FOR PUBLICATION
`
`UNITED STATES COURT OF APPEALS
`FOR THE NINTH CIRCUIT
`
`
`DR. SEUSS ENTERPRISES, L.P., a
`California limited partnership,
`Plaintiff-Appellant,
`
`
`v.
`
`
`
`
`No. 19-55348
`
`D.C. No.
`3:16-cv-02779-
`JLS-BGS
`
`
`OPINION
`
`
`
`COMICMIX LLC, a Connecticut
`limited liability company; GLENN
`HAUMAN, an individual; DAVID
`JERROLD FRIEDMAN, AKA David
`Gerrold, an individual; TY
`TEMPLETON, an individual,
`Defendants-Appellees.
`
`
`
`
`
`Appeal from the United States District Court
`for the Southern District of California
`Janis L. Sammartino, District Judge, Presiding
`
`Argued and Submitted April 27, 2020
`Seattle, Washington
`
`Filed December 18, 2020
`
`Before: M. Margaret McKeown, N. Randy Smith, and
`Jacqueline H. Nguyen, Circuit Judges.
`
`Opinion by Judge McKeown
`
`
`
`
`UNITED STATES COURT OF APPEALS
`FOR THE NINTH CIRCUIT
`
`
`DR. SEUSS ENTERPRISES, L.P., a
`California limited partnership,
`Plaintiff-Appellant,
`
`
`v.
`
`
`
`
`No. 19-55348
`
`D.C. No.
`3:16-cv-02779-
`JLS-BGS
`
`
`OPINION
`
`
`
`COMICMIX LLC, a Connecticut
`limited liability company; GLENN
`HAUMAN, an individual; DAVID
`JERROLD FRIEDMAN, AKA David
`Gerrold, an individual; TY
`TEMPLETON, an individual,
`Defendants-Appellees.
`
`
`
`
`
`Appeal from the United States District Court
`for the Southern District of California
`Janis L. Sammartino, District Judge, Presiding
`
`Argued and Submitted April 27, 2020
`Seattle, Washington
`
`Filed December 18, 2020
`
`Before: M. Margaret McKeown, N. Randy Smith, and
`Jacqueline H. Nguyen, Circuit Judges.
`
`Opinion by Judge McKeown
`
`
`
`
`DR. SEUSS ENTERPRISES V. COMICMIX LLC
`
`SUMMARY*
`
`2
`
`
`
`
`
`Copyright / Trademark
`
`
`the district court’s summary
`The panel reversed
`
`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
`
`
`* This summary constitutes no part of the opinion of the court. It
`has been prepared by court staff for the convenience of the reader.
`
`
`
`DR. SEUSS ENTERPRISES V. COMICMIX LLC
`
`
`
`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.
`
`
`
`3
`
`COUNSEL
`
`
`Stanley J. Panikowski (argued), DLA Piper LLP (US), San
`Diego, California; Andrew L. Deutsch DLA Piper LLP
`(US), Los Angeles, California; Tamar Y. Duvdevani and
`Marc E. Miller, DLA Piper LLP (US), New York, New
`York; for Plaintiff-Appellant.
`
`Dan Booth (argued), Dan Booth Law LLC, Concord,
`Massachusetts; Michael Licari, Sprinkle Lloyd & Licari,
`LLP, San Diego, California; for Defendants-Appellees.
`
`Jacqueline C. Charlesworth, Alter, Kendrick & Baron LLP,
`New York, New York, for Amicus Curiae the Motion
`Picture Association Of America, Inc.
`
`Susan Kohlmann and Alison Stein, Jenner & Block LLP,
`New York, New York; James Dawson, Jenner & Block LLP,
`Washington D.C.; Keith Kupferschmid and Terry Hart,
`Copyright Alliance, Washington D.C.; for Amicus Curiae
`the Copyright Alliance.
`
`Peter S. Menell, Berkeley Center For Law & Technology,
`University of California, Berkeley School of Law, Berkeley,
`California for Amici Curiae Professors Peter S. Menell,
`Shyamkrishna Balganesh, and David Nimmer.
`
`Dean S. Marks, Dean S. Marks, Attorney-at-Law, Sherman
`Oaks, California for Amicus Curiae Sesame Workshop.
