Avoiding Legal Woes in Grinch-Themed Photos

Hello Geniuses, let me know in the comments if you’ve finished your Christmas shopping. I purchased my last gift a couple of days ago and then; I was just remembering when my oldest daughter was little, and it was just the two of us. I would be so excited about Christmas and being able to get her something that I wouldn’t wait. I’d be like here you go, Merry Christmas and it’s like December 4th.  

And now that I have all this Christmas shopping done early, early for me anyway, I’m like, oh my gosh, like the restraint and just trying to hold myself or prevent myself from giving these presents to these kids. It’s like, you know what I mean? Anyway, it’s Christmas time, which means that all these photographers are getting ready to start promoting their holiday-themed photo shoots, which means it’s a good time to discuss the Grinch. And really why have Grinch-themed photo shoots? 

It’s not good for business. And you know what I mean by the photo shoots, the Grinch-themed photo shoots. The one was the kids, the unsuspected kids are terrorized by this person dressed in a Grinch costume and the kids are just like crying and the Grinch is like, ah. That’s what I mean by those Grinch-themed photo shoots. It scares the crap out of these kids. Those photographers could be liable for infringement. 

Welcome back to the Only Genius podcast where we discuss building businesses, growing brands and what else? Only your genius. I’m your host, Attorney LaConya Murray, owner of Off The Mark IP Solutions. Off the Mark is a boutique intellectual property firm representing innovative entrepreneurs aka geniuses who are looking to protect their brand and grow their business with ongoing legal support and business mentorship. We have a good one for you today, so let’s get started. 

So according to Uncle Google, the Grinch was introduced to the world around 1957 in the book, ‘How the Grinch Stole Christmas.’ Since that time, there’s been movies, songs, toys, clothes, all these things have been created to build this Grinch brand. And today’s podcast is inspired by a post that I saw on Facebook that was reminding photographers that Grinch-style photo shoots are actually trademark infringement. But is it really? 

Let’s get into it. The short answer is yes. Yes, it is. These photographers that are offering these Grinch-photo sessions, and they’re infringing on Dr. Seuss Enterprise’s trademark. And I was having this conversation very briefly with my daughter this morning, and I was telling her about what the podcast was going to be about. And she was like, but Dr. Seuss is dead. Touche. Dr. Seuss is dead. But his estate owns Dr. Seuss Enterprise, which is a company that controls all his intellectual property. That company owns about 25 trademarks with the Grinch somewhere in there. There are 25 registered trademarks and then two that are pending for some sort of Grinch trademark that is in any types of uses from movies, books, apparel, plus all the stuff that you can think of, they have registered trademarks for that. 

And what this federal trademark allows them to do is to prevent other people from using that name, the Grinch, or anything that’s like it in that same or related way that they are using their trademark, the trademark they apply for. When they have all these varieties of classes, and classes just for a reminder, refer to how the trademark is used in commerce. Because remember, your trademark protection is limited to how you use it in commerce. When you’re filing for your trademark registration, you must let the United States Patent and Trademark Office know upfront, hey, these are the classes, or these are the uses that I am applying registration under. When you get that registration, now you as the trademark owner can prevent other people from using your same or similar trademark in the same or related way that you are. 

For example, cosmetics, right? Cosmetics are like lipstick and makeup and things of that nature. But something that can be related to cosmetics is hair products or oftentimes you have companies that offer cosmetics, they also offer hair products like shampoos and conditioners and things of that nature. If someone has a trademark that’s registered for cosmetics and you have the same or related name and you want to do it for hair product, you can see a bit of a challenge. 

When you own that trademark, it gives you really great authority so you can protect your brand and even expand. When it comes to the question of whether these Grinch-style photo shoots are infringing on the trademark, the reason that I’m saying yes is because if you’re literally advertising Grinch photo shoots or Grinch photo sessions, you’re using that registered trademark in a way that’s protected by Dr. Seuss Enterprises, that’s the name of the company.  

And I think this conversation is timely and the reason I think that it’s timely is because last night I was at peopling and I went to a holiday party for the organization that I’m in, NAWBO, National Association of Women Business Owners. We were having a holiday party. Then, we were talking about this podcast and just giving them an idea of what I was going to do. And someone said, yeah, that’s good. Because I saw where a bunch of Tik Tokers woke up and their shops were gone. I was like, yeah, I heard that too and their shops were shut down because they were infringing on people’s intellectual property.  

This is why this podcast is timely. Let me tell you, you cannot take other people’s stuff and put it on your merchandise without their permission. You can’t go out there creating Disney hats and Disney bows. You can’t go out there creating shirts with Marvel characters and you cannot buy a Grinch costume and offer photo sessions. You just can’t do it. 

Let’s talk about copyrights. We talked about trademarks for a little bit, and we talked about how trademarks protect brand identifiers, and they allow the owners to prevent other people from using that same or similar registered trademark in a same or related way. We know that we can’t have Grinch in the name of the photo sessions, but what does that have to do with me dressing up as a Grinch and offering the service? Let’s get into it, right? Copyrights protect original works that are in a fixed, tangible form. And we talked about different aspects of copyrights in episodes, I’m gonna say 80, 111, and 112 on the Only Genius podcast. Make sure you go and check those out. We talked about different aspects but the owner of that copyright has exclusive rights. They have six exclusive rights, and one of those rights is to create derivatives of that work. And when we talk about derivatives, we mean taking that original work and creating it into something else.  

