![\"a](\"https:\/\/cip2.gmu.edu\/wp-content\/uploads\/sites\/31\/2019\/03\/gavel_200x200.png\")
This past Friday, the Ninth Circuit handed down its opinion<\/a> in Dr. Seuss v. ComicMix<\/em>, a closely watched transformative fair use case. The decision marks an important milestone in the development of the fair use doctrine, especially as applied to mash-ups\u2014where two or more preexisting works are blended together to create a new work. However, the court\u2019s careful explanation of what constitutes transformativeness is not limited to mash-ups, and it will surely be influential for years to come. In this post, I\u2019ll look at the various views expressed by the parties, amici, and courts as to what it means for a use to be transformative, and I\u2019ll explain how the Ninth Circuit\u2019s new guidance on transformativeness reins in some of the overly broad positions that have been urged. This decision should be welcome news for those who worry that a copyright owner\u2019s right to make derivative works has been excessively narrowed by ever-expanding notions of transformative use.<\/p>\nIn Dr. Seuss v. ComicMix<\/em>, the plaintiff, Dr. Seuss Enterprises L.P. (Seuss), was the assignee of the copyrights to the works by Theodor S. Geisel, the late author who wrote under the pseudonym \u201cDr. Seuss.\u201d Seuss sued the defendants, ComicMix LLC and three individuals (collectively, ComicMix), for copyright infringement over, inter alia<\/em>, ComicMix\u2019s mash-up of Seuss\u2019 iconic Oh, the Places You\u2019ll Go!<\/em> (Go!<\/em>) with a Star Trek<\/em> theme, entitled Oh, the Places You\u2019ll Boldly Go!<\/em> (Boldly<\/em>). The Boldly<\/em> mash-up featured slavish copies of the images and overall look and feel of Go!<\/em>, but with the Seussian characters replaced with the crew of the Enterprise<\/em> from Star Trek<\/em> and the text and imagery reinterpreted for Trekkies.<\/p>\n ComicMix admitted that it copied Go!<\/em> to create Boldly<\/em>, and the issue on appeal was whether its use was fair. The district court held<\/a> that it was fair use, finding in particular that ComicMix\u2019s mash-up was \u201chighly transformative.\u201d After the decision was appealed to the Ninth Circuit, there were amicus briefs filed for both sides. Some argued that Boldly<\/em> was transformative, and others argued that it was not. In the opinion<\/a> for the unanimous Ninth Circuit panel by Judge McKeown, the court held that Boldly<\/em> wasn\u2019t transformative at all. This decision gives us what is perhaps the clearest explanation of what it means to be a transformative use to date by an appellate court. And the fact that it comes from the Ninth Circuit\u2014the \u201cHollywood Circuit\u201d as Judge Kozinski once called<\/a> it\u2014makes it all the more interesting and important.<\/p>\n The issue of transformativeness is primarily analyzed under the first fair use<\/a> factor, i.e.<\/em>, the purpose and character of the use, but it also weighs heavily on the other three factors. If the use is transformative, courts often ignore the creativeness of the original work, give the copyist more leeway when assessing the amount and substantiality of the use, and overlook the copyist\u2019s effect on the potential market for the original work. As some have observed, in a transformative use case, the fair use analysis tends to collapse into a single factor: Is the use transformative? Indeed, Jiarui Liu published a study<\/a> last year showing that \u201ctransformative use appears to be nearly sufficient for a finding of fair use.\u201d Once the dispositive decisions included in the study found transformative use, they eventually held that there was fair use 94% of the time.<\/p>\n District Court Finds Boldly<\/em> Is \u201cHighly Transformative\u201d<\/strong><\/p>\n In the district court, the parties filed cross-motions for summary judgment, with ComicMix claiming fair use. The court had assessed fair use earlier in the litigation when denying<\/a> ComicMix\u2019s motion to dismiss. There, the court rejected ComicMix\u2019s contention that Boldly<\/em> was a parody, reasoning that it did not comment on or criticize the original work. Parodies juxtapose the original work for comedic effect, and the necessity of referencing the original justifies the copying. However, the court found that there was no such juxtaposition here, instead noting that Boldly<\/em> merely used the \u201cillustration style and story format as a means of conveying particular adventures and tropes from the Star Trek<\/em> canon.\u201d Nevertheless, the court found that Boldly<\/em> was \u201cno doubt transformative\u201d since it \u201ccombine[d] into a completely unique work the two disparate worlds of Dr. Seuss and Star Trek<\/em>.