Barre et al v. Carter et al

Filing 104

ORDER: IT IS HEREBY ORDERED that Defendants' 50 Motion to Dismiss for Failure to State a Claim is GRANTED to the extent that it seeks dismissal of Plaintiffs' claim for unjust enrichment and DENIED to the extent that it seeks dismissal of Plaintiffs' copyright infringement claim on fair use grounds, Plaintiffs' false endorsement claim under the Lanham Act, and Plaintiffs' LUTPA claim. Signed by Judge Nannette Jolivette Brown on 7/25/2017. (mmv)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF LOUISIANA
THE ESTATE OF ANTHONY BARRÉ AND
HIS SOLE HEIR, ANGEL BARRÉ

CIVIL ACTION

VERSUS

CASE NO. 17-1057

BEYONCÉ KNOWLES CARTER, et al.

SECTION: “G” (5)

ORDER
In this litigation, the Estate of Anthony Barré and Angel Barré (collectively, “Plaintiffs”),
allege that the writers, performers, producers, record labels, distributors, and publishers who
produced the song “Formation,” the album “Lemonade,” and the “Formation World Tour” used
the actual voice and copyrighted works of Anthony Barré without authorization or compensation.1
Pending before the Court is Defendants Beyoncé Knowles Carter (“Carter”), Parkwood
Entertainment, LLC, Sony Music Entertainment, Michael L. Williams III, Khalif Brown, Asheton
Hogan, Eardrummers Entertainment, LLC, Eardrummers Music Publishing, LLC, Oakland 13
Music, Warner-Tamerlane Corporation, Warner-Tamerlane Publishing Corp., Pretty Bird Pictures,
Inc., Melina Matsoukas, and Aspiro AB’s (collectively, “Defendants”) “Motion to Dismiss for
Failure to State a Claim.”2 Having considered the motion, the memoranda in support and
opposition, and the applicable law, the Court will grant Defendants’ motion to the extent that it
seeks dismissal of Plaintiffs’ unjust enrichment claim, as there are other remedies available at law
to Plaintiffs such that Louisiana law precludes an unjust enrichment claim here, and deny

1

Rec. Doc. 2 at 1–2.

2

Rec. Doc. 51.

1

Defendants’ motion as to the extent that it seeks dismissal of Plaintiffs’ copyright infringement
claims on fair use grounds, Plaintiffs’ false endorsement claim under the Lanham Act, and
Plaintiffs’ LUTPA claim.
I. Background
A.

Factual Background
In this litigation, Plaintiffs allege that they own a protectable copyright interest in two

YouTube videos created by Anthony Barré, also known as “Messy Mya:” (1) “Booking the Hoes
from New Wildings;” and (2) “A 27 Piece Huh?”3 According to Plaintiffs, Anthony Barré was a
well-known performance comedian and music artist in New Orleans who published more than a
hundred videos of his performances, receiving over two million views on YouTube.4 Plaintiffs
further allege that Anthony Barré produced or was featured in numerous songs with other famous
local artists, such as Freddie Ross (“Big Freedia”) and Magnolia Shorty.5 Plaintiffs argue that
Anthony Barré’s voice was a unique instrument and inextricably linked to his performance art.6
Plaintiffs aver that Anthony Barré created “Booking the Hoes from New Wildings” in New
Orleans on August 19, 2010, and published the work on YouTube the same day. 7 Plaintiffs point
out that that the video includes Anthony Barré saying, “What happened at the New Orleans,” which
Plaintiffs allege was misappropriated and infringed by Defendants.8 Plaintiffs also state that

3

Rec. Doc. 2 at 3, 12.

4

Id. at 12.

5

Id.

6

Id. at 13.

7

Id.

8

Id.

2

Anthony Barré created “A 27 Piece Huh?” in New Orleans on September 3, 2010, and published
that work the same day.9 According to Plaintiffs, that video features Anthony Barré saying, “Oh
yeah baby. I like that” and “Bitch I’m back by popular demand,” which Plaintiffs allege was
misappropriated and infringed by Defendants as well.10
Plaintiffs aver that Anthony Barré was murdered on November 10, 2010.11 Plaintiffs
contend that Angel Barré, Anthony Barré’s sister and sole heir, was appointed as the Independent
Administrator of the Estate of Anthony Barré.12 Plaintiffs assert that on April 25, 2016, Plaintiffs
applied for and received copyright registrations for both YouTube videos as “works of
performance art.”13
Plaintiffs assert that Defendants released the single song “Formation” on February 6, 2016,
in which the voice of Anthony Barré is featured saying three phrases from Anthony Barré’s works,
i.e. “What happened at the New Orleans,” “Bitch I’m back, by popular demand,” and “Oh yeah
baby. I like that.”14 Plaintiffs further state that “Formation” was included on the album
“Lemonade,” which was released on April 23, 2016.15 Plaintiffs also argue that Anthony Barré’s
voice, performance, and words were used and exploited by Defendants during the “Formation
World Tour.”16 For example, Plaintiffs allege that Anthony Barré’s voice is heard saying, “Oh

9

Id.

10

Id. at 13–14, 18.

11

Id. at 13.

12

Id. at 14.

13

Id.

14

Id. at 15, 19.

15

Id. at 16–17.

16

Id. at 18.

3

yeah baby, I like that” during the introductory performance of “Formation,” and that Defendants
utilized other performers, such as Big Freedia, to imitate Anthony Barré’s voice and cadence in
saying, “Bitch I’m Back by Popular Demand” before Carter appeared onstage.17
Plaintiffs point out that “Formation” was initially released exclusively via the “Tidal”
music distribution service, which allegedly resulted in Defendants receiving more than a million
new subscribers paying $12.99 per month.18 Plaintiffs also allege that Defendants sold more than
543,000 copies of “Formation” in the United States, and that some or all of those sales included
Plaintiffs’ intellectual property.19 Moreover, Plaintiffs contend that Defendants’ “Formation
World Tour,” during which the infringing works were allegedly performed, resulted in sales of
more than two million tickets and revenues of more than $250 million.20 Additionally, Plaintiffs
argue that Anthony Barré’s voice, words, and performance from “A 27 Piece Huh?” were used
and exploited during the “Formation World Tour” to provide a false and unauthorized endorsement
of Carter and the “Formation World Tour.”21
Plaintiffs argue that Anthony Barré’s voice set the tone, mood, setting, and location for
“Formation.”22 However, Plaintiffs aver that Defendants failed to secure any license or offer
compensation to copy and exploit Anthony Barré’s two works.23 Plaintiffs further contend that

17

Id.

18

Id. at 16–17.

19

Id.

20

Id.

21

Id. at 18.

22

Id. at 19.

23

Id. at 21–22.

4

Anthony Barré’s voice, words, and performance were used and exploited by Defendants to provide
a false and unauthorized endorsement of “Formation” and the “Formation World Tour” that
created consumer confusion as to Anthony Barré’s and Plaintiffs’ involvement with Defendants’
works.24 According to Plaintiffs, Defendants are liable for $20 million in damages for copyright
infringement under the Copyright Act, false endorsements under the Lanham Act, violations of the
Louisiana Unfair Trade Practices Act (“LUTPA”), and unjust enrichment under Louisiana law.25
B.

Procedural History
Plaintiffs filed a complaint in this Court on February 6, 2017. 26 On February 7, 2017,

Plaintiffs filed an amended complaint.27 On March 10, 2017, and March 31, 2017, the Court
granted Defendants’ motions for extensions of time to answer Plaintiffs’ complaint.28 On April 14,
2017, Defendants filed the instant motion to dismiss.29 On April 28, 2017, the Court granted
Plaintiffs’ motion to continue the submission date on the instant motion, and set the motion for
submission on June 7, 2017.30 On May 19, 2017, Plaintiffs filed an opposition.31 On June 5, 2017,

24

Id. at 18.

25

Id. at 29, 32–33.

26

Rec. Doc. 1.

27

Rec. Doc. 2.

28

Rec. Docs. 42, 43, 46.

29

Rec. Docs. 50. The motions were originally filed by Defendants Beyoncé Knowles Carter, Parkwood
Entertainment, Sony Music Entertainment, Michael L. Williams III, Khalif Brown, Asheton Hogan, Eardrummers
Entertainment, Eardrummers Music Publishing, Oakland 13 Music, Warner-Tamerlane Publishing Corp., WB Music
Corporation, Pretty Bird Pictures, and Melina Matsoukas. See Rec. Doc. 50-1. On April 20, 2017, the Court granted
Defendant Aspiro AB’s motion to join in the two instant motions. Rec. Doc. 68.
30

Rec. Doc. 71.

31

Rec. Doc. 73.

5

with leave of Court, Defendants filed a reply.32 On June 12, 2017, with leave of Court, Plaintiffs
filed a sur-reply.33 On June 20, 2017, Defendants filed a “Notice of Supplemental Authority in
Support of Motion to Dismiss.”34 On June 21, 2017, Plaintiffs filed a response to Defendants’
notice of supplemental authority.35
On May 30, 2017, the Court granted Plaintiffs’ request for oral argument on Defendants’
instant motion to dismiss and Defendants’ motion to strike, and set the motions for oral argument
on June 7, 2017, at 10:00 a.m.36 On June 6, 2017, Defendants filed a motion to continue oral
argument to June 21, 2017.37 However, because the Court determined it had sufficient information
to decide the motions without oral argument, and because the parties’ proposed date of June 21,
2017, conflicted with a jury trial that was expected to move forward, the Court cancelled oral
argument in lieu of continuing it.38
II. Parties’ Arguments
A.

Defendants’ Arguments in Support of the Motion to Dismiss
In their motion to dismiss, Defendants concede that the “Formation” music video and the

live performances during the “Formation World Tour” include approximately ten seconds of audio
from two of Anthony Barré’s YouTube videos.39 In particular, Defendants aver that the music

32

Rec. Doc. 85.

33

Rec. Doc. 90.

34

Rec. Docs. 91, 95.

35

Rec. Doc. 93.

36

Rec. Doc. 76.

37

Rec. Doc. 81.

38

Rec. Doc. 82.

39

Rec. Doc. 50-1 at 2.

6

video uses four seconds of audio from Anthony Barré’s five minute and fourteen second YouTube
video titled “Booking the Hoes from New Wildings.”40 Defendants also state that the music video
uses approximately six seconds of audio of Anthony Barré from the one minute and fifty-three
second YouTube video titled “A 27 Piece Huh?”41
Dismissal of certain Defendants involved in the production of the “Formation”
single and the Super Bowl Half-Time show

1.

However, Defendants argue that Anthony Barré’s YouTube videos were not used in the
sound recording and composition of the single “Formation” or during the Super Bowl Half-Time
show.42 Therefore, Defendants argue that all Defendants who were solely involved in producing
the sound recording and composition of “Formation” or the Super Bowl Half-Time show should
be dismissed with prejudice.43 Defendants point out that the Court may consider the source
material itself on this motion to dismiss, as all of the works were referred to and incorporated by
reference into Plaintiffs’ complaint.44 Defendants contend that courts “routinely consider” such
works at the pleading stage in copyright and trademark actions.45 Defendants further inform the

40

Id. at 4–5.

41

Id. at 5.

42

Id. at 2, 4.

43

Id. at 2, 6–7, 24. In particular, Defendants request that the following Defendants, who Plaintiffs did not
allege had any involvement in the music video or live performances, be dismissed with prejudice: (1) Parkwood
Entertainment; (2) Michael L. Williams; (3) Khalif Brown; (4) Asheton Hogan; (5) WB Music Corporation;
(6) Warner-Tamerlane Publishing Corp.; (7) Eardrummers Music Publishing; and (8) Oakland 13 Music. Id. at 24–
25.
44

Id. at 2, 6–7 (citing Causey v. Sewell Cadillac-Chevrolet, 394 F.3d 285, 288 (5th Cir. 2004)).

45

Id. at 7 (citing Caner v. Smathers, 2014 WL 12580461, at *4 (N.D. Tex. 2014); Faulkner Literary Rights
v. Sony Pictures, 953 F. Supp. 2d 701, 705 n.2, 712 (N.D. Miss. 2013); Louis Vuitton Malletier S.A. v. Warner Bros.
Entm’t, 868 F. Supp. 2d 172,183 (S.D.N.Y. 2012); Randolph v. Dimension Films, 630 F. Supp. 2d 741, 744 (S.D. Tex.
2009), aff’d, 381 Fed. App’x. 449 (5th Cir. 2010); Burnett v. Twentieth Century Fox Film Corp., 491 F. Supp. 2d 962,
974 (C.D. Cal. 2007)).

7

Court that, while beyond the scope of a motion to dismiss, Defendant Pretty Bird also received a
license from Anthony Barré’s family to use his works.46
2.

Dismissal of Plaintiffs’ copyright infringement claims under the fair use
doctrine

Defendants argue that even in the absence of a license, Defendants’ use of small clips of
Anthony Barré’s YouTube videos in Defendants’ music video and live performances is protected
by the fair use doctrine.47 According to Defendants, pursuant to Section 107 of the Copyright Act,
the fair use doctrine creates a “privilege to use copyrighted material in a reasonable manner without
the consent of the copyright owner.”48 Defendants represent that courts consider four nonexclusive factors when determining whether the use of a copyrighted work is “fair use:” (1) “the
purpose and character of the use, including whether such use is of a commercial nature or is for
nonprofit educational purposes;” (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.”49
i.

