Lombardo et al v. Dr. Seuss Enterprises, L.P.

Filing 53

OPINION AND ORDER GRANTING DECLARATORY JUDGMENT FOR PLAINTIFFS AND DISMISSING DEFENDANT'S COUNTERCLAIMS re: 44 MOTION for Judgment on the Pleadings [Fed. R. Civ. P 12(c)], filed by Who's Holiday Limited Liability Company, Matthew Lombardo, 48 MOTION to File Amicus Brief, filed by Dramatists Legal Defense Fund., Motions terminated: 44 MOTION for Judgment on the Pleadings [Fed. R. Civ. P 12(c)], filed by Who's Holiday Limited Lia bility Company, Matthew Lombardo, 48 MOTION to File Amicus Brief, filed by Dramatists Legal Defense Fund. For the reasons stated herein, plaintiffs' motion is granted. The Play constitutes fair use and therefore does not infr inge defendant's copyright in Grinch or related trademarks. Defendant's counterclaims are dismissed. Defendant's state law unfair competition and trademark dilution claims are dismissed for the same reasons. See Kregos v. Associated Press, 795 F. Supp. 1325, 1336 (S.D.N.Y. 1992) ("[T]he standards for§ 43(a) claims under the Lanham Act and unfair competition claims under New York law are virtually the same."); Charles Atlas, Ltd. v. DC Comics, Inc., 112 F. Supp. 2d 330, 341(S.D.N.Y.2000) (finding risk of confusion "clearly outweighed by the public interest in parodic expression" and dismissing state law trademark dilution and unfair competition claims "because they are based on the same perm issible conduct."); Yankee Publishing, 809 F.Supp. at 282 (finding that the "same First Amendment considerations that limit a cause of action under the Lanham Act apply also to a cause of action under New York law."). For these rea sons, plaintiffs' motion for judgment on the pleadings and dismissal of defendant's counterclaims is granted. The Clerk shall terminate the motion, and all related motions (Dkt. Nos. 44, 48). The Play constitutes fair use and does not infr inge defendant's copyright in Grinch. The Clerk shall enter judgment granting judgment to plaintiffs and dismissing the counterclaims, and shall tax costs in favor of plaintiffs. The Clerk shall mark the case closed, and as further set forth herein. (Signed by Judge Alvin K. Hellerstein on 9/15/2017) (ras)

llSDCSDNY
DOCUMENT

~LECTRONICALLY FILED
DOC#:
DATE F=n-~E-D:---:;:-9._,./t;...·
~_,z1-·

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK

17-

-------------------------------------------------------------- x

MATTHEW LOMBARDO AND WHO'S
HOLIDAY LLC,
Plaintiffs,
V.

OPINION AND ORDER
GRANTING DECLARATORY
JUDGMENT FOR PLAINTIFFS
AND DISMISSING
DEFENDANT'S
COUNTERCLAIMS

DR. SEUSS ENTERPRISES, L.P.,
Defendants.

16 Civ. 9974 (AKH)

-------------------------------------------------------------- x
ALVIN K. HELLERSTEIN, U.S.D.J.:
Plaintiff Matthew Lombardo is the author of Who 's Holiday! (the "Play"), a
comedic play that makes use of the characters, plot, and setting of the Dr. Seuss book, How the
Grinch Stole Christmas! ("Grinch"), to make fun of it and to criticize its qualities, i.e., to parody
it. Plaintiffs Lombardo and Who's Holiday LLC seek a declaration that the Play is fair use and
therefore does not infringe upon defendant Dr. Seuss Enterprises, L.P.' s copyright in Grinch.
· Defendant asserts counterclaims alleging copyright and trademark infringement. Plaintiffs move
for judgment on the pleadings pursuant to Rule 12(c), arguing that the Play constitutes fair use of
defendant's copyright. Plaintiffs also move to dismiss defendant's counterclaims for failure to
state a legally sufficient claim for relief. For the reasons stated herein, plaintiffs' motion is
granted. The Play constitutes fair use and therefore does not infringe defendant's copyright in
Grinch or related trademarks. Defendant's counterclaims are dismissed.
BACKGROUND
I.

The Original Work: How The Grinch Stole Christmas!

Grinch, originally published in 1957, is a well-known children's book written by
the author known as Dr. Seuss. First Amended Compl. ("FAC")

~

7. Defendant owns a

copyright in Grinch, and alleges ownership of trademarks in (i) the characters of the Grinch and
Cindy-Lou Who; (ii) the stylized hand-lettering used consistently throughout Dr. Seuss books;
and (iii) certain drawn images of Cindy-Lou Who. FAC ,-i 8; Counterclaims ,-i 20.
Grinch tells the story of the Grinch, a green creature that lives in a cave on Mount
Crumpit above the town of Who-Ville, home of the merry and cheerful Whos, who positively
love Christmas. The Grinch, who despises Christmas, decides to ruin Christmas for Who-Ville
by disguising himself as Santa Claus and stealing all of Who-Ville's Christmas trees and
presents. While executing his plan, the Grinch encounters Cindy-Lou Who, an adorable twoyear old girl. When Cindy-Lou asks the Grinch why he is taking her family's tree, the Grinch
lies to Cindy-Lou, telling her that he needs to repair a light on the tree but will return it soon.
Cindy-Lou believes the Grinch and returns to bed. The next day, the Grinch listens from Mount
Crumpit for the sound of crying Whos, but instead hears the sounds of merry singing. The
Grinch, upon learning that the Whos could remain joyous during Christmas even without
presents or Christmas trees, realizes that Christmas means more than presents. The Grinch, his
heart having "grown three sizes that day," returns to Who-Ville with all of the presents and joins
the Whos for a scrumptious feast, featuring a dish called roast beast. See generally, Greenberger
Deel. Ex. 2.

