Is the Star Trek-themed comic book, Oh, the Places You'll Boldly Go!, a market substitute for Dr. Seuss' famous 1990 work, Oh, the Places You'll Go!? On Monday, in a closely followed copyright case, the Ninth Circuit Court of Appeals heard dueling arguments on this question.
Dr. Seuss Enterprises, which owns the intellectual property rights to many of Theodor Geisel's works, sued ComicMix in 2016 over its crowdfunded project. In March 2019, a federal judge ruled that Boldly made fair use of copyrighted material. Now, on appeal, the dispute has caught the attention of the Motion Picture Association, the studio behind Sesame Street and many intellectual property law professors.
The case presents two big issues.
The first pertains to the first factor under the test that determines whether something is a fair use. That being, the purpose and character of the use. At the district level, U.S. District Judge Janis Sammartino found that Boldly was "highly transformative," but this marks the first time that an appeals court has grappled with the genre of mashups.
Stanley Panikowski, the attorney representing DSE, pushed the argument that Boldly could be distinguished from 2 Live Crew's take on Roy Orbison's "Pretty Woman," the subject of the Supreme Court's landmark decision in Campbell v. Acuff-Rose Music. That opinion cemented the transformative nature of a commercial parody, but Panikowski takes the position that Boldly is not a parody and he adds, "When you have work like Boldly that doesn’t criticize or comment on the style of the original … then other factors loom larger."
ComicMix attorney Dan Booth sees it differently. As he told the Ninth Circuit on Monday, Boldly "is constantly pointing out the narcissistic character" in Dr. Seuss' original work through the prism of Star Trek's emphasis on teamwork and communalism. "The parody is there and importantly, it’s a mashup," he said. "What’s foregrounded in the mashup is the relationship with the source work."
An attempt to place mashups on par with parody in terms of copyright law didn't sit well with Ninth Circuit Judge M. Margaret McKeown.
"The district court seemed to take the position that if you take existing expression and then you interspersed it with new expression, you have a transformative work," she commented. "That is a definition of transformative use that I haven’t seen before. It would seem to sting the notion of copyright protection, and almost everything would be a fair use."
The second big issue concerns the fourth fair use factor — the effect of the use upon the potential market.
Panikowski sees Boldly as a market substitute for Dr. Seuss works even if his client isn't directly preparing Star Trek mashups. That's because, in his view, Boldly competes in the graduation gift market as well as encroaches on a market for licensed derivatives. Booth meanwhile argues that because the messages of the books are "radically different," it can't be a substitute.
At the district level, Sammartino ruled that DSE had "introduced no evidence tending to show that it would lose licensing opportunities or revenues as a result of publication of Boldly."
If there's reason to believe the Ninth Circuit is primed to reverse the decision and revive this mashup case, it comes from a point pushed by appellate judge Milan Smith. Several times during oral arguments, he stressed that the burden of showing a fair use is on the defendant. Meaning, it is ComicMix's burden to show there isn't market damage from Boldly rather than DSE's burden to show there is the potential for market damage. Booth asserted the burden should be on the plaintiff, but in response to a question from Smith, the attorney admitted there's no precedent of burden shifting when the judge rules the work is transformative.