You have a book, a derivative will be the movie which happened, ‘How the Grinch Stole Christmas’ was a book. And then, I remember the 2000 version with Jim Carrey and I think I’m pretty sure there was a version before that as well. But the Jim Carrey version, 2000, I remember because I watched it with my youngest one, when she got a little bit older. The book explores a character named Grinch, Hatred for Christmas, as he goes on a mission to destroy Christmas for everybody in the town, right? And in the book, his character’s appearance was described in detail, and those details were captured later on in the movie that I was just talking about. And the reason that I’m talking about his appearance and how it was described and everything, because it’s important as it relates to copyrights, because the Grinch is a character in a book. Not all book characters are granted copyright protection. And that’s because the courts have held that copyright protection is only available for characters that are especially distinctive. You have to have something pretty extraordinary, something that’s descriptive, something that stands out as a character in order to be protected by copyright.  

I was thinking about a cease-and-desist letter a client received for a character that she wrote in a book and the character was a brown girl with afro cuffs. And someone else wrote a book who had a character with a brown girl and maybe I think maybe she had an afro. She didn’t want my client to be able to use the character that was in her book, and she alleged copyright infringement. But having a brown girl with Afro hair is not grounds. That’s not enough for copyright infringement. Anyway, I just had that thought pop into my head. Character can be protected if it has distinct characteristics, distinct traits, distinct attributes. And that’s true even if the character does not maintain the same physical appearance. 

In every content, meaning with trademarks, you know, I’m just going to hit resume with trademarks, when you have a logo. If you make any changes to that logo, you have to file for a new trademark because you’ve made some changes. When it comes to protecting the copyright of these characters, you have these distinct traits and attributes, but maybe in one scene, he’s wearing a hat and then one scene he’s not wearing a hat. That doesn’t take away from these distinct traits and attributes. 

Anyway, when we’re talking about these photo shoots that people are having, these Grinch-themed photo shoots that people are having, the costume that they’re using looks very similar to the one that was used back in 2000 from Jim Carrey’s movie. I’m not going to say it was his movie. I don’t know if he produced it or not, but the movie which he starred as the Grinch. And I just want to say, no, you can’t do that because now you know, that character is protected by copyrights. And so what that means is if you want to use that character, you’re going to have to get permission to do that.  

And I will say that Dr. Seuss Enterprises, that’s one of the ways that they make their money. They collaborate with businesses to offer official Grinch photo shoots. I remember seeing a video last year, I think it was from Universal Studios. Universal Studios has a license to use the Grinch in their photo shoots and people were lined up around the corner and their Grinch. You have to Google Grinch in Universal Studios. Their Grinch was hilarious because he was very much in character. It wasn’t like you’re just going there and you’re taking a photo shoot or someone’s scaring you. Like his whole mannerisms and his attitude and the way that he was talking to people, it was hilarious. Anyway, my point is Dr. Seuss Enterprises, the company collaborates with different people. I went to their website. If you go to their website and you look at the bottom, it says licenses and collaborations. When you click on it, you see Amazon, you see Kylie Jenner, you see, I want to say Pops, the one with the little characters, you see like they partner with a lot of people in order to give them permission to use their brand in their merchandise and these other people’s merchandise. So don’t do it. Don’t go buy a costume and offer Grinch style photo shoots. Having these intellectual property rights and enforcing them, that’s like a huge revenue generator for Dr. Seuss Enterprise.  

According to Forbes, I saw this article on Forbes where the estate Theodor Seuss Geisel, better known to us as Dr. Seuss, has nearly doubled their income in 2020. It nearly doubled their income in 2020, earning an estimated 33 million dollars and when you read the article one of the things that they did was they took their original work and they created derivatives of it and they licensed it and they worked with other people collaborators. And that was 33 million dollars and that’s just from working with other people. The company also has the number one licensed children’s book brand. Meaning that they’re top tier when it comes to taking their books and turning it into derivative products or partnering with other people to create derivative products. This is what they do. So no, you cannot use their trademark for your holiday themed photo shoot. You cannot have a Grinch style photo shoot. You can’t title it that. And you can’t use the character that’s protected through copyright protection. You can’t use that. So what can you do? So, okay, what can I do? I really want to do something like this. 

Be creative. First of all, what this means for you is that you can’t use the Grinch to promote your goods or services in the title, so it’s just a holiday shoot. Or maybe what’s the takeaway from a holiday shoot? It could be, I’m going to say, terrifying a kid photo shoot, because that’s what the Grinch-themed photo shoots were really doing was like terrifying the kids. But maybe just call it character photo shoot, and you have a character that’s not protected by copyright in the photo shoot. So maybe instead of the Grinch, maybe you have your own version of a holiday mascot for your business. This is where your creativity comes into play.  

The first takeaway is don’t use the Grinch to promote your goods and services. And the second takeaway is don’t dress up as the Grinch as part of your services. Just don’t do it. What I heard was when I was looking online, what they’re doing is so you’re having these photo shoots and you’re putting them on the internet or maybe you’re not putting them on the internet. Your clients are and this time of year, um, doctors just enterprises is doing a reverse image search and looking for who posted the image and then going after them. That is today’s podcast. That’s it. 

Let’s take this conversation over to the Markedlegal Community. I want you to share this episode with three people and have them meet you there. But you know what to do before you go. Make sure you hit that subscribe button and rate the podcast. Until next week, I want you to keep building your business, growing your brand, and owning your genius.