What What, Fair Use on a 12(b)(6)?

“What what, in the butt?” was the question recently before justices Easterbrook, Cudahy and Hamilton in the appeal of Brownmark Films LLC v. Comedy Partners from the Eastern District of Wisconsin. (Opinion)  At issue was whether South Park’s interpretation of Samwell’s “What What In The Butt,” as performed by Butters in the episode “Canada on Strike,” was non-infringing fair use under 17 U.S.C. § 107.  More interestingly, though, was that Comedy Partners raised the defense on a 12(b)(6) motion to dismiss – without any discovery or opportunity therefor (see FRCP 56(d), formerly Rule 56(f)).  The Eastern District of Wisconsin agreed that South Parks’ rendition of What What In the Butt was fair use, and dismissed the Complaint at the pleading stage.

Brownmark did not include the original What What In the Butt video, nor South Park’s adaptation, in its Complaint.  South Park Digital Studios did, however, attach both videos to its motion to dismiss, relying on the incorporation by reference doctrine.  On appeal, the Seventh Circuit resolved this issue in South Park’s favor:

Because the claim was limited to the production and distribution of a single episode, the district court was correct to rely solely on the two expressive works referenced in Brownmark’s amended complaint and attached to SPDS’s motion, as well as the allegations in the complaint, to decide on the fair use defense.

SPDS relies on the incorporation-by-reference doctrine to maintain that reliance on the attached works does not violate Rule 12(d), which requires that Rule 12(b)(6) or 12(c) motions containing materials outside of the pleadings be converted into motions for summary judgment. It is well settled that in deciding a Rule 12(b)(6) motion, a court may consider “documents attached to a motion to dismiss . . . if they are referred to in the plain- tiff’s complaint and are central to his claim.” Wright v. Assoc. Ins. Cos. Inc., 29 F.3d 1244, 1248 (7th Cir. 1994). In effect, the incorporation-by-reference doctrine provides that if a plaintiff mentions a document in his complaint, the defendant may then submit the document to the court without converting defendant’s 12(b)(6) motion to a motion for summary judgment. The doctrine prevents a plaintiff from “evad[ing] dismissal under Rule 12(b)(6) simply by failing to attach to his complaint a document that prove[s] his claim has no merit.” Tierney v. Vahle, 304 F.3d 734, 738 (7th Cir. 2002). (Op. at 5)

But the Seventh Circuit noted a curious wrinkle to this analysis:

While the application of this doctrine to the present case would seem to allow SPDS’s action, no court of appeals has ruled that the content of television programs and similar works may be incorporated by reference. Several district courts have concluded that the doctrine does apply to such works. See, e.g., Burnett v. Twentieth Century Fox, 491 F. Supp. 2d 962, 966 (C.D. Cal. 2007); Zella v. E.W. Scripps Co., 529 F. Supp. 2d 1124, 1131-32 (C.D. Cal. 2007); Daly v. Viacom, 238 F. Supp. 2d 1118, 1121-22 (N.D. Cal. 2002). And we think it makes eminently good sense to extend the doctrine to cover such works, especially in light of technological changes that have occasioned widespread production of audio-visual works. The parties, however, did not brief this issue, and so we reserve the resolution of the question for a later date. (Op. at 5-6)

Ultimately finding that the Eastern District of Wisconsin was within its jurisdiction to grant dismissal, the appellate court engages in a relatively truncated fair use analysis under the four factors of 17 U.S.C. § 107.  The reason for the brevity?

Since Brownmark never opposed SPDS’s fair use argument in the district court, we consider the argument waived. (Op. at 9)

Ouch.  And, since it’s the Seventh Circuit, that means automatically shifting attorney’s fees and costs under 17 U.S.C. § 505.  What What In the Butt, Indeed.

Perhaps the overlooked gem of this opinion is that the Seventh Circuit has forever enshrined my favorite South Park meme: Internet Money.

The South Park Elementary school boys—Cartman, Stan, Kyle and But- ters—decide to create a viral video in order to accrue enough “Internet money” to buy off the striking Canadians. The boys create a video, “What What (In The Butt),” (WWITB) in which Butters sings a paean to anal sex. Within the show, the video is a huge hit, but the boys are only able to earn “theoretical dollars.”

