and, although the movement of the moon evokes the tower or tube pictured on Go!’s cover, the resemblance is purely geometric. Id. Finally, instead of a Seussian landscape, Boldly’s cover is appropriately set in space, prominently featuring stars and planets. Id. In short, “portions of the old work are incorporated into the new work but emerge imbued with a different character.” See Mattel, Inc. v. Walking Mountain Prods., 353 F.3d 792, 804 (9th Cir. 2003).
It goes on and on, but you get the idea. What this ultimately represents is a fantastic ruling for anyone interested in the flourishing of mashup-style cultural output. The kind of creative output that is Boldly, with its transformative meaning and messaging, but utilizing other original works to drive the point home, is certainly an art form onto itself. A ruling other than this one could have murdered that art form in its infancy.
And that isn't the purpose of copyright law, as this court wisely noted.
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Filed Under: copyright, dr. seuss, fair use, mashups, oh the places you'll boldly go, remix, star trek
Companies: comicmix, dr. seuss, seuss estate
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Interesting. I hadn't heard of this book, but my wife recently picked up a similarly amusing storybook: The Call of Cthulhu in the style of Dr. Seuss. It's... well... exactly what it sounds like, and the author and illustrator clearly put some real effort into imitating both the poetic and the visual styles of Dr. Seuss. I'm a bit surprised it didn't end up in court, if the Seuss Estate is going to do stuff like this.
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Just be glad the Cthulhu Estate isn't angry with you. The Seuss estate at least has to work within the bounds of the law. The other side won't even bother staying within the bounds of reality.
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Re: Re:
There is no Cthulhu Estate. After all, Cthulhu isn't dead, he is only sleeping.
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Re: Re:
On the positive side the Cthulhu estate won't get around to sending a star-spawn with a subpoena until the stars are right.
At which point we're all well past that point where a pending court appointment with an betentacled eldritch monstrosity will be a welcome relief from the daily grind of being horribly eaten alive.
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They probably called it that to avoid the inevitable lawsuit if they called it "Horton hears a Cthulhu".
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Shouldn't this also make the video of Downfall's version of Hitler reacting to this ruling fair use?
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Originality should be factored into this. If someone now does a 100-volume mashup, that should not be allowed. The first "transformative" work is fine, but after that it's not transformative.
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Re:
That's...not what transformative means.
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If I use 100 different works to make mine, that means my work is 99% different from each of the original works.
That makes it more transformative than a work which combines 2 other works, and is thus only 50% different from the original works.
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It isn't 50/50 and "thus only 50% different from the original work". For original mashups like these, they don't just take Book A and Book B and do an every other line merger or overprint the pictures on each other. That would be 50/50. Some song mashups do that since their are only so many chords and the beats have to match, but not so much with print.
It's more like 10/10/80. 10% stuff sourced from A, 10% sourced from B, and 80% original work that uses A and B for its grounding/social queues. That's what makes it transformative.
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Oh, The Lawsuits That'll Boldly Fail
They DO NOT like that J. L. Samm.
"cannot claim copyright over any disc-shaped item tilted at a particular angle;"
Indeed. How this O not simply a rotated version of the litigant's O, or this I a mirrored or flipped version of litigant's I ?
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Re: Oh, The Lawsuits That'll Boldly Fail
Funnily enough, you can apparently get a patent for a rectangle with rounded corners but not a copyright...
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Re: Re: Oh, The Lawsuits That'll Boldly Fail
Yes we had those in schools in the 1820's. Apparently Prior Art has an expiry date.
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So the court is allowing Boldly! to live long and prosper?
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Re: Live Long and Prosper
May the Farce be With You, Nanoo Nanoo.
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Re:
You can prosper in the states!
You can prosper with your mates!
You can do it, Kirk I am!
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The Travesty of Fair Use
Oh noes - Does this mean that Dr. Seuss will stop writing new books, since people can build on his style and use that to make their own new works?
The horror! So unfair to dead authors.
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Re: The Travesty of Fair Use
No creator in their sanity will ever produce anything anymore now that copyright is effectively dead with this ruling, it'll just be people stitching what exists together and calling it new.
[insert bar followed by random trollish nonsense here]
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Re: The Travesty of Fair Use
Correct. Dr. Seuss will never write a single book again, ever.
All thanks to this ruling.
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That sound you hear is John Sanford Smith furiously writing up a mailing list of all the pirates that stole from Dr. Seuss.
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Re:
That sound you hear is John Sanford Smith furiously writing up a mailing list of all the pirates that stole from Dr. Seuss.
Don't defame him, he was off his meds and telling everyone about how the police have now become involved.
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Now your defaming him. He said he wasn’t on meds and therefore was just completely bonkers when he said that there was soon going to be a giant news expose on how mike is working with the grey aliens to destroy the illiminati mind control implants.
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Re: Re: Re:
You're all wrong.
Defaming him is saying he didn't invent email.
OH SNAP
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I bet Theodore Geisel is at the top of the list....
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DJ Cumberbund makes my favorite mashups
I was hoping it would be about song mashups but was still happy to read about a win on the literary front.
One example of his genius:
https://youtu.be/FuOuUixdSvY
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Oracle v. Google causing mischief again
This case is another example of how dangerous and harmful the Oracle v. Google opinions are. The district court in this case is in the Ninth Circuit, and there are plenty of Ninth Circuit fair use decisions to guide its district courts. Since those cases apparently weren't working for the plaintiff, it instead cited the Federal Circuit's Oracle opinions and argued that they should control the case.
