December 07, 2015

Elfin’ Around

by Guest Blogger

Now that we're finished stuffing ourselves with turkey and cranberries, it is officially the Christmas season [regardless of retail marketing that started in October]. Now we can start stuffing ourselves with Christmas cookies, candies, and other goodies and celebrate with friends and family near and far. Here at Trademarkology, we have a lot to celebrate â we were again named to the ABA Journal's Annual Blawg 100 list of favorite legal blogs.


This time of year, I think about all of the holiday traditions in our family and get the house ready for family parties and that all-important visit from Santa.

My kids are obsessed with The Elf on the Shelf®. This has become a retail empire and sparked an elf invasion. It seems that all of my kids' friends have elves on various shelves at their houses, and teachers are even bringing elves to their classrooms to help keep behavior in check. The elves now have their own line of clothing and reindeer pets to round out the collection.


If you are not familiar with this marketed Christmas Tradition, it features a Barbie® doll sized elf that comes with a book about his or her elf job. The family receiving the elf adopts the elf and names it. Then, the elf sits on a shelf, silently observing the kid's every move. Each night, while the kid is sleeping, the elf returns to the North Pole to report to Santa whether the kid has been naughty or nice. The elf returns in the morning before the kid awakes. Parents are encouraged to move the elf around each night to add effect to the elf's daily return from the North Pole. If you visit a house with an Elf on the Shelf â DO NOT TOUCH THE ELF, or the child may burst into tears. For those untrained in elfdom, touching the elf zaps its magic and may prevent the elf from returning to the North Pole to report good deeds to Santa. At our house, the Elf on the Shelf monitors good behavior and has the added benefit of encouraging the kids to get ready for school in the morning so they can race downstairs to find their elves.

There are some pretty creative parents out there, positioning their elves in elaborate ways with props. As you can imagine, this has led to some interesting images on social media. I'm sure you have seen some interesting displays featuring the elf with his similarly sized Barbie doll. The most recent one I saw was an elf trapped in ice next to an Elsa doll. We are not that creative at our house. Our elf has to follow the rules and does not get into any antics at our house, although our elf does sometimes get into the cookies when mom and dad need a midnight snack.

Well, now there is a new elf in town⦠Horace the bad elf is The Elf Off the Shelf: A Christmas Tradition Gone Bad. It's marketed as a parody for mom and dad and tells the tale of a disgruntled "Horace" who goes AWOL from being a scout elf and has a gift for making mischief.


The Elf on the Shelf folks did not see the humor in Horace and sued in federal court for trademark and copyright infringement. The elf-off was short lived. Horace's team argued that their product was allowable as a parody and amounted to protected free speech under the First Amendment. Parody can be a defense to copyright infringement and avoid a finding of trademark infringement if the parody transforms the original such that it qualifies as protected first amendment speech, and provided it is different enough that consumers can tell it is not the original. It's a fine line with a case-by-case determination.

The court did not reach a decision on the full merits of the case but denied Elf On (seriously how the court described them) a preliminary injunction against Elf Off (again, the court's descriptor), and Elf On moved to dismiss its case shortly thereafter. It is unclear whether the case settled in the peaceful spirit of Christmas or if Elf On just didn't want to fund a further elf-on-elf battle. Perhaps it was just time for the Elf on the Shelf to go back to the North Pole and give Santa his report about Horace. In any event, Horace is still on the loose causing mischief.

Here's Horace's anthem:

The Carol of the Elf - Off the Shelf!