Defendants collectively are responsible for directing, producing, financing, marketing, and distributing the film, Catfish. (Defs.' Statement of Uncontroverted Facts (“SUF”) at 15. [Doc. # 48–2].) Marketed as a “reality thriller” (see Joost Decl., Ex. A (“DVD”)) and filmed in a documentary style, Catfish follows the story of Yaniv Schulman, a 24–year–old photographer who lives in New York City, as he develops an online friendship with Abby, an eight-year-old girl in Ishpeming, Michigan, her mother Angela, and several of their family and friends, including—and especially—Abby's 19–year–old half-sister, Megan. The story is filmed by Yaniv's brother, Ariel, and their friend Henry Joost.

2. The Four Allegedly Infringing Uses

a. The First Use

In a pivotal scene—containing the copyrighted material at issue—Yaniv, Ariel, and Henry are in Vail, Colorado to make a dance film. The three of them are in their hotel room. Yaniv—who is instant messaging with Megan—announces that “Megan is taking requests, and she'll record a song right now.” (Id. at 19:05–19:08.) Yaniv asks Megan to record “Tennessee Stud.” (Id. at 19:17–19:24.) She emails Yaniv an mp3 file containing an acoustic recording of the song, which Yaniv plays while he, Ariel, and Henry discuss how impressed they are with her talent. (Id. at 19:25–20:19.)

Yaniv explains to Ariel that on Angela's Facebook page she has posted digital copies of a number of songs purportedly recorded by her and Megan. (Id. at 20:20–20:29.) Yaniv clicks on a song entitled “Downhill,” and the Acoustic Recording is heard playing from his computer for approximately 19 seconds—from the beginning of the song until partway through the third line of the introductory verse (the “first use”).³ (Id. at 20:30–20:48.) While the music is playing in the background, Ariel and Henry tell Yaniv to let Megan know how much they love her songs, and Yaniv is shown typing this into an instant message. (Id. at 20:35–20:47.)

b. The Second Use

Ariel begins singing along with the music before it cuts out, continuing for a few seconds afterward, for a total of approximately 16 seconds (the “second use”). (Id. at 20:47–21:02.)

c. The Third Use

Ariel is shown on his laptop entering a Google search of the phrase “ ‘its [sic] all downhill from here' song.” (Id. at 20:56–21:08.) The film immediately cuts to a shot of an audio player playing a track entitled “All Downhill From Here / BY Amy Kuney [featuring] Tim Myers / ON

[166 F.Supp.3d 1018]

One Tree Hill.” The Studio Recording is heard playing from Ariel's computer.

Yaniv says, “Huh. Sort of sounds like it. A little different though.” (Id. at 21:08–21:17.) After approximately eight seconds, Yaniv and Ariel are shown discussing the track:

Yaniv: It's really similar though.

Ariel: It's not as good. Angela's is better.

Yaniv: Yes.

(Id. at 21:17–21:36.) At this point, the music ends. The entire clip of the Studio Recording lasts approximately 28 seconds—from the beginning of the song through the end of the introductory verse (the “third use”).

Yaniv and Ariel continue their conversation:

Ariel: All right. Listen, you can't hold it against her. She didn't say, “Hey, I wrote this song.”

Yaniv: It doesn't matter, it's just still—yeah.

Ariel: Yeah. And still, her voice is ten times better than this girl. And she's clearly an artist because that came from a deep—from deep expression and feeling.

Yaniv: And she found a song, kind of obscure.

Ariel: She covered a song, yeah. People make careers out of that.

Yaniv: Yeah.

(Id. at 21:37–21:58.)

d. The Fourth Use

The film then cuts to a shot of Ariel's computer playing a track entitled “Amy Kuney ‘All Downhill From Here' (Original) from One Tree Hill.” The Acoustic Recording is heard playing from the computer.

Yaniv: You're just playing this off Facebook.

Ariel: No, I'm not, I'm playing this off of ... look. [He points to the track listing.⁴] Amy Kuney.

The camera turns to focus on Yaniv and Ariel, who are listening intently to the audio track:

Yaniv: This is it.

Henry: I heard, I mean ... I have food in my mouth.

Yaniv: I mean, is this not the exact same recording?

Ariel: I'm not sure. Sounds a little different.

Henry: This is definitely it.

Yaniv: Definitely it.

(Id. at 21:58–22:38.) The music ends at that point. The 41–second clip starts just before the fourth line of the introductory verse and ends after the fourth line of the chorus (the “fourth use”).

Yaniv, now realizing that he has been deceived, becomes agitated:

Yaniv: They posted it online.

Ariel: Uh huh.

Yaniv: She posted somebody else's music.

Ariel: Did she post it—

Yaniv: Now that doesn't mean she doesn't just put up a song that she likes—fine. But it's called—the artists—“Mom and Megan,” and I complimented her and she said thanks for listening to me cough the dust off my vocal cords.... She responded to a number of compliments that I gave her about the song and how much I liked it and it's not even her singing. It's just a recording of somebody else's.

[166 F.Supp.3d 1019]

Ariel: Are we sure about that?

Yaniv: Yes.

(Id. at 22:39–23:18.)

