In the

United States Court of Appeals

For the Seventh Circuit

No. 11-2620

BROWNMARK FILMS, LLC,

Plaintiff-Appellant,

v.

COMEDY PARTNERS, et al.

Defendants-Appellees.

Appeal from the United States District Court

for the Eastern District of Wisconsin.

No. 10-cv-01013-JPS—J.P. Stadtmueller, Judge.

ARGUED JANUARY 17, 2012—DECIDED JUNE 7, 2012

Before EASTERBROOK, Chief Judge, and CUDAHY and

HAMILTON, Circuit Judges.

CUDAHY, Circuit Judge. This is a case about how a court

may dispose of a copyright infringement action based

on the fair use affirmative defense while avoiding

the burdens of discovery and trial. This case also poses

the interesting question of whether the incorporation-byreference doctrine applies to audio-visual works. 
2 No. 11-2620

South Park is a popular animated television show intended for mature audiences. The show centers on

the adventures of foul-mouthed fourth graders in the small

town of South Park, Colorado. It is notorious for its distinct

animation style and scatological humor. The show frequently provides commentary on current events and popculture through parody and satire. Previous episodes

have dealt with the Florida Recount, the aftermath

of hurricane Katrina and the phenomenon of celebrity

sex tapes. 

This case involves one episode entitled “Canada On

Strike,” which satirized the 2007-2008 Writers’ Guild

of America strike, inexplicably popular viral videos and

the difficulty of monetizing Internet fame. In the episode,

the nation of Canada goes on strike, demanding a share

of the “Internet money” they believe is being generated

by viral videos and other online content. The South Park

Elementary school boys—Cartman, Stan, Kyle and Butters—decide to create a viral video in order to

accrue enough “Internet money” to buy off the striking

Canadians. The boys create a video, “What What (In

The Butt),” (WWITB) in which Butters sings a paean to

anal sex. Within the show, the video is a huge hit, but

the boys are only able to earn “theoretical dollars.”

This video is a parody of a real world viral video of

the same name, featuring an adult male singing and

dancing in tight pants. The two versions of WWITB are

very similar. The South Park version recreates a large

portion of the original version, using the same angles,

framing, dance moves and visual elements. However, the
No. 11-2620 3

South Park version stars Butters, a naïve nine-year old, in

a variety of costumes drawing attention to his innocence:

at various points he is dressed as a teddy bear, an astronaut and a daisy. 

Brownmark Films, LLC (Brownmark), the copyright

holder for the original WWITB video, filed suit against

South Park Digital Studios (SPDS) and others for copyright

infringement under the Copyright Act of 1976, 17 U.S.C.

§§ 101 et seq. Brownmark’s complaint referenced both

versions of WWITB, but it did not attach either work to

the complaint. SPDS responded claiming the South Park

version was clearly fair use under § 107, attached the

two works and moved for dismissal for failure to state

a claim under Fed. R. Civ. P. 12(b)(6). Brownmark did

not address the substance of SPDS’s fair use defense,

but instead argued that the court could not consider fair

use on a 12(b)(6) motion to dismiss. The district

court concluded that “[o]ne only needs to take a fleeting

glance at the South Park episode” to determine that its

use of the WWITB video is meant “to lampoon the recent

craze in our society of watching video clips on the internet

. . . of rather low artistic sophistication and quality”—in

other words, fair use. The court granted SPDS’s motion

to dismiss based on the fair use affirmative defense. 

Brownmark appeals, arguing that an unpleaded affirmative defense of fair use is an improper basis for granting a

motion to dismiss under Rule 12(b)(6), and that in

any event, SPDS’s WWITB video is not a fair use of the

original WWITB video. We hold that the district court

could properly decide fair use on SPDS’s motion, and we

affirm the district court’s finding of fair use.
4 No. 11-2620

Though district courts have granted Rule 12(b)(6) motions on

1

the basis of affirmative defenses and this court has affirmed

those dismissals, we have repeatedly cautioned that the proper

heading for such motions is Rule 12(c), since an affirmative

defense is external to the complaint.

