[And another update: On June 22, 2017, Dr. Seuss Enterprises filed its first amended complaint, which is available here. There’s nothing surprising in it. The case continues.]
Here’s an update to Dr. Seuss Enterprises v. ComicMix, a copyright and trademark infringement case I wrote about in Oh, The People You’ll Sue (When You’re Dr. Seuss Enterprises):
On June 9th, the District Court for the Southern District of California dismissed Dr. Seuss Enterprises’s trademark and state law claims (with leave to amend their complaint), but allowed the copyright infringement claim to continue against ComicMix, albeit with hints that the Court will eventually dismiss the case.
Basically, the company (Enterprise) that owns the rights to Dr. Seuss’s work filed this lawsuit because it does not want ComicMix to publish a work that borrows elements from Dr. Seuss’s children’s books without paying a licensing fee first.
Though the Court did not dismiss Enterprise’s complaint entirely–a typical outcome at this early stage of litigation (merely a 12(b)(6) motion, which assumes all of the facts alleged by the plaintiff are true)–the opinion includes several helpful conclusions for ComicMix.
For example, the Court concludes :
- ComicMix’s derivative work, Oh, The Places You’ll Boldly Go!, is transformative: “Although Boldly fails to qualify as a parody it is no doubt transformative [as a “mash-up”]. In particular, it combines into a completely unique work the two disparate worlds of Dr. Seuss and Star Trek.”
- The nature of the copyrighted work weighs in favor of ComicMix; and
- Boldly does not borrow too much from Seuss: “There is no dispute that Boldly copies many aspects of [Seuss’s] illustrations. However Boldly does not copy them in their entirety; each is infused with new meaning and additional illustrations that reframe the Seuss images from a unique Star Trek viewpoint. Nor does Boldly copy more than is necessary to accomplish its transformative purpose.”
So, ComicMix’s transformative work meets most of the factors of Fair Use–which is a complete defense against copyright infringement claims–without needing any additional evidence. However, what the Court will need more evidence and argument on is the fourth factor of the Fair Use defense: the effect of ComicMix’s transformative work on the potential market for or value of Dr. Seuss’s copyrighted work. The Court writes:
In the current procedural posture [ComicMix is] at a clear disadvantage under this factor’s required analysis… [at this stage] a potential harm to [Enterprises’s] licensing opportunities is presumed. However, this presumed harm is neutralized somewhat by the fact that Boldly does not substitute for the original and serves a different market function than [Suess’s work]… Indeed, Boldly’s market relies on consumers who have already read and greatly appreciated [Suess’s work]…
Well, sure, all copyright cases are based on the fact that the defendant did not pay the licensing fee to borrow elements of a copyrighted work, so all cases would have this presumed harm.
Importantly, though, the Court notes factors that neutralize this harm to Enterprises’s licensing opportunities: (1) Boldy is not a substitute for the original book (Oh, The Places You’ll Go!) and (2) Boldly serves a different market function. In addition to those factors, as I wrote in my previous post on this lawsuit:
[Derivative works] increase the marketability of the original stories because they encourage people to revisit them. In this case, it’s hard to see how Oh, The Places You’ll Boldly Go! harms Dr. Seuss Enterprises. They assert that they’re missing out on a licensing fee opportunity, but a derivative project might not happen at all if the authors have to pay a toll for the privilege of borrowing elements from a previous work for the purpose of parody.
Basically, I see ComicMix’s transformative work as free advertising for Dr. Seuss’s books. You may think Seuss doesn’t need such advertising, but that isn’t necessarily so in a publishing world saturated by new children’s books each year. ComicMix’s work is for adults and could spark nostalgia buying, which is what happens when something reminds us of our childhood and encourages us to share it with our own children (instead of buying them something else from the bookstore).
I hope the Court will finally dispose of Enterprise’s lawsuit at the next stage of this case, which will probably be summary judgement. If this case continues beyond summary judgment and is allowed to go to trial, then the Court risks encouraging literary estate bullies to threaten lawsuits against creators of derivative works, even when those works are transformative and thus quite different from the original. That speech-chilling outcome would not serve the purpose of copyright law, which the Court states is to “promote the progress of science and art by protecting artistic and scientific works while encouraging the development and evolution of new works.” (citing Leadsinger, Inc. v. BMG Music Pub., 512 F.3d 522, 529 (9th Cir. 2008).”
We will see what happens.
**The image above is an excerpt from the Complaint (I added “allegedly”), available here.
***Here’s the District Court’s June 9th order on the Motion to Dismiss: 38 – Order on MTD.