…

As the South Park episode aptly points out, there is no “Internet money” for the video itself on YouTube, only advertising dollars that correlate with the number of views the video has had. It seems to this court that SPDS’s likely effect, ironically, would only increase ad revenue. Any effect on the derivative market for criticism is not protectable. Id. at 592. And the plaintiff has failed to give the district court or this court any concrete suggestion about potential evidence indicat- ing that the South Park parody has cut into any real market (with real, non-Internet dollars) for derivative uses of the original WWITB video. (Op.)

Of course, when I use “Internet Money,” it refers to settlements from BitTorrent infringers and others who pay for their wrongdoing.  But, it is evocative of the constant challenge of monetizing the digital ether of the World Wide Web.

Bieber Bang Bus Presents

Dan Snyder is butthurt, SLAPP suit ensues, Irony meter pegged

By Marc J. Randazza

Washington Redskins owner, Dan Snyder, seems to have awfully thin skin for a guy who owns a sports team named after a racial insult.

Snyder filed a frivolous defamation suit against the Washington City Paper (“WCP”) based upon an article “The Cranky Redskins Fan’s Guide to Dan Snyder.”

Snyder accuses the WCP of spreading “lies, half-truths, innuendo, and anti-Semitic imagery” to defame him, seeking $2 million in damages.  The amount is split between two claims, the first for defamation and the second for false light.  The “anti-semitic imagery” he complains of is a crude addition of horns, a unibrow and Anton LaVey-esque goatee to Snyder’s photograph in the WCP, which can be seen here.

No, your irony meter is not broken. It is actually reading 11. A guy who owns the Washington Redskins is complaining that someone created an allegedly racist drawing of him. And, anyone who thinks that “Washington Redskins” isn’t a bigoted term, I used to think the same thing. In law school, I was in a debate with a guy I’ll identify as “Steve B.” I was armed with my free-speech bona fides, and ready to pwn Steve in front of the whole class for being overly politically correct. With his opening shot, Steve looked at me and said “what would you think if they were called the ‘Washington Jigaboos?’ Because the way black people would feel about that is how Native Americans feel about ‘Redskins.'”

I immediately conceded. Steve was right. The debate was over.

Please re-calibrate your irony meters -- Dan Snyder, owner of the Washington *Redskins*; complains that this drawing is racist.

So, the owner of the Washington Jigaboos Redskins is pissy about someone supposedly using racist imagery.

On behalf of Native Americans, up yours, Dan Snyder. Up yours with a cactus grown in the driest part of the Navajo reservation.

But lets get back to the issue at hand:

Dave McKenna’s comprehensive compendium on Snyder’s questionable reputation, which gave rise to this lawsuit, is not the first time he offended Snyder’s sensibilities.  Snyder paints a paranoid picture of McKenna as a conspirator, evidenced in his November 24, 2010 letter to the WCP — sent less than a week after McKenna’s article hit the streets.  Because McKenna mentioned Snyder within the WCP and its blog 15 times in as many months, Snyder believed McKenna was attacking him to please his new bosses at Atalaya Capital, which acquired Creative Loafing and the WCP in August 2009. (source.)

Even so, it appears McKenna gave Snyder a fair shake.  Before McKenna’s article was published, Snyder’s wife went to the local media to defend her husband.  In an interview, she said her husband was now surrounded by ‘better people,’ and that he had ‘grown and he’s evolved.’ (source.)  The offending article even begins with the words “[w]e’ve been told a New Dan Snyder walks among us”!

Nevertheless, lets not forget that Dan Snyder is a wealthy man. He is a fabulously wealthy man. And we all know that the fabulously wealthy often believe that they are above being criticized by the rabble — and when the rabble forgets it, they need only spread their ass cheeks, let a few filthy pieces of silver fall from their milk-fed buttholes, and some swine of a lawyer will be lying underneath, mouth agape, happy to catch what might dribble from the sphincter of privilege — their oath, their ethics, and free speech be damned.

