CCA & B, LLC v. F + W Media Inc.

Decision Date22 September 2011
Docket NumberCivil Action No. 1:11–CV–2056.
Citation819 F.Supp.2d 1310
PartiesCCA AND B, LLC, Plaintiff, v. F + W MEDIA INC., Defendant.
CourtU.S. District Court — Northern District of Georgia

OPINION TEXT STARTS HERE

Christopher Mingledorff, Moore Ingram Johnson & Steele, LLP, for Plaintiffs.

Glenn D. Bellamy and Stephen E. Gillen, Wood Herron & Evans; Ashish D. Patel, Thompson Hine LLP–GA, for Defendant.

ORDER

AMY TOTENBERG, District Judge.

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 [Doc. 2].

I. PROCEDURAL BACKGROUND

On June 24, 2011, Plaintiff CCA and B, LLC (“CCA and B” or Plaintiff) filed its complaint in this action, along with a Motion for Temporary Restraining Order and Preliminary Injunction [Doc. 2]. Plaintiff seeks an Order enjoining Defendant F + W Media, Inc. (“F + W Media” or Defendant) 1 from publishing, producing, marketing and selling Defendant's publication, The Elf off the Shelf, until a trial on the merits of Plaintiff's claims has been conducted. The complaint presents claims for federal trademark infringement, copyright infringement, trademark dilution, and violation of the Anti–Cyber Squatting Consumer Protection Act; state unfair competition, deceptive trade practices, and false advertising; and common law trademark infringement and unfair competition. In its brief and oral argument supporting its motion for preliminary injunction, Plaintiff argued that it had a substantial likelihood of success on only the trademark and copyright infringement claims. (Pl.'s Br. Supp. Mot.) This order therefore considers only those claims.

The Court held a hearing on the motion on August 24, 2011. The parties put on no witnesses at the hearing; the only evidence admitted was a packet of website screen shots. Plaintiff notably failed to put forth evidence of consumer confusion about the two products or irreparable harm beyond the exhibits attached to the parties' briefs. The Court therefore decides the instant motion based on consideration of all relevant pleadings and papers filed by the parties, the web screen shots admitted at the hearing, the original publications of both books, and oral argument.

II. FACTUAL BACKGROUND

Plaintiff's publication The Elf on the Shelf (“Elf On”) is a popular children's Christmas book sold in a 10? by 10? by 2.5? box set with a plush toy elf doll 8.5 inches in height in a red costume.2 Since Elf On hit the shelves in 2005, Plaintiff claims it has sold more than 1.5 million copies. (Pl.'s Br. Supp. Mot. at 2.) Plaintiff owns registered copyrights in the elf doll and an image of an elf in a red Santa-like costume sitting on the shelf (the “sitting elf” image), which graces the cover. (Compl. Exs. B, C.) Plaintiff owns registered trademarks in the word mark “The Elf on the Shelf,” the stylized logo used on the cover of its book, and the sitting elf image. (Compl. Exs. D, E, F.) Plaintiff also currently uses the domain name www. elfontheshelf. com to promote its book.

The story in Elf On explains how Santa keeps track of who's naughty and nice each year and what are their wishes: by employing millions of “scout” elves around the world to monitor children's behavior. (Compl. Ex. A.) These friendly elves are dispatched to individual families to watch the children's behavior and report nightly back to Santa. ( Id.) The story warns children that the elf will report every “push or a shove” or broken rule, but reassures that “small acts of kindness will not be a loss.” ( Id.) The elf encourages children to tell him their every gift desire so he can report their lists to Santa. ( Id.)

Parents who wish to bring the story to life can participate by moving the elf around the house for children to find each day as evidence that the elf returns to the North Pole at night to tell Santa about their behavior. ( See id.) The book jacket informs readers the author discovered an “unwitting” benefit of this “tradition”: “it helped the children to better control themselves. All it took was a gentle reminder that ‘the elf is watching,’ for errant behavior to be modified.” ( Elf On.)

The book is illustrated with subdued watercolor paintings that resemble the world of a child's imagination more than that of reality. (Compl. Ex. A.) The cover includes the stylized logo of the word mark and the sitting elf logo mark, along with the subtitle “A Christmas Tradition” and a byline identifying the authors and illustrator. ( Id. at 1.) The book and doll set is available at major book retailers including Amazon.com. (Pl.'s Br. Supp. Mot. at 7.)

Early in 2011, Plaintiff got wind of Defendant's publication, The Elf Off the Shelf (Elf Off). (Pl.'s Br. Supp. Mot. at 5.) Plaintiff claims Defendant's work infringes on its copyrights and trademarks. ( Id.) Defendant argues that Elf Off is a non-infringing parody of Plaintiff's book. (Defs.' Mem. Opp'n Mot.)

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. (Compl. Ex. H.) 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. ( Id. at 6.) 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. ( Id.)

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.” ( Id.)

Defendant's book cover includes the book title in a font that is quite similar to Plaintiff's stylized logo font, an image of an elf in a green costume dangling from a shelf, the subtitle “A Christmas Tradition Gone Bad,” a byline attributing the story to Horace the Elf, and a final sentence, in red font: “A new holiday parody—for Mom and Dad!” 3 ( Id.; emphasis in original.) The book is also 10? by 10? by .25?—much thinner than Plaintiff's box set. ( Id.) Elf Off is not sold with a doll or special packaging. ( Id.) 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. ( Id.) 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. ( Id.)