What's worse here is that the district court didn't reject the plaintiff's argument out of hand. The district court should have said, "Oracle isn't binding, rather Ninth Circuit law is binding." Instead, the district court treated Oracle as controlling law, but was able to distinguish it on the facts.
If the Supreme Court doesn't review the Oracle decisions, we can expect them to be cited in many future cases, instead of Ninth Circuit law, and in cases where Oracle can't be meaningfully distinguished on its facts.
(Disclosure: I'm counsel of record on an amicus brief asking the Supreme Court to review Oracle v. Google.)
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Re: Oracle v. Google causing mischief again
As someone who does software development for a living, thank you for pushing on this from every angle possible. I'm definitely no lawyer, but what I have read and understand about the current state of the Oracle v. Google decision makes me so upset since it has the ability to cause a lot of mischief in the software industry.
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As I said on teh Twitters...
@BoothSweet claps
A moment of silence for DSE.
Dr. Seuss will have no incentive to create new works, via ouija board.
The public domain is barren, try to do fair use you'll get a scare then!
4 lifetimes of control isn't enough, we'll collect more cash sitting on our duffs.
burma shave.
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I'm just going to go ahead and point out the bigger issue still unaddressed by any court in the US:
she found that DSE could only defeat the fair use defense by demonstrating that publishing the book would be likely to cause market harm to DSE
That "Fair Use" is still a defense is a problem which needs to be corrected.
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Re:
Why?
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Re: Re:
Not in the sense of the fact that the defense exists, but the fact that claiming "fair use" doesn't immediately shield you from having your ass dragged all the way to trial, even if the case is monumentally stupid.
See Universal vs. Lenz.
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Re: Re: Re:
As far as I know, and IANAL, there is NOTHING that will instantly prevent that (except maybe diplomatic immunity). At the very least, you have to go to court (not trial) to allow the plaintiff to make their case against you.
And this is as it should be. Otherwise people could just claim "fair use" or whatever other get-out-of-jail free card and get off scott free for something they actually did do wrong. It's not that they are presuming you guilty, it's more giving the plaintiff the opportunity to say "hey, I've been wronged and here's my proof".
That's not to say that I don't think fair use should be weighted more heavily than it currently is (see dancing baby et. al.). In your example, yes, if it was truly fair use, it shouldn't go to trial, but you'd likely still have to show up in court and show that to a judge in response to someone's accusations. At that point it should be tossed since it would be clearly fair use. Unfortunately that's not generally how it's worked so far. Fair use is extremely important but it shouldn't be a get out of jail free card if you actually did do something wrong.
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A 'fair use' version of an anti-SLAPP law would certainly be of help. If it's obvious that the use is within the law and the one suing should have known this a penalty(at a minimum paying the defendant's legal fees) seems appropriate.
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Re: Re: Re: Re: Re:
Agreed.
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Well, there's the original purpose of copyright, and there's the current twisted all around itself purpose of copyright law... and I expect that never the twain shall meet again.
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"...there's the original purpose of copyright, and there's the current twisted all around itself purpose of copyright law..."
Actually there's only ever been that one version - you know, the one where a large publisher's guild, used to owning a total monopoly on determining who would be allowed to publish under a state-sponsored censorship regime, frantically tried to retain said monopoly.
Copyright has always been as twisted as it is today, it's just that as modern technology has progressed it's no longer a case of just sending a gang of thugs to break some kneecaps and bust up an unlicensed printing press every now and then. Instead that same poor gang of thugs have to try to bust the kneecaps of everyone who owns an item containing functional electronics.
And they've tried. Copyright enforcement have persistently tried to ban every form of technological advance which as an effect allowed the storage, transmission or playback of information.
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Oh, The People You Will Sue
A repost of my comment from 2012 seems appropriate:
Oh, The People You Will Sue
Congratulations!
From here you'll go far.
After trials and tribulations
You've finally passed the Bar.
You spent years in Law School
Listening to every Law Scholar
You are not anyone's fool
You are now an IP Lawyer
Everything is new, it's a brand new day
Then reality hits and you start to moan
You have to figure out a way
To repay all those student loans
You fire up your 'puter and look around
You see gatekeepers who need savin'
Against the evil pirates who abound
And think to yourself. I'll be the next Righthaven!
Oh, The People You Will Sue
As the plan forms in your mind
You'll sue mothers and printers
You'll sue anyone you can find
You'll leave the net in splinters
You'll sue anyone who utters "Fair Use!"
and companies who use Safe Harbors
'cause in your mind that's all just abuse
And that's just for starters
Oh, The People You Will Sue
With patents and trademark abuses
You'll sue anyone who innovates
Or dares to produce something with uses
And every single company who creates
You'll file class action suits
For artists against labels, it's true
You'll work hard on these pursuits
Because no one gets the money, well, except you.
You've become an IP Lawyer
You knew what you were doing
There's infringers out there
So...get suing!
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Oh the cases you will lose!
There is no way to win,
You could not would not with a goose,
Sweep into the dustbin,
This thing called fair use!
The judge has heard
Rhymes aren't just for Seuss
But also for nerds!
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No law suit from Star Trek owner?
May Star Trek owner watch Star Trek and understand its message about sharing, cooperate, and help other people create good world for every person?
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