I.

Brownmark correctly notes that courts should usually

refrain from granting Rule 12(b)(6) motions on affirmative

defenses. United States v. Lewis, 411 F.3d 838, 842 (7th

Cir. 2005). Rule 12(b)(6) tests whether the complaint states

a claim for relief, and a plaintiff may state a claim

even though there is a defense to that claim. The mere

presence of a potential affirmative defense does not render

the claim for relief invalid. Further, 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—typically through a Rule 12(c) Motion for Judgment on

the Pleadings —on the basis of an affirmative defense. See 1

id.; Brooks v. Ross, 578 F.3d 574, 579 (7th Cir. 2009) (approving of granting motions to dismiss based on the statute of

limitations when “the relevant dates [that establish the

defense] are set forth unambiguously in the complaint.”).

Despite Brownmark’s assertions to the contrary, the only

two pieces of evidence needed to decide the question

of fair use in this case are the original version of WWITB

and the episode at issue. Brownmark’s copyright infringement claim in its amended complaint was limited to

the distribution of one episode on television, South

Park’s website, iTunes and Amazon.com, and DVD and
No. 11-2620 5

Blu-Ray discs of “South Park Season 12 (Uncensored).”

Because the claim was limited to the production

and distribution of a single episode, the district court

was correct to rely solely on the two expressive works

referenced in Brownmark’s amended complaint and

attached to SPDS’s motion, as well as the allegations in

the complaint, to decide on the fair use defense. 

SPDS relies on the incorporation-by-reference doctrine to

maintain that reliance on the attached works does not

violate Rule 12(d), which requires that Rule 12(b)(6)

or 12(c) motions containing materials outside of

the pleadings be converted into motions for summary

judgment. It is well settled that in deciding a Rule 12(b)(6)

motion, a court may consider “documents attached to

a motion to dismiss . . . if they are referred to in the plaintiff’s complaint and are central to his claim.” Wright

v. Assoc. Ins. Cos. Inc., 29 F.3d 1244, 1248 (7th Cir. 1994).

In effect, the incorporation-by-reference doctrine provides

that if a plaintiff mentions a document in his complaint,

the defendant may then submit the document to the court

without converting defendant’s 12(b)(6) motion to a motion

for summary judgment. The doctrine prevents a plaintiff

from “evad[ing] dismissal under Rule 12(b)(6) simply

by failing to attach to his complaint a document

that prove[s] his claim has no merit.” Tierney v. Vahle,

304 F.3d 734, 738 (7th Cir. 2002). 

While the application of this doctrine to the present case

would seem to allow SPDS’s action, no court of appeals

has ruled that the content of television programs and

similar works may be incorporated by reference. Several
6 No. 11-2620

district courts have concluded that the doctrine does

apply to such works. See, e.g., Burnett v. Twentieth

Century Fox, 491 F. Supp. 2d 962, 966 (C.D. Cal. 2007);

Zella v. E.W. Scripps Co., 529 F. Supp. 2d 1124, 1131-32 (C.D.

Cal. 2007); Daly v. Viacom, 238 F. Supp. 2d 1118, 1121-22

(N.D. Cal. 2002). And we think it makes eminently

good sense to extend the doctrine to cover such

works, especially in light of technological changes that

have occasioned widespread production of audio-visual

works. The parties, however, did not brief this

issue, and so we reserve the resolution of the question

for a later date. 

II.

