This story sounds like something written by Dr. Seuss, esquire. The city of Louisville, Ky., had planned to incorporate Seussian characters into its annual Christmas display this year. But the plans have been scrapped after receiving a cease-and-desist letter from DLA Piper’s Barbara Orr, who represents Seuss Enterprises.
From the Associated Press:
The city had planned to use “How the Grinch Stole Christmas” as part of its theme for the annual Light Up Louisville holiday celebration. The display called for an area called “LouWhoVille,” complete with costumed characters from the Dr. Seuss classic such as Cindy Lou Who and the Grinch…
The letter demanded the city and the Louisville Convention and Visitors’ Bureau halt any use of the characters for the Christmas display and agree not to use the characters in the future without permission. It threatened legal action if the city and tourism bureau did not comply.
The city is complying and renaming the display Lou-ville. “It appears these lawyers’ hearts are two sizes too small,” Louisville Mayor Jerry Abramson told the AP.
We say shame on Abramson for perpetuating small-hearted lawyer stereotypes, especially given that he’s a Georgetown Law grad.
Seuss lawyers stop holiday Who-ville in Louisville [Associated Press]
FIRST! OOHRAH!
FIRST to call Dr. Seuss a filthy pornographer!
FIRST! OOHRAH!
Um, anybody from Lou-ville ever hear of copyright infringement? Big suprise that something as profitable as Seuss Ent. wouldn’t like a city using it’s products for profit without permission.
10881 Stansbury Street
Bangui, Central African Republic T6Y 4E5
Anyone know the claim(s)?
This would be a dubious copyright claim at best for use of similar depictions of the characters. Notwithstanding the fact that trademark law places an obligation on the owner to police the use of its marks, it isn’t completely clear to me that there is a high likelihood of confusion. Shame on Orr and her client.
5: You mean you’re ready to send me the $51,000,000 your father left you but that you need safeguarded in the U.S.?! I’ll send my banking information and SS # right away!!
Sure, blame the lawyers.
Why are people always blaming the freakin’ lawyers??? What about the jackhole clients who hire them???
why does it matter that he’s a Georgetown law grad?
IT’S NOT ME!! WHY DOES EVERYONE THINK IT’S PERSONAL?!
This sounds like pretty blatant copyright infringement to me. Doesn’t Louisville run anything by their corporate counsel first?
Clearly, NO – this is why northeasterners think southerners are dumb and/or lazy.
I do not like PEANUTS and CHEESE! I do not like them, Sam I am!
I do not like PEANUTS and CHEESE! I do not like them, Sam I am!
I do not like PEANUTS and CHEESE! I do not like them, Sam I am!
I do not like PEANUTS and CHEESE! I do not like them, Sam I am!
one fish, two fish, red fish, fair use fish.
i’m with 9 – why are they blaming the lawyers? if the people at seuss said it was okay, then the lawyers wouldn’t be sending off such letters.
what’s made worse is that it was a law grad who blamed the lawyer. inexcusable.
This is a res ipsa issue, if I’ve ever seen one.
Horton hears a suit.
So, its the lawyers’ faults. They snuck into the mayor’s office at night and infringed on someone else’s IP.
Can any IP attorneys confirm whether there is an “Its Christmas” defense to infringement? If so, I need to hire some guys to sell photocopies of books and pirated movies for me all through December.
COULD SOMEONE PLEASE RESPOND TO THE ISSUE RAISED BY 13? THANK YOU IN ADVANCE, MY INTERNET FRIENDS!
I only took TM in lawschool…..but if the City dressed up cardboard cut-outs of the DLA attorneys as the Grinch, would that constitute farce or comedy sufficient to circumvent C/TM laws?
A vote for #17 to be new title (or at least subtitle) of blog entry.
20: parody is fine as ‘fair use’ under copyright, even if the use is commercial; it’s less cut and dried under trademark law, where use, even as an object of ridicule, of a competitor’s mark to sell your product is sometimes verbotten.
They’d probably be fine, since that wouldn’t be a trademark use and they’re home free under copyright.
This is blatant trademark infringement and false association under Section 43(a) of the Lanham Act.
It’s possible Lou-ville could have gotten the permission if they had handled this the right way. But when Dr. Seuss was alive, he was very protective of his characters and books. Not till after he died did we have Seussical the Musical, bad movies starring Jim Carrey and Mike Myers, Seuss world at Universal Studios, How the Grinch Stole Chirstmas on Broadway, etc., etc.
