FAIR USE STILL HAS TEETH -- SMITHDEHN WINS TIGER KING CASE FOR NETFLIX, AS COURT CITES WARHOL DECISION IN GRANTING DISMISSALback to list
Despite some gloom and doom about the future of fair use after the Supreme Court’s decision in Andy Warhol Foundation for the Visual Arts Inc. v. Goldsmith last May, it seems that for documentary film makers at least, fair use is in roaring good health.
Back in March 2020, Molly Cramer of Somerset Pennsylvania designed a series of tattoos to drum up interest in her tattoo studio and to make up for lost income during Covid. She started selling online gift certificates to buyers, who could then vote on a which one of her designs she would eventually tattoo on her husband's leg. Unsurprisingly, given the popularity of Tiger King, her tattoo of "Joe Exotic" garnered the most votes.
When the opening sequence of season two included 2.2 seconds of a still of Cramer’s Tiger King tattoo, she sued Netflix and the producers for copyright infringement. SmithDehn was chosen as lead defense counsel for the defendants.
Cramer originally demanded ten million dollars. Following Netflix’s refusal to entertain this demand, she revised her ask to $50,000, which was still many times what a normal license fee would cost. In response, the defendants dug in. We had informed Ms. Cramer's counsel that our clients saw “no reason why any payment should be made” and added that if Ms. Cramer decided to pursue the matter through the courts, we intended to “move for dismissal or summary judgment at the earliest date possible and seek attorney’s fees and costs from Ms. Cramer.” We then moved to dismiss on the pleadings.
While the Cramer case was ongoing, the US Supreme Court rendered its decision in Warhol, finding that the Warhol Foundation had infringed on photographer Lynn Goldsmith's copyright by licensing a silkscreen print-based on Goldsmith’s photograph of Prince to Vanity Fair. It seemed to some like an anti-fair use wave was in the ascendancy. Cramer's counsel told us that because of Warhol, we were likely to lose.
Based in part on the Warhol decision, Cramer argued that Netflix couldn't claim that their use was transformative, because their decision to feature the tattoo had the same commercial purpose as her design, namely, to capitalize on the popularity of Joe Exotic.
The defendants, however, submitted their own analysis of the Warhol decision and essentially pointed out that a documentary series and a tattoo have two fundamentally different purposes. If consumers want a tattoo, they have a qualified individual punch hundreds of tiny ink-filled holes in their body. If they watch a documentary, they are probably assuming they won't have a permanent body marking by the end of the show. Equally, no-one wanting one of Cramer’s tattoos and browsing her catalogue of body art would ever sensibly decide that instead of choosing a tattoo from her images, they will instead watch a 60-minute documentary episode about exotic animal mistreatment and the bizarre people associated with this trade, just because they might see one of Cramer’s works appear in the bottom section of an eight-way split screen for 2.2 seconds. There is simply no commercial competition between the two uses. This divergence allowed the transformative nature of the use to rule.
Netflix made the decision to file a motion to dismiss on the grounds of failure to state a claim, even though most fair use victories are granted only after discovery. We requested that the Court take judicial notice of the episode featuring the tattoo. As the plaintiff already had included all her facts and arguments related to the tattoo, the Court then had all the information it needed to rule on the motion. On September 18, U.S. District Judge Stephanie L. Haines found that the plaintiff had failed to demonstrate a claim and accordingly dismissed Cramer’s complaint with prejudice. Judge Haines stated that the Warhol decision supported the conclusion that Netflix's use of the tattoo image was transformative, saying the defendants used the image of the tattoo "for a fundamentally different purpose than plaintiff originally intended."
"Plaintiff admittedly created her tattoo for the purpose of driving income to her business; Defendants' use of the image of the tattoo for 3 seconds as part of the 8-way split screen montage was for the purpose of showing the public reaction to Joe Exotic after season one of Tiger King." The Court continued: "Defendants' use of the image of the tattoo is independent from plaintiff's original purpose, and defendants' use neither supersedes the object of the tattoo nor serves as a substitute."
"The image of the tattoo appears after a minute-plus-long narrative that takes the viewer back in time to the world's plunge into the pandemic, and the subsequent cultural popularity of defendants' season one of the Tiger King series," said the District Court. “Plaintiff and Defendant have wholly unrelated products and marketing channels when compared to the use at issue in Warhol. Defendants transformative use of the tattoo in no way usurps the market for the original.”
This decision echoes the comments of Justice Gorsuch in the Warhol case. In his concurring opinion, he stated that the Supreme Court’s decision related only to the very fact specific situation involving the use of an image in direct competition with the original, and he said that if the case instead had been about Warhol’s use of the image in a "for-profit book commenting on twentieth century art," fair use could apply. The decision in Cramer v. Netflix bolsters this line of fair use analysis. It clarifies that the degree of commercial competition between the original and the new work needs to be much more than a passing concern with revenue to unseat a solid transformativeness argument.
The case is Molly Cramer v. Netflix Inc. et al., case number 3:22-cv-00131, in the U.S. District Court for the Western District of Pennsylvania.