Following the recent trend of heightened pleading

standards, as in Ashcroft v. Iqbal, 556 U.S. 662 (2009) and

Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007), SPDS

argues that we should encourage courts to consider

affirmative defenses on 12(b)(6) motions and thereby

reduce the threat of nuisance suits. We are sympathetic

to the goal of curtailing nuisance suits, but we feel that

there is no need to enlarge the role of 12(b)(6) motions,

as there are already two other rules that address the

situation of dismissing baseless suits before discovery:

Rule 12(c) Motion for Judgment on the Pleadings and

Rule 56 Motion for Summary Judgment. Had SPDS’s

motion been captioned as a motion for summary judgment,

the district court would have employed procedure essentially identical to procedure following a 12(b)(6) motion. 
No. 11-2620 7

It appears SPDS’s reason for relying on the

incorporation-by-reference doctrine for its motion to

dismiss, rather than simply captioning its motion as

a motion for summary judgment, was its concern that such

a maneuver would open the door to discovery. The expense of discovery, which SPDS stressed at oral argument,

looms over this suit. SPDS, and amicus, the Electronic

Frontier Foundation, remind this court that infringement

suits are often baseless shakedowns. Ruinous discovery

heightens the incentive to settle rather than defend these

frivolous suits. But discovery would only follow a Rule 56

motion if the district court granted a request for discovery.

District courts need not, and indeed ought not, allow

discovery when it is clear that the case turns on facts

already in evidence. 

In this case, Brownmark did not request discovery.

Brownmark claims that it could not, as the matter before

the court was a 12(b)(6) motion, which does not allow

for discovery requests. But this is hard to believe. The

caption on a motion does not have some independent

authority that litigants or courts must respect. Rather

than relying on the notion that consideration of a fair

use defense in the context of a 12(b)(6) motion was premature, Brownmark could have provided a list of possible

evidence that would support its infringement claim

and defeat SPDS’s fair use defense. Indeed, Brownmark

provides such a list in its briefs. Brownmark argues that it

should be allowed to discover: the intent of SPDS at

the time the episode was created; all relevant video images

or clips, especially where such uses are divorced from

the Episode; and pre-airing licensing information related
8 No. 11-2620

Adopting this posture would have given SPDS greater

2

freedom in setting out its fair-use defense. In its reply brief,

Brownmark makes much of the fact that SPDS mentions Butters’

naïveté, but had not introduced evidence on Butters’ innocent

nature. While we do not feel that this case turns on any such

naïveté, SPDS could have introduced previous South Park

episodes to show that Butters has repeatedly demonstrated

a lack of understanding of sex. See, e.g., Butters’ Very Own

Episode (Comedy Central television broadcast Dec. 12, 2001)

(perceiving sex as wrestling), see also Cartman Sucks (Comedy

Central television broadcast Mar. 14, 2007); Stupid Spoiled

Whore Video Playset (Comedy Central television broadcast Dec.

1, 2004). Indeed, in one of these episodes, Butters is dressed

in the same teddy bear costume he wears in the WWITB video.

Stupid Spoiled Whore Video Playset (Comedy Central

television broadcast Dec. 1, 2004).

to the Episode. We noted during oral argument that such

a broad discovery request, surely entailing expensive ediscovery of emails or other internal communications,

gives Brownmark the appearance of a “copyright troll.”

We are confident that the district court would have refused

to grant such expansive demands. 

Therefore, rather than decide whether the videos may be

incorporated-by-reference in SPDS’s motion to dismiss,

we elect to treat SPDS’s motion as a motion for summary

judgment. SPDS ought to have captioned the motion

as such, but the miscaptioning in this case should not have

2

caused confusion, as the procedures for both motions

are essentially the same. The only possible disadvantage

to the plaintiff was the lack of notice, see Edward Gray

Corp. v. Nat’l Union Fire Ins. Co., 94 F.3d 363, 366 (7th Cir.
No. 11-2620 9

1996), but this error is harmless when the opponent

opposing the motion could not have offered any evidence

in response. And as we noted above, the district court

required only the two videos to adjudicate this issue,

especially in light of Brownmark’s failure to make

any concrete contention that the South Park episode

reduced the financial returns from the original WWITB

video. The district court could properly consider an

affirmative defense in the context of a motion for summary

judgment, which it did here, regardless of the caption

SPDS used. 

III.