`
`
`
`
`DR. SEUSS ENTERPRISES V. COMICMIX LLC
`
`4
`
`Mason A. Kortz, Cyberlaw Clinic, Harvard Law School,
`Cambridge, Massachusetts, for Amici Curiae Electronic
`Frontier Foundation, Organization For Transformative
`Works, Public Knowledge, Francesca Coppa, David Mack,
`and Magdalene Visaggio.
`
`Phillip R. Malone, Juelsgaard Intellectual Property and
`Innovation Clinic, Mills Legal Clinic at Stanford Law
`School, Stanford, California, for Amici Curiae Intellectual
`Property Law Professors.
`
`Erik Stallman, Samuelson Law, Technology & Public Policy
`Clinic, University of California, Berkeley School of Law,
`Berkeley, California, for Amici Curiae Professors Mark A.
`Lemley, Jessica Litman, Lydia Loren, Pamela Samuelson,
`and Rebecca Tushnet.
`
`
`
`
`
`
`
`
`DR. SEUSS ENTERPRISES V. COMICMIX LLC
`
`5
`
`
`
`
`OPINION
`
`
`McKEOWN, Circuit Judge:
`
`
`In Dr. Seuss’s classic book, Oh, the Places You’ll Go!
`(Go!), the narrator counsels the protagonist on a path of
`exploration and discovery. The book closes with this note
`of caution:
`
`I’m sorry to say so
`But, sadly it’s true
`That Bang-ups
`And Hang-ups
`Can happen to you.
`
`
`If he were alive today, Dr. Seuss might have gone on to say
`that “mash-ups can happen to you.”
`
`Enter Oh, the Places You’ll Boldly Go! (Boldly).
`Authored by Star Trek episodes author David Gerrold,
`illustrated by Ty Templeton, and edited by fellow Trekkie
`Glenn Hauman (collectively, ComicMix), Boldly is a mash-
`up that borrows liberally—graphically and otherwise—from
`Go! and other works by Dr. Seuss, and that uses Captain
`Kirk and his spaceship Enterprise to tell readers that “life is
`an adventure but it will be tough.” The creators thought their
`Star Trek primer would be “pretty well protected by parody,”
`but acknowledged that “people in black robes” may
`disagree. Indeed, we do.
`
`The question we consider is whether Boldly’s use of
`Dr. Seuss’s copyrighted works is fair use and thus not an
`infringement of copyright. Because all of the fair use factors
`favor Dr. Seuss, we reverse the district court’s summary
`judgment
`in favor of ComicMix on
`the copyright
`infringement claim. We affirm, however, the Rule 12(c)
`
`
`
`DR. SEUSS ENTERPRISES V. COMICMIX LLC
`
`6
`
`dismissal and the grant of summary judgment in favor of
`ComicMix on the trademark claim.
`
`BACKGROUND
`
`Go! was the final book written by the late Theodor S.
`Geisel, better known by his pseudonym, “Dr. Seuss.” Many
`of the dozens of books Dr. Seuss authored and illustrated
`were wildly popular when they were published and have
`remained so throughout the decades. “Dr. Seuss” was the
`top licensed book brand of 2017. Notably, Go! has been
`“the number-one book on The New York Times Best Sellers
`list” “[e]very year during graduation season.” The other Dr.
`Seuss works that are at issue—How the Grinch Stole
`Christmas! (Grinch) and The Sneetches and Other Stories
`(Sneetches)—also remain well-recognized. For simplicity,
`we refer to the relevant Dr. Seuss works collectively as Go!.
`
`Today, Dr. Seuss Enterprises, L.P. (Seuss) owns the
`intellectual property in Dr. Seuss’s works, including the
`copyrights in his books and the trademarks in his brand.
`Seuss markets the books to children and adults. Seuss also
`publishes reissues of the books, such as anniversary editions.
`And Seuss licenses and oversees the creation of new works
`under the Dr. Seuss brand. Seuss carefully vets the many
`licensing requests it receives and works closely with the
`licensees and collaborators to produce works based on Dr.
`Seuss’s books.
`
`The myriad licensed works that proliferate in the market
`include fine art, toys, video games, stage productions,
`motion pictures, and books that incorporate elements of Dr.
