IP Law Daily Comedic play—a bawdy parody of Dr. Seuss’ ‘Grinch’—was non-infringing fair use
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Monday, September 18, 2017

Comedic play—a bawdy parody of Dr. Seuss’ ‘Grinch’—was non-infringing fair use

By Joseph Arshawsky, J.D.

The play Who’s Holiday! (the "Play"), a comedic play that made use of the characters, plot and setting of the Dr. Seuss book, How the Grinch Stole Christmas! ("Grinch"), in order to parody it, was a fair use, a federal court in Manhattan ruled. Therefore, Dr. Seuss Enterprises, L.P.’s ("Seuss") copyright and trademark infringement counterclaims were dismissed on a motion for judgment on the pleadings (Lombardo v. Dr. Seuss Enterprises, L.P., September 15, 2017, Hellerstein, A.).

Grinch is a well-known children’s book written by the author known as Dr. Seuss. Seuss owns a copyright in Grinch and alleged ownership of trademarks in the characters of the Grinch and Cindy-Lou Who, the stylized lettering used in the books, and certain drawn images of Cindy-Lou Who. In the Grinch, Cindy-Lou is two years old and she confronts the Grinch as he is stealing her family’s tree. The Play is a one-actress comedic play featuring a rather down-and-out 45-year-old version of Cindy-Lou Who. Throughout the Play, as she shares her story, Cindy-Lou drinks alcohol, abuses prescription pills, and smokes "Who Hash." Throughout she speaks in rhymes involving bawdy, ribald innuendo, telling of how she gave birth to the Grinch’s child, how she accidentally killed him, and ended up in jail. Seuss sent numerous cease and desist letters, and the producer of the Play filed this declaratory relief action. Lombardo, the author of the Play, filed a motion for judgment on the pleadings, which the court granted. As a threshold matter, the court rejected Seuss’ contention that discovery was necessary. Although discovery might yield additional information about intent, all that was needed to resolve the fair use issue was a side-by-side comparison of the Play and Grinch, according to the court.

Fair use. The first factor in analyzing fair use is the purpose and character of the use. The court determined that the Play is a parody of Grinch, and therefore has an obvious claim to transformative value. The court found that the Play comments on Grinch by imitating and ridiculing its characteristic style for comic effect. The Play recontextualized Grinch’s easily-recognizable plot and rhyming style by placing Cindy-Lou Who—a symbol of childhood innocence and naivete—in outlandish, profanity-laden, adult-themed scenarios involving topics such as poverty, teen-age pregnancy, drug and alcohol abuse, prison culture, and murder. "In so doing, the Play subverts the expectations of the Seussian genre, and lampoons the Grinch by making Cindy-Lou’s naivete, Who-Ville’s endlessly smiling, problem-free citizens, and Dr. Seuss’ rhyming innocence, all appear ridiculous." In the Play, Who-Ville is plagued by problems and real-world challenges. The Grinch is unemployed. Cindy-Lou is punished harshly for what appears to be self-defense. "Who-Ville is now a place where young women are impregnated by green beasts, families struggle to put food on the table, paparazzi run rabid, and citizens get high on ‘Who Hash’ to escape the problems of daily life." The Play had to evoke the style and message of Grinch as an object of the parody. The Play, as a parody, qualifies as a transformative work. Given that the Play’s use of Grinch is transformative, it is of little significance that the use is commercial.

The second factor is the nature of the copyrighted work. Given that the Grinch is a creative, fictional work, this factor favors Seuss, but the court declined to give much weight to this factor in light of the Play’s parodic nature. The third factor evaluates the amount and substantiality of use. Courts have recognized that in the context of parody, a secondary user is entitled to more extensive use of the original than might otherwise be permissible, because it is necessary for the parody to "conjure up" enough of the original to make "the object of its critical wit recognizable." Here, the Play’s use of Grinch was not excessive in relation to the parodic purpose of the copying. While the Play incorporated substantial elements of Grinch’s characters, setting, plot, and style, it engaged in "distorted imitation" in order to mock the original. In the Play, the character of Cindy-Lou serves an entirely different function. The Grinch does not appear on stage. The setting of the Play is a "silver bullet trailer in the snowy hills of Mount Crumpit," which is not in the original. Who-Ville is quite different. "Nor does the Play copy or quote any language from Grinch verbatim." Thus, the amount taken from Grinch was "reasonable in proportion to the needs of the intended transformative use."

The fourth and final factor is the effect on the potential market for the copyrighted work. Grinch is a children’s book, where the Play is a bawdy, off-color parody of Grinch that clearly was intended for adult audiences. "The Play is not an unauthorized sequel of Grinch, and given the clear differences in tone and content, it is unreasonable to assume that audiences might confuse the Play for a theatrical version of Grinch, or that the Play would usurp the market for Grinch." Thus, the fourth factor weighs strongly in favor of finding fair use, and considering all of the four factors together, the court held that the Play constitutes fair use.

Counterclaims. In light of the findings of fair use, the copyright infringement counterclaims were dismissed. As to the trademark counterclaims, first as to the Play’s use of the characters of the Grinch and Cindy-Lou Who, the court held that the public interest in free expression clearly outweighs any interest in avoiding consumer confusion, the likelihood of which is extremely minimal given the parodic nature of the Play. The Play’s use of Dr. Seuss-style hand-lettering and the drawn images of Cindy-Lou Who in advertising (not in the Play) presents a closer issue, but still serves the parodic purpose. Again, the public’s interest in free speech outweighs Seuss’ interest in protecting these trademarks. Seuss’ state law unfair competition and trademark dilution claims were dismissed for the same reason.

The case is No. 1:16-cv-09974-AKH.

Attorneys: Jordan Daniel Greenberger (Law Office of J. Greenberger, PLLC) for Matthew Lombardo. Tamar Y. Duvdevani (DLA Piper US LLP) for Dr. Seuss Enterprises, L.P.

Companies: Dr. Seuss Enterprises, LP

MainStory: TopStory Copyright Trademark NewYorkNews

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