“Who” Says What’s Fair Use?:

Bloggers naturally desire to write about new developments and new cases.  But, because writing on legal topics is often like pulling snap shots out of a film, there is also sometimes a feeling that one is obliged to return to a previously noted case to report back on the rest of the story (as one might say (if named Paul Harvey)).  So it is today for this blogger, as he reports on the developments in a case that occurred after the previous blog post freeze frame.

While tempted to return to Naruto and the “monkey selfie” case on which we previously commented, we cannot quite tell the rest of that story since there remains in play a motion for rehearing en banc.  By way of update though, we can mention that the United States Court of Appeals in an April 13, 2018 order rejected the parties’ efforts to moot the case, holding that “denying the motion to dismiss and declining to vacate the lower court judgment prevents the parties from manipulating precedent in a way that suits their institutional preferences.”  That Court thereafter found in a 2-1 panel decision on April 23, 2018 that Naruto, a monkey, had constitutional standing under Article III but lacked statutory standing under the Copyright Act.  But on May 25, 2018 an anonymous lone judge on the 9th Circuit has requested rehearing en banc.  Once that motion is ruled on, we can perhaps tell the rest of the story there or, because of recent developments in other fields, combine Naruto with Seuss in the same way that we combined Star Trek and Seuss.

Instead, we return to Whoville, and the matter of Lombardo v. Dr. Seuss, 279 F. Supp. 3d 497 (SDNY 2017) and its July 2018 appellate affirmance, to tell the rest of the story of an interesting case of the fair use doctrine in the copyright context.  Since we last reported on that case, both the United States District Court for the Southern District of New York (in August 2017) and the United States Court of Appeals for the Second Circuit (in a few weeks ago) held that the play Who’s Holiday! (the “Play”), a comedic play that makes use of the characters, plot, and setting of the Dr. Seuss book, How the Grinch Stole Christmas! (“Grinch“), was a parody protectable as non-infringing fair use.  Because those decisions not only represent further developments in a case previously blogged about here, but also represent an evolution in the parody/fair use jurisprudence also addressed on one or more occasions here, it seemed fitting to tell the rest of the story.

The Two Works

To understand the case, one should understand how the courts saw each work.  As for the Dr. Seuss story:

Grinch tells the story of the Grinch, a green creature that lives in a cave on Mount Crumpit above the town of Who-Ville, home of the merry and cheerful Whos, who positively love Christmas. The Grinch, who despises Christmas, decides to ruin Christmas for Who-Ville by disguising himself as Santa Claus and stealing all of Who-Ville’s Christmas trees and presents. While executing his plan, the Grinch encounters Cindy-Lou Who, an adorable two-year old girl. When Cindy-Lou asks the Grinch why he is taking her family’s tree, the Grinch lies to Cindy-Lou, telling her that he needs to repair a light on the tree but will return it soon. Cindy-Lou believes the Grinch and returns to bed. The next day, the Grinch listens from Mount Crumpit for the sound of crying Whos, but instead hears the sounds of merry singing. The Grinch, upon learning that the Whos could remain joyous during Christmas even without presents or Christmas trees, realizes that Christmas means more than presents. The Grinch, his heart having “grown three sizes that day,” returns to Who-Ville with all of the presents and joins the Whos for a scrumptious feast, featuring a dish called roast beast.

[Lombardo, 279 F. Supp. 3d at 502-503]

The Play, on the other hand:

is a one-actress 75-minute comedic play featuring a rather down-and-out 45 year-old version of Cindy-Lou Who. The Play takes place at Cindy-Lou’s 1970s era trailer in the hills of Mount Crumpit. Cindy-Lou speaks to the audience only in rhyming couplets that are clearly intended to evoke the work of Dr. Seuss. While waiting for guests to arrive for her Christmas party, Cindy-Lou tells the audience the story of her life, beginning with her first encounter with the Grinch at the age of two.

[Lombardo, 279 F. Supp. 3d at 503]

That life includes alcoholism, profanity, drug abuse, non-marital sex, pregnancy, unemployment, hunger, arrest and physical abuse. Id.

