Case 1:16-cv-09974-AKH Document 53 Filed 09/15/17 Page 1 of 24
`llSDCSDNY
`DOCUMENT
`~LECTRONICALLY FILED
`DOC#:
`DATE F=n-~E-D:---:;:-9._,./t;...· ~_,z1-· 17-
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
`-------------------------------------------------------------- x
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`MATTHEW LOMBARDO AND WHO'S
`HOLIDAY LLC,
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`Plaintiffs,
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`V.
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`DR. SEUSS ENTERPRISES, L.P.,
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`OPINION AND ORDER
`GRANTING DECLARATORY
`JUDGMENT FOR PLAINTIFFS
`AND DISMISSING
`DEFENDANT'S
`COUNTERCLAIMS
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`Defendants.
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`16 Civ. 9974 (AKH)
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`-------------------------------------------------------------- x
`ALVIN K. HELLERSTEIN, U.S.D.J.:
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`Plaintiff Matthew Lombardo is the author of Who 's Holiday! (the "Play"), a
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`comedic play that makes use of the characters, plot, and setting of the Dr. Seuss book, How the
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`Grinch Stole Christmas! ("Grinch"), to make fun of it and to criticize its qualities, i.e., to parody
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`it. Plaintiffs Lombardo and Who's Holiday LLC seek a declaration that the Play is fair use and
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`therefore does not infringe upon defendant Dr. Seuss Enterprises, L.P.' s copyright in Grinch.
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`· Defendant asserts counterclaims alleging copyright and trademark infringement. Plaintiffs move
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`for judgment on the pleadings pursuant to Rule 12(c), arguing that the Play constitutes fair use of
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`defendant's copyright. Plaintiffs also move to dismiss defendant's counterclaims for failure to
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`state a legally sufficient claim for relief. For the reasons stated herein, plaintiffs' motion is
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`granted. The Play constitutes fair use and therefore does not infringe defendant's copyright in
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`Grinch or related trademarks. Defendant's counterclaims are dismissed.
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`BACKGROUND
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`I.
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`The Original Work: How The Grinch Stole Christmas!
`Grinch, originally published in 1957, is a well-known children's book written by
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`the author known as Dr. Seuss. First Amended Compl. ("FAC") ~ 7. Defendant owns a
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`copyright in Grinch, and alleges ownership of trademarks in (i) the characters of the Grinch and
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`Cindy-Lou Who; (ii) the stylized hand-lettering used consistently throughout Dr. Seuss books;
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`and (iii) certain drawn images of Cindy-Lou Who. FAC ,-i 8; Counterclaims ,-i 20.
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`Grinch tells the story of the Grinch, a green creature that lives in a cave on Mount
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`Crumpit above the town of Who-Ville, home of the merry and cheerful Whos, who positively
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`love Christmas. The Grinch, who despises Christmas, decides to ruin Christmas for Who-Ville
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`by disguising himself as Santa Claus and stealing all of Who-Ville's Christmas trees and
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`presents. While executing his plan, the Grinch encounters Cindy-Lou Who, an adorable two-
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`year old girl. When Cindy-Lou asks the Grinch why he is taking her family's tree, the Grinch
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`lies to Cindy-Lou, telling her that he needs to repair a light on the tree but will return it soon.
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`Cindy-Lou believes the Grinch and returns to bed. The next day, the Grinch listens from Mount
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`Crumpit for the sound of crying Whos, but instead hears the sounds of merry singing. The
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`Grinch, upon learning that the Whos could remain joyous during Christmas even without
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`presents or Christmas trees, realizes that Christmas means more than presents. The Grinch, his
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`heart having "grown three sizes that day," returns to Who-Ville with all of the presents and joins
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`the Whos for a scrumptious feast, featuring a dish called roast beast. See generally, Greenberger
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`Deel. Ex. 2.
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`The Allegedly Infringing Work: Who's Holiday
`II.
