Fair Use & Tater Tots

Written by Timothy M. Carter

In 2011, Plaintiffs Tamita Brown, Glen S. Chapman, and Jason T. Chapman composed and recorded the children’s song Fish Sticks n’ Tater Tots (the “Song”), which details a student’s journey from her classroom to her school cafeteria to eat fish sticks and tater tots for lunch.[1]  Six years later, the documentary film Burlesque: Heart of the Glitter Tribe (the “Film”) — which chronicles the stories of a group of burlesque dancers in Portland, Oregon — was released for streaming on Amazon, Netflix, and Apple.  In the Film, a dancer named Babs Jamboree performs a food-themed routine centered on the concept of a “reverse mermaid,” which consists of a creature with the head of a fish and the legs of a woman.  During the performance, Jamboree — previously wearing a fish head — steps behind a sign labeled “hot oil” and emerges, having changed into brown leggings and removed the fish head, a transformation that makes it appear as though she has been changed into fish sticks.  In total, approximately eight seconds of the Song play in the background of Jamboree’s performance, consisting of the lyrics “fish sticks n’ tater tots” sung by Brown a total of five times.  The resulting lawsuit, Brown v. Netflix, Inc., No. 19 CIV. 1507 (ER), 2020 WL 2749571, at *1 (S.D.N.Y. May 27, 2020), concerns the scope of fair use of the Song in the Film and the potential liability of these streaming services.

Decidedly unhappy about the use of their Song in the Film, the Plaintiffs filed suit for direct and secondary copyright infringement against Amazon, Netflix, and Apple.  Brown, 2020 WL 2749571, at *1.  Plaintiffs asserted two claims of direct copyright infringement — by unauthorized public performance under 17 U.S.C. § 106(4), and by unauthorized reproduction under 17 U.S.C. § 106(1).  Plaintiffs also asserted three secondary copyright infringement claims — inducement of copyright infringement, contributory copyright infringement, and vicarious copyright infringement in violation of their public performance and reproduction rights.  Id

In response, Amazon, Netflix, and Apple, arguing that their use of the Song in the Film was fair use under 17 U.S.C § 107, moved under Federal Rule 12(b)(6) to dismiss Plaintiffs’ claims.  On May 27, 2020, Judge Ramos of the United States District Court for the Southern District of New York granted the motion to dismiss, agreeing with Defendants that the Film’s incorporation of the Song constituted fair use.  Id. at *7.  

Initially, the Plaintiffs argued that any fair use determination was premature at the motion to dismiss stage.  The Court disagreed, finding that courts in the Second Circuit “have consistently considered motions to dismiss . . . regarding copyright infringement claims.”  See, e.g., TCA Television Corp. v. McCollum, 839 F.3d 168, 178 (2d Cir. 2016) (“[T]his court has acknowledged the possibility of fair use being so clearly established by a complaint as to support dismissal of a copyright infringement claim.”). 

Next, in analyzing whether the Defendants’ use of the Song in the Film was fair, the Court turned to the factors outlined in § 107: (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (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 copyrighted work.  17 U.S.C § 107.

The Court explained that the first statutory factor, the “purpose and character” of the use, essentially asks whether the subsequent use is transformative or communicates a “further purpose or different character, altering the first with new expression, meaning or message.”  Brown, 2020 WL 2749571, at *3 (quoting Authors Guild, Inc. v. HathiTrust, 755 F.3d 87, 96 (2d Cir. 2014) (internal citation omitted).  Here, the Plaintiffs argued that Defendants’ use of the Song could not be found to be transformative because it was “unaltered” and because the subject of both works is “fish sticks[.]”  Id. at *4.  The Court disagreed, finding that the first factor weighed in favor of fair use and noting that, “raw material, transformed in the creation of new information, new aesthetics, new insights and understandings . . . is the very type of activity” contemplated by the fair use doctrine.  Id. at *3 (quoting Blanch v. Koons, 467 F.3d 244, 252 (2d Cir. 2006)).  The Court found that the performance served a “new and different function” from the Song.  Id. at *4.

The Court noted that the second factor rarely plays a significant role in the determination of a fair use dispute, and found this factor’s application to be neutral.  Id. at *4-5

As to the third statutory factor, which considers the “amount and substantiality of the portion used in relation to the copyrighted work as a whole,” 17 U.S.C § 107, the Plaintiffs argued that while quantitatively, the Film only used eight seconds of the Song’s 190 seconds, the segment used is repeated three times in the Song, and the segment used in the Film represents the “heart” of the Song.  Brown, 2020 WL 2749571, at *5.  The Court disagreed, holding that 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.  Id.  Thus, use of the “heart” of the Song was permissible where – as here – it was necessary to achieve its transformation.  Id.  According to the Court: “[s]uch is the case with Defendants’ use — the dance depicted in the Film requires the phrase ‘fish sticks and tater tots’ to communicate the ‘reverse mermaid’ transformation.”  Id.  Thus, the Court found that the third factor weighs in favor of fair use.  Id. at *6. 

The fourth statutory factor considers “the effect of the [secondary] use upon the potential market for or value of the copyrighted work.”  17 U.S.C. § 107(4).  This factor considers “not only the . . . market harm caused by the particular actions of the alleged infringer, but also the market harm that would result from ‘unrestricted and widespread conduct of the [same] sort.”  Brown, 2020 WL 2749571, at *6 (quoting Fox News Network, LLC v. Tveyes, Inc., 883 F.3d 169, 179 (2d Cir. 2018)) (internal quotation marks omitted).  

Interestingly, not only did the Court find that this factor favored the Defendants, but that it weighed “decisively” in their favor.  Id. at *6.  In so doing, the Court noted that the Plaintiffs themselves “repeatedly acknowledge that the Film targets a different audience from their own” and that “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.”  In other words, 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.”  Id.  The Plaintiffs also argued that if such unlicensed use of the Song were to become widespread the Plaintiffs would potentially be precluded “from participating in . . . entire segments of the music industry.”  This too, the Court found unpersuasive, noting that 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.”  Id

In sum, finding that the first, third, and fourth factors weighed in favor of Defendants, and the second factor was merely neutral, the Court held the Defendants use of the Song to be fair within the meaning of 17 U.S.C § 107.  Id. at *7.  Accordingly, the Court dismissed with prejudice the Plaintiffs’ claims of direct copyright infringement.  As for the Plaintiffs’ claims for inducement of copyright infringement, contributory copyright infringement, and vicarious copyright infringement, the Court dismissed these as well, holding that there can be no contributory, vicarious, or inducement of infringement where no direct infringement exists.  Id.

Brown v. Netflix, Inc., No. 19 CIV. 1507 (ER), (S.D.N.Y. May 27, 2020).

[1] Plaintiffs were granted a U.S. Copyright Registration for the Song on May 1, 2012. Compl.¶ 16.

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