Application of the Fair Use Test

The district court’s opinion applied the traditional four-prong fair use test of Campbell v. Acuff-Rose Music, but noted that “The first factor, which addresses the manner in which the copied work is used, is the `heart of the fair use inquiry.'”  Indeed, it went on to say that it began its “analysis of the first fair use factor by considering whether the Play is a parody of Grinch, for parody `has an obvious claim to transformative value,’ and thus deciding that the new work is a parody necessarily entails finding that the new work is transformative.’” Though recognizing that “the Supreme Court has rejected the notion that ‘any parodic use is presumptively fair.’ Campbell, 510 U.S. at 581, 114 S.Ct. 1164,” and that “parody, like any other use, has to work its way through the relevant factors, and be judged case by case, in light of the ends of the copyright law.” Id., the district also admitted that, “[t]hat said, ‘once a work is determined to be a parody, the second, third, and fourth factors are unlikely to militate against a finding of fair use.’”

The district court concluded that the Play parodied Grinch rather than simply using its style, cadence and backdrop to criticize society more generally:

The Play recontextualizes Grinch’s easily-recognizable plot and rhyming style by placing Cindy-Lou Who — a symbol of childhood innocence and naiveté — in out-landish, profanity-laden, adult-themed scenarios involving topics such as poverty, teen-age pregnancy, drug and alcohol abuse, prison culture, and murder. In so doing, the Play subverts the expectations of the Seussian genre, and lampoons the Grinch by making Cindy-Lou’s naiveté, Who-Ville’s endlessly-smiling, problem-free citizens, and Dr. Seuss’ rhyming innocence, all appear ridiculous.

[Lombardo, 279 F. Supp. 3d at 508]

The appellate court affirmed this holding, stating that “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.”

Without Focus On The Original Work, Can Use Be Fair?

While the Play may be parodying Grinch itself, it is unlikely lampooning the Grinch alone.  One suspects strongly that the Play is not lampooning only this single Seussian Utopia, but all such Utopias from Plato’s original Republic to More’s sacred (according to some) follow-up to the Brady Bunch’s more recent saccharin sweet copy. ( “For many Americans who came of age during the Vietnam War, The Brady Bunch‘s utopian vision felt reassuring, and later generations who have gotten into the show can cuddle up to its optimism, which is pretty rare on TV in 2014, ” as noted in a review of the first ever Brady Bunch convention, held in 2014(!).).  If that broader criticism of all utopias is the author’s point, it would seem that “recontextualizing and subverting the Seussian rhyming style” and the “evocation of the message or style of the original work” becomes a fair use as criticism even if an original work is not itself the focus of a parody.  Or that is at least a possibility to be argued for, as previously noted at some length.  In fact, Amy Lai argues for just such a result in her recent article entitled: “The Natural Right to Parody: Assessing The (Potential) Parody/Satire Dichotomies in American and Canadian Copyright Laws,” (2018) 35 Windsor Yearbook Access to Justice 69.  There, in discussing Suntrust Bank v. Houghton Mifflin, Lai addressed the dispute in which “the estate of Margaret Mitchell sued to enjoin publication of Alice Randall’s The Wind Done Gone on the grounds that it constituted an unauthorized derivative work based on Gone with the Wind.” Id. at 85.  (According to Lai, “the story of Gone with the Wind focuses on the life of a wealthy slave owner during the American Civil War,” while “The Wind Done Gone retells the story from the point of view of the African-American slaves and mulattos during the same time period.” Id.) Criticizing the ruling that allowed publication of The Wind Done Gone as parody, Lai stated that “[r]ather than relying exclusively on how Randall’s work targeted slavery and racism in Gone with the Wind, the Court would have taken a more holistic view towards its commentaries on these issues both within and outside the original text.” Id. at 86.

