The places they will or won’t go: Ninth Circuit to consider availability of fair use doctrine in “mashups”



April 30, 2020

Litigation & Copyrights Alert

Author(s): Daniel A. Schnapp, Catherine A. Savio, Jason T. Kunze

We discuss what copyright owners and companies that utilize others' intellectual property need to know about a recent ruling on application of the fair use doctrine.

At a recent hearing, the Ninth Circuit Court of Appeals heard oral argument over a case that, depending on how the Court rules, could expand the application of the fair use doctrine, a well-established and longstanding limitation on copyright owner’s exclusive rights.

In Dr. Seuss Enterprises LP v. ComicMix LLC et al., Case No. 19-55338, the estate of the well-known author, Dr. Seuss, claimed that a comic book’s “mashup” of Oh, The Places You’ll Go! with excerpts from Star Trek constitutes unauthorized infringement of the late author’s work.

ComicMix planned to launch a comic book titled Oh, The Places You’ll Boldly Go, combining “Oh, the Places You’ll Go!” and the iconic Star Trek phrase, “To boldly go where no man has gone before.” Last year, however the United States District Court for the Southern District of California held that the comic book was clearly fair use of Dr. Seuss’ material. At oral argument held on April 27, 2020, however, the Ninth Circuit appeared to consider whether such a factual scenario as fair use could “sink the whole notion of copyright protection.”

The Ninth Circuit may examine the transformative work aspect of a fair use analysis, and may analyze the combination of two existing expressions with an actual transformative work. While counsel for Dr. Seuss’ estate characterize the comic book as a “Star Trek-flavored clone” of Dr. Seuss’ work, counsel for ComicMix argued that mashups like the one at bar should be treated like parodies, and thus, protected by the fair use doctrine. For example, in Mattel, Inc. v. Walking Mountain Prods., 353 F.3d 792 (9th Cir. 2003), the Ninth Circuit held that a photographer’s use of a copyrighted doll in parodic photographs constituted non-infringing “fair use,” noting that parodic elements in a work will often justify fair use protection.

The outcome is expected to be critical in future copyright cases. Should the Circuit Court overrule the lower court’s holding in the matter, the decision will likely provide additional protection of the intellectual property rights of copyright owners when it comes to unauthorized use of copyrighted material in “mashups” and similar concepts.

Copyright owners can consider proactively enforcing the protections afforded by federal copyright laws against all infringement and potentially reevaluate claims previously considered to be susceptible to the defense of the fair use doctrine. Meanwhile, companies that utilize another’s intellectual property in the creation of works that may be considered “mashups,” or analogous thereto, should watch what the Ninth Circuit decides, and if the ruling is disfavorable to companies creating “mashups,” such companies may be advised to factor in the potential cost of obtained required permissions from owners before utilizing the works.

The foregoing has been prepared for the general information of clients and friends of the firm. It is not meant to provide legal advice with respect to any specific matter and should not be acted upon without professional counsel. If you have any questions or require any further information regarding these or other related matters, please contact your regular Nixon Peabody LLP representative. This material may be considered advertising under certain rules of professional conduct.

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