## Facts

- Dr. Seuss Enterprises, L.P. (DSE) owned copyrights in *Oh, the Places You’ll Go!* and other Dr. Seuss works, and asserted related trademark rights in Seuss-associated titles and stylistic features.
- ComicMix LLC and individual creators developed *Oh, the Places You’ll Boldly Go!* (*Boldly*), a planned commercially published book combining Seussian text-and-illustration style with *Star Trek* characters and settings.
- DSE alleged *Boldly* copied protected expression from *Oh, the Places You’ll Go!* (*Go!*) and other Seuss works, including specific page layouts, illustrations, and recognizable compositional elements, to parallel Seuss’s visual and textual structure.
- ComicMix marketed *Boldly* through a Kickstarter campaign and intended to sell the finished book.
- DSE sued for copyright infringement under 17 U.S.C. § 106 and for trademark/unfair-competition violations under the Lanham Act and state law.
- The district court dismissed the Lanham Act claims under the *Rogers* test and later granted summary judgment to ComicMix on copyright, holding *Boldly* was fair use.
- DSE appealed.

## Issues

1. Whether ComicMix’s copying of expressive elements from *Go!* and other Seuss works for *Boldly* constituted fair use under 17 U.S.C. § 107.
2. Whether DSE stated a viable Lanham Act trademark/unfair-competition claim for Seussian “title, typeface, and style” used in an expressive work under the *Rogers v. Grimaldi* framework.

## Decision

- The Ninth Circuit reversed the summary judgment on copyright, holding ComicMix failed to establish fair use and remanding for further proceedings on infringement.
- The court held all four statutory fair-use factors weighed against ComicMix because *Boldly* was commercial, non-transformative, copied substantial protected expression, and threatened the market for *Go!* and licensed derivatives.
- The Ninth Circuit affirmed dismissal and judgment for ComicMix on the Lanham Act claims, holding the challenged uses were artistically relevant and not explicitly misleading under *Rogers*.

## Legal Principles

- Fair use is an affirmative defense; defendants bear the burden of proof, including on market harm.
- A mash-up is not automatically transformative; a secondary work that mimics the original’s expressive content and serves a similar purpose weighs against fair use under § 107(1).
- Highly creative, expressive works receive broad protection; where the secondary work is not transformative, § 107(2) favors the copyright holder.
- Taking the “heart” of a work and closely replicating composition, arrangement, and recognizable illustration elements weighs strongly against fair use under § 107(3); the “amount used” is assessed against the specific works at issue, not the author’s entire corpus.
- Under § 107(4), targeting the same primary market and harming the copyright owner’s derivative-licensing market weighs against fair use.
- For expressive works, the Lanham Act is limited by *Rogers v. Grimaldi*: trademark claims fail unless the use has no artistic relevance to the work or explicitly misleads consumers about source or content.

## Conclusion

The Ninth Circuit held that ComicMix’s Seuss/*Star Trek* book was not fair use because it commercially replicated protected Seussian expression and threatened DSE’s markets, but it rejected DSE’s trademark claims because the expressive use of Seussian elements was artistically relevant and not explicitly misleading under *Rogers*.


Dr. Seuss Enters., L.P. v. ComicMix LLC, 983 F.3d 443 (9th Cir. 2020)