A Motion for Fair Use

The courthouse for the United States District Court, Eastern District of Wisconsin* is majestic, beautiful, dignified. The 100-year old structure’s granite tower draws eyes upward, past elegantly arched windows and into the clear blue sky.  Marble and ornately carved wood add an air of grandness to the sedate black-robed men and women who spend their days in the building’s courtrooms and chambers.  Sunlight pours into the entrance-way atrium from a glass sky-light high above.  It’s a peaceful place, where footsteps echo down from long open balconies and sophisticated women in well-pressed skirts dart in and out of doors.

But this month, one Federal Judge in Wisconsin had to deal with something far less dignified than his magnificent surroundings.  As Judge Stadtmueller’s opening line explained, “Federal lawsuits seldom touch on such riveting subjects and regard so many colorful parties as the present matter.”  The present matter: a copyright dispute over a song called “What What (In the Butt).”

This is one case where no summary could be as entertaining as the actual judicial opinion, and so it will give the basic copyright issues. You can read the full Brownmark Films, LLC v. Comedy Partners decision for yourself.

Dry Background

Brownmark Films made a ridiculous music video that was a smash hit on YouTube.  South Park (Comedy Partners) featured its own 58-second version of the song, performed by a character named Butters Stotch.  Brownmark brought an action for violation of the US Copyright Act (Section 101) against Comedy Partners.  Comedy Partners filed a motion to dismiss on the grounds that Brownmark’s suit failed to state a claim on which relief could be granted.  (A 12b(6) motion for the Fed Civ Pro junkies out there.)

Defenses Raised

Comedy Partners made 2 arguments in its defense: 1) Brownmark lacked standing to bring a federal copyright suit, 2) the use on South Park was permissible under the doctrine of fair use.

Standing – registration and transfer

In order for a US copyright holder to sue for infringement in a federal court, the work involved must be registered with the US Copyright Office.  And, the person bringing the suit has to have exclusive rights to the work.  The song at issue here was registered and two of the joint authors properly transferred their rights to Brownmark such that he had exclusive rights.  In discussing this issue, the court recognized a circuit split between the 9th and 7th Circuits on whether joint copyright owners can grant an exclusive license.  The court sided with the 7th Circuit, saying joint owners can grant exclusive licenses.  This is probably a good thing since the Eastern District of Wisconsin is in the 7th Circuit.  The court goes on to comment further on a wider rejection of the 9th Circuit’s perspective, noting that it “has been widely lampooned in several respected treatises.”

Fair Use – Parody

Factor 1: purpose and character of the use – “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.^“  The work is transformed by replacing the original performers with a South Park character, and commentary is made on the value of viral videos.  [Tell that to Justin Bieber.]  In favor of Comedy Partners.

Factor 2: nature of the work – “the "nature" of the copyright in question does not help this court assess whether South Park's parody is a fair use.”  Factor ducked.  In favor of, neither side?

Factor 3:amount and substantiality of the portion of the work used – “the use of the copyrighted work in the South Park episode was relatively insubstantial.”  Only a small amount of the song’s lyrics were used.  In favor of Comedy Partners.

Factor 4:effect of the use on the work’s potential market – “there is little risk that derivative work in question would somehow usurp the market demand for the original.”  In favor of Comedy Partners.

The result: dismissal of the suit, with prejudice.

Strange Procedures?

There are some very interesting nuggets hiding in this apparently standard fair use analysis.  The court notes that normally, to bring in materials from outside of the complaint, i.e. the two video clips at issue here, the court needs a motion for summary judgment rather than a motion to dismiss.  The difference is that in summary judgment, the court is making a decision to a valid legal dispute with the facts given in the pleadings.  In a motion to dismiss, the court is deciding whether or not there is a valid legal dispute to judge. 

When necessary, a motion to dismiss can be transformed into a motion for summary judgment.  But here, the court points out an exception, “where the material in question is expressly referenced in the complaint and is central to the plaintiff's claim,” and continues to make a decision on whether or not there is a valid legal dispute here.

The Court acknowledges another problem to proceeding with a fair use analysis on a motion to dismiss.  Fair use is generally regarded as an affirmative defense to infringement.  Don’t you need a valid dispute, a valid claim, before there can be a defense to it?  Normally, yes.  But here again, the court finds an exception.  If the plaintiffs prove the defense in their own pleadings, then the court can proceed under the motion to dismiss.  And that’s what the court found here.

The court says that this practice is common place.  If that is so, why keep viewing fair use as an affirmative defense instead of as not infringement?  Seems like it would require less legal gymnastics.

Picture credit:Milwaukee Federal Building cc-by compujeremy available at http://www.flickr.com/photos/compujeramey/2041317259/. The photo was cropped for the blog.

* More information about the Milwaukee Federal Building here.  The author spent a splendid 6 weeks exploring the building as an intern.
For our European friends, don’t forget the old quip, “America, where 100 years is a long time and 100 miles is a short distance.”

