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“Oh, the Places You’ll Boldly Go!” dispute won’t go to SCOTUS, justices say

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A customer looks at books by Dr. Seuss in a bookstore in Brooklyn, New York, U.S., March 2, 2021. REUTERS/Brendan McDermid

  • Case outlined limits of fair use doctrine
  • 9th Circuit held mashup wasn't fair use, didn't transform Seuss' work
  • Mashup merely juxtaposed 'Star Trek' elements with Seuss scenes

(Reuters) - The U.S. Supreme Court on Monday rejected an appeal of a 9th U.S. Circuit Court of Appeals ruling that the Dr. Seuss/”Star Trek” mashup book “Oh, the Places You’ll Boldly Go!” wasn’t protected from Dr. Seuss Enterprises LP’s copyright infringement claims by the fair use doctrine.

The high court won't review the 9th Circuit's December decision written by U.S. Circuit Judge Margaret McKeown that author David Jerrold and ComicMix LLC's mashup of "Star Trek" elements with Dr. Seuss's "Oh, the Places You'll Go!" didn't make fair use of Seuss's work largely because it wasn't transformative.

Dr. Seuss Enterprises and its attorney Stan Panikowski of DLA Piper didn't immediately respond to a request for comment, and neither did ComicMix or its attorney Joanna Ardalan of One LLP.

The 9th Circuit's ruling was seen as an important precedent to clarify the limits of the fair use doctrine.

A key factor in the fair use analysis is whether the new work transformed the original. McKeown wrote for a three-judge panel that the book didn't transform Seuss' work by juxtaposing it with characters and other elements from "Star Trek".

McKeown, joined by Circuit Judges Randy Smith and Jacqueline Nguyen, reversed U.S. District Judge Janis Sammartino's 2019 ruling that although ComicMix "certainly borrowed from Go! – at times liberally – the elements borrowed were always adapted or transformed."

ComicMix's book wasn't transformative because it didn't have a different purpose or character from Seuss's or alter it with new expression, meaning, or message, McKeown said. McKeown found, among other things, that "Star Trek" characters "step into the shoes of Seussian characters in a Seussian world that is otherwise unchanged" in the mashup.

ComicMix said in its May petition to the Supreme Court that the 9th Circuit erred by ignoring its book's "new meaning and message," among other things. Seuss Enterprises waived its right to respond to the petition.

Harvard Law Professor Rebecca Tushnet – who co-wrote a brief with other professors supporting ComicMix at the 9th Circuit – said she didn't agree with the result, but that it "wasn't so obviously in conflict with other decisions" to warrant Supreme Court review.

Tushnet said the current fair use "case to watch" is a dispute in the 2nd U.S. Circuit Court of Appeals over whether Andy Warhol's artwork based on Lynn Goldsmith's photo of the late rock star Prince was transformative. The 2nd Circuit ruled for Goldsmith in March, and the court is currently deciding whether to rehear that case.

The 2nd Circuit asked Goldsmith specifically to address whether its decision should be affected by the Supreme Court's April fair use ruling for Google in its copyright dispute with Oracle.

Parties supporting the Seuss Foundation on appeal included the Motion Picture Association of America and the Sesame Workshop.

The case is ComicMix LLC v. Dr. Seuss Enterprises LP, U.S. Supreme Court, No. 20-1616.

For ComicMix: Joanna Ardalan of One LLP

For Seuss Enterprises: Stan Panikowski of DLA Piper

Read more:

Dr. Seuss's estate can sue over 'Star Trek' 'mash-up'

Dr. Seuss lawsuit over Star Trek-themed parody is dismissed

Blake Brittain reports on intellectual property law, including patents, trademarks, copyrights and trade secrets. Reach him at blake.brittain@thomsonreuters.com

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