When do these characters enter the public domain?
The Mayor has the comment of the day.
I agree with 22. Good analysis. The letter sounds pretty standard, whether or not they’d actually have a decent claim.
22-
“parody” – that’s the magic word. thanks.
-20
25 – though the copyrights will lapse 70 years after Dr. Seuss died, the characters could remain protected in perpetuity via trademark law.
@4 – How was the city using the characters “for profit”?
6 is wrong on both counts. It’s the mayor of Lou-ville who should be embarrased
29 – it draws visitors to shop and stay in Louisville downtown. There’s your profit.
28: the protection via TM is more limited. The Lanham act doesn’t necessarily preclude me from selling Grinch dolls as such. It just limits me from selling Grinch dolls in such a way as to make a consumer think it was a Grinch doll from Seuss Enterp.
32 – any Grinch doll will give rise to likelihood of confusion and dilution, even if it doesn’t resemble the exact rendering in a trademark registration. There will be trademark protection in perpetuity as long as Seuss keeps selling merchandise, books etc.
32 – any Grinch doll will give rise to likelihood of confusion and dilution, even if it doesn’t resemble the exact rendering in a trademark registration. There will be trademark protection in perpetuity as long as Seuss keeps selling merchandise, books etc.
- 28
I’m not sure I see how Dr. Suess’s work would be parodied here. It’s not enough that the city of Louisville is parodied because to be fair use it has to be the copyrighted work that is parodied. At any rate, if you’re crying “fair use” you’re already getting sued.
Copyright law as it is actually enforced has very little to do with the man-on-the-street or even lawyer-on-the-street thinks ought to be legal.
28/33/34,
Disagree: arguably possible to thread between selling embodiment of an original idea now in the public domain (Grinch doll) without giving rise to confusion with or diluting the mark used by Seuss.
Generic packaging of an identical doll would be the best approach, I think. Remember that the Lanham act only protects the Grinch image as a mark, not any time it is used.
35: I was responding to 20’s hypothetical (“but if the City dressed up cardboard cut-outs of the DLA attorneys as the Grinch”).
Please remember to read the full text before selecting your answer, even if you didn’t do so on the LSAT.
-22
36 – I disagree. if you would like to test your theory, why don’t you sell a Grinch doll in the packaging you describe and see how fast you get a C&D letter from Seuss Enterprises.
36,
It’s being used as a mark if it gives the impression that the TM owner authorizes or endorses it. I think most people would think that Dr. Suess, Inc. authorized or endorsed a Grinch doll.
Read Section 43(a) of the Lantham Act and then tell me if you disagree.
38: surely very fast. Understanding that most customers would not have the economic incentive to fight it out, I think Seuss would lose at trial and in the inevitable appeal.
-36
I agree with 39 – if you read Section 43(a) of the Lanham Act you’ll realize you wouldn’t win this one.
I’m not sure where you get the notion that the Grinch character is an original idea now in the public domain, since there is no basis in the law for such a statement.
28/33/34/38
39: Don’t disagree with the text or the rule stated; do disagree with your contention that generic packaging would fail to mitigate the mistaken impression required for liability. Like most generic products, it would be simple black & white and would state “Producer of This Grinch Doll Is Not Affiiated With Seuss.”
Boston Hockey not withstanding, I think one can sell a public domain idea in such a way as to avoid TM confusion. You, like a lot of people who write C&D letters for a living, are forgetting the overarching point of the Lanham Act and the prerequisite of source indicating use.
-36
41: I’m assuming that this Seuss work has long since passed into the public domain and is no longer protected by copyright. If that’s not the case, obviously the trademark issue is moot.
-36
36/42 – so much of what you are saying is wrong. Just by saying “Producer of this Grinch doll” would infringe Seuss’s trademark rights in GRINCH. Generic pacgaging and your disclaimer would only emphasize the willful nature of your conduct and make you liable for damages.
-28 etc.
44: “Just by saying “Producer of this Grinch doll” would infringe Seuss’s trademark rights in GRINCH” You can’t be serious; you’re either trolling or incredibly stupid.
Here’s a hint: instead of using Westlaw or a trademark casebook to see that you’re wrong, just walk down the hair spray isle of your local drug store. Read the back of a generic products can.
Just another example of how far off the deep end the legal profession has gone. I guarantee you that some lawyer dreamed up this scheme to bill more hours.
