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17-2952-cv
`Lombardo v. Dr. Seuss Enterprises L.P.
`
`
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`
`
`UNITED STATES COURT OF APPEALS
`FOR THE SECOND CIRCUIT
`
`SUMMARY ORDER
`
`
`RULINGS BY SUMMARY ORDER DO NOT HAVE PRECEDENTIAL EFFECT. CITATION TO A
`SUMMARY ORDER FILED ON OR AFTER JANUARY 1, 2007, IS PERMITTED AND IS GOVERNED
`BY FEDERAL RULE OF APPELLATE PROCEDURE 32.1 AND THIS COURT’S LOCAL RULE 32.1.1.
`WHEN CITING A SUMMARY ORDER IN A DOCUMENT FILED WITH THIS COURT, A PARTY
`MUST CITE EITHER THE FEDERAL APPENDIX OR AN ELECTRONIC DATABASE (WITH THE
`NOTATION “SUMMARY ORDER”). A PARTY CITING A SUMMARY ORDER MUST SERVE A COPY
`OF IT ON ANY PARTY NOT REPRESENTED BY COUNSEL.
`
`
`At a stated Term of the United States Court of Appeals for the Second Circuit, held at the
`
`Thurgood Marshall United States Courthouse, 40 Foley Square, in the City of New York on the
`6th day of July, two thousand eighteen.
`
`ROSEMARY S. POOLER,
`Present:
`REENA RAGGI,
`
`
`PETER W. HALL,
`
`
` Circuit Judges.
`
`
`_____________________________________________________
`
`MATTHEW LOMBARDO, WHO’S HOLIDAY LIMITED
`LIABILITY COMPANY,
`
`
`
`
`
`DR. SEUSS ENTERPRISES, L.P.,
`
`Defendant-Counter-Claimant-Appellant.
`
`
`
`
`_____________________________________________________
`
`
`
`
`
`Appearing for Appellant:
`Andrew L. Deutsch, DLA Piper LLP (US) (Tamar Y. Duvdevani,
`on the brief), Los Angeles, CA.
`
`
`
`
`
`
`
`
`
`
`
`v.
`
`Plaintiffs-Counter-Defendants-Appellees,
`
`
`
`
`
`
`
`
`
`
`
`
`
`17-2952-cv
`
`
`Appearing for Appellees:
`
`Appearing for Amicus
`Curiae Dramatist Legal
`Defense Fund
` for Appellees:
`
`
`
`Jordan Greenberger, Brooklyn, N.Y.
`
`David H. Faux, New York, N.Y.
`
`

`

`
`Appeal from the United States District Court for the Southern District of New York (Hellerstein,
`J.).
`
`ON CONSIDERATION WHEREOF, IT IS HEREBY ORDERED, ADJUDGED,
`
`AND DECREED that the judgment of said District Court be and it hereby is AFFIRMED.
`
` Dr. Seuss Enterprises, L.P. (“DSE”) appeals from the September 15, 2017 judgment of
`
`the United States District Court for the Southern District of New York (Hellerstein, J.) granting
`plaintiffs Matthew Lombardo and Who’s Holiday Limited Liability Company (collectively,
`“Lombardo”) a declaratory judgment that the play, Who’s Holiday! (the “Play”), did not infringe
`on DSE’s copyright and trademark interests in How the Grinch Stole Christmas. We assume the
`parties’ familiarity with the underlying facts, procedural history, and specification of issues for
`review.
`
`The Copyright Act sets forth four non-exclusive factors to consider in “determining
`
`whether the use made of a work in any particular case is a fair use:”
`
`
`(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.
`
`
`17 U.S.C. § 107. While the factors are to be considered individually, in determining if a work is
`fair use the factors are “weighed together, in light of the purposes of copyright.” Campbell v.
`Acuff–Rose Music, Inc., 510 U.S. 569, 578 (1994).
`
`“The first factor in a fair use enquiry is the purpose and character of the use, including
`
`whether such use is of a commercial nature or is for nonprofit educational purposes.” Campbell,
`510 U.S. at 578 (internal quotation marks omitted). “The central purpose of this investigation is
`to see . . . whether the new work merely supersedes the objects of the original creation, or instead
`adds something new, with a further purpose or different character, altering the first with new
`expression, meaning, or message; it asks, in other words, whether and to what extent the new
`work is transformative.” Id. at 579 (internal quotation marks, citation, and brackets omitted).
`
`A “parody has an obvious claim to transformative value,” as “it can provide social
`
`benefit, by shedding light on an earlier work, and, in the process, creating a new one.”
`Campbell, 510 U.S. at 579. Here, the district court correctly determined that the Play is a
`parody, imitating the style of the Grinch for comedic effect and to mock the naïve, happy world
`of the Whos. The first factor weighs in Lombardo’s favor.
`
`2
`
`