II.

The Allegedly Infringing Work: Who's Holiday

Plaintiff Lombardo is the author of the play, Who's Holiday. Lombardo formed
plaintiff Who's Holiday LLC to produce the Play. Who's Holiday is a one-actress 75-minute
comedic play featuring a rather down-and-out 45 year-old version of Cindy-Lou Who. The Play
takes place at Cindy-Lou's 1970s era trailer in the hills of Mount Crumpit. Cindy-Lou speaks to
the audience only in rhyming couplets that are clearly intended to evoke the work of Dr. Seuss.
While waiting for guests to arrive for her Christmas party, Cindy-Lou tells the audience the story
2

of her life, beginning with her first encounter with the Grinch at the age of two. Throughout the
Play, as she shares her history, Cindy-Lou drinks hard alcohol, abuses prescription pills, and
smokes a substance she identifies as "Who Hash," which she describes as just "like a
prescription" which keeps her in check to avoid a "conniption." She engages in this selfmedication following her realization that none of the guests she invited to her party is likely to
attend, as they keep calling throughout the Play to cancel.
As Cindy-Lou recounts her initial encounter with the Grinch and his subsequent
change of heart, paralleling the plot of the original Grinch, she incorporates age-inappropriate
language and details that do not appear in the original work. ("I watched for a while as he was
stealin' our shit I Then I cooed by mistake and he saw me. That twit."); ("How would I know he
was evil or crass? I He gave me some water. Then patted my ass."). After recounting the plot of
the original Grinch, Cindy-Lou goes on to tell the audience - using rhymes involving bawdy,
ribald innuendo - that she became friends with the Grinch during her school-age years, and that
she engaged in sexual intercourse with the Grinch upon turning eighteen. Cindy-Lou refers to
the size of the Grinch's genitalia growing "three sizes that day." After learning that she is
pregnant, Cindy-Lou informs the Grinch, who asks her to marry him. Over her parents'
protestation ("When I told my parents they weren't pleased in the least I I mean, who wants their
baby girl deflowered by a beast."), Cindy-Lou marries the Grinch, moves into his cave at the top
of Mount Crumpit, and gives birth to their child ("With the fur and the paws it looked just like its
Daddy I With no who dilly attached, I named the kid Patti.").
As the years go by, Cindy-Lou and the Grinch's relationship begins to sour as
they struggle with issues such as unemployment, access to health care, lack of heat, and hunger.
One day, Cindy-Lou discovers that the family dog Max has frozen to death, and she decides to

3

cook his carcass in order to feed her family. When the Grinch discovers what his dinner is made
of, he attempts to physically abuse Cindy-Lou. During the ensuing scuffle, the Grinch falls off
the edge of a cliff and dies. Following the Grinch's death, Cindy-Lou is arrested, convicted and
incarcerated, and her daughter is put into foster care. After describing how her time in prison
ultimately made her stronger and wiser, Cindy-Lou eventually finds out that all of her guests
have declined to attend her party and begins to cry. It then dawns on her that she can celebrate
Christmas with the audience instead. After singing a few Christmas songs, the door bells rings.
Cindy-Lou expects it to be a local prankster, but it turns out to be her daughter, Patti. See

generally, FAC Ex. I.

III.

Procedural History

In July 2016, defendant sent plaintiffs and related entities numerous cease-anddesist letters requesting that plaintiffs refrain from any conduct that infringed defendant's
intellectual property. After receipt of these letters, plaintiffs elected not to move forward with
their planned production of the Play, and instead filed this lawsuit. In addition to seeking a
declaration that the Play constitutes fair use, plaintiffs also filed several tort claims seeking
recovery of funds lost as a result of the cancelled production. In an earlier opinion, I granted
defendant's motion to dismiss plaintiffs tort claims. See Lombardo v. Dr. Seuss Enterprises,
L.P., 2017 WL 1378413 (S.D.N.Y. Apr. 7, 2017). In response to plaintiffs' first amended

complaint, defendant filed counterclaims alleging copyright and trademark infringement. Over
defendant's objection that discovery was necessary before the fair use issue could be resolved, I
invited plaintiffs to file a motion for judgment on the pleadings pursuant to Rule 12(c) to test the
issue. See Scheduling Order, Dkt. No. 40 (June 7, 2017).

4

DISCUSSION

I.

The Question of Whether the Play Constitutes Fair Use Is Properly
Resolved on a Rule 12(c) Motion

The parties dispute whether the question of fair use can be resolved on a motion
for judgment on the pleadings. Plaintiffs argue that discovery is unnecessary because the only
task for the Court is to conduct a side-by-side comparison of the Play and Grinch and apply the
law of fair use. Defendant counters that the following discovery is necessary to resolve the fair
use question: (i) all versions of the Play's website and potential advertisements (as opposed to
just those attached as exhibits to plaintiffs' pleadings); (ii) all drafts of the Play itself; (iii) all set
and costume designs; and (iv) deposition testimony from the Play's author, director, set designer
and costume designer.
No such discovery is necessary in this case. Numerous courts in this district have
resolved the issue of fair use on a motion for judgment on the pleadings by conducting a side-byside comparison of the works at issue. In Arrow Prods., LTD. v. Weinstein Co. LLC, 44 F. Supp.
3d 359 (S.D.N.Y. 2014), for example, the court held that "discovery would not provide any
additional relevant information in this inquiry" because "[a]ll that is necessary for the court to
make a determination as to fair use are the two films at issue." 44 F. Supp. 3d at 368. Similarly,
in Adjmi v. DLT Entm 't Ltd, 97 F. Supp. 3d 512 (S.D.N.Y. 2015), which concerned a play that
parodied the television show Three's Company, the court addressed fair use on a motion for
judgment on the pleadings, reasoning that "[ c]ourts in this Circuit have resolved motions to
dismiss on fair use grounds in this way: comparing the original work to an alleged parody, in
light of applicable law." 97 F. Supp. 3d at 527; see also Effie Film, LLC v. Murphy, 932 F. Supp.
2d 538 (S.D.N.Y. 2013) (resolving copyright infringement claim on motion for judgment on the
pleadings by comparing screenplays side-by-side); Swatch Grp. Mgmt. Servs. Ltd v. Bloomberg