First fair use factor: the purpose and character of the use

Defendants argue that the Supreme Court has held that the first fair use factor is used to
determine “whether the new work merely supersedes the objects of the original creation, or instead
adds something new, with a further purpose or different character, altering the first with new
expression, meaning, or message.”50 In other words, Defendants aver, courts look to whether the

46

Id. at 2.

47

Id. at 2, 8.

48

Id. at 8 (citing Lewis Galoob Toys v. Nintendo, 964 F.2d 965, 969 (9th Cir. 1992)).

49

Id. (quoting 107 U.S.C. § 107).

50

Id. at 9 (quoting Campbell v. Acuff-Rose Music, 510 U.S. 569, 579 (1994); Brownmark Films v. Comedy

8

new work is “transformative,” which the Supreme Court has determined is “the heart of the fair
use doctrine’s guarantee of breathing space within the confines of copyright.”51 Defendants further
argue that transformative works include “those that are used for a wholly different purpose than
the original.”52 Defendants point to Cariou v. Prince, where the Second Circuit determined that an
artist who had altered the plaintiff’s photographs of Rastafarians from the plaintiff’s book were
transformative, as they “have a different character, give Cariou’s photographs a new expression,
and employ new aesthetics with creative and communicative results distinct from Cariou’s.”53
Defendants further assert that in Seltzer v. Green Day, the Ninth Circuit held that Green Day’s use
of a “slightly modified version of the plaintiff’s illustration of a screaming face throughout a fourminute video” as a backdrop during a performance of a song about “the violence that is done in
the name of religion” was protected under the fair use doctrine, as the plaintiff’s copyrighted work
was used as “raw material” to create something different.54
Here, Defendants argue that certain Defendants used audio from Anthony Barré’s
YouTube videos as “raw material” in the creation of a music video about “black Southern
resilience that featured depictions of the history and culture of New Orleans.” 55 Defendants allege
that the YouTube videos were “only a component” of the music video and live performances,56

Partners, 682 F.3d 687, 693 (7th Cir. 2012)).
51

Id. (citing Campbell, 510 U.S. at 579).

52

Id. at 10.

53

Id. at 9 (citing Cariou v. Prince, 714 F.3d 694, 706 (2d Cir. 2013)).

54

Id. (quoting Seltzer v. Green Day, 725 F.3d 1170, 1173–74 (9th Cir. 2013)).

55

Id. at 2–3, 10.

56

Id. at 11.

9

and that Defendants’ works “employed new aesthetics with creative and communicative results
distinct from” Anthony Barré’s YouTube videos.57 Moreover, Defendants assert that the small
clips of the YouTube videos were used for an entirely different purpose than the originals.58
According to Defendants, in his YouTube videos, Anthony Barré “speaks stream-of-consciousness
to the camera as he walks the streets of New Orleans, in one video criticizing several woman he
knew, and in the other complimenting a woman’s hair.”59 By contrast, Defendants contend, they
used the short audio clips for a “highly transformative use” to, as Plaintiffs alleged in their
complaint, “create the tone, mood, setting and location of the New Orleans-themed ‘Formation.’”60
ii.

Second fair use factor: the nature of the copyrighted work

Next, Defendants aver that the second factor requires courts to evaluate “whether or not a
work is published,” as the scope of fair use “is narrower with respect to unpublished works.”61
Here, Defendants argue that this factor weighs in favor of a finding of fair use, as it is undisputed
that Anthony Barré published his YouTube videos in 2010 prior to Defendants’ use of the videos.62
iii.

Third fair use factor: substantiality of the use

According to Defendants, the third factor “asks whether the amount and substantiality of
the portion used in relation to the copyrighted work as a whole are reasonable in relation to the

57

Id.

58

Id. at 11.

59

Id.

60

Id. (citing Rec. Doc. 2 at 1).

61

Id. (citing Arica Inst. v. Palmer, 970 F.2d 1067, 1078 (2d Cir. 1992); Swatch, 756 F.3d at 87, 89; Seltzer,
725 F.3d at 1178).
62

Id. at 12.

10

purpose of the copying.”63 Therefore, Defendants argue that an allegedly infringing work that
captures little of the original work is likely to be a fair use. 64 For example, Defendants point out
that in SOFA Entertainment v. Dodger Products, the Ninth Circuit determined that the use of a
seven second clip from The Ed Sullivan Show in a musical about The Four Seasons was
quantitatively and qualitatively insignificant, and that Ed Sullivan’s “charismatic personality” was
not copyrightable.65 Here, Defendants aver that the music video used only four seconds of a five
minute and fourteen second clip and six seconds of a one minute and fifty three second clip, while
the live performances used only the six second audio clip.66 Thus, Defendants argue that the third
factor weighs strongly in favor of fair use in light of the “insignificant amount of the YouTube
Videos” used.67
iv.

Fourth fair use factor: the effect on the market

Finally, Defendants state that the fourth factor asks courts to weigh “the effect of the
secondary use upon the potential market for the value of the copyrighted work.”68 Defendants
assert that the focus is on whether the secondary use “usurps the market of the original work.” 69
According to Defendants, in Cariou, the Second Circuit held that there was no effect on the
potential market for the plaintiff’s photographs of Rastafarians as the plaintiff “has not actively
marketed his work or sold his work for significant sums, and nothing in the record suggests that

63

Id. (quoting Campbell, 510 U.S. at 586).

64

Id. (citing Seltzer, 725 F.3d at 1178).

65

Id. (quoting SOFA Entm’t v. Dodger Prods., 709 F.3d 1273, 1278 (9th Cir. 2013)).

66

Id. at 13.

67

Id.

68

Id. (citing Cariou, 714 F.3d at 708).

69

Id. (quoting Blanch, 467 F.3d at 258).

11

anyone will not now purchase Cariou’s work.”70 Defendants argue that Plaintiffs here have not
established that the use of ten seconds of audio from YouTube videos will usurp the market for
Plaintiffs’ works, “if any such market exists.”71 Defendants point out that Plaintiffs fail to make
any factual allegations that Anthony Barré sold or licensed any of his videos or that Defendants’
use somehow harmed the value of Plaintiffs’ works.72 Rather, Defendants contend that
Defendants’ use of the works “helped (or perhaps even created) that market” for Anthony Barré’s
works.73 In sum, Defendants argue that all four favors weigh in favor of a finding of fair use.74
Dismissal of Plaintiffs’ false endorsement claim

3.

Furthermore, Defendants argue that Plaintiffs are attempting to improperly assert claims
that extend beyond the applicable realm of copyright law.75 Defendants contend that Plaintiffs’
false endorsement claim fails because the Lanham Act is only intended to protect consumers from
confusion, and “not to provide a backdoor to claims for the use of a copyrighted work.”76
Moreover, Defendants assert that courts have “uniformly rejected” the argument that the “mere
use of a copyrighted work implies an affiliation with the creator or subject of that work.”77
Defendants also argue that there is no precedent for allowing a performer to assert trademark rights

70

Id. (quoting Cariou, 714 F.3d at 709).

71

Id.

72

Id.

73

Id. at 14.

74

Id.

75

Id. at 3.

76

Id.

77
Id. at 15 (citing Oliveira v. Frito-Lay, 251 F.3d 56, 62 (2d Cir. 2001); Henley v. DeVore, 733 F. Supp. 2d
1144, 1167–68 (C.D. Cal. 2010)).

12

in a performance.78 For example, Defendants point out that in Oliveira v. Frito-Lay, the Second
Circuit rejected the argument that a television commercial’s use of a song performed by a particular
artist constitutes false endorsement, as the court noted that “artists who could assert claims similar
to [plaintiff’s] would bring suit against entities that had paid bona fide license fees to all known
holders of rights.”79 Additionally, Defendants contend that the Supreme Court has expressly
refused to recognize a perpetual right in copyrighted works in the public domain that Plaintiffs are
allegedly seeking under the Lanham Act.80
Second, Defendants assert that even if the use of a copyrighted work could be recognized
as an endorsement under the Lanham Act, the First Amendment to the United States Constitution
protects Defendants’ artistic expression and precludes Plaintiffs’ false endorsement claim.81
According to Defendants, in Rogers v. Grimaldi, the Second Circuit considered whether the
“iconic entertainer” Ginger Rogers could bring a false endorsement claim against the producers of
the film Ginger and Fred, which alluded to Ginger Rogers in the title but was primarily about
fictional cabaret performers.82 Defendants assert that the Second Circuit recognized that the First
Amendment limits the Lanham Act when artistic expression is involved, and determined that the
Lanham Act does not apply to allegedly misleading titles of artistic works “unless the title has no
artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless

78

Id.

79

Id. (citing Oliveira, 251 F.3d at 59, 63).

80

Id. at 16 (citing Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003)).

81

Id.

82

Id. at 17 (citing Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989)).

13

the title explicitly misleads as to the source of the content of the work.”83 Defendants aver that the
Rogers test has been adopted by the Fifth Circuit.84 Defendants state that while the Fifth Circuit
has not yet considered whether the Rogers test extends beyond claims of false endorsement for
titles of artistic works, “almost every court to consider the issue has done so.”85
a.

First Rogers factor: the artistic relevance of Anthony Barré’s voice to
Defendants’ works

According to Defendants, the first prong of the Rogers test is satisfied “if the alleged mark
has any artistic relevance to the underlying work.”86 Here, Defendants argue that Plaintiffs’ alleged
marks clearly have artistic relevance to Defendants’ works.87 Defendants point out that Plaintiffs
alleged in their complaint that Anthony Barré’s YouTube videos were used to create the “tone,
mood, setting and location” of “Formation,” and that Plaintiffs alleged that Anthony Barré’s “voice
and words . . . reach the very essence of ‘Formation’ and are crucial to ‘Formation.’”88 Therefore,
Defendants contend that “there cannot be any dispute” that Anthony Barré’s voice has artistic
relevance to the music video and live performances.89

83

Id.

84

Id. (citing Westchester Media v. PRL USA Holdings, 214 F.3d 658, 664 (5th Cir. 2000)).

85

Id.

Id. at 18 (citing Rogers, 875 F.2d at 999; E.S.S. Entm’t 2000 v. Rock Star Videos, 547 F.3d 1095, 1099 (9th
Cir. 2008) (considering whether the “level of relevance” of an “alleged mark to the work” is merely “above zero”)).
86

87

Id at 18–19.

88

Id. at 19.

89

Id.

14

b.

Second Rogers factor: expressly misleading

Next, Defendants argue that they did not expressly mislead as to the source of the content
of the work at issue.90 According to Defendants, to “expressly mislead” means they must have
made an “overt claim” or an “explicit indication” that Anthony Barré endorsed or was involved
with the work.91 Defendants aver that courts have made clear that the “mere use of the mark itself,”
such as Anthony Barré’s voice, is not expressly misleading on its own.92 Here, Defendants assert
that Plaintiffs conceded that Defendants did not make any “overt claim” or “explicit indication”
that Anthony Barré sponsored or was affiliated with Defendants’ work, as Plaintiffs alleged that
Anthony Barré received “no acknowledgement” and “no credit” for his contributions by
Defendants.93 In sum, Defendants argue that under the Rogers test, the First Amendment bars
Plaintiffs’ false endorsement claim.94
Dismissal of Plaintiffs’ state law claims

4.

Next, Defendants contend that Plaintiffs’ state law claim under LUTPA and Plaintiffs’
claim for unjust enrichment also fail. Defendants assert that the Fifth Circuit has recognized that
the requirements of a LUTPA claim mirror those of the Lanham Act, and thus “the claims stand

90

Id.

91

Id. (citing Rogers, 875 F.2d at 1001).

92

Id. (citing Mattel v. MCA Records, 296 F.3d 894, 902 (9th Cir. 2002); E.S.S., 547 F.3d at 1100).

93

Id. at 20.

94

Id. at 21.

15

or fall together.”95 Therefore, Defendants aver, because Plaintiffs’ state law claim under LUTPA
is predicated on the same alleged conduct as their Lanham Act claim, it fails for the same reason.96
Additionally, Defendants argue that Plaintiffs’ unjust enrichment claim is preempted by
the Copyright Act.97 According to Defendants, courts in the Fifth Circuit “routinely” find that
claims for unjust enrichment are preempted by federal copyright law.98 Here, Defendants contend
that Plaintiffs’ unjust enrichment claim and Plaintiffs’ copyright infringement claim are both based
on the same allegations that Defendants used Plaintiffs’ copyrighted works without authorization,
and therefore Plaintiffs’ unjust enrichment claim is preempted.99 Additionally, Defendants assert
that even if it is not preempted, Plaintiffs’ alternative claim for unjust enrichment fails because
Plaintiffs have other remedies available at law.100
Angel Barré’s standing to assert these claims

5.

