IP Law Daily, COPYRIGHT—10th Cir.: Panel vacates its Tiger King ruling and asks for more briefing, (May 14, 2024)

By Matthew Hersh, J.D.

Netflix, backed by a wide range of amici curiae, argued that the panel misapplied the transformative use doctrine.

The companies behind a widely popular television series that aired at the height of the pandemic will get another chance to brief the question of whether they made a fair use of a videographer’s footage, the U.S. Court of Appeals for the Tenth Circuit has held. The court, in agreeing to rehear and reconsider its earlier panel opinion, appears to have been persuaded not only by the petition of the film companies but also by a flurry of amicus briefs from entities representing a wide range of the documentary movie industry (Whyte Monkee Productions, LLC v. Netflix, Inc. , No. 22-6086 (10th Cir. May 13, 2024)).

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 Court of Appeals, in its first encounter with the case in March of this year, affirmed in part and remanded in part. The court agreed with the district court that seven of the videos were, indeed, created as works for hire. But the court remanded to the trial court to reconsider the holding of fair use, finding that while the trial court accurately decided the first three factors, it used the wrong standard for deciding the fourth factor.

Petition for rehearing. Netflix petitioned for partial panel rehearing and rehearing en banc. Its petition, which was supported by a wide range of amici including the Motion Picture Association, the International Documentary Association, and the Authors Alliance, among many others, took aim only at the panel’s reasoning on the question of work for hire. The work at issue was a video of the funeral of Travis Maldonado, Joe Exotic’s husband, who died of a self-inflicted gunshot wound. Netflix used a short excerpt of the video in its television series. Was its use transformative? The panel found that it was not. Netflix and amici argued that it erred.

The panel erred on transformative use, Netflix argued, because it placed too much emphasis on whether Netflix specifically “targeted” the underlying video to the exclusion of broader transformative use considerations. In the panel’s original opinion, it reasoned that Netflix did not make a transformative use because it “did not comment on or ‘target’ Mr. Sepi’s work at all; instead, [Netflix] used the Funeral Video to comment on Joe Exotic.” But this was the wrong question, Netflix and its amici argued. Under Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 598 U.S. 508 (2023), Netflix argued, the Court made clear that while targeting the original work weighs in favor of fair use, such targeting was “not required for a second work to be transformative.” Rather, Netflix argued, Warhol left open the possibility that fair use could be established even without such “narrow” transformative uses, particular “where the second artist’s work has a wholly distinct purpose from the first.”

The panel also erred, Netflix argued, by failing to recognize that use of a film clip in a documentary is a use expressly covered by the Copyright Act. Section 107 of the Act (17 U.S.C. § 107) lists certain fair uses as examples in its preamble, including “criticism, comment, news reporting, teaching …, scholarship, or research.” Documentaries and biographies, Netflix and its amici argued, have long been considered by caselaw to be ‘preamble’ uses. Following this, Netflix noted, the U.S. Copyright Office treats use of video clips for purposes of biographical documentary as likely to be fair. Indeed, Netflix noted, the rules and regulations promulgated under 17 U.S.C. §1201 provide exemption from anti-circumvention laws for “use of short portions of . . . motion pictures”—including “television shows and videos”—where the purpose is “criticism or comment . . . [f]or use in documentary filmmaking, or other films where the motion picture clip is used in parody or for its biographical or historically significant nature.” 37 C.F.R. §201.40(b)(1) (2021). The panel erred in overlooking this doctrine, Netflix argued.

Order granting petition. The court of appeals vacated its earlier decision but did not reverse it. Instead, the panel asked for supplemental briefing on the following issues:

1. To what extent are the predominant principles of fair use jurisprudence that relate to documentary use for “preamble” purposes (17 U.S.C. § 107) of film clips without paying licensing fees—including, but not limited to, the use of such clips as historical markers—apposite here to Petitioners-Appellees’ commercial use of the Funeral Video?

2. What impact, if any, does the Supreme Court’s decision in Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, 598 U.S. 508 (2023), have on the content and scope of the fair use principles described in question 1?

3. If the fair use principles described in question 1 are apposite here, does the Panel’s analysis properly take into account those principles and any impact of Warhol on the content and scope of those principles?

Supplemental briefs are to be filed within 21 days of the order, or June 3.

The Case is No. 22-6086.

Judge: Carson, J.

Attorneys: Andrew Grimm (Digital Justice Foundation Inc.) for Whyte Monkee Productions, LLC. Emily F. Evitt (Mitchell Silberberg & Knupp LLP) for Netflix, Inc.

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

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