Or, the Elf Done Gone.

Welcome to another edition of Is it Fair Use? the game in which I present the facts and you take a blind stab at whether the court found fair use.

Judges clearly live for parody cases. Remember how much fun the judge had in the “What What (in the Butt)” vs. South Park case? This judge has almost as much fun in a case pitting the wholesome The Elf on the Shelf (“Elf On”) against its alleged parody, The Elf off the Shelf (“Elf Off”). I’ll link to the opinion here, but don’t read if you’re playing Is it Fair Use? The judge gives it away in the first paragraph!

Here is how the judge sets the stage:

The motion now before the Court calls to mind the old adage, “You can’t judge a book by its cover.” This time-worn advice instructs us to give moreattention to the substance of a work than its shiny packaging. However, the Court’s ruling on the instant motion turns on whether in the madness of holiday shopping it is likely that the average consumer of Plaintiff’s book, possibly giddyfrom gingerbread lattes and twenty-four-hour canned holiday jingles, will be confused by the similarity of the book covers of The Elf on the Shelf and Defendant’s purported parody, The Elf off the Shelf.

Elf On is more than just a book. It’s a boxed set, containing the book and an elf doll. The book tells of how Santa employs jolly little elves as spies “scouts” to observe and report on the extent to which a child is naughty or nice. (On the upside, the elves spare the children the trouble of preparing lists for Santa because the children can just tell the elves.) The book’s cover shows our titular elf, sitting, there, on the shelf, with some books and a tiny Christmas tree. Parents are supposed to place the elf doll in different parts of the house, moving it nightly, to give the impression that the elf is, in fact, observing the child. This not only tons of fun but “it help[s] the children better control themselves. All it [takes] is a gentle reminder that the ‘elf is watching’ for errant behavior to be modified.”

I’ll let the judge explain how Elf Off works:

Elf Off tells a very different but related story. The elf narrator describes himself as a discount elf (sprung from a marked-down copy of Elf On) who is supposed to help Santa decide who’s been naughty and nice. But the stories quickly diverge from this common ground. In Elf Off, the elf warns that he’ll be “pissed” if children give him a name he dislikes. Once he’s given a lousy first name, Horace the Elf decides he’s not going to be a good elf. Rather, he’s going to drink spiked eggnog, try to make his “move” on Barbie while Ken’s away at the Malibu dream house, watch pornography in the middle of the night, change the children’s gift list so there’s “something in it for me,” and finally, run away to the tropics rather than return to the North Pole.

The book jacket tells readers Horace decided to accept the “shelf gig” because it was a chance to leave his parents’ basement for the first time in two hundred and sixty seven years. Prior to “being sent out to spy on and judge small children, he worked the assembly line in Santa’s Workshop.”

(Internal citations omitted.) One other thing: Elf Off contains photographs of the Elf On elf doll, with its color changed from red to green, in a number of embarrassing situations , such as “splayed on the table with spilled eggnog, snuggled in bed with Barbie, hanging out in the Christmas tree with a nutcracker, and lying behind a toilet after ing tormented by the cat.”

The publisher of Elf On sued the publishers of Elf Off for copyright and trademark infringement. We’ll focus on the copyright issue for now (and leave the trademark issue for a later post). Elf Off hadn’t been published yet, but the publishers of Elf On got wind of it anyway and sought to preliminarily enjoin publication and sale.

The funny thing was that Elf On’s publishers couldn’t sue on the book’s contents. They’re nothing alike. Instead, instead they sued on (1) the use of the elf doll (i.e., all those embarrassing pictures), and (2) the cover. You can compare the two covers and see for yourself.

Naturally, the Elf Off publishers argued that their book was a parody of Elf On and, therefore, a fair use. Based on what you know (and no peeking at the opinion!), how did the judge rule? Fair use or not? Don’t forget to refer to the fair-use factors in the initial episode in this series for a refresher.

Wait, before you answer, consider this. The Elf On/Elf Off case is being heard in the Northern District of Georgia, and that court is in the Eleventh Circuit. The Eleventh Circuit is the court that ruled in Suntrust Bank v .Houghton Mifflin Co., 268 F.3d 1257 (11th Cir. 2001), the notorious The Wind Done Gone case. In that case, Alice Randall basically re-wrote Gone with the Wind, but from the point of view of a mulatto slave who is the child of Scarlett O’Hara’s father and Mammy. As you would expect, The Wind Done Gone borrowed extensively from Gone with the Wind: the same characters, the same scenes, the same plot points, just told from a different point of view. The publisher of The Wind Done Gone alleged fair use*. Several commentators predicted that the fair-use defense would fail, arguing that The Wind Done Gone was merely using Gone with the Wind as a vehicle to criticize antebellum attitudes toward slavery and was not a criticism of Gone with the Wind itself. These commentators seemed vindicated by the district court, which preliminarily enjoined publication of The Wind Done Gone. The Eleventh Circuit, however, reversed. The court viewed The Wind Done Gone as not merely a re-telling of a story but also a stinging criticism of “the perspective, judgments and mythology of” Gone with the Wind.

* The publisher also argued that the works weren’t substantially similar, an argument that the court took about a paragraph to reject. 

When you’ve made your decision, click here.

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.