# Not a Place You'll Go: Dr. Seuss v. ComicMix and the Limits of the Mashup

> The Ninth Circuit held that a Star Trek-Seuss mashup was infringement, not parody, drawing a hard line between transformation and clever copying.

Topic: Copyright  |  Author: Lidiia Levitska  |  Source: Intellectual Property Law (outsideipcounsel.com)
Canonical: https://outsideipcounsel.com/blog/dr-seuss-v-comicmix-mashup-fair-use/


A mashup of *Oh, the Places You'll Go!* and *Star Trek* sounds like a delightful tribute, and that is precisely the problem the Ninth Circuit identified. In *Dr. Seuss Enterprises, L.P. v. ComicMix LLC*, No. 19-55348 (9th Cir., decided Dec. 18, 2020), the court held that *Oh, the Places You'll Boldly Go!* was not a parody and not a transformative fair use, stripping ComicMix of the only defense that had won it summary judgment below. The decision is a sharp counterweight to the expansive readings of transformation that flourished after *Cariou v. Prince*, insisting that borrowing a famous work's expressive heart to capitalize on its appeal is the opposite of fair use, no matter how affectionate or creative the result.

## At a glance

- **Case:** *Dr. Seuss Enterprises, L.P. v. ComicMix LLC; David Jerrold Friedman a/k/a David Gerrold; Glenn Hauman; Ty Templeton*, No. 19-55348 (9th Cir. Dec. 18, 2020).
- **Court:** United States Court of Appeals for the Ninth Circuit; opinion by Judge M. Margaret McKeown.
- **Posture:** Reversing and remanding the Southern District of California's grant of summary judgment to ComicMix on copyright fair use; affirming the Rule 12(c) dismissal and summary judgment for ComicMix on the trademark claim.
- **Holding:** *Boldly* was not a fair use: it was non-transformative, copied substantial and qualitatively central material, and threatened Seuss's lucrative derivative and licensing markets. The Lanham Act trademark claim failed under *Rogers v. Grimaldi*.
- **Significance:** A mashup that merely repackages a beloved work to exploit its popularity, without commenting on it, is infringement, not parody.

ComicMix's *Boldly* was the work of accomplished creators: David Gerrold, who wrote the famous "The Trouble with Tribbles" *Star Trek* episode; illustrator Ty Templeton; and editor Glenn Hauman. They set out to combine the optimistic life lessons of *Oh, the Places You'll Go!* with the universe of *Star Trek*, illustrating the Seussian world in Seuss's style but populated with Captain Kirk, Spock, and the Enterprise. They launched a Kickstarter, acknowledged internally that they were copying Seuss closely, and even anticipated a possible lawsuit. Dr. Seuss Enterprises sued for copyright and trademark infringement before the book was published.

## Why the mashup was not a parody

The fair-use analysis turned first on the parody distinction drawn in *Campbell v. Acuff-Rose*. A parody copies a work in order to comment on or criticize that work; it must conjure up the original to make its point. The Ninth Circuit found that *Boldly* did no such thing. "Boldly is not a parody," the panel wrote, and "ComicMix does not seriously contend that Boldly critiques or comments on Go!." Instead, it simply used Seuss's expression as a vehicle to tell a *Star Trek* story. As Judge McKeown put it, *Go!* "was merely repackaged into a new format," and was selected "to get attention or to avoid the drudgery in working up something fresh," not for a transformative purpose.

That framing is the doctrinal core of the case. Without commentary on the original, *Boldly* could not claim parody's special latitude to take the heart of a work. And the court declined to find the mashup transformative on any other theory. Combining two properties is not, by itself, transformation. The work did not add "new expression, meaning, or message" *about* Seuss; it imported Seuss's expression to lend charm and recognition to a derivative project. The first factor therefore weighed against fair use, and the court signaled that ComicMix's commercial purpose compounded the problem.

## The amount and substantiality taken

The third factor proved devastating to ComicMix. The court catalogued exactly how much the mashup had taken: for each illustration it copied, ComicMix "replicated, as much and as closely as possible from *Go!*, the exact composition, the particular arrangements of visual components, and the swatches of well-known illustrations." The panel noted that ComicMix had copied "14 of *Go!*'s 24 pages," close to 60% of the book, plus significant illustrations from *How the Grinch Stole Christmas!* and two stories in *The Sneetches and Other Stories*, and found that "ComicMix took the heart of Dr. Seuss's works."

Importantly, the court rejected the argument that heavy copying was justified because the mashup needed to evoke Seuss. That justification works for parody, which must summon the original to mock it. But *Boldly* was not aiming its copying at Seuss; it was using Seuss to decorate a *Star Trek* story. Without the parody rationale, near-verbatim reproduction of a work's most recognizable expression weighed heavily against fair use. The meticulousness ComicMix took pride in, matching Seuss line for line, became evidence against them.