Finally, Defendants argue that a plaintiff must own the intellectual property rights at issue
to bring a copyright infringement claim.101 Defendants assert that Plaintiffs’ amended complaint
only alleges that the Estate of Anthony Barré received all ownership interests in Anthony Barré’s

95

Id. at 21 (citing Bd. of Supervisor v. Smack Apparel, 550 F.3d 465, 490 n.130 (5th Cir. 2008); Louisiana
World Expo. v. Logue, 746 F.2d 1033, 1039 (5th Cir. 1984); Rin Tin Tin v. First Look Studios, 671 F. Supp. 2d 893,
902 (S.D. Tex. 2009)).
96

Id. at 22.

97

Id.

98

Id. (citing McConley v. Boise, 2006 WL 709599, at *5 (W.D. La. 2006); Dorsey v. Money Mack Music,
304 F. Supp. 2d 858, 865 (E.D. La. 2003)).
99

Id. at 23.

100

Id. (quoting Coastal Envtl. Specialists v. Chem-Lig Int’l, 818 So. 2d 12, 19 (La. App. 1st Cir. 2001)).

101
Id. (citing Gen. Universal Sys. v. Lee, 379 F.3d 131, 141 (5th Cir. 2004); Paulsson Geophysical Servs. v.
Sigmar, 529 F.3d 303, 309 (5th Cir. 2008)).

16

works.102 Thus, because Plaintiffs failed to allege that Angel Barré owns any rights to the
intellectual property at issue, Defendants contend, she lacks standing to assert these claims.103
B.

Plaintiffs’ Arguments in Opposition to the Motion to Dismiss
In opposition, Plaintiffs point out that Defendants’ motion to dismiss is the first time they

have acknowledged that they copied Anthony Barré’s works.104 Plaintiffs aver that Defendants
failed to inform the Court that the “Lemonade” album was sold in a box containing both a music
video CD and an audio CD, or that the audio from the music video CD was originally released as
the single song of “Formation.”105 Moreover, according to Plaintiffs, the license Defendants
alleged that they received was granted by an unknown person named “Ella Henry” for $1,000, who
does not own the copyrights to Anthony Barré’s YouTube videos.106 Nonetheless, Plaintiffs assert
that Defendants’ affirmative defense that they obtained a license cannot be resolved on a Rule
12(b)(6) motion to dismiss.107
Dismissal of Plaintiff’s copyright infringement claim under the fair use
doctrine

1.

Plaintiffs contend that to establish a claim for copyright infringement, they must prove:
(1) ownership of a valid copyright; and (2) that Defendants copied elements of Plaintiffs’ original

102

Id. at 24.

103

Id.

104

Rec. Doc. 72 at 2, 5.

105

Id. at 2.

106

Id. at 3, 7.

107

Id. at 9.

17

works.108 Plaintiffs assert that, because Defendants admit to copying Plaintiffs’ copyrighted works,
Plaintiffs have established a prima facie case of copyright infringement.109
Plaintiffs argue that Defendants misstate the law regarding infringement of sound
recordings, as “[t]his is not a fair use case; it’s a sampling case of an artist’s voice unaltered.”110
According to Plaintiffs, in Bridgeport v. Dimension Films, the Sixth Circuit held that the fair use
defense did not apply in sampling cases, and that even a sample of a sound recording lasting a few
seconds requires a license.111 Additionally, Plaintiffs point out that fair use is not traditionally
applied to pure sampling, as opposed to parodies, criticisms, scholarships, and commentary that
courts have found to be “transformative.”112
Plaintiffs argue that even if the fair use affirmative defense applied, it is a mixed question
of fact and law that cannot be decided on a motion to dismiss, and regardless Defendants use of
Anthony Barré’s voice and words are not protected by fair use.113
i.

First fair use factor: the purpose and character of the use

Plaintiffs point out that the first fair use factor also asks if the use is commercial or noncommercial, as commercial use is less likely to be found to be fair use.114 Plaintiffs assert that this

108

Id. at 8–9 (quoting Positive Black Talk, Inc. v. Cash Money Records, Inc., 394 F.3d 357 (5th Cir. 2004)).

109

Id. at 9.

110

Id. at 4.

111

Id. at 10 (quoting Bridgeport v. Dimension Films, 410 F.3d 792, 801 (6th Cir. 2005)).

112

Id. at 12–13.

113

Id. at 13.

114

Id. at 16.

18

distinction considers “whether the user stands to profit from exploitation of the copyrighted
material without paying the customary price.”115
Additionally, Plaintiffs assert that Defendants have not shown that their use of Plaintiffs’
works was a “transformative” use.116 Plaintiffs contend that sampling a work to create a general
atmosphere or setting for a music video is not transformative.117 Plaintiffs aver that in each of the
“appropriation art cases” cited by Defendants, the work itself was altered by the defendant when
it was used in the new work, and thus the original work was “transformed.”118 However, here,
Plaintiffs assert that Defendants did nothing to transform Plaintiffs’ works, and instead merely
used Plaintiffs’ work by “captur[ing] a local celebrity to create the atmosphere of New Orleans.”119
According to Plaintiffs, because they plausibly allege that Defendants’ use of Plaintiffs’ works is
both “commercial” and “non-transformative,” the first factor weighs in their favor under the Rule
12(b)(6) standard.120
ii.

Second fair use factor: the nature of the copyrighted work

With regard to the second factor, Plaintiffs argue that because Plaintiffs’ works were “of a
creative nature,” they should be granted more protection from copying, which weighs against fair

115

Id. (quoting Harper & Row Publishers, Inc., 471 U.S. at 562).

116

Id. at 13.

117

Id.

118

Id.

119

Id. at 14–15.

120

Id. at 16.

19

use.121 Plaintiffs also contend that Congress revised the Copyright Act to “include unpublished as
well as published works within fair use.”122
iii.

Third fair use factor: substantiality of the use

As to the third factor, Plaintiffs argue that Defendants used a qualitatively important piece
of Plaintiffs’ works.123 Plaintiffs represent that Defendants took the “heart of the work” and “the
best parts” of Plaintiffs’ works, i.e. the phrases and samples that Anthony Barré was known for.124
According to Plaintiffs, a court in the Southern District of New York found that the substantiality
of a use of a copyrighted work is a “classic jury question” when even quantitatively small excerpts
are used that a jury could reasonably conclude are qualitatively great.125
iv.

Fourth fair use factor: the effect on the market

Finally, Plaintiffs assert that the fourth factor seeks to balance “the benefit the public will
derive if the use is permitted and the personal gain the copyright owner will receive if the use is
denied.”126 Plaintiffs contend that here there is a “vibrant sampling licensing market” and that
Defendants recognized the need to obtain a license when they obtained an allegedly invalid license
one week before the music video was released.127

121

Id. at 14–15.

122

Id.

123

Id. at 17.

124

Id.

125

Id. (quoting Roy Export Co. Establishment etc. v. Columbia Broadcasting System, Inc., 503 F. Supp. 1137,
1145 (S.D.N.Y. 1980)).
126

Id.

127

Id. at 18.

20

Plaintiffs’ Lanham Act claim

2.

According to Plaintiffs, in Facenda v. NFL Films, Inc., the Third Circuit recognized that a
Lanham Act cause of action can be asserted for misappropriation of a person’s distinctive voice
and words and is not precluded by the Copyright Act.128 Plaintiffs assert that the court also held
that the First Amendment did not bar the plaintiffs’ claims when the promotional video and video
game at issue were used for commercial purposes.129 Likewise, Plaintiffs point out that the Ninth
Circuit has held that the Copyright Act did not preclude a plaintiff from recovering under a false
endorsement cause of action when an imitation of his distinctive voice was used in a Dorito’s
commercial.130
Here, Plaintiffs assert that they alleged that: (1) Anthony Barré’s voice and words were
used by Defendants without permission; (2) his voice and word are distinctive; (3) his voice and
words were recognized by consumers, which caused confusion regarding his involvement or
approval of Defendants’ works; (4) Defendants used Anthony Barre’s voice and words for
commercial purposes; and (5) Defendants profited from the use.131 Thus, Plaintiffs argue that their
complaint sufficiently alleges a false endorsement claim under the Lanham Act.132

128

Id. at 19 (citing Facenda v. NFL Films, Inc., 542 F.3d 1007 (3rd Cir. 2008)).

129

Id.

130

Id. at 20 (citing Waits v. Frito-Lay, Inc., 978 F.2d 1093 (9th Cir. 1992)).

131

Id.

132

Id. at 18.

21

Plaintiffs’ LUTPA claim

3.

Similarly, Plaintiffs argue that their complaint sufficiently alleges a violation of LUTPA.133
According to Plaintiffs, LUTPA broadly prohibits any “unfair or deceptive acts or practices in the
conduct of any trade or commerce.”134 Plaintiffs contend that, contrary to Defendants’ assertions,
the Fifth Circuit has held that, because LUTPA requires proof of fraud, misrepresentation, or other
unethical conduct, it is not precluded by the Copyright Act.135
Plaintiffs’ unjust enrichment claim

4.

Next, Plaintiffs argue that they have sufficiently alleged an action for unjust enrichment in
the alternative.136 Plaintiffs aver that if the Court finds that they do not have a copyright claim,
then their claim of unjust enrichment would not be preempted.137 Plaintiffs contend that the Court
should preserve their alternative unjust enrichment remedy at this stage of the proceedings. 138
C.

Defendants’ Arguments in Further Support of the Motion to Dismiss
In reply, Defendants contend that, contrary to Plaintiffs’ assertion that small clips of the

YouTube videos were included in a CD/DVD box set, a “review of the audio CD confirms” that
the single of “Formation” does not use Anthony Barré’s works.139 Thus, Defendants aver that those

133

Id.

134

Id.

135

Id. (citing Express Lien, Inc., 2016 U.S. Dist. LEXIS 168242, at *6).

136

Id. at 21.

137

Id. (citing Ulloa v. Universal Music & Video Distribution Corp., 303 F. Supp. 2d 409 (S.D. N.Y. 2004)).

138

Id.

139

Rec. Doc. 87 at 1.

22

Defendants involved in the making of the sound recording, composition, and the Super Bowl
performance of “Formation” should be dismissed.140
1.

Fair use affirmative defense

Defendants assert that courts “repeatedly have made clear that fair use may be decided at
the pleadings stage where, as here, both parties’ works are properly before the court.”141 Moreover,
Defendants argue that “well-established case law” recognizes that the fair use doctrine applies to
“transformative” uses of sound recordings.142
Defendants assert that the four fair use factors strongly favor Defendants. 143 As to the first
factor of the purpose and character of the use, Defendants argue that in 1994 the Supreme Court
rejected the older presumption that the commercial nature of a work weighs against fair use.144
Now, Defendants aver, the commerciality of the use is “of little significance” to a court’s fair use
analysis.145 Defendants further contend that they did alter Anthony Barré’s YouTube videos by
taking only several seconds of audio from a longer audiovisual work, but regardless Defendants
argue that alteration or distortion of an audio clip is not required for a fair use finding.146 Moreover,

140

Id. at 10.

141

Id. at 2 (citing Brownmark Films v. Comedy Partners, 682 F.3d 687, 690 (7th Cir. 2012); City of Inglewood
v. Teixeira, 2015 WL 5025839, at *12 (C.D. Cal. 2015); Adjmi v. DLT Entm’t, 2015 WL 1499575, at *13 (S.D.N.Y.
2015); Caner v. Smathers, 2014 WL 12580461, at *4 (N.D. Tex. 2014); Faulkner Literary Rights v. Sony Pictures,
953 F. Supp. 2d 701, 708–712 (N.D. Miss. 2013); Righthaven v. Realty One Grp., 2010 WL 4115413, at *2 (D. Nev.
2010); Savage v. Council on American-Islamic Relations, 2008 WL 2951281, at *4 (N.D. Cal. 2008)).
142

Id. (citing Swatch Group v. Bloomberg, 756 F.3d 73, 92 (2d Cir. 2014); Estate of Smith v. Cash Money
Records, 2017 WL 2333770 (S.D.N.Y. 2017); Threshold Media v. Relativity Media, 166 F. Supp. 3d 1011, 1029 (C.D.
Cal. 2013); Lennon v. Premise Media, 556 F. Supp. 2d 310, 327–28 (S.D.N.Y. 2008)).
143

Id.

144

Id. (citing Campbell v. Acuff-Rose Music, 510 U.S. 569, 584 (1994)).

145

Id. at 4 (quoting SOFA Entm’t v. Dodger Prods., 709 F.3d 1273, 1278–79 (9th Cir. 2013)).

146

Id.

23

Defendants contend that their work clearly had different objectives and messages than Anthony
Barré’s YouTube videos.147
As to the second fair use factor of the nature of the copyrighted work, Defendants point out
that Plaintiffs do not dispute that Anthony Barré’s YouTube videos were published, or that this
weighs in favor of fair use.148 Defendants assert that whether Plaintiffs’ videos are “creative
works” is “of limited usefulness” when the work is being used for a transformative purpose.149
With regard to the third factor, Defendants aver that Plaintiffs do not dispute that ten
seconds of audio constitute a quantitatively small amount of the underlying works. 150 Defendants
assert that, because the YouTube videos merely “consist of Mr. Barré’s disjointed comments about
a wide array of mundane topics, personal grievances, and observations,” Defendants’ use of a
small clip of those videos is also qualitatively insignificant.151
Fourth, Defendants assert that Plaintiffs failed to identify any market for Anthony Barré’s
works, as they remain publicly available for free on YouTube.152 According to Defendants, the
Second Circuit has held that alleged losses of license fees cannot be used as evidence of market
harm, as a copyright owner “is not entitled to a licensing fee for a work that otherwise qualifies
for the fair use defense.”153

147

Id. at 4–5.

