“We’re true Star Belied Sneetches, we had them first we are still the best Sneetches and they’re still the worst. But how are we going to prove it, which is which, I can’t tell us apart.”[i]
In the world of copyright law, there is a fine line between unlawful copying or use of another’s work and a lawful parody. Dr. Seuss Enterprises, the holding company for the rights associated with Theodor Seuss Geisel’s works, has found itself right in the middle of this question many times. Much like the Sneetches, Dr. Seuss has sought to prove that its works are the only true and rightful works, much like the Star Belied Sneetches seeking to prove that they are superior to the Plain Bellied Sneetch. Dr. Seuss’ problem, however, is not that Plain Bellied Sneetches now have stars, but rather that others have used the protected works in ways quite bizarre. Specifically, Dr. Seuss has sought to protect its brand from these unlicensed uses such as parodies. To this end, instead, of the Sneetches’ “Fix-it-Up Chappie,” Dr. Seuss has relied on copyright infringement to exclude others from incorporating elements of Dr. Seuss’ world into unlicensed works. However, much like Dr. Seuss’ Sneetches, the courts have had a difficult time determining whether or not the accused work is a parody.
A quick docket search reveals a handful of cases documenting Dr. Seuss’ efforts and the results are mixed.[ii] While most of these cases have been resolved at the trial court, three cases (Penguin Books, ComicMix, and Lombardo) have made it to the U.S. federal appellate courts, specifically the Ninth and Second Circuit Courts of Appeals. The Ninth Circuit sided with Dr. Seuss in Penguin Books and ComicMix, while the Second Circuit in Lombardo upheld a decision against Dr. Seuss. A comparison of these decisions reveals a stark difference in the application of copyright law with regard to parodies.
First, in Penguin Books, the Ninth Circuit reviewed a preliminary injunction order barring the publication of a Dr. Seuss parody. The parody centered around the O.J. Simpson murder trial titled The Cat NOT in the Hat! A Parody by Dr. Juice. The Ninth Circuit affirmed the lower court’s findings that the parody infringed Dr. Seuss’ copyright based solely on the back cover illustrations of the Cat in the Hat compared to the parody. The defendant argued that even if the parody infringed, any use of the copyrighted material was excused under the fair use doctrine. This argument was flatly rejected at the Ninth Circuit.
In applying the fair use doctrine, courts weigh the following factors: (1) the purpose and character of the accused use; (2) the nature of the copyrighted work; (3) the importance of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the accused use on the potential market for or value of the copyrighted work. In Penguin Books, the Ninth Circuit emphasized the first factor:
These stanzas and the illustrations simply retell the Simpson tale. Although The Cat NOT in the Hat! does broadly mimic Dr. Seuss' characteristic style, it does not hold his style up to ridicule. The stanzas have “no critical bearing on the substance or style of” The Cat in the Hat. Katz and Wrinn merely use the Cat's stove-pipe hat, the narrator (“Dr.Juice”), and the title (The Cat NOT in the Hat!) to get attention or maybe even to avoid the drudgery in working up something fresh.[iii]
Likewise, in applying the fourth factor, the Ninth Circuit proclaimed that since Dr. Seuss’ work has garnered substantial goodwill that the parody’s use of this work was non-transformative, that market substitution is at least more certain, and market harm may be more readily inferred. In doing so, the Ninth Circuit rejected defendant’s argument that there was no evidence that the parody would have any impact on the market for Dr. Seuss’ works if published.