## Market harm and the licensing economy

The fourth factor sealed the outcome. Dr. Seuss Enterprises runs an extensive and active licensing and derivative-works business, including authorized collaborations and adaptations. The court emphasized that *Oh, the Places You'll Go!* is a perennial bestseller, especially at graduation season, and that Seuss had an established practice of licensing derivative products. ComicMix bore the burden, as the party asserting fair use, of showing the absence of market harm. It offered no evidence that *Boldly* would not encroach on Seuss's derivative markets, including the market for licensed mashups Seuss might itself authorize.

The court was explicit that potential harm to derivative and licensing markets counts, and that ComicMix's failure to address it was fatal. Because *Boldly* targeted the same audience that buys *Go!* as a gift and could substitute for an authorized Seuss-licensed product, the fourth factor favored Seuss. Weighing all four factors together, the panel concluded that ComicMix could not sustain a fair-use defense, and it reversed the summary judgment and remanded.

## Open questions

- **What separates a transformative mashup from a derivative one?** *ComicMix* says combining two works is not automatically transformative, but leaves room for mashups that genuinely comment or recontextualize: an undefined frontier.
- **How heavy is too heavy a take?** The court stressed the near-total copying of *Go!*'s expression, but did not specify how much less would have changed the calculus.
- **Does failing to prove no market harm doom most defendants?** Placing the burden on the fair-use proponent to negate derivative-market harm may make summary judgment harder for appropriators to win.

## Implications

- **Mashups are not presumptively fair.** Blending properties does not create transformation; courts ask whether the new work comments on the borrowed one or merely exploits it.
- **Parody latitude requires targeting the original.** Heavy copying is forgiven only when the copying serves to critique the source, not to borrow its appeal.
- **Active licensing programs strengthen rights holders.** A robust derivative-works market makes market-harm arguments potent and shifts practical leverage to the owner.
- **The fair-use proponent carries the burden on market harm.** Failing to put on evidence that derivative markets are unaffected can be decisive.
- **Good faith and craftsmanship do not excuse copying.** Careful, affectionate reproduction can cut against fair use by proving how much was taken.

## Frequently asked questions

**Was the *Star Trek* mashup ever published?**
No. Dr. Seuss Enterprises sued before publication. The Supreme Court denied ComicMix's petition for certiorari on June 21, 2021 (No. 20-1616), and on remand the parties settled in October 2021 on terms under which ComicMix agreed the book infringed and was permanently barred from selling it, while Seuss dropped its damages and fees claims. The work was never lawfully released.

**Why did the trademark claim fail even though the copyright claim succeeded?**
Under *Rogers v. Grimaldi*, the claimed marks in the title, typeface, and illustration style of *Go!* were artistically relevant to the mashup and their use was not explicitly misleading about its source, so the Lanham Act did not apply. The court did not decide whether the Seussian style and font are valid common law trademarks. Trademark and copyright analyses are distinct.

**How is this different from *Campbell v. Acuff-Rose*?**
In *Campbell*, 2 Live Crew's song commented on and parodied the original "Oh, Pretty Woman," earning parody's latitude. *Boldly* did not comment on *Oh, the Places You'll Go!*; it used Seuss's expression to tell an unrelated *Star Trek* story, so the parody justification was unavailable.

## Authorities and sources

- Ninth Circuit opinion PDF, No. 19-55348 (Dec. 18, 2020): https://cdn.ca9.uscourts.gov/datastore/opinions/2020/12/18/19-55348.pdf
- U.S. Copyright Office Fair Use Index summary, *Dr. Seuss Enters., L.P. v. ComicMix LLC*, 983 F.3d 443 (9th Cir. 2020): https://www.copyright.gov/fair-use/summaries/drseuss-comicmix-9thcir2020.pdf
- Cowan, Liebowitz & Latman analysis, "Ninth Circuit Holds Dr. Seuss-Star Trek Mashup an Infringement, Not a Parody": https://www.cll.com/CopyrightDevelopmentsBlog/ninth-circuit-holds-dr-seuss-star-trek
- Kluwer Copyright Blog case note: https://copyrightblog.kluweriplaw.com/2021/01/29/copyright-case-dr-seuss-enterprises-lp-v-comicmix-llc-usa/
- Supreme Court docket, *ComicMix, LLC v. Dr. Seuss Enterprises, L.P.*, No. 20-1616 (cert. denied June 21, 2021): https://www.supremecourt.gov/search.aspx?filename=/docket/docketfiles/html/public/20-1616.html