`Seuss’s iconic works. Go! alone is the basis for several
`authorized derivative works such as the following books:
`Oh, the Things You Can Do that Are Good for You!; Oh, the
`Places I’ll Go! By ME, Myself; Oh, Baby, the Places You’ll
`
`
`
`7
`
`DR. SEUSS ENTERPRISES V. COMICMIX LLC
`
`
`
`Go!; and Oh, the Places I’ve Been! A Journal. Seuss has
`also entered into various collaborations to create new works
`that target the audiences of Seuss and its collaborators. In
`one well-known collaboration, The Jim Henson Company
`and Seuss produced a television and book series called The
`Wubbulous World of Dr. Seuss, featuring “muppetized” Dr.
`Seuss characters.
`
`Boldly is not a licensed work of Seuss. Nor is it a
`collaboration
`or
`an
`otherwise
`authorized work.
`Nevertheless, in May 2016, David Gerrold (author of Star
`Trek episodes) and Glenn Hauman (Vice President of the
`publishing company ComicMix LLC) decided to send the
`Enterprise crew to a new literary world. Gerrold and
`Hauman agreed to create a “Star Trek Primer”—a mash-up
`of Star Trek and another well-known primer. A mash-up is
`“something created by combining elements from two or
`more sources,” such as “a movie or video having characters
`or
`situations
`from
`other
`sources.”
` Mash-up,
`Merriam-Webster
`Dictionary,
`https://www.merriam-
`webster.com/dictionary/mash-up.
`
`After considering Pat the Bunny and other primers,
`Gerrold and Hauman decided to use Go! and to place the
`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. They hired Ty Templeton, an experienced
`illustrator. ComicMix purposely crafted Boldly so that the
`title, the story, and the illustrations “evoke” Go!.
`
`ComicMix planned to publish and sell Boldly. An e-
`commerce retailer, ThinkGeek, agreed to handle the
`distribution and merchandizing of Boldly, and placed a
`conditional order for 5,000 copies. In August 2016,
`ComicMix started a successful crowdsourcing campaign on
`
`
`
`DR. SEUSS ENTERPRISES V. COMICMIX LLC
`
`8
`
`Kickstarter to pay for production and other costs, eventually
`raising close to $30,000. The campaign also drew the
`attention of an editor at Andrews McMeel Publishing, who
`proposed doing a direct sale publication of Boldly.
`
`The fundraising effort raised more than eyebrows when
`the Seuss organization became aware of Boldly. In
`September and October of 2016, Seuss sent ComicMix a
`cease-and-desist letter and two follow-up letters. ComicMix
`responded that Boldly was a fair use of Go!. Seuss also sent
`Kickstarter a takedown notice under the Digital Millennium
`Copyright Act; Kickstarter took down the campaign and
`blocked the pledged funds. Boldly remains unpublished.
`
`Seuss filed suit against Hauman, Gerrold, Templeton,
`and ComicMix LLC in November 2016 for copyright
`infringement,
`trademark
`infringement,
`and
`unfair
`competition. The district court granted ComicMix’s Rule
`12(c) motion and dismissed Seuss’s trademark infringement
`claim as it relates to the title of Boldly. The parties then filed
`cross-motions for summary judgment on the copyright
`claim, and ComicMix moved for summary judgment on the
`remainder of the trademark infringement claim. The district
`court granted ComicMix’s summary judgment motion and
`denied Seuss’s motion, holding that Boldly was a fair use of
`Go! and
`that
`the remainder of Seuss’s
`trademark
`infringement claim failed.1
`
`ComicMix does not dispute that it tried to copy portions
`of Go! as accurately as possible. Templeton urged the team
`
`
`1 Although Seuss alleged unfair competition claims in the
`Complaint, it failed to address them in its opening brief, and thus we do
`not consider those claims here. See Indep. Towers of Wash. v.
`Washington, 350 F.3d 925, 929 (9th Cir. 2003).
`
`
`
`9
`
`DR. SEUSS ENTERPRISES V. COMICMIX LLC
`
`
`
`to “keep to [Go!’s] sentiment” that “life is an adventure but
`it WILL be tough and there WILL be setbacks, and you
`should not despair of them.” As for the text of Boldly,
`Hauman created a side-by-side chart comparing the texts of
`Go! and Boldly in order to “match the structure of Go!.”