If this were a private organization, then it would make sense, but a community festival? That’s going way too far.
Seuss should sue their lawyers for the bad advice. Technically this suit CAN be brought, but the firm failed to ponder whether it SHOULD be brought.
In addition to the free advertising that Seuss lost, now they have bad publicity and look like a “Grinch”.
Way to go.
36 – please reread my post 28 – Dr. Seuss’ works are still protected by copyright and can be protected by tm in perpetuty assuming use continues.
28/41 etc.
Would it be legal under the Lantham Act to photcopy the Grinch’s balls for profit?
45 – I am not the one who’s incredibly stupid. Do you think GRINCH is an ordinary word not subject to trademark rights? Trademark Reg. No. 2784230 covers THE GRINCH for (among other goods) “toy dolls”. This is very different from the “compare us to ___” hairspray cases – they’re not calling themselves Paul Mitchell or whatever. But if you call your own product “this Grinch doll” you are committing trademark infringement.
44 et al.
Interesting point, 49–the unique name does present another layer of source confusion: what about an exact duplicate of the Grinch doll labled as “Fictional Mean, Green, Toy-Stealing Machine Doll”?
50 – There are copyright and trademark rights in the likeness of the Grinch character too, so that wouldn’t save you. You might be safe if you change the appearance of the doll enough so that consumers would not be confused, but you might still face a claim of trademark dilution under the theory that it tarnishes or blurs the brand.
49 et al.
13/19 -
I would not, could not, in a box.
I could not, would not, with a fox.
I will not eat them with a mouse.
I will not eat them in a house.
I will not eat them here or there.
I will not eat them anywhere.
I do not eat peanuts and cheese.
I do not like them, Sam-I-am.
51-
I’ve taken copyright off the table, as it will eventually lapse for the grinch. W/r/t trademark in the exact image of the grinch doll, suffice to say that I don’t agree with your contention that the image itself can convey likelihood of confusion. Putting the doll on sale in a generic box that disclaims any affiliation with Seuss Enterprises would surely get my client a C&D letter, but assuming they wanted to pay for a trial, they’d win.
Seuss has trademark protection for the Grinch design. This would form a basis for a Lanham Act infringement claim, and they would win.
51 etc.
52: I just reported you to DLA Piper!
And don’t forget state law IP claims like unfair competition and unjust enrichment.
DENNY CRUM TO 190K!!!!
The non-stupid thing for Suess, Inc. to do here would be to negotiate some sort of licensing arrangement with the city instead of going straight for the cease and desist.
52:
“Cheese” and “am” do not rhyme. You should have changed the last line to “I do not like them, Sam, if you please.” or something that rhymes with cheese. If you are going to do a parody, you need to put some effort in it.
In response to #12 (and #31):
Seems you are a little judgmental here! Don’t ask what we Kentuckians think of northeasterners! We at least have the manners and intelligence to not judge an entire region of the country based on one “news” article. I think you might consider that most of the coverage of this “stink” is done in jest. Light up Louisville is a traditional tree-lighting to kick off our dismal holiday season, just like your big parades, etc, up there. And for the record – Yes, the City should have checked their legal status here. Yes, this attorney was doing her client’s bidding. No, Light Up Louisville does not get a bunch of revenue from shoppers out of this. [it is a FREE family/kids area! why would anybody BUY food?]. Yes, Seuss lost more than they won here. Yes, everybody around here is laughing at ourselves, them and the whole situation. Good grief, throttle back the outrage and laugh! We all are!
Ball photocopying seems to be the only ethical thing to do in BigLaw
So do any of you lawyer dbags get excited for Auburn – Alabama?
Any of you dbags rooting for Auburn over Bama this weekend?
Any of you dbags rooting for Auburn over Bama this weekend?
ROLL TIDE!!!! ROLL TIDE!!!!
DLA has more than 4,000 lawyers. Almost 80 of them are competent.
I’ll have you kicked off a this list faster than you can say Half -Skadden you Auburn neophyte.
Shame on DLA/Seuss Enterprises for being such douchebags that their response was a cease and desist letter, rather than to figure out some kind of a deal. This appears to be stupid, reflexive, SHITTY lawyering, but what do you expect from DLA-Mart?
-A Better IP Lawyer
Well… that might be a little strong. I mean Dr. Suess might have a policy of granting very few licenses or it might have already granted an exclusive lisense for this sort of thing.