`Plaintiff Lombardo is the author of the play, Who's Holiday. Lombardo formed
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`plaintiff Who's Holiday LLC to produce the Play. Who's Holiday is a one-actress 75-minute
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`comedic play featuring a rather down-and-out 45 year-old version of Cindy-Lou Who. The Play
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`takes place at Cindy-Lou's 1970s era trailer in the hills of Mount Crumpit. Cindy-Lou speaks to
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`the audience only in rhyming couplets that are clearly intended to evoke the work of Dr. Seuss.
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`While waiting for guests to arrive for her Christmas party, Cindy-Lou tells the audience the story
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`of her life, beginning with her first encounter with the Grinch at the age of two. Throughout the
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`Play, as she shares her history, Cindy-Lou drinks hard alcohol, abuses prescription pills, and
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`smokes a substance she identifies as "Who Hash," which she describes as just "like a
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`prescription" which keeps her in check to avoid a "conniption." She engages in this self(cid:173)
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`medication following her realization that none of the guests she invited to her party is likely to
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`attend, as they keep calling throughout the Play to cancel.
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`As Cindy-Lou recounts her initial encounter with the Grinch and his subsequent
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`change of heart, paralleling the plot of the original Grinch, she incorporates age-inappropriate
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`language and details that do not appear in the original work. ("I watched for a while as he was
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`stealin' our shit I Then I cooed by mistake and he saw me. That twit."); ("How would I know he
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`was evil or crass? I He gave me some water. Then patted my ass."). After recounting the plot of
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`the original Grinch, Cindy-Lou goes on to tell the audience - using rhymes involving bawdy,
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`ribald innuendo - that she became friends with the Grinch during her school-age years, and that
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`she engaged in sexual intercourse with the Grinch upon turning eighteen. Cindy-Lou refers to
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`the size of the Grinch's genitalia growing "three sizes that day." After learning that she is
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`pregnant, Cindy-Lou informs the Grinch, who asks her to marry him. Over her parents'
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`protestation ("When I told my parents they weren't pleased in the least I I mean, who wants their
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`baby girl deflowered by a beast."), Cindy-Lou marries the Grinch, moves into his cave at the top
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`of Mount Crumpit, and gives birth to their child ("With the fur and the paws it looked just like its
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`Daddy I With no who dilly attached, I named the kid Patti.").
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`As the years go by, Cindy-Lou and the Grinch's relationship begins to sour as
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`they struggle with issues such as unemployment, access to health care, lack of heat, and hunger.
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`One day, Cindy-Lou discovers that the family dog Max has frozen to death, and she decides to
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`cook his carcass in order to feed her family. When the Grinch discovers what his dinner is made
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`of, he attempts to physically abuse Cindy-Lou. During the ensuing scuffle, the Grinch falls off
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`the edge of a cliff and dies. Following the Grinch's death, Cindy-Lou is arrested, convicted and
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`incarcerated, and her daughter is put into foster care. After describing how her time in prison
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`ultimately made her stronger and wiser, Cindy-Lou eventually finds out that all of her guests
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`have declined to attend her party and begins to cry. It then dawns on her that she can celebrate
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`Christmas with the audience instead. After singing a few Christmas songs, the door bells rings.
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`Cindy-Lou expects it to be a local prankster, but it turns out to be her daughter, Patti. See
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`generally, FAC Ex. I.
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`III.