`Boldly also closely mimics many illustrations in Go!, as a
`result of what ComicMix called “slavish[] copy[ing] from
`Seuss.” In one instance, Templeton took “about seven
`hours” to copy a single illustration because he “painstakingly
`attempted to make” the illustration in Boldly “nearly
`identical” to its Seussian counterpart.
`
`The issue in this appeal is not whether Boldly infringed
`Go!, but whether Boldly! was a fair use of Go!.2 Gerrold and
`Hauman thought they could either get a license or create a
`parody, and concluded that Boldly “come[s] down well on
`the side of parody” and does not infringe Seuss’s copyright.
`Templeton agreed. Despite being “slightly concerned,”
`ComicMix did not consult a lawyer or pursue the option of a
`license.3 This failure led to this lawsuit.
`
`ANALYSIS
`
`I. BOLDLY DOES NOT MAKE FAIR USE OF GO!
`
`The fair use doctrine first took root in a case involving
`the biography of our first president. Justice Story asked
`whether copying
`the writings of President George
`Washington for a biography was “a justifiable use of the
`
`2 We received many thoughtful amicus briefs, and we thank amici
`for their participation.
`
`3 ComicMix also did not obtain a license for the use of Star Trek
`material, but the intellectual property in Star Trek is not at issue in this
`case.
`
`
`
`DR. SEUSS ENTERPRISES V. COMICMIX LLC
`
`10
`
`original materials, such as the law recognizes as no
`infringement of the copyright . . . .” See Folsom v. Marsh,
`9 F. Cas. 342, 348 (C.C.D. Mass. 1841). Although fair use
`was not codified until 1976, American copyright law has
`always counterbalanced the exclusive rights of a copyright
`with a fair use backstop. Under the statute, “fair use of a
`copyrighted work . . . is not an infringement of copyright.”
`17 U.S.C. § 107. “The fair use defense permits courts to
`avoid rigid application of the copyright statute when, on
`occasion, it would stifle the very creativity which that law is
`designed to foster.” Dr. Seuss Enters., L.P. v. Penguin
`Books USA, Inc., 109 F.3d 1394, 1399 (9th Cir. 1997)
`(quotation marks and citation omitted).
`
`The factors that determine fair use have changed little
`since Justice Story first announced them in Folsom and now
`are reflected in § 107 of the Copyright Act of 1976 as the
`following four non-exclusive factors:
`
`(1) the purpose and character of the use,
`including whether such use is of a
`commercial nature or is for nonprofit
`educational purposes;
`
`(2) the nature of the copyrighted work;
`
`(3) the amount and substantiality of the
`portion used in relation to the copyrighted
`work as a whole; and
`
`(4) the effect of the use upon the potential
`market for or value of the copyrighted
`work.
`
`17 U.S.C. § 107(1)–(4); accord Folsom, 9 F. Cas. at 348.
`Congress codified these factors without intending to disrupt
`
`
`
`11
`
`DR. SEUSS ENTERPRISES V. COMICMIX LLC
`
`
`
`“the common-law tradition of fair use adjudication.”
`Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 577
`(1994) (citing H.R. Rep. No. 94-1476, p. 66 (1976)). The
`fair use defense remains an “equitable rule of reason.” Sony
`Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417,
`448 (1984) (quoting H.R. Rep. No. 94-1476, p. 65).
`
`Fair-use analysis, like the Go! protagonist’s life journey,
`is “a Great Balancing Act.” All four factors are “to be
`explored, and the results weighed together, in light of the
`purposes of copyright.” Campbell, 510 U.S. at 578. The
`Supreme Court teaches that we should eschew “bright-line
`rules” and “categories of presumptively fair use,” and
`instead engage in a “case-by-case analysis.” Id. at 577, 584.
`As we have observed, fair use analysis can be elusive to the
`point of “approaching ‘the metaphysics of the law, where the
`distinctions are . . . very subtle and refined, and, sometimes,
`almost evanescent.’” Monge v. Maya Mags., Inc., 688 F.3d
`1164, 1171 (9th Cir. 2012) (quoting Folsom, 9 F. Cas. at
`344). Not so with this case. Because all of the statutory
`factors decisively weigh against ComicMix and no
`countervailing copyright principles counsel otherwise, we
`conclude that Boldly did not make fair use of Go!.
