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Volume XI, Number 262


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Second Circuit Revisits Transformative Use Test in “Fish Sticks n’ Tater Tots” Music Copyright Case

The Second Circuit recently upheld a ruling that streaming giants Apple, Amazon, and Netflix engaged in fair use, in a case concerning the use of plaintiff musicians’ song in a documentary film available for viewing on defendants’ streaming platforms. In doing so, the Court found the eight-second snippet of the song was performed in a way that was transformative, and reasonably necessary to convey the film’s message. Brown, et al. v. Netflix, Inc. et al.

Plaintiffs Tamita Brown, Glen S. Chapman, and Jason T. Chapman are musicians who own the copyright in a children’s song called “Fish Sticks n’ Tater Tots.” A short clip of the song is played in a scene of “Burlesque: Heart of the Glitter Tribe” – a 2017 film available on Apple, Amazon, and Netflix’s streaming platforms. Plaintiffs sued the streaming platforms for infringement, noting that defendants did not have a license to perform or display a performance of the song.

In prior proceedings, the district court granted Netflix and Apple’s motions to dismiss, and awarded judgment on the pleadings to Amazon. The district court determined that three of the four fair use factors (the purpose and character of the use, the amount and substantiality of the portion used, and the effect on the potential market) all weighed in favor of fair use, while the remaining factor (the nature of the copyrighted work) favored neither party.

On appeal, the Second Circuit agreed with the district court’s conclusion. The Court’s decision was guided largely by a finding that the performance of the song clip in the film was transformative. Specifically, the Court determined that the film combines burlesque performances with “cultural commentary on topics such as gender, sexuality, and the artistic process.” The song clip accompanied a dancer’s performance in which, according to the Court, the dancer was attempting to express her views on these topics. Finding the use of the song to be “consistent with the Film’s nature as a documentary providing commentary and criticism,” the Court determined it was transformative, and afforded defendants a presumption in favor of fair use as to the first factor (the “purpose and character” of the use).

The Court also determined that the “amount and substantiality” of the portion borrowed weighed in favor of fair use. Only eight seconds of the 190-second song are heard in the film. And even though the eight seconds used consisted of a recognizable portion of the chorus (arguably the “heart” of the song), the Court determined this was reasonable in relation to the transformative purpose of the use. Plaintiffs argued this purpose could have been just as effectively fulfilled with a shorter clip, because only the phrase “fish sticks” was relevant to the message conveyed (while the second half of the refrain was not). The Court was unmoved. It observed that fair use does not obligate a defendant to use the shortest possible snippet to convey its message.

Lastly, [1]the Court determined that the “effect on the potential market” factor likewise favored fair use. Noting that only an eight-second excerpt was performed in the background of an adult-oriented documentary, the Court found it unlikely that the intended audience for “Fish Sticks n’ Tater Tots” would purchase “Burlesque” as a substitute for the original song. The Court also found it implausible that this song had a traditional or well-developed market for use in a documentary film.

The Court’s expansive interpretation of the transformative use test in this decision seems to diverge from another recent Second Circuit opinion that we covered just last month.  In The Andy Warhol Foundation v. Goldsmith, the Court ruled that Andy Warhol’s use of a copyrighted photograph of musician Prince in a series of prints was not “transformative” and did not constitute fair use. In that decision, the Court opined that the transformative use test should be guided by how the work may “reasonably be perceived,” rather than by “the meaning or impression that a critic – or for that matter, a judge – draws from the work.” But here, the Court’s finding of transformativeness seems to be centered on its interpretation of the artistic message or criticism the film intended to convey, rather than on an objective evaluation of how the work may be perceived.

As we predicted in our prior coverage of Warhol v. Goldsmith, this redirection of the transformative use test may be a consequence of the Supreme Court’s decision in Google v. Oracle – a decision issued shortly after Warhol, in which the Court focused its transformative use analysis on the subjective intent of the alleged infringer. When Google v. Oracle was issued, we questioned whether future courts would cabin the decision to the software context, or whether it would signal a broader change in the direction of the transformative use test. As Brown v. Netflix represents one of the first (if not the first) instances in which the Second Circuit has revisited the transformative use test post-Google, we may now be seeing the beginnings of an answer to this question.


[1] The Court did not address the remaining factor – the nature of the copyrighted work. The district court had determined this factor favored neither party.

© 2021 Proskauer Rose LLP. National Law Review, Volume XI, Number 160

About this Author

Sandra Crawshaw Sparks, Entertainment Attorney, Proskauer Law Firm

Sandra A. Crawshaw-Sparks is a partner in the Litigation Department. Sandy handles a wide variety of litigation and transactional matters in the entertainment industry, with a special focus on music. She has represented many clients in connection with matters involving recording, publishing, licensing and management contracts, copyrights, trademark rights, unfair competition claims, and the rights of privacy and publicity.

Sandy typically handles copyright infringement, trademark infringement, enforcement of personal services contracts,...

David A Munkittrick Litigation Attorney Proskauer Rose New York, NY
Senior Counsel

David Munkittrick is a litigator and trial attorney. His practice focuses on complex and large-scale antitrust, copyright and entertainment matters in all forms of dispute resolution and litigation, from complaint through appeal.

David has been involved in some of the most significant antitrust matters over the past few years, obtaining favorable results for Fortune 500 companies and other clients in bench and jury trials involving price discrimination and group boycott claims. His practice includes the full range of antitrust matters and disputes: from class actions to competitor...

Anisha Shenai-Khatkhate Litigation Attorney Proskauer Rose Law Firm

Anisha Shenai-Khatkhate is an associate in the Litigation Department at Proskauer Rose LLP.