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`Procedural History
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`In July 2016, defendant sent plaintiffs and related entities numerous cease-and-
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`desist letters requesting that plaintiffs refrain from any conduct that infringed defendant's
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`intellectual property. After receipt of these letters, plaintiffs elected not to move forward with
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`their planned production of the Play, and instead filed this lawsuit. In addition to seeking a
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`declaration that the Play constitutes fair use, plaintiffs also filed several tort claims seeking
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`recovery of funds lost as a result of the cancelled production. In an earlier opinion, I granted
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`defendant's motion to dismiss plaintiffs tort claims. See Lombardo v. Dr. Seuss Enterprises,
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`L.P., 2017 WL 1378413 (S.D.N.Y. Apr. 7, 2017). In response to plaintiffs' first amended
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`complaint, defendant filed counterclaims alleging copyright and trademark infringement. Over
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`defendant's objection that discovery was necessary before the fair use issue could be resolved, I
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`invited plaintiffs to file a motion for judgment on the pleadings pursuant to Rule 12(c) to test the
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`issue. See Scheduling Order, Dkt. No. 40 (June 7, 2017).
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`DISCUSSION
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`I.
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`The Question of Whether the Play Constitutes Fair Use Is Properly
`Resolved on a Rule 12( c) Motion
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`The parties dispute whether the question of fair use can be resolved on a motion
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`for judgment on the pleadings. Plaintiffs argue that discovery is unnecessary because the only
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`task for the Court is to conduct a side-by-side comparison of the Play and Grinch and apply the
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`law of fair use. Defendant counters that the following discovery is necessary to resolve the fair
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`use question: (i) all versions of the Play's website and potential advertisements (as opposed to
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`just those attached as exhibits to plaintiffs' pleadings); (ii) all drafts of the Play itself; (iii) all set
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`and costume designs; and (iv) deposition testimony from the Play's author, director, set designer
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`and costume designer.
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`No such discovery is necessary in this case. Numerous courts in this district have
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`resolved the issue of fair use on a motion for judgment on the pleadings by conducting a side-by-
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`side comparison of the works at issue. In Arrow Prods., LTD. v. Weinstein Co. LLC, 44 F. Supp.
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`3d 359 (S.D.N.Y. 2014), for example, the court held that "discovery would not provide any
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`additional relevant information in this inquiry" because "[a]ll that is necessary for the court to
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`make a determination as to fair use are the two films at issue." 44 F. Supp. 3d at 368. Similarly,
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`in Adjmi v. DLT Entm 't Ltd, 97 F. Supp. 3d 512 (S.D.N.Y. 2015), which concerned a play that
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`parodied the television show Three's Company, the court addressed fair use on a motion for
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`judgment on the pleadings, reasoning that "[ c ]ourts in this Circuit have resolved motions to
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`dismiss on fair use grounds in this way: comparing the original work to an alleged parody, in
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`light of applicable law." 97 F. Supp. 3d at 527; see also Effie Film, LLC v. Murphy, 932 F. Supp.
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`2d 538 (S.D.N.Y. 2013) (resolving copyright infringement claim on motion for judgment on the
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`pleadings by comparing screenplays side-by-side); Swatch Grp. Mgmt. Servs. Ltd v. Bloomberg
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`L.P., 756 F.3d 73, 86 (2d Cir. 2014) (affirming district court's pre-discovery fair use ruling and
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`noting that the "discovery [plaintiff] seeks would not alter our analysis").
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`Even in cases where fair use is addressed on a motion for summary judgment,
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`following discovery, courts often resolve the issue of fair use by comparing the two works at
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`issue. In Cariou v. Prince, 714 F.3d 694 (2d Cir. 2013), for example, the Second Circuit chose
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`to disregard the alleged infringer's deposition testimony, and instead endorsed the Seventh
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`Circuit's approach of resolving fair use by "looking at the artworks and the photographs side-by(cid:173)
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`side." 714 F.3d at 707; see Brownmark Films, LLC v. Comedy Partners, 682 F.3d 687, 690 (7th
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`Cir. 2012) ("[T]he only two pieces of evidence needed to decide the question of fair use in this
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`case are the original version of WWITB and the episode at issue."). The Second Circuit adopted
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`this approach because"[ w]hat is critical is how the work in question appears to the reasonable
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`observer, not simply what an artist might say about a particular piece or body of work." Cariou,
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`714 F.3d at 707.