`
`A. The Purpose and Character of Boldly Weigh
`Against Fair Use
`
`The first statutory factor examines “the purpose and
`character of the use, including whether such use is of a
`commercial nature or is for nonprofit educational purposes.”
`17 U.S.C. § 107(1). This factor has taken on a heightened
`significance because it influences the lens through which we
`consider two other fair use factors. The third factor—the
`amount and substantiality of use—“will harken back” to the
`first factor. See Campbell, 510 U.S. at 586. And the fourth
`factor, relating to market harm, is influenced by whether the
`
`
`
`DR. SEUSS ENTERPRISES V. COMICMIX LLC
`
`12
`
`commercial use was transformative. See Monge, 688 F.3d
`at 1181.
`
`Although a commercial use is no longer considered
`presumptively unfair, the nature of the work remains “one
`element of the first factor enquiry.” Campbell, 510 U.S. at
`584–85. As explained below, Boldly is not transformative,
`and its indisputably commercial use of Go! counsels against
`fair use.
` See Penguin Books, 109 F.3d at 1401
`(commerciality “further cuts against the fair use defense”
`when there is “no effort to create a transformative work”).
`
`The term “transformative” does not appear in § 107, yet
`it permeates copyright analysis because in Campbell, the
`Court interpreted the “central purpose” of the first-factor
`inquiry as determining “whether and to what extent the new
`work is ‘transformative.’” Campbell, 510 U.S. at 579.
`Transformative use of the original work can tip the first
`factor in favor of fair use.
`
`A transformative work “adds something new, with a
`further purpose or different character, altering the first with
`new expression, meaning, or message.” Id. On the other
`hand, a work that “merely supersedes the objects of the
`original creation” is not transformative. Id. (quotation marks
`omitted). While the analysis of the first fair use factor “may
`be guided by the examples given in the preamble to § 107,”
`i.e., criticism, comment, news
`reporting,
`teaching,
`scholarship, and research, id. at 578–79, not even these
`works compel “a per se finding of fair use,” Monge, 688 F.3d
`at 1173. Thus, we do not ask whether mash-ups can be fair
`use—they can be—but whether Boldly is a transformative
`work.
`
`The purpose and character of a parody fits squarely into
`preamble
`examples—particularly
`“criticism”
`and
`
`
`
`13
`
`DR. SEUSS ENTERPRISES V. COMICMIX LLC
`
`
`
`“comment”—and has “an obvious claim” to transformative
`use. Campbell, 510 U.S. at 579. By definition, a parody
`must “use some elements of a prior author’s composition to
`create a new one that, at least in part, comments on that
`author’s works.” Id. at 580. The need “to mimic an original
`to make its point” is the essence of parody. Id. at 580–81;
`see Penguin Books, 109 F.3d at 1400 (a parody must
`“conjure up” at least a part of “the object of [the] parody”).
`In short, a parody is a spoof, send-up, caricature, or comment
`on another work. A great example of a parody is the book
`The Wind Done Gone, which parrots portions of Gone with
`the Wind to offer a critical take on the book. See Suntrust
`Bank v. Houghton Mifflin Co., 268 F.3d 1257, 1270–71 (11th
`Cir. 2001) (“It is hard to imagine” how a parody that
`attempts to “strip the romanticism” of slavery in Gone with
`the Wind can be made “without depending heavily upon
`copyrighted elements of that book.”). On the other hand, if
`
`the commentary has no critical bearing on the
`substance or
`style of
`the original
`composition, which the alleged infringer
`merely uses to get attention or to avoid the
`drudgery in working up something fresh, the
`claim to fairness in borrowing from another’s
`work diminishes accordingly (if it does not
`vanish), and other factors, like the extent of
`its commerciality, loom larger.
`
`Campbell, 510 U.S. at 580.
