279 F.Supp.3d 497
S.D.N.Y.2017Background
- Plaintiffs Matthew Lombardo and Who's Holiday LLC wrote and sought to produce Who's Holiday, a 75-minute one-woman play that reimagines Cindy-Lou Who as a profane, adult, hard-luck narrator who parodies the plot, characters, setting, and Seussian rhyming style of Dr. Seuss's How the Grinch Stole Christmas! ("Grinch").
- Dr. Seuss Enterprises owns the copyright in Grinch and trademarks in characters, Seuss-style hand-lettering, and certain images of Cindy-Lou Who; it sent cease-and-desist letters and then filed counterclaims for copyright and trademark infringement.
- Plaintiffs sued for a declaratory judgment of noninfringement (fair use) and moved for judgment on the pleadings under Rule 12(c); defendant opposed discovery but the court allowed the Rule 12(c) motion to test fair use.
- The Play uses recognizable Grinch elements (characters, setting, rhyming) but transforms them into adult-themed satire (sex, drugs, poverty, prison, death) that explicitly lampoons the original’s innocence and tone.
- The court conducted a side-by-side comparison, applied the four fair-use factors, held the Play is a transformative parody constituting fair use, and dismissed the copyright and trademark counterclaims.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the Play is fair use of Grinch (copyright) | Lombardo: Play is a parody that transforms Grinch by ridiculing its style and message; thus fair use. | Dr. Seuss Ent.: Play merely exploits characters/style for commercial gain and does not meaningfully comment on Grinch. | Held for plaintiffs: Play is a transformative parody and fair use. |
| Whether discovery is required before resolving fair use on Rule 12(c) | Lombardo: No; courts may decide fair use pre-discovery by side-by-side comparison of works. | Dr. Seuss Ent.: Discovery (drafts, promotions, depositions) needed to resolve intent and use. | Held for plaintiffs: No discovery required; side-by-side comparison suffices. |
| Whether amount/substantiality of copying is excessive for parody | Lombardo: Use of characters/plot/style is reasonable and necessary to "conjure up" original for parody. | Dr. Seuss Ent.: Play copies substantial elements and therefore is excessive. | Held for plaintiffs: Quantity/quality taken is reasonable for parodic purpose. |
| Whether trademark claims survive given parodic use | Lombardo: Parody is protected; public interest in free expression outweighs confusion risk. | Dr. Seuss Ent.: Use of character marks and Seuss-style lettering causes likelihood of confusion and dilution. | Held for plaintiffs: Rogers balancing favors expressive parody; trademark, unfair competition, and dilution claims dismissed. |
Key Cases Cited
- Campbell v. Acuff-Rose Music, 510 U.S. 569 (1994) (establishes parody and transformative-use principles and the four-factor fair-use framework)
- Cariou v. Prince, 714 F.3d 694 (2d Cir. 2013) (endorses resolving fair use by side-by-side visual comparison and emphasizes reasonable observer perspective)
- TCA Television Corp. v. McCollum, 839 F.3d 168 (2d Cir. 2016) (rejects fair-use defense where extensive verbatim copying wasn’t necessary to purpose)
- Rogers v. Koons, 960 F.2d 301 (2d Cir. 1992) (parody must target the original to justify substantial copying)
- Cliffs Notes, Inc. v. Bantam Doubleday Dell Publ. Grp., Inc., 886 F.2d 490 (2d Cir. 1989) (applies Rogers balancing for parody in trademark context; protects expressive uses against Lanham Act claims)
- Abilene Music, Inc. v. Sony Music Entm’t, Inc., 320 F. Supp. 2d 84 (S.D.N.Y. 2003) (parody has transformative value and can favor fair use)