148

Id. at 5.

149

Id. at 5–6 (quoting Bill Graham Archives, 448 F.3d at 612).

150

Id. at 6.

151

Id.

152

Id.

153

Id. (quoting Leibovitz v. Paramount Pictures, 137 F.3d 109, 117 (2d Cir. 1998)).

24

Plaintiffs’ false endorsement claim

2.

Next, Defendants aver that Plaintiffs failed to address their argument that the First
Amendment defeats their Lanham Act claim pursuant to the Rogers test.154 Defendants assert that
Plaintiffs’ citation to Facenda v. NFL Films is distinguishable here, as the Facenda court
determined that since the promotional video for a video game was “commercial speech rather than
artistic expression,” the Rogers test did not apply.155 By contrast, here Defendants argue that the
Rogers test applies because their works are clearly artistic expressions, and thus the First
Amendment precludes Plaintiffs from bringing a false endorsement claim for Defendants’ use of
Anthony Barré’s words and voice in Defendants’ artistic work.156
Moreover, Defendants assert that Plaintiffs’ false endorsement claim fails for the additional
reason that performers generally may not assert trademark rights in a performance. 157 Defendants
point to EMI v. Hill, where the Second Circuit determined that the “creation and expression of an
original work is protected by copyright law, and once an original work has been produced
trademark law is not the proper means of protecting the rights in this originality.” 158 By contrast,
Defendants argue that in Waits v. Frito-Lay, the case cited by Plaintiffs, the defendants did not use
the singer’s copyrighted works, but rather hired an impersonator of the plaintiff’s distinctive voice
to make a television commercial.159

154

Id. at 7.

155

Id. (citing Facenda, 542 F.3d at 1018).

156

Id.

157

Id. at 8.

158

Id. (quoting EMI v. Hill, Holliday, 228 F.3d 56, 64 (2d Cir. 2000)).

159

Id. (citing Waits v. Frito-Lay, 978 F.2d 1093, 1096, 1111 (9th Cir. 1992)).

25

Plaintiffs’ state law claims

3.

Defendants assert that Plaintiffs’ LUTPA claim fails for the same reasons as their false
endorsement claim, and that Plaintiffs “incorrectly suggest that courts may decide what constitutes
unfair competition without any limitation.”160 Likewise, Defendants argue that Plaintiffs failed to
address either of Defendants’ arguments that the unjust enrichment claim should be dismissed
because it is preempted by the Copyright Act and is only available to fill a gap in the law. 161
Angel Barré’s standing

4.

Finally, Defendants represent that Plaintiffs failed to dispute that their complaint only
alleges that the Estate owns all copyright and trademark rights at issue in this case, and thus Angel
Barré lacks standing to assert these claims in this lawsuit.162
D.

Plaintiffs’ Arguments in Further Opposition to the Motion to Dismiss
In their sur-reply, Plaintiffs again point out that a video DVD of the “Lemonade” album

and the audio CD of “Formation” were sold as a box set, and the first words of “Formation” on the
“Lemonade” video are Anthony Barre’s voice and copyrighted works.163
Next, Plaintiffs argue that Defendants’ citation in a footnote in their reply brief to Estate
of Smith v. Cash Money Records is distinguishable, as that case was decided on a motion for
summary judgment after discovery and involved the artist Drake altering the words and context of
the sound recording he used to make it “transformative.”

164

Here, Plaintiffs contend that

160

Id. at 9.

161

Id.

162

Id. at 10.

163

Rec. Doc. 90 at 5.

164

Id. at 1 (citing Estate of Smith v. Cash Money Records, Inc., WL 2333770, (S.D.N.Y. May 30, 2017)).

26

Defendants did not alter Anthony Barré’s words, but instead used his exact words and voice to
provide a New Orleans atmosphere to “Formation.”165
Plaintiffs further argue that “courts generally do not recognize a fair use defense when a
sound recording is copied for commercial gain.”166 Plaintiffs represent that the Fifth Circuit has
held that the profit/non-profit inquiry does not ask whether monetary gain was the sole motive of
defendant, but rather “whether the user stands to profit from exploitation of the copyrighted
material without paying the customary price.”167 According to Plaintiffs, Defendants released the
“Formation” music video the day before Carter’s Super Bowl Half-Time show to promote her
performance, increase subscription revenues from Tidal, and increase sales for the “Lemonade”
album and the “Formation World Tour,” which may have exceeded over $300 million.168
Finally, Plaintiffs point out that in Mabile v. BP, P.L.C. this Court rejected “as premature”
the defendant’s arguments that the plaintiff’s state law claims were preempted by federal patent
law, and instead found that the plaintiff had alleged sufficient facts to state claims for a violation
of LUTPA and conversion.169 Similarly here, Plaintiffs aver, the Court should reject Defendants’
“premature arguments” that Plaintiffs cannot pursue Lanham Act and state law claims.170

165

Id.

166

Id.

167

Id. at 5–6 (quoting Compaq Computer Corp. v. Ergonome Inc., 387 F.3d 403, 409 (5th Cir. 2004)).

168

Id. at 6.

169

Id. at 3, 7 (citing Mabile v. BP, P.L.C., 2016 U.S. Dist. LEXIS 129540, *83 (E.D. La. Sept. 22, 2016)
(Brown, J.)).
170

Id. at 7.

27

E.

Defendants’ “Notice of Supplemental Authority”
In their “Notice of Supplemental Authority,” Defendants assert that on June 14, 2017, a

court in the United States District Court for the District of Nevada concluded that the “fair use”
copyright defense can be decided as a matter of law.171
F.

Plaintiffs’ Response to Defendants’ “Notice of Supplemental Authority”
In response, Plaintiffs argue that Corbello v. DeVito is clearly distinguishable, as it was a

decision rendered on a Rule 50(b) motion for judgment as a matter of law after a 15-day jury
trial.172 Moreover, Plaintiffs assert that the case is factually distinguishable, as the defendant had
only taken descriptions of certain historical events from the plaintiff’s autobiography to alter and
use in the Broadway show Jersey Boys.173
III. Law and Analysis
A.

Legal Standard on a Motion to Dismiss
Federal Rule of Civil Procedure 12(b)(6) provides that an action may be dismissed “for

failure to state a claim upon which relief can be granted.”174 A motion to dismiss for failure to state
a claim is “viewed with disfavor and is rarely granted.”175 “To survive a motion to dismiss, a
complaint must contain sufficient factual matter, accepted as true, to ‘state a claim for relief that
is plausible on its face.’”176 “Factual allegations must be enough to raise a right to relief above the

171

Rec. Doc. 95 at 1 (citing Corbello v. DeVito, No. 08-0867 (D. Nev. June 14, 2017)).

172

Rec. Doc. 93 at 1.

173

Id. at 2.

174

Fed. R. Civ. P. 12(b)(6).

175

Kaiser Aluminum & Chem. Sales, Inc. v. Avondale Shipyards, Inc., 677 F.2d 1045, 1050 (5th Cir. 1982).

176

Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570

(2008)).

28

speculative level.”177 A claim is facially plausible when the plaintiff has pleaded facts that allow
the court to “draw a reasonable inference that the defendant is liable for the misconduct alleged.”178
On a motion to dismiss, asserted claims are liberally construed in favor of the claimant,
and all facts pleaded are taken as true.179 However, although required to accept all “well-pleaded
facts” as true, a court is not required to accept legal conclusions as true.180 “While legal conclusions
can provide the framework of a complaint, they must be supported by factual allegations.”181
Similarly, “[t]hreadbare recitals of the elements of a cause of action, supported by mere conclusory
statements” will not suffice.182 The complaint need not contain detailed factual allegations, but it
must offer more than mere labels, legal conclusions, or formulaic recitations of the elements of a
cause of action.183 That is, the complaint must offer more than an “unadorned, the defendantunlawfully-harmed-me accusation.”184 From the face of the complaint, there must be enough
factual matter to raise a reasonable expectation that discovery will reveal evidence as to each
element of the asserted claims.185 If factual allegations are insufficient to raise a right to relief

177

Twombly, 550 U.S. at 556.

178

Id. at 570.

179

Leatherman v. Tarrant Cnty. Narcotics Intelligence & Coordination Unit, 507 U.S. 163, 164 (1993); see
also Tellabs, Inc. v. Makor Issues & Rights, Ltd., 551 U.S. 308, 322–23 (2007).
180

Iqbal, 556 U.S. at 677–78.

181

Id. at 679.

182

Id. at 678.

183

Id.

184

Id.

185

Lormand v. U.S. Unwired, Inc., 565 F.3d 228, 257 (5th Cir. 2009).

29

above the speculative level, or if it is apparent from the face of the complaint that there is an
“insuperable” bar to relief, the claim must be dismissed.186
B.

Analysis
In their motion to dismiss, Defendants contend the Defendants who were solely involved

in producing the sound recording and composition of “Formation” or the Super Bowl Half-Time
show should be dismissed with prejudice, as they did not use Plaintiffs’ copyrighted works.187
Defendants further seek to dismiss: (1) Plaintiffs’ copyright infringement claim; (2) Plaintiffs’
Lanham Act claim; (3) Plaintiffs’ LUTPA claim; and (4) Plaintiffs’ unjust enrichment claim.188
Finally, Defendants aver that Angel Barré lacks standing to assert these claims on her behalf.189
The Court will address each argument in turn.
1.

Whether Defendants only involved in the production of the single “Formation”
or the Super Bowl Half-Time show should be dismissed

First, Defendants argue that Plaintiffs’ works were only used in the music video and live
performances of “Formation,” but that Defendants did not use Anthony Barré’s YouTube videos
in the sound recording or composition of “Formation” or in the Super Bowl live performance of
“Formation.”190

Carbe v. Lappin, 492 F.3d 325, 328 n.9 (5th Cir. 2007); Moore v. Metro. Human Serv. Dep’t, No. 096470, 2010 WL 1462224, at * 2 (E.D. La. Apr. 8, 2010) (Vance, J.) (citing Jones v. Bock, 549 U.S. 199, 215 (2007)).
186

187

Rec. Doc. 50-1 at 2, 6–7, 24.

188

Id. at 2–3, 8–23.

189

Id. at 23–24.

190

Rec. Doc. 50-1 at 24.

30

i.

Defendants involved in producing the single “Formation”

To establish a claim for copyright infringement in the Fifth Circuit, Plaintiffs must prove
that: (1) they own a valid copyright; and (2) Defendants “copied constituent elements of
[Plaintiffs’] work that are original.”191 In their amended complaint, Plaintiffs allege that they own
valid copyrights to Anthony Barré’s two YouTube videos at issue in this litigation: “Booking the
Hoes from New Wildings” and “A 27 Piece Huh?”192 Plaintiffs also allege in relevant part that
Defendants “used and exploited the actual voice, words and performance of Anthony Barré [in
those two YouTube videos], without authorization in the extremely popular ‘Formation’ master
recording, composition and video, and in theatrical and other live performances.”193
Moreover, in response to Defendants’ assertion that the single “Formation” did not use
Plaintiffs’ copyrighted works, Plaintiffs point out in their opposition memorandum that the audio
from the music video CD was originally released as the single for “Formation.”194 Thus, Plaintiffs
aver that because “[t]he Formation single contained Anthony Barre’s voice speaking the
copyrighted phrases,” the Court should deny Defendants’ motion to dismiss.195 By contrast,
Defendants failed to sufficiently address Plaintiffs’ allegation that the single for “Formation”

191

Positive Black Talk Inc. v. Cash Money Records, Inc., 394 F.3d 357, 367 (5th Cir. 2004) abrogated on
other grounds by Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154 (2010) (citations omitted); Gen. Universal Sys. v. Lee,
379 F.3d 131, 141 (5th Cir. 2004); Szabo v. Errisson, 68 F.3d 940, 942 (5th Cir. 1995) (citing Apple Barrel Prods.,
Inc. v. Beard, 730 F.2d 384, 387 (5th Cir. 1984)).
192
See Rec. Doc. 2 at 3 (Plaintiffs alleging that they own a “protectable copyright interest, both in the musical
composition and the sound recording, to Anthony Barré’s original and unique works of performance art,” including
“Booking the Hoes from New Wildings” (“Copyright Office Registration Number PA u 3-795-556”) and “A 27 Piece
Huh?” (“Copyright Office Registration Number PA 1-984-735”)).
193

Rec. Doc. 2 at 2.

194

Rec. Doc. 72 at 2.

195

Id. at 3.

31

originally included Plaintiffs’ copyrighted works such that a motion to dismiss at this stage would
be proper. Therefore, construing the amended complaint in Plaintiffs’ favor and accepting all wellpleaded facts as true,196 the Court finds that Plaintiffs have sufficiently alleged a claim for
copyright infringement against those Defendants involved in the production of the sound recording
and composition of “Formation.”
ii.

