INSIGHT: What Is ‘Fair Use’? The 1985 Chicago Bears Have the Answer

A constant question most intellectual property lawyers get from clients is “what is fair use?” or “does this qualify as fair use?” It’s a tough question because the analysis is always so fact-specific, but a recent court decision involving a well-known Chicago Bears rap video offers a thorough analysis of what might be considered a textbook case of the fair use doctrine.

There are no bright line rules and relying on the fair use doctrine to use another’s copyrighted work is always a risky venture. Many licenses have been taken out from copyright owners to use their material even though, most likely, a license would not have been necessary.

But rather than risk fighting through a fair use defense, many will just pay a license as a type of insurance policy. That is a fine approach in many circumstances because litigating fair use claims is expensive and not easily handicapped.

Blueprint for Fair Use

A recent case about the use of snippets from the iconic and first-of-its -kind Super Bowl Shuffle “rap” video (YouTube it, kids) gives us a wonderful road map and analysis to fair use jurisprudence

Judge Virginia Mary Kendall, writing for the Northern District of Illinois (and clearly enjoying herself doing so) in the case of Red Label Music Publishing v. Chila Productions, (No. 1:18-cv-07252, May 30, 2019) penned a marvelously insightful opinion on a difficult topic to evaluate.

For those of you over 40 who grew up under a rock, and for the millennials reading this, the 1985 Chicago Bears was one of the greatest football teams ever assembled and most certainly had the best defense ever to grace the gridiron. During the middle of the season, they filmed a promotional rap music video (yes, music videos were popular back then) with several players featured singing and dancing. The video was an instant hit and launched “Da Bears” into legendary status.

That the Bears made the video, rapping about a likely Super Bowl victory would be unheard of today (talk about bulletin board material for the other teams still on the schedule), but it worked back then.

In 2016, ESPN aired as part of its “30 for 30” series a documentary about the 1985 Chicago Bears. For those who came of age in Chicago in the 80s, it is a must-watch, but more importantly, for historical purposes, the story of the ‘85 Bears could not be told without references to and clips from the Super Bowl Shuffle video. And therein lies the rub.

The filmmakers chose not to take a license from the copyright holders of the original video and instead relied upon the fair use doctrine. The inevitable lawsuit followed. On summary judgment, Kendall found that the uses of the video in the documentary were protected as fair use. Her ruling provides a thorough analysis of what might be considered a textbook case of the fair use doctrine.

Four Factors

As mentioned at the top of this post, we IP lawyers struggle when giving clients advice about fair use because we are guided by four factors that are difficult to distill to the varying fact patterns that arise. These factors are:

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. (17 USC Sec. 107)

The amount of the work used is always critical. A wholesale copy of the entirety of the work is tough to overcome, but selective uses appropriate for the purpose of the alleged infringing work weighs in favor of fair use.

The documentary in question used eight seconds of the song and 59 seconds of the video. The court noted that the use of these clips served none of the same functions as the original (namely, to entertain), but instead were used solely as “historical guideposts.”

Kendall referred to the uses as “transformative,” which is a term of art used by many courts to illustrate examples of when uses go beyond the original purpose of a work to one that is protectable in its own right without permission of the original owner of the content.

‘Transformative’ Works

For example, Tiger Woods owns his very valuable rights of publicity (we can’t put his picture on a package of gum without his permission), but when an artist trades on Tiger’s fame and paints a portrait of Tiger letting out a primal roar after sinking that last putt of the 2019 Masters and sells a bunch of them, much to the dismay of Mr. Woods, he will have no right to either stop or profit from that artist’s endeavor, as the portrait will most certainly be deemed “transformative.”

Would people buy the portrait if the subject was not Tiger Woods? Probably not, but that doesn’t matter. The artist is free to trade on Tiger’s fame because of the nature of the portrait being “transformative.”

The Super Bowl Shuffle was deemed protected because it was used as “factual content to tell new historical narratives about the players and franchise.” The transformative nature of the filmmakers’ use of the Shuffle clips means that it was used fairly in the copyright sense.

We don’t know yet if the original copyright holders will appeal the ruling, but if they do, it will give the Seventh Circuit an opportunity to add to the jurisprudence on this important topic. Appeal or no appeal, it is safe to say that Kendall’s analysis will find its way into many a brief arguing for the application of the fair use doctrine.

This column does not necessarily reflect the opinion of The Bureau of National Affairs, Inc. or its owners.

Author Information

Daniel DeCarlo is a partner in the Los Angeles office of Lewis Brisbois and co-chair of the Intellectual Property & Technology Practice. Since 1992, DeCarlo has focused on complex business litigation concentrating on trademark and Lanham Act claims, copyright litigation, unfair competition litigation, false advertising, trade secret litigation, patent litigation, right of publicity and related business torts.