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`Thus, although discovery might yield additional information about plaintiffs'
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`intent, such information is unnecessary to resolve the fair use issue; all that is needed is the
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`parties' pleadings, copies of Grinch and the Play, and the relevant case law. Defendant objects
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`that plaintiffs have cherry-picked documents (such as promotional materials) that refer to the
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`Play as a parody, and attached those documents to their complaint. I have not relied on such
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`documents. The "threshold question when fair use is raised in defense of parody is whether a
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`parodic character may reasonably be perceived," not whether the author of the secondary work
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`labels it as such. Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 582 (1994).
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`To prevail on a Rule 12(c) motion in this context, plaintiffs' must "establish that
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`there can be no set of facts to support an action for copyright infringement" brought against
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`them. Adjmi, 97 F. Supp. 3d at 526-27. In this sense, "[b]ecause this is an action for a
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`declaratory judgment of nan-infringement, [plaintiffs'] burden on this motion is turned on its
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`head." In deciding this motion, all pleadings - including defendant's counterclaims - are taken
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`to be true, subject to the same plausibility standard that applies on a Rule 12(b)(6) motion. See
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`Effie Film, LLC, 932 F. Supp. 2d at 552 ("In deciding a Fed. R. Civ. P. 12(c) motion the court
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`applies the same standard as it would in deciding a Rule 12(b) motion-a plaintiff must plead
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`sufficient facts to state a claim for relief that is plausible on its face.").
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`II.
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`Fair Use
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`"The ultimate goal of copyright is to expand public knowledge and understanding,
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`which copyright seeks to achieve by giving potential creators exclusive control over copying of
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`their works, thus giving them a financial incentive to create informative, intellectually enriching
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`works for public consumption." Authors Guild v. Google, Inc., 804 F.3d 202, 212 (2d Cir.
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`2015). "For nearly three hundred years, since shortly after the birth of copyright in England in
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`1710, courts have recognized that, in certain circumstances, giving authors absolute control over
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`all copying from their works would tend in some circumstances to limit, rather than expand,
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`public knowledge." Id "Courts thus developed the doctrine, eventually named fair use, which
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`permits unauthorized copying in some circumstances, so as to further 'copyright's very purpose,
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`'[t]o promote the Progress of Science and useful Arts."" Id (quoting Campbell, 510 U.S. at
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`575) (quoting U.S. Const., Art. I,§ 8, cl. 8).
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`The fair use doctrine is codified in the Copyright Act of 1976. See 17 U.S.C. §
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`107. "That codification does not so much define 'fair use' as provide a non-exhaustive list of
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`factors to guide courts' fair use determinations." TCA Television Corp. v. McCollum, 839 F.3d
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`168, 178 (2d Cir. 2016). The preamble to Section 107 provides that "the fair use of a
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`copyrighted work ... for purposes such as criticism, comment, news reporting, teaching
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`(including multiple copies for classroom use), scholarship, or research is not an infringement of
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`copyright." I 7 U.S.C. § I 07. ''When the copied work is being used for one of the purposes
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`identified in the preamble, there is a strong presumption in favor of fair use[.]" Fox News
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`Network, LLC v. TVEyes, Inc., 43 F. Supp. 3d 379, 389 (S.D.N.Y. 2014) (citing NXIVM Corp. v.
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`Ross Institute, 364 F.3d 471, 477 (2d Cir. 2004)).
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`Although fair use requires a "case-by-case analysis," Campbell, 510 U.S. at 577,
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`and "is an open-ended and context-sensitive inquiry," Blanch v. Koons, 467 F.3d 244, 251 (2d
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`Cir. 2006), most courts approach the issue by applying the four nonexclusive factors set out in
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`the Copyright Act itself: "( 1) the purpose and character of the use, including whether such use is
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`of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted
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`work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as
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`a whole; and ( 4) the effect of the use upon the potential market for or value of the copyrighted
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`work." 17 U.S.C. § 107. These four factors are not to be "treated in isolation, one from
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`another." Campbell, 510 U.S. at 578. Instead, "[a]ll are to be explored, and the results weighed
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`together, in light of the purposes of copyright." Id. "A proponent of the fair use doctrine need
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`not establish that each factor weighs in its favor to prevail." TVEyes, 43 F. Supp. 3d at 389.