5

L.P., 756 F.3d 73, 86 (2d Cir. 2014) (affirming district court's pre-discovery fair use ruling and
noting that the "discovery [plaintiff] seeks would not alter our analysis").
Even in cases where fair use is addressed on a motion for summary judgment,
following discovery, courts often resolve the issue of fair use by comparing the two works at
issue. In Cariou v. Prince, 714 F.3d 694 (2d Cir. 2013), for example, the Second Circuit chose
to disregard the alleged infringer's deposition testimony, and instead endorsed the Seventh
Circuit's approach of resolving fair use by "looking at the artworks and the photographs side-byside." 714 F.3d at 707; see Brownmark Films, LLC v. Comedy Partners, 682 F.3d 687, 690 (7th
Cir. 2012) ("[T]he only two pieces of evidence needed to decide the question of fair use in this
case are the original version of WWITB and the episode at issue."). The Second Circuit adopted
this approach because"[ w]hat is critical is how the work in question appears to the reasonable
observer, not simply what an artist might say about a particular piece or body of work." Cariou,
714 F.3d at 707.
Thus, although discovery might yield additional information about plaintiffs'
intent, such information is unnecessary to resolve the fair use issue; all that is needed is the
parties' pleadings, copies of Grinch and the Play, and the relevant case law. Defendant objects
that plaintiffs have cherry-picked documents (such as promotional materials) that refer to the
Play as a parody, and attached those documents to their complaint. I have not relied on such
documents. The "threshold question when fair use is raised in defense of parody is whether a
parodic character may reasonably be perceived," not whether the author of the secondary work
labels it as such. Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 582 (1994).
To prevail on a Rule 12(c) motion in this context, plaintiffs' must "establish that
there can be no set of facts to support an action for copyright infringement" brought against

6

them. Adjmi, 97 F. Supp. 3d at 526-27. In this sense, "[b]ecause this is an action for a
declaratory judgment of nan-infringement, [plaintiffs'] burden on this motion is turned on its
head." In deciding this motion, all pleadings - including defendant's counterclaims - are taken
to be true, subject to the same plausibility standard that applies on a Rule 12(b)(6) motion. See
Effie Film, LLC, 932 F. Supp. 2d at 552 ("In deciding a Fed. R. Civ. P. 12(c) motion the court
applies the same standard as it would in deciding a Rule 12(b) motion-a plaintiff must plead
sufficient facts to state a claim for relief that is plausible on its face.").

II.

Fair Use

"The ultimate goal of copyright is to expand public knowledge and understanding,
which copyright seeks to achieve by giving potential creators exclusive control over copying of
their works, thus giving them a financial incentive to create informative, intellectually enriching
works for public consumption." Authors Guild v. Google, Inc., 804 F.3d 202, 212 (2d Cir.
2015). "For nearly three hundred years, since shortly after the birth of copyright in England in
1710, courts have recognized that, in certain circumstances, giving authors absolute control over
all copying from their works would tend in some circumstances to limit, rather than expand,
public knowledge." Id "Courts thus developed the doctrine, eventually named fair use, which
permits unauthorized copying in some circumstances, so as to further 'copyright's very purpose,
'[t]o promote the Progress of Science and useful Arts."" Id (quoting Campbell, 510 U.S. at
575) (quoting U.S. Const., Art. I,§ 8, cl. 8).
The fair use doctrine is codified in the Copyright Act of 1976. See 17 U.S.C. §
107. "That codification does not so much define 'fair use' as provide a non-exhaustive list of
factors to guide courts' fair use determinations." TCA Television Corp. v. McCollum, 839 F.3d
168, 178 (2d Cir. 2016). The preamble to Section 107 provides that "the fair use of a
copyrighted work ... for purposes such as criticism, comment, news reporting, teaching
7

(including multiple copies for classroom use), scholarship, or research is not an infringement of
copyright." I 7 U.S.C. § I 07. ''When the copied work is being used for one of the purposes
identified in the preamble, there is a strong presumption in favor of fair use[.]" Fox News

Network, LLC v. TVEyes, Inc., 43 F. Supp. 3d 379, 389 (S.D.N.Y. 2014) (citing NXIVM Corp. v.
Ross Institute, 364 F.3d 471, 477 (2d Cir. 2004)).
Although fair use requires a "case-by-case analysis," Campbell, 510 U.S. at 577,
and "is an open-ended and context-sensitive inquiry," Blanch v. Koons, 467 F.3d 244, 251 (2d
Cir. 2006), most courts approach the issue by applying the four nonexclusive factors set out in
the Copyright Act itself: "( 1) the purpose and character of the use, including whether such use is
of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted
work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as
a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted
work." 17 U.S.C. § 107. These four factors are not to be "treated in isolation, one from
another." Campbell, 510 U.S. at 578. Instead, "[a]ll are to be explored, and the results weighed
together, in light of the purposes of copyright." Id. "A proponent of the fair use doctrine need
not establish that each factor weighs in its favor to prevail." TVEyes, 43 F. Supp. 3d at 389.

