Oh The Culture You'll Cancel, Thanks To The Ninth Circuit And Copyright

If everyone's going to be talking about Dr. Seuss, then we need to talk about this terrible decision from the Ninth Circuit a few months ago. Not to validate the idea of "cancel culture" in the particular way it's often bandied about as a sort of whining over people not wanting to be associated with certain ideas, but because when law takes away the ability to express them in the first place, that's censorship, it's an affront to the First Amendment, and it's something we all should be outraged about. And, as this case illustrates, the law in question is copyright.

We've written about this case, Dr. Seuss Enters., L.P. v. ComicMix LLC, 983 F.3d 443 (9th Cir. 2020), many, many times before: some people wrote a mash-up using Seussian-type imagery and Star Trek vernacular to express new ideas that neither genre alone had been able to express before. And Dr. Seuss's estate sued them for it.

The little bit of good news: their trademark claim failed. Applying the Rogers test to determine whether the Lanham Act could support such a claim, both the district court and the appeals court agreed: it didn't.

Under the Rogers test, the trademark owner does not have an actionable Lanham Act claim unless the use of the trademark is "either (1) not artistically relevant to the underlying work or (2) explicitly misleads consumers as to the source or content of the work." Neither of these prongs is easy to meet. As to the first prong, any artistic relevance "above zero" means the Lanham Act does not apply unless the use of the trademark is explicitly misleading. Boldly easily surpasses this low bar: as a mash-up of Go! and Star Trek, the allegedly valid trademarks in the title, the typeface, and the style of Go! are relevant to achieving Boldly's artistic purpose. Nor is the use of the claimed Go! trademarks "explicitly misleading," which is a high bar that requires the use to be "an 'explicit indication,' 'overt claim,' or 'explicit misstatement'" about the source of the work. Thus, although titling a book "Nimmer on Copyright," "Jane Fonda's Workout Book," or "an authorized biography" can explicitly misstate who authored or endorsed the book, a title that "include[s] a well-known name" is not explicitly misleading if it only "implicitly suggest[s] endorsement or sponsorship." Boldly is not explicitly misleading as to its source, though it uses the Seussian font in the cover, the Seussian style of illustrations, and even a title that adds just one word—Boldly—to the famous title—Oh, the Places You'll Go!. Seuss's evidence of consumer confusion in its expert survey does not change the result. The Rogers test drew a balance in favor of artistic expression and tolerates "the slight risk that [the use of the trademark] might implicitly suggest endorsement or sponsorship to some people." [p. 31-32]

Note: as you read the quotes from the decision be aware that the court regularly refers to the mash-up as "Boldly" and the original Seuss work it riffed on as "Go!"

But while the Ninth Circuit was accommodating to artistry on the trademark front, it was hostile on the copyright front and overturned the district court's finding that the mash-up was fair use. It walked through the fair use factors with its thumb heavily on the side of the copyright owner, willfully blind to any "countervailing copyright principles [that would] counsel otherwise." [p. 11]. For instance, on the second factor, the nature of the work, it looked at the mash-up with a harsher eye because the original work had been a creative one, rather than one more informational. ("Hence, Boldly's copying of a creative and "expressive work[]" like Go! tilts the second factor against fair use." [p. 19])

But what's most alarming is not just how the court applied the other factors, but how its analysis effectively expanded the power of a copyright holder to shut down others' subsequent expression, far more than the statute allows, the Progress Clause of the Constitution permits, or the First Amendment tolerates.

For instance, on the fourth factor, because the original work, "Oh, the Places You'll Go," targeted the graduation market, the court gave it the power to shut out subsequent works that also might serve the same market by somehow construing the mash-up as a competitor with the origina