Defendants involved in the Super Bowl Half-Time show

In Plaintiffs’ amended complaint, Plaintiffs also allege that Carter performed “Formation”
during the Super Bowl Half-Time show on February 7, 2016.197 Defendants argue that they did
not use any part of Plaintiffs’ copyrighted works during the Super Bowl performance of
“Formation,” and therefore those Defendants involved in the production of the Super Bowl HalfTime show should be dismissed.198 However, even assuming that Defendants are correct that
Plaintiffs’ copyrighted works were not used during the Super Bowl Half-Time show, Defendants’
motion to dismiss does not specify which Defendants, if any, were solely involved in the
production of the Super Bowl Half-Time show. Rather, Defendants provide only one list of
Defendants who worked on the sound recording or composition of “Formation” and the Super
Bowl performance.199

196

Leatherman v. Tarrant Cnty. Narcotics Intelligence & Coordination Unit, 507 U.S. 163, 164 (1993); see
also Tellabs, Inc. v. Makor Issues & Rights, Ltd., 551 U.S. 308, 322–23 (2007).
197

Rec. Doc. 2 at 15.

198

Rec. Doc. 50-1 at 24.

Id. at 24–25 (Defendants asserting that the following Defendants were involved in the “Song’s sound
recording or composition or the Super Bowl performance:” Parkwood Entertainment, Michael L. Williams, Khalif
Brown, Asheton Hogan, WB Music Corporation, Warner-Tamerlane Publishing Corp., Eardrummers Music
Publishing, and Oakland 13 Music).
199

32

Moreover, in their amended complaint, Plaintiffs allege that each of those Defendants
identified in Defendants’ motion to dismiss contributed to the writing, composing, producing,
publishing, and/or licensing of “Formation,” and Plaintiffs do not allege that any Defendant was
solely involved in the Super Bowl Half-Time show.200 Accordingly, the Court denies Defendants’
motion to dismiss to the extent that it seeks to dismiss those Defendants who were not involved in
the production of the music video and live performances of “Formation.”
2.

Copyright Infringement Claim

Next, Defendants argue that Plaintiffs’ claim for copyright infringement should be
dismissed, as Defendants assert that their use of Plaintiffs’ copyrighted works is protected under
the fair use doctrine.201 In opposition, Plaintiffs cite to Bridgeport v. Dimension Films, a Sixth
Circuit case that Plaintiffs aver stands for the bright line rule that infringers must either “get a
license or do not sample,” to argue that the fair use doctrine does not apply to a “sampling case of
an artist’s voice unaltered.”202 Plaintiffs further argue that even if the fair use affirmative defense
applied here, each of the four factors weighs against a finding that Defendants’ use of Anthony
Barré’s voice and words is protected under the fair use doctrine.203
Section 106 of the Copyright Act confers a bundle of exclusive rights to the owner of the
copyright.204 As the Supreme Court has recognized, “[u]nder the Copyright Act, these rights—to

200

Compare Rec. Doc. 50-1 at 24–25 (Defendants seeking to dismiss the following Defendants: Parkwood
Entertainment, Michael L. Williams, Khalif Brown, Asheton Hogan, WB Music Corporation, Warner-Tamerlane
Publishing Corp., Eardrummers Music Publishing, and Oakland 13 Music) with Rec. Doc. 2 at 3–6 (Plaintiffs alleging
that each of those Defendants were involved in the writing, composing, producing, and/or publishing of “Formation”).
201

Rec. Doc. 50-1 at 2, 8.

202

Rec. Doc. 72 at 10–11 (quoting Bridgeport v. Dimension Films, 410 F.3d 792, 801 (6th Cir. 2005)).

203

Id. at 13.

204

17 U.S.C § 106; see Harper & Row Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 546–47 (1985).

33

publish, copy, and distribute the author’s work—vest in the author of an original work from the
time of its creation.”205 The Supreme Court has opined that the rights conferred by copyright “are
designed to assure contributors to the store of knowledge a fair return for their labors.”206
However, the Copyright Act subjects the owner’s exclusive rights to certain statutory
exceptions. In particular, Section 107 codifies the privilege of other authors to make “fair use” of
an earlier author’s work.207 The Supreme Court has noted that fair use is “traditionally defined” as
“a privilege in others than the owner of the copyright to use the copyrighted material in a
reasonable manner without his consent.”208 Thus, fair use is an affirmative defense “that can excuse
what would otherwise be an infringing use of copyrighted material.”209 The burden of proof is on
Defendants to establish the fair use affirmative defense.210
The fair use analysis is a mixed question of law and fact and requires a case-by-case
determination on whether a particular use of a copyrighted work is fair.211 Section 107 provides a

205

Harper & Row Publishers, Inc., 471 U.S. at 546–47; see also Associated Press v. Meltwater U.S. Holdings,
Inc., 931 F. Supp. 2d 537, 549 (S.D.N.Y. 2013).
206

Twentieth Century Music Corp. v. Aiken, 422 U.S. 151, 156 (1975).

207

Harper & Row Publishers, Inc., 471 U.S. at 546; see 17 U.S.C. § 107.

208

Harper & Row Publishers, Inc., 471 U.S. at 549 (citing H. Ball, Law of Copyright and Literary Property
260 (1944)).
209

Cambridge Univ. Press v. Patton, 769 F.3d 1232, 1238 (11th Cir. 2014).

See Harper & Row Publishers, Inc., 471 U.S. at 546 (“The drafters resisted pressures from special interest
groups to create presumptive categories of fair use, but structured the provision as an affirmative defense requiring a
case-by-case analysis.”); Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 577 (1994) (“Since fair use is an
affirmative defense, its proponent would have difficulty carrying the burden of demonstrating fair use without
favorable evidence about relevant markets.”); see also Patton, 769 F.3d at 1238; Associated Press v. Meltwater U.S.
Holdings, Inc., 931 F. Supp. 2d 537, 549 (S.D.N.Y. 2013) (citing Infinity Broadcast Corp. v. Kirkwood, 150 F.3d 104,
107 (2d Cir. 1998)).
210

211
Campbell, 510 U.S. at 577; Harper & Row Publishers, Inc., 471 U.S. at 549, 560; Faulkner Literary
Rights, LLC v. Sony Pictures Classics Inc., 953 F. Supp. 2d 701, 707 (N.D. Miss. 2013).

34

list of four relevant but non-exclusive factors for courts to consider when conducting the fair use
analysis: (1) the purpose and character of the use; (2) the nature of the copyrighted work; (3) the
substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect
on the potential market for or value of the copyrighted work.212 No single factor is determinative,
and courts are instructed to weigh all the results together, in light of the purpose of the Copyright
Act, to determine whether the affirmative defense of fair use has been established.213 In sum, “[t]he
ultimate test of fair use is whether the copyright law’s goal of promoting the Progress of Science
and useful Arts would be better served by allowing the use than by preventing it.”214
i.

Whether Defendants may assert a fair use defense

As noted supra, Plaintiffs argue that the Sixth Circuit’s decision in Bridgeport
demonstrates that the fair use doctrine does not apply to instances of digital sampling of a sound
recording.215 The Court finds Plaintiffs’ argument that fair use does not apply here unpersuasive.
First, the fair use doctrine is a statutory exception under the Copyright Act to the generally
exclusive set of rights given to copyright holders, and Plaintiffs have not pointed to any language
in Section 107 of the Copyright Act that excludes the fair use affirmative defense in instances of
digital sampling. Second, Plaintiffs misconstrue the holding of Bridgeport itself. In Bridgeport,
the Sixth Circuit only noted that the district judge had found that the use of a sound recording was
“de minimis” when it granted the defendant’s motion for summary judgment, and therefore did

212

Id. at 560–61.

213

See Meltwater U.S. Holdings, Inc., 931 F. Supp. 2d at 549 (quoting Campbell, 510 U.S. at 578).

214

Id. (quoting Bill Graham Archives, 448 F.3d at 608).

215

Rec. Doc. 72 at 10.

35

not consider the defendant’s fair use defense.216 In fact, the Sixth Circuit noted that “[o]n remand,
the trial judge is free to consider this defense and we express no opinion on its applicability to
these facts.”217 Accordingly, the Court finds that Defendants may assert a fair use defense.
The Court additionally notes that, as a general matter, the Fifth Circuit has determined that
Rule 12(b)(6) motions to dismiss typically cannot be granted on affirmative defense grounds unless
“a successful affirmative defense appears clearly on the face of the pleadings.” 218 In Backe v.
LeBlanc, for instance, the Fifth Circuit instructed that the affirmative defense of qualified
immunity may be raised on a Rule 12(b)(6) motion to dismiss, and held that a plaintiff can survive
the motion to dismiss by “assert[ing] facts which, if true, would overcome the defense of qualified
immunity.”219 While it does not appear that the Fifth Circuit has directly addressed the question of
whether the fair use defense may be raised on a Rule 12(b)(6) motion to dismiss, other courts have
recognized that under certain circumstances a fair use determination can be made at the motion to
dismiss stage.220 Here, neither party disputes that Defendants used certain portions of Plaintiffs’

216

Bridgeport, 410 F.3d at 805.

217

Id.

218

Clark v. Amoco Prod. Co., 794 F.2d 967, 970 (5th Cir. 1986); see Test Masters Educ. Servs., Inc. v. Singh,
428 F.3d 559, 570 (5th Cir. 2005) (noting that “generally a res judicata contention cannot be brought in a motion to
dismiss; it must be pleaded as an affirmative defense”); see also BRFHH Shreveport, LLC v. Willis Knighton Med.
Ctr., 176 F. Supp. 3d 606, 623 (W.D. La. 2016) (finding that the “procompetitive” affirmative defense to alleged
violations of federal antitrust laws cannot be raised at the motion to dismiss stage of litigation, as it is “better suited
for a summary judgment motion”); see also 27 Fed. Proc., L. Ed. § 62:88 (noting that affirmative defenses “generally
may not be raised by a motion to dismiss” unless the facts are admitted or are not controverted); 61A Am. Jur. 2d
Pleading § 320 (stating that a number of affirmative defenses can be resolved on the face of a plaintiff’s complaint
when “the facts with respect to an affirmative defense are admitted or are not controverted, or are conclusively
established so that nothing further can be developed by a trial of the issue,” including such affirmative defenses as
statute of limitations, lack of standing, release, and preemption).
219

Backe v. LeBlanc, 691 F.3d 645, 648 (5th Cir. 2012).

220

See Brownmark Films, LLC v. Comedy Partners, 682 F.3d 687, 690 (7th Cir. 2012) (noting that courts
“should usually refrain from granting Rule 12(b)(6) motions on affirmative defenses,” but recognizing that the fair
use affirmative defense may be an exception); Shell v. DeVries, No. 07-1086, 2007 WL 4269047, at *1 (10th Cir. Dec.
6, 2007) (affirming a district court’s decision to grant a motion to dismiss on fair use grounds); BWP Media USA, Inc.

36

copyrighted works without authorization in producing Defendants’ new works. Moreover,
Defendants argue in their motion to dismiss that, even “on the face of the pleadings,” Defendants
have established that Plaintiffs’ copyright infringement claim is barred under the fair use
doctrine.221 Accordingly, the Court will proceed to consider whether Plaintiffs have “asserted facts
which, if true, would overcome the defense of” fair use.222
ii.

First fair use factor: the purpose and character of the use

Under 17 U.S.C. § 107, the first factor in the fair use inquiry is the “the purpose and
character of the use, including whether such use is of a commercial nature or is for nonprofit
educational purposes.” When analyzing the first factor of the fair use test, courts typically consider
whether the infringing use is “transformative.”223 “Under this analysis, a use is transformative
where it does not merely supersede the object of the original creation but instead adds something
new, with a further purpose or different character, altering the first with new expression, meaning
or message.”224 The Supreme Court has instructed that while a transformative use is not

v. Gossip Cop Media, LLC, 87 F. Supp. 3d 499, 505 (S.D.N.Y. 2015) (noting that the Second Circuit recognizes that
affirmative defenses may be adjudicated on a motion to dismiss when the facts necessary to establish the defense are
evidence on the face of the complaint, and deciding the fair use inquiry on a motion to dismiss); Levingston v. Earle,
2013 WL 6119036 (D. Az. Nov. 21, 2013) (raising the issue of fair use sua sponte on the defendant’s Rule 12(b)(6)
motion and ordering the plaintiff to respond); Payne v. Courier-Journal, 2005 WL 1287434, at *3 (W.D. Ky. 2005)
(finding fair use on a motion to dismiss, as the original and infringing works were in the record and the court could
make the determination as a matter of law); see also 1 E-Commerce and Internet Law 4.10[1] (concluding that when
fair use determinations “may be made based on a side-by-side comparison [of the two works] . . . fair use may be
resolved on a motion to dismiss”); Patry on Fair Use § 7:5 (pointing out that “[i]ncreasingly, courts have considered
fair use” on a Rule 12(b)(6) motion to dismiss and listing relevant cases) (citations omitted).
221

Rec. Doc. 50-1 at 2, 7–8.

222

Backe, 691 F.3d at 648.

223

Campbell, 510 U.S. at 579; Meltwater U.S. Holdings, Inc., 931 F. Supp. 2d at 551; 5 A.L.R. Fed. 3d Art.

224

Campbell, 510 U.S. at 579; Meltwater U.S. Holdings, Inc., 931 F. Supp. 2d at 551; 5 A.L.R. Fed. 3d Art.

