The more transformative the new work, the less significance of other factors, like commercialism

Tamita Brown, Glen S. Chapman, and Jason T. Chapman (“Plaintiffs”) are musicians who created the song Fish Sticks n’ Tater Tots (the “Song). In 2017, a documentary film titled Burlesque: Heart of the Glitter Tribe (the “Film”) depicts a group of burlesque dancers in Portland, Oregon, one of whom incorporated the Song in a performance.

Plaintiffs wrote, arranged, and recorded the Song in 2011. The Song, created for children, describes a student’s journey from her classroom to her school cafeteria to eat fish sticks and tater tots for lunch. They were granted a U.S. Copyright Registration for the Song. On March 3, 2017, the Film was released on Defendants’ websites.

It chronicles the stories of a group of burlesque dancers in Portland, Oregon through interviews, backstage preparations, and on-stage performances. In one scene, a dancer, who goes by the stage name Babs Jamboree, performs an act in a food-themed show centered on the concept of a “reverse mermaid,” which, in her telling, is a creature with the head of a fish and the legs of a woman.

During the performance, Jamboree steps behind a sign labeled “hot oil” and emerges, having removed her fish head and changed into brown leggings to appear as though she has been transformed into fish sticks.

During the performance, eight seconds of the Song plays, consisting of the lyrics “fish sticks n’ tater tots” sung by Brown a total of five times. The performance continues for approximately 20 more seconds with different songs in the background. The Film is available on Defendants’ websites for customers to purchase, rent, or stream.

Plaintiffs filed lawsuit, accusing Defendants of directly infringing their right to publicly perform their work; directly infringing their right to reproduce their copyrighted work; and of contributory and vicarious copyright infringement, as well as inducement of copyright infringement, of their rights of reproduction and public performance. Defendants jointly filed the motion to dismiss the claims.

Defendants did not dispute the validity of Plaintiffs’ copyright but argue that their use of the Song is fair use, which is a complete defense to direct copyright infringement and, as a result, to any claims that are contingent on the direct infringement.

Fair Use Defense to Direct Copyright Infringement

Factor One: Purpose and Character

At the core of this inquiry is whether the secondary use is transformative — understood as communicating a “further purpose or different character, altering the first with new expression, meaning or message.” Thus, a transformative work is “one that serves a new and different function from the original work and is not a substitute for it.” Yet, a finding of commercial use is not dispositive, as “the more transformative the new work, the less significance of other factors, like commercialism.”

Plaintiffs argued that “when there is no alteration from the original there can be no fair use.” While Defendants do not alter the Song and reference its concept of “fish sticks,” the performance serves a “new and different function” from the Song.

Indeed, even Plaintiffs repeatedly note the differences in purpose and character between the performance and the Song: the Song was created “with children being the intended audience,” whereas the Film is “centered on strippers” and uses the Song “while a scantily clad woman… begins to perform a strip dance routine.”

These descriptions only confirm that Defendants’ use transforms the Song: Whereas the Song communicates a light-hearted children’s story about a student looking forward to lunch in the school cafeteria, the Film depicts decidedly mature themes that portray fish sticks not as a lunch food, but as a component of a “reverse mermaid.”

As to whether or not the Film has a commercial purpose, Defendants argued that their status as a commercial entity is irrelevant because the Film is transformative and is a documentary, and accordingly, offers criticism or commentary. The court was of opinion that the commercial nature of a work is not determinative of the first factor analysis.

Factor Two: Nature of the Copyrighted Work

The “second factor may be of limited usefulness where the creative work of art is being used for a transformative purpose.” Plaintiffs argued that the Song is intended for creative expression for public dissemination and that this factor weighs in their favor because Defendants have not provided a persuasive justification for their use. Notwithstanding Plaintiffs’ characterization of the Song, the transformative nature of the Film renders the second factor “of limited usefulness.” Thus, the court decided that the second factor is neutral.