`

`
`
`The second “factor calls for recognition that some works are closer to the core of
`intended copyright protection than others, with the consequence that fair use is more difficult to
`establish when the former works are copied.” Campbell, 510 U.S. at 586. The second factor is
`rarely useful “in separating the fair use sheep from the infringing goats in a parody case, since
`parodies almost invariably copy publicly known, expressive works.” Id. The district court thus
`properly accorded this factor little weight. The third factor looks to the amount and substance
`used of the original work. “Here, attention turns to the persuasiveness of a parodist’s justification
`for the particular copying done, and the enquiry will harken back to the first of the statutory
`factors, for, as in prior cases, we recognize that the extent of permissible copying varies with the
`purpose and character of the use.” Id. at 586-87. In determining how the third factor is weighed,
`the Supreme Court cautions that:
`
`
`Parody presents a difficult case. Parody’s humor, or in any event
`its comment, necessarily springs from recognizable allusion to its
`object through distorted imitation. Its art lies in the tension
`between a known original and its parodic twin. When parody takes
`aim at a particular original work, the parody must be able to
`conjure up at least enough of that original to make the object of its
`critical wit recognizable. What makes for this recognition is
`quotation of the original’s most distinctive or memorable features,
`which the parodist can be sure the audience will know. Once
`enough has been taken to assure identification, how much more is
`reasonable will depend, say, on the extent to which the [work’s]
`overriding purpose and character is to parody the original or, in
`contrast, the likelihood that the parody may serve as a market
`substitute for the original. But using some characteristic features
`cannot be avoided.
`
`Id. at 588 (internal quotation marks and citation omitted). Here, the Play’s use of material from
`the Grinch weighs in favor of finding fair use. While the Play does use the Grinch’s characters,
`setting, plot, and style, it is in service of the parody. The Play does not copy verbatim or quote
`from the original book, and while it does recount the plot, it does so to invoke the original. Thus,
`the district court properly weighed this factor in Lombardo’s favor.
`
`
`The fourth factor considers “the effect of the use upon the potential market for or value of
`the copyrighted work,” 17 U.S.C. § 107(4), and “[t]he enquiry must take account not only of
`harm to the original but also of harm to the market for derivative works.” Campbell, 510 U.S. at
`590 (internal quotation marks and citation omitted). We agree with the district court’s analysis
`that there is little likelihood of harm to either market here. As the district court correctly
`concluded, each factor weighs in Lombardo’s favor, such that the Play is fair use of the Grinch.
`
`Finally, the district court properly granted judgment on the pleadings on the trademark
`
`counterclaims. Applying the balancing test set forth in Rogers v. Grimaldi, 875 F.2d 994, 999
`(2d Cir. 1989) (Lanham Act “should be construed to apply to artistic works only where the
`public interest in avoiding consumer confusion outweighs the public interest in free expression”),
`
`3
`
`

`

`it concluded that the public’s interest in free speech here outweighs DSE’s interest in protecting
`its trademarks. We agree. “A parody must convey two simultaneous—and contradictory—
`messages: that it is the original, but also that it is not the original and is instead a parody.” Cliffs
`Notes, Inc. v. Bantam Doubleday Dell Publ’g Grp., Inc., 886 F.2d 490, 494 (2d Cir. 1989), and,
`in this case, Lombardo evokes elements of the original work to serve his parodic purpose.
`
`
`We have considered the remainder of DSE’s arguments and find them to be without
`merit. Accordingly, the order of the district court hereby is AFFIRMED.
`
`
`
`
`
`
`FOR THE COURT:
`Catherine O’Hagan Wolfe, Clerk
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`4
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`

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