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`a. First Fair Use Factor: Purpose and Character of the Use
`"The first factor, which addresses the manner in which the copied work is used, is
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`the 'heart of the fair use inquiry."' N. Jersey Media Grp. Inc. v. Pirro, 74 F. Supp. 3d 605, 614
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`(S.D.N.Y. 2015) (quoting Blanch, 467 F.3d at 251). "The central question is 'whether and to
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`what extent the new work is 'transformative,"" Estate of Smith v. Cash Money Records, Inc.,
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`2017 WL 2333770, at *7 (S.D.N.Y. May 30, 2017) (quoting Campbell, 510 U.S. at 579), for the
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`"goal of copyright ... is generally furthered by the creation oftransformative works." Campbell,
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`510 U.S. at 579. To resolve whether a work is transformative, Campbell instructs courts to
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`consider "whether the new work merely supersedes the objects of the original creation, or instead
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`adds something new, with a further purpose or different character, altering the first with new
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`expression, meaning, or message." Id
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`I begin my analysis of the first fair use factor by considering whether the Play is a
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`parody of Grinch, for parody "'has an obvious claim to transformative value,' and thus deciding
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`that the new work is a parody necessarily entails finding that the new work is transformative."
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`Abilene Music, Inc. v. Sony Music Entm 't, Inc., 320 F. Supp. 2d 84, 89 (S.D.N.Y. 2003) (quoting
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`Campbell, 510 U.S. at 579); see also MasterCard Int'! Inc. v. Nader 2000 Primary Comm., Inc.,
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`2004 WL 434404, at *12 (S.D.N.Y. Mar. 8, 2004) ("One such transformative use that is typically
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`found to be fair use is a parody."); Adjmi, 97 F. Supp. 3d at 534 (finding fair use and describing
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`secondary work as a "transformative parody" of original work). Treating parodies as
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`transformative works is logical, for if defendant could control who was permitted to parody the
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`Grinch and in what manner, the purpose of copyright law would be stifled, not promoted.
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`For the reasons discussed below, I hold that the Play is a parody of Grinch, and
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`thus transformative.
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`i. Parody
`"One type of protected creativity is parody, a recognized category of criticism or
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`comment authorized by Section 107." Adjmi, 97 F. Supp. 3d at 530. "Where the [alleged
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`infringer's] use is for the purposes of 'criticism, comment ... scholarship, or research,' 17 U.S.C.
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`§ 107," the first factor "will normally tilt in the [alleged infringer's] favor." NXIVM Corp. v.
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`Ross Inst., 364 F.3d 471, 477 (2d Cir. 2004); see also Wright v. Warner Books, Inc., 953 F.2d
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`731, 736 (2d Cir. 1991) ("[T]here is a strong presumption that factor one favors the [alleged
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`infringer] if the allegedly infringing work fits the description of uses described in section 107. ").
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`This does not end the inquiry, however, for the Supreme Court has rejected the notion that "any
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`parodic use is presumptively fair." Campbell, 510 U.S. at 581. "Accordingly, parody, like any
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`other use, has to work its way through the relevant factors, and be judged case by case, in light of
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`the ends of the copyright law." Id That said, "once a work is determined to be a parody, the
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`second, third, and fourth factors are unlikely to militate against a finding of fair use." Abilene
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`Music, 320 F. Supp. 2d at 89.