a. First Fair Use Factor: Purpose and Character of the Use
"The first factor, which addresses the manner in which the copied work is used, is
the 'heart of the fair use inquiry."' N. Jersey Media Grp. Inc. v. Pirro, 74 F. Supp. 3d 605, 614
(S.D.N.Y. 2015) (quoting Blanch, 467 F.3d at 251). "The central question is 'whether and to
what extent the new work is 'transformative,"" Estate ofSmith v. Cash Money Records, Inc.,
2017 WL 2333770, at *7 (S.D.N.Y. May 30, 2017) (quoting Campbell, 510 U.S. at 579), for the
"goal of copyright ... is generally furthered by the creation oftransformative works." Campbell,
510 U.S. at 579. To resolve whether a work is transformative, Campbell instructs courts to
8

consider "whether the new work merely supersedes the objects of the original creation, or instead
adds something new, with a further purpose or different character, altering the first with new
expression, meaning, or message." Id
I begin my analysis of the first fair use factor by considering whether the Play is a
parody of Grinch, for parody "'has an obvious claim to transformative value,' and thus deciding
that the new work is a parody necessarily entails finding that the new work is transformative."

Abilene Music, Inc. v. Sony Music Entm 't, Inc., 320 F. Supp. 2d 84, 89 (S.D.N.Y. 2003) (quoting
Campbell, 510 U.S. at 579); see also MasterCard Int'! Inc. v. Nader 2000 Primary Comm., Inc.,
2004 WL 434404, at *12 (S.D.N.Y. Mar. 8, 2004) ("One such transformative use that is typically
found to be fair use is a parody."); Adjmi, 97 F. Supp. 3d at 534 (finding fair use and describing
secondary work as a "transformative parody" of original work). Treating parodies as
transformative works is logical, for if defendant could control who was permitted to parody the

Grinch and in what manner, the purpose of copyright law would be stifled, not promoted.
For the reasons discussed below, I hold that the Play is a parody of Grinch, and
thus transformative.
i. Parody

"One type of protected creativity is parody, a recognized category of criticism or
comment authorized by Section 107." Adjmi, 97 F. Supp. 3d at 530. "Where the [alleged
infringer's] use is for the purposes of 'criticism, comment ... scholarship, or research,' 17 U.S.C.
§ 107," the first factor "will normally tilt in the [alleged infringer's] favor." NXIVM Corp. v.

Ross Inst., 364 F.3d 471, 477 (2d Cir. 2004); see also Wright v. Warner Books, Inc., 953 F.2d
731, 736 (2d Cir. 1991) ("[T]here is a strong presumption that factor one favors the [alleged
infringer] if the allegedly infringing work fits the description of uses described in section 107. ").
This does not end the inquiry, however, for the Supreme Court has rejected the notion that "any
9

parodic use is presumptively fair." Campbell, 510 U.S. at 581. "Accordingly, parody, like any
other use, has to work its way through the relevant factors, and be judged case by case, in light of
the ends of the copyright law." Id That said, "once a work is determined to be a parody, the
second, third, and fourth factors are unlikely to militate against a finding of fair use." Abilene
Music, 320 F. Supp. 2d at 89.
"The threshold question when fair use is raised in defense of parody is whether a
parodic character may reasonably be perceived." Campbell, 510 U.S. at 582. Adopting
dictionary definitions, the Supreme Court has referred to parody as a "literary or artistic work
that imitates the characteristic style of an author or a work for comic effect or ridicule," or a
"composition in prose or verse in which the characteristic turns of thought and phrase in an
author or class of authors are imitated in such a way as to make them appear ridiculous." Id at
5 80. The "heart of any parodist's claim to quote from existing material, is the use of some
elements of a prior author's composition to create a new one that, at least in part, comments on
that author's works." Id Thus, "the copied work must be, at least in part, an object of the
parody, otherwise there would be no need to conjure up the original work." Rogers v. Koons,
960 F.2d 301, 310 (2d Cir. 1992). "If, on the contrary, the commentary has no critical bearing on
the substance or style of the original composition, which the alleged infringer merely uses to get
attention or to avoid the drudgery in working up something fresh, the claim to fairness in
borrowing from another's work diminishes accordingly (if it does not vanish), and other factors,
like the extent of its commerciality, loom larger. Campbell, 580 U.S. at 580.
The key question I must therefore resolve, is whether the Play comments on
Grinch by imitating and ridiculing its characteristic style for comic effect, or, as defendant
contends, merely exploits the characters, style and themes of Grinch in order "to avoid the

10

r
drudgery in working up something fresh." Id. Defendant argues that the Play "does not poke
fun of the Seussian rhyming style," but instead usurps that style in order to sell a commercial
work. Nor, according to defendant, does the Play comment on or ridicule the characters and
themes of Grinch; it merely "uses Grinch, Cindy-Lou, the Grinch character, and the dog Max as
building blocks for a sequential work, featuring those same characters in the Suess-created
settings of Mount Crumpit and Who-Ville."
Defendant's assessment misses the mark. The Play recontextualizes 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 Grinch, Cindy-Lou's childhood innocence serves as a counterpoint to the
Grinch's deceitful nature and his disdain for joy and happiness. Cindy-Lou is a "small Who"
who was "not more than two," and made a "small sound like the coo of a dove." She asks the
Grinch, "Santy Claus, why, why are you taking our Christmas tree? WHY?" The Grinch tells
her that he is taking the tree to his workshop to repair a broken light, and Cindy-Lou believes his
lie. In the Play, by contrast, Cindy-Lou is depicted as a grown woman. She lives alone in a
poorly maintained trailer, struggles with alcohol and substance abuse, and uses profanity freely
(as long as it still rhymes). She mothered a child with the Grinch, knocked the Grinch off a cliff
after he tried to attack her, and served time in prison as a result. At one point, Cindy-Lou

