Archives for posts with tag: cartoons

This is an amazing case about fair use in copyright that involves the continually groundbreaking television cartoon “South Park”. The specific “South Park” episode in question “Canada On Strike” (Original Air Date: 04.02.2008) is available for full viewing at South Park Studios. The plot of the episode is satire of the 2007-2008 WGA strike and parody of some notable viral internet YouTube superstars.

Available on YouTube are the other videos referenced by the court: Plaintiff’s “WWITB“, “the Numa Numa Guy“, “the Sneezing Panda” and “the Afro Ninja.”

BROWNMARK FILMS, LLC, Plaintiff-Appellant,
COMEDY PARTNERS, et al., Defendants-Appellees.

No. 11-2620


682 F.3d 687

January 17, 2012, Argued
June 7, 2012, Decided


For BROWNMARK FILMS, LLC, Plaintiff – Appellant: Garet K. Galster, Attorney, RYAN KROMHOLZ & MANION, Milwaukee, WI; Caz McChrystal, Attorney, UNIVERSITY OF WISCONSIN, School of Business & Economics, Stevens Point, WI.



Before: Chief Judge Easterbrook, and Circuit Judges Cudahy and Hamilton

Opinion by: Judge Cudahy:

This is a case about how a court may dispose of a copyright infringement action based on the fair use affirmative defense while avoiding the burdens of discovery and trial. This case also poses the interesting question of whether the incorporation-by-reference doctrine applies to audio-visual works.

South Park is a popular animated television show intended for mature audiences. The show centers on the adventures of foul-mouthed fourth graders in the small town of South Park, Colorado. It is notorious for its distinct animation style and scatological humor. The show frequently provides commentary on current events and pop-culture through parody and satire. Previous episodes have dealt with the Florida Recount, the aftermath of hurricane Katrina and the phenomenon of celebrity sex tapes.

This case involves one episode entitled “Canada On Strike,” which satirized the 2007-2008 Writers’ Guild of America strike, inexplicably popular viral videos and the difficulty of monetizing Internet fame. In the episode, the nation of Canada goes on strike, demanding a share of the “Internet money” they believe is being generated by viral videos and other online content. The South Park Elementary school boys—Cartman, Stan, Kyle and Butters—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.”

This video is a parody of a real world viral video of the same name, featuring an adult male singing and dancing in tight pants. The two versions of WWITB are very similar. The South Park version recreates a large portion of the original version, using the same angles, framing, dance moves and visual elements. However, the South Park version stars Butters, a naïve nine-year old, in a variety of costumes drawing attention to his innocence: at various points he is dressed as a teddy bear, an astronaut and a daisy.

Brownmark Films, LLC (Brownmark), the copyright holder for the original WWITB video, filed suit against South Park Digital Studios (SPDS) and others for copyright infringement under the Copyright Act of 1976, 17 U.S.C. §§ 101 et seq. Brownmark’s complaint referenced both versions of WWITB, but it did not attach either work to the complaint. SPDS responded claiming the South Park version was clearly fair use under § 107, attached the two works and moved for dismissal for failure to state a claim under Fed. R. Civ. P. 12(b)(6). Brownmark did not address the substance of SPDS’s fair use defense, but instead argued that the court could not consider fair use on a 12(b)(6) motion to dismiss. The district court concluded that “[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”—in other words, fair use. The court granted SPDS’s motion to dismiss based on the fair use affirmative defense.

Brownmark appeals, arguing that an unpleaded affirmative defense of fair use is an improper basis for granting a motion to dismiss under Rule 12(b)(6), and that in any event, SPDS’s WWITB video is not a fair use of the original WWITB video. We hold that the district court could properly decide fair use on SPDS’s motion, and we affirm the district court’s finding of fair use.


we agree with the district court that this is an obvious case of fair use. When a defendant raises a fair use defense claiming his or her work is a parody, a court can often decide the merits of the claim without discovery or a trial. When the two works in this case are viewed side-by-side, 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.


Central to determining the purpose and character of a work is whether the new work merely supersedes the original work, or instead adds something new with a further purpose or of a different character. Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 579, 114 S. Ct. 1164, 127 L. Ed. 2d 500 (1994). The underlying purpose and character SPDS’s work was to comment on and critique the social phenomenon that is the “viral video.” Brownmark’s video exemplifies the “viral video.” Through one of the South Park characters—the innocent and naïve Butters—SPDS imitates viral video creation while lampooning one particularly well-known example of such a video. Moreover, the episode places Butters’ WWITB video alongside other YouTube hits including, among others, the Numa Numa Guy, the Sneezing Panda and the Afro Ninja. This kind of parodic use has obvious transformative value, which under § 107 is fair use. See § 107 (preamble); Campbell, 510 U.S. at 579 (“[P]arody, like other comment or criticism, may claim fair use under § 107.”).


