USDC Eastern District of Wisconsin, July 6, 2011

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  • District court dismisses plaintiff’s copyright infringement claim, holding, on a motion to dismiss, that defendants’ parody of plaintiff’s music video in their animated comedy television series constitutes fair use.

Plaintiff, Brownmark Films, LLC, is the purported co-owner of a copyright in a music video entitled "What What (In the Butt)" (WWITB), a four-minute long song that includes “an array of bizarre imagery” and features the singer, an adult African American male wearing a bright red silk shirt, dancing and grinning at the camera, while repeatedly singing the same refrains: “I said, what what, in the butt” and “you want to do it in my butt, in my butt.” Defendants are the creators and producers of “South Park,” the animated series on Comedy Central about the adventures of “four foul-mouthed fourth graders in a small mountain town in Colorado.” Plaintiff alleged that defendants infringed on its copyright in WWITB, based on an episode of South Park in which one of the characters, Butters Stotch, is persuaded by his classmates to record an internet music video in order to make money. The video, which lasts for less than a minute of the 25-minute episode, involves the nine-year-old character singing the central refrains from WWITB while dressed in a variety of costumes, including as a teddy bear, an astronaut and a daisy. In the episode, the video “goes viral” but the kids’ attempts at collecting “internet money” prove fruitless.

Acknowledging that its work in resolving the defendants’ motion to dismiss is “hardly the sort of subject that would create millions of fans, as the work of all of the parties before the court did,” the district court “forge[d] on” to resolve the motion in favor of defendants, holding that the defendants’ parody of the WWITB video falls squarely within the fair use protections of the Copyright Act and dismissing plaintiff’s amended complaint with prejudice.

As a preliminary matter, the court rejected defendants’ argument that plaintiff did not have standing to assert a claim for copyright infringement because only two of the three original copyright holders in WWITB assigned their rights to plaintiff. Under section 501(b) of the Copyright Act, only those who have exclusive rights in a copyright have standing to sue for infringement. The court reasoned that, under Seventh Circuit precedent, the Copyright Act affords "significant" benefits to joint owners of a copyrighted work, that each owner holds an "undivided interest in the work," and that each owner may independently use and license the joint work, subject only to the obligation to account to co-owners for any profits. Co-owners are tenants in common and have the right to sell or gift their ownership to others, including a grant of exclusive rights.

The court declined to follow Sybersound Records, Inc. v. UAV Corp., upon which defendants relied, rejecting the Ninth’s Circuit’s more restrictive interpretation of the Copyright Act that the only means by which a third party can obtain exclusive rights in the copyright of a jointly owned work is to have all of the co-owners grant those rights. Discussing at length why it – and other commentators – found the Ninth’s Circuits reasoning faulty, the court held that the determination of whether a grant of rights is exclusive or nonexclusive depends on the grant. Accepting the allegations in the complaint as true, the grant by the two co-owners of their interest in WWITB was a complete assignment of rights to plaintiff, giving it standing to sue for infringement of the underlying copyright.

The court then considered the defendants’ argument that their use of WWITB was protected by the fair use doctrine, as codified by the Copyright Act. At the outset, the court acknowledged that fair use is an affirmative defense, as opposed to a central element of copyright infringement, but concluded that an affirmative defense can be the basis for granting a motion to dismiss when the allegations of the complaint, and material expressly referenced in the complaint and central to the plaintiff's claims, set forth everything necessary to establish the defense. Looking at the context of the case and the pleadings – specifically that the infringing conduct alleged in the complaint was limited to the use of WWITB in the production and distribution of the single episode – the court concluded that it could resolve the fair use argument based on the complaint and the material it referenced, including the WWITB video and the “South Park” episode.

Noting that the fair use doctrine allows for a limited privilege for others to use copyrighted material without the copyright owner’s consent for reasonable purposes, including “criticism” and “comment,” the court enumerated the statutory considerations from Section 107 of the Copyright Act: (1) the purpose and character of the use; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work. In addition, as cautioned by the Seventh Circuit, the “fair use” copier must use no more of the copyrighted material than necessary to accomplish its fair use goal – such as criticizing the original work.

Applying the section 107 factors and considering the principles behind the fair use doctrine, the court concluded that the defendants’ use of plaintiff’s music video in the “South Park” episode constituted fair use. According to the court, only a fleeting glance at the episode reveals the purpose and character of the use of the WWITB video – “to lampoon the recent craze in our society of watching video clips on the internet that are — to be kind — of rather low artistic sophistication and quality.” Defendants’ use of plaintiff’s work is transformative in that it used parts of the original work not only to poke fun at the original, but also to comment on a social trend, making it a classic parody. Specifically, the court found that defendants’ use accomplished “the seemingly impossible — making the WWITB video even more absurd by replacing the African American male singer with a naive and innocent nine-year-old boy dressed in adorable outfits.” The episode not only highlights the inanity of the "viral video" craze by having the fourth graders' video go viral, but also comments on the ultimate value of viral video clips, as the main characters learn that that while society is willing to watch absurd video clips on the internet, it places little monetary value on these such works.

With respect to the other factors, the court noted that the use of the copyrighted work in the South Park episode was relatively insubstantial. The defendants' use of WWITB did not mirror the original work, but rather was a derivative work, a cartoon of a fourth-grade boy repeating just enough lines to conjure up the WWITB video. The “snippet” used in the episode was less than a third of the length of the original WWTIB video, the imagery and words of the original work were used minimally, only as needed by the defendants to accomplish their goal of commenting on the viral video phenomenon. Finally, the court found little risk that defendants’ derivative work would somehow usurp the market demand for the original, reasoning that the episode lampoons the viral video craze, while the WWITB video is the epitome of the kind of video that fuels the craze.

The district court dismissed plaintiff’s complaint with prejudice, finding that plaintiff had filed two complaints with the court alleging copyright infringement based on “South Park” episodes and failed, despite ample opportunity, to cure “glaring problems” with his pleading in the dispute.