When Dr. Zeuss created his fantastical, rhyming work How the Grinch Stole Christmas (Grinch), his fertile imagination undoubtedly did not envision that the Grinch himself would some day be lifted (albeit not through the chimney) into a bawdy, alleged parody. But whether Who's Holiday (the Play) fairly used (even while abusing) Grinch, or instead infringed the copyright in Grinch, was the question presented to U.S. District Judge Alvin K. Hellerstein of the Southern District of New York in a declaratory judgment action brought by the author and producer of the Play. Dr. Seuss Enterprises (DSE) filed counterclaims for copyright infringement, trademark infringement, trademark dilution and unfair competition. In a Sept. 15, 2017 opinion in Lombardo v. Dr. Seuss Enterprises, 2017 WL 4129643 (S.D.N.Y. 2017), Judge Hellerstein upheld the fair use defense and dismissed the copyright infringement and other counterclaims with prejudice.

The Works at Issue

How the Grinch Stole Christmas: Written and illustrated in 1957 by the incomparable Theodor Seuss Geisel under his pen name, Dr. Seuss, Grinch tells the story of a curmudgeonly, green creature, the Grinch, who lives in isolation in a cave on Mount Crumpit outside the very merry town of Who-Ville. The Grinch, sick and tired of the unrelenting Christmas cheer he has had to put up with for 53 years, endeavors to remove all traces of Christmas from Who-Ville. Notwithstanding his Grinchian efforts, he ultimately surrenders to the indomitable Christmas spirit of the joyful citizens of Who-Ville and joins in their celebration.

With malice aforethought and a Santa Clause disguise, the Grinch descends on Who-Ville in a homemade sleigh with his antler-enhanced dog Max. He then proceeds to squeeze down the chimney of every Who-Ville house and to abscond with every Christmas present, tree, decoration and delicacy in the town. But as he travels back to his hilltop home, ready to throw his bounty off the cliff, the sound of joyful Christmas carols causes him to reconsider his long-felt resentment of the holiday. Realizing that the citizens of Who-Ville love the spirit of Christmas independently of its commercial manifestations, he returns their yuletide possessions and, as the story ends, is pictured gleefully carving roast beef at their Christmas dinner, echoing, perhaps, the end of the far more grueling journey made by one Ebenezer Scrooge in an earlier time.

Except for the Grinch, the only other characters appearing by name in Grinch are the aforementioned Max, and Cindy-Lou Who, an adorable two-year old girl who awakens while the Grinch is ransacking her home and asks why he is taking the Christmas tree. The Grinch responds that he has to repair a light on the tree, and Cindy-Lou returns to her blissful sleep. That brief appearance is all there is of Cindy-Lou in Grinch.

With delightfully rhyming verses and wonderfully whimsical illustrations, Grinch is one of the best-selling and most beloved children's books of all time. It has been published in many editions and formats and licensed for use in a wide range of derivative works, including movies, animated versions, digital applications, musicals, television specials and, since 2008, a traveling Grinch stage show.

Who's Holiday!: As described by Judge Hellerstein, “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.” Lombardo, 2017 WL 4129643, at *1. The setting is Cindy-Lou's trailer, located on Mount Crumpit above a town called Who-Ville, whose Whos are beset by bleakness. While waiting for her Christmas dinner guests to arrive (all of whom cancel), Cindy-Lou regales the audience with unremittingly sorry tales of life with the Grinch, including an unwanted pregnancy, sexual harassment, physical abuse, poverty and (perhaps) accidental death, all of which is arguably intended to evoke laughter when contrasted with Grinch's good cheer. Although the Grinch himself never appears in the Play, he is a central character in Cindy-Lou's story, which is spoken “only in rhyming couplets … clearly intended to evoke the work of Dr. Seuss.” Id. Unlike the brief appearance of two-year old Cindy-Lou Who in Grinch, the Play's grown-up version of Cindy-Lou is both its central character and the only one actually seen in the Play. She begins her tale by describing, as in the original Grinch, her encounter with the Grinch at the age of two and his awakening to the Christmas spirit after having tried to destroy it. From there it is all downhill, as Cindy-Lou, in unladylike language, recounts her life story, including her alcohol and drug abuse, promiscuity, and imprisonment.