Yaniv then replays the track of “Tennessee Stud” that Megan sent him and claimed to have recorded herself. He expresses doubt that it's actually Megan performing and thinks it may be “that other girl,” i.e., Amy Kuney. (Id. at 23:19–23:55.) Ariel finds and plays a YouTube clip of Suzanna Choffel performing “Tennessee Stud” on Valentine's Day 2008, which Yaniv immediately recognizes is identical to “Megan's” version. (Id. at 23:56–24:33.)

Now convinced that Megan and her family “are complete psychopaths” (id. at 24:45–24:48), Yaniv tells Ariel and Henry that he wants nothing more to do with them (id. at 25:10–25:22). Ariel and Henry convince him to travel to Michigan to confront Megan and Angela and uncover the truth. (Id. at 32:30–32:57.)

The remainder of the film chronicles this journey and its fallout. In Michigan, Yaniv learns that Megan does not exist. She and most of Abby's other friends and family were concocted and impersonated by Angela.

3. Marketing and Distribution of Catfish

Defendants marketed and distributed Catfish without Plaintiff's permission to use Amy Kuney's musical works.

The current Copyright Act merely codified the existing doctrine as it had developed over time. See H.R.Rep. No. 94–1476, at 66, reprinted in 1976 U.S.C.C.A.N. 5659, 5680 (1976) (“Section 107 is intended to restate the present judicial doctrine of fair use, not to change, narrow, or enlarge it in any way.”). The statute does not directly define “fair use,” which is at heart an “equitable rule of reason.” Dr. Seuss Enters., 109 F.3d at 1399 (quoting Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 448, 104 S.Ct. 774, 78 L.Ed.2d 574 (1984)). Instead, the Act guides courts determining whether a particular use is fair in two ways. First, it lists several nonexclusive examples of fair use: “reproduction ... for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research.” 17 U.S.C. § 107. The Act also provides a structure for the analysis by setting forth four factors that courts should consider:

(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.

Id.

The fair use analysis is flexible, and a court may consider additional factors on a case-by-case basis. Leadsinger, Inc. v. BMG Music Publ'g, 512 F.3d 522, 529 (9th Cir.2008) (citing Campbell v. Acuff–Rose Music, Inc., 510 U.S. 569, 577, 114 S.Ct. 1164, 127 L.Ed.2d 500 (1994) ). These factors are not considered in isolation but instead are weighed together “in light of the copyright law's purpose ‘to promote the progress of science and art by protecting artistic and scientific works while encouraging the development and evolution of new works.' ” Id. (quoting Mattel, 353 F.3d at 799 ). Because fair use is an affirmative defense, the defendant bears the burden of proof. Monge, 688 F.3d at 1170.

§ 107. Limitations on exclusive rights: Fair use

Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include-

(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.

The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors.

The first fair use factor requires consideration of the purpose and

[166 F.Supp.3d 1022]

character of the allegedly infringing use. This inquiry's “central purpose” is to determine whether and to what extent the challenged work is “transformative.” Perfect 10, Inc. v. Amazon.com, Inc. , 487 F.3d 701, 720 (9th Cir.2007) (quoting Campbell, 510 U.S. at 579, 114 S.Ct. 1164 ). A work is “transformative” when it “adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message.” Campbell, 510 U.S. at 579, 114 S.Ct. 1164. If, on the other hand, the work merely “supersede[s] the use of the original,” then “the use is likely not a fair use.” Perfect 10 , 487 F.3d at 720 (quoting Harper & Row Publishers, Inc. v. Nation Enters. , 471 U.S. 539, 550–51, 105 S.Ct. 2218, 85 L.Ed.2d 588 (1985) ) (quotation marks omitted). Because transformative works “lie at the heart of the fair use doctrine's guarantee of breathing space within the confines of copyright, ... the more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use.” Campbell, 510 U.S. at 579, 114 S.Ct. 1164 (internal citation omitted).

1. Transformative Use

Defendants' use of Plaintiff's song is highly transformative. It both adds new expressive content and uses Amy Kuney's original expression for an entirely different purpose.

a. New Expressive Content

When “All Downhill from Here” is played in Catfish, it comprises only part of the scene. In addition, the scene includes video footage of Yaniv, Ariel, and Henry, their room, and Ariel's laptop screen and keyboard. It also includes original dialogue and other sounds. As Yaniv plays the track of the Acoustic Recording from Angela's Facebook page, Ariel indicates his critical approval of the song by commenting “[t]his one's sick.”⁵ (DVD at 20:29–20:31.) When Ariel plays the Studio Recording after finding it on the Internet, Yaniv and Ariel comment on its similarity to the Studio Recording, but Ariel opines that the Acoustic Recording—which he believes was made by Angela and Megan—“is better.” (DVD at 21:32–21:37.) When Ariel finds and plays a copy of the Acoustic Recording attributed to Amy Kuney, he and Yaniv listen critically and discuss whether it is the same recording that Angela posted on her Facebook page. Most of their dialogue occurs while the music is playing.

This critical commentary and analysis falls squarely within the category of new expressive content that transforms the copyrighted expression into something different. When a defendant uses the plaintiff's copyrighted material for the purpose of “criticism and review,” the defendant may copy “substantial passages ... because the review supplements, but does not replace, the function of the work being reviewed.” 4 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 13.05[B][6] (rev. ed.2010). “Criticism and review” are construed broadly and include comment on the copyrighted work to correct “unfair, inaccurate, or derogatory information.”⁶

[166 F.Supp.3d 1023]

H.R.Rep. No. 94–1476, at 73, reprinted in 1976 U.S.C.C.A.N. 5659, 5687 (1976).