Recently, the Ninth Circuit had another opportunity to comment on another parody of Dr. Seuss’ works in ComicMix.[iv] In ComicMix, the defendant sought to publish a mash-up (“parody”) of Star Trek and the Dr. Seuss story, Go! The creators of the parody admitted to purposefully and painstakingly copying from Go! in order to match its structure and imagery – yet, despite this, they contended that the fair use doctrine was applicable. In reversing the lower court, the Ninth Circuit found that the fair use doctrine was inapplicable. Similar to Penguin Books, the first factor of the fair use analysis was particularly compelling as the parody failed to critique or comment on Dr. Seuss’ works despite arguments that the parody incorporated the mature themes of Star Trek in the context of Dr. Seuss’ world and further criticized the “banal narcissism of Go!” The Ninth Circuit also provided a fulsome commentary regarding the effect that the parody would have on the market for derivative Dr. Seuss works, noting that Dr. Seuss had authorized “mash-ups” in the past and allowing the publication of this work would result in a flood of unauthorized “mash-ups.”
Lastly, on the opposite side of the U.S., the Second Circuit Court has also reviewed the application of the fair use doctrine to a Dr. Seuss parody in Lombardo. Lombardo centered around a play depicting one of the most endearing characters from How the Grinch Stole Christmas, Cindy-Lou Who, as an adult having faced a litany of hard knocks, such as being a single mother to the Grinch’s child, an alcoholic, and a felon. The lower court found that this play did not infringe Dr. Seuss’ copyright and the Second Circuit upheld this finding on appeal relying heavily on the lower court’s analysis. Notably, the Second Circuit upheld that the applicability of the fair use doctrine in part because the play’s imitation of Dr. Seuss’ style satisfied the first prong. Further, in evaluating market harm, the Second Circuit agreed with the lower court that since “[t]he Play is not an unauthorized sequel of Grinch, and given the clear differences in tone and content, it is unreasonable to assume that audiences might confuse the Play for a theatrical version of Grinch, or that the Play would usurp the market for Grinch.”[v]
In reviewing the above cases, it is difficult to discern the fine line between an unauthorized, infringing work opposed to a non-infringing parody. The ambiguity lies in the differing considerations that the Second Circuit and Ninth Circuit leveraged when applying the fair use doctrine. First, the two circuits appear at odds with the first fair use factor: what works constitute a parody, and specifically to what extent the work needs to critique or hold the original work up to ridicule. The Second Circuit found this factor to be met because “[w]hile the Play does use the Grinch’s characters, setting, plot, and style, it is in service of the parody.”[vi] In particular, the parody in Lombardo introduced mature themes into Dr. Seuss’s Grinch-world depicting how the perpetual cheerful, innocent citizens of Who-Ville would react when faced with real-world problems. However, when faced with similar facts, the Ninth Circuit in Penguin Books found that the depiction of the O.J. Simpson murder trial in the style of Dr. Seuss was not a parody, despite the introduction of very mature themes such as a double-murder trial which are recreated with a nod towards Dr. Seuss’s Cat in the Hat! The Ninth Circuit held that despite depicting O.J. Simpson in Dr. Seuss’ signature Cat’s hat and “broadly mimic[ing] Dr. Seuss’ characteristic style, it does not hold his style up to ridicule.”[vii] These contrasting holdings suggest that if an author seeks to create a parody, then it is better to adopt the original characters/setting whole-cloth and weave these elements into an unexpected narrative or theme that undercuts or ridicules the original narrative or theme, rather than incorporate individual items or elements into wholly different works.
The Ninth and Second Circuit also appear to differ in the application of the fourth fair use factor. The fourth factor is targeted towards the parody’s effect on the potential market for the copyrighted work. The Ninth Circuit’s holdings suggest that any commercialized parody will harm the original work’s market, if the original works are widely known.[viii] In contrast, the Second Circuit’s analysis is more probing of whether consumers will substitute the original or licensed derivative works for the parody. In other words, the Second Circuit’s analysis focused on the possibility that the parody would usurp the original’s market. This is a critical issue as most parodies used widely known works as their basis. Clearly, a parody loses its effect if the reader is unfamiliar with the underlying work.
