The Ninth Circuit has ruled that “Oh, the Places You’ll Boldly Go” (a mash-up of Dr. Seuss and Star Trek) is not Fair use. The ruling may come as a surprise to some, including District Court Judge Janis Sammartino. She had ruled that it is.

It might seem obvious that a mash-up of two works that copies elements of both is Copyright infringement. The issue, however, isn’t whether infringement occurred, but whether it is permissible infringement, i.e., “fair use.”

Courts have held that infringing the copyright in another work is fair use if it is a Parody or a “transformative” use of the work. Parody comments on the original work, typically by ridiculing or criticizing it in a humorous way. As such, it comes within the same First Amendment exception to copyright protection as criticism and commentary. The “parody” exception did not help the defendant in this case because the mash-up was not a criticism of commentary on either work. It simply borrowed elements from both of them. The humor is derived from the unlikely combination of the two works, not from criticism of them.

The question whether the work qualifies as parody is relatively simple. Whether it qualifies as transformative use is trickier. As explained in my book, it has been held that a use of a copyrighted work that has an “entirely different aesthetic” is considered fair use. In Cariou v. Prince, a photographer sued an artist who had created artwork that consisted of drawing things on the photographs. The Second Circuit held the “embellished” photographs, although not parody, were nevertheless fair use because they were transformative; that is, they caused the photographs to have an “entirely different aesthetic.”

The Four-Factor Test

Courts apply a four-factor test to determine whether a work that does not qualify for a statutory exemption from copyright infringement liability nevertheless qualifies as fair use. The four factors are:

• The purpose and character of the use
• The nature of the work
• The amount and substantiality of the portions copied
• The effect on the market for the original work.

If the purpose of an infringing work is to criticize or comment on the original, then it is likely to be fair use. This is why the first factor favors a finding that parody is fair use. The first factor is not as likely to weigh in favor of a finding of fair use when a new work uses elements of the original work simply because of the familiarity of the original work rather than to ridicule or comment on it.

It is not entirely clear how Suess can be reconciled with Cariou.  Neither case involved a parody. Arguably, inserting Star Trek characters into a Dr. Seuss story creates an aesthetic entirely different from the original children’s books. It is possible that the outcomes of the two cases were different because the artist in Carious simply reproduced the photographs and then drew on them. In Suess, the defendant apparently slavishly copied illustrations in Dr. Suess books.

The second factor (the nature of the work) also did not favor the defendant in this case. Fictional works generally receive greater copyright protection than nonfiction works. Both the original and the mash-up were fictional.

The defendant copied a lot from Dr. Seuss books. Accordingly, the “amount and substantiality of copying” weighed against a finding of fair use.

A work is less likely to be protected as fair use if it supplants the market for the original work, or for a derivative of the original work. Unless the copyright owner grants a license to another to create a derivative work, the copyright owner has an exclusive right to make derivative works from the original. This factor also weighed against the defendant.

Conclusion

The decision does not bring much clarity to the nebulous “transformative use” doctrine. Unfortunately, the concept remains as murky as ever. While this case does not necessarily sound the death knell for mash-ups, those who make them should proceed with extreme caution.

The post Oh, The Lawsuits You Will Lose! appeared first on Tom James Law - Copyright and Trademark Attorney.