Brownmark Films, LLC v. Comedy Partners

Citations: 800 F. Supp. 2d 991; 100 U.S.P.Q. 2d (BNA) 1844; 40 Media L. Rep. (BNA) 1077; 2011 U.S. Dist. LEXIS 72684; 2011 WL 2648600Docket: Case 10-CV-1013

Court: District Court, E.D. Wisconsin; July 6, 2011; Federal District Court

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Brownmark Films, LLC, the plaintiff, claims co-ownership of the copyright for the music video "What What (In the Butt)" (WWITB) and is suing defendants including Comedy Partners and Viacom for copyright infringement under the Copyright Act. This lawsuit arises from a specific April 2, 2008, episode of "South Park" titled "Canada on Strike," where a character, Butters Stotch, creates a viral internet video that imitates elements of the WWITB video. The South Park segment features Butters dressed in various costumes while singing lines from the original video, leading to comedic commentary on the value of viral content. The court, presided over by District Judge J.P. Stadtmueller, is set to address a motion to dismiss filed by the defendants, focusing on complex issues of copyright law and procedural rules related to Federal Rule of Civil Procedure 12(b)(6). The order emphasizes that while the parties and the issues are engaging, the legal analysis will be more straightforward and technical.

Fed. R.Civ. P. 12(b)(6) allows defendants to challenge a complaint for failing to state a claim upon which relief can be granted. For a plaintiff to withstand such a motion, the complaint must present sufficient factual content to plausibly suggest that the defendant is liable. This means the plaintiff must provide enough detail to create a coherent narrative without relying on unrealistic or speculative assertions. 

In the case discussed, the defendants claim that Brownmark lacks standing to sue for copyright infringement, arguing that since not all co-owners of the copyright agreed to assign their rights, Brownmark only holds a non-exclusive license. However, the court references section 501(b) of the Copyright Act, which states that only legal or beneficial owners of exclusive rights can initiate infringement actions. 

The court examines the rights of joint authors under 17 U.S.C. § 201(a), which designates them as co-owners of the copyright and allows each co-owner to independently use and license the work. The Seventh Circuit has affirmed that co-authors are tenants in common, granting them the right to unilaterally transfer their interests. Consequently, as a tenant in common, a co-author possesses the rights to use the work, exclude third parties, and receive income generated from it, indicating that Brownmark may have standing if it holds an exclusive right.

The Seventh Circuit recognizes significant benefits for co-owners of copyrights, often drawing parallels to real property tenancies in common. In contrast, the Ninth Circuit's ruling in *Sybersound Records* limits a co-owner’s rights, stating that a third party can obtain an exclusive license in a jointly-authored work only if all co-owners agree. Moreover, a co-owner cannot unilaterally transfer their share of the copyright and can only issue a non-exclusive license. The Ninth Circuit justified this restriction by arguing that independent exclusive licensing could impair the rights of other co-owners. However, this reasoning is critiqued as flawed since even non-exclusive licenses could similarly restrict the utility of the copyright. The court also defined exclusivity narrowly, asserting that because other co-owners could still use the copyright, any assignment was inherently non-exclusive. This interpretation undermines the fundamental principle of the Copyright Act that ownership is freely transferable and suggests that co-owners cannot effectively transfer partial interests. The decision has drawn criticism in legal literature and is viewed as contrary to Congressional intent, which aimed to allow co-owners to grant non-exclusive licenses and transfer their proportional shares independently. Ultimately, while the *Sybersound Records* ruling is authoritative, it lacks persuasiveness and misinterprets the nature of exclusivity in copyright ownership.

Messrs. Ciraldo and Swant's transfer of their interest in WWITB to Brownmark constitutes a full assignment of rights, granting Brownmark standing to pursue copyright infringement claims. The defendants argue for dismissal based on the fair use doctrine under 17 U.S.C. 107, presenting video evidence of both the original WWITB and the South Park episode "Canada on Strike." Generally, courts refrain from considering external materials during a motion to dismiss unless they are central to the plaintiff's claim and referenced in the complaint. In this case, the court agrees that the videos are central to the claim and acknowledges that "fair use" is an affirmative defense, which complicates the motion to dismiss. A complaint can be dismissed if it clearly shows the plaintiff is not entitled to relief, meaning the plaintiff must effectively plead against an "impenetrable defense." However, dismissal based on an affirmative defense is inappropriate if the plaintiff's claims remain plausible based on the complaint's allegations and referenced materials. The amended complaint presents limited context, focusing solely on the use of WWITB within the "Canada on Strike" episode, specifying that infringement is limited to the episode's distribution across various platforms, without alleging broader use of the WWITB video in other contexts.

The court must determine if the defendants' use of copyrighted material in the "Canada on Strike" episode qualifies as fair use under 17 U.S.C. 107. If the use is deemed fair, the complaint lacks merit as it is speculative and should be dismissed. Conversely, if the use is not fair, the plaintiff may still pursue recovery. The court notes that evaluating fair use at the pleading stage is unusual, but due to the clarity of the infringement issues and lack of additional evidence from the plaintiff, it finds no reason to extend the case into discovery. The fair use doctrine permits limited use of copyrighted material without consent when it serves the constitutional purpose of promoting access to creative works. Section 107 outlines four factors for assessing fair use: the purpose of use, the nature of the work, the amount used, and the effect on the market. The Seventh Circuit emphasizes that these factors are not exhaustive and should be applied flexibly rather than mechanically. The court concludes, after applying these factors to the works in question, that the defendants' use of the video in the episode is fair.

The South Park episode's use of the WWITB video serves a transformative purpose by parodying the low artistic quality of viral internet clips. By replacing the original African American male singer with a naive nine-year-old boy, the episode amplifies the absurdity of the WWITB video and critiques the viral video phenomenon. It illustrates society's appetite for such content while simultaneously devaluing it monetarily. The court evaluates this under Section 107 of the Copyright Act, determining that the parody qualifies as fair use despite the challenges associated with the "nature" of the copyrighted work. The court finds that the South Park episode only uses a minimal portion of the original WWITB video—under a third of its length—sufficient to achieve its satirical commentary without usurping the original's market demand. The defendants' motion to dismiss is granted, with prejudice, as the plaintiff has previously failed to adequately address the fair use defense and ignored the central issues despite multiple opportunities to amend their complaint.

The defendants' motion to dismiss has been granted, leading to the dismissal of the case with prejudice. The Clerk of the Court is instructed to enter judgment accordingly. The document references television episodes from "South Park" and notes that the Copyright Act provides copyright owners with six exclusive rights, including reproduction and the creation of derivative works. It emphasizes that while the episodes may address broader themes such as the 2007-2008 writers' strike, the court's evaluation of the fair use issue should be confined to the pleadings and incorporated materials from the amended complaint.