That Yaniv's and Ariel's opinions were expressed using words such as “sick,” “better,” and “worse” rather than more erudite language does not diminish their value or entitlement to protection. Cf. Campbell, 510 U.S. at 582, 114 S.Ct. 1164 (“The threshold question when fair use is raised in defense of parody is whether a parodic character may reasonably be perceived. Whether, going beyond that, parody is in good taste or bad does not and should not matter to fair use.” (footnote omitted)). Nor is it relevant that their commentary was presented as part of a work of entertainment. See William F. Patry, Patry on Fair Use § 3:8 (2012) (“[M]uch comment and criticism are made in an entertainment context.” (citing Wade Williams Distribution, Inc. v. ABC, No. 00 Civ. 5002(LMM), 2005 WL 774275, at *9, 2005 U.S. Dist. LEXIS 5730 (S.D.N.Y. Apr. 5, 2005) ; Hofheinz v. Discovery Commc'ns, Inc., No. 00 CIV. 3802(HB), 2001 WL 1111970, at *4, 2001 U.S. Dist. LEXIS 14752 (S.D.N.Y. Sept. 20, 2001) )).

b. Different Purpose

Defendants' use of Plaintiff's work in Catfish also serves a completely different purpose than the original. This consideration is important and on more than one occasion has led the Ninth Circuit to sanction as fair the wholesale copying of an entire work. See, e.g., Perfect 10, 487 F.3d at 721–22 (“[E]ven making an exact copy of a work may be transformative so long as the copy serves a different function than the original work.” (citing Kelly v. Arriba Soft Corp., 336 F.3d 811, 818–19 (9th Cir.2003) )).

The purpose of “All Downhill from Here” is to entertain the listener (Opp'n at 17) through Amy Kuney's music and lyrics, which describe a person who has withdrawn from the world after a failed relationship. The purpose of including Kuney's song in Catfish was not to entertain using Kuney's music and lyrics or even to evoke a similar story line. Rather, the purpose was to show that Angela was lying to Yaniv—to show that Angela and, by extension, “Megan” were not the people who Angela presented them to be. Defendants used “All Downhill from Here” to document this pivotal moment. The song was heard on the audio file that Megan sent Yaniv and claimed to have made with Angela. A slightly different version was found on the Internet, sung by someone with a similar voice named Amy Kuney. Then another version by Kuney was found on the Internet that sounded exactly like the one Megan had sent. It was only by critically comparing the song that Megan and Angela claimed to have made with the known Kuney recordings that Yaniv determined that Megan had falsely represented the song as her own. At the same time, the filmmakers were inviting the audience to make the same comparison to reach its own conclusion. This critical analysis is entirely different than the song's original entertainment purpose. Cf. A.V. ex rel. Vanderhye v. iParadigms, LLC, 562 F.3d 630, 638–40 (4th Cir.2009) (finding transformative the defendant's copying and storing of student papers for the purpose of comparing them against future papers to uncover plagiarism).

2. Commercial Use

Another consideration in evaluating the purpose and character of the use is that Catfish was a commercial rather than non-profit endeavor. See 17 U.S.C. § 107(1); Campbell, 510 U.S. at 584, 114 S.Ct. 1164. While this fact in isolation tends to weigh against a finding of fair use, Defendants' highly transformative use of Kuney's song minimizes its significance. See Campbell, 510 U.S. at 579, 584–85, 114 S.Ct. 1164; see also SOFA Entm't, 709 F.3d at 1279 (finding the fact that the defendant's work was a commercial production to be “of little significance” in the first fair use factor because the defendant's use of the plaintiff's copyrighted work was transformative). On balance, the Court finds that the first fair use factor strongly favors Defendants.

B. Nature of the Copyrighted Work

The second statutory factor, the nature of the copyrighted work, “calls for recognition that some works are closer to the core of intended copyright protection than others, with the consequence that fair use is more difficult to establish when the former works are copied.” Id. at 586, 114 S.Ct. 1164. Kuney's “original's creative expression for public dissemination” easily fits “within the core of the copyright's protective purposes.” Id. Nonetheless, Catfish also lies within this protected core for reasons that have nothing to do with Defendants' use of Kuney's song. Moreover, filmmakers recording real-life events “almost invariably copy publicly known, expressive works.” Id.; cf., e.g., Italian Book Corp. v. Am. Broad. Cos., Inc., 458 F.Supp. 65 (S.D.N.Y.1978) (finding fair use where news footage of parade incidentally recorded performance of the plaintiff's song). Therefore, this factor does not greatly assist the Court “in separating the fair use sheep from the infringing goats.” Campbell, 510 U.S. at 586, 114 S.Ct. 1164.

C. Amount and Substantiality of the Portion Used Relative to the Copyrighted Work as a Whole

The third statutory factor “asks whether ‘the amount and substantiality of the portion used in relation to the copyrighted work as a whole' ... are reasonable in relation to the purpose of the copying.” Id. at 586, 114 S.Ct. 1164. It requires an examination of both quantitative and qualitative factors. Monge, 688 F.3d at 1178.