Merely allowing others to infringe is not an infringement

Linsey Dawn McKenzie,
hiding behind a tree

Media C.A.T. Ltd v A to H [2010] EWPCC 17 is a series of eight actions brought against unidentified file-sharers who are alleged to have indulged in activity which infringes the copyright in ""5 Linsey Dawn McKenzie Films on Tape", said to be a pornographic film featuring an actress described by Wikipedia as being "known for her naturally large breasts".  In each instance Media CAT was applying for judgment in default under the Civil Procedure Rules, CPR r.12.4(1). In the particulars of each claim in each action, Media CAT asserted that it represented the owners or exclusive licensees of copyright works of a pornographic nature and maintained that the relevant defendant had been engaged in peer-to-peer file sharing which involved copyright infringement. Damages and an injunction were sought.

Sitting in the Patents County Court, Judge Birss QC refused all eight applications. Concluding that it would be inappropriate to give judgment in default, the judge observed that in three cases the defendant had filed a defence and in three others there was nothing to show that the proceedings had been served. While the defendants in the other two actions appeared to be in default the claims did not fall within r.12.4(1) since Media CAT was asking for an injunction as well as damages and the application should have been made under Part 23 of the Rules.

Obiter, Judge Birss QC considered the nature of the alleged infringing act and added:

" ... The claimant's right to bring these claims at all may be entirely solid but that does not emerge clearly from the statement of case. A key part of the plea of infringement rests on an assertion that "allowing" others to infringe is itself an infringing act, when it is not. There is no plea that the works qualify for copyright protection at all. ...

In all these circumstances, a default judgment arrived at without notice by means of an essentially administrative procedure, even one restricted to a financial claim, seems to me to be capable of working real injustice.

Peer to peer file sharing which involves copyright infringement is an important and serious matter and claimants with a proper claim are entitled to use the full machinery of the courts to enforce their rights. Default judgment is an important part of the court's armoury in order to ensure that defendants engage with the legal process properly but it would not be a significant burden on claimants in cases like these to be required to use the part 23 procedure in all such cases".

How times change. A hundred years ago, no plaintiff in copyright infringement proceedings would have dared confess to attempting to enforce rights in a pornographic work.  Even if the subject was not raised by the parties, the court might sua sponte deem a work obscene and decline to enforce copyright in it. See for example Glynn v Weston Feature Films [1916] 1 Ch 261.

Scottish judge refuses to bar architect's copyright infringement claim

Eagle-eyed Scot-watchers will have noticed that rarest of events, the posting of a Scottish copyright decision on the Scottish Courts website. The decision is that of Lord Bannatyne (Outer House, Court of Session) in Donal Toner v Kean Construction (Scotland) Limited and CRGP Architects and Surveyors [2009] CSOH 105. The decision is difficult for we non-Scots to follow on account of its terminology, but Mark Cruickshank (Maclay Murray Spens) has furnished us with a splendid explanation. he writes:

"Toner alleged infringement of copyright by Kean and CRGP in respect of architectural plans which he had prepared. He argued that he had not been fully paid for his work and that, therefore, there was no implied licence granted to Kean and CRGP to use the plans. He alleged that CRGP had directly infringed copyright by using a substantial part of the plans to obtain an amendment to a planning consent, while Kean had indirectly infringed by constructing a building in conformity with those plans.

Kean and CRGP requested a Debate (ie a hearing on the legal merits of the claim) to argue that Toner's case against them was not competent and that it was neither legally relevant nor specific enough to make out a case and should be dismissed. They raised a number of competency arguments, all of which involved fairly technical issues of law and/or related to compliance with Scottish procedural rules on pleadings. They included the arguments that Toner had no title to sue, that there was no competence to sue more than one defender [that's the term used in Scotland for 'defendant'] in the same action with a separate and independent basis for each claim, and that there were no pleadings setting out the statutory/common law basis for raising the action. In terms of the relevancy/specification arguments, again there were a number of submissions made by the defenders, for example that the damages claimed against each defender amounted to 'double counting', that Toner's case on damages was not properly set out and that it was not possible to sue for damages for copyright infringement when also seeking to affirm the contract or for damages and additional damages under the same pleading claim.

The judge, Lord Bannatyne, took a common sense approach and criticised the defenders' attacks as resulting from taking aspects of the pleadings in isolation rather than reading them in context. Also, for example, on the inclusion of more than one defender in the same action he took the view that the two cases were clearly intimately connected, which pointed to it being in the interests of justice/convenience that the cases both be in the same action. Lord Bannatyne then rejected all of the defenders' arguments and found firmly in favour of Toner.

This sensible decision should discourage such future attempts to knock out cases based on highly technical arguments. This is not the end of the matter, however, and the matter will proceed towards a full trial with Toner having to prove his case of copyright infringement based on the facts".

Many thanks, Mark, for the explanation.