6.

6.

37

“absolutely necessary” to make a fair use finding, transformative works “lie at the heart of the fair
use doctrine” and generally further “the goal of copyright, to promote science and the arts.”225 The
preamble of Section 107 provides an illustrative and non-exclusive list of several transformative
uses of a copyrighted work, including “criticism, comment, news reporting, teaching (including
multiple copies for classroom use), scholarship, or research.”226 However, as the Second Circuit
has noted, a use of copyrighted material “that merely repackages or republishes the original is
unlikely to be deemed a fair use.”227
Here, the parties both dispute the extent to which Defendants’ use of the clips from
Anthony Barré’s YouTube videos can be considered “transformative.” On the one hand,
Defendants point out that the original videos merely feature Anthony Barré speaking “stream-ofconsciousness to the camera as he walks the streets of New Orleans.”228 Thus, Defendants assert
that Anthony Barré’s videos were used as “raw material . . . for an entirely different purpose than
the originals,” e.g., as one example of various depictions of the history and culture of New Orleans
for a song about “black Southern resilience” and Carter’s “cultural heritage.”229 By contrast,
Plaintiffs allege that Defendants merely inserted unaltered portions of Plaintiffs’ copyrighted
works directly into Defendants’ work.230 Moreover, Plaintiffs assert that using an audio clip to

225

Campbell, 510 U.S. at 579.

See 17 U.S.C. § 107; Campbell, 510 U.S. at 577 (instructing that the first factor inquiry “may be guided
by the examples given in the preamble to § 107, looking to whether the use is for criticism, or comment, or news
reporting, and the like”); Meltwater U.S. Holdings, Inc., 931 F. Supp. 2d at 551.
226

227

See Meltwater U.S. Holdings, Inc., 931 F. Supp. 2d at 551 (quoting Infinity Broadcast Corp., 150 F.3d at
108 & n. 2).
228

Rec. Doc. 50-1 at 3, 11.

229

Id. at 10–11.

230

Rec. Doc. 72 at 13–14.

38

“create the tone, mood, setting, and location of the New Orleans-themed ‘Formation’” does not
qualify as a “transformative” fair use.231
Here, the Court finds that Plaintiffs have alleged sufficient facts in their amended complaint
to support a finding at this stage of litigation that the first factor could ultimately weigh against a
finding of fair use. Plaintiffs plausibly allege that Defendants did not “add[] something new, with
a further purpose or different character,” but rather used unmodified audio clips from Anthony
Barré’s YouTube videos as an illustrative example of New Orleans culture through the voice and
catchphrases of a well-known local icon.232 As the Ninth Circuit noted in Seltzer v. Green Day,
Inc., “[i]n the typical ‘non-transformative’ case, the use is one which makes no alteration to the
expressive content or message of the original work.”233 Here, Plaintiffs have sufficiently alleged
that Defendants’ “verbatim copying” from YouTube videos of Anthony Barré saying such lines as
“What happened at the New Orleans” did not imbue the short clips with “new expression, meaning
or message,” but rather used Anthony Barré’s original “expression, meaning or message” to
introduce “Formation” and “create the tone, mood, setting and location of the New Orleans-theme
‘Formation.’”234
Defendants cite to a number of distinguishable fair use cases where courts have found that
the first factor weighed in favor of a finding of fair use.235 For example, in Seltzer, the Ninth Circuit
affirmed a district court’s decision to grant summary judgment in favor of the defendants on fair

231

Id. at 14.

Rec. Doc. 2 at 12 (alleging that Anthony Barré, also known as “Messy Mya,” was a “well-known
performance comedian,” a “YouTube sensation,” and “very famous” for his signature catchphrases).
232

233

Seltzer v. Green Day, Inc., 725 F.3d 1170, 1177 (9th Cir. 2013) (emphasis in original).

234

Id. at 2, 19–20.

235

Rec. Doc. 50-1 at 9–11.

39

use grounds, whereas here the Court considers a motion to dismiss.236 Moreover, the Ninth Circuit
in Seltzer determined that the band Green Day’s use of an artist’s illustration was “transformative”
in part because the plaintiff’s drawing of a screaming face was modified with a red “spray-painted”
cross in the middle, which the court concluded changed the drawing’s original expressive content
to one about the “hypocrisy of religion.”237 Here, however, Plaintiffs have plausibly alleged in their
complaint that Defendants did not change or alter the “expressive content or message” of Anthony
Barré’s YouTube videos, but rather used unmodified clips without adding anything new.238
Likewise, in Cariou, the Second Circuit held that the defendant’s alterations of twenty-five
of the plaintiff’s “serene and deliberately composed portraits” of Rastafarians to create “crude,”
“jarring,” “hectic,” and “provocative” works featuring distorted human forms was
“transformative” as a matter of law.239 By contrast, the Cariou court further determined that the
defendant made only “minimal alterations” to five other portraits by the plaintiff such that the court
could not determine whether the defendant was entitled to a fair use defense as a matter of law.240
Similarly here, Plaintiffs have plausibly alleged that Defendants did not alter the clips from
Plaintiffs’ copyrighted works at all before using them in the creation of “Formation.”241

236

Seltzer, 725 F.3d at 1177.

237

Id.

238
Rec. Doc. 2 at 19–20 (“The specific and unique characteristics of the male voice of “Booking the Hoes
from New Wildings” and “A 27 Piece Huh?” and the infringing “Formation” are identical . . . “Formation copies
Anthony Barre’s works.”); see Rec. Doc. 72 (alleging that “Defendant copied the sound recording exactly without
modifying the underlying sound recording in any way to differentiate it from the original”).
239

Cariou v. Prince, 714 F.3d 694, 706 (2d Cir. 2013).

240

Id. at 710–11.

241

Rec. Doc. 2 at 19–20.

40

Moreover, Plaintiffs point out that the first fair use prong under Section 107 also considers
“whether such use is of a commercial nature or is for nonprofit educational purposes,” and
Plaintiffs plausibly allege in their amended complaint that Defendants’ copying of Plaintiffs’
copyrighted works constitutes a “continuing commercial use and exploitation of Anthony Barré’s
words, voice and performances.”242 For example, Plaintiffs aver in their complaint that Defendants
required listeners to subscribe to the Tidal music service to access “Formation” upon its exclusive
release, which resulted in Tidal “receiving more than a million new subscribers, who pay $12.99
per month.”243 Plaintiffs further allege that Defendants sold more than 543,000 copies of
“Formation” and sold more than $250 million in tickets and revenues during the “Formation World
Tour.”244
The Court notes that Defendants cite to the Ninth Circuit’s holding in SOFA Entertainment,
Inc. v. Dodger Productions, Inc. to argue that whether a particular use of copyrighted material is
“commercial” is “of little significance” when a defendant’s use is transformative.245 Here, however,
the Court finds that Plaintiffs have plausibly alleged at this stage of litigation that Defendants’ use
of Plaintiffs’ copyrighted works was not transformative. Moreover, Section 107 explicitly instructs
courts to consider “the purpose and character of the use, including whether such use is of a
commercial nature or is for nonprofit educational purposes.”246 As the Supreme Court has

242

Id. at 21.

243

Id. at 16.

244

Id. at 17–18.

Rec. Doc. 50-1 at 11 (citations omitted). See generally SOFA Entm’t, Inc. v. Dodger Prods., Inc., 709
F.3d 1273, 1278–79 (9th Cir. 2013) (“Moreover, because Dodger’s use of the clip is transformative, the fact that
Jersey Boys is a commercial production is of little significance.”).
245

17 U.S.C. § 107 (emphasis added); see also Campbell, 510 U.S. at 584 (“The language of the statute
makes clear that the commercial or nonprofit educational purpose of a work is only one element of the first factor
enquiry into its purpose and character.”); Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 450 n.32
246

41

previously held, the “crux of the profit/nonprofit distinction is not whether the sole motive of the
use is monetary gain but whether the user stands to profit from exploitation of the copyrighted
material without paying the customary price.”247 Thus, the Court finds that Plaintiffs have
sufficiently alleged that Defendants’ use of Plaintiffs’ copyrighted works “is of a commercial
nature,” rather than for a “nonprofit educational purpose[].”248 In sum, the Court finds that at this
stage of litigation Plaintiffs have alleged sufficient facts to show that the first factor of the fair use
analysis could ultimately weigh against a finding of fair use, such that Plaintiffs can overcome
Defendants’ fair use defense on this motion to dismiss.
iii.

Second fair use factor: the nature of the copyrighted work

Next, Section 107 instructs courts to consider “the nature of the copyrighted work.”249
Courts have typically looked to two considerations of the work when analyzing the second factor:
(1) whether the work is more creative or factual in nature; and (2) whether the work is published
or unpublished.250 The Supreme Court has noted that copyright law “generally recognizes a greater
need to disseminate factual works than works of fiction or fantasy,” and the fact that a work is

(1984) (opining that “the commercial or non-profit character of an activity, while not conclusive with respect to fair
use, can and should be weighed along with other factors in fair use decisions.”) (quoting H. Rep. No. 94–1476, at 66);
Compaq Computer Corp. v. Ergonome Inc., 387 F.3d 403, 409–10 (5th Cir. 2004) (“While commerciality
generally weighs against finding fair use, it does not end the inquiry; rather, the fair use determination depends on the
totality of the factors considered.”).
247

Harper & Row Publishers, Inc., 471 U.S. at 562.

17 U.S.C. § 107; see also Cariou, 714 F.3d at 706 (Second Circuit noting that “there is no question that
Prince's artworks are commercial,” but finding that the transformative nature of the new work had greater weight).
248

249

17 U.S.C. § 107.

Stewart v. Abend, 495 U.S. 207, 237 (1990) (“In general, fair use is more likely to be found in factual
works than in fictional works.”); Cariou, 714 F.3d at 709–10 (“We consider (1) whether the work is expressive or
creative, . . . with a greater leeway being allowed to a claim of fair use where the work is factual or informational, and
(2) whether the work is published or unpublished, with the scope for fair use involving unpublished works being
considerably narrower.” (internal quotation marks and citations omitted)); see also 5 A.L.R. Fed. 3d Art. 6.
250

42

unpublished weighs against a finding of fair use.251 Defendants argue that this factor weighs in
favor of a finding of fair use, as it is undisputed that Anthony Barré published his YouTube videos
in 2010, more than five years prior to Defendants’ use of the videos.252 By contrast, Plaintiffs assert
that because they have alleged that Anthony Barré’s videos are creative works, the second fair use
factor weighs in their favor.253
With regard to the first consideration, the Court finds that Plaintiffs have sufficiently
alleged that Anthony Barré’s YouTube videos were creative works, as Plaintiffs represent in their
amended complaint that Anthony Barré was a “well-known performance comedian” and that the
two YouTube videos at issue in this litigation are “performance art.”254 Courts have recognized
that creative works are “closer to the core of intended copyright protection” than are works that
are predominantly factual, such as news or non-fiction.255 That is, a finding of fair use is more
likely with respect to factual works than it is with respect to creative works.256 Therefore, this first
consideration appears to weigh against a finding of fair use sufficient to prevent dismissal of
Plaintiffs’ copyright infringement claim on fair use grounds at this stage of the litigation.
As to the second consideration, the Supreme Court has noted that the scope of the fair use
doctrine is narrower for unpublished works, as it implicates an author’s “right of first

251

Harper & Row Publishers, Inc., 471 U.S. at 563.

252

Rec. Doc. 50-1 at 12.

253

Id. at 17.

254

Rec. Doc. 2 at 14.

255

Meltwater U.S. Holdings, Inc., 931 F. Supp. 2d at 557 (citing Infinity Broadcast Corp., 150 F.3d at 109).

256

Id. (citing Nihon, 166 F.3d at 73).

43

publication.”257 Here, Plaintiffs’ amended complaint clearly alleges that both of Anthony Barré’s
videos were published on YouTube in 2010.258 However, other courts have determined that a
finding that a work is “creative and published” ultimately weighs against a fair use
determination.259 Thus, because creative works are “closer to the core of intended copyright
protection,” the Court finds that at this stage of litigation Plaintiffs have alleged sufficient facts to
show that the second factor of the fair use analysis could ultimately weigh against a finding of fair
use, such that dismissal of Plaintiffs’ copyright infringement claim on fair use grounds is not
warranted.
iv.

Third fair use factor: the amount and substantiality of the portion used

Pursuant to 17 U.S.C. § 107, the third factor under the fair use analysis is “the amount and
substantiality of the portion used in relation to the copyrighted work as a whole.” Courts look to
the “quantitative” amount of the copyrighted work used as well as the “qualitative” importance of
the portion copied.260 However, even when only a small portion is copied, “its qualitative nature
may weigh against a finding of fair use if it takes the most expressive elements or the ‘heart’ of a
work.”261

257

Harper & Row Publishers, Inc., 471 U.S. at 564.

258

Rec. Doc. 2 at 13.