SPDS’s use of the original WWITB was not insubstantial. Certainly, SPDS used the “heart” of the work; the work’s overall design and distinctive visual elements. Harper & Row, Publrs. v. Nation Enters., 471 U.S. 539, 565, 105 S. Ct. 2218, 85 L. Ed. 2d 588 (1985). But in the context of parody, “[c]opying does not become excessive in relation to parodic purpose merely because the portion taken was the original’s heart.” Campbell, 510 U.S. at 588. Parody therefore “presents a difficult case.” Id. Indeed, it may even seem as an anomaly under fair use that parody, a favored use, must use a substantial amount of qualitative and quantitative elements to create the intended allusion; there are few alternatives. But when parody achieves its intended aim, the amount taken becomes reasonable when the parody does not serve as a market substitute for the work. See id. (“[H]ow much more is reasonable will depend . . . on the extent to which the [work’s] overriding purpose and character is to parody the original or, in contrast, the likelihood that the parody may serve as a market substitute for the original.”). The South Park WWITB is clearly a parody and has not supplanted the original WWITB.

It follows from the third factor that SPDS’s parody cannot have an actionable effect on the potential market for or value of the original WWITB video under the fourth factor. 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 indicating that the South Park parody has cut into any real market (with real, non-Internet dollars) for derivative uses of the original WWITB video.

We agree with the district court’s well-reasoned and delightful opinion. For these reasons, the judgment of the district court is Affirmed.

That district court opinion by Judge Stadtmueller begins:

Federal lawsuits seldom touch on such riveting subjects and regard so many colorful parties as the present matter. The plaintiff, Brownmark Films, LLC (“Brown mark”), 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 994*994 graders in a small mountain town in Colorado. Id. ¶¶ 6-10. In the nearly fifteen years South Park has aired on Comedy Central, the four central characters have, amongst other adventures, battled space aliens,[1] hunted Osama Bin Ladin in the wake of 9/11 ala Elmer Fudd and Bugs Bunny,[2] and have, more recently, 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” 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.

This case is about the patent of a collapsible structure, specifically pop-up goals available for sale at Target. The producer of the goods is a United Arab Emerites based corporation called Ninja Corp.

Patent Category Corp.
Target Corp. and Franklin Sports, Inc.

CV 06-7311 CAS (CWx); 567 F. Supp. 2d 1171

Honorable Christina Snyder, July 16, 2008, decided:

Plaintiff Patent Category Corp. (“plaintiff” or “PCC”) owns the rights to U.S. Patent No. 6,266,904 (“the ‘904 patent”) issued on July 31, 2001, and U.S. Patent No. 6,604,537 (“the ‘537 patent”), issued on August 12, 2003. On November 15, 2006, plaintiff filed the instant suit against defendants Target Corp. (“Target”) and Franklin Sports, Inc. (“Franklin”) alleging that defendants are infringing plaintiff’s patents. Defendant Franklin is a distributor of at least fifteen models of collapsible, spring-form soccer goals (“Pop-Up Goals”), which plaintiff alleges infringe its patents. [FN1] Franklin purchased these accused products from The Ninja Corp. UAE (“Ninja“). 2 Id. Defendant Target Corp. (“Target”) sells Pop-Up Goals to consumers pursuant to an agreement with Franklin.

=== Footnotes ===
FN1 At the hearing held herein, the parties provided the Court with two examples of the accused products. Exhibit 1, the Dora the Explorer Pop-Up Goal, is accused of infringing the ‘537 patent only. Exhibit 2 is accused of infringing both the ‘537 patent and the ‘904 patent. The Court will refer to these exhibits in deciding the issue of infringement, or non-infringement as the case may be.2 On March 9, 2007, Ninja, a corporation organized under the laws of the United Arab Emirates, filed suit against plaintiff in the United States District Court for the Southern District of Texas, seeking a declaration that its products do not infringe the ‘904 and ‘537 patents, and that these patents are invalid. The action was then transferred to the United States District Court for the Central District of California in September 2007, and assigned to this Court as a case related to the present action.

dora the explorer pop up goal target

Recall the connection of multicultural cartoons associated to this Ninja word. Here it is a UAE corporation, sending children’s toy products for consumer distribution at Target. It is perhaps merely a coincidental connection but in the context of this rhetorical study of words, it is a notable that there is this seemingly unnecessary connection of the Dora character. Recall Teenage Mutant Ninja Turtles role in Federal Court ruling the general idea of multicultural cartoons was not protected by copyright.

This actual patent case about the Pop Up Goals remained unresolved at the end of the Courts opinion. The Court denied all the summary judgment motions because of factual issues about obviousness; whether there is a “continuous frame member” and the effect of a prior art on “flexible frame”.

Patent ‘537 is for “Collapsible structures” (US Patent 6,604,537)
Patent ‘904 is for “Collapsible structures supported on a pole ” (US Patent 6,266,904)

I dunno. They look obvious. Ha just kidding. I have no idea.

