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28 April 20223 minute read

Dr. Seuss Enterprises LP v. ComicMix: DLA Piper’s IP team brings a precedent-setting fair use victory

When is it fair to use a copyright owner’s original work in a commercial endeavor?

Defendants in Dr. Seuss Enterprises v. ComicMix argued that it was permissible under the Copyright Act’s fair use doctrine  to create and sell a “mashup” titled Oh, The Places You’ll Boldly Go! (“Boldly”), an illustrated work that liberally copied from Dr. Seuss and used the Star Trek intellectual property to retell the original Oh, The Places You’ll Go! through a Captain Kirk lens.

The Ninth Circuit, however, disagreed, noting in the introduction to its decisive reversal in Dr. Seuss Enterprises v. ComicMix, “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.”

We represented Dr. Seuss Enterprises, L.P. (DSE) in this closely watched copyright fair use case, litigation arising from the defendants’ attempts to publish and sell Boldly to compete with Suess’s perennial best seller in the graduation market.

DSE owns the rights to the oeuvre of Theodor Geisel, best known under his pen name Dr. Seuss, and is devoted to ensuring its legacy for generations of children.  Part of this nurturing work is DSE’s licensing business and careful selection of its collaborative partners: Dr. Seuss’s creations can be seen in films, TV shows, stage productions, exhibitions, digital media, and merchandise.  

When DSE encountered a Kickstarter campaign in 2016 to raise funds for Oh, the Places You'll Boldly Go!, it followed the process set out in the Digital Millennium Copyright Act, eventually filing suit in California federal court.  After the district court found Boldly to be sufficiently “transformative” to qualify as a fair use, the DLA Piper appellate team pushed back and appealed the decision.  On appeal, the Ninth Circuit found in favor of DSE on all four fair use factors and issued a precedent-setting reversal.   Notably, the Ninth Circuit also found that the lower court had improperly placed the burden of proof on DSE on the pivotal fourth factor, the effect of the use on the potential market.

On remand, the DLA Piper team secured a stipulated judgment of copyright infringement for three Dr. Seuss works (Oh, The Places You’ll Go!, How The Grinch Stole Christmas, and Sneetches And Other Stories), along with a permanent injunction restraining the defendants from releasing the infringing work or similar work and from encouraging or helping others to do the same.

For the team working on this case, one of the happiest takeaways has been the widespread support DSE has received from other rightsholders.  The Ninth Circuit’s thoughtful decision makes it more difficult for putative infringers to justify copying expressive elements of protectable works, and has clarified that it will always be a defendant’s burden to establish that its use was fair.  The decision has already been cited by multiple courts throughout the country, including the Second Circuit in another important fair use decision, Andy Warhol Found. for Visual Arts, Inc. v. Goldsmith, 11 F.4th 26, 48 (2d Cir. 2021), which will soon be heard by the US Supreme Court.

The case is Dr. Seuss Enters., L.P. v. ComicMix LLC, 983 F.3d 443 (9th Cir. 2020).