11

suggests to the audience that she used to put razor blades in apples on Halloween to keep the
children of Who-Ville away from her house.
The Play's version of Who-Ville likewise pokes fun of Grinch's utopic depiction
of Who-Ville. In Grinch, Who-Ville is filled with cheery citizens who love Christmas, have
grand communal feasts, dream "sweet dreams without a care.," and sing joyous songs together as
they "stand hand-in-hand." No problems trouble the residents, who have been blessed with an
indomitably optimistic spirit that not even the Grinch can defeat. In the Play, by contrast, WhoVille is plagued by problems and real-world challenges. The Grinch struggles with
unemployment. Who-Ville's criminal justice system metes out a harsh punishment upon CindyLou following the Grinch's death, from what appears to be lawful self-defense, and Cindy-Lou's
child is placed into foster care. In the Play, Who-Ville is no longer a place where people can
overcome adversity by smiling and singing together. 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 problems of daily life.
In creating these juxtapositions, the Play, rather than trading on the character of
Cindy-Lou Who and the setting of Who-Ville for commercial gain, turns these Seussian staples
upside down and makes their saccharin qualities objects of ridicule. Defendant argues that the
Play's references to the Dr. Seuss song "Fahoo Fores Dahoo Dores" and Grinch's fictional "googoo-gums" and "foo-foo-fluffs" are evidence of improper copying. Not so, for immediately after
she refers to "goo-goo-gums" and "foo-foo-fluffs," Cindy-Lou turns to the audience to comment,
"Whatever the fuck those were."
The Play parodies Grinch also by recontextualizing and subverting the Seussian
rhyming style. For example, during a scene in which Cindy-Lou recounts her time in prison, her

12

cell mate confronts her: "STOP SPEAKING IN RHYME," the cell mate says. "But that's how
all the Whos talk," Cindy-Lou tries to explain. The cell mate shoots back, "You ain't no Who
here! It's time you speak plain!" The cell mate's response makes clear that rhyming is
unsuitable for the real world and invites the audience to contemplate the juxtaposition of
speaking in rhyme and doing prison time. The Play also uses the audience's familiarity with the
Suessian rhyming style to imply vulgar, un-Suessian conclusions to rhymes. Take, for example,
Cindy-Lou's description of a night with the Grinch:
But things started to change when I turned eighteen.
I was becoming a woman. And he? Was still green.
The night of my birthday, he took me alone to the dock.
Where he gave me my present. His big, thick, long The telephone rings.
(Excuse me.)
"The heart of any parody is its evocation of the message or style of the original
work in order to alter that message or style in a way that humorously expresses the author's
opinion of the original work." Abilene Music, 320 F. Supp. 2d at 90. The Play's coarseness and
vulgarity lampoons Grinch by highlighting the ridiculousness of the utopian society depicted in
the original work: society is not good and sweet, but coarse, vulgar and disappointing. Through
clever re-arrangement of the original material, the Play attempts to depict the realities of the
modern world in which we live. The Play would not make sense without evoking the style and
message of Grinch, for there would be no object of the parody. Whether the Play's parody of
Grinch is effective, or in good taste, is irrelevant. See Campbell, 510 U.S. at 569 ("Whether ...
parody is in good taste or bad does not and should not matter to fair use."); Yankee Pub. Inc. v.
News Am. Pub. Inc., 809 F. Supp. 267, 280 (S.D.N.Y. 1992) (Leval, J.) ("First Amendment

13

protections do not apply only to those who speak clearly, whose jokes are funny, and whose
parodies succeed.").
Both the Supreme Court and the Second Circuit have recognized that secondary
works that poke fun at the original work's hokeyness, blandness or seriousness can constitute
parody. In Campbell, for example, the Supreme Court held that a 2 Live Crew song that copied
the Roy Orbison song "Pretty Woman" was parody because it "was clearly intended to ridicule
the white-bread original" by "substituting predictable lyrics with shocking ones ... [that]
derisively demonstrat[e] how bland and banal the Orbison song seems to them." Campbell, 510
U.S. at 582. Similarly, in Leibovitz v. Paramount Pictures Corp., 137 F.3d 109 (2d Cir. 1998),
the Second Circuit found that an advertisement for the movie Naked Gun 33 113: The Final
Insult, which featured the head of Leslie Nielsen superimposed over an iconic photograph of a
pregnant Demi Moore, qualified as parody. "Because the smirking face of Nielsen contrasts so
strikingly with the serious expression on the face of Moore, the ad may reasonably be perceived
as commenting on the seriousness, even the pretentiousness, of the original. The contrast
achieves the effect of ridicule that the Court recognized in Campbell would serve as a sufficient
'comment' to tip the first factor in a parodist's favor." 137 F.3d at 114.
ii. Transformative Use

In assessing whether a secondary work is transformative, the "critical inquiry is

whether the new work uses the copyrighted material itself for a purpose, or imbues it with a
character, different from that for which it was created." McCollum, 839 F.3d at 180. Defendant
argues that the Play is not transformative because it involves the same characters from Grinch,
takes place in the same setting, and incorporates the plot of the original work. That may be true,
but the Play does much more than just insert the characters from Grinch into a dark, updated
setting. By parodying those characters and setting, the Play "adds something new" and "alters
14

the [original] with new expression, meaning, [and] message." Campbell, 510 U.S. at 579. The
Play, as a parody, qualifies as a transformative work. See Abilene Music, 320 F. Supp. 2d at 89
("[D]eciding that the new work is a parody necessarily entails finding that the new work is
transformative. ").