In this 1996 case Topps sued to protect its product, the Ring Pop, from competition. One of the reasons it won was because of the substantial advertising to non-sophisticated purchasers (kids), by means of cartoons. And so of course again, appearing somewhat unnecessarily in a Federal Court opinion, the Teenage Mutant Ninja Turtles.

ring pops

THE TOPPS COMPANY, INC., Plaintiff, – against – GERRIT J. VERBURG CO. and B.I.P. HOLLAND B.V., Defendants.
96 Civ. 7302 (RWS)
1996 U.S. Dist. LEXIS 18556; 41 U.S.P.Q.2D (BNA) 1412

December 12, 1996, Decided

The Court explains:

During the mid-1970’s, Topps developed the product for which it now seeks protection, the Ring Pop lollipop. It is comprised of a candy portion in the shape of a solitaire jewel, supported by a plastic base portion in the form of a stylized, or “play,” ring. The Ring Pop is held by inserting a finger through the ring, and the candy is then licked.

In 1975, Topps filed patent applications in the U.S. Patent Office on the “inventive” ornamental design for a diamond gemstone ring candy and was awarded two patents, Nos. Des. 242,646 and Des. 242,645 on December 7, 1976. These patents expired on December 7, 1990, but reference to them continues to appear on the Topps’ packaging.

On June 1, 1976 a trademark was registered for Ring Pop by Topps and on July 26, 1994 a trademark was issued consisting of “a candy portion in the configuration of a jewel mounted on a stylized ring.”

The Court continues explaining the high volume of sales and about

Topps’ advertisements on broadcast television during the past ten years of the Ring Pop emphasized the configuration of the product during children’s programming on well-known, popular programs, such as Tom & Jerry Cartoons, Teenage Mutant Ninja Turtles, and Power Rangers, shows specifically aimed at the children for whom the Ring Pop candies were conceived. The buyers of these products are not sophisticated purchasers.

Because the Court will rely on a likelihood of confusion analysis for the trademark infringement claims, the fact that the competing candy products “are expressly intended to be consumed by children” is important. The Court also notes other deceptive aspects of defendant’s packaging and that it “fails to meet the requirements set by regulations” of the US FDA as to nutritional labeling.

Though the competing product has been available in Hong Kong for as long or longer than the Topps Ring Pop product, and despite the expiration of Topps patent, trademark still protects the Ring Pop.

There is no inherent conflict between trademark rights under the Lanham Act and patent rights. Because the Lanham Act and the patent statute are both federal statutes, there is no preemption. A product can be both patentable and protected by trademark rights as long as the particular design protected does not have a utilitarian function.

Therefore, deciding the Ring Pop is not a functional design, the Court ordered a preliminary injunction. And in a subsequent motion decision, (April 28, 1997, 961 F.Supp. 88) the claims against defendant-manufacturer from Hong Kong were dismissed for lack of personal jurisdiction, leaving only the claim against the US distributor (which I assume was probably settled out of court..?).

Meanwhile, it seems a new relative of this case is coming back to the Courts. A false marketing claim was filed in May 2011, alleging Topps is violating marketing laws by continuing to list the patent numbers on Ring Pop packaging after the patents expired. See “Ring Pops: A Fun Way to Teach Your Kids about False Patent Marking” posted by Travis Burchart, Jun 2011 The complaint alleges that each Ring Pop sold violates marketing laws and if the Court agrees, Topps will be liable for a LOT of damages.

Finally, recall, this is not the first time we at NinjaLaw have seen the turtles mentioned unnecessarily and also not the first time mentioned with the Power Rangers. Last time we saw the Turtles team up with the Power Rangers in Federal Court, they served to exemplify the business model of cartoon merchandising. Here they help protect their sponsor Topps (baseball cards and candy and what else?), again implicating the susceptibility of kids to product marketing.

tmnt power rangers animation handshake

Previous NinjaLaw cases about the Ninja Turtles:

First mention of TMNT in Federal Courts
Sun Dun v Coca Cola – August 15, 1991

Teenage Mutant Ninja Turtles again – Retromutagen Ooze
Monarch v. Ritam – June 12, 1992

Ninja Turtles and Hollywood’s Horizontal Conspiracy
El Cajon v. AMC – October 23, 1992

First mention of Ninja Turtles in F.Ct. where it’s actually about them
Mirage Studios v. Weng – April 29, 1994

Burger King Kids Club with Mutant Ninja Turtles – multi-ethnic path to Glee and Celebrity Apprentice
CK Company v. Burger King – September 29, 1994

Ninja Turtles again, this time with FASA’s BattleTech, ExoSquad, RoboTech and Playmates
Fasa v. Playmates – June 19, 1995

Spam vs Spa’am with Splinter from TMNT and Pumbaa from Lion King
Hormel Foods v. Jim Henson Productions – September 22, 1995