But importantly, the Lombardo district court concluded that the parody must criticize or express an opinion about the original work, the broader approach Lai and others had suggested:

“The heart of any parody is its evocation of the message or style of the original work in order to alter that message or style in a way that humorously expresses the author’s opinion of the original work.” Abilene Music, 320 F.Supp.2d at 90. The Play’s coarseness and vulgarity lampoons Grinch by highlighting the ridiculousness of the utopian society depicted in the original work: society is not good and sweet, but coarse, vulgar and disappointing. Through clever re-arrangement of the original material, the Play attempts to depict the realities of the modem world in which we live. The Play would not make sense without evoking the style and message of Grinch, for there would be no object of the parody.

[Lombardo, 279 F. Supp. 3d at 515]


Thus, the rest of the story, at least in Lombardo, is that this blogger’s previous suggestion for an even further loosening of the fair use test to cover pastiche and satire as well as parody will have to be found in a sequel to, rather than in the next chapter of, that case.

            Emerging Concepts Of Integrity And Intercontextuality

Candor compels this blogger, however, to recognize that that suggestions of a looser fair use standard must have some limiting principle so that original artists can maintain some control over their work and its uses, not simply for economic reasons but for artistic ones as well.  This is certainly true in the parody context as well illustrated by Joshua Marshall in his terrific article on U.K. intellectual property law issues entitled “Balancing The Right of Integrity With Caricature, Parody And Pastiche,” forthcoming in the Journal of Intellectual Property Law & Practice (2018).  As Marshall notes:

The author, therefore, has some interest in the copyright work which extends beyond the purely eco­nomic and, instead, resides in the underlying meaning, purpose or statement made by the author in creating the work. The copyright work is impregnated with the author’s originality and this should be respected and protected from deformity.

Marshall, supra, at 3-4].

After that observation, Marshall usefully highlights the distinction between “target parody” where the parody is aimed at early author’s work (and which fair use should seemingly allow) and “weapon parody,” where another’s style or work is used to target someone or something else (and which perhaps the early author should have greater right to control).  Id. at 5.  This distinction is perhaps useful to explain why the defendants could be seen as infringing Seuss but not Star Trek in Oh The Places You’ll Boldly Go, as previously discussed.  Of course, Marshall’s focus on a moral Integrity Right like that found in the UK is difficult to apply directly in the US, where such rights are not expressly recognized outside limited circumstances like the Visual Artists Rights Act.

Still, U.S. law can learn something from applying Marshall’s target/weapon distinction, just as it can from looking elsewhere (or within).  One place where we might also look is what has been called “The Fearless Girl/Charging Bull controversy.” In Annemarie Bridy’s forthcoming piece in the U.C. Irvine L. Rev., see Bridy, Annemarie, “Fearless Girl Meets Charging Bull: Copyright and the Regulation of Intertextuality (January 9, 2018),” UC Irvine Law Review, 2018, Forthcoming (Available at SSRN: https://ssrn.com/abstract=3099197), one can see analogies and mode of analysis that may help solve some of the fair use conundrums of balancing the protection of past creations against the promotion of new ones.  Though a full review of that controversy or Bridy’s analysis of it is beyond the scope of this piece, it is useful to point out that parody necessarily occasions the same “range of work-to-work and author-to-author relationships” that makes “intertextuality . . . a feature of meaning-making generally.” Id.  In other words, one cannot appreciate the parodists’ meaning without understanding the original authors’ meaning and the contrast the parodists posit.  While finding it in stated words may not be as visceral as seeing it in statutory works as a Fearless Girl stands before a Charging Bull, Bridy’s thorough analysis of intertextuality could also provide a useful prism for assessing the rights, or at least identifying the interests, of the parodist and the parodied.

Understanding how the texts relate to one another, and perhaps whether the original is a target or a weapon can help sort out how rights to creativity and control can be accommodated.  While US federal courts have long used a fair use test that demands comparison of the original work and the alleged parody that follows, it does not appear that any have expressly described that analysis as “intertextual.”  (It appears that only four reported federal cases use the word “intertextual” or “inter-textual,” several as to statutory interpretation and once as to the parties’ motion in a particular case; perhaps that is because the basic definition of the word as meaning “the interrelationship between texts, especially works of literature; the way that similar or related textsinfluence, reflect, or differ from each other” is more easily said is such plain language that the pretentious quarter word is unnecessary).  Still, the concept that a newer work is often analyzed and understood best in the context created by the earlier work is an inherent aspect of resolving  fair use issues through legal analysis in much the same way that intertextual analysis informs a broader understanding of art’s meaning, the original artist’s rights to an intended meaning, and later artist’s rights to give meaning to their own work in their own world—even one filled with pre-existing art.

