1/ Today: a more extensive look @ Seuss Enterprises v ComicMix ruling. Main topics are fair use & copyright, trademark & free speech, and what happens next, with some other legal points mixed in along the way. Here’s a brief summary overview … https://twitter.com/CBLDF/status/1340001030579302402 /jt

2/ And here are some thoughts on the ruling’s dad jokes, fair use, and the potential for Supreme Court review. https://twitter.com/CBLDF/status/1340144121281953793

3/ Again, I emphasize that what I’m doing here is explaining, not endorsing. Nor am I taking sides in the case. What I’m trying to do here is illustrate how courts apply the law, w/ Seuss v ComicMix ruling as key example.

4/ Why? A lot of legal strategy is risk assessment, which is not just relevant to trial - it’s relevant to everything we do, including the design of comic art, from books and webcomics to merchandise, games, and cosplay.

5/ There’s room for creative revision of the law, yes, but as with art we have to know the rules to change them.

(The source for the images in the first tweet & this: Grant Morrison's Invisibles, which has a lot to say about law, society, and iteration.)

6/ The central issue in Seuss v ComicMix is fair use in copyright. You might’ve heard we’re automatically protected by fair use if our work is transformative or a parody - all that’s needed is humor or evident difference from the original, or so it’s said.

7/ This approach reflects an idealized view of the law more than how the law currently works. Esp. in late ‘90s/’00s, a free culture/low-protection copyright reform movement flourished in web culture + academia, & this approach to fair use became popular …

8/ But while it’s had some influence in courts, the dominant approach continues to posit a narrower scope for fair use. Case in point: Seuss v ComicMix. https://cdn.ca9.uscourts.gov/datastore/opinions/2020/12/18/19-55348.pdf

Even RBG tended resist the free culture approach - for instance, she authored SCOTUS opinion affirming legitimacy of Sonny Bono Act’s extending the copyright term by 20 years. https://www.law360.com/articles/1312244/ginsburg-remembered-as-steadfast-pro-copyright-voice

10/ Ginsburg: fair use protects free speech, yes, but Congress has constitutional authority to protect copyright & copyright owners, which itself furthers free speech by providing economic incentive to create new works. https://www.law.cornell.edu/supct/html/01-618.ZO.html

So let’s start w/ the Copyright Act, which provides that “fair use of a copyrighted work” doesn’t infringe copyright. 17 U.S.C. § 107. That’s a strong principle in favor of free expression, to be sure …

However, in practice, fair use isn’t a sword - it’s a shield, a defense raised in court after a copyright owner files an infringement claim. Defenses take time + money to argue in a trial, and whether a use is fair use is ultimately determined by judge or jury.

Making things more difficult: court proceedings can go on for years. The Seuss estate filed its lawsuit against ComicMix in 2016 - Obama was president, and Biden … or Harris … or whoever’s after them … will likely be president when it’s done.

To paraphrase Thomas Hobbes, the legal process is nasty, brutal, and anything but short. Can you win? Sure, & the trials of the trial become part of the story. But as with Joseph Campbell’s hero’s journey and Star Wars, at some point the legal process can cut off your hand.

So how can you determine whether or not your use is likely to be considered fair use, at least enough to reduce changes of a cease & desist or lawsuit? The second part of 17 U.S.C. $107 points the way …

Following Copyright Act, the Seuss v ComicMix opinion notes that courts look to four main factors in determining whether fair use applies:

-purpose and character of use;
-nature of copyrighted work;
-amount & substantiality of use; &
-effect of use on market.

No one fair use factor is decisive - Seuss v ComicMix opinion asserts there’s no hard & fast rule. Courts balance the factors, and what one judge or jury finds fair use might be considered infringement by another.

This quote from the opinion is incredible - we look to courts for guidance, and they point us to the evanescent subtleties of legal metaphysics.

This creates a situation where fair use probabilities can be somewhat uncertain, at least where there isn't clear line of precedent. Example: trial judge found Oh the Places You’ll Boldly Go! to clear fair use. The three judges on the appellate panel said it’s clearly not.

20/ So where does “transformative” come in? It goes back to Supreme Court case involving a 2 Live Crew rap riff on Roy Orbison’s Pretty Woman: SCOTUS found “purpose & use” test to entail determining whether & extent to which alleged infringing work is transformative.

21/ Some fair use cases take a broader approach than others, with the most commonly cited involving work by a famous appropriation artist, Richard Prince. That the case turned on work by an artist w/ elite following made a difference - justice is not always blind.

22/ In that case, high/low class/mass contrasts shaped analysis of Prince’s work as transformative - he was giving new purpose & meaning to photos from a (supposedly) lower artistic sphere (e.g., exhibit vs. book)

23/ Not long afterwards, the same appellate court (2nd Circuit) clarified this by issuing a traditionally narrow fair use ruling emphasizing that transformative is “for a purpose, or imbues it with a character, different from that for which it was created.”

24/ The Seuss v ComicMix ruling expressly takes this traditional narrow approach, citing # of cases to explain transformative use in terms of (a) different purpose or nature, (b) new expression, meaning, or message, & (c) using original as raw material, not just repackaging it

25/ The opinion sez merely replacing Seuss characters w/ Star Trek material isn’t transformative. Per court, just changing characters and signature elements doesn’t in itself reflect a new purpose or meaning. Likewise, just adding new material isn’t transformative.

