IP Law Daily, COPYRIGHT—D.R.I.: Video criticism of copyrighted works was not infringing, (Feb 23, 2024)

By Thomas K. Lauletta, J.D.

The affirmative defense of fair use was established as a matter of law.

The U.S. District Court in Providence, Rhode Island, denied plaintiff Thiccc Boy Productions (“Thiccc Boy”) a motion for summary judgment of copyright infringement against defendant Kyle Swindelles. Although the plaintiff’s video and audio podcasts were admittedly copied, actionable infringement was not established because the copying was criticism or commentary that qualified as fair use under the standards of section 107 of the Copyright Act (Thiccc Boy Productions Inc. v. Swindelles, February 22, 2024, McElroy, M.).

Plaintiff Thiccc Boy is a production company that produces The Fighter and the Kid, a podcast hosted by Brendan Schaub. The podcast, recorded in both video and audio format, focuses on current events in popular media and Mr. Schaub and his co-hosts’ personal lives. The copyrighted materials in this case are four videos of the podcast that Thiccc Boy published on YouTube.

Defendant Kyle Swindelles creates and publishes videos on YouTube, including videos that included segments of Thriccc Boy’s copyright materials.

Thriccc Boy sued Swindelles for four counts of copyright infringement, while Swindelles raised the affirmative defense of fair use, and sought sanctions under Federal Rule 11(b) for the plaintiff’s allegedly harassing conduct during the lawsuit. Each party moved for summary judgment.

The defendant admitted that the elements to establish copyright infringement had been established, but pleaded the affirmative defense of fair use.

Requirements for fair use defense. To establish fair use, under section 17 of the Copyright Act, the following factors must be considered: (1) the purpose and character of the use; (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.

Purpose and character of the use. The first fair use factor, known as the “transformative use test,” looks to whether the defendant’s new work adds something new to the original work with a “a further purpose or different character, altering the first with new expression, meaning, or message.” Here, the court ruled that because Swindelles’ videos used the copyrighted works to criticize or comment on them rather than to supersede the work’s original objects, this was a transformative use that weighed in favor of the defendant.

Nature of the copyrighted work. The second factor relates to whether: (1) the copyrighted works are factual or creative; and (2) the copyrighted works have previously been published. The court noted that works that are deemed factual receive less protection than those that are deemed creative.

Here, the court characterized the published copyrighted videos as recording a podcast on current events and the personal lives of the three men creating the podcast. Concluding that the plaintiff Thiccc Boys’ videos here were more factual than creative, the court held that the second fair use factor weighed in favor of Swindelles.

Portion used. The third fair use factor is the amount and substantiality of the portion used by Swindelles in relation to the copyright work as a whole. Here the court noted that Swindelles’ duplicated videos included segments of the copyrighted work in which he did not criticize or comment on. Thus, the court found that Swindelles copied more of the copyrighted works than was necessary. Accordingly, this factor weighed in favor of Thiccc Boys.

Effect on market and value of the copyrighted work. The court stated that this factor is the most important statutory favor relating to fair use. The court noted that case law has held that damage to a copyrighted work’s marketability by criticism or commentary is not considered as harm under the fourth fair use factor. Additionally, Swindelles’ videos are unlikely to function as substitutes for the copyrighted works. The court held that this factor weighed in favor of Swindelles.

Balancing the factors. Based on the fact that three out of four of the fair use factors favored Swindelles, the could concluded that Swindelles’ use of the copyrighted material was fair.

Sanctions. Swindelles argued that Thiccc filed the present action to “harass, silence and intimidate” Swindelles with expensive, prolonged litigation. In support of imposing sanctions against Thiccc, Swindelles pointed to a statement made on a podcast by Thiccc principal executive Brendan Schaub. Shortly before this litigation began, Schaus boasted that he was “finally going after anyone who harasses him online.” Schaus further stated that he had “spent half a million dollars on monster lawyers and [I] have friends in dark places who are going to get the job done.”

Although the court stated that the statement made by Schaub were “troublesome,” alone the statement did not show that the purpose of this litigation was harassment when Thiccc Boy’s claims potentially had merit.

Court action. The district court denied the plaintiff’s motion for summary judgment, and granted the defendant’s motion for summary judgment. The defendant’s motion for Sanctions was denied.

The Case is No. 1:22-cv-00090-MSM-PAS.

Attorneys: Robert Edward Allen (Glaser Weil Fink Howard Jordan & Shapiro LLP) for Thiccc Boy Productions Inc. Kyle Swindelles, pro se.

Companies: Thiccc Boy Productions Inc.

Cases: Copyright RhodeIslandNews