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Ninth Circuit Rejects Fair Use Defense in Seuss/Star Trek “Mash-Up” Case; Netflix Settles Sherlock Holmes Case

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Big doings in copyright law the week before Christmas! The Congressional approval of a new federal statute providing low-cost, accelerated adjudication of low-value copyright disputes and criminalizing infringing streaming activities will be the subject of a future blog article. Meanwhile, the Ninth Circuit Court of Appeals has reversed a lower court’s holding in a copyright case that could have had a troubling impact on the concept of fair use.

Lawyers familiar with the parody defense in copyright cases know the 1997 case Dr. Seuss Enterprises v. Penguin Books USA, Inc., which pitted the iconic children’s author against an alleged “parody” called The Cat Not in the Hat—a retelling of the O. J. Simpson murder trial in the style of the Dr. Seuss classic The Cat in the Hat. The upshot of that case was that the book was not entitled to the fair-use defense as a parody because it did not criticize or comment on the work of Dr. Seuss, but only appropriated the popular Seuss rhymes and imagery as a medium for commentary on the Simpson trial. A work is not a “parody” if it does not make a comment on the thing it is parodying.

It was no surprise, then, that Dr. Seuss once again brought suit when a book entitled Oh, the Places You’ll Boldly Go! appeared in 2016. The book, published by ComicMix, builds on the rhyming, vision, and structure of Dr. Seuss’s popular Oh, the Places You’ll Go! to present life lessons from the Star Trek universe. The trial court in Dr. Seuss v. ComicMix LLC avoided the term “parody”, instead characterizing the new book as a “mash-up” and finding that its blending of the world and characters of Star Trek with the familiar Seuss work was sufficiently transformative of both to constitute fair use.

Not so, said the Ninth Circuit on December 18. In a majority opinion authored by Judge Margaret McKeown, the Court held that the work was far from “transformative” of the Seuss work, and was not a parody because it held forth not comment or criticism on the Seuss work, style, or vision. Rather, the Court said, the book “meticulously copied” the Seuss work and, except for the injection of Star Trek characters, left “the Seussian world … otherwise unchanged.” Tolerating such “mash-ups” would seriously harm the market for derivative works generally, an area that the Dr. Seuss organization regularly exploits in contractual collaborations with third parties.

The Court did, however, reject Dr. Seuss’s trademark claims. Applying the Rogers v. Grimaldi test now increasingly used to determine whether the use of a trademark in an expressive work is permitted by the First Amendment, the Court found that Seuss could not hurdle the steep obstacle of being “explicitly misleading”, while noting in dicta that use of the trademark “might implicitly suggest endorsement or sponsorship to some people.” Nevertheless, the Court’s general rejection of ComicMix’s fair use defenses and vindication of Seuss’s infringement claims reiterates the meaning and spirit of the previous Seuss case and restores order to fair use analysis. Calling something a “mash-up” doesn’t give one carte blanche to use the creative work of others to no clearly transformative purpose.

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In other news, Netflix and the estate of Sherlock Holmes creator Sir Arthur Conan Doyle have settled their widely publicized dispute that was sparked by Netflix’s production of Enola Holmes, a fantasy postulating a younger sister of Holmes and her adventures in crime, corruption, and politics in Victorian England.

An earlier case had held that the creation of new Sherlock Holmes pastiches was permissible to the extent that it used only elements of the Holmes character and stories that were already in the public domain, but said that any elements of Holmes unique to the later stories, still under copyright, might remain the exclusive property of the Holmes estate. The Netflix case sought to test that earlier holding, with the estate claiming that the Holmes of the still-protected stories exhibited greater emotional and empathic sensitivity than the coldly rational Holmes of the classic tales now in the public domain. Key support for this claim was Holmes’s allegedly much-changed appreciation of his longtime companion Dr. Watson. Those who have seen Enola Holmes know that Watson does not appear in the film, and the notion of a kinder, gentler Holmes is limited to one brief exchange near the end of the film.

In any event, the case that might have settled the public domain status of Sherlock Holmes once and for all has now been privately settled, and of course the terms remain confidential. Nevertheless, it appears likely that the Conan Doyle estate will not be seeking to enforce exclusive rights in the Holmes character for much longer. On the other hand, Holmes came back after being swept to his death over the Reichenbach Falls, so there may be some fight in the old guy yet.