259

See Campbell, 510 U.S. at 584 (noting that publicly disseminated and creative works are within the core
of copyright law’s “protective purposes”); Stewart, 495 U.S. at 237 (recognizing that “fair use is more likely to be
found in factual works than in fictional works” and that a “motion picture based on a fictional short story obviously
falls into the latter category”); Cariou, 714 F.3d at 710 (finding that the second factor weighs against a fair use
determination for “creative and published” works, but acknowledging that this factor “may be of limited usefulness”
when the work is being used for a “transformative purpose”); A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004,
1016 (9th Cir. 2001) (affirming district court’s finding that published, copyrighted music compositions and sound
recordings are creative, “which cuts against a finding of fair use under the second factor”).
Campbell, 510 U.S. at 584 (noting that the third factor “calls for thought not only about the quantity of
the materials used, but about their quality and importance, too”); 5 A.L.R. Fed. 3d art. 6.
260

261

Harper & Row Publishers, Inc., 471 U.S. at 564 (determining that even though the defendant only used

44

Here, it appears to be undisputed that Defendants used four seconds of audio from the five
minute and fourteen second YouTube video titled “Booking the Hoes from New Wildings,” and
six seconds of audio from the one minute and fifty-three second YouTube video titled “A 27 Piece
Huh?”262 Defendants argue that they used only an “insignificant amount” of the audio from the
YouTube videos, and Defendants further contend that they used a qualitatively insignificant
portion as well.263 In particular, Defendants aver that they did not take the “heart of the work[s]”
because they argue “[t]here is no ‘heart of these works, which consist of Mr. Barré’s disjointed
comments about a wide array of mundane topics, personal grievances, and observations.”264 By
contrast, Plaintiffs assert that Defendants took a “recognizable, distinct and important” part of
Anthony Barré’s YouTube videos and the “heart of the work[s],” i.e. qualitatively important
portions.265 Plaintiffs point out that the clips used by Defendants contained phrases and words that
Anthony Barré was known for and were “the best parts.”266 Plaintiffs argue that the exact
qualitative importance of the clips used is a factual issue to be determined by the jury.267

an “insubstantial portion” of the plaintiff’s manuscript, it was “the most interesting and moving parts” and were thus
qualitatively important); Roy Exp. Co. Establishment of Vaduz, Liechtenstein, Black Inc., A. G. v. Columbia Broad.
Sys., Inc., 503 F. Supp. 1137, 1145 (S.D.N.Y. 1980) (finding that, even assuming that the use of one minute and fortyfive seconds of a one hour and twelve minute film was quantitatively small, “the jury could reasonably have concluded
that it was qualitatively great”), aff’d sub nom. Roy Exp. Co. Establishment of Vaduz, Liechtenstein v. Columbia Broad.
Sys., Inc., 672 F.2d 1095 (2d Cir. 1982); 5 A.L.R. Fed. 3d art. 6.
See Rec. Doc. 50-1 at 4; Rec. Doc. 72 at 12 (Plaintiffs pointing out that “Defendants admit that 4 seconds
of Anthony Barre’s vidoes [sic] in one case and 6 seconds in another were used”); Rec. Doc. 87 at 6 (Defendants
asserting in their reply memorandum that Plaintiffs do not do dispute that “the ten seconds of audio that Defendants
used” is a quantitatively small amount).
262

263

Rec. Doc. 50-1 at 13; Rec. Doc. 87 at 6.

264

Rec. Doc. 87 at 6.

265

Rec. Doc. 72 at 17.

266

Id.

267

Id.

45

In Plaintiffs’ amended complaint, Plaintiffs allege that Anthony Barré is “well known for
his quotes and catch phrases . . . and raspy voice.” Plaintiffs further allege that the three phrases
copied by Defendants are “quantitatively and qualitatively distinct, important, and recognizable
portions of” the two YouTube videos.268 For example, Plaintiffs assert that one of Anthony Barré’s
popular catch phrases was “back by popular demand,” which Plaintiffs argue was one of the
phrases misappropriated by Defendants.269 Plaintiffs also aver that Defendants used Anthony
Barré’s actual voice, which “was a unique instrument” and “inextricably linked to his performance
art.”270
In Harper & Row Publishers, Inc. v. Nation Enterprises, the Supreme Court advised that
even if the actual amount of copyrighted material used by a defendant was “an insubstantial
portion,” the qualitative importance of the material can weigh against a finding of fair use.271
There, the Supreme Court noted that the words quoted by the defendants were considered “the
most interesting and moving parts of the entire manuscript” and “among the most powerful
passages in those chapters.”272 Likewise, other courts have noted that the qualitative dimension of
this factor asks if the portion taken is “essentially the heart” of the copyrighted expression.273
Here, even assuming that Defendants are correct that the amount of Plaintiffs’ copyrighted
works used is quantitatively small, the Court finds that Plaintiffs have plausibly alleged at this

268

Id. at 12, 19, 25.

269

Id.

270

Id.

271

Harper & Row Publishers, Inc., 471 U.S. at 564.

272

Id.

273

Meltwater U.S. Holdings, Inc., 931 F. Supp. 2d at 557 (citing NXIVM Corp., 364 F.3d at 480).

46

stage of litigation that the portions used by Defendants were qualitatively significant and the
“heart” of Anthony Barré’s works such that the third factor could ultimately weigh in favor of
Plaintiffs.274 Plaintiffs have sufficiently alleged that Anthony Barré was well known for his
catchphrases, words, and unique voice, including the phrase “back by popular demand” that was
used by Defendants.275 Therefore, the Court finds that Plaintiffs have alleged sufficient facts to
show that the third factor of the fair use analysis could ultimately weigh against a finding of fair
use, preventing dismissal of Plaintiffs’ copyright infringement claim on fair use grounds at this
stage of litigation.
v.

Fourth fair use factor: the effect on the potential market

Finally, the fourth fair use factor requires courts to consider “the effect of the use upon the
potential market for or value of the copyrighted work.”276 “Fair use, when properly applied, is
limited to copying by others which does not materially impair the marketability of the work which
is copied.”277 According to the Supreme Court, the fourth factor “requires courts to consider not
only the extent of market harm caused by the particular actions of the alleged infringer, but also
whether unrestricted and widespread conduct of the sort engaged in by the defendant . . . would
result in a substantially adverse impact on the potential market” for the original. 278 The Supreme

274

Roy Exp. Co. Establishment of Vaduz, Liechtenstein, Black Inc., A. G., 503 F. Supp. at 1145 (finding that,
even assuming taking less than two minute clips from films between one hour and one hour and thirty minutes in
length was quantitatively insignificant, taking the “best scenes” could be qualitatively significant).
275

Rec. Doc. 2 at 12–13.

276

17 U.S.C. § 107.

277

Harper & Row Publishers, Inc., 471 U.S. at 566–67.

278

Campbell, 510 U.S. at 590.

47

Court has opined that the fair use analysis, “when properly applied, is limited to copying by others
which does not materially impair the marketability of the work which is copied.”279
Defendants argue that Plaintiffs have not plausibly alleged that using ten seconds of audio
from free, publicly available YouTube videos “will usurp the market for those works, if any such
market exists.”280 Defendants point out that Plaintiffs did not allege that Anthony Barré or Plaintiffs
ever sold or licensed any of Plaintiffs’ copyrighted works, or that “Formation” harmed the value
of Plaintiffs’ copyrighted works.281 In opposition, Plaintiffs assert that there is a “vibrant sampling
licensing market” for YouTube videos.282
Section 106 of the Copyright Act provides that a copyright holder has the exclusive right
to “authorize” certain uses of the copyrighted material.283 As the Second Circuit has recognized,
this includes the right to “demand a royalty for licensing others to use its copyrighted work.” 284
Thus, the Second Circuit has advised that the “the impact on potential licensing revenues is a
proper subject for consideration in assessing the fourth factor.”285 Likewise, in United Telephone
Company of Missouri v. Johnson Publishing Company, Inc., the Eighth Circuit held that even

279

Harper & Row Publishers, Inc., 471 U.S. at 568 (quoting 1 Nimmer § 1.10[D], at 1–87).

280

Rec. Doc. 50-1 at 13.

281

Id.

282

Rec. Doc. 72 at 18.

283

17 U.S.C. § 106.

284

Am. Geophysical Union v. Texaco Inc., 60 F.3d 913, 929 (2d Cir. 1994).

285

Id. (citing Campbell, 510 U.S. at 590; Harper & Row Publishers, Inc., 471 U.S. at 568; Twin Peaks Prods.,
Inc. v. Publications Int'l, Ltd., 996 F.2d 1366, 1377 (2d Cir. 1993); DC Comics, Inc. v. Reel Fantasy, Inc., 696 F.2d
24, 28 (2d Cir. 1982); United Telephone Co. of Missouri v. Johnson Publishing Co., Inc., 855 F.2d 604, 610 (8th Cir.
1988)). The Second Circuit further noted, however, that “were a court automatically to conclude in every case that
potential licensing revenues were impermissibly impaired simply because the secondary user did not pay a fee for the
right to engage in the use, the fourth fair use factor would always favor the copyright holder.” Id. at 929 n.17.

48

though the plaintiff did not offer its phone books for sale, it did have a market for a license to
reproduce its customer list.286 Therefore, the Eighth Circuit determined that “[p]ermitting [the
defendant] to use United Telephone’s 1985 white pages [without obtaining a license] in order to
update its own data base would defeat United Telephone’s market in licensing its customer list,”
and therefore the fourth factor weighed against fair use.287
Moreover, as stated supra, the Supreme Court has also noted that the fourth factor may
weigh against fair use if the challenged use “would adversely affect the potential market for the
copyrighted work” if it becomes widespread.288 For example, in Harper & Row Publishers, Inc.,
the Supreme Court determined that “in a broader perspective, a fair use doctrine that permits
extensive prepublication quotations from an unreleased manuscript without the copyright owner’s
consent poses substantial potential for damage to the marketability of first serialization rights in
general.”289 “Isolated instances of minor infringements, when multiplied many times, become in
the aggregate a major inroad on copyright that must be prevented.”290
In their amended complaint, Plaintiffs allege that Defendants “unlawfully copied” the
YouTube videos without Plaintiffs’ permission and “failed to secure a license to copy and exploit”
Plaintiffs’ works.291 According to the amended complaint, “[t]he proper licensing of ‘Booking the

286

855 F.2d 604, 610 (8th Cir. 1988).

287

Id.

288

Harper & Row Publishers, Inc., 471 U.S. at 568 (quoting Sony Corp. of America v. Universal City Studios,
Inc., 464 U.S. at 451) (emphasis in original); see also Campbell, 510 U.S. at 590; Meltwater U.S. Holdings, Inc., 931
F. Supp. 2d at 557.
289

Harper & Row Publishers, Inc., 471 U.S. at 568–69.

290

Id.

291

Rec. Doc. 2 at 21–22.

49

Hoes from New Wildings’ and ‘A 27 Piece Huh?’ for ‘Formation,’ ‘Lemonade’ and the ‘Formation
World Tour’ would not have only generated substantial revenues, but it would have generated
international recognition for Anthony Barré’s performance works and as contributor to a
worldwide hit song.”292
The Court notes that, in their opposition memorandum, Plaintiffs argue that there is a
“vibrant sampling licensing market” and that Defendants “recognized the necessity of obtaining a
license” when they obtained a license through an unknown person one week before “Formation”
was released.293 Although Plaintiffs point to this evidence in their memorandum, Plaintiffs did not
include these allegations in their amended complaint. Moreover, Plaintiffs do not appear to make
any allegations that Defendants’ uncompensated appropriation of YouTube videos would
adversely affect the market or potential market for Plaintiffs’ copyrighted works.294 It is well
established that, in deciding whether to grant or deny a motion to dismiss pursuant to Rule 12(b)(6),
a district court may not “go outside the complaint.”295 The Court notes that Plaintiffs can request
leave to amend their complaint to include such allegations and “conform to the evidence” if

292

Id. at 14.

293

Rec. Doc. 72 at 18.

294

Harper & Row Publishers, Inc., 471 U.S. at 568 (quoting 1 Nimmer § 1.10[D], at 1–87).

Carter v. Target Corp., 541 F. App’x. 413, 416–17 (5th Cir. 2013); Rodriguez v. Rutter, 310 F. App’x
623, 626 (5th Cir. 2009); Mabile v. BP, p.l.c., No. 11-1783, 2016 WL 5231839, at *16 (E.D. La. Sept. 22, 2016)
(Brown, J.).
295

50

required.296 Regardless, no one factor in the four factor fair use test is dispositive, 297 and even
assuming that the fourth factor could ultimately weigh in favor of a finding of fair use, Plaintiffs
have sufficiently alleged enough facts on the first three factors at this stage to overcome
Defendants’ fair use defense on this motion to dismiss.
vi.

Conclusion

Based on the foregoing, the Court finds that Plaintiffs have plausibly alleged a claim for
copyright infringement against Defendants. Construing Plaintiffs’ complaint liberally and
accepting all well-pleaded facts as true, Plaintiffs have also alleged sufficient facts at this stage of
litigation to show that the four factor fair use test could ultimately weigh against a finding of fair
use. Weighing all the factors discussed supra together, the Court concludes at this stage of
litigation that “the copyright law’s goal of promoting the Progress of Science and useful Arts”
would not be better served by allowing Defendants’ use of Plaintiffs’ copyrighted material without
authorization or compensation than by preventing it.298 Accordingly, the Court denies Defendants’
motion to the extent that it seeks to dismiss Plaintiffs’ copyright infringement claim on fair use
grounds.

