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Green “Elf off the Shelf” is parody of red “Elf on the Shelf” in part because ‘Zombie Slayer DVD’ on back

March 15, 2012

September 22, 2011, in CCA and B, LLC, v. F + W MEDIA INC., the Federal Court decided that Plaintiff, the creators of “Elf on the Shelf”, “failed to meet its high burden for preliminary injunctive relief. Consequently, the Court DENIES Plaintiff’s motion for preliminary injunction.” Therefore, both the Plaintiff’s book, “Elf On the Shelf”, and the Defendant’s book, “Elf Off the Shelf”, are currently available.

Plaintiff’s website, www.elfontheshelf.com
Defendant’s website: www.elfofftheshelf.com

Judge Amy Totenberg, writing the opinion for the Court (US District Court for the Northern District of Georgia, Atlanta Division) declines to offer injunction for of many reasons. Importantly, the opinion states that the basis of the allegations is only similarities in cover design. And the Court includes images of both covers as the only appendix.

But the Court notes that we should not judge books by covers:

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 more attention 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 giddy from 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. Because Plaintiff has not met its burden of showing a substantial likelihood of such consumer confusion or successfully refuted Defendant’s fair use defense to copyright infringement, the Court DENIES Plaintiff’s motion for preliminary injunction.

The Judge also notes the small but notable disclaimers that mark the Defendant’s book as a parody. Also notable to the Court is a picture on the back of Defendant’s book depicting a green-clothed elf reading Plaintiff’s book. But the Court decides this is a transformative use of Plaintiff’s book cover and the Court notes the other objects in the image: a TV remote control and a “Zombie Slayer DVD”. These Court finds these features transform the Plaintiff’s work into a parody.

The back cover shows a photograph of the elf doll holding the Elf On book while surrounded by a remote control, Zombie Slayer DVD, and various gift cards. The back cover includes a small-print disclaimer that the book is a parody and was not “prepared, approved, or authorized” by the makers of Elf On. The copyright page includes a similar disclaimer of association with Elf On.

The Court continues:

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.
Footnote #7: While this image of the book does include a nearly exact replica of the sitting elf image, the photograph is a very small portion of Defendant’s work and primarily provides a distinguishing reference to the original. Where the reference to an original copyrighted work is small in proportion to the whole, the use may be considered “inconsequential.” See Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605, 611 (2d Cir. 2006). EndFootnote
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.

This story made noise on the legal blogs back when it was decided but I am not sure any of the blogs hit on the Zombie part. This seems like a nice win for Zombies as an identifiable feature adding to an overall transformation into parody.

Volokh Conspiracy noted that the Judge is the sister of an NPR legal correspondent
Rebecca Tushnet’s 43(B)log thorough analysis includes “Plaintiff was conflating trademark and copyright. Thus, there was no likely success on the merits of the copyright claim” AND “There was no evidence of actual confusion, which is frequently key in parody cases.”
Aaron Sanders Law presented questions of the case and then a second part which answers the hypotheticals with the opinion.

Meanwhile the Plaintiff’s book and doll product, “Elf on the Shelf”, continued to sell incredibly well this past holiday season. According to the Denver Post, December 24, 2011, “Persistence has “Elf on the Shelf” flying off shelves” In the context of this litigation, that headline is humorous. See also, Mae Anderson’s Huffington Post, December 23, 2011, “The ‘Elf On The Shelf’ Christmas Phenomenon”

NMA TV also parodied the Plaintiff’s book and doll in a video called “Elf on the Shelf all the rage for Christmas 2011” in which the elf doll goes on a murderous rage. But now you can only watch a censored version – the uncensored is still available outside the U.S. – but Plaintiff, CCA and B, producers of Elf On, sued NMA and this time alleging a trademark complaint, so YouTube has blocked the original version. Leading OC Media’s Matt Coker to report on Dec 20, 2011 “Elf on the Shelf Means You Better Watch Out … Or He’ll Sue!”
The censored version of NMA’s video about Elf On:

NMA’s follow-up after they were sued:

And Finally, a remaining question about Elf Off: Is that a real DVD “Zombie Slayer” in the image? I think defendants, Elf Off, they maybe created the Zombie Slayer DVD box just for the image because I can’t find that “Zombie Slayer DVD” anywhere else – if someone else in internet land finds it let me know in a comment.

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