Plaintiff first argues that “the sheer amount of the song used in the three-minute scene is substantial” because Defendants use clips of approximately 22% of the Acoustic Recording and 12% of the Studio Recording. (Opp'n at 20–21.) The third statutory factor does not lend itself to such a mechanical analysis. “The inquiry under this factor is a flexible one, rather than a simple determination of the percentage of the copyrighted work used.” Monge, 688 F.3d at 1179.

The filmmakers used no more of Kuney's song than necessary to document the critical moment when Yaniv discovered that Angela was lying to him. The first use of the song, when Yaniv plays a clip of the recording that was supposedly made by Angela and Megan but later revealed to be the Acoustic Recording, lasts for only 19 out of 189 seconds—from the beginning through a portion of the first verse. It is enough to give the audience a sense of the song but no more. The second use of the song, when Ariel sings along for approximately 16 seconds to recall the lyrics while typing them into a search engine, is similarly no longer than necessary to give the audience a sense of what he is doing.

[166 F.Supp.3d 1027]

The third and fourth uses, lasting respectively 28 out of 209 seconds (the Studio Recording) and 41 out of 189 seconds (the Acoustic Recording), are also no longer than necessary to serve the purpose of revealing Angela's lie. The third use merely repeats a similar portion of the Studio Recording as was heard in the Acoustic Recording but attributed to Angela and Megan. It is long enough for Yaniv and the filmmakers to comment on and for the audience to grasp the two versions' similarity. The fourth use, when it becomes clear that the Acoustic Recording attributed to Kuney is in fact identical to the Acoustic Recording attributed to Angela and Megan, is somewhat longer because Yaniv, Ariel, and Henry are commenting on the track more actively as it continues to play in the background.

Plaintiff maintains that “Defendants reproduced the heart of the Song (i.e., the chorus) and played it repeatedly.” (Opp'n at 21.) Only the fourth and possibly the second use (Ariel's singing is largely unintelligible) contain the chorus, and by the time in the fourth use when the chorus is heard, the scene's focus is on the realization that Angela has lied rather than on presenting the music for its own inherent entertainment value.

Plaintiff also asserts that Defendants could have used some alternative plot device to reveal Angela's deception instead of playing Kuney's song repeatedly (Opp'n at 17)—though it does not explain how. It is true that the filmmakers could have, for example, reenacted the scene later using different music or replaced the scene with an interview of Yaniv narrating the key events. But such alternatives artificially impinge upon the creative process. They would force the filmmakers to sacrifice the film's verisimilitude, its drama, or both. The descriptive term “reality thriller” would no longer apply.

Although one might quibble whether the filmmakers could have cut a second or two from their uses of Kuney's song in order to further reduce its overall exposure, the overall amount used was reasonable in light of their purpose. As such, the third statutory factor favors Defendants.

D. Effect on the Potential Market for the Copyrighted Work

The fourth fair use factor “requires courts to consider not only the extent of market harm caused by the particular actions of the alleged infringer, but also ‘whether unrestricted and widespread conduct of the sort engaged in by the defendant ... would result in a substantially adverse impact on the potential market' for the original.” Campbell, 510 U.S. at 590, 114 S.Ct. 1164 (quoting 3 Nimmer § 13.05[A][4] (1993)). Plaintiff does not argue that Catfish affected the market for recordings of Kuney's song.⁸ (See Barker Depo. at 145:22–146:5 (conceding that it did not).) No one would purchase the right to view Catfish as a substitute for purchasing Amy Kuney's song. To begin with, the longest single clip of the song lasts only 41 seconds, amounting to approximately 38% of the song. Websites that sell digital copies of music online routinely allow potential buyers to play a sample

[166 F.Supp.3d 1028]

—typically lasting 30 seconds or more—before deciding whether to purchase the song.⁹ It is inconceivable that hearing a similarly timed clip of Kuney's song in Catfish would dissuade a listener from purchasing it if the listener were otherwise predisposed to do so. Furthermore, the audio quality of the song in the film is low because it is played through speakers on Ariel's laptop and captured on film as ambient sound rather than recorded directly into the film's audio track—or at least the film is engineered to sound that way.

Instead, Plaintiff maintains that Catfish impaired the market for synchronization licenses to “All Downhill from Here.”¹⁰ (Opp'n at 22–24.) Yet, there is no obvious reason why that would be the case. Plaintiff begins with the assumption that the onetime use of her song for synchronization in a single television show—One Tree Hill —shows a market demand for its future synchronization in television and other media. This is doubtful, but even if, arguendo, it were true, Plaintiff's conclusion—that Catfish 's theatrical release caused a subsequent falloff in synchronization demand—does not follow.

When a new song is released, the demand to synchronize it to television shows and movies inevitably tapers off over time as the song falls out of people's favor or memories. Of course, the rate at which any given song is forgotten will vary—some songs, such as Imagine, endure longer than others.¹¹ Written in 2007 and first published on May 18, 2008, the Studio Recording was licensed the next day for use in a One Tree Hill episode. (Opp'n, Exs. 24, 25; see also Barker Depo. at 160:23–25.) More than two years passed before Defendants released Catfish, in which time there were no further licenses for the synchronization of the Studio Recording in any medium. (See Barker Depo. at 155:18–159:7.) The Acoustic Recording, also published in 2008 (Opp'n, Ex. 24), has never been licensed. (See Barker Depo. at 158:23–159:7.) These facts are inconsistent with Plaintiff's assertion that a synchronization market exists.