Defendant illustrated its book with photographs of Plaintiff's elf doll, but in a green rather than red costume. ( Id.) Photographs show the elf splayed on a table with spilled eggnog, snuggled in bed with Barbie, hanging out in the Christmas tree with a nutcracker, and lying behind a toilet after being tormented by the cat. (Compl. Ex. H.) The first page of the Elf Off story shows a small picture of Plaintiff's book, including the sitting elf image, partially obscured by “75% off” and “super markdown” stickers. ( Id.)

Defendant has listed its book for pre-sale with major online retailers including both Barnes and Noble and Amazon.com. It has also created a website promoting the book at www. elfofftheshelf. com. F + W Media projects more than $167,000 in profits from sales of its book. (Defs.' Mem. Opp'n Mot. Ex. B at 2.)

In its brief, Plaintiff argued that Defendant's book attacks and undermines Elf On's “wholesome and healthy” image and seeks merely to capitalize on the brand recognition Elf On commands among likely consumers. (Pl.'s Br. Supp. Mot. at 6.) Plaintiff cited an article in Publisher's Weekly that reported that Elf Off is intended to “knock a holiday favorite off its perch.” ( Id.) Defendant agrees that is precisely their goal, but says there is nothing naughty about it. (Defs.' Mem. Opp'n Mot. at 3.) At oral argument, Plaintiff primarily argued that Defendant's book is not in fact a parody and therefore Defendant's use of Plaintiff's properties is actionable copyright and trademark infringement.

Plaintiff put on no witnesses at the hearing, relying entirely on the books' covers to support its argument that Elf Off infringes its copyrights and creates a likelihood of consumer confusion. Defendant contends its work is a parody and therefore protected by the fair use safe harbor in copyright law and not likely to confuse as required for proof of trademark infringement.

For ease of reference, the table below summarizes the intellectual properties and alleged infringements at issue in this case:

+-------------------------------------------+
                ¦Plaintiff's Property ¦Defendant's Allegedly¦
                ¦                     ¦Infringing Uses      ¦
                +-------------------------------------------+
                
Copyright in Elf Doll                   Photographs of Elf Doll
                Copyright in Sitting Elf Image          Dangling Elf Image and
...

To continue reading

Request your trial
2 cases
  • Namer v. Broad. Bd. of Governors
    • United States
    • U.S. District Court — Eastern District of Louisiana
    • November 5, 2014
    ...contrast, some courts have viewed inclusion of a disclaimer as evidence of lack of intent to confuse. See CCA and B, LLC v. F? W Media Inc., 819 F. Supp. 2d 1310, 1328 (N.D. Ga. 2011). In light of the less than conclusive evidence of Plaintiff's knowledge at the relevant time as well as the......
  • Lombardo v. Dr. Seuss Enters., L.P.
    • United States
    • U.S. District Court — Southern District of New York
    • September 15, 2017
    ...to be a use Mattel would likely develop or license others to develop." 229 F.Supp.2d at 318 ; see also CCA & B, LLC v. F + W Media Inc. , 819 F.Supp.2d 1310, 1323 (N.D. Ga. 2011) (finding fair use in part because "it is highly unlikely that consumers will choose an inappropriate-for-childre......
3 books & journal articles
  • WITHHOLDING INJUNCTIONS IN COPYRIGHT CASES: IMPACTS OF EBAY.
    • United States
    • William and Mary Law Review Vol. 63 No. 3, February 2022
    • February 1, 2022
    ...(6th Cir. 2020) (describing "thin" copyright in Christmas light sculpture in animal shapes); CCA & B, LLC v. F + W Media, Inc., 819 F. Supp. 2d 1310, 1318 (N.D. Ga. 2011) (finding parody of CCA's book likely fair use); Lennon v. Premise Media Corp., L.P., 556 F. Supp. 2d 310, 328 (S.D.N......
  • Protecting the Public Domain and the Right to Use Copyrighted Works: Four Decades of the Eleventh Circuit's Copyright Law Jurisprudence
    • United States
    • University of Georgia School of Law Journal of Intellectual Property Law (FC Access) No. 29-1, 2021
    • Invalid date
    ...and another decision for the proposition that the line between parody and satire is arbitrary).366. CCA & B, LLC v. F + W Media Inc., 819 F. Supp. 2d 1310 (N.D. Ga. 2011).367. Id. at 1316-17.368. Id. at 1318-19.369. Id. at 1321-22.370. Id. at 1322-23.371. CCA & B, 819 F. Supp. 2d at 1323-24......
  • Official Code, Locked Down: an Analysis of Copyright as it Applies to Annotations of State Official Codes
    • United States
    • University of Georgia School of Law Journal of Intellectual Property Law (FC Access) No. 24-1, 2016
    • Invalid date
    ...for it (prohibited)" (citing Ty, Inc. v. Publ'ns Int'l, 292 F.3d 512 (7th Cir. 2002))).87. CCA & B, LLC v. F + W Media Inc., 819 F. Supp. 2d 1310, 1315 (N.D. Ga. 2011) (holding that the plaintiff publisher could have won if it had "met its burden of showing a substantial likelihood of such ......

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT