UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF WISCONSIN
`____________________________________________
`
`BROWNMARK FILMS, LLC,
`
`Plaintiff,
`
`v.
`
`COMEDY PARTNERS, MTV NETWORKS,
`PARAMOUNT HOME ENTERTAINMENT, INC,
`SOUTH PARK DIGITAL STUDIOS LLC, and
`VIACOM INTERNATIONAL, INC.,
`
`Defendants.
`____________________________________________
`
`ORDER
`
`Case No. 10-CV-1013
`
`Federal lawsuits seldom touch on such riveting subjects and regard so many
`
`colorful parties as the present matter. The plaintiff, Brownmark Films, LLC
`
`(“Brownmark”), is the purported co-owner of a copyright in a music video entitled
`
`“What What (In the Butt)” (“WWITB”), a nearly four minute ditty regarding the
`
`derrière of the singer of the underlying work. (Am. Compl. ¶¶ 11-13). The music
`
`video begins with an array of bizarre imagery – from a burning cross to a floating
`
`pink zeppelin – and only gets stranger from there. The heart of the video features
`
`an adult African American male ensconced in a bright red, half-buttoned, silk shirt,
`
`dancing, grinning creepily at the camera, and repeatedly singing the same cryptic
`
`phrases: “I said, what what, in the butt” and “you want to do it in my butt, in my butt.”
`
`Meanwhile, the defendants are the entities involved in the production of “South
`
`Park,” an animated sitcom that centers on the happenings of four foul-mouthed
`
`fourth graders in a small mountain town in Colorado. Id. ¶¶ 6-10. In the nearly
`
`Case 2:10-cv-01013-JPS Filed 07/06/11 Page 1 of 20 Document 23
`
`
`EASTERN DISTRICT OF WISCONSIN
`____________________________________________
`
`BROWNMARK FILMS, LLC,
`
`Plaintiff,
`
`v.
`
`COMEDY PARTNERS, MTV NETWORKS,
`PARAMOUNT HOME ENTERTAINMENT, INC,
`SOUTH PARK DIGITAL STUDIOS LLC, and
`VIACOM INTERNATIONAL, INC.,
`
`Defendants.
`____________________________________________
`
`ORDER
`
`Case No. 10-CV-1013
`
`Federal lawsuits seldom touch on such riveting subjects and regard so many
`
`colorful parties as the present matter. The plaintiff, Brownmark Films, LLC
`
`(“Brownmark”), is the purported co-owner of a copyright in a music video entitled
`
`“What What (In the Butt)” (“WWITB”), a nearly four minute ditty regarding the
`
`derrière of the singer of the underlying work. (Am. Compl. ¶¶ 11-13). The music
`
`video begins with an array of bizarre imagery – from a burning cross to a floating
`
`pink zeppelin – and only gets stranger from there. The heart of the video features
`
`an adult African American male ensconced in a bright red, half-buttoned, silk shirt,
`
`dancing, grinning creepily at the camera, and repeatedly singing the same cryptic
`
`phrases: “I said, what what, in the butt” and “you want to do it in my butt, in my butt.”
`
`Meanwhile, the defendants are the entities involved in the production of “South
`
`Park,” an animated sitcom that centers on the happenings of four foul-mouthed
`
`fourth graders in a small mountain town in Colorado. Id. ¶¶ 6-10. In the nearly
`
`Case 2:10-cv-01013-JPS Filed 07/06/11 Page 1 of 20 Document 23
`
`
`
`fifteen years South Park has aired on Comedy Central, the four central characters
`
`have, amongst other adventures, battled space aliens, hunted Osama Bin Ladin in
`1
`
`the wake of 9/11 ala Elmer Fudd and Bugs Bunny, and have, more recently,
`2
`
`resolved the nation’s economic woes by charging the nation’s consumer debts on
`
`one of the character’s credit card.3
`
`Brownmark and the makers of South Park find themselves litigating against
`
`each other in federal court as a result of an April 2, 2008 episode of the television
`
`program. (Am. Compl. ¶ 14). Specifically, Brownmark’s amended complaint seeks
`
`damages and injunctive relief for copyright infringement under the Copyright Act, 17
`
`U.S.C. § 101 et seq., against the defendants because of a South Park episode
`
`entitled “Canada on Strike.” (Docket #6). In that episode, one of the characters –
`
`the naive “Butters Stotch” – is coaxed by his fellow classmates to record an internet
`
`video in the hopes of “making money on the Internet.” The video – which lasts for
`
`fifty eight seconds of the approximately twenty-five minute episode – replicates parts
`
`of the WWITB video, with the nine-year old Butters singing the central lines of the
`
`original video, while dressed as a teddy bear, an astronaut, and even as a daisy. In
`
`the episode, Butters’ video, much like the original WWITB video, goes “viral,” with
`
`millions watching the clip. However, after their attempts to collect “internet money”
`
` See South Park: Cartman Gets an Anal Probe (Comedy Central television broadcast Aug.
`1
`13, 1997).
`
` See South Park: Osama bin Laden Has Farty Pants (Comedy Central television broadcast
`2
`Nov. 7, 2001).
`
` See South Park: Margaritaville (Comedy Central television broadcast March 25, 2009).
`3
`
`-2-
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`
`
`prove fruitless, the South Park fourth graders learn that their video, much like other
`
`inane viral YouTube clips, have very little value to those who create the work.
`
`For as remarkable and fascinating the parties and issues surrounding this
`
`litigation are, this order, which will resolve a pending motion to dismiss (Docket #8),
`
`will be, by comparison, frankly quite dry. The central legal issues surrounding the
`
`motion to dismiss require that the court resolve several relatively tricky issues
`
`regarding copyright law and civil procedure, hardly the sort of subject that would
`
`create millions of fans, as the work of all of the parties before the court did.
`
`Nonetheless, while the court has a “tough job,” “someone has to do it,” and, “with
`
`shoulder to the wheel,” this court “forge[s] on” to resolve the pending motion. Janky
`
`v. Lake County Convention & Visitors Bureau, 576 F.3d 356, 358 (7th Cir. 2009).
`
`Before resolving the substance of the defendant’s motion to dismiss, however,
`
`the court must discuss the procedural rules animating a Fed. R. Civ. P. 12(b)(6)
`
`motion. Fed. R. Civ. P. 12(b)(6) permits a defendant to assert a defense that the
`
`underlying complaint fails to state a claim upon which relief can be granted. To
`
`survive a 12(b)(6) motion to dismiss, the plaintiff’s complaint must only “contain
`
`sufficient factual matter, accepted as true, to ‘state a claim to relief that is plausible
`
`on its face.’” Ashcroft v. Iqbal, 129 S. Ct. 1937, 1949 (2009) (quoting Bell Atlantic
`
`Corp. v. Twombly, 550 U.S. 544, 555-57, 127 S. Ct. 1955, 167 L. Ed. 2d 929 (2007))
`
`(emphasis added). “A claim has facial plausibility when the plaintiff pleads factual
`
`content that allows the court to draw the reasonable inference that the defendant is
`
`-3-
`
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`
`
`liable for the misconduct alleged.” Iqbal, 129 S. Ct. at 1949; see also Swanson v.
`
`Citibank, N.A., 614 F.3d 400, 404-05 (7th Cir. 2010) (“[T]he plaintiff must give
`
`enough details about the subject-matter of the case to present a story that holds
`
`together . . . the court will ask itself could these things have happened, not did they
`
`happen.”). More broadly, a district court must consider whether the plaintiff’s
`
`allegations are “unrealistic or nonsensical,” purely “speculative,” or even “contradict
`
`other” allegations in deciding the ultimate question of whether a complaint has
`
`“enough substance to warrant putting the defendant through the expense of
`
`discovery.” Atkins v. City of Chicago, 631 F.3d 823, 832 (7th Cir. 2011). With these
`
`principles in mind, the court proceeds to examine the defendants’ arguments in
`
`order.
`
`A.
`
`Standing
`
`First, the defendants argue that Brownmark does not have standing to sue for
`
`copyright infringement. (Def.’s’ Br. at 1). The amended complaint indicates that
`
`Robert T. Ciraldo (“Ciraldo”), Andrew T. Swant (“Swant”), and Sam Norman
`
`(“Norman”) “created [the] original music video known as” WWITB. (Am. Compl.
`
`¶ 11). Eventually, the three individuals registered the copyright in the video with the
`
`United States Copyright Office and secured a Certificate of Registration for the
`
`copyright. Id. ¶ 12. The amended complaint further states that Messrs. Ciraldo and
`
`Swant – but not Mr. Norman – “assigned their interest” in WWITB to Brownmark in
`
`2008. Id. ¶ 13. Relying on the Ninth Circuit case of Sybersound Records, Inc. v.
`
`-4-
`
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`
`
`
`UAV Corp., 517 F.3d 1137, the defendants contend that “unless all the other co-
`
`owners of the copyright joined in granting an exclusive right to” a party, all
`
`Brownmark obtained from Mr. Ciraldo and Mr. Swant was a non-exclusive license
`
`in WWITB, which is insufficient to obtain standing to sue for a copyright violation.
`
`(Def.’s’ Br. at 9-10) (citing Sybersound Records, 517 F.3d at 1145-46). The court,
`
`however, is unpersuaded by the defendants’ first argument.
`
`The determination of whether a party has standing to sue for copyright
`
`infringement is governed by section 501(b) of the Copyright Act. Section 501(b)
`
`provides, in relevant part, that “the legal or beneficial owner of an exclusive right
`
`under a copyright is entitled . . . to institute an action for any infringement of that
`
`particular right committed while he or she is the owner of it.” 17 U.S.C. § 501(b).
`4
`
`Put another way, those who have exclusive rights in a copyright have standing to
`
`sue for copyright infringement, whereas “a person holding a non-exclusive license
`
`is not entitled to complain about any alleged infringement of the copyright.”
`
`Hyperquest, Inc. 632 F.3d at 382. As such, the issue for the court is whether
`
`Brownmark is the owner of an exclusive right provided by the copyright for WWITB.
`
`To resolve this issue, the court must take a step back and examine the rights
`
`afforded to joint authors of a copyrighted work.
`
` In turn, the Copyright Act entitles a copyright owner to a bundle of six different exclusive
`4
`rights, including the right to reproduce the copyrighted work and the right to prepare derivative
`works based on the copyrighted work. Hyperquest, Inc. v. N'Site Solutions, Inc., 632 F.3d 377 (7th
`Cir. 2011) (quoting 17 U.S.C. § 106).
`
`-5-
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`
`
`Under 17 U.S.C. § 201(a), the authors of a joint work are necessarily “co-
`
`owners of copyright in the work.” The Seventh Circuit has interpreted this language
`
`in the Copyright Act to afford “significant” benefits to a joint owner of a copyrighted
`
`work, in that each owner holds an “undivided interest in the work,” allowing each
`
`owner to independently use and license the joint work, subject only to a duty to
`
`account to a co-author for any profits. See Janky, 576 F.3d at 361 (quoting Erickson
`
`v. Trinity Theatre, 13 F.3d 1061, 1068 (7th Cir. 1994)); see also Seshadri v.
`
`Kasraian, 130 F.3d 798, 801 (7th Cir. 1997). Indeed, “joint authors co-owning [a]
`
`copyright in a work ‘are deemed to be tenants in common.’” Community for Creative
`
`Non-Violence v. Reid, 846 F.2d 1485, 1498 (D.C. Cir. 1988) (internal citations
`
`omitted) (Ginsburg, J.); see also 1-6 NIMMER ON COPYRIGHT § 6.09 (“[T]he
`
`relationship between such joint owners is said to be that of a tenancy-in-common”);
`
`GOLDSTEIN ON COPYRIGHT § 4.2.2 (“As co-owners under section 201(a) of the
`
`Copyright Act, coauthors are tenants in common of their copyright in the joint work.”)
`
`Inherent in a tenancy in common is a breadth of rights for each co-tenant, including
`
`the right to “unilaterally alienate their shares through sale or gift,” United States v.
`
`Craft, 535 U.S. 274, 280 (2002) (describing generally the English common law
`
`concept of the tenancy in common), to another who will step into the shoes of the
`
`original co-tenant. See WILLIAM B. STOEBUCK AND DALE A. WHITMAN, THE LAW OF
`
`PROPERTY§ 5.2 (3d ed. 2000) (“Since the interest of a tenant in common is alienable
`
`. . . a tenant in common may, without the consent of his cotenants transfer his
`
`-6-
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`
`
`interest .”) Moreover, tenants in common “have many other rights in the property,
`
`including the right to use the property, to exclude from third parties from it, and to
`
`receive a portion of any income produced from it.” Craft, 535 U.S. at 280. Given this
`
`concept of the rights of a co-owner of a copyright, it is of little wonder that the
`
`Seventh Circuit concluded that being a co-owner of a copyright has “significant”
`
`benefits. Janky, 576 F.3d at 361; see generally GOLDSTEIN ON COPYRIGHT § 4.2.2
`
`(“Courts deciding disputes between copyright co-owners have generally looked for
`
`analogies to the law governing real property tenancies in common.”)
`
`However, the Ninth Circuit in Sybersound Records did not view the rights of
`
`a co-owner of a copyright in such a broad manner. Specifically, the Sybersound
`
`Records court held that the only means by which a third party can obtain an
`
`exclusive license in a copyright of a jointly-authored work is to have “all” of the co-
`
`owners grant such a license. 517 F.3d at 1146. Moreover, according to the Ninth
`
`Circuit, a co-owner of a copyright cannot unilaterally alienate their share of the
`
`intellectual property and instead can “only grant a nonexclusive license” to a third
`
`party. Id. The Sybersound Records court provides two rationales for the rather bold
`
`limit on a co-owner of a copyright’s ability to transfer their property interest. First,
`
`the Ninth Circuit contends that if a co-owner were able to independently grant
`
`exclusive rights in a copyright, such an act would risk “limit[ing] the other co-owners’
`
`independent rights to exploit the copyright.” Id. However, this rationale makes little
`
`sense. Granting even a non-exclusive license – an act which no one contends a co-
`
`-7-
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`
`
`owner of copyright cannot unilaterally undertake – has the potential to limit the utility
`
`of the underlying copyright. At the most extreme, a co-owner of a copyright could
`
`grant non-exclusive licenses to the entire world to reproduce or prepare derivatives
`
`of the underlying work, rendering the underlying copyright useless. The other co-
`
`owners would have the right to an accounting from the co-owner who granted the
`
`slew of non-exclusive licenses, Seshadri, 130 F.3d at 801, but no one can credibly
`
`argue that the risk of limiting the other co-owner’s rights can be used to artificially
`
`restrict the alienability of the co-owner’s right to transfer their interest in the
`
`copyright. To accept the Ninth Circuit’s argument would undermine a basic tenet
`
`underlying the Copyright Act that the ownership of a copyright is freely transferable,
`
`17 U.S.C. § 201(d)(1), and would stand in sharp contrast to the nature of the rights
`
`of a co-owner of a copyright as endorsed by the Seventh Circuit. Janky, 576 F.3d
`
`at 361.
`
`Second, the Ninth Circuit premised its decision in Sybersound Records on a
`
`rather narrow definition of exclusivity in the context of a jointly-owned copyright.
`
`Specifically, the Ninth Circuit reasoned that, because the other co-owners could use
`
`the copyright in question even after the assignment of the right by one co-owner to
`
`a third party, the assignment was by definition non-exclusive. 517 F.3d at 1146
`
`(“Since TVT’s assignment was admittedly non-exclusive, TVT succeeded only in
`
`transferring what it could under 17 U.S.C. § 201(d), a non-exclusive license.”) The
`
`Sybersound Court, however, presumed, without any basis in the law, that a co-owner
`
`-8-
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`
`
`of a copyright has only non-exclusive rights, preventing a co-owner from granting
`
`exclusive rights to a third party. Perhaps calling a unilateral grant by one co-owner
`
`to a third party “exclusive” involves a play on words that does not comport with our
`
`typical view of word “exclusive” in other contexts, see, e.g., I.A.E., Inc. v. Shaver, 74
`
`F.3d 768, 775 (7th Cir. 1996) (“In an exclusive license, the copyright holder permits
`
`the licensee to use the protected material for a specific use and further promises that
`
`the same permission will not be given to others”), but worshiping at the altar of
`
`linguistic consistency would render a co-owner, whose interests in the copyright
`
`inherently are not limited to him or herself, all but powerless to prevent infringement
`
`of that copyright. More broadly, adopting the Ninth Circuit’s reasoning would mean
`
`that a co-owner of a copyright can never effectively transfer a partial interest in a
`
`copyright. It is for these reasons that the Sybersound Records court’s holding has
`
`been widely lampooned in several respected treatises. See 1-6 NIMMER ON
`
`COPYRIGHT § 6.10[A][2][d] (“[A] grant . . . that characterizes itself as exclusive, should
`
`be treated as such . . . [t]he contrary conclusion in Sybersound threatens to vitiate
`
`enforcement in general of joint works”); WILLIAM F. PATRY, PATRY ON COPYRIGHT
`
`§ 5:103 (“The Sybersound court . . . [has] made co-owners agunot, to each other
`
`until a Get, is obtained or a Bet Din, steps in and settles the matter . . . [t]his isn’t
`
`what Congress intended.”)
`
`In sum, while the Sybersound Records decision is most definitely authoritative,
`
`it is far from persuasive. Instead, this court agrees that “[t]he determination of
`
`-9-
`
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`
`
`
`whether a grant is exclusive or non-exclusive depends on the grant.”1-6 NIMMER ON
`
`COPYRIGHT § 6.10[A][2][d]; see also PATRY ON COPYRIGHT § 5:103 (“[Congress]
`
`intended that co-owners be able to grant nonexclusive licenses without the others’
`
`permission and that they be able to transfer their proportional share in the whole
`
`without the others’ permission, in which case the transferee would indeed stand in
`
`the shoes of the transferor.”) Here, accepting the allegations in the complaint as
`
`true, Messrs. Ciraldo and Swaint’s grant of their interest in WWITB was a complete
`
`assignment of rights to Brownmark (Am. Compl. ¶ 13), and, accordingly, Brownmark
`
`has standing to sue for infringement of the underlying copyright. Hyperquest, Inc.
`
`632 F.3d at 382. The court proceeds to examine the defendants’ second argument
`
`for dismissing the amended complaint.
`
`B.
`
`Fair Use
`
`In the alternative, the defendants argue that Brownmark’s copyright
`
`infringement claims are barred by the fair-use doctrine as codified at 17 U.S.C.
`
`§ 107. (Def.’s’ Br. at 2). In support of their fair-use defense argument, the
`
`defendants have submitted video of the original WWITB video and the South Park
`
`episode “Canada on Strike.” (Docket #10). Ordinarily, courts may not rely upon
`
`materials outside of the pleadings when considering a motion to dismiss under
`
`Fed. R. Civ. P. 12(b)(6) without converting the motion to one for summary judgment.
`
`Fed. R. Civ. P. 12(d). There is an exception to this general rule, however, where the
`
`material in question is expressly referenced in the complaint and is central to the
`
`-10-
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`
`
`plaintiff’s claim. See Tierney v. Vahle, 304 F.3d 734, 738 (7th Cir. 2002); see
`
`generally Tellabs, Inc. v. Makor Issues & Rights, Ltd., 551 U.S. 308, 322 (2007)
`
`(holding that a court may rely on “documents incorporated into the complaint by
`
`reference, and matters of which a court may take judicial notice” in deciding whether
`
`a complaint fails to state a claim upon which relief may be granted). Here, there is
`
`no doubt that the two videos in question are central to the plaintiff’s claim, and
`
`indeed no party argues that the court cannot rely on the videos in evaluating whether
`
`Brownmark has failed to properly state a claim for copyright infringement. However,
`
`the rub is that “fair use” is viewed as an affirmative defense, as opposed to a central
`
`element of copyright infringement. See Janky, 576 F.3d at 361 (holding that the two
`
`elements of a copyright infringement claim are: (1) the plaintiff owns a valid copyright
`
`right; and (2) the defendant(s) copied “constituent elements of the work that are
`
`original”); see also Harper & Row, Publrs. v. Nation Enters., 471 U.S. 539, 561
`
`(1985) (holding that fair use is an affirmative defense). Hence, the central issue is
`
`whether this court can resolve a motion to dismiss in the defendants’ favor because
`
`of the existence of the affirmative defense of fair use.
`
`A complaint is “subject to dismissal for failure to state a claim if the allegations,
`
`taken as true, show the plaintiff is not entitled to relief.” Jones v. Bock, 549 U.S.
`
`199, 215 (2007). Construed with the incorporation by reference doctrine discussed
`
`in Tierney, an affirmative defense can be the basis for a dismissal under Fed. R. Civ
`
`P. 12(b)(6) when the allegations of the complaint and material that expressly
`
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`
`
`referenced the complaint and is central to the plaintiff’s claim “set forth everything
`
`necessary to satisfy the affirmative defense.” Brooks v. Ross, 578 F.3d 574, 579
`
`(7th Cir. 2009) (quoting United States v. Lewis, 411 F.3d 838, 842 (7th Cir. 2005))
`
`(emphasis added). In other words, plaintiffs have to plead themselves out of court
`
`by admitting all the ingredients of an “impenetrable defense.” Hecker v. Deere &
`
`Co., 556 F.3d 575, 588 (7th Cir. 2009); see also Tamayo v. Blagojevich, 526 F.3d
`
`1074, 1086 (7th Cir. 2008). A Fed. R. Civ. P. 12(b)(6) motion cannot be granted
`
`based on an affirmative defense when the plaintiff’s recovery is “still plausible” even
`
`under the facts taken from the face of the complaint and the documents it references
`
`that are central to the claim. Id.
`
`Ultimately, “context is king” in this case in deciding whether the plaintiff has
`
`provided in its complaint and the materials referenced in that complaint the
`
`necessary information to warrant a dismissal based on an affirmative defense. Here,
`
`the amended complaint discusses a very limited context for the alleged infringement.
`
`Specifically, the amended complaint notes that the use of WWITB by the makers of
`
`South Park was in the context of the specific episode entitled “Canada on Strike,” in
`
`which one of the characters sings the musical composition in question and recreates
`
`the imagery associated with the music video. (Am. Compl. ¶¶ 14-15). Notably, the
`
`infringing actions are limited in the complaint to the distribution of the episode on
`
`television, id. ¶ 16, on South Park’s website, id. ¶ 17, on iTunes and Amazon.com,
`
`id. ¶ 18, and on DVD and Blu-Ray discs of “South Park Season 12 (Uncensored).”
`
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`Id. ¶ 19. In other words, the complaint does not allege that the defendants are
`
`somehow using the WWITB video in any other form other than in the production and
`
`distribution of the episode “Canada On Strike.” One could imagine, for example, the
`
`makers of South Park using the sound clips or images from the WWITB video to
`
`promote the show in an advertisement or on a poster. In other words, the
`
`defendants could be using the WWITB video in a way completely divorced from the
`
`episode in question. However, the amended complaint does not make such
`
`allegations and instead limits its discussion of how South Park is infringing the
`
`plaintiff’s copyright to how the WWITB music video is used in the context of the
`
`episode “Canada on Strike.” Accordingly, the court needs to decide whether the
`
`defendants use of the copyrighted material in the context of the episode “Canada on
`
`Strike” is fair use. If a viewing of the episode and the original work warrants a
`
`determination that the use of the WWITB video was“fair,” as defined by 17 U.S.C.
`
`§ 107, the allegations of the complaint and material that are expressly referenced
`
`in the complaint have “set forth everything necessary to satisfy the affirmative
`
`defense” and dismissal is warranted because the complaint is purely speculative.
`
`Brooks, 578 F.3d at 579. Conversely, if in viewing “Canada on Strike” and the
`
`WWITB video the court can reasonably infer that the defendants’ use of WWITB was
`
`not a “fair use,” the plaintiff’s recovery is “still plausible” and this case should
`
`proceed. Tamayo, 526 F.3d at 1086.
`
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`
`
`While evaluating an affirmative defense, and indeed the “fair use” defense, at
`
`the pleadings stage is “irregular,” Chicago Bd. of Educ. v. Substance, Inc., 354 F.3d
`
`624, 627 (7th Cir. 2003), given the scope and nature of the infringement alleged by
`
`the amended complaint, coupled with the rather obvious resolution of the substantive
`
`underlying issue, the court can conclude that this dispute simply does not warrant
`
`“putting the defendant[s] through the expense of discovery.” Atkins, 631 F.3d at 832.
`
`Moreover, in contrast to the Seventh Circuit’s decision in Substance, Inc., here the
`
`plaintiff has not even bothered to address the substance of the fair use question,
`
`providing this court with absolutely no indication of any evidence or factors outside
`
`of the episode in question that could even possibly influence the resolution of the fair
`
`use issue in the plaintiff’s favor. Brownmark has not provided a reason, nor can this
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`court speculate as to why this matter cannot be resolved by looking to the pleadings
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`and the materials incorporated by reference in the pleadings. Consequently, the
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`court finds nothing wrong with addressing the substance of the fair use issue through
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`the Fed. R. Civ. P. 12(b)(6) motion. See generally Harper & Row Publishers, Inc.
`
`v. Nation Enters., 471 U.S. 539, 105 S. Ct. 2218, 85 L. Ed. 2d 588 (1985) (holding
`
`that a court may conduct a fair use analysis, as a matter of law, where the facts are
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`presumed or admitted); see also Fisher v. Dees, 794 F.2d 432, 435-36 (9th 1986)
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`(affirming a finding of fair use where the material facts were not at issue or were
`
`admitted). Indeed, in this circuit and others, evaluating fair use issues in the context
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`of a Fed. R. Civ. P. 12(b)(6) motion is commonplace. See Forest River, Inc. v.
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`-14-
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`Case 2:10-cv-01013-JPS Filed 07/06/11 Page 14 of 20 Document 23
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`
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`Heartland Rec. Vehicles, LLC, 753 F. Supp. 2d 753, 766 (N.D. Ind. 2010) (evaluating
`
`the fair use defense in connection with a motion to dismiss, but denying the motion
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`on substantive grounds); Karll v. Curtis Publ’g Co., 39 F. Supp. 836, 837-38 (E.D.
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`Wis. 1941) (granting motion to dismiss infringement claim because of fair use
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`defense); Shell v. DeVries, 07-1086, 2007 U.S. App. LEXIS 28317, at *4 (10th Cir.
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`Colo. Dec. 6, 2007) (same); Burnett v. Twentieth Century Fox, 491 F. Supp 2d 962,
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`971-72 (C.D. Cal. 2007) (same); Sedgwick Claims Mgmt. Svcs. v. Delsman, No. 09-
`
`1468, 2009 U.S. Dist. LEXIS 61825, at *20 (N.D. Cal. July 16, 2009) (same); see
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`generally Leadsinger, Inc. v. BMG Music Publ'g, 512 F.3d 522, 532 (9th Cir. 2008)
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`(holding that the application of the fair use doctrine at the pleading stage is
`
`appropriate). The court proceeds to the substance of the fair use question.
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`The fair use doctrine allows for a “limited privilege in those other than the
`
`owner of a copyright to use the copyrighted material in a reasonable manner without
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`the owner’s consent.” Fisher, 794 F.2d at 435. The rationale behind the doctrine
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`is that unauthorized uses of a copyright are permissible when they “advance the
`
`underlying constitutional purpose of copyright law: to promote broad public
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`availability of literature, music, and other forms of creative arts.” BRUCE P. KELLER
`
`AND JEFFREY P. CUNARD, COPYRIGHT LAW: A PRACTITIONER’S GUIDE § 8.3 (2010).
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`Specifically, 17 U.S.C. § 107, which codifies common law fair use principles,
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`provides that the “fair use of a copyrighted work” for such purposes as “criticism” and
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`“comment” “is not an infringement of a copyright.” Moreover, the statute provides
`
`-15-
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`Case 2:10-cv-01013-JPS Filed 07/06/11 Page 15 of 20 Document 23
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`
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`four guideposts by which to determine whether a particular use is “fair”: (1) the
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`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
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`copyrighted work. Id. However, as the Seventh Circuit has cautioned, “the four
`
`factors that Congress listed when it wrote a fair use defense . . . into the Copyright
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`Act . . . are not exhaustive and do not constitute an algorithm that enables decisions
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`to be ground out mechanically.” Substance, Inc., 354 F.3d at 629; Ty, Inc. v. Publ'Ns
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`Int'l, 292 F.3d 512, 522 (7th Cir. 2002) (“[T]he four factors are a checklist of things
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`to be considered rather than a formula for decision.”). Ultimately, the “fair use copier
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`must copy no more than is reasonably necessary . . . to enable him to pursue an aim
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`that the law recognizes as proper,” such as “the aim of criticizing the copyrighted
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`work effectively.” Substance, Inc., 354 F.3d at 629. Moreover, application of the fair
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`use doctrine requires a case-by-case analysis. Campbell v. Acuff-Rose Music, Inc.,
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`510 U.S. 569, 577, 590, 114 S. Ct. 1164, 127 L. Ed. 2d 500 (1994). With this
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`framework for evaluating the fair use issue in mind, the court turns to the two works
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`in question.
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`Here, applying the statutory factors from Section 107 of the Copyright Act and
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`the principles behind the fair use doctrine, the court readily concludes that the
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`defendants use of the music video in the South Park episode “Canada on Strike”
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`was “fair.” One only needs to take a fleeting glance at the South Park episode to
`
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`Case 2:10-cv-01013-JPS Filed 07/06/11 Page 16 of 20 Document 23
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`
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`gather the “purpose and character” of the use of the WWITB video in the episode in
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`question. The defendants used parts of the WWITB video to lampoon the recent
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`craze in our society of watching video clips on the internet that are – to be kind – of
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`rather low artistic sophistication and quality. The South Park episode “transforms”
`5
`
`the original piece by doing the seemingly impossible – making the WWITB video
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`even more absurd by replacing the African American male singer with a naive and
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`innocent nine-year old boy dressed in adorable outfits. The episode then showcases
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`the inanity of the “viral video” craze, by having the South Park fourth graders’ version
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`of the WWITB video “go viral,” seemingly the natural consequence of merely posting
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`a video on the internet. More broadly, the South Park episode, with its use of the
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`WWITB video, becomes a means to comment on the ultimate value of viral YouTube
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`clips, as the main characters discover that while society is willing to watch absurd
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`video clips on the internet, our society simultaneous assigns little monetary value to
`
`such works. The South Park “take” on the WWITB video is truly transformative, in
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`that it takes the original work and uses parts of the video to not only poke fun at the
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`original, but also to comment on a bizarre social trend, solidifying the work as a
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`classic parody. See Campbell, 510 U.S. at 580 (noting that a “parody” comments
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`“on the original or criticiz[es] it to some degree.”) Such use of a copyrighted work,
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`which uses the work and transforms it for another purpose, lends this court to
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` While the episode may be a vehicle in which to comment on other issues, such as the
`5
`2007-2008 writers strike, the court need not – and should not – go beyond the pleadings and the
`materials incorporated by reference into the amended complaint in evaluating the fair use issue.
`
`-17-
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`Case 2:10-cv-01013-JPS Filed 07/06/11 Page 17 of 20 Document 23
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`
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`conclude that the defendants’ use is fair. Id. at 579 (holding that “the more
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`transformative the new work,” the more likely the use of the old work is a fair one);
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`see generally KELLER AND CUNARD, COPYRIGHT LAW: A PRACTITIONER’S GUIDE § 8.5.5
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`(“The special nature of parodies . . . make a finding of fair use more likely.”).
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`Beyond the “purpose and nature of the work” statutory factor, the court also
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`looks to the remaining issues raised in Section 107 of the Copyright Act. The
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`“nature” of the copyrighted work factor is not particularly helpful to the court,
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`however: while fair use is more difficult to establish when a core work is copied as
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`opposed to when an infringer takes material that is only marginally within copyright
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`protection, the “nature” of the copyright in question does not help this court assess
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`whether South Park’s parody is a fair use, because “parodies almost invariably copy
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`publicly known, expressive works.” Campbell, 510 U.S. at 586. Additionally, the
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`court notes that the use of the copyrighted work in the South Park episode was
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`relatively insubstantial. The defendants’ work did not mirror the original WWITB
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`video – indeed, the derivative work was a cartoon of a nine year old boy repeating
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`just enough lines WWITB to conjure up the original work. Notably, the WWITB
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`snippet in the South Park episode was less than a third of the length of the original
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`work. The use of the imagery and words of the original work was all but the
`
`minimum needed by the defendants to accomplish their goal of commenting on a
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`social phenomenon. Substance, 354 F.3d at 629. Finally, there is little risk that
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`derivative work in question would somehow usurp the market demand for the
`
`-18-
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`Case 2:10-cv-01013-JPS Filed 07/06/11 Page 18 of 20 Document 23
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`
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`original: the South Park episode lampoons viral video crazes, while the WWITB
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`video is the epitome of a clip that fuels such crazes. Campbell, 510 U.S. at 524
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`(“[T]here is no protectible derivative market for criticism.”) Looking at the Section
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`107 factors together, keeping in mind the purposes of the fair use doctrine, the court
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`can easily conclude that South Park’s parody of the WWITB video falls squarely
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`within the fair use protections afforded by the Copyright Act. If the use by the
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`defendants of the
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