`
`Boldly is not a parody. ComicMix does not seriously
`contend that Boldly critiques or comments on Go!. Rather,
`it claims Boldly is a parody because it situated the “violent,
`sexual, sophisticated adult entertainment” of Star Trek “in
`the context of [Dr. Seuss]” to create a “funny” book. We
`considered and rejected this very claim in an appeal
`
`
`
`DR. SEUSS ENTERPRISES V. COMICMIX LLC
`
`14
`
`involving another well-known book by Dr. Seuss—The Cat
`in the Hat (Cat). The retelling of the O.J. Simpson double
`murder trial in the world of Cat—in a book titled The Cat
`NOT in the Hat! A Parody by Dr. Juice (Not)—was not a
`parody of Cat. Penguin Books, 109 F.3d at 1396, 1401. We
`explained
`that “broadly mimic[king] Dr. Seuss’[s]
`characteristic style” is not the same as “hold[ing] his style up
`to ridicule,” and that without a critique of Cat, all Not did
`was “simply retell the Simpson tale” using the expressive
`elements of Cat “to get attention or maybe even to avoid the
`drudgery in working up something fresh.” Id. at 1401
`(quotation marks and citation omitted).
`
`Boldly’s claim to a parody fares no better. Although
`elements of Go! are featured prominently in Boldly, the
`juxtapositions of Go! and Star Trek elements do not “hold
`[Seussian] style” up to ridicule. Id. From the project’s
`inception, ComicMix wanted Boldly to be a Star Trek primer
`that “evoke[s]” rather than “ridicule[s]” Go!. Similarly,
`Boldly’s use of the other Seuss works does not conjure up a
`critique of Go!. Boldly’s replacement of Grinch’s “‘Whos
`from Who-ville’ with the diverse crew and Kirk’s ‘lovers of
`every hue,’” the redrawing of “a Sneetches machine to
`signify the Enterprise transporter,” and the rendering of “the
`‘lonely games’ played in Go!” as a “contemplative chess
`match between two Spocks” were all used to tell the story of
`the Enterprise crew’s adventures, not to make a point about
`Go!. Lacking “critical bearing on the substance or style of”
`Go!, Boldly cannot be characterized as a parody. Campbell,
`510 U.S. at 580.
`
`reject as “completely unconvincing”
`We also
`ComicMix’s “post-hoc characterization of the work” as
`criticizing the theme of banal narcissism in Go!. Penguin
`Books, 109 F.3d at 1403; see also Castle Rock Ent., Inc. v.
`
`
`
`DR. SEUSS ENTERPRISES V. COMICMIX LLC
`
`
`
`Carol Publ’g Grp., Inc., 150 F.3d 132, 142 (2d Cir. 1998)
`(ignoring similar “post hoc rationalizations”). The effort to
`treat Boldly as lampooning Go! or mocking the purported
`self-importance of its characters falls flat.
`
`15
`
`Nor is Boldly otherwise transformative. ComicMix
`argues that even if Boldly is not a parody, Boldly is
`transformative because it replaced Seuss characters and
`other elements with Star Trek material. Again, the Cat case
`repudiates ComicMix’s position. There, efforts to leverage
`Dr. Seuss’s characters without having a new purpose or
`giving Dr. Seuss’s works new meaning similarly fell short of
`being transformative. The copyists “merely use[d]” what
`Dr. Seuss had already created—e.g., “the Cat’s stove-pipe
`hat, the narrator (“Dr. Juice”), and the title (The Cat NOT in
`the Hat!)”—and overlaid a plot about the O.J. Simpson
`murder trial without altering Cat “with ‘new expression,
`meaning or message.’” Penguin Books, 109 F.3d at 1401
`(quoting Campbell, 510 U.S. at 578). For the same reasons,
`ComicMix’s efforts to add Star Trek material on top of what
`it meticulously copied from Go! fail to be transformative.
`
`Notably, Boldly lacks the benchmarks of transformative
`use. These telltale signs of transformative use are derived
`from the considerations laid out in Campbell, our north star,
`and Seltzer v. Green Day, Inc. from our circuit: (1) “further
`purpose or different character” in the defendant’s work, i.e.,
`“the creation of new information, new aesthetic, new
`insights and understanding”; (2) “new expression, meaning,
`or message” in the original work, i.e., the addition of “value
`to the original”; and (3) the use of quoted matter as “raw
`material,”
`instead of
`repackaging
`it and “merely
`supersed[ing] the objects of the original creation.” See
`Campbell, 510 U.S. at 579; Seltzer v. Green Day, Inc., 725
`F.3d 1170, 1176 (9th Cir. 2013) (quoting Leval, Toward a
`
`
`
`DR. SEUSS ENTERPRISES V. COMICMIX LLC
`
`16
`
`Fair Use Standard, 103 Harv. L. Rev. 1105, 1111 (1990)).