To the extent some exogenous factor suppressed the demand to synchronize Kuney's song, it is far more likely that the song's synchronization use in One Tree Hill rather than its non-synchronization use in Catfish is to blame. The creators of other television shows and movies, wanting their works to appear fresh, may not want to synchronize a song that has already been heard on television. Although Plaintiff points out that four of Kuney's other songs have been licensed for synchronization (see Opp'n at 24, Ex. 26), there is no

[166 F.Supp.3d 1029]

evidence that any of Kuney's songs has been licensed more than once. Plaintiff simply fails to articulate how the overwhelmingly positive reception that greeted “All Downhill from Here” in Catfish harmed its synchronization market in a way that its use in One Tree Hill did not.¹² The fourth fair use factor thus favors Defendants.

E. Balancing the Factors

Drawing all reasonable inferences in favor of Plaintiff, a reasonable factfinder could conclude that parts of the film were dishonest or deceptive. Most notably, there is evidence that Yaniv had a serious romantic relationship with a woman in New York while he was cultivating his online relationship with “Megan” and did not disclose this fact to Megan. There is evidence that the filmmakers deliberately omitted this fact from the film to make the story seem less staged. But this evidence does not undermine the uncontroverted evidence that Angela 's actions (including those of her alter egos) were her own—they were not scripted, prompted, or directed by anyone else.

Angela decided to post the Studio Recording on Facebook, and it was upon hearing the Studio Recording that Yaniv first realized that Megan and Angela were lying to him. The filmmakers did not have a choice which song they could use in their story to document that critical moment—for better or for worse, they were stuck with “All Downhill from Here” if they wanted to remain faithful to the documentary style of their film.

The facts here thus differ from the synchronization context, where the filmmakers or studio can bargain with various artists for the use of their songs in a film, television show, or commercial. If one artist presents a holdout problem, demanding unreasonably high licensing fees, there are alternatives. Although the alternative songs may be less aesthetically pleasing, there is a sufficiently large market that the filmmaker or studio can decide how to balance the economic and artistic tradeoffs.

“The fair use doctrine must strike a balance between the dual risks created by the copyright system: on the one hand, that depriving authors of their monopoly will reduce their incentive to create, and, on the other, that granting authors a complete monopoly will reduce the creative ability of others.” Sony, 464 U.S. at 479, 104 S.Ct. 774 (Blackmun, J., dissenting); see also SOFA Entm't, 709 F.3d at 1277–78 (explaining that the Copyright Act “grant[s] authors a ‘special reward' in the form of a limited monopoly over their works” in order “to stimulate artistic creativity for the general public good” but that the doctrine of fair use prevents “an overzealous monopolist [from] us[ing] his copyright to stamp out the very creativity that the Act seeks to ignite” (citations and internal quotation marks omitted)). Here, there was not a large market to which Defendants could turn. Their only choice was to release the film or not. To hold that their use of Amy Kuney's music was not fair would be to grant Plaintiff not just a copyright but—in effect—a veto over a new, transformative work.¹³ That would not serve the purposes of the Copyright Clause.

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VI.

CONCLUSION

In light of the foregoing, Defendants' motion for summary judgment and/or partial summary judgment is GRANTED . Judgment shall be entered in favor of Defendants on Plaintiff's copyright infringement claims arising from the commercial version of Catfish.

Founded in May 2005, YouTube (now owned by Google) operates a website that hosts user-generated content. About YouTube, YouTube.com, https://www.youtube.com/yt/about/ (last visited September 4, 2015). Users upload videos directly to the website. Id. On February 7, 2007, Lenz uploaded to YouTube a 29–second home video of her two young children in the family kitchen dancing to the song Let's Go Crazy by Prince.¹ Available at https://www.youtube.com/watch?v=N1KfJHFWlhQ (last visited September 4, 2015). She titled the video " 'Let's Go Crazy' # 1." About four seconds into the video, Lenz asks her thirteen month-old son "what do you think of the music?" after which he bobs up and down while holding a push toy.

At the time Lenz posted the video, Universal was Prince's publishing administrator responsible for enforcing his copyrights. To accomplish this objective with respect to YouTube, Robert Allen, Universal's head of business affairs, assigned Sean Johnson, an assistant in the legal department, to monitor YouTube on a daily basis. Johnson searched YouTube for Prince's songs and reviewed the video postings returned by his online search query. When reviewing such videos, he evaluated whether they "embodied a Prince composition" by making "significant use of ... the composition, specifically if the song was recognizable, was in a significant portion of the video or was the focus of the video." According to Allen, "[t]he general guidelines are that ... we review the video to ensure that the composition was the focus and if it was we then notify YouTube that the video should be removed."

Johnson contrasted videos that met this criteria to those "that may have had a second or less of a Prince song, literally a one line, half line of Prince song" or "were shot in incredibly noisy environments, such as bars, where there could be a Prince song playing deep in the background ... to the point where if there was any Prince composition embodied ... in those videos that it was distorted beyond reasonable recognition." None of the video evaluation guidelines explicitly include consideration of the fair use doctrine.

