Use of Unlicensed Clip

December 26, 2003

Use of Unlicensed Clip in Comedy Central Program is Fair Use

(Originally published in the Entertainment Law column in the New York Law Journal, December 26, 2003.)

The Federal District Court for the Southern District has decided that the use of television clips in the introduction to a segment of Comedy Central’s “The Daily Show” and in a commercial promoting that program does not violate the rights of the copyright proprietor of those clips.1 The Court analyzed elements of fair use and parody in granting defendants’ motion for summary judgment.

Plaintiff is a comedian and former stripper who, since 1995, has hosted her own program entitled “The $andy Kane Comedy Show” (“Plaintiff’s Program”) on public access television. In that program, she sings, dances and delivers explicit jokes while wearing little or no clothing.

“The Daily Show” appears nightly on Comedy Central, a national cable television network. A clip from Plaintiff’s Program was used to introduce a segment of “The Daily Show” called “Public Excess” which mocks various public access programs by presenting and commenting on clips from those shows. The “Public Excess” segment opens with a full-screen image from Plaintiff’s Program, showing plaintiff dancing in a bikini. The title of the show can be seen in the background of the clip as it originally appeared. The full-screen image remains on the screen for less than a second and then shrinks to the lower left corner to make room for three other clips which form a square video collage. The entire introduction lasts six seconds. Plaintiff’s Program, from which the clip was taken, is approximately one half-hour in length.

A shorter portion of the same clip from Plaintiff’s Program is used in a commercial promoting “The Daily Show.” An announcer states, “The Daily Show: comprehensive, extensive, offensive,” and as the word “offensive” is mentioned, there is the appearance of the half-second clip from Plaintiff’s Program.

Plaintiff brought suit alleging copyright and trademark infringement. She complains only of the clips used in the introduction to the “Public Excess” segment and the commercial promoting “The Daily Show.” She does not specifically challenge the use of her clip in the body of the “Public Excess” segment. Defendants alternatively moved to dismiss the action for failure to state a claim or for failure to raise genuine issues of fact. The Court treated the entire application as a motion for summary judgment.

Before turning to an examination of the four fair use factors applicable in a copyright infringement claim, the Court notes that an advertisement which uses a copyrighted work does not necessarily infringe that copyright if the product that it advertises constitutes a fair use of the copyrighted work. Further, an advertisement itself may itself constitute a fair use.

The Court then examines defendants’ claim that the use of plaintiff’s material was a fair use under the Copyright Act. The Act provides that the reproduction of a copyrighted work is not an infringement of copyright if it is used for purposes such as criticism, comment, news reporting, teaching, scholarship or research. In determining whether the work has been used for such a purpose, the statute lists four non-exclusive factors to consider: (i) the purpose and character of the use, (ii) the nature of the copyrighted work, (iii) the amount and substantiality of the portion used, and (iv) the effect of the use upon the potential market for or value of the copyrighted work.

The decision considers two elements in its analysis of the first factor: whether such use is of a commercial nature or is for non-profit educational purposes and whether such use is transformative in nature.

As to the former, although the Court notes that, in general, commercial use of a work will weigh against a finding of fair use, the Supreme Court in the often-cited decision Campbell v. Acuff-Rose Music, Inc.2 discounted the force of commerciality in applying a fair use analysis, noting that “No man but a blockhead ever wrote except for money.”

According to the Court, more important to an analysis of the first factor than whether the use is of a commercial nature is whether the use of the original work is “transformative” in nature, i.e., whether the copying work merely supplants the original or, instead, adds something new, with a further purpose or different character, altering the first with new expression, meaning or message.

One such transformative use that typically is found to be fair use is a parody, characterized in Campbell as an attempt to mimic an original, expressive and usually famous work. Defendants argue that the use of clips from Plaintiff’s Program is properly analyzed as a parody merely because of the underlying format of “The Daily Show” which mimics news programs. The Court notes that, unlike a parody, the use in this case of plaintiff’s clips did not involve an altered imitation of a famous work, but the presentation of an obscure original work in a mocking context. The only similarity between a parody and the work here at issue is the element of ridicule.

Nevertheless, it is precisely this common element of ridicule that matters to an analysis of the first factor of the fair use inquiry. The only significance in deeming a work as a parody is the concomitant determination that is contains elements of commentary and criticism.

By airing the clip from Plaintiff’s Program in a segment called “Public Excess” and adding some derisive commentary, defendants unquestionably used her material for the purpose of criticism. Virtually any clip appearing on Comedy Central, by virtue of the crux of the show itself, is concerned with ridicule. In presenting Plaintiff’s Program, defendants sought to critically examine the quality of plaintiff’s “Public Access” television show. Thus, the first factor of the fair use inquiry, purpose and character of the use, strongly favors defendants.

The second factor, the nature of the copyrighted work, might seem to favor plaintiff because the creative nature of her television show places it in the “core of intended copyright protection.” However, courts have recognized that this factor may be of less importance when assessed in the context of certain transformative uses. Thus, even if this factor does favor plaintiff, it is without much force.

The third factor considers 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. To be considered is how much of the original work is used and whether the borrowed material forms the “heart” of the original work. As to the former, only two seconds of Plaintiff’s Program were used. As to the latter, plaintiff claims that the portion used constitutes the equivalent of the “heart of her program because it contains her signature song ‘I Love Dick.’” However, the song barely can be heard in the six second clip shown in the body of “Public Excess” and certainly cannot be heard in the introductory or promotional uses. Further, the Supreme Court has observed that it is difficult to apply this “heart” test to cases involving criticism or commentary. Accordingly, the Court finds that this factor favors defendants.

The fourth factor measures “the effect of the use upon the potential market for or value of the copyrighted work.” In assessing this factor, a court must consider whether the secondary use usurps or substitutes for the market of the original work.

Although both Plaintiff’s Program and “The Daily Show” may serve a similar market for comedy, defendants’ use of plaintiff’s material is highly unlikely to have a negative effect on the market for Plaintiff’s Program.

After considering the claim by plaintiff that the Court must consider any effect defendants’ use might have on plaintiff’s ability to collect licensing fees from derivative works, and analyzing what it refers to as the “circularity” of that argument, if finds that the fourth factor also favors defendants.

The opinion indicates that the above four factors are non-exclusive and serve only as a guide to promote the purposes of the underlying copyright law. For example, courts occasionally consider whether the defendant exercised good faith in its actions. Even if, as plaintiff here suggests, defendants intended to obtain her consent by giving her a misleading impression of the copyright law, there is no evidence that plaintiff relied to her detriment on such representations. In fact the basis of her complaint is that the use of her clip was completely unauthorized.

Because there is no genuine issue of material fact with respect to any of the fair use factors, defendants’ use of plaintiff’s copyrighted material qualifies as a non-infringing fair use under section 107 of the Copyright Act. Accordingly, the Court grants summary judgment in favor of defendants on plaintiff’s copyright claims.

After analyzing and rejecting the Lanham Act and other claims of plaintiff, the Court grants in its entirety defendants’ motion for summary judgment and dismisses plaintiff’s action.


1 Kane v. Comedy Partners et al, 2003 WL 22383387 (S.D.N.Y.) (October 16, 2003).

2 510 U.S. 569 (1994)