In nicer words, this is a classic SLAPP suit — not filed because it has a chance of success — but filed because the cost of defending it will be punitive enough to remind the little people that people who can afford to use helicopters as personal transportation vehicles do not like to be made fun of or criticized.

The first sign that this is a SLAPP suit? You need go no further than paragraph 1. The complaint states “Mr. Snyder is a public figure. As such, he accepts the right of the public and the press to criticize him or to express personal dislike, whether or not such expressions are justified by the facts.”

Precisely.

In other words, Mr. Snyder is going to need to leap over the “actual malice” standard laid down in New York Times v. Sullivan, 376 U.S. 254 (1964). In that case, the Supreme Court held that the First Amendment required that a public official libel plaintiff must establish, through clear and convincing evidence, that the defendant acted out of “actual malice.” That doesn’t mean that the writer must have acted out of malicious intent, but rather that the defendant published his words “with knowledge that it was actually false or with reckless disregard of whether it was false or not.” Later cases expanded this to encompass defamation suits by public figures, as well as public officials. See, e.g, Curtis Publishing Company v. Butts, 388 U.S. 130 (1967); Gertz v. Robert Welch, 418 U.S. 323, 351 (1974).

Public figures can, occasionally, prevail under this standard. However, the bar is so high that unless the case is flawless, it is unlikely to go anywhere except down the “expensive to defend” highway. Snyder knows this. His attorneys know this. But Snyder is a wealthy man, and his lawyers don’t mind the taste of feces in their mouths, as long as they are licking the foul substance off of Snyder’s coins.

Lets take a look at Snyder’s claims under New York law. New York is very protective of free speech — especially where the news media is concerned. What constitutes a statement of opinion is broad, and can even embrace language that in other states may be defamation per se, such as calling another person “unprofessional.”  See Amodei v. New York State Chiropractic Association, 160 A.D.2d 279, 280 (N.Y. Sup. Ct. App. Div. 2d Dept. 1990), aff’d 571 N.E.2d 79 (N.Y. 1991); Halegoua v. Doyle, 171 Misc. 2d 986, 991 (N.Y. Sup. Ct. 1997); Wait v. Beck’s North America, Incorporated, 241 F. Supp 2d 172, 183 (N.D.N.Y. 2003). (“Statements that someone has acted unprofessionally or unethically generally are constitutionally protected statements of opinion.”).

Despite Snyder’s melodramatic whining about McKenna’s negative opinion of him, even incendiary and inflammatory criticism of a subject is protected rhetorical hyperbole. See Greenbelt Coop. Pub. Ass’n v. Bresler, 893 U.S. 6, 14 (1970); Gross v. N.Y. Times Co., 623 N.E.2d 1163, 1167 and 1169 (N.Y. 1993). Even heavily caustic attacks on public figures are afforded the highest level of Constitutional protection. Hustler Magazine v. Falwell, 485 U.S. 46, 52 (1988).

The second cause of action is a bit trickier.  While the language reads like a false light claim, there’s a wrinkle here: According to the Citizen Media Law Project, New York doesn’t recognize the tort of false light. Costanza v. Seinfeld, 27 Media L. Rep. 2177 (N.Y. Sup. Ct. 1999), aff’d, 719 N.Y.S.2d 29 (N.Y. App. Div. 2001); Howell v. New York Post Co., 21 Media L. Rep. 1273 (N.Y. 1993)  That leaves Snyder with the tort of defamation by implication, which remains a form of defamation and thus subject to the same attacks set forth in the preceding paragraph.

Nonetheless, as the owner of the Redskins, Snyder has access to lawyers and the money to pay for them, and can inflict quite a lot of pain onto the defendants. Furthermore, even if the WCP fends off these claims, Snyder has made it clear that anyone smaller than the WCP had better be worried — criticizing him is not without its significant costs.

Mr. Snyder has more than sufficient means to protect his reputation. We presume that defending such litigation would not be a rational strategy for an investment fund such as yours. Indeed, the cost of litigation would presumably quickly outstrip the asset value of the Washington City Paper.” (source)

Snyder appears more butthurt than genuinely wronged. Unfortunately for him, or fortunately for us all, there still is no cause of action in the United States for intentionally butthurting a rich dude. Unfortunately for us all, win or lose, Snyder and his legal team just turned blew a cold wind across the free expression fruited plain.

