With Dr. Seuss recently in the news for the decision of his estate to pull from publication certain books that were racially insensitive, we thought that we would go back and look at another decision involving the good doctor that we did not get around to reviewing when it came out at the end of last year – the decision that a book, Oh, The Places that You Will Boldly Go, a mash-up of Dr. Seuss and Star Trek, was an infringement on the Seuss’ copyrights and did not qualify for fair use treatment. Who knew that Dr. Seuss would play such a prominent role in legal and public policy! As we summarize below, and as we have written before (see for instance our articles here and here), fair use is not a simple concept or one that is as broadly applicable as many in the media industry seem to think.
The decision from the 9th Circuit Court of Appeals in the Boldly Go case overturned a lower court opinion finding the book to be a parody of the original Seuss work (Oh, the Places You Will Go), and thus entitled to fair use protection. The 9th Circuit found that Boldly Go was not a fair use, but instead an improper exploitation of the copyrighted work. The Court reached its decision by reviewing the factors set out in Section 107 of the Copyright Act that are required for a fair use analysis. This decision is one which all media companies should review carefully, as it makes clear that fair use is not as broad of a concept as apparently believed. Importantly, fair use does not cover any use that may be an amusing adaptation of an original work. For instance, I am often asked by radio companies whether taking a song and substituting a new set of lyrics that provide some funny commentary on some newsworthy topic is fair use. As is evident from the analysis undertaken in the Boldly Go case, unless the “parody” is making fun of the original copyrighted work, it may well not qualify as a fair use and thus may be subject to a claim of copyright infringement.
The traditional factors that must be reviewed in a fair use analysis are as follows:
- the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
- the nature of the copyrighted work;
- the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
- the effect of the use upon the potential market for or value of the copyrighted work.
In the Boldly Go case, the Court looked at the fact that the mash-up was a commercial work that purposely used as many of the characteristics of the original Dr. Seuss story as possible, just adding the Star Trek characters in an attempt to make it attractive to readers. The intent was to produce a book (just like the original copyrighted work) using much of the original Dr. Seuss work, so that any reader would know what the authors of Boldly Go were referring to. Plus, as the Seuss estate had licensed other Dr. Seuss works for adaptation, the use here would have a negative impact on the market for the work if these authors of Boldly Go were permitted to use it for free.
In many recent fair use cases, the courts have begun to look at whether the new work is “transformative.” The Boldly Go Court said that a transformative work “adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message.” In analyzing this work, the Court noted that a work that “merely supersedes the objects of the original creation” is not transformative. So just taking the original work and putting it into a different context did not make the new work transformative, unless it gave new meaning to the original work.
The 9th Circuit, in looking at cases that qualified as fair use, mentioned the book The Wind Done Gone. That book was a retelling of the Gone With the Wind story from the perspective of a slave. The retelling needed to use copyrighted work to provide its commentary and criticism of the cultural assumptions of the original work. The Boldly Go court looked at these factors in deciding if a work was transformative:
- “further purpose or different character” in the defendant’s work, i.e., “the creation of new information, new aesthetic, new insights and understanding”;
- “new expression, meaning, or message” in the original work, i.e., the addition of “value to the original”; and
- the use of quoted matter as “raw material,” instead of repackaging it and “merely supersed[ing] the objects of the original creation.”
Just using the original work to provide a base for a new story having nothing to do with the original does not make a work “fair”. A song with new funny lyrics is not necessarily a fair use, nor, as the Court noted, was another use of a Dr. Seuss book where a fair use claim had previously been rejected, – a case where The Cat in the Hat was used to tell the story of the OJ Simpson murder trial. Where the new work is not acting as commentary or criticism of the original work, but instead just taking the style of the original to tell another story in a way likely to appeal to the public, fair use will likely not apply – so permission from the copyright owner will be needed to avoid an infringement action.
These are subtle distinctions that require that you proceed with care if you want to claim fair use of a copyrighted work without first securing permission from the copyright holder. Proceed with care, as a wrong assumption as to what is fair could subject you to a copyright infringement claim.
Courtesy Broadcast Law Blog