TCA. Television Corp. v. McCollum, 839 F.3d 168 (2d Cir. 2016), in which the
Second Circuit recently rejected a fair use claim, is distinguishable. McCollum concerned a play
in which a character uses a sock puppet to perform, nearly verbatim, a minute-long segment of
the Abbott and Costello routine, Who's on First. The Second Circuit held that this use was not
transformative because there was no explanation why such "extensive copying of a famous
comedy routine was necessary" to the purpose the use served: character development and plot
advancement. Id at 179. This unaltered use of an original work, inserted into a new work for a
purpose entirely disconnected from the original work itself, does not qualify as fair use and is
readily distinguishable from the Play's use of Grinch. Unlike in McCollum, where it was
irrelevant whether the alleged infringer used Who 's on First or some other original work, the
Play's use of Grinch is necessary to the purpose and meaning of the Play; absent that use, much
of the Play's comedy and commentary evaporates.

iii. Commercial Nature of the Allegedly Infringing Work
The first statutory factor also asks "whether such use is of a commercial nature or
is for nonprofit educational purposes." 17 U.S.C. § 107. Although a finding that the secondary
work is of a commercial nature generally weighs against a finding of fair use, the Supreme Court
has made clear that where the work is transformative - that is, the first factor otherwise favors a
finding of fair use - the fact that the work is also commercial is of less importance.
Transformative works "lie at the heart of the fair use doctrine's guarantee of breathing space
within the confines of copyright, and the more transformative the new work, the less will be the
15

significance of other factors, like commercialism, that may weigh against a finding of fair use."
Campbell, 510 U.S. at 579. As the Second Circuit has held, "Congress could not have intended a
rule that commercial uses are presumptively unfair." Cariou, 714 F.3d at 708; see also Blanch,
467 F.3d at 254 (discounting the "secondary commercial nature of the use" since "the new work
is substantially transformative."). Given that the Play' s use of Grinch is transformative, it is of
little significance that the use is also of a commercial nature.

b. Second Fair Use Factor: Nature of the Copyrighted Work
The second fair use factor, the "nature of the copyrighted work," recognizes that
"some works are closer to the core of intended copyright protection than others, with the
consequence that fair use is more difficult to establish when the former works are copied."
Campbell, 510 U.S. at 586. For example, where the original work is fictional rather than factual,
a finding of fair use might be less likely, for the "law generally recognizes a greater need to
disseminate factual works than works of fiction or fantasy." Harper & Row Publishers, Inc. v.
Nation Enterprises, 471 U.S. 539, 563 (1985).
However, the "second factor has rarely played a significant role in the
determination of a fair use dispute." Authors Guild v. Google, Inc., 804 F.3d at 220. Moreover,
"the second factor ... is not heavily weighted in cases involving parodies," as is the case here,
"since any work meriting parody is likely to be both well-known and creative enough to be close
to the core of intended copyright protection." Abilene Music, 320 F. Supp. 2d at 89 (internal
quotation marks omitted). "To quote the Supreme Court, the second factor is not 'ever likely to
help much in separating the fair use sheep from the infringing goats in a parody case, since
parodies almost invariably copy publicly known, expressive works."' Adjmi, 97 F. Supp. 3d at
532 (quoting Campbell, 510 U.S. at 586). Accordingly, although this factor favors defendant
because Grinch is a creative work, I decline to give much weight to this factor in light of the
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Play's parodic nature.
c. Third Fair Use Factor: Amount and Substantiality of Use
"The third statutory factor asks whether 'the amount and substantiality of the
portion used in relation to the copyrighted work as a whole ... are reasonable in relation to the
purpose of the copying."' McCollum, 839 F.3d at 185 (quoting Campbell, 510 U.S. at 586). A
court is to consider "not only 'the quantity of the materials used' but also 'their quality and
importance."' McCollum, 839 F.3d at 185 (quoting Campbell 510 U.S. at 587). "There are no
absolute rules as to how much of a copyrighted work may be copied and still be considered a fair
use," Authors Guild, Inc. v. HathiTrust, 755 F.3d 87, 98 (2d Cir. 2014) (internal quotation marks
and citation omitted), for the "extent of permissible copying varies with the purpose and
character of the use." Id (quoting Campbell, 510 U.S. at 586-87). An "important inquiry is
whether the selection and quantity of the material taken are reasonable in relation to the
purported justification." McCollum, 839 F.3d at 185. The Second Circuit has not been
consistent in explaining whether a secondary user may copy more than is necessary to achieve
his or her objective. Compare Cariou v. Prince, 714 F.3d 694, 710 (2d Cir. 2013) ("[T]he law
does not require that the secondary artist may take no more than is necessary." (citing Campbell,
510 U.S. at 588)), with Authors Guild, Inc. v. HathiTrust, 755 F.3d 87, 98 (2d Cir. 2014) ("The
crux of the inquiry is whether 'no more was taken than necessary."' (quoting Campbell, 510 U.S.
at 589)). It is clear, however, that "the larger volume (or the greater importance) of the original
taken, the less likely the taking will qualify as a fair use." Adjmi, 97 F. Supp. 3d at 533.
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, given that "the parody
must be able to 'conjure up' at least enough of that original to make the object of its critical wit
recognizable." Campbell, 510 U.S. at 588 (citation omitted). Thus, the "Court of Appeals has
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consistently held that a parody under the fair use doctrine is entitled to more extensive use of the
original work than is ordinarily allowed under the substantial similarity test." Adjmi, 97 F. Supp.
3d at 533 (citing Rogers v. Koons, 960 F.2d 301, 310 (2d Cir. 1992)).
Applied here, the Play's use of Grinch is not excessive in relation to the parodic
purpose of the copying. The Play does incorporate substantial elements of Grinch 's characters,
setting, plot, and style but, as plaintiffs have articulated, the Play engages in this "distorted
imitation" in order to mock the original. In the Play, the character of Cindy-Lou serves an
entirely different function than in the original. The Grinch, although referred to throughout the
Play, does not appear as an on-stage character at all. With respect to setting, the Play takes place
in a "silver bullet trailer in the snowy hills of Mount Crumpit," a specific setting absent from the
original Grinch. And, as discussed above, the Who-Ville described in the Play is considerably
different from the Who-Ville depicted in Grinch. Nor does the Play copy or quote any language
from Grinch verbatim. The Play does recount the plot of Grinch, but does so for the purpose of
"conjuring up" the original.
For these reasons, I find that the amount taken from Grinch was "reasonable in
proportion to the needs of the intended transformative use." Estate ofSmith, 2017 WL 2333770,
at* 10.

