If you still aren’t convinced that lawsuits are lengthy and expensive process, you’ll be surprised to find that the case we focus on in today’s post started back with the complaint filed in 2016.
Back in 2016, Dr. Seuss Enterprises sent a cease-and-desist to the creators and marketers of “Who’s Holiday!”, an unauthorized parody spin-off of Dr. Seuss’ iconic “How The Grinch Stole Christmas.” The play in question, written by Matthew Lombardo, featured a forty-five year-old Cindy Lou Who telling stories from her life, spanning from her initial adventures with the Grinch to her current struggles with middle-age after growing up in Whoville.
Instead of responding to the cease-and-desist letters, Who’s Holiday LLC and Lombardo filed a lawsuit against Dr. Seuss Enterprises LLC, claiming that “Who’s Holiday!” was an unauthorized yet permissible use under the fair use exception in Section 107 of the Copyright Act. The complaint sought a declaratory judgment in hopes that the court would allow the use of Dr. Seuss’s work (including his characters and the concept of the original stories) in “Who’s Holiday!” Additionally, the complaint alleged that Dr. Seuss Enterprises LLC was liable for tortious interference with business relations, seeking to get the associated damages resulting from the cease-and-desist letters from Dr. Seuss Enterprises LLC.
Unsurprisingly, Dr. Seuss Enterprises LLC fought back. In its motion to dismiss the case (which did not rhyme), it argued that the complaint failed to establish any of the related damages that the parties sought. Additionally, it asserted that this was an issue of legitimate cease-and-desist letters and an unresponsive party, noting that it was simply an undisputed copyright holder seeking to assert its rights and prevent unauthorized use of its work.
This case has gone through quite a bit since its initial filing in 2016. In September 2017, the U.S. District Court for the Southern District of New York granted Lombardo and Who’s Holiday LLC’s declaratory judgment, deciding that “Who’s Holiday!” did not infringe Dr. Seuss Enterprises LLC’s copyright and trademark interests in “How the Grinch Stole Christmas.” In an effort to protect its interests (and apparently get a second point of view), Dr. Seuss Enterprises LLC appealed the judgment to the Second Circuit.
In what seems to be celebration of Christmas (and fair use) in July, the Second Circuit determined that the show must go on; according to the court, “Who’s Holiday!” is protected fair use. The Second Circuit looked to the district court’s holding and, after evaluating each of the four fair use factors, it affirmed that “Who’s Holiday!” was a permissible parody.
First, the court found that the district court correctly determined that “Who’s Holiday!” was a transformative parody, finding that the play “[imitated] the style of the Grinch for comedic effect and to mock the naïve, happy world of the Whos.” Secondly, the court looked to the factor of whether the original work was a creative one, finding that the district court appropriately gave this factor little weight in its analysis as many works that are utilized in transformative parodies are creative and original.
Third, the court looked to the amount and substance used of the original work. While “Who’s Holiday!” naturally used material from Grinch, including characters, setting, plot, and style, it was in service of the parody. Importantly, “Who’s Holiday!” did not serve to copy verbatim or quote anything from the original books or stories; instead, it used these original creative elements in order to get the point of parody across. Finally, the Court determined that the district court was correct in finding that there was little likelihood of harm to the market for Dr. Seuss books or the market for other derivative works.
Additionally, the Second Circuit agreed with the district court’s determination that the public’s interest in free speech outweighed Dr. Seuss Enterprises LLC’s interest in protecting its trademarks. This was especially influenced by the fact that “Who’s Holiday!” was determined to be a strong parody.
This decision, while short and sweet just like a Dr. Seuss book itself, is a pretty good win for fair use. Those who are interested in creating derivative works, however, should keep one thing in mind: fair use isn’t an easy argument to make. As seen here, Dr. Seuss Enterprises and Who’s Holiday were in this legal battle for two years. That’s a long time to put everything on hold– especially when it comes to the release of the work itself. It’s also important to note that, should it see fit, Dr. Seuss Enterprises LLC may be interested in appealing this one to an even higher court.
Author, Caroline Womack, is a rising 3L at Quinnipiac University School of Law and primarily studies intellectual property law, focusing on video game and internet law.