When Johnson reviewed Lenz's video, he recognized Let's Go Crazy immediately. He noted that it played loudly in the background throughout the entire video. Based on these details, the video's title, and Lenz's query during the video asking if her son liked the song, he concluded that Prince's song "was very much the focus of the video." As a result, Johnson decided the video should be included in a takedown notification sent to YouTube that listed more than 200 YouTube videos Universal believed to be making unauthorized use of Prince's songs.² The notice included a "good faith belief" statement as required by 17 U.S.C. § 512(c)(3)(A)(v): "We have a good faith belief that the above-described activity is not authorized by the copyright owner, its agent, or the law."

After receiving the takedown notification, YouTube removed the video and sent

[815 F.3d 1150]

Lenz an email on June 5, 2007, notifying her of the removal. On June 7, 2007, Lenz attempted to restore the video by sending a counter-notification to YouTube pursuant to § 512(g)(3). After YouTube provided this counter-notification to Universal per § 512(g)(2)(B), Universal protested the video's reinstatement because Lenz failed to properly acknowledge that her statement was made under penalty of perjury, as required by § 512(g)(3)(C). Universal's protest reiterated that the video constituted infringement because there was no record that "either she or YouTube were ever granted licenses to reproduce, distribute, publicly perform or otherwise exploit the Composition." The protest made no mention of fair use. After obtaining pro bono counsel, Lenz sent a second counter-notification on June 27, 2007, which resulted in YouTube's reinstatement of the video in mid-July.

Universal concedes it must give due consideration to other uses authorized by law such as compulsory licenses. The introductory language in 17 U.S.C. § 112for compulsory licenses closely mirrors that in the fair use statute. Compare 17 U.S.C. § 112(a)(1)("Notwithstanding the provisions of section 106, ... it is not an infringement of copyright for a transmitting organization entitled to transmit to the public a performance or display of a work ... to make no more than one copy or phonorecord of a particular transmission program embodying the performance or display...."), with id. § 107("Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work ... is not an infringement of copyright."). That fair use may be labeled as an affirmative defense due to the procedural posture of the case is no different than labeling a license an affirmative defense for the same reason. Compare Campbell v. Acuff–Rose Music, Inc., 510 U.S. 569, 573 & n. 3, 590, 114 S.Ct. 1164, 127 L.Ed.2d 500 (1994)(stating that "fair use is an affirmative defense" where the district court converted a motion to dismiss based on fair use into a motion for summary judgment), with A & M Records, Inc. v. Napster, Inc., 239 F.3d 1004, 1025–26 (9th Cir.2001)("Napster contends that ... the district court improperly rejected valid affirmative defenses of ... implied license...."). Thus, Universal's argument that it need not consider fair use in addition to compulsory licenses rings hollow.

Even if, as Universal urges, fair use is classified as an "affirmative defense," we hold—for the purposes of the DMCA—fair use is uniquely situated in copyright law so as to be treated differently than traditional affirmative defenses. We conclude that because 17 U.S.C. § 107created a type of non-infringing use, fair use is "authorized by the law" and a copyright holder must consider the existence of fair use before sending a takedown notification under § 512(c).

We must next determine if a genuine issue of material fact exists as to whether Universal knowingly misrepresented that it had formed a good faith belief the video did not constitute fair use. This inquiry lies not in whether a court would adjudge the video as a fair use, but whether Universal formed a good faith belief that it was not. Contrary to the district court's holding, Lenz may proceed under an actual knowledge theory, but not under a willful blindness theory.

Though Lenz argues Universal should have known the video qualifies for fair use as a matter of law, we have already decided a copyright holder need only form a subjective good faith belief that a use is not authorized. Rossi v. Motion Picture Ass'n of Am. Inc., 391 F.3d 1000 (9th Cir.2004). In Rossi, we explicitly held that "the 'good faith belief' requirement in § 512(c)(3)(A)(v)encompasses a subjective, rather than objective

[815 F.3d 1154]

standard," and we observed that "Congress understands this distinction." Id. at 1004. We further held:

When enacting the DMCA, Congress could have easily incorporated an objective standard of reasonableness. The fact that it did not do so indicates an intent to adhere to the subjective standard traditionally associated with a good faith requirement....

In § 512(f), Congress included an expressly limited cause of action for improper infringement notifications, imposing liability only if the copyright owner's notification is a knowing misrepresentation. A copyright owner cannot be liable simply because an unknowing mistake is made, even if the copyright owner acted unreasonably in making the mistake. Rather, there must be a demonstration of some actual knowledge of misrepresentation on the part of the copyright owner.

Id. at 1004–05 (citations omitted). Neither of these holdings are dictum. See United States v. Johnson, 256 F.3d 895, 914 (9th Cir.2001)(en banc) ("[W]here a panel confronts an issue germane to the eventual resolution of the case, and resolves it after reasoned consideration in a published opinion, that ruling becomes the law of the circuit, regardless of whether doing so is necessary in some strict logical sense."). We therefore judge Universal's actions by the subjective beliefs it formed about the video.

