As soon as Halloween passes, it seems, Dr. Seuss’ Grinch starts to appear, trying to steal Christmas. There’s the classic TV cartoon version, the movie version starring Jim Carrey, the Broadway musical version, and for 2018, another animated movie version, this one featuring Benedict Cumberbatch as the voice of the Grinch.

A Grinch story of a different sort led to litigation in the Southern District of New York. Who’s Holiday, LLC produced a play called, fittingly enough, Who’s Holiday. A one-woman play, Who’s Holiday “featur[ed] a rather down-and-out 45 year-old version of Cindy-Lou Who.” Matthew Lombardo and Who’s Holiday LLC v. Dr. Seuss Enterprises, L.P., 279 F. Supp.3d 497, 503 (S.D.N.Y. September 15, 2017). In sharp contrast to the adorable Cindy-Lou Who from Dr. Seuss’ tale, this version of the character “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.’” Id. Nice rhyming, right?

Not surprisingly, Dr. Seuss Enterprises was not amused. After it sent cease-and-desist letters to Who’s Holiday LLC alleging copyright and trademark infringement, the production company filed a DJ action seeking a declaration that Who’s Holiday constitutes fair use. On a motion for judgment on the pleadings under Fed. R. Civ. P. Rule 12(c), the district court ruled that the play is a parody of How the Grinch Stole Christmas! and, therefore, transformative – which qualified it as fair use under the Copyright Act, 17 U.S.C. § 107. Id. at 506-510.

Dr. Seuss Enterprises asserted trademarks in, among other things, the characters of the Grinch and Cindy-Lou Who. The district court, balancing the interests protected by the First Amendment and the Lanham Act held that “the public interest in free speech expression clearly outweighs any interest in avoiding consumer confusion, the likelihood of which is extremely minimal given the parodic nature of the Play.” Id. at 513-514. Despite the fame of the Dr. Seuss characters and story – or, more accurately, because of that fame – the risk of confusion did not outweigh the public interest: “the ‘strength and recognizability of the mark may make it easier for the audience to realize that the use is a parody . . .’” Id. at 514.

The Second Circuit affirmed the district court in a Summary Decision. (Case No. 17-2952-cv, July 6, 2018.)