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`"The threshold question when fair use is raised in defense of parody is whether a
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`parodic character may reasonably be perceived." Campbell, 510 U.S. at 582. Adopting
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`dictionary definitions, the Supreme Court has referred to parody as a "literary or artistic work
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`that imitates the characteristic style of an author or a work for comic effect or ridicule," or a
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`"composition in prose or verse in which the characteristic turns of thought and phrase in an
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`author or class of authors are imitated in such a way as to make them appear ridiculous." Id at
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`5 80. The "heart of any parodist's claim to quote from existing material, is the use of some
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`elements of a prior author's composition to create a new one that, at least in part, comments on
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`that author's works." Id Thus, "the copied work must be, at least in part, an object of the
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`parody, otherwise there would be no need to conjure up the original work." Rogers v. Koons,
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`960 F.2d 301, 310 (2d Cir. 1992). "If, on the contrary, the commentary has no critical bearing on
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`the substance or style of the original composition, which the alleged infringer merely uses to get
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`attention or to avoid the drudgery in working up something fresh, the claim to fairness in
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`borrowing from another's work diminishes accordingly (if it does not vanish), and other factors,
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`like the extent of its commerciality, loom larger. Campbell, 580 U.S. at 580.
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`The key question I must therefore resolve, is whether the Play comments on
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`Grinch by imitating and ridiculing its characteristic style for comic effect, or, as defendant
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`contends, merely exploits the characters, style and themes of Grinch in order "to avoid the
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`drudgery in working up something fresh." Id. Defendant argues that the Play "does not poke
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`fun of the Seussian rhyming style," but instead usurps that style in order to sell a commercial
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`work. Nor, according to defendant, does the Play comment on or ridicule the characters and
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`themes of Grinch; it merely "uses Grinch, Cindy-Lou, the Grinch character, and the dog Max as
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`building blocks for a sequential work, featuring those same characters in the Suess-created
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`settings of Mount Crumpit and Who-Ville."
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`Defendant's assessment misses the mark. The Play recontextualizes Grinch 's
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`easily-recognizable plot and rhyming style by placing Cindy-Lou Who - a symbol of childhood
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`innocence and naivete - in outlandish, profanity-laden, adult-themed scenarios involving topics
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`such as poverty, teen-age pregnancy, drug and alcohol abuse, prison culture, and murder. In so
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`doing, the Play subverts the expectations of the Seussian genre, and lampoons the Grinch by
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`making Cindy-Lou's naivete, Who-Ville's endlessly-smiling, problem-free citizens, and Dr.
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`Seuss' rhyming innocence, all appear ridiculous.
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`In Grinch, Cindy-Lou's childhood innocence serves as a counterpoint to the
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`Grinch's deceitful nature and his disdain for joy and happiness. Cindy-Lou is a "small Who"
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`who was "not more than two," and made a "small sound like the coo of a dove." She asks the
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`Grinch, "Santy Claus, why, why are you taking our Christmas tree? WHY?" The Grinch tells
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`her that he is taking the tree to his workshop to repair a broken light, and Cindy-Lou believes his
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`lie. In the Play, by contrast, Cindy-Lou is depicted as a grown woman. She lives alone in a
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`poorly maintained trailer, struggles with alcohol and substance abuse, and uses profanity freely
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`(as long as it still rhymes). She mothered a child with the Grinch, knocked the Grinch off a cliff
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`after he tried to attack her, and served time in prison as a result. At one point, Cindy-Lou
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`suggests to the audience that she used to put razor blades in apples on Halloween to keep the
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`children of Who-Ville away from her house.
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`The Play's version of Who-Ville likewise pokes fun of Grinch's utopic depiction
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`of Who-Ville. In Grinch, Who-Ville is filled with cheery citizens who love Christmas, have
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`grand communal feasts, dream "sweet dreams without a care.," and sing joyous songs together as
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`they "stand hand-in-hand." No problems trouble the residents, who have been blessed with an
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`indomitably optimistic spirit that not even the Grinch can defeat. In the Play, by contrast, Who(cid:173)
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`Ville is plagued by problems and real-world challenges. The Grinch struggles with
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`unemployment. Who-Ville's criminal justice system metes out a harsh punishment upon Cindy(cid:173)
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`Lou following the Grinch's death, from what appears to be lawful self-defense, and Cindy-Lou's
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`child is placed into foster care. In the Play, Who-Ville is no longer a place where people can
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`overcome adversity by smiling and singing together. Who-Ville is now a place where young
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`women are impregnated by green beasts, families struggle to put food on the table, paparazzi run
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`rabid, and citizens get high on "Who Hash" to escape problems of daily life.