Universal faces liability if it knowingly misrepresented in the takedown notification that it had formed a good faith belief the video was not authorized by the law, i.e., did not constitute fair use. Here, Lenz presented evidence that Universal did not form any subjective belief about the video's fair use—one way or another—because it failed to consider fair use at all, and knew that it failed to do so. Universal nevertheless contends that its procedures, while not formally labeled consideration of fair use, were tantamount to such consideration. Because the DMCA requires consideration of fair use prior to sending a takedown notification, a jury must determine whether Universal's actions were sufficient to form a subjective good faith belief about the video's fair use or lack thereof.³

To be clear, if a copyright holder ignores or neglects our unequivocal holding that it must consider fair use before sending a takedown notification, it is liable for damages under § 512(f). If, however, a copyright holder forms a subjective good faith belief the allegedly infringing material does not constitute fair use, we are in no position to dispute the copyright holder's belief even if we would have reached the opposite conclusion. A copyright holder who pays lip service to the consideration of fair use by claiming it formed a good faith belief when there is evidence to the contrary is still subject to § 512(f)liability. Cf.

[815 F.3d 1155]

Disney Enters., Inc. v. Hotfile Corp., No. 11–cv–20427, 2013 WL 6336286, at *48 (S.D.Fla. Sept. 20, 2013)(denying summary judgment of § 512(f)counterclaim due to "sufficient evidence in the record to suggest that [Plaintiff] Warner intentionally targeted files it knew it had no right to remove"); Rosen v. Hosting Servs., Inc., 771 F.Supp.2d 1219, 1223 (C.D.Cal.2010)(denying summary judgment of § 512(f)counterclaim where the takedown notification listed four URL links that did not contain content matching the description of the purportedly infringed material); Online Policy Grp. v. Diebold, Inc., 337 F.Supp.2d 1195, 1204–05 (N.D.Cal.2004)("[T]here is no genuine issue of fact that Diebold knew—and indeed that it specifically intended—that its letters to OPG and Swarthmore would result in prevention of publication of that content.... The fact that Diebold never actually brought suit against any alleged infringer suggests strongly that Diebold sought to use the DMCA's safe harbor provisions—which were designed to protect ISPs, not copyright holders—as a sword to suppress publication of embarrassing content rather than as a shield to protect its intellectual property.").

Plaintiffs-Appellants Tamita Brown, Glen S. Chapman, and Jason T. Chapman are musicians who created and own the copyright for the song "Fish Sticks n' Tater Tots" (the "Song"), which is at issue in this appeal. Plaintiffs sued Defendants-Appellees Netflix, Inc., Amazon.com, Inc., and Apple, Inc., for copyright infringement because the Song is played in a scene in the 2017 film entitled "Burlesque: Heart of the Glitter Tribe" (the "Film"), which is available for viewing on Defendants' respective video streaming platforms.¹ Defendants had no license to perform or display a performance of the Song. In this suit, Plaintiffs did not name as defendants the producers of the Film, the relevant burlesque dancer, or any others involved in the making of the Film.

Here, the documentary character of the Film fits within those uses identified by § 107: The Film provides a commentary on the burlesque art form and its resurgence in Portland, Oregon, as well as an exploration of the artistic process of the group of dancers on whom the Film centers. The Film does not merely re-broadcast the performances; rather, it combines those performances with cultural commentary on "topics such as gender, sexuality, and the artistic process." Appellees' Br. at 25. Indeed, it is only after interviewing one of the dancers about her views on such matters that the Film then shows a part of that dancer's performance wherein she attempts to express these views. It is while documenting this performance that the Film incidentally captures this dancer's use of the Song as brief background accompaniment to her burlesque act. In this context, Defendants' incidental use of the Song is consistent with the Film's nature as a documentary providing commentary and criticism. Accordingly, the Film is entitled to a presumption in favor of fair use with regard to factor one. See, e.g., Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605, 608-12 (2d Cir. 2006) (comparing use of copyrighted images in timeline akin to use of quotations in biography and finding first factor weighed toward finding of fair use); Ringgold v. Black Ent. Television, Inc., 126 F.3d 70, 79 (2d Cir. 1997) (endorsing continued validity of Italian Book Corp. v. Am. Broad. Cos., 458 F. Supp. 65, 71 (S.D.N.Y. 1978), which found fair use by news broadcast of song captured during report on street parade); Video-Cinema Films, Inc. v. Lloyd E. Rigler-Lawrence E. Deutsch Found., No. 04-cv-5332 (NRB), 2005 WL 2875327, at *7 (S.D.N.Y. Nov. 2, 2005) (holding that, although contested secondary use was not transformative, it properly fell within § 107's preamble categories and therefore first factor weighed towards fair use); Threshold Media Corp. v. Relativity Media, LLC, No. 10-cv-9318, 2013 WL 12331550, at *7-10 (C.D. Cal. Mar. 19, 2013) (holding documentary's inclusion of copyrighted song, which was played and discussed by documentary subjects, weighed towards fair use under first factor).