J. Malcom DeVoy contributed to this post. Hat tip to Johnny Utah.

Streisand 101

by Jason Fischer

In an effort (I’m assuming) to be hip and relevant, my alma mater (and Randazza’s previous teaching gig) has begun adding courses to their curriculum that have little to do with the law or lawyering.  One example is a course called “Popular Culture and the Law,” to which the registrar has assigned the following course description:

This 2 hour seminar will examine social attitudes toward law, lawyers, and legal institutions through the viewing and examination of Hollywood films.  Film depictions of law students, juries, and judges will also be considered.  Each seminar session will focus in as much depth as possible on a particular film or films and a particular problem or aspect of law, law practice, ethics, or the image and status of the lawyer in American culture raised by the film(s).  The majority of the films will be viewed outside the classroom and will be considered as texts providing contemporary depictions of the subject matter to be examined in class.  In addition, readings will be assigned for each film and will form the basis for class discussion.  The films will be reserved in the library.  This will be a paper course which may be used to satisfy the Upper Level Writing Requirement.

My understanding is that this course is just another excuse for chicks in law school to watch Legally Blonde (2001) for the 4,821st time.  What a great way to spend your tuition dollars at a professional school!

Normally, I’m not the one in this forum to bitch about the state of legal education.  Marco & Co. do it regularly enough that I don’t have to.  (See here, here, and here.)  On the whole, my law school experience was a good one.  I took as much advantage of our externship program as I could, and I went out of my way to take classes from adjunct professors who I knew actually practiced what they were preaching.  What I object to is courses that have students watch reruns of “L.A. Law” (1986), or other fictional portrayals, as a means for teaching about the practice of law.  Aren’t there other subjects that could be presented that have more merit?

One subject jumps quickly to my mind, and regular readers of this blog will recognize it immediately.  I would call it “Streisand 101,” taking its name from actress and singer, Barbara Streisand, who effectively demonstrated that simply filing a lawsuit can bring about the exact opposite result from what you hoped to achieve.  It would be a skills course, aimed at training young lawyers to talk their clients down from filing certain kinds of lawsuits — the kind that end up splashed all over blogs like this one, fueling negative publicity for the client.  The intent would be to teach how to 1) determine the unintended consequences of a particular cause of action; and 2) effectively communicate those consequences to the client, giving them the opportunity to back away before doing any real damage.  The primary pedagogical tools would be roll playing and reviewing news stories about past P.R. blunders.

Finding great teaching examples would be about as challenging as falling off of a log.  Just this week, outdoor clothing maker, The North Face (TNF), is in the news again, moving forward with their lawsuit against The South Butt (TSB).  (You can find my previous coverage of the case here.)  Before TNF filed their lawsuit, TSB had a whopping $5,000 in gross sales — after months of being in business.  Now, TSB’s selling that much every hour.  Their attorney claims that, with 14 new employees, TSB has created more jobs in its home state than the Obama’s $800 billion stimulus plan.  (Source.)

The only downside that I see to so educating the next crop of attorneys is that a huge source of entertainment will be snuffed out.  What will we read about for fun when Micheal Jordan’s attorney convinces him not to sue the people who congratulate him?

Fox News Porn – Fair Use Orgy!

This is going to be a fun election for intellectual property wonks. We’ve already seen the Clash of the Anti-Hillaristas!

Now, Fox News finds itself in a fair use maelstrom.

In an effort to criticize the network that brought us eight years of darkness, an anonymous webmaster has created the Fox News Porn website. Apparently the webmaster has detected higher than normal levels of T&A on Fox News.

One of the links brings you to Fox Attacks, a blog that seems to be devoted to tearing down the Fox Network.

Disclaimer, I do occasional legal commentary on Fox. Nevertheless, I don’t allow that to bias my opinion of the network. I do think that Fox is open to plenty of honest criticism, but I find this kind of attack to be more than a little dishonest. Every network dishes up the skin. If these people have a beef with Fox’s content and political leanings, so be it. That is the arena in which they should take on Fox – not some faux morality crusade.

