Young children and young-at-heart graduates alike are familiar with Oh, the Places You’ll Go! by Dr. Seuss. Every year, particularly in May, this book proves popular once again—“[n]o other book enjoys such iconic status as a go-to gift.”[1] Recognizing this lucrative and exploitable market, ComicMix crowdfunded its own version, Oh, the Place You’ll Boldly Go!, which incorporated similar themes and graphics but used Star Trek characters and plots.[2] Dr. Seuss Enterprises (Seuss) quickly filed suit, and a 2020 Ninth Circuit decision favoring Seuss seemed like a big win at the time.[3] Less than a year later, however, in October 2021, the case came to a close after the parties settled.[4]
On remand after that circuit court decision, several issues remained, particularly after the district court denied Seuss’s motion for summary judgment on copyright infringement.[5] There was also the matter of damages: Seuss had sought as much as $225,000 in June 2021 for what it claimed was “willful infringement.”[6]
According to the settlement, however, ComicMix “acknowledge[s] infringement but [will not] pay damages,” including any attorneys’ fees for the extended litigation.[7] The settlement’s permanent injunctive relief prohibiting ComicMix from making and selling its product, however, is likely quite valuable for Seuss as a household name, since it had worked hard to develop and control its market power for decades.[8]
That brand—and the market it inhabited—played a critical role in the Ninth Circuit’s opinion that denied ComicMix’s fair use defense for copyright infringement.[9] But the court first focused on how the work was not “transformative,” which altered the outcome of at least two other fair use elements: the amount and substantiality of use as well as the market harm.[10]
The mashup did not constitute a parody because it merely appropriated Seuss’s style without commenting on, critiquing, or ridiculing it.[11] Likewise, the changes to Seuss’s story were only necessary to tell a Star Trek story.[12] Also, ComicMix’s adaptation failed to provide new purpose or meaning to Seuss’s work.[13]
With this in mind, the remaining elements courts consider in a fair use defense were relatively straightforward. First, the nature of Seuss’s book, as a literary work, weighed against fair use.[14] Second, there was evidence of substantial copying, even down to the detailed linework, coloring, and arrangement of figures.[15] And finally, the markets substantially overlapped.[16]
As already noted, the market was a critical piece of the analysis, particularly because ComicMix claimed it did not bear the burden of proof, an argument the circuit court did not accept.[17] ComicMix’s project was not only based on a speculative assumption that Seuss would not collaborate on or license a Star Trek project, but it was also intentional.[18] The Ninth Circuit did, however, flatly reject Seuss’s trademark infringement claim as a matter of law, noting that using the “Suessian style of illustration” and “Suessian style of font” were necessary for ComicMix’s project and not explicitly misleading.[19]
Although there were concerns about whether the fair use doctrine was becoming a thing of the past before the Ninth Circuit’s decision,[20] this final settlement means these copyright questions will go unanswered for now. But these open questions are precisely the “Bang-ups / [a]nd Hang-ups”[21] Seuss wanted to prepare his readers—children, graduates, and maybe even some lawyers—to handle.
[1] Ron Charles, How Dr. Seuss’s ‘Oh, the Places You’ll Go!” became a graduation-gift cliché, Wash. Post (May 29, 2019), https://www.washingtonpost.com/entertainment/books/how-dr-seusss-oh-the-places-youll-go-became-a-graduation-gift-cliche/2019/05/29/c584fe8e-8021-11e9-95a9-e2c830afe24f_story.html.
[2] See Daniel Victor, ‘Star Trek’ and Dr. Seuss Mash-Up Not Protected, Court Rules, N.Y. Times (Dec. 21, 2020), https://www.nytimes.com/2020/12/21/business/dr-seuss-star-trek-comicmix.html.
[3] See Dr. Seuss Enters., L.P. v. ComicMix LLC, 983 F.3d 443 (9th Cir. 2020).
[4] See Kyle Jahner, Seuss/Star Trek Mashup Suit Settles: Injunction, No Damages, Bloomberg (Oct. 5, 2021, 6:00 PM), https://news.bloomberglaw.com/ip-law/dr-seuss-star-trek-mashup-suit-settles-injunction-no-damages?context=search&index=59. See also Gardner, supra note 3.
[5] See Eriq Gardner, ‘Star Trek,’ Dr. Seuss Mashup Dispute Ends After 5-Year Legal Journey, Hollywood Reporter (Oct. 5, 2021, 2:23 PM), https://www.hollywoodreporter.com/tv/tv-news/star-trek-dr-seuss-mashup-dispute-ends-five-year-legal-journey-1235026010/.
[6] Pl. Dr. Seuss Enter., L.P.‘s Reply Mem. Points and Authorities in Further Support of Its Renewed Mot. for Summ. J. 9 (June 10, 2021).
[7] Jahner, supra note 4.
[8] See Jahner supra note 5; Dr. Seuss Enters., L.P., 983 F.3d at 460.
[9] Id. at 460-61.
[10] Id. at 451.
[11] Id. at 452-453.
[12] Id. at 453.
[13] Id. at 454.
[14] Id. 455.
[15] Id. at 456-457.
[16] Id. at 458-459.
[17] Id. at 460.
[18] Id. at 460-461.
[19] Id. at 461-462.
[20] See Gardner, supra note 6.
[21] Dr. Seuss Enters., L.P., 983 F.3d at 448.