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Plaintiffs assert that it is premature at this stage of the litigation, during which all inferences are to be drawn in their favor, to conclude that the Film is a documentary depicting real events. Not so. When, as here, the copyrighted and secondary works are incorporated by reference into the pleadings, "the works themselves supersede and control contrary descriptions of them, including any contrary allegations, conclusions or descriptions of the works contained in the pleadings." Peter F. Gaito Architecture, LLC v. Simone Dev. Corp., 602 F.3d 57, 64 (2d Cir. 2010). The Film has all the hallmarks of a documentary film, including interviews, commentary interspersed with footage of events, and a narrative voice-over. Further, Plaintiffs did not allege in their Complaint that the Film is anything but a documentary. Their suggestion on appeal that the Film is not a documentary but in fact a scripted creative work that "take[s] the form or style of a documentary, but do[es] not portray real events," Appellants' Br. at 13, is pure conjecture, which we have "no obligation to entertain." Gallop v. Cheney, 642 F.3d 364, 368 (2d Cir. 2011).⁴

The third factor, the amount of borrowing, also favors a fair use finding. Only eight seconds of the Song (of 190 seconds total) are heard in the Film. And, although the refrain used may be the "heart" of the Song, a recognizable chorus can be used fairly when use of that segment of the song is "reasonable in relation to the purpose of the copying," here a documentary providing commentary on and criticism of aspects of burlesque as evident in certain dancers' performances. Campbell, 510 U.S. at 586-88 (in the context of a parody of a song, "[c]opying does not become excessive in relation to parodic purpose merely because the portion taken was the original's heart"). Plaintiffs insist that the use is not fair because the Film uses more of the Song than necessary, urging that only the phrase "fish sticks" is required to communicate the "'reverse mermaid' transformation" attempted by the dancer, and therefore the second half of the refrain, "tater tots," is excessive. Appellants' Br. at 23. The argument is unpersuasive. The fair use doctrine does not obligate the Film to use the shortest possible snippet to convey its message of commentary and criticism. See Campbell,

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510 U.S. at 586-88; cf. Cariou v. Prince, 714 F.3d 694, 710 (2d Cir. 2013) (making point in context of use that is artistically transformative). The dancer's use of the Song is relayed to the audience as captured by the Film, which sought to document the creative process behind developing the "reverse mermaid" routine and then its eventual performance as part of the Film's portrayal of burlesque dancers in Portland. Showing the performance as it happened, including the eight-second snippet of the Song, was reasonably necessary to convey the Film's message.

Finally, the fourth factor—the effect the infringing use has on the potential market for the Song—also weighs in favor of fair use. This inquiry focuses on whether the infringing use "usurps" the market for the original. Id. at 708. As the Film contains only an eight-second excerpt of the Song's chorus—rather than the over three-minute complete track—embedded in a documentary film, the intended audience for the Song would be unlikely to purchase the Film "in preference to the original." Authors Guild v. Google, Inc., 804 F.3d 202, 223 (2d Cir. 2015); see also Lombardo v. Dr. Seuss Enters., L.P., 279 F. Supp. 3d 497, 512 (S.D.N.Y. 2017) (stating that there was "virtually no possibility" of usurpation where original work was "a children's book intended for an all-ages audience" and infringing work was "clearly intended for adult audiences"). Plaintiffs contend further that Defendants' infringement, if multiplied, "effectively destroys Plaintiffs' right to demand royalties for their work" as dance music or otherwise in films. Appellants' Br. at 25. Because fair use always results in some loss of royalty revenue, however, we consider only the "challenged use's impact on potential licensing revenues for traditional, reasonable, or likely to be developed markets." TCA Television Corp., 839 F.3d at 186. Even crediting Plaintiffs' assertion that a licensing market exists for the Song as dance music or background music in films—an assertion not contained in the Complaint—the Film's brief use of a small portion of the Song as a component of an event recorded for documentary purposes does not plausibly fall within the traditional or well-developed market for the Song. Accordingly, the fourth factor also weighs in favor of fair use.

The protected work alleged to have been infringed is a song in the Italian language titled "Dove sta Zaza", with music by Giuseppe Cioffi and a text by Raffaele Cutolo. Plaintiff I.B. Corp. traces its copyright from a certificate of registration issued by the Register of Copyrights in September of 1945 to an entity called Italian Book Co. ("I.B. Co."). The work described in the certificate, designated "Class E For. 4295",¹ is titled "Le Nuove Canzoni del Maestro Giuseppe Cioffi" — in translation, "The New Songs of Maestro Giuseppe Cioffi." The work is in effect a songbook² containing the music and lyrics of 21 Italian songs, of which "Dove sta Zaza" is one.

The alleged infringement occurred on September 15, 1974, when an ABC television film crew, covering the annual San Gennaro Festival on Mulberry Street in the "Little Italy" section of Manhattan, filmed a parade which included a float upon which a band was playing. Portions of the band music were recorded, formed a part of the television film strip, and were played over Channel 7 news that evening. The band music included at least a portion of the song "Dove sta Zaza."

When these principles are applied to the case at bar, it is evident that the defense of fair use must be sustained. ABC and its evening television news program are not in competition with the plaintiff. The use which defendant made of the song in question is not competitive with the commercial use plaintiff seeks to make of the song. No loss of profit or lessening of the song's value as the result of defendant's use was demonstrated; on the contrary, plaintiff has stipulated that the use complained of "did not result in any actual damage to the plaintiff, or to the market for said work." Def. Ex. E.