NEW YORK – In a case with great potential relevance for creators of adult parodies of mainstream entertainment works, Dr. Seuss Enterprises (“DSE”) is arguing on appeal that a trial court erred in finding Matthew Lombardo’s raunchy play Who’s Holiday! a parody of How the Grinch Stole Christmas! and thereby protected by the fair use doctrine.

Yesterday, the Second Circuit Court of Appeals in New York heard oral arguments in DSE’s appeal of the trial court’s ruling. The hearing ran just over 24 minutes, as the two sides debated various aspects of the four factors which go into a fair use determination.

Representing DSE, Andrew Deutsch of DLA Piper opened the hearing by asserting the district court “made three fundamental errors” in finding in Lombardo’s favor at trial.

“On the first factor of fair use, Mr. Lombardo did not transform the material he took from Grinch,” Deutsch said. “He simply did two things; he retold the second half of the Grinch book, using different words but as a very close paraphrase without alteration, without new insights and without new meaning. And the second half of the play is a sequel. He takes the same characters, starts them at the end of Dr. Seuss’ story, and tells a new story, again without transforming the original material or commenting on the original material in a transformative manner.”

This began an exchange which may signal at least one member of the appellate court is skeptical of DSE’s argument on the first fair use factor. One of the judges interrupted him to ask if Lombardo used the original material to tell a new story, “why isn’t that transformative?”

“Because it is the right – one of the most important rights in the hands of the copyright owner is a derivative right, and one of the derivative rights is to make sequels using the original characters,” Deutsch replied.

“This isn’t a sequel,” the judge responded. “Depending on one’s viewpoint, it’s either a crude use of your client’s material, or an adult use of your client’s material. It’s not a sequel.”

Deutsch said he “begged to differ” and pointed the judge to three dictionary definitions of “sequel” offered in DSE’s appellate brief.

“The definition of a sequel… is you start where the old story left off and you continue the story, and that’s what (Lombardo) does,” Deutsch said. “He picks up Cindy Lou Who at 18 and the Grinch at whatever age the Grinch is and then tells a whole series of stories, adult they may be, but they have nothing to do with the original story at all.”

At this point, another judge on the panel chimed in: “That’s why it’s transformative.”

Laughter could be heard in the courtroom following that comment, but Deutsch was undeterred.

“It’s not transformative in a sense that’s protected by the fair use doctrine,” he replied.

Deutsch then offered an example of sequels using the same characters as the original work and argued the use of Seuss’ characters in Lombardo’s play was analogous to those.

“You’re going to tell me Theodor Geisel would have written this?” the judge asked. (Dr. Seuss’ real name was Theodor Seuss Geisel.)

“I’m telling you that the Dr. Seuss estate, the Dr. Seuss Enterprise, has authorized a number of Grinch stories based on the characters telling different stories,” Deutsch replied. “I’m not saying Dr. Seuss would have written this, I’m saying this is an appropriation of the right that belongs to Dr. Seuss, or in today’s terms, to his estate.”

Turning to the third factor of the fair use test – the amount and substantiality of the portion used in relation to the copyrighted work as a whole – Deutsch argued Lombardo had used more of the original work than was reasonably necessary.

“How much is too much of a short story?” one of the judges asked.

“Your Honor, it truly depends, there are no bright lines in fair use,” Deutsch said.

“So reasonable judges can differ on that?” the judge asked in response.

“They can, but… the test is ‘reasonably necessary’” Deutsch said. “And 60 lines in the play, one third of the play, one half of the Grinch book is more than is reasonably necessary.”

The argument then turned to the fourth factor of the fair use doctrine, the effect of the use upon the potential market for or value of the copyrighted work.

Deutsch noted that the trial court didn’t allow DSE to develop evidence of how Lombardo’s work would impact the market for duly licensed adaptations of the Grinch book, noting that DSE has licensed Seuss’ work to third parties to develop films and other derivative works. Instead of allowing DSE to enter that evidence, the trial court relied on its “gut instinct” to decide there was no such impact on the Grinch book in this case.

One of the judges chimed in to say the two works have “a different audience.”

“That’s a fact, your honor, it’s never been proven, it’s a matter for evidence,” Deutsch said.

Another judge then commented that “nobody would suggest that children see this play.”

Deutsch conceded the DSE isn’t suggesting that children see the play either, but noted DSE can “license to adult audiences, can license this story” to be made into productions which would appeal to an adult audience.

“Adult doesn’t necessarily mean obscene, or references to drug use or bestiality as the district court thought was important,” Deutsch said. “What it means is that it’s appealing primarily to adults. And we have the right to present facts to that evidence.”

After Deutsch finished, attorney Jordan Greenberger responded for Lombardo.

“The works speak for themselves,” Greenberger said of Lombardo’s parody and the original Grinch book. “We asked the district court to do exactly what we’re asking this court to do, which is simply read the play, read the book, compare the two and analyze it under relevant fair use case law.”

The court asked Greenberger to respond to Deutsch’s points about DSE’s right to market other versions of the Grinch to adults.

“The play is a parody – they can’t control the market for parodies, no matter what,” Greenberger said.

As for the notion the play is a sequel and not a parody, Greenberger paraphrased the plot of Lombardo’s play to make his point in rebuttal.

“Where in the (Grinch) book does it suggest that this Cindy Lou Who would grow up, have premarital sex with the Grinch, have his baby, her parents would reject the baby, and reject her, that she would have to work for the circus cleaning up elephant dung, and then murder her husband after they ate the family dog,” Greenberger said. “Where in the book does it suggest that’s their characteristics?”

One of the judge’s corrected Greenberger on one point in his summary: “I thought she didn’t murder him, but that it was accidental.”

After the laughter in the courtroom died down, Greenberger responded “Your honor, I stand corrected.”

Greenberger also argued DSE is “conflating derivative works with transformative works.”

Citing a prior case which took up fair use, Greenberger noted that under the ruling in the case, “derivative work transforms the form, a transformative work transforms the purpose.”

“Here, it’s transforming the purpose for comment and criticism,” Greenberger said of Lombardo’s play.

Finally, during Deutsch’s rebuttal to Greenberger, a judge asked Deutsch “If we find there’s a fair use in creating a parody, doesn’t that overwhelm the fourth factor?”

“It shouldn’t in this case, your honor,” Deutsch responded, again noting that the trial court didn’t even permit DSE to offer evidence in support of its fourth factor argument.

“The supreme court has said you must consider all four factors, and then you must consider them wholistically,” Deutsch said. “That wasn’t done by the district court.”

The final words in the hearing were left to one of the judges.

“Interesting case,” she said. “We’ll reserve decision.”

It’s not clear when the appellate court will issue its decision in the case, or whether it will remand the case to the lower court for further litigation on the points raised by DSE. Either way, the Second Circuit’s decision probably won’t be the last action in the case.