d. Fourth Fair Use Factor: The Effect On the Potential Market For
the Copyrighted Work
The fourth factor considers "the effect of the use upon the potential market for or
value of the copyrighted work," 17 U.S.C. § 107, and focuses on "whether the secondary use
usurps demand for the protected work by serving as a market substitute." McCollum, 839 F.3d at
186. "The enquiry must take account not only of harm to the original but also of harm to the
market for derivative works." Campbell, 510 U.S. at 590 (internal quotation marks and citation

18

omitted). The question is "whether the copy brings to the marketplace a competing substitute for
the original, or its derivative, so as to deprive the rights holder of significant revenues because or'
the likelihood that potential purchasers may opt to acquire the copy in preference to the original."

Authors Guildv. Google, Inc., 804 F.3d at 223.
Beyond market substitution of the original work, analysis of the fourth factor also
"properly identifies and weighs relevant harm to the derivative market for a copyrighted work,
which market includes uses that creators of original works might license others to develop."

McCollum, 839 F.3d at 186 (internal quotation marks and citation omitted). Although "a court's
focus is not on possible lost licensing fees from defendants' challenged use," a court "properly
considers the challenged use's 'impact on potential licensing revenues for traditional, reasonable,
or likely to be developed markets."' Id. (quoting Am. Geophysical Union v. Texaco Inc., 60 F.3d
913, 930 (2d Cir. 1994)).
Here, there is virtually no possibility that consumers will go see the Play in lieu of
reading Grinch or watching an authorized derivative work, such as the 2000 film Dr. Seuss' How

the Grinch Stole Christmas. Grinch is a children's book intended for an all-ages audience,
whereas the Play is a bawdy, off-color parody of Grinch that is clearly intended for adult
audiences. "As to parody pure and simple, it is unlikely that the work will act as a substitute for
the original, since the two works usually serve different market functions." Campbell, 510 U.S.
at 570-71. 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.
In Mattel, Inc. v. Pitt, 229 F. Supp. 2d 315 (S.D.N.Y. 2002), for example, the
court found that a website featuring images of Barbie dolls wearing sadomasochistic costumes

19

and engaging in sexually explicit acts would not "pose any danger of usurping demand for
Barbie dolls in the children's toys market" because the "sale or display of' adult' dolls does not
appear to be a use Mattel would likely develop or license others to develop." 229 F. Supp. 2d at
318; see also CCA & B, LLCv. F + W Media Inc., 819 F. Supp. 2d 1310, 1323 (N.D. Ga. 201 I)
(finding fair use in part because "it is highly unlikely that consumers will choose an
inappropriate-for-children parody in lieu of the wholesome" original work). It is true, as
defendant argues, that some fans of Grinch may be drawn to the Play because of its content.
However, given the Play's clear parodic qualities, it is far more likely that this potential
crossover will increase interest in Grinch, as opposed to usurp the market for it. Conversely, to
the extent the Play causes fans of Dr. Seuss to abandon the original work altogether, such a
concern is irrelevant, for the court's "concern is not whether the secondary use suppresses or
even destroys the market for the original work or its potential derivatives, but whether the
secondary use usurps the market of the original work." NXIVM Corp., 364 F.3d at 482.
Nor is it likely that the Play will have any impact on potential licensing
opportunities for derivative works in defendant's "traditional, reasonable, or likely to be
developed markets," McCollum, 839 F .3d at 186 (citation omitted), for the "market for potential
derivative uses includes only those that creators of original works would in general develop or
license others to develop." Campbell, 510 U.S. at 592. Defendant alleges that the Play will
cause harm to its licensing market for derivative works and that it has previously authorized a
number of Grinch derivative works that expanded on the character of Cindy-Lou Who and
included "themes and jokes aimed at adult audiences."

Counterclaims~~

18, 33. But even

accepting these allegations as true, as I must on a motion for judgment on the pleadings,
defendant makes no allegations that it intends to authorize a parody containing references to

20

bestiality, drug use, and other distinctly "un-Seussian" topics. See Campbell, 510 U.S. at 592
("[T]he unlikelihood that creators of imaginative works will license critical reviews or lampoons
of their own productions removes such uses from the very notion of a potential licensing
market.").
Thus, the fourth factor weighs strongly in favor of a finding of fair use, and in
considering all of the four factors together, I hold that the Play constitutes fair use.

III.