`Boldly possesses none of
`these qualities;
`it merely
`repackaged Go!.
`
`Boldly’s claim to transformative use rests on the fact that
`it has “extensive new content.” But the addition of new
`expression to an existing work is not a get-out-of-jail-free
`card that renders the use of the original transformative. The
`new expression must be accompanied by the benchmarks of
`transformative use. See, e.g., Seltzer, 725 F.3d at 1177–78;
`Cariou v. Prince, 714 F.3d 694, 706 (2d Cir. 2013); Blanch
`v. Koons, 467 F.3d 244, 251–52 (2d Cir. 2006).
`
`Instead of possessing a further purpose or different
`character, Boldly paralleled Go!’s purpose. In propounding
`the same message as Go, Boldly used expression from Go!
`to “keep to [Go!’s] sentiment.” Absent new purpose or
`character, merely recontextualizing the original expression
`by “plucking the most visually arresting excerpt[s]” of the
`copyrighted work is not transformative. L.A. News Serv. v.
`CBS Broad., Inc., 305 F.3d 924, 938–39 (9th Cir. 2002). By
`contrast, reconstituting copyrighted expression was for a
`new, transformative purpose when a “seven-second clip of
`Ed Sullivan’s introduction of the [band] Four Seasons on
`The Ed Sullivan Show” was used in the musical Jersey Boys,
`not to introduce the band’s performance, but to serve “as a
`biographical anchor” about the band. SOFA Ent., Inc. v.
`Dodger Prods., Inc., 709 F.3d 1273, 1276, 1278 (9th Cir.
`2013).
`
`Boldly also does not alter Go! with new expression,
`meaning, or message. A “‘transformative work’ is one that
`alters the original work.” Perfect 10, Inc. v. Amazon.com,
`Inc., 508 F.3d 1146, 1164 (9th Cir. 2007) (quoting
`Campbell, 510 U.S. at 579). While Boldly may have altered
`Star Trek by sending Captain Kirk and his crew to a strange
`
`
`
`17
`
`DR. SEUSS ENTERPRISES V. COMICMIX LLC
`
`
`
`new world, that world, the world of Go!, remains intact. Go!
`was merely repackaged into a new format, carrying the story
`of the Enterprise crew’s journey through a strange star in a
`story shell already intricately illustrated by Dr. Seuss.
`Unsurprisingly, Boldly does not change Go!; as ComicMix
`readily admits, it could have used another primer, or even
`created an entirely original work. Go! was selected “to get
`attention or to avoid the drudgery in working up something
`fresh,” and not for a transformative purpose. Campbell, 510
`U.S. at 580.
`
`Most telling is ComicMix’s repackaging of Go!’s
`illustrations. The Star Trek characters step into the shoes of
`Seussian characters in a Seussian world that is otherwise
`unchanged. ComicMix captured the placements and poses
`of the characters, as well as every red hatch mark arching
`over the handholding characters in Grinch’s iconic finale
`scene, then plugged in the Star Trek characters. (The Seuss
`images always appear to the left of the Boldly! images
`juxtaposed in this opinion.)
`
`
`
`
`ComicMix copied the exact composition of the famous
`“waiting place” in Go!, down to the placements of the couch
`and the fishing spot. To this, ComicMix added Star Trek
`characters who line up, sit on the couch, and fish exactly like
`the waiting place visitors they replaced. Go! continues to
`carry the same expression, meaning, or message: as the
`
`
`
`DR. SEUSS ENTERPRISES V. COMICMIX LLC
`
`18
`
`Boldly text makes clear, the image conveys the sense of
`being stuck, with “time moving fast in the wink of an eye.”
`
`
`
`ComicMix also copied a scene in Sneetches,4 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.
`Seussian characters were replaced with Spocks playing
`chess, making sure they “ha[d] similar poses” as the original,
`but all ComicMix really added was “the background of a
`weird basketball court.”