\u201d Even though many elements were copied, the court reasoned that Go!<\/em> had been \u201crepurposed\u201d because ComicMix added \u201coriginal writing and illustrations\u201d that transformed its Seussian pages into \u201cStar-Trek<\/em>-centric ones.\u201d<\/p>\n The district court ultimately denied the motion to dismiss as it had to take Seuss\u2019 allegations of market harm in the complaint as true and there was no evidence to the contrary in the record. Lacking evidence of market harm, the court found a \u201cnear-perfect balancing of the factors\u201d and held that ComicMix\u2019s \u201cfair use defense currently fails as a matter of law.\u201d However, once the court turned to the summary judgment motions, it had a developed record from which to work. On market harm, the court placed the burden on Seuss\u2014despite fair use being an affirmative defense\u2014and found that it failed to demonstrate likely harm to Go!<\/em> or its licensed derivatives. On the issue of transformativeness, the court adopted and then expanded on its reasoning when addressing the motion to dismiss.<\/p>\n Suess had asked the district court to reassess its fair use analysis given the intervening Federal Circuit decision<\/a> in Oracle v. Google<\/em>. In that case, it was not fair use when Google copied computer code verbatim and then added its own code. The court here distinguished Oracle<\/em>, reasoning that ComicMix did not copy the text or illustrations of Go!<\/em> verbatim. While ComicMix \u201ccertainly borrowed from Go!<\/em>\u2014at times liberally\u2014the elements borrowed were always adapted or transformed,\u201d and that made Boldly<\/em> \u201chighly transformative.\u201d Furthermore, the court found that Go!<\/em> and Boldly<\/em> served different purposes, with the former aimed at graduates and the latter tailored towards Trekkies. And to Seuss\u2019 argument that Boldly<\/em> was a derivative work, the court responded that derivative works can be transformative and constitute fair use.<\/p>\n Strangely, when addressing the motion to dismiss and the summary judgment motions, the district court failed to cite the holding<\/a> of Dr. Seuss v. Penguin Books<\/em>\u2014even though that binding precedent involved the same plaintiff making similar arguments about a similar mash-up (there, Dr. Seuss and the O.J. Simpson murder trial). In Penguin Books<\/em>, the Ninth Circuit held that the accused mash-up, The Cat NOT in the Hat! A Parody by Dr. Juice<\/em>, was neither parody nor fair use. Rather than ridiculing the Seussian style itself, the court held that it merely copied that style \u201cto get attention\u201d or perhaps \u201cto avoid the drudgery in working up something fresh\u201d\u2014as the Supreme Court put it in Campbell v. Acuff-Rose<\/em><\/a>. Indeed, because the mash-up failed to conjure up the substance of the original work by focusing readers instead to the O.J. Simpson murder trial, the court held that there was \u201cno effort to create a transformative work with \u2018new expression, meaning, or message\u2019\u201d as required by Campbell<\/em>.<\/p>\n Amicus Briefs Offer Differing Views on Transformativeness<\/strong><\/p>\n Once the case was appealed to the Ninth Circuit, amicus briefs were filed on both sides addressing the transformativeness issue. Some argued that Boldly<\/em> epitomized transformative fair use, and others argued that it was the antithesis. It is difficult to exaggerate the doctrinal gulf between the views of these amici.<\/p>\n The Motion Picture Association (MPA) amicus brief<\/a>, by Jacqueline Charlesworth, argued that ComicMix\u2019s use was not transformative since it failed to comment on or add new meaning to Go!<\/em> and instead merely used it as a vehicle to achieve the same purpose\u2014entertaining and inspiring readers. Moreover, ComicMix admitted that it could have used a different book on which to base its mash-up, thus defeating any claim of necessity. The MPA brief explained that Boldly<\/em> was indeed a derivative work (the district court had expressively reserved the point) as defined<\/a> by the Copyright Act since it transformed or adapted a preexisting work. The district court had dismissed Suess\u2019 argument that Boldly<\/em> was a derivative work by pointing out that it transformed and adapted Go!<\/em>, but the MPA brief called this \u201ctroubling logic\u201d since it conflated derivativeness with transformativeness and presumably would make every derivative work a transformative fair use.<\/p>\n Peter Menell filed an amicus brief<\/a>, joined by Shyam Balganesh and David Nimmer, taking issue with the district court\u2019s \u201ccategorical determination\u201d that mash-ups generally are \u201chighly transformative\u201d as it would \u201cundermine[] the Copyright Act\u2019s right to prepare derivative works.