It’s the season for massive copyright opinion. In the run-up to the New Year, the Ninth Circle issued its decision in the long pregnancy Dr. Seuss Enterprises, LP v ComicMix LLC case. His clear analysis brilliantly ventilates the defense against “fair use” which has recently become one of the most misapplied (and therefore popular for infringement) doctrines in all of copyright law.
Dr. While not holding an MD, Seuss wrote and illustrated some of the most iconic stories of all time, each with its own unique and imaginative language and imagery. One of the good doctor’s best books, Oh the places you will go! is an evergreen work that has been widely used for decades and not just by those looking to give a thoughtful but whimsical graduation gift. It was repeatedly placed on the New York Times bestseller list and together with other Seuss works made Seuss the number one book mark of 2017.
An obscure company called ComicMix believed they could capitalize on Seuss’ popularity by creating a Seuss-y book that was not written by him. To this end, ComicMix literally copied a number of original Go! and other Seuss works reproduced the structure and general appearance of the Go! Story, and then sprinkled in some characters and references that they copied from another work, Star Trek. The end result was Oh, The Places You Will Brave To Go !, a book that the Ninth Circuit viewed only as “repackaging” and “copying” Seuss’ works. Hence, ComicMix’s attempt to target Seuss’ market and take advantage of this book was downright unfair.
This seems to be such a clear and obvious case of copying and violating that you may be wondering why the ninth circle decision is so important. Mainly, it’s because of the wild dismantling of ComicMix’s ultimately misguided Section 107 or “fair use” defense by the Circuit. As we will discuss, this defense was credited by the District Court and has recently emerged as a massive area of confusion for the courts. The ComicMix decision greatly clarifies the application of the doctrine and will remove some of the uncertainty from the process.
There is a four-part test that, while not exclusive, is intended to guide the analysis in Section 107. If an infringer has copied an artist’s work without consent and then claims the copying is fair, the court should consider the purpose and nature of the use under 17 USC Section 107 (1), including whether such use is commercial in nature is or is for non-profit educational purposes; (2) the nature of the copyrighted work; (3) the amount and materiality of the part used in relation to the copyrighted work as a whole; and (4) the impact of the use on the potential market or value of the copyrighted work.
The Ninth Circuit applied these factors to the ComicMix tee and easily found that the defense of Section 107 was not a safe haven. Indeed, it concluded that no single factor favored the fair use finding and reversed the District Court’s finding to the contrary.
The Ninth Circuit begins its analysis by concluding that ComicMix Go! Has undisputedly used commercially, which is contrary to “fair use”. While not dispositive, a copied work is less likely to be protected through fair use if the copying was done for the purpose of making money than for a more altruistic reason. Then the Ninth Circle found that the hurtful work was not educational or for purposes of criticism or transformation because it was “only in use[d] what Dr. Seuss had already created[.]”And the Circuit found” totally unconvincing “ComicMix’s” post-hoc characterization of the work “as a transformative parody or commentary, which was helpful as it is quite common for infringers’ lawyers to simply fabricate fair-use bases long after theirs Customers had committed the violation.
ComicMix also argued that the use of “massive new content” on Seuss material – which, ironically, is also being copied from Star Trek – makes its use fair. However, as the Ninth Circuit notes, adding new content is “not a card without an exit from prison” and instead affects an artist’s right to create derivative works. Ultimately, this factor greatly benefited Seuss because ComicMix “merely recontextualized it when it repackaged Seuss’s work[ed] the original expression by plucking the most visually impressive extract[s]From his work. And that’s just not “transformative”. What is transformative, and whether we should even consider the question since the word transformative does not appear in section 107, will be examined in more detail in the following paragraphs. In the end, the first factor was decided in favor of Seuss.
The second factor deals with the question of whether a work is functional or creative, the latter being closer to the core of the type of creativity protected by copyright law and therefore less likely to be used “fairly”. The Ninth Circle found Seuss’ work very creative and decided that factor in the plaintiff’s favor.
The third factor also favored Seuss. It checks the size and materiality of the copy in question. The more copied, the less likely it is to be fair use. Here large parts of the “heart” and the “expressive core” of Seuss’ work have been copied. For example, as the Ninth Circuit noted, “Go! The exact composition, the special arrangements of the visual components and the color fields of well-known illustrations are reproduced as much and as precisely as possible ”. And the Circuit laughs at ComicMix’s claim that it “reasonably recorded just enough of the original to be identifiable as a Seussian” and finds that it is “false math” and is basically completely contradicted by the entire record .
The final factor that takes into account “the impact of the use on the potential market for or value of the copyrighted work[,]Seuss is also very popular. The Ninth Circuit begins its analysis of this factor by concluding that the District Court wrongly forced Seuss to bear the burden of proof, which “led to a biased analysis[.]The Circuit found that an infringer bears the burden of proof for all factors as it was ranked as one of the few absolutes in the fair use analysis. In addressing the substance, the Circuit criticizes ComicMix for failing to take into account the fact that it “deliberately aims at the same market as Seuss and wants to make capital”. It also concludes that allowing works such as the ComicMix knockoff would limit Seuss’ right to license others to create derivative works, and that ComicMix’s argument about this factor “falls flat.”
In the end, the Ninth Circuit found with ease that none of the factors listed in Section 107 favor ComicMix. The defense against fair use seems so obviously frivolous here that one wonders why ComicMix and its lawyers would even advance it. Given the confusion over the application of the factors and the vastly different decisions made on this matter, the infringer’s lawyer is now increasing the fair use defense in even the most obvious violations and situations where it is fully applicable.
And now, the district court has ruled here that the defense under Section 107 is legally applicable in the phase of the summary judgment, although the Ninth Circle Committee unanimously states: “ComicMix has created a non-transformative commercial work without permission or license that on the potential market of Go! aims and usurps him. ”
The infringers’ attorney has fueled the confusion that resulted in this district court and many others wrongly applying this defense by exploiting uncertainty about the definition of transformative in the context of section 107. The courts have ruled all sorts of things transformative and have excused violations as fair use on that basis, resulting in chaos and ceaseless appeals. As the Ninth Circuit notes, “the term” transformative “does not appear in Section 107, but permeates copyright analysis,” as the Supreme Court at Campbell v Acuff-Rose Music, Inc. ruled that the courts should examine whether and to what extent is the new work “transformative”? “As the Ninth Circuit later recognizes, transforming a work by adding new content will often violate, or directly violate, the legally mandated exclusive right of the artist to create derivative works under Section 106. With this decision, future infringers, at least in the ninth circuit, will be less likely to be able to take advantage of Section 107 defenses by claiming their forgeries are “transformative.”
Artists and copyright owners, as well as those who wish to advocate the fair use of the work of others, now have a clear and thorough opinion to guide them and the courts in future disputes. The Ninth Circuit’s clear application of the Section 107 Factors and recognition of the importance of the Market Damage Factor and Derivatives Law will help everyone as the copyright litigation continues into 2021.
Scott Alan Burroughs, Esq. practice with Doniger / Burroughs, an art law firm based in Venice, California. He represents artists and creators of all kinds of content and writes and speaks regularly about copyright issues. He can be reached at [email protected]and you can follow his law firm on Instagram: @veniceartlaw.