`
`
`ComicMix likewise repackaged Go!’s text. Instead of
`using the Go! story as a starting point for a different artistic
`or aesthetic expression, Hauman created a side-by-side
`comparison of the Go! and Boldly texts in order “to try to
`match the structure of Go!.” This copying did not result in
`the Go! story taking on a new expression, meaning, or
`
`
`4 The illustration comes from a story called The Zax.
`
`
`
`DR. SEUSS ENTERPRISES V. COMICMIX LLC
`
`
`
`message. Because Boldly “left the inherent character of the
`[book] unchanged,” it was not a transformative use of Go!.
`Monge, 688 F.3d at 1176.
`
`19
`
`Although ComicMix’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 first factor weighs
`definitively against fair use.
`
`B. The Nature of Go! Weighs Against Fair Use
`
`The second statutory factor considers the “the nature of
`the copyrighted work.” 17 U.S.C. § 107(2). This factor
`“recognizes that creative works are ‘closer to the core of
`intended copyright protection’ than informational and
`functional works, ‘with the consequence that fair use is more
`difficult to establish when the former works are copied.’”
`Penguin Books, 109 F.3d at 1402 (quoting Campbell, 510
`U.S. at 586). Hence, Boldly’s copying of a creative and
`“expressive work[]” like Go! tilts the second factor against
`fair use. Campbell, 510 U.S. at 586.
`
`This factor also considers whether the copied work is
`unpublished, a consideration that is not relevant for the Seuss
`works. “[T]he unpublished nature of a work is a key, though
`not necessarily determinative, factor tending to negate a
`defense of fair use,” because a copyist’s initial publication
`of the work undermines “the author’s right to control the first
`public appearance of his undisseminated expression.”
`Harper & Row, Publishers Inc. v. Nation Enter., 471 U.S.
`539, 554–55 (1985) (quotation marks omitted). But the
`converse is not necessarily true; neither Harper & Row nor
`any principle of fair use counsels that the publication of the
`copyrighted work weighs in favor of fair use. See 4 William
`F. Patry, Patry on Copyright § 10:139.30 (2020) (explaining
`
`
`
`DR. SEUSS ENTERPRISES V. COMICMIX LLC
`
`20
`
`that “the fact that a work is published does not mean that the
`scope of fair use is per se broader”).
`
`Mindful that the second factor “typically has not been
`terribly significant in the overall fair use balancing,”
`Penguin Books, 109 F.3d at 1402, we conclude that the
`creative nature of Go! weighs against fair use.
`
`C. The Amount and Substantiality of the Use of Go!
`Weigh Against Fair Use
`
`The third statutory factor asks whether “the amount and
`substantiality of the portion used in relation to the
`copyrighted work as a whole” favor fair use. 17 U.S.C.
`§ 107(3). We consider both “the quantitative amount and
`qualitative value of the original work used in relation to the
`justification for that use.” Seltzer, 725 F.3d at 1178. This
`factor circles back to the first factor because “the extent of
`permissible copying varies with the purpose and character of
`the use.” Campbell, 510 U.S. at 586–87.
`
`The quantitative amount taken by Boldly is substantial.
`To be sure, we understand that “[t]he inquiry under this
`factor is a flexible one, rather than a simple determination of
`the percentage of the copyrighted work used.” Monge, 688
`F.3d at 1179. That said, ComicMix’s copying was
`considerable—it copied “14 of Go!’s 24 pages,” close to
`60% of the book, and significant “illustrations from Grinch
`and two stories in Sneetches.” Crucially, ComicMix did not
`merely take a set of unprotectable visual units, a shape here
`
`
`
`DR. SEUSS ENTERPRISES V. COMICMIX LLC
`
`
`
`and a color patch there.5 For each of the highly imaginative
`illustrations copied by ComicMix, it replicated, as much and
`as closely as possible from Go!, the exact composition, the
`particular arrangements of visual components, and the
`swatches of well-known illustrations.
`
`21
`
`ComicMix’s claim that it “judiciously incorporated just
`enough of the original to be identifiable” as Seussian or that
`its “modest” taking merely “alludes” to particular Seuss
`illustrations is flatly contradicted by looking at the books.
`During his deposition, Boldly illustrator Templeton detailed
`the fact that he “stud[ied] the page [to] get a sense of what
`the layout was,” and then copied “the layout so that things
`are in the same place they’re supposed to be.”
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