In the Play, there is no happy ending for the Grinch who, after many years of unhappy marriage to Cindy-Lou, plunges to his death in a cliff-side struggle with her. After that, Cindy-Lou is imprisoned and the child she had with the Grinch is put into foster care. The Grinch's dog Max fared no better; after Max froze to death on Mount Crumpit, Cindy-Lou served him for dinner. Readers enticed to read the full version of the Play may find the script in Exhibit 1 to the Amended Complaint. 16 Civ. 9974 (S.D.N.Y.), Docket Entry No. 30-1.

The Court's Fair Use Analysis

After his detailed comparison of the works, Judge Hellerstein applied the four nonexclusive fair use factors set forth in §107 of the Copyright Act, which provides, inter alia:

[T]he fair use of a copyrighted work, including … for purposes such as criticism, comment, news reporting, teaching … scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include—
(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 … .

Finding the Play to qualify as both a parody and a “transformational” work, he weighed the first factor (purpose and character of the use) heavily in favor of fair use. These findings reverberated in his subsequent findings that the third (substantiality of the taking) and fourth (potential market impact) factors weighed in favor of fair use. Although the second factor (nature of the original work) weighed against fair use, this factor is generally given less weight than the others. It also has less importance when a claimed fair use involves a parody, which often references a well-known work. Based on his analysis and overall balancing of the fair use factors, Judge Hellerstein concluded that the Play made fair use of Grinch.

Parody and Transformational Use: In characterizing the Play as a parody of Grinch, Judge Hellerstein observed:

The Play recontextualizes Grinch's easily-recognizable plot and rhyming style by placing Cindy-Lou Who—a symbol of childhood innocence and naiveté—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 naiveté, Who-Ville's endlessly-smiling, problem-free citizens, and Dr. Seuss' rhyming innocence, all appear ridiculous.

Lombardo, 2017 WL 4129643, at *5.

He therefore answered in the affirmative the “threshold question when fair use is raised in defense of parody”—“whether a parodic character may reasonably be perceived.” Id. (quoting Campbell v. Acuff-Rose Music, 510 U.S. 569, 582 (1994)) (internal quotation marks omitted). He also noted that a parody, as a form of comment and criticism, is one of the favored fair use categories set forth in §107. This characterization went a long way toward resolving the first factor. As the court noted, the purpose and character of the use “is the heart of the fair use inquiry,” and the first factor will usually weigh in favor of fair use when the use is “transformative.” Lombardo, 2017 WL 4129643, at *4 (internal citations and quotation marks omitted). In determining whether a use is transformative, the central inquiry is “'whether the new work merely “supersede[s] the objects” of the original creation, … ('supplanting' the original), or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message … .'” Id. (quoting Campbell, 510 U.S. at 579). Judge Hellerstein characterized the Play as a transformative work because “[d]eciding that the new work is a parody necessarily entails finding that the new work is transformative.” Id. (quoting Abilene Music v. Sony Music Entm't, 320 F. Supp. 2d 84, 89 (S.D.N.Y. 2003)).

Factors Three and Four: On the third factor, Judge Hellerstein noted that there are no hard and fast rules regarding how much can be taken; that the “selection and quality of the material taken [must be] reasonable in relation to the purported justification” (Id., at *8 (quoting Campbell, 510 U.S. at 588)); and that somewhat more leeway is given to parodies which “'must be able to 'conjure up' at least enough of th[e] original to make the object of its critical wit recognizable.'” The court found that the Play met these criteria, and therefore weighed factor three in favor of fair use.

As to the fourth factor (potential market impact of the use), Judge Hellerstein observed that “there is virtually no possibility that consumers will go see the Play in lieu of reading Grinch or watching an authorized derivative work.” Id., at *9. Nor was DSE likely to license Grinch for an adult-themed and licentious derivative work. He therefore balanced this factor strongly in favor of fair use.

With only the least important second factor favoring Grinch, the overall balance sharply favored fair use. The Play will now be able to test itself in the marketplace, subject to appeal.

Conclusion

It would not be exaggerating to say that the Grinch, in a far lighter context, has become as iconic as Ebenezer Scrooge in representing the possibility of a merry Christmas even for diehard naysayers. However, Grinch's iconic status did not work in its favor under the fair use analysis because an effective parody must to some extent conjure up easily recognizable elements in the original work. Whether the Play goes too far in its use in its use of Grinch will next be addressed on appeal. In its inquiry, the Second Circuit, like the District Court, will take pains to be unaffected by the Play's quality, tone or adult-oriented themes.

Robert J. Bernstein practices law in The Law Office of Robert J. Bernstein. Robert W. Clarida is a partner at Reitler, Kailas & Rosenblatt and author of the treatise Copyright Law Deskbook (BNA).