'South Park' Wins 'What What (in the Butt)' Legal Fight

What What in the Butt Screen Shot - H 2011

What What in the Butt Screen Shot - H 2011

An appeals court has refused to revive a lawsuit against Viacom subsidiary Comedy Partners over a viral Internet video that was allegedly misappropriated in an episode of South Park.

Last summer, a Wisconsin federal judge threw out a lawsuit brought by Brownmark Films, owner of web video sensation "What What (In the Butt)" from singer Samwell. The judge decided that the South Park parody of the video was a clear case of "fair use."

On Thursday, the 7th Circuit Court of Appeals ruled that while judges can't always address affirmative defenses like fair use in deciding when to dismiss lawsuits, when they have the relevant facts before them, judges have discretion to toss a case at the preliminary stage.

In 2008, South Park aired an episode called "Canada on Strike," which satirized the 2007-08 Writers Guild of America strike, viral videos and the difficulty of monetizing Internet fame. In the episode, the South Park characters create their version of "What What (In the Butt)" to accrue enough "Internet money" to buy off the striking Canadians, an episode that ironically led to the owners of a real-life Samwell video seeking their own compensation in a courtroom.

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A federal judge ruled that South Park's producers made "transformative" use of the video by accomplishing "the seemingly impossible -- making the 'WWITB' video even more absurd by replacing the African-American male singer with a naive and innocent 9-year-old boy dressed in adorable outfits.”

Brownmark was even ordered to pay Viacom's legal fees.

The owner of "What What (In the Butt)" wasn't happy, so the company appealed the judgment. The appeal made strange bedfellows. For instance, the Electronic Frontier Foundation, which has been one of Viacom's most vocal critics in its legal pursuit of YouTube, filed an amicus brief in support of Viacom.

On Thursday, a panel of three judges unanimously agreed that the judge had appropriately dismissed the case.

"Brownmark correctly notes that courts usually should refrain from granting Rule 12(b)(6) motions on affirmative defenses," writes Judge Richard Cudahy in his opinion, referring to the type of motion seeking dismissal for failure to state a claim upon which relief can be granted. "These defenses typically turn on facts not before the court at that stage in the proceedings. But when all relevant facts are presented, the court may properly dismiss a case before discovery on the basis of an affirmative defense."

The appellate judge says that all that was needed in this instance was the two videos in question: the original "What What (In the Butt)" and the relevant South Park clip.

Viacom gets a win, and the 7th Circuit addresses what judges should do about frivolous copyright infringement lawsuits.

VIDEO: Judge Slams Attorneys in 'South Park' 'What What (In the Butt)' Copyright Lawsuit

Comedy Partners argued that the appellate circuit should encourage courts to consider affirmative defenses on Rule 12(b)(6) motions to reduce nuisance lawsuits. The judge writes that he is "sympathetic" to that goal but doesn't see the need to enlarge the role of these motions as there are other ways to seek dismissal at preliminary stages of cases.

The reason the broadcaster of South Park chose a motion to dismiss instead of a motion for summary judgment, the 7th Circuit supposes, was to avoid opening the door to discovery, which not only would have been expensive but also might have allowed Brownmark a peek at financial data relating to the long-running animated show.

"Ruinous discovery heightens the incentive to settle rather than defend these frivolous suits," writes Cudahy. But he adds that a judge doesn't need to go there. "District courts need not, and indeed ought not, allow discovery when it is clear that the case turns on facts already in evidence."

The judge also confirms that the South Park episode qualifed as fair use. He writes, "When the two works in this case are viewed side-by-side, the South Park episode is clearly a parody of the original 'WWITB' video, providing commentary on the ridiculousness of the original video and the viral nature of certain YouTube videos."

E-mail: eriq.gardner@thr.com

Twitter: @eriqgardner

Watch Samwell's music video and the South Park clip below.