District court holds that “Who’s Holiday!” — a dark and vulgar theatrical play about grown-up version of character from Dr. Seuss’ children’s book How the Grinch Stole Christmas! — is transformative parody protected by fair use.

Plaintiff Matthew Lombardo sought a declaration that his play “Who’s Holiday!” is protected by fair use and does not infringe the copyright in Dr. Seuss’s classic children’s book How the Grinch Stole Christmas! Concluding that “Who’s Holiday!” is a parody and therefore transformative fair use, the court granted Lombardo’s motion for judgment on the pleadings and also dismissed defendant’s copyright and trademark infringement counterclaims.

How the Grinch Stole Christmas! is a children’s book about a green, furry creature who lives in a cave on a mountain and despises Christmas. The Grinch hatches a plan to destroy Christmas for the “Whos,” the cheerful, Christmas-loving denizens of Whoville, by donning a Santa Claus disguise and stealing all their Christmas presents, trees and decorations. In carrying out his scheme, the Grinch meets Cindy-Lou Who, a two-year-old girl who asks why the Grinch is taking her Christmas tree. The Grinch tells Cindy-Lou he needs to fix a light on the tree and will return it, and the naïve Cindy-Lou goes back to sleep. The next day, instead of hearing crying Whos, the Grinch is surprised to hear the sound of the Whos singing. Realizing that the Whos are celebrating Christmas without presents or Christmas trees, the Grinch’s heart grows “three sizes that day,” and he returns everything he stole from Whoville and joins the Whos for a Christmas feast.

“Who’s Holiday!” is a 75-minute, one-woman comedic play, set in a poorly maintained trailer, featuring a 45-year-old, down-on-her-luck Cindy-Lou Who, who drinks alcohol, abuses prescription drugs and smokes “Who Hash.” The play is composed almost entirely of rhyming couplets. As Cindy-Lou waits for guests to arrive at her Christmas party, she tells the audience her life story, beginning with her introduction to the Grinch at age two and moving on to age-inappropriate language and plot details, including a sexual encounter with the Grinch at age 18, the birth of their child, unemployment, lack of health care and hunger. After Cindy-Lou cooks the Grinch’s dog, Max, and serves it to him, the Grinch attempts to harm Cindy-Lou and accidentally falls off a cliff to his death. Cindy-Lou is arrested and convicted of murder, and her daughter is placed in foster care. At the end of the play, Cindy-Lou realizes she can still celebrate Christmas without party guests, and her daughter appears at her door.

As an initial matter, the court rejected defendant’s argument that discovery was necessary to resolve the issue of fair use, observing that numerous courts had addressed fair use on a motion for judgment on the pleadings by conducting a side-by-side comparison of the two works. The issue, according to the court, was how the works appear to the “reasonable observer” — not whether an artist might label his work a parody.

In determining whether “Who’s Holiday!” was protected by fair use, the court applied the four statutory fair-use factors, placing particular emphasis on the first factor — the transformative (parodic) nature of “Who’s Holiday!”

On the first factor, the purpose and character of the use, the court addressed the central question of whether “Who’s Holiday!” is a parody and thus transformative. The court reasoned that treating parodies as transformative works is “logical,” because permitting an author to control who can parody his or her work would stifle the purpose of copyright law. The issue was whether “Who’s Holiday!” comments on Grinch “by imitating and ridiculing its characteristic style for comic effect” or simply exploits Grinch “to avoid the drudgery in working up something fresh.” The defendant argued that “Who’s Holiday!” merely uses the characters from Grinch “as building blocks for a sequential work.” The court disagreed, concluding that the play instead “recontextualizes” Grinch by placing the innocent, naïve figure of Cindy-Lou into “outlandish, profanity-laden, adult-themed scenarios involving topics such as poverty, teen-age pregnancy, drug and alcohol abuse, prison culture, and murder,” thereby subverting “the expectations of the Seussian genre” and lampooning Grinch by making Cindy-Lou’s naïveté and the “problem-free citizens” of Whoville seem ridiculous. The court also noted that “Who’s Holiday!” pokes fun at the “utopian depiction of Who-Ville” presented in Grinch. While the citizens of Whoville “overcome adversity by smiling and singing together” in Grinch, in “Who’s Holiday!” they instead struggle and get high on Who Hash to escape their problems. Through these juxtapositions, the court reasoned, “Who’s Holiday!” “turns these Seussian staples upside down and makes their saccharin qualities objects of ridicule.”

“Who’s Holiday!” also makes use of the audience’s familiarity with Seussian rhyme to imply vulgar conclusions to the couplets in the play. The play’s “coarseness and vulgarity” lampoons Grinch by emphasizing the absurdity of the utopian Whoville of the original work. Ultimately, the court reasoned, the play would “not make sense without evoking the style and message of Grinch, for there would be no object of the parody.” Distinguishing a Second Circuit case holding that a minute-long use of a segment of the Abbott and Costello routine “Who’s on First?” was not a fair use, the court noted that, unlike that case, the use of the Grinch in the instant case “is necessary to the purpose and meaning of the [p]lay” and “absent that use, much of the [p]lay’s comedy and commentary evaporates.”

Although “Who’s Holiday!” is a commercial work, that fact is of “less importance” where the work is transformative. Because the use in “Who’s Holiday!” of Grinch is transformative, the court concluded “it is of little significance” that the use is commercial.

The court declined to give “much weight” to the second fair-use factor — the nature of the copyrighted work — reasoning that although the factor weighed against a finding of fair use (because Grinch is a creative work), it “has rarely played a significant role in the determination of a fair use dispute” and is not “heavily weighted in cases involving parodies.”

On the third fair-use favor, the amount and substantiality of the use, the court concluded that the play’s use of Grinch “is not excessive in relation to the parodic purpose of the copying.” Courts have recognized that the parodist is entitled to “more extensive use” of the original because the parody must sufficiently “conjure up the original” in order for the object of the parody to be recognizable. In any event, the court noted, the Grinch does not appear on stage in “Who’s Holiday!” at all, nor does the play copy or quote verbatim any language from the Grinch.

Finally, the court determined that the fourth fair-use factor — the effect on the potential market for or value of the copyrighted work — weighed strongly in favor of fair use. First, there was “virtually no possibility” that the public would attend the play instead of reading Grinch or watching an authorized derivative work, because Grinch is a children’s book appropriate for all ages, while “Who’s Holiday!” is a “bawdy, off-color parody of the Grinch that is clearly intended for adult audiences.” The court found that it was “unreasonable to assume” that the public would confuse “Who’s Holiday!” with a theatrical version of Grinch or that the play would “usurp the market” for the original, finding that it was much more likely that the play would “increase interest” in Grinch.

The court also dismissed defendant’s federal and state trademark counterclaims, holding that in this case, the public interest in free expression “clearly outweighs any interest in avoiding consumer confusion” and, moreover, the likelihood of consumer confusion is “extremely minimal” in light of the parodic quality of “Who’s Holiday!” Although the use of Seussian hand-lettering and images of Cindy-Lou in promotional materials for the play presented “a closer question,” ultimately that use served the parodic purpose of the play, because a parodic work “must necessarily evoke elements of the original work, including trademarked elements” in order to communicate the object of the parody.