Counterclaims

In addition to copyright infringement claims, which are dismissed in light of my
fair use finding, defendant also asserts three claims sounding in trademark: (i) false association
and unfair competition in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (ii)
unfair competition under New York common law; and (iii) trademark dilution under New York
General Business Law Section 360-L. N.Y. Gen. Bus. Law§ 360-1. As relevant to this
litigation, defendant alleges trademarks in (i) the characters of the Grinch and Cindy-Lou Who;
(ii) the stylized hand-lettering used consistently throughout Dr. Seuss books; and (iii) certain
drawn images of Cindy-Lou Who.

Counterclaims~

20.

Conflict between the First Amendment and the law of trademark "is inevitable in
the context of parody, because the keystone of parody is imitation." Cliffs Notes, Inc. v. Bantam

Doubleday Dell Pub. Grp., Inc., 886 F.2d 490, 494 (2d Cir. I 989). In this Circuit, courts are to
apply a balancing test to resolve the conflict between these interests: the Lanham Act "should be
construed to apply to artistic works only where the public interest in avoiding consumer
confusion outweighs the public interest in free expression." Rogers v. Grimaldi, 875 F.2d 994,
999 (2d Cir. I 989). In Cliffs Notes, the Second Circuit elaborated on the Rogers balancing test in
the context of parody, noting that the test "allows greater latitude for works such as parodies, in
which expression, and not commercial exploitation of another's trademark, is the primary intent,
21

and in which there is a need to evoke the original work being parodied." 866 F.2d at 495.
"Thus, where the unauthorized use of a trademark is for expressive purposes of comedy, parody,
allusion, criticism, news reporting, and commentary, the law requires a balancing of the rights of
the trademark owner against the interests of free speech." Yankee Pub. Inc. v. News Am. Pub.
Inc., 809 F. Supp. 267, 276 (S.D.N.Y. 1992).
With respect to plaintiffs' use of the characters of the Grinch and Cindy-Lou
Who, which are integral to the Play, I hold 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. See Louis Vuitton Malletier, SA. v. My Other Bag,
Inc., 156 F. Supp. 3d 425, 443 (S.D.N.Y. 2016) (hand bag that was an ''obvious parody" of the
original Louis Vuitton luxury bag presented no likelihood of confusion).
Plaintiffs' alleged use of Dr. Seuss-style hand-lettering and the drawn images of
Cindy-Lou Who presents a closer question, for these trademarks do not appear in the Play, but
are instead alleged to have been used in connection with advertising for the Play and other
promotional materials.

Counterclaims~

29. Nevertheless, they serve plaintiffs' parodic purpose,

for as the Second Circuit recognized in Cliffe Notes, a parodic work must necessarily evoke
elements of the original work, including trademarked elements, in order to communicate the
object of the parody. "It is hard to imagine, for example, a successful parody of Time magazine
that did not reproduce Time's trademarked red border." Cliffe Notes, 886 F.2d at 494. So too
here, it is hard to imagine a parody of a Dr. Seuss book that did not deploy the characteristic
typeface associated with Dr. Seuss' most well-known books, or a parody of Cindy-Lou Who that
omitted images of that character. The public's interest in free speech outweighs defendant's
interest in protecting these trademarks.

22

Normally, the strength of defendant's marks would point to a likelihood of
confusion. However, "[w]here the plaintiffs mark is being used as part of a jest or commentary,
the opposite can be true." Yankee Pub. Inc., 809 F. Supp. at 273. This is because the "strength
and recognizability of the mark may make it easier for the audience to realize that the use is a
parody and a joke on the qualities embodied in trademarked word or image." Tommy Hilfiger
Licensing, Inc. v. Nature Labs, LLC, 221 F. Supp. 2d 410, 416 (S.D.N.Y. 2002) (internal
quotation marks and citation omitted). Thus, "taking into account that somewhat more risk of
confusion is to be tolerated when a trademark holder seeks to enjoin artistic expression such as a
parody," I hold that the risk of confusion in this context "does not outweigh the well-established
public interest in parody." Cliffs Notes, 886 F.2d at 495. 1
Defendant's state law unfair competition and trademark dilution claims are
dismissed for the same reasons. See Kregos v. Associated Press, 795 F. Supp. 1325, 1336
(S.D.N.Y. 1992) ("[T]he standards for§ 43(a) claims under the Lanham Act and unfair
competition claims under New York law are virtually the same."); Charles Atlas, Ltd. v. DC
Comics, Inc., 112 F. Supp. 2d 330, 341(S.D.N.Y.2000) (finding risk of confusion "clearly
outweighed by the public interest in parodic expression" and dismissing state law trademark
dilution and unfair competition claims "because they are based on the same permissible
conduct."); Yankee Publishing, 809 F.Supp. at 282 (finding that the "same First Amendment
considerations that limit a cause of action under the Lanham Act apply also to a cause of action
under New York law.").

1
In light of this holding, I need not work through the "likelihood of confusion" factors established in Polaroid v
Polared Elecs. Corp, 287 F.2d 492 (2d Cir. 1961). As articulated in Cliffs Notes, "the Polaroid test is at best
awkward in the context of parody, which must evoke the original and constitutes artistic expression." 886 F.2d at
497 n.3

23

CONCLUSION
For these reasons, plaintiffs' motion for judgment on the pleadings and dismissal
of defendant's counterclaims is granted. The Clerk shall terminate the motion, and all related
motions (Dkt. Nos. 44, 48). The Play constitutes fair use and does not infringe defendant's
copyright in Grinch. The Clerk shall enter judgment granting judgment to plaintiffs and
dismissing the counterclaims, and shall tax costs in favor of plaintiffs. The Clerk shall mark the
case closed.
SO ORDERED.
Dated:

;fe:1

September
New York, New York
United States District Judge

24