Brownmark v. Comedy Partners: Court Finds Fair Use Without Allowing Plaintiff Any Discovery


Faced with a copyright infringement suit where your defense is fair use? Chances are you wouldn’t consider making a motion to dismiss at the outset. Instead, you will most likely contemplate  extensive discovery and an expensive summary judgment motion. Well, think again. The 7th Circuit in Brownmark_Films_LLC_v_Comedy latest recently affirmed the district court’s grant of a motion to dismiss a copyright infringement suit based solely on a side-by-side comparison of the videos in question before the parties had engaged in any discovery.

The appellate court in tossing out the case notably took a swipe at “copyright trolls” whose “baseless shakedowns” incur “ruinous discovery.” Brownmark gives defendants with a fair use defense a useful road map for nipping litigation in the bud.


Brownmark is a co-owner of a music video entitled What What (in the Butt) (“WWITB”) that features an adult male dancing and repeatedly singing the same cryptic phrase, “I said what what, in the butt” and “you want to do it in my but, in my but.” Its video is here.



South Park is an animated sitcom on Comedy Central that centers on the happenings of foul-mouthed fourth graders. South Park decided to parody WWITB to make fun of the popularity of viral videos on YouTube with little social value. On one South Park episode, entitled Canada on Strike, a character named Butters Stotch, dressed successively as a teddy bear, astronaut and a daisy, sings the central lines of the bawdy WWITB video. The South Park video also uses the same angles, framing, dance moves and visual elements as the Brownmark original. The South Park video is here.


The District Court Grants the Motion to Dismiss

Brownmark sued South Park and others for copyright infringement. The complaint referred to both versions of the WWITB video but attached neither. South Park moved to dismiss under Federal Rule of Civil Procedure 12(b)(6) claiming fair use and attaching both works to its motion. Brownmark responded that the district court could not consider fair use on a dismissal motion.

The district court disagreed. It found fair use, stating “[o]ne only needs to take a fleeting glance at the South Park episode” to determine that its use of the WWITB video is meant “to lampoon the recent craze in our society of watching video clips on the internet . . . of rather low artistic sophistication and quality.” The opinion is here.

On appeal, Brownmark again argued that fair use is a fact-based defense which therefore cannot be decided on a 12(b)(6) motion. The 7th Circuit expressed sympathy for this argument noting that affirmative defenses “typically turn on facts not before the court at that [initial] stage of the proceedings.”

The Appellate Court Affirms Treating the Motion as one for Summary Judgment

But here the appellate court felt comfortable deciding fair use. That’s because the complaint alleged defendants had infringed only one South Park episode and did not further asset that defendants had made other infringing uses of plaintiff’s work.  Thus the circuit court had before it all it needed to decide the issue: “the [videos of the] original version of WWITB and the episode at issue.”

The 7th Circuit was, however, concerned that the district court had used a motion to dismiss to end the case. Defendants argued that the incorporation-by-reference doctrine permitted them to submit the videos to support their motion without turning the motion into one for summary judgment. Although the appellate court stated it made “good sense” to apply that incorporation doctrine beyond documents to videos or television programs, no other appellate court had reached that issue. Under those circumstances, the appellate court felt no need to enlarge “the role” of a 12(b)(6) motion when the court could just as easily “treat” the motion to dismiss as one for summary judgment.

Plaintiff argued that, if it were now faced with a summary judgment motion, it would be disadvantaged by a lack of opportunity for discovery. It stated that, when the case was before the district court on a motion to dismiss, it could not have asked for discovery. The appellate court responded, “that is hard to believe. The caption on a motion does not have some independent authority that litigants or courts must respect.”

The appellate court found no disadvantage because it was “confident” that the district court would have “refused to grant” the types of discovery that plaintiff now claimed it would have sought below. The 7th Circuit signaled the district courts they “need not, and indeed ought not, allow discovery when it is clear that the case turns on facts already in evidence.” The circuit court, mindful that “the expense of discovery” “looms over this suit,” added that plaintiff’s belated “broad discovery request, surely entailing expensive e-discovery of emails or other internal communications, gives Brownmark the appearance of a ‘copyright troll.’”

A Clear Case of Fair Use

Turning to the merits, the court found this an “obvious case of fair use,” stating that the “South Park episode is clearly a parody of the original WWITB video, providing commentary on the ridiculousness of the original video and the viral nature of certain YouTube videos.”

Some Lessons Going Forward

This case is a welcome judicial response to meritless copyright infringement litigation. When the defendant can demonstrate fair use through the court’s side-by-side comparison of the two works at issue, defendant should resist discovery and move either by motion to dismiss or for summary judgment attaching the works to its motion papers. The court, with all the facts needed for resolution before it, may follow Brownmark and make a determination. An early dismissal of a copyright infringement claim on fair use grounds has a public benefit as well. It will avoid choking protected, parodic speech with what Brownmark refers to as “ruinous discovery.”

What are your strategies for resolving fair use controversies? What’s your reactions to this opinion? Please share them below.

Want more on fair use. See my article entitled Is This Legal Alchemy? When A Copy of Another’s Work May Become Transformative For Fair Use Purposes. And for an explanation when a parody may be protected by fair use click here.




2 Responses to “Brownmark v. Comedy Partners: Court Finds Fair Use Without Allowing Plaintiff Any Discovery”

  1. Andrew — I wholeheartedly agree with your conclusion that this case is a “welcome judicial response to meritless copyright infringement litigation.” It is time that courts recognize the strategies of content owners that push the accused to unreasonable settlement payments because the litigation costs will be so much worse. But I wonder whether savvy plaintiffs will learn from this case that they should expand the boundaries of their complaints in a way that will avoid a 12(b)(6) or even a 12(c) ruling, and force defendants into expensive discovery. I must be wrong, though — how could I possibly ascribe such evil motives to typical plaintiffs’ counsel?

  2. Andrew Berger says:

    Good question Vincent; I assume Brownmark sued because South Park did not use the licensed work; instead South Park used what Brownmark considered an unauthorized derivative work which the court instead determined was a protected parody.

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