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Yes, it’s fair use!

OK, now you can read the opinion, well, except don’t pay too much attention to the trademark analysis, because I’ll want to play another round Is it Fair Use? with that. (Click here if you missed the problem.)

Remember, the publishers of Elf On did not sue over Elf Off’s story, but over its depiction of the elf doll. Nevertheless, Elf On can’t escape the gravitational pull of the Wind Done Gone Case:

In Suntrust, the Eleventh Circuit found a critical parody of Gone With the Wind (GWTW) to be a transformative use. Id. “It is principally and purposefully a critical statement that seeks to rebut and destroy the perspective, judgments, and mythology of GWTW.” Suntrust, 268 F.3d at 1270. In making war against the original, The Wind Done Gone (TWDG) ultimately “demystif[ied]” and “strip[ped] the romanticism” from the original. Id. at 1270. In TWDG, the characters (all inversions of characters in GWTW) became the vehicle for a parody, contradicting the racist assumptions enshrined in the original book.

Elf Off clearly makes transformative use of the copyrighted elf doll. Plaintiff’s only use of the copyrighted elf doll is as a free-standing doll, which parents can move around the house to create the impression that it has a magical life of its own. Defendant depicts the doll in rather unromantic settings that similarly demystify the magical idea of the elf doll in Elf On. The elf doll in Elf Off is the vehicle for the parody.

Defendant used an image almost identical to Plaintiff’s sitting elf image in two photographs of what looks like but is not Plaintiff’s book. This use furthers Defendant’s attack on Plaintiff’s work by showing the book covered with clearance stickers and next to a Zombie Slayer DVD on the back cover of Defendant’s book.

Defendant also used an inverted variation of the sitting elf image on the cover, an elf dangling from a shelf. However, that image includes a more realistic depiction of the elf doll than the sitting elf image. Because it does not do much to advance Defendant’s story or convey commentary, the dangling elf use does not appear to be as transformative as the photos of the elf doll or the defaced images of Plaintiff’s book. However, because it does transform the original sitting elf image in the context of a parody, it still constitutes a transformative use.

Once the court finds Elf Off to be a parody, all of the other factors fall in line, even the ones you’d think would favor Elf On. For example:

  • Elf Off is clearly a commercial work, which should favor the Elf On folks, but “when the parody itself is the product being sold, the use is less commercial in nature than if the parody was simply part of the advertisement for a different consumer product.”
  • Elf On is clearly a highly creative work, but “[t]his factor is generally neutral in parody cases, due to their reliance on well-known creative works.”
  • The entirety of the elf doll was used, but the off-color depictions of the doll in Elf Off form only a small part of the overall work, The court cited Mattel, Inc. v. Walking Mountain Prods., 353 F.3d 792 (9th Cir. 2003), which involved an artist’s bizarre use of a Barbie doll in photographic artwork that was meant to criticized “the objectified image of women.” Anyway, it’s well understood that a parodist has to take a good deal of the underlying work so that the audience will recognize what’s being parodied.
  • Less surprisingly, the judge gave little credence to the Elf On publisher’s argument that Elf Off will displace sales. The fundamental problem is that the sales in question would be of the doll itself, and the judge didn’t see how a photographs of the doll would substitute for the doll itself.Anyway, Elf Off is so clearly inappropriate for children–Elf On’s target audience–that consumers are unlikely to substitute one for the other.

As you can see, a finding that the accused work is a parody of the underlying work is powerful. What’s strange is the accused work owes so much to the underlying work; without it, there would be nothing to parody and, therefore, no work. In some ways, Elf Off is just a naughty version of Elf On. Arguably, that’s a market for Elf On to exploit (or not). At the same time, robust debate is something courts like to foster, and diversion of a potential revenue stream is part of the price we’re willing to pay for that.

Thanks for reading!

Rick Sanders

Rick is an intellectual-property litigator. He handles lawsuits, arbitrations, emergency injunctions and temporary restraining orders, opposition and cancellation proceedings, uniform dispute resolution proceedings (UDRPs), pre-litigation counseling, litigation avoidance, and other disputes, relating to copyrights, trademarks, trade secrets, domain names, technology and intellectual-property licenses, and various privacy rights. He has taught Copyright Law at Vanderbilt University Law School. He co-founded Aaron | Sanders with Tara Aaron-Stelluto in 2011.