Having confirmed that the district court could properly

dismiss the suit on the basis of an affirmative defense

at this early stage of the proceedings, all that remains is

to determine if the district court erred in its fair use

determination. This matter is simple because Brownmark,

in response to SPDS’s motion, did not address fair use

as applied to the WWITB videos, and instead insisted

that the court could not consider the matter at a 12(b)(6)

stage. Since Brownmark never opposed SPDS’s fair use

argument in the district court, we consider the argument

waived. 

However, even if Brownmark were not barred from

offering argument that SPDS did not engage in fair use,

we agree with the district court that this is an obvious case

of fair use. When a defendant raises a fair use defense

claiming his or her work is a parody, a court can

often decide the merits of the claim without discovery or a
10 No. 11-2620

trial. When the two works in this case are viewed side-byside, 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. 

The Copyright Act of 1976 sets forth four, non-exclusive

factors that a court must consider in determining whether

a particular use of a copyrighted work is a fair use: “(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.” 17 U.S.C.

§ 107 (2006). We consider each factor in turn, ultimately

agreeing with the district court’s analysis and findings. 

Central to determining the purpose and character of a

work is whether the new work merely supersedes

the original work, or instead adds something new with

a further purpose or of a different character.

Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 579 (1994).

The underlying purpose and character SPDS’s work

was to comment on and critique the social phenomenon

that is the “viral video.” Brownmark’s video exemplifies

the “viral video.” Through one of the South Park

characters—the innocent and naïve Butters—SPDS

imitates viral video creation while lampooning one particularly well-known example of such a video.

Moreover, the episode places Butters’ WWITB video

alongside other YouTube hits including, among others, the

Numa Numa Guy, the Sneezing Panda and the Afro Ninja.
No. 11-2620 11

This kind of parodic use has obvious transformative

value, which under § 107 is fair use. See § 107 (preamble);

Campbell, 510 U.S. at 579 (“[P]arody, like other comment

or criticism, may claim fair use under § 107.”).

The creative and expressive nature of the original

WWITB places the work within the core of copyright

protection. But this factor only establishes that the original

elements of WWITB are protected to the outer bounds of

copyright protection, which is defined by fair use. In the

case of parody, this factor offers little help to Brownmark

because “parodies almost invariably copy publicly known,

expressive works.” Id. at 586.

Regarding the third factor, SPDS’s use of the original

WWITB was not insubstantial. Certainly, SPDS used

the “heart” of the work; the work’s overall design and

distinctive visual elements. Harper & Row, Publrs. v.

Nation Enters., 471 U.S. 539, 565 (1985). But in the context of

parody, “[c]opying does not become excessive in relation

to parodic purpose merely because the portion taken

was the original’s heart.” Campbell, 510 U.S. at 588. Parody

therefore “presents a difficult case.” Id. Indeed, it may

even seem as an anomaly under fair use that parody, a

favored use, must use a substantial amount of qualitative

and quantitative elements to create the intended allusion;

there are few alternatives. But when parody achieves

its intended aim, the amount taken becomes reasonable

when the parody does not serve as a market substitute

for the work. See id. (“[H]ow much more is reasonable

will depend . . . on the extent to which the [work’s] overriding purpose and character is to parody the original or,
12 No. 11-2620

in contrast, the likelihood that the parody may serve as a

market substitute for the original.”). The South Park

WWITB is clearly a parody and has not supplanted the

original WWITB.

It follows from the third factor that SPDS’s parody

cannot have an actionable effect on the potential market for

or value of the original WWITB video under the fourth

factor. As the South Park episode aptly points out, there

is no “Internet money” for the video itself on YouTube,

only advertising dollars that correlate with the number

of views the video has had. It seems to this court that

SPDS’s likely effect, ironically, would only increase

ad revenue. Any effect on the derivative market for

criticism is not protectable. Id. at 592. And the plaintiff

has failed to give the district court or this court

any concrete suggestion about potential evidence indicating that the South Park parody has cut into any real market

(with real, non-Internet dollars) for derivative uses of

the original WWITB video.

We agree with the district court’s well-reasoned and

delightful opinion. For these reasons, the judgment of the

district court is AFFIRMED.

6-7-12