26/ Similarly weighing against Boldly Go per the court: images closely tracked Seuss originals, which the judges saw as Boldly Go not adding anything new.

27/ Main focus re transformative use in the ruling: parody. Yes, there are a few cases that seem to treat just being funny as parody, but these tend to involve low/high contrast - esp. mass vs. luxury fashion, which courts treat as implicitly making fun of luxe brands.

28/ The Seuss v ComicMix court emphasized that the object of ridicule in a parody is the work being used. Simply mashing up IP or using a new story is not enough - parody requires making fun of/criticizing the copyrighted material you're using.

29/ Evoking Seuss was not seen as the same as ridiculing Seuss - parody has to have a “critical bearing on the substance or style of” the copyrighted material, not just be a funny reference or a satire of something else.

30/ Re 2d fair use factor, nature of the copyrighted work, court notes that Seuss’ “Oh The Places You’ll Go” is a creative work, not just informational or functional. Using others’ creative work = less like to be fair use, so court calls strike two in fair use factor analysis.

31/ 3rd fair use factor: amount and substantiality of use of copyrighted work. Court sez Boldly Go replicated 14 pages of Places You’ll Go’s 27pp & also several other Seuss works. Higher proportion = lower likelihood of fair use.

32/ Again, use didn’t have to be exact copying - court notes close similarities in “overall composition & placement of the shapes, colors, and detailed linework,” along with similar composition of constituent elements.

33/ Court also found Boldly Go replicated the “heart” of the Seuss material - yes, that’s subjective, but law sez courts can take “heart” of copyrighted work into account in fair use analysis.

34/ Impact on potential market may be the fourth factor, but what court sez about it is important. Key: analysis includes impact on potential market for licensed derivative works.

35/ Per court, Boldly Go’s Seuss/Star Trek mashup cuts into Seuss’ licensing, whether or not Seuss currently plans Trek license. Seuss has collabs w/ Henson Co., Funko Pop, & other brands; it has right to make “artistic decision” whether or not to make deal re specific IP.

36/ Also relevant: Boldly Go’s evident targeting of graduation market, similar to a primary market of Oh the Places You’ll Go.

Seuss v ComicMix court’s “bottom line is that ComicMix created, without seeking permission or a license, a non-transformative commercial work that targets and usurps Go!’s potential market.”

All of which is to say: fair use isn’t automatic, and it’s more than just differences and humor. It can be hard & expensive to prove, and it typically involves more than just making changes to the material used as a reference or in a mashup.

39/ This approach to fair use cuts both ways for comics creators & publishers: it's cautionary info for homages, mashups, etc., but for IP owners - which many creators now are - it protection against unauthorized use.

40/ As noted earlier, I'm not taking sides here. Personally, what most concerns me is proliferation of commentary saying mashups etc. are guaranteed fair use, which, a la this case, can put creators in difficult situation while thinking they're safe.

41/ Besides copyright fair use reverse, ComicMix did get a partial win in its defense against the Seuss estate, which claimed that Bold Go infringed Seuss trademarks, including Seussian style & font. The court said no to that.

42/ Here, the court noted that trademark infringement claim is actionable only if the use of the mark is not artistically relevant to the underlying work or is explicitly misleading as to the work’s source or content.

43/ Per court, Boldly Go easily met the artistically relevant standard, since the marks’ use was relevant to the book’s artistic purpose as a Seuss/Trek mashup.

44/ Boldly Go’s Seussian elements were also not considered to be misleading, since the book’s cover made clear that Dr. Seuss was not the author & was not endorsed by or associated w/ Seuss.

45/ The reason for these tests: to balance trademark protection with artistic free expression. Of course, free expression also underlies fair use, but as the court observes, in Seuss v ComicMix the balance tipped in different directions for copyright versus trademark.

46/ What's next? The ComicMix creators could try to take this to the Supreme Court, but the odds of the Court’s taking any case are low, esp. if Court clerks are persuaded by opinion’s attempt to show there’s no appellate circuit split re fair use.

47/ The Supreme Court could determine that the case is more about assessing facts in light of law, not assessing the law. Contrary to public opinion, Court tends not to focus on whether justice was done in a particular case - it’s more concerned with clarifying the rules.

48/ Before the Supreme Court, tho, there’s another possible step: review en banc. That typically means review by all judges in appellate circuit, but 9th is so large it uses 11 judges first, w/ possibility for additional appeal to entire court.

49/ Are there grounds for reversing the appellate ruling, identifying a circuit split, or having a conflicting approach to fair arise in other circuit?

50/ Anything’s possible in a circuit court system with hundreds of judges - in fact, I'm sure any number of litigators or IP lawyers could put together a panel that would have likely reached a different outcome in this case.

51/ Finally, there’s another aspect of case’s procedural position I haven’t noted yet. Technically, the appellate court didn’t end the case - it reversed the lower court’s summary judgment fair use decision in favor of ComicMix and remanded for further proceedings.

52/ Summary judgment means that the lower court made its decision without a full trial. In effect, the appellate court decided the copyright fair use defense didn’t apply, undid the SJ ruling for ComicMix, and sent the case back down for trial judge to continue.

The trial court could simply find use appellate opinion as grounds for summary judgment for Seuss estate, but it could also decide to rule in ComicMix’s favor on other grounds or go forward with a full trial.