This kind of shrieking is far too reminiscent of the McCarthy-like tactics employed by the religious right.

Lets sit on the sidelines and see if Mr. Murdoch takes the criticism, or if this winds up being a really interesting intellectual property case. The site clearly uses the Fox News logo (trademark infringement) and clearly uses Fox’s copyrighted materials. However, I’m certain that if Fox attempted to bring a claim for either one, the fair use defense would obliterate the claims.

Clash of the Anti-Hillaristas

It is always funny when rival political factions get into trademark disputes instead of letting their ideas compete in the marketplace. That usually happens with opposing political factions. See, e.g., Hypocrites for Community Values Lose Round One.

In a new twist, we see two groups with a common interest in a trademark spat.

Apparently the world just ain’t big ’nuff for two anti-Hillary groups.

Attorney General Nominee Mukasey on Trademarks and the First Amendment

In doing some research on the new Attorney General nominee, I discovered that he was the judge who penned the opinion in Tommy Hilfiger v. Nature Labs, LLC, 221 F. Supp. 2d 410 (S.D.N.Y. 2002).

In that case, Nature Labs produced a line of “pet perfumes” whose names parodied some of the higher-end human smell-good products. Judge Mukasey wrote a well-reasoned, thoughtful, and funny (as far as a trademark opinion can be funny) opinion.

Dischord & Minor Threat v. Nike

In this corner — Dischord Records and Minor Threat

For you kids who might not remember, Minor Threat was the spring from which all of the Washington D.C. punk rock scene flowed, the “godfathers of the straight-edge punk movement of the early 1980’s” (source) and its leader/front man Ian MacKaye is also the driving force behind Dischord records, which gave us (in addition to Minor Threat) punk classic bands like Dag Nasty, Government Issue, Youth Brigade, the foundational Teen Idles. Of course, Dischord’s flagship band since 1987 has been Fugazi, MacKaye’s most well-known project (which is unfortunately on hiatus).

Top Ten Reasons that that the USPTO no longer takes note of the facts when issuing Office Actions

I belong to a Trademark Lawyer’s newsgroup. One of my friends on that group (who will remain un-named) made the following understatement of the year:

“I have noticed Office Actions quoting right out of the TMEP, and apparently taking little note of the facts.”

I called the USPTO to ask them what they thought of this statement.

After pressing option 1, 5, 9, and then pressing zero five hundred times, I was connected to someone in a position of authority at the USPTO. I reported this comment to them, and they said that they knew about this situation and were just about to release a statement on it.

I asked if they would please provide me with a copy, and the courteously sent me the following press release on this “problem.”

Top Ten Reasons that that the USPTO no longer takes note of the facts when issuing Office Actions:

Is Disney Bringing Back Jim Crow?

Apparently four black teens were ejected from Downtown Disney for… wait for it…. loitering under Disney’s new “anti-gang, no-loitering policy.” Read here.

One also “made ‘kind of smart remarks’ to Disney security.” For this, they were detained, photographed and fingerprinted. The penalty for not respecting Walt’s authoritah? Banned for life from Disney property.

Seriously, how in the hell can you bust anyone for loitering in Downtown Disney? Isn’t that what the place is for?

Well, looks like the Fascist Mouse really stepped in it this time. While four black youths being harassed by bigoted peckerwoods isn’t anything rare, this time they just might get called on it. One of these “dangerous” youths who refused to respect Disney’s authoritah is the son of a civil rights lawyer.

That’s right. If Mickey wants to sing “Damn it Feels Good to be a Gangsta,” he had better make sure that the kids he is mistreating are actually powerless and poor. Oh no Pluto! One of their dad’s is a lawyer!

Nobody has organized a boycott yet… but I avoid that place anyhow. Talk about pre-packaged, shrink-wrapped, garbage culture. Disney is the kind of place that makes me wish that the movie Fight Club was real.

Interestingly enough, I was prowling around Disney’s corporate offices the other day, and found this document in a folder marked “Classified.”