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`In creating these juxtapositions, the Play, rather than trading on the character of
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`Cindy-Lou Who and the setting of Who-Ville for commercial gain, turns these Seussian staples
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`upside down and makes their saccharin qualities objects of ridicule. Defendant argues that the
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`Play's references to the Dr. Seuss song "Fahoo Fores Dahoo Dores" and Grinch's fictional "goo(cid:173)
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`goo-gums" and "foo-foo-fluffs" are evidence of improper copying. Not so, for immediately after
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`she refers to "goo-goo-gums" and "foo-foo-fluffs," Cindy-Lou turns to the audience to comment,
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`"Whatever the fuck those were."
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`The Play parodies Grinch also by recontextualizing and subverting the Seussian
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`rhyming style. For example, during a scene in which Cindy-Lou recounts her time in prison, her
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`cell mate confronts her: "STOP SPEAKING IN RHYME," the cell mate says. "But that's how
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`all the Whos talk," Cindy-Lou tries to explain. The cell mate shoots back, "You ain't no Who
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`here! It's time you speak plain!" The cell mate's response makes clear that rhyming is
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`unsuitable for the real world and invites the audience to contemplate the juxtaposition of
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`speaking in rhyme and doing prison time. The Play also uses the audience's familiarity with the
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`Suessian rhyming style to imply vulgar, un-Suessian conclusions to rhymes. Take, for example,
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`Cindy-Lou's description of a night with the Grinch:
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`But things started to change when I turned eighteen.
`I was becoming a woman. And he? Was still green.
`The night of my birthday, he took me alone to the dock.
`Where he gave me my present. His big, thick, long -
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`The telephone rings.
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`(Excuse me.)
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`"The heart of any parody is its evocation of the message or style of the original
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`work in order to alter that message or style in a way that humorously expresses the author's
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`opinion of the original work." Abilene Music, 320 F. Supp. 2d at 90. The Play's coarseness and
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`vulgarity lampoons Grinch by highlighting the ridiculousness of the utopian society depicted in
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`the original work: society is not good and sweet, but coarse, vulgar and disappointing. Through
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`clever re-arrangement of the original material, the Play attempts to depict the realities of the
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`modern world in which we live. The Play would not make sense without evoking the style and
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`message of Grinch, for there would be no object of the parody. Whether the Play's parody of
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`Grinch is effective, or in good taste, is irrelevant. See Campbell, 510 U.S. at 569 ("Whether ...
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`parody is in good taste or bad does not and should not matter to fair use."); Yankee Pub. Inc. v.
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`News Am. Pub. Inc., 809 F. Supp. 267, 280 (S.D.N.Y. 1992) (Leval, J.) ("First Amendment
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`Case 1:16-cv-09974-AKH Document 53 Filed 09/15/17 Page 14 of 24
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`protections do not apply only to those who speak clearly, whose jokes are funny, and whose
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`parodies succeed.").