Factor three: Amount and Substantiality

The factor “calls for thought not only about the quantity of the materials used, but about their quality and importance, too.” The quantitative inquiry considers whether the secondary use “employs more of the copyrighted work than is necessary,” whereas the qualitative inquiry asks whether the use was “excessive in relation to any valid purposes asserted under the first factor.”

If the use qualitatively amounts to “the heart” of the original work, although quantitatively minimal, the use could be considered substantial; however, use of “the heart” of the copyrighted work is not dispositive. Indeed, when the work is transformative, “the secondary use must be permitted to conjure up at least enough of the original to fulfill its transformative purpose.”

Quantitatively, the Film uses eight seconds of the Song’s 190 seconds, or 4.21 percent of the Song. Plaintiffs argued that the segment used in the Film represents the “heart” of the Song, noting that the cited passage is the chorus that gives the Song its name and is repeated throughout the Song.

Where the heart of the copyrighted work is at the core of the transformative character, use of the heart is permissible “to fulfill its transformative purpose.” Thus, use of the “heart” of a work is permissible when it is necessary to achieve its transformation. Because the portion of the Song used by Defendants is neither quantitively nor qualitatively excessive, the third factor weighs in favor of a finding of fair use.

Factor Four: Effect Upon the Potential Market or Value

The fourth factor considers “the effect of the secondary use upon the potential market for or value of the copyrighted work.” This factor is “undoubtedly the single most important element of fair use.” The critical inquiry is whether the secondary use “usurps” the market of the original, “where the infringer’s target audience and the nature of the infringing content is the same as the original.”

In such instances, the secondary use competes with the original “so as to deprive the rights holder of significant revenues because of the likelihood that potential purchasers may opt to acquire the copy in preference to the original.”

Plaintiffs repeatedly acknowledged that the Film targets a different audience from their own, noting that they “created the Song with children being the intended audience,” whereas the Film is “centered on strippers” and is used “during a scene in which a woman dances to the Song while removing her clothing.”

As the Film’s use is transformative of the original, the potential market – children or those who would acquire the Song on behalf of children – would not “opt to acquire the copy” of a limited eight seconds of the Song “in preference to the original.” Put another way, it is unlikely that parents would purchase copies of the film for their minor children so that they could hear the excerpt of the Song in the Film.

Plaintiffs also argue that if such use of the Song were to become widespread, that is, “without first obtaining a license from them,” Plaintiffs would potentially be precluded “from participating in at least two entire segments of the music industry,” which they identify as “music for an individual to at least appear to dance to, and as background music” in films.

Yet, “not every effect on potential licensing revenues enters the analysis under the fourth factor,” and a copyright holder “has no right to demand that users take a license unless the use that would be made is one that would otherwise infringe an exclusive right.” Moreover, only impacts on “potential licensing revenues for traditional, reasonable, or likely to be developed markets should be legally cognizable.”

Here, it is unreasonable to consider the potential uses named by Plaintiffs, which were unalleged in their complaint and only provided in response to Defendants’ motion. Because Defendants met their burden by showing that the Film’s secondary use would not usurp that of the original, other similarly hypothetical uses would equally not deprive them of prospective audiences. Thus, the fourth factor weighs in favor of Defendants.

Because the first, third, and fourth factors weigh in favor of Defendants, and the second factor is merely neutral, their alleged use of the Song is fair. Accordingly, Plaintiffs’ claims of direct copyright infringement by public performance and reproduction fail to meet the pleading standard.

Contributory, Vicarious, and Inducement of Copyright Infringement

Plaintiffs also asserted claims for inducement of copyright infringement, contributory copyright infringement, and vicarious copyright infringement in violation of their exclusive rights of reproduction and public performance.

However, there can be no contributory, vicarious, or inducement of infringement where no direct infringement exists. Because Defendants have successfully invoked the doctrine of fair use, no underlying direct infringement exists.

For the reasons stated above, the Defendants’ motion to dismiss and for judgement on the pleadings was GRANTED with prejudice.