\u201d The Menell brief argued that Boldly<\/em> \u201cmight well strike a lay observer as clever, engaging, and even transformative in a common parlance sense of the term,\u201d but this misunderstands the transformativeness inquiry, which turns on whether it \u201cserves a different privileged purpose\u201d such that it survives the \u201cjustificatory gauntlet.\u201d The question was whether Boldly<\/em> \u201cmerely supersede[d] the objects<\/em> of the original\u201d or instead used the copied material \u201cin a different manner or for a different purpose.\u201d Here, the Menell brief concluded, Boldly<\/em> drew on Go!<\/em>\u2019s popularity to follow its same general entertaining purpose while adding little \u201cnew insight and understanding.\u201d<\/p>\n Sesame Workshop filed an amicus brief<\/a> by Dean Marks distinguishing transformativeness for derivative works from transformative use under the first fair use factor and arguing that the district court conflated the two. The Sesame brief explained that Boldly<\/em> was only transformative in the fair use sense if it, per Campbell<\/em>, added \u201csomething new, with a further purpose or different character\u201d as \u201ccommentary\u201d and provided \u201csocial benefit, by shedding light on an earlier work.\u201d While Boldly<\/em> did add new material, it did not add \u201cany new meaning or message\u201d or \u201cprovide any new insight or commentary on Go!<\/em>.\u201d It instead delivered \u201cthe exact same inspirational message\u201d to appeal to Seuss\u2019 \u201cexisting<\/em> market.\u201d The danger of the district court\u2019s logic, the Sesame brief concluded, is that it \u201ccould stand for the proposition that all mash-ups constitute fair use, a holding that would greatly diminish the derivative work right.\u201d<\/p>\n An amicus brief<\/a> by Erik Stallman on behalf of a group of IP professors, including Mark Lemley, Jessica Litman, Lydia Loren, Pam Samuelson, and Rebecca Tushnet, took a broad view of transformative fair use, arguing that the district court properly did not require Boldly<\/em> to criticize, comment on, or parody Go!<\/em> itself. It also claimed that fair use is not an affirmative defense such that the district court properly put the burden on Seuss to show market harm. The crux of the IP professor brief was that, even though on a high level of abstraction both works had the same entertainment purpose, there were nonetheless \u201cdifferences in expressive meaning or message<\/em>\u201d that made Boldly<\/em> transformative. As there were such differences at a lower level of abstraction\u2014e.g.<\/em>, Go!<\/em> had a \u201chyper-individualistic character\u201d while Boldly<\/em> focused on \u201cinstitutional structures that promote discovery through\u201d combined \u201cefforts\u201d\u2014the IP professor brief concluded that it was transformative in the fair use sense.<\/p>\n Finally, an amicus brief<\/a> by Mason Kortz on behalf of the Electronic Frontier Foundation (EFF), Organization for Transformative Works, Public Knowledge, and others concluded that \u201cBoldly<\/em> is a significantly transformative work\u201d that \u201crecasts, recontextualizes, and adds new expression or meaning to Go!<\/em> in order to create a new, significant work of creative expression.\u201d The EFF brief argued that uses can be transformative even if \u201cthey fail to comment on or parody the original\u201d so long as they have different \u201cexpressive content and message.\u201d Here, Boldly<\/em> was transformative because it \u201cadapt[ed] the stylistic, visual, and rhyming elements from Go!<\/em> to create new expression\u201d and added \u201cnew meanings that speak with particularity to the themes of Star Trek<\/em> beloved by its community of fans.\u201d<\/p>\n Ninth Circuit Holds that Boldly<\/em> Is Not Transformative<\/strong><\/p>\n Turning back to the parties, Seuss argued<\/a> on appeal that ComicMix\u2019s \u201cuse was exploitative and intended to grab the attention of potential buyers, not transformative,\u201d since it added no \u201cnew purpose or meaning.\u201d ComicMix answered<\/a> that its use was \u201chighly transformative,\u201d with a \u201cradically distinct purpose and effect,\u201d that crafted \u201cnew meanings from the interplay between Star Trek<\/em>\u2019s and Seuss<\/em>\u2019s creative worlds.\u201d Judge McKeown, writing for the unanimous Ninth Circuit panel, sided<\/a> completely with Seuss: While the \u201cfair use analysis can be elusive,\u201d if not metaphysical, \u201c[n]ot so with this case.\u201d The court held that \u201cBoldly<\/em> is not transformative\u201d and that all of the fair use \u201cfactors decisively weigh against ComicMix.\u201d<\/p>\n