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`Both the Supreme Court and the Second Circuit have recognized that secondary
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`works that poke fun at the original work's hokeyness, blandness or seriousness can constitute
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`parody. In Campbell, for example, the Supreme Court held that a 2 Live Crew song that copied
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`the Roy Orbison song "Pretty Woman" was parody because it "was clearly intended to ridicule
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`the white-bread original" by "substituting predictable lyrics with shocking ones ... [that]
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`derisively demonstrat[e] how bland and banal the Orbison song seems to them." Campbell, 510
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`U.S. at 582. Similarly, in Leibovitz v. Paramount Pictures Corp., 137 F.3d 109 (2d Cir. 1998),
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`the Second Circuit found that an advertisement for the movie Naked Gun 33 113: The Final
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`Insult, which featured the head of Leslie Nielsen superimposed over an iconic photograph of a
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`pregnant Demi Moore, qualified as parody. "Because the smirking face of Nielsen contrasts so
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`strikingly with the serious expression on the face of Moore, the ad may reasonably be perceived
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`as commenting on the seriousness, even the pretentiousness, of the original. The contrast
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`achieves the effect of ridicule that the Court recognized in Campbell would serve as a sufficient
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`'comment' to tip the first factor in a parodist's favor." 137 F.3d at 114.
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`ii. Transformative Use
`In assessing whether a secondary work is transformative, the "critical inquiry is
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`whether the new work uses the copyrighted material itself for a purpose, or imbues it with a
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`character, different from that for which it was created." McCollum, 839 F.3d at 180. Defendant
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`argues that the Play is not transformative because it involves the same characters from Grinch,
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`takes place in the same setting, and incorporates the plot of the original work. That may be true,
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`but the Play does much more than just insert the characters from Grinch into a dark, updated
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`setting. By parodying those characters and setting, the Play "adds something new" and "alters
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`Case 1:16-cv-09974-AKH Document 53 Filed 09/15/17 Page 15 of 24
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`the [original] with new expression, meaning, [and] message." Campbell, 510 U.S. at 579. The
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`Play, as a parody, qualifies as a transformative work. See Abilene Music, 320 F. Supp. 2d at 89
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`("[D]eciding that the new work is a parody necessarily entails finding that the new work is
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`transformative. ").
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`TCA. Television Corp. v. McCollum, 839 F.3d 168 (2d Cir. 2016), in which the
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`Second Circuit recently rejected a fair use claim, is distinguishable. McCollum concerned a play
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`in which a character uses a sock puppet to perform, nearly verbatim, a minute-long segment of
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`the Abbott and Costello routine, Who's on First. The Second Circuit held that this use was not
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`transformative because there was no explanation why such "extensive copying of a famous
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`comedy routine was necessary" to the purpose the use served: character development and plot
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`advancement. Id at 179. This unaltered use of an original work, inserted into a new work for a
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`purpose entirely disconnected from the original work itself, does not qualify as fair use and is
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`readily distinguishable from the Play's use of Grinch. Unlike in McCollum, where it was
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`irrelevant whether the alleged infringer used Who 's on First or some other original work, the
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`Play's use of Grinch is necessary to the purpose and meaning of the Play; absent that use, much
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`of the Play's comedy and commentary evaporates.
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`iii. Commercial Nature of the Allegedly Infringing Work
`The first statutory factor also asks "whether such use is of a commercial nature or
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`is for nonprofit educational purposes." 17 U.S.C. § 107. Although a finding that the secondary
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`work is of a commercial nature generally weighs against a finding of fair use, the Supreme Court
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`has made clear that where the work is transformative - that is, the first factor otherwise favors a
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`finding of fair use - the fact that the work is also commercial is of less importance.
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`Transformative works "lie at the heart of the fair use doctrine's guarantee of breathing space
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`within the confines of copyright, and the more transformative the new work, the less will be the
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`significance of other factors, like commercialism, that may weigh against a finding of fair use."
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`Campbell, 510 U.S. at 579. As the Second Circuit has held, "Congress could not have intended a
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`rule that commercial uses are presumptively unfair." Cariou, 714 F.3d at 708; see also Blanch,
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`467 F.3d at 254 (discounting the "secondary commercial nature of the use" since "the new work
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`is substantially transformative."). Given that the Play' s use of Grinch is transformative, it is of
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`little significance that the use is also of a commercial nature.
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`b. Second Fair Use Factor: Nature of the Copyright