In sum, while Dr. Seuss’ litigations seem to have concluded, at least for the time being, the results have highlighted that there is still uncertainty in the application of the fair use doctrine to parodies. The outcomes of these cases continue to be very fact specific, providing little guidance to would-be creators of parodies. It seems that Dr. Seuss and the authors of parodies are left, much like the Sneetches, with how to prove when the fair use doctrine applies to a parody.
Below is some guidance on steps one can take to bolster a fair use defense:
- When considering which items or elements to switch, one should keep in mind the original audience that the author targeted with the work. Preferably, the modification that is made should target a different market, e.g., if the original work was a child’s novel, then the parody should be geared towards adult video game players.
- As to illustrations, there is a fine line between borrowing too little (The Cat NOT in the Hat) and borrowing too much (Go!). To successfully raise a fair use defense in creating a parody, one needs to clearly and consistently identify the original work and then make fun of it. For instance, in a parody of One Fish, Two Fish, Red Fish, Blue Fish, one would be best off including not only a pair of red and blue fishes but also the two characters that are cannibalistic marine life exploring the flavor of different colored fish as well as the consequences of eating too many of a fish of a particular color.
- Holding a work up to ridicule can be a central element of a parody and to establishing a fair use defense. In a story like Green Eggs and Ham, a story centered around the main character Sam-I-Am incessantly offering a meal to Guy-Am-I, one might hold the story up to ridicule by describing how the story would change if Guy-Am-I was a vegan. Together these modifications transform Dr. Seuss’ work from a simple tale about expanding one’s palate into a parody and social commentary about veganism and omnivores.
- On the other hand, copyright holders can attack a fair use defense by fully developing and logging the marketing strategy and target audiences for the original work, including related and future works involving the same characters/elements.
[i] The Sneetches, Seuss on the Loose (1973).
[ii] Dr Seuss v. Morris Costumes Inc., Civ A. No. 3:03-cv-150 (S.D. Cal 2003); Internatl Diversified Prod vs. Dr Seuss Entrprs, Civ A No. BC121432 (Los Angeles County Super. Ct 2004); Dr Seuss Enterprises v. Soft Things Inc, Civ A No. 3:00-cv-533 (S.D. Cal 2000); Dr Seuss Enterprises v. Rhode Island Novelty, Civ A No. 3:96-cv-1616 (S.D. Cal 1996); Dr Seuss Enterprises v. Penguin Books USA, Civ A No. 3:96-cv-302 (S.D. Cal 1996); Dr Seuss Enterprises v. Greek 101, Civ A No. 3:02-cv-252 (S.D. Cal 2002); Dr. Seuss Enterprises, L.P. V. Comicmix Llc , Civ A No 3:16-cv-2779 (S.D. Cal 2016); Dr Seuss Enterpr. v. Landess, Civ. A No 3:95-cv-30036 (D. Mass. 1995); Lombardo v. Dr. Seuss Enterprises, 1:16-cv-9974 (S.D.N.Y. 2016).
[iii] Dr. Seuss Enterprises, L.P. v. Penguin Books USA, Inc., 109 F.3d 1394, 1401 (9th Cir. 1997) (citations and quotation marks omitted).
[iv] Dr. Seuss Enterprises, L.P. v. ComicMix LLC, 983 F.3d 443 (9th Cir. 2020).
[v] Lombardo v. Dr. Seuss Enterprises, L.P., 279 F. Supp. 3d 497, 512 (S.D.N.Y. 2017), aff'd, 729 F. App'x 131 (2d Cir. 2018).
[vi] Lombardo, 729 F. App'x at 133.
[vii] Penguin Books, 109 F.3d at 1401.
[viii] “The good will and reputation associated with Dr. Seuss' work is substantial. Because, on the facts presented, Penguin and Dove's use of The Cat in the Hat original was nontransformative, and admittedly commercial, we conclude that market substitution is at least more certain, and market harm may be more readily inferred.” Penguin Books, 109 F.3d at 1403.
Contacts
- /en/people/c/chatterjee-neel
Neel Chatterjee
Partner