IP Law Daily, COPYRIGHT—10th Cir.: Netflix can’t quite escape the claws of Tiger King lawsuit, (Mar 28, 2024)

By Matthew Hersh, J.D.

The streaming channel and a production company will face a rehearing on the fair use doctrine.

The companies behind a widely popular television series that aired at the height of the pandemic will have to face a rehearing on their claim that they made a fair use of a videographer’s footage as part of one episode, the U.S. Court of Appeals for the Tenth Circuit has held. The court, in reversing and remanding in part the judgment of a federal district court in Oklahoma, found that the trial court wrongly placed the burden of proof on the videographer when assessing the market impact of the admitted use (Whyte Monkee Productions, LLC v. Netflix, Inc., March 27, 2024, Carson, J.).

The lawsuit was brought by Ron Sepi, a videographer hired to create in-house video for an animal theme park in Oklahoma. Joseph Maldonado Passage—otherwise known as Joe Exotic—ran the theme park. Joe Exotic and his theme park, as all pandemic-era binge-watchers know, shot to worldwide fame in 2020 with the release of the Netflix series The Tiger King.

But the release of The Tiger King led to several lawsuits, including this one by Sepi. The videographer claimed that Netflix used eight clips from his footage without his permission as part of the series. He sued Netflix as well as the production company behind the show, Royal Goode Productions, for copyright infringement.

The district court dismissed the lawsuit, finding that seven of the videos were created as works for hire and that the eighth was protected as fair use. The court also awarded attorney fees to Netflix, finding that the videographer’s work for hire claim was based on “sham testimony” and that the videographer’s brief addressed the fair use issue only “perfunctorily.”

The videographer appealed, leading to this decision.

Work for hire. The court of appeals affirmed the decision on work for hire. The videographer acknowledged that he was hired by the theme park for the purpose of filming park tours. Thus, to the extent that the theme park licensed that footage to Netflix for use in the series, it had the right to do so. But the videographer claimed that the footage he shot for a show called Joe Exotic TV, primarily an unscripted series featuring video footage from around the park and skits invented by Exotic, was done on his own time and therefore was not within the scope of his employment contract. The district found that all of the footage was work made for hire, and the court of appeals agreed.

The court of appeals found it an easy decision because the videographer made a different argument on appeal than he made below. The videographer’s story shifted considerably over the course of time, the court noted. In an earlier lawsuit by a different party, he gave sworn testimony that he worked both as a videographer as well as a photographer for the park. At trial, he tendered a second version of his work for the park, asserting that he was hired only as a photographer and that his videography was done on his own time. When the district court rejected this argument as inconsistent with earlier sworn testimony, the videographer presented a third argument on appeal—this time conceding that he indeed worked as a videographer, but arguing that he was hired only to film park tours and not to shoot footage for the online series. But it was too late for the videographer to make this argument, the court of appeals found.

The videographer’s claim on appeal would fail under the doctrine of waiver, the court found. Generally speaking, the court noted, an appellant waives an argument “if she fails to raise it in the district court and has failed to argue for plain error and its application on appeal.” That doctrine sunk the videographer’s claim, the court found. He presented a new theory on appeal by contending for the first time that he was a videographer hired only to shoot park tours, the court found. And while the videographer’s argument was “within the same general category as the argument raised on appeal”—i.e., that he was not acting within the scope of his employment when filming the videos at issue—that would not save his appeal. “Our forfeiture-and-waiver rule applies,” the court noted, “even when a litigant changes to a new theory on appeal that falls under the same general category as an argument presented at trial.” It was too late for the videographer to switch horses now.

Fair use. But while the district court’s work for hire ruling would not be disturbed, the same could not be said for the fair use ruling. This ruling covered only the last of the videos, which documented the funeral of Exotic’s husband, Travis Maldonado. The court of appeals remanded the ruling to the district court for further consideration.

The district court got its analysis of most of the fair use factors correct, the court noted. As to the first factor, addressing the purpose and nature of Netflix’s use, the court noted, the district court properly found that there was no transformative use. Netflix’s use was commercial and it did not comment on the work, the district court rightly found. In fact, the court noted, Netflix and the production company “did not comment on or target [the videographer’s] work at all; instead, [they] used the [video] to comment on Joe Exotic.” More specifically, the court noted, they used the video “to illustrate Mr. Exotic’s purported megalomania, even in the face of tragedy.” That did not constitute a transformative use, the court of appeals found.

The district court got it right on factors two and three as well, the court found. As to the nature of the work, the court reasoned, this tilted in favor of Netflix because the videographer made few creative decisions when making the video. In fact, the court noted, he shot the video merely “by placing a camera on a tripod and leaving it running.” There was little creative in that. Notably, the court found, the district court also got it right in finding that the work had been previously published—a factor here, albeit a modest one—because the videographer posted it on YouTube. For a work to have been published, the court acknowledged, it must not merely have been performed or displayed—it also must have been made available for distribution to the public. But posting on YouTube counted, the court found, because “members of the public could access and download the video at any time” from YouTube. So the district court was right to weigh this factor in favor of Netflix.

The district court also got it right on factor three, covering the amount and substantiality of the use. Netflix used an insubstantial amount of the video, the court noted—“a total of approximately sixty-six seconds out of a video lasting nearly twenty-four minutes.” That was only five percent. Moreover, the court of appeals noted, the district court found that while the clips Netflix used were “some of the more unusual portions of the video,” there were “not necessarily the most important.” The district court was right to weigh this in favor of Netflix as well.

But the district court erred, the court of appeals found, on factor four. The district court found that Tiger King was “not a substitute” for the funeral ceremony video because it was “not likely that a person interested in viewing the funeral would consider viewing Tiger King as a replacement.” But in reaching this conclusion, the court of appeals noted, “the district court did not cite to any evidence in the record demonstrating the absence of a market impact.” The was error, the court of appeals found, because the Supreme Court and other Circuits “have unequivocally placed the burden of proof on the proponent of the affirmative defense of fair use.” To be sure, the court noted, the videographer admitted he had no history of licensing the work. The district court might well have taken that into account as part of its analysis. But because the district court placed the overall burden on the wrong party, the court of appeals found, remand was necessary to re-evaluate the fourth factor—and to reweigh all four factors, if necessary, depending on the outcome of the re-evaluation of factor four.

Other litigation. The lawsuit by the videographer was only one of many intellectual property battles over the popular TV show. In December 2020, a California court rejected on First Amendment grounds a trademark and copyright infringement claim by a Hollywood magazine claiming rights to the Tiger King mark (IP Law Daily coverage). In September 2023, a Pennsylvania court dismissed on fair use ground a copyright claim by the designer of tattoo that appeared briefly in the show (IP Law Daily coverage).

The Case is No. 22-6086.

Attorneys: Gregory Keenan (Digital Justice Foundation) for Whyte Monkee Productions, LLC. Robert H. Rotstein (Mitchell, Silberberg & Knupp LLP) for Netflix, Inc. and Royal Goode Productions, LLC.

Companies: Whyte Monkee Productions, LLC; Netflix, Inc.; Royal Goode Productions, LLC

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