Top Ten New Ideas for Disney World! (after the jump)

Take That Carol Burnett!

Carol Burnett isn’t funny. Sorry, maybe it is a generational thing. Maybe I have become numb to her corny humor after too many marathon sessions watching Jackass and South Park.

No, she just sucks.

Not just her art. She personally sucks. Carol Burnett has the distinction of having filed two cases that had a high likelihood of rolling back all of our First Amendment rights because she was offended. If she had a better haircut, her respect for the First Amendment (or lack thereof) might make one mistake her for George W. Bush.

Fortunately, United States District Court Judge Dean Pregerson does not suck. No, not at all. Judge Pregerson issued a magnificent ruling on June 1, putting Carol Burnett in her place for her absolutely frivolous and shameful complaint against Twentieth Century Fox and Family Guy.

My initial blog entry on this case from March 17.

Carol Burnett v. Family Guy Dismissal. A happy day for Free Expression.

The dismissal boils down to this: Fair Use.

The Copyright infringement claim was dismissed because parody is protected fair use. See Campbell v. Acuff-Rose.

The Trademark Infringement claim was a little less simple than that, but it boiled down to no likelihood of confusion. It shouldn’t take the wisdom of Solomon to arrive at that conclusion. Furthermore, there was no dilution. The First Amendment protects speech that might mock a trademark.

Its that simple.

In the “dodged a bullet” category, Carol got off lightly. Since the federal claims were dismissed, the court declined to exercise its jurisdiction over the state law claims. Had the court done so, the California Anti-SLAPP law would likely have resulted in a pretty nice award for Family Guy.

Giggity Giggity.

Carol Burnett v. Family Guy

This is a pretty funny lawsuit. Family Guy used Carol Burnett’s likeness (well, a cartoon depiction of her “Charwoman” character) in one of its episodes. The depiction shows Charwoman working as the janitor in an adult bookstore. She is shown mopping the floor next to a bin full of blow-up-dolls. She also apparently freaked out because Joe tells the other guys that when Carol tugged her ear at the end of her show, she was really saying good-night to her mom. Then Quagmire says “I wonder what she tugged to say good night to her dad! Oh! Giggity Giggitty!”

The suit seeks $6 million in damages for misappropriation of her name and likeness and violating her publicity rights.

The Smoking Gun has a longer article and the complaint. The video is posted there too, so at least go watch the video. Here is another article on it from E online.

This is not only interesting, but will give you a good preview of some of the right of publicity issues we will be covering later in the course.

What do you think? Should we send Carol Burnett’s lawyers your class notes from when we discussed Campbell v. Acuff Rose?

My opinion: Ms. Burnett’s lawsuit is doomed and it should be.

Why it is doomed:

Family Guy’s portrayal is protected by the doctrine of Fair Use. In the copyright context, this is well established by Campbell v. Acuff Rose. In the trademark context, it is somewhat less developed, but the principles are the same.

Why it should be:

This is a cornerstone of free expression. Whether you like Family Guy or not, the First Amendment protects your right to criticize, parody, and ridicule. Yes, even if the subject of that parody or ridicule does not particularly care for the result. Hustler Magazine v. Falwell, while not a copyright case, illustrates the principles at play. In that case, Jerry Falwell (a minister no less) was portrayed in a fake Campari ad as having had sex with his mother in an outhouse. Not surprisingly, this offended him. He sued for libel and intentional infliction of emotional distress. The Supreme Court held that the First Amendment protected this parody.

In the Burnett v. Family Guy case, Burnett is attempting to make an end run around the First Amendment values that Hustler v. Falwell protects.

Therefore, not only will her suit fail, but no matter how much you like Carol Burnett or hate Family Guy, that failure should be embraced as a victory for all of us, because a contrary result would be a terrible dimunition of all of our Constitutional rights.

I don’t just think that Family Guy wins. If I represented Family Guy, I’d have already sent a Rule 11 letter and a Rule 68 offer for a few pennies of nuisance money. I’m disgusted with any attorney who would sign this piece of trash litigation.

Oh, and for the record, I love Family Guy. I was ambivalent about Carol Burnett, but now I call her a no-class hack.