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IP/Entertainment Case Law Updates

Lombardo v. Dr. Seuss Enterprises L.P.

Second Circuit in summary order affirms district court’s judgment granting plaintiff’s request for declaration that play “Who’s Holiday!” was protected fair use and did not infringe defendant’s copyright in Dr. Seuss’ classic children’s book How the Grinch Stole Christmas!, and that title of play did not infringe defendant’s trademark.

Plaintiffs Matthew Lombardo and Who’s Holiday Limited Liability Co. sought a declaration that the play “Who’s Holiday!” is protected by fair use and does not infringe on copyright and trademark interests of Dr. Seuss Enterprises L.P. in Dr. Seuss’ classic children’s book How the Grinch Stole Christmas!. The district court granted a declaratory judgment in favor of Lombardo, finding that “Who’s Holiday!” is a parody and constitutes transformative fair use, dismissing DSE’s copyright and trademark infringement counterclaims. (Read our summary of the district court’s decision here.) The Second Circuit affirmed.

In determining whether a particular work is protected by fair use, the court considered four nonexclusive factors: “(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.” The court held that the first factor weighs in favor of Lombardo because the play is a parody, and a parody has transformative value. In doing so, the court found that the play imitates “the style of the Grinch for comedic effect and to mock the naïve, happy world of the Whos.” The court found that the district court properly accorded the second factor, the nature of the copyrighted work, little weight because it is rarely useful in evaluating parodies, considering that they “almost invariably copy publicly known, expressive works.” The court held that the district court properly weighed the third factor in favor of Lombardo because while the play “does use the Grinch’s characters, setting, plot, and style, it is in service of the parody . . . and does not copy verbatim or quote from the original book, and while it does recount the plot, it does so to invoke the original.” As to the fourth factor, “[t]he enquiry must take account not only of harm to the original but also of harm to the market for derivative works.” The court found that there was little likelihood of harm to the original or derivative market for the Grinch, and thus, the fourth factor weighs in favor of Lombardo. Considering that all four factors weigh in favor of Lombardo, the court affirmed the district court’s finding that the play is fair use of the Grinch.

After considering the balancing test in Rogers v. Grimaldi, the court held that the district court properly dismissed the trademark counterclaims because the public’s interest in free speech outweighs DSE’s interest in protecting its trademarks, and Lombardo evoked elements of the original work to serve his parodic purpose.

Summary prepared by Jonathan Zavin and Ava Badiee

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