While US courts have not expressly gone the “intertextual” route, commentators here and overseas have.  In doing so, they have noted the importance of intertextual analysis in exploring parodies’ place.  Some, like me and Amy Lai as already noted, have pushed to extend fair use from parody of the original to use of the original for satirical purposes aimed at another.  And we are not alone:

Even the notorious ‘fair use’ four-step-test, under which no factor should be taken as more important than the others, case law indicates that from time to time courts give emphasis to a particular factor, deciding ex ante if a work constitutes fair use or not, and then try to fit their judgment within the test’s reasoning. In addition the fact that general critique may not qualify as a basis to exempt liability, under the parody exception, reveals the levels of incompetency in understanding basic objectives of contemporary art such as making societal comments. Moreover, recognizing that copyright owners are less likely to license derivatives that parody their own work should be enough to urge the law to step in and fill this creative gap.

[Panoraia Antonopoulou-Saliverou, “Copyright Protection in Contemporary Art: A State

of Insufficiency” (2018), International Hellenic University Scholar Works | Theses and dissertations, SID: 2202160016 (at 44)]

Others have urged abandoning even the limitation of satire in favor of arguing for allowable pastiche—“mimicry without satire”, as it were—as the only way to assure that creativity is not squelched.  Szymanski, Robert M., “Audio Pastiche: Digital Sampling, Intermediate Copying, Fair Use,” UCLA Entertainment Law Review 271, 281, fn. 37 (1996).


But as we know from the discussion above, courts have clung to that “parody of the original” concept, and other recent commentators have recognized that intertextual relationship forces one to see “the parody [a]s an offspring of the original, but … still intrinsically tied to it.” Hein,   It’s Not Funny: What Writers and Book Publishers Should Know about Parody, Satire, and the Fair Use Privilege.  Still, one must remember that parody is but one example of transformative use, and that fair use is not dependent on parody or impossible for satire:

Indeed, the post Campbell trend seems to have shift towards transformativeness, as the decisive factor of the fair use test. This trend is strongly evident in both Blanch v. Koons and Cariou v. Prince decisions. In Blanch v. Koons the court ruled that the incorporation of the plaintiff’s photograph in the defendant’s painting without her prior authorization, did nonetheless, constitute fair use, even though “the defendant’s work was commercial and did not parody the plaintiff’s work.” In Cariou v. Prince, the court also found fair use. Appropriation artist Richard Prince incorporated a number of the plaintiff’s previously published photographs of Jamaican Rastafarians into a series of collages entitled ‘Canal Zone15’, again without the photographer’s prior authorization. Although Prince neither attempted to obtain a license, nor even to claim a transformative use, the 2nd Circuit court held that a work may be transformative even if the work serves the same purpose as the original when it adds “new expression, meaning, or message.” The court called forth the ‘reasonable observer’ test, “holding that twenty five of Prince’s works “manifest[ed] an entirely different aesthetic from Cariou’s photographsand were therefore transformative.

No matter the doctrine’s blind corners current developments in US case law combined with the particular phrasing of the ‘fair use doctrine’ showcase an unprecedented flexibility expressly found in no other jurisdiction

[Panoraia Antonopoulou-Saliverou, “Copyright Protection in Contemporary Art: A State

of Insufficiency” (2018), International Hellenic University Scholar Works | Theses and dissertations, SID: 2202160016 (at 33, fns. omitted; emphasis in original)]

So maybe, relatively speaking, we US practitioners should not complain that our fair use standard and parody tests are too tough.  As has been observed, “No matter the doctrine’s blind corners current developments in US case law combined with the particular phrasing of the ‘fair use doctrine’ showcase an unprecedented flexibility expressly found in no other jurisdiction.” Id. at 33. I guess such flexibility suggests that a lot still remains to be explored as the rest of this story.

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