See generally Fed. R. Civ. P. 15(b)(2) (“A party may move--at any time, even after judgment--to amend
the pleadings to conform them to the evidence and to raise an unpleaded issue.”); Jones v. Wells Fargo Bank, N.A.,
858 F.3d 927, 933 (5th Cir. 2017) (“Post-trial amendments conforming the pleadings to the evidence are appropriate
under Federal Rule of Civil Procedure 15(b) only if the defendant gives express or implied consent.”); See also
Juergens v. Watt, No. 08-007, 2009 WL 1375976, at *3 (N.D. Miss. May 15, 2009) (“Rule 15(a) of the Federal Rules
of Civil Procedure addresses amendments of the pleadings before trial.”).
296

297

See Meltwater U.S. Holdings, Inc., 931 F. Supp. 2d at 549 (quoting Campbell, 510 U.S. at 578).

298

Campbell, 510 U.S. at 578; Bill Graham Archives, 448 F.3d at 608; Meltwater U.S. Holdings, Inc., 931 F.
Supp. 2d at 549; see also Cambridge Univ. Press v. Patton, 769 F.3d 1232, 1237–38 (11th Cir. 2014) (“These
boundaries must be drawn carefully in order to assure that copyright law serves its intended purpose, which is to
promote the creation of new works for the public good by providing authors and other creators with an economic
incentive to create.”).

51

3.

Plaintiffs’ Lanham Act Claim

Next, Defendants argue that Plaintiffs have failed to state a claim under the Lanham Act. 299
In particular, Defendants assert that: (1) Plaintiffs cannot assert a claim under the Lanham Act for
the use of copyrighted works or performances; and (2) Plaintiffs’ Lanham Act claim is barred by
the First Amendment pursuant to the Rogers test.300 The Court will consider each of Defendants’
arguments in turn.
i.

Whether Plaintiffs can assert a Lanham Act claim for the use of
copyrighted works or performances

Pursuant to 15 U.S.C. § 1125(a), “[a]ny person who, on or in connection with any goods
or services . . . uses in commerce any word, term, name, symbol, or device, or any combination
thereof, or any false designation of origin, false or misleading description of fact, or false or
misleading representation of fact, which:” (A) “is likely to cause confusion, or to cause mistake,
or to deceive as to the affiliation, connection, or association of such person with another
person . . . ,” or (B) “in commercial advertising or promotion, misrepresents the nature,
characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or
commercial activities . . .” is liable under the Lanham Act.301 Thus, courts outside the Fifth Circuit
have recognized that the Lanham Act provides two general theories of liability: (1) false
representations regarding the origin, endorsement, or association of goods or services through the
wrongful use of another’s distinctive mark, name, trade dress, or other device (“false endorsement”

299

Rec. Doc. 50-1 at 14.

300

Id. at 14–21.

301

15 U.S.C. § 1125(a) (emphasis added).

52

or “false association”); and (2) false representations in advertising concerning the quality of
services or goods (“false advertising”).302
The Fifth Circuit has interpreted Section 43 of the Lanham Act as providing protection
against a “myriad of deceptive commercial practices,”303 and has recognized that the “false
representations in advertising” prong can include false representations as to “the product’s
endorsement by the plaintiff.”304 However, it appears that the Fifth Circuit has not explicitly
addressed whether the use of a well-known or “celebrity” plaintiff’s voice, words, or identity in
another work can support a “false endorsement” claim under the first prong of the Lanham Act.305
Nonetheless, the Court notes that the courts of appeal and district courts that have addressed this
question appear to have all concluded that such a claim may be alleged under the first prong of
Section 43(a) of the Lanham Act.306 For example, in Waits v. Frito-Lay, Inc., the Ninth Circuit

302

See Facenda v. N.F.L. Films, Inc., 542 F.3d 1007, 1021 (3d Cir. 2008); Parks v. LaFace Records, 329
F.3d 437, 445 (6th Cir. 2003); L.S. Heath & Son, Inc. v. AT & T Info. Sys., Inc., 9 F.3d 561, 575 (7th Cir. 1993); Waits
v. Frito-Lay, Inc., 978 F.2d 1093, 1108 (9th Cir. 1992) abrogated on other grounds by Lexmark Int'l, Inc. v. Static
Control Components, Inc., 134 S. Ct. 1377, 188 L. Ed. 2d 392 (2014); Stayart v. Yahoo! Inc., 651 F. Supp. 2d 873,
880 (E.D. Wis. 2009), aff'd, 623 F.3d 436 (7th Cir. 2010); see also 5 McCarthy on Trademarks and Unfair Competition
§ 27:9 (4th ed.) (discussing two prongs of section 43(a)); 1 Rights of Publicity and Privacy § 5:20 (2d ed) (same).
Pizza Hut, Inc. v. Papa John's Int’l, Inc., 227 F.3d 489, 494–95 (5th Cir. 2000) (quoting Seven–Up Co. v.
Coca–Cola Co., 86 F.3d 1379, 1387 (5th Cir. 1996))(discussing false advertising).
303

304

Better Bus. Bureau of Metro. Houston, Inc. v. Med. Directors, Inc., 681 F.2d 397, 400 (5th Cir. 1982).

305

See generally 5 McCarthy on Trademarks and Unfair Competition § 28:15 (4th ed.) (noting that a false
endorsement claim could be evaluated under a trademark infringement analysis or under the false advertising prong
of the Lanham Act but recognizing that “almost all courts have put false endorsement cases within the infringement
prong . . .not within the false advertising prong . . . .”).
306

See, e.g., Facenda, 542 F.3d at 1007 (Third Circuit recognizing a false endorsement claim for the use of
a celebrity’s voice in the defendant’s video game); Parks, 329 F.3d at 445 (Sixth Circuit permitting a false
endorsement claim for the use of Rosa Park’s name in the title of a song by the band OutKast); ETW Corp. v. Jireh
Pub., Inc., 332 F.3d 915, 925 (6th Cir. 2003) (“Courts have recognized false endorsement claims under § 43(a) of the
Lanham Act where a celebrity’s image or persona is used in association with a product so as to imply that the celebrity
endorses the product.”); Waits, 978 F.2d at 1108 (celebrity suit against snack manufacturer for unauthorized use of
his distinctive voice in a commercial); Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200,
205 (2d Cir. 1979) (recognizing claim under Section 43(a) because the uniform worn by star of X-rated movie was
confusingly similar to plaintiffs’ trademark uniforms, falsely creating impression that plaintiffs “sponsored or

53

recognized that a Lanham Act claim “based on the unauthorized use of a celebrity’s identity is a
type of false association claim, for it alleges the misuse of a trademark, i.e., a symbol or device
such as a visual likeness, vocal imitation, or other uniquely distinguishing characteristic, which is
likely to confuse consumers as to the plaintiff’s sponsorship or approval of the product.”307
Likewise, courts have consistently recognized false endorsement claims brought by the estate of
deceased celebrities who have sufficiently alleged ownership of the celebrity’s persona and
marks.308
In their motion, Defendants assert that “numerous courts” have rejected Plaintiffs’
argument that the “brief use” of a copyrighted work “implies an affiliation with the creator or
subject of that work.”309 Defendants also contend that performers cannot assert trademark rights in
a performance.310

otherwise approved the use” of the uniform); Allen v. National Video, Inc., 610 F. Supp. 612, 625–26 (S.D.N.Y. 1985)
(recognizing a celebrity’s false endorsement claim under Section 43(a) because celebrities have a commercial
investment in names and faces, and the “underlying purposes of the Lanham Act” are implicated in “cases of
misrepresentations regarding the endorsement of goods and services”).
307

Waits, 978 F.2d at 1108.

308

See Bruce Lee Enterprises, LLC v. A.V.E.L.A., Inc., No. 10-233, 2011 WL 1327137, at *4–5 (S.D.N.Y.
Mar. 31, 2011) (recognizing that “[c]ourts that have considered the issue have found that use of a deceased celebrity’s
persona can support a false endorsement claim under the Lanham Act”); see also Facenda, 542 F.3d at 1018; Parks,
329 F.3d at 445; Branca v. Mann, No. 11-00584, 2012 WL 3263610, at *5–6 (C.D. Cal. Aug. 10, 2012) (finding that
it was not relevant to the false endorsement analysis that Michael Jackson was deceased and that his estate was
asserting his rights); Cairns v. Franklin Mint Co., 24 F.Supp.2d 1013 (C.D. Cal. 1998) (“The phrase ‘another person’
in § 43(a)(1)(A) indicates that Congress selected language broad enough to encompass a claim by a deceased
celebrity’s Estate or by any celebrity’s assignee.”); Fifty–Six Hope Road Music, Ltd., v. A.V.E.L.A., Inc., 688
F. Supp. 2d 1148 (D.Nev. 2010) (precluding summary judgment on false endorsement claim brought by owners of
Bob Marley’s name as to use of Marley’s likeness on defendants’ t-shirts).
309

Id. at 14–15 (citing Oliveira v. Frito-Lay, 251 F.3d 56, 62 (2d Cir. 2001); Henley v. DeVore, 733 F. Supp.
2d 1144, 1167–68 (C.D. Cal. 2010)).
310

Id. (citing Oliveira, 251 F.3d at 62; Henley, 733 F. Supp. 2d at 1168).

54

In opposition, Plaintiffs argue that they have sufficiently alleged each of the elements
required to establish a prima facie false endorsement claim under the Lanham Act: (1) Defendants
used Anthony Barré’s voice and words without permission; (2) Anthony Barré’s voice and words
are distinctive; (3) Anthony Barré’s voice and words were recognized by consumers and the media,
which “caused consumer confusion regarding involvement or approval of his estate” in
“Formation,” the “Lemonade” album, and the “Formation World Tour;” (4) Defendants used
Anthony Barré’s voice and words for commercial purposes; and (5) Defendants profited from
using Anthony Barré’s voice and words.311 Moreover, Plaintiffs assert that courts have recognized
that a cause of action under the Lanham Act can be asserted for unauthorized misappropriation of
a person’s distinctive voice and words.312
As other courts have noted, to prove a violation of Section 43(a)(1)(A) of the Lanham Act
in a false endorsement case, a plaintiff must show that: (1) “its mark is legally protectable;” (2) “it
owns the mark;” and (3) “the defendant’s use of the mark to identify its goods or services is likely
to create confusion concerning the plaintiff’s sponsorship or approval of those goods or

311

Rec. Doc. 72 at 18.

312
Id. at 19 (citing Facenda v. NFL Films, Inc., 542 F.3d 1007 (3rd Cir. 2008); Brown v. Ames, 201 F.3d 654
(5th Cir. 2000)).

55

services.”313 Courts have also acknowledged that consumer confusion as to the plaintiff’s approval
or sponsorship of a product is “the controlling issue” in a false endorsement claim.314
Additionally, although the Fifth Circuit has not addressed the proper test for a false
endorsement claim under the Lanham Act, the Fifth Circuit has provided guidance on the proper
test for courts to consider when determining whether there is a “likelihood of confusion” in other
trademark infringement cases under the Lanham Act.315 In particular, the Fifth Circuit has
instructed that courts should consider several non-exhaustive factors when determining whether a
likelihood of confusion exists, including: (1) the strength of the plaintiff’s mark; (2) the similarity
of design between the marks; (3) similarity of the products; (4) identity of retail outlets and
purchasers; (5) similarity of advertising media used; (6) the defendant’s intent; (7) actual
confusion; and (8) degree of care exercised by potential purchasers.316 “The absence or presence

Facenda, 542 F.3d at 1014 (citing Commerce Nat’l Ins. Servs., Inc. v. Commerce Ins. Agency, Inc., 214
F.3d 432, 437 (3d Cir. 2000)). See also Waits, 978 F.2d at 1108 (noting that a false endorsement claim alleges “the
misuse of a trademark” that is “likely to confuse consumers as to the plaintiff’s sponsorship or approval of the
product”); Stayart v. Yahoo! Inc., 651 F. Supp. 2d 873, 880–81 (E.D. Wis. 2009) (finding that false endorsement
occurs when there is an “unauthorized use of a celebrity’s identity” and the “misuse of a trademark” that is likely to
cause consumer confusion), aff’d, 623 F.3d 436 (7th Cir. 2010). The Court further notes that courts in the Southern
District of New York have adopted a similar four factor analysis for false endorsement claims, and require plaintiffs
to allege that the defendant: (1) “in commerce;” (2) “made a false or misleading representation of fact;” (3) “in
connection with goods or services;” (4) “that is likely to cause consumer confusion as to origin, sponsorship, or
approval of the goods or services.” Bruce Lee Enterprises, LLC, 2011 WL 1327137, at *4; Burck v. Mars. Inc., 571
F. Supp. 2d 446, 455 (S.D.N.Y. 2008); Warner Bros. Entm’t Inc. v. Ideal World Direct, 516 F. Supp. 2d 261, 268
(S.D. N.Y. 2007).
313

314

ETW Corp. v. Jireh Pub., Inc., 332 F.3d 915, 926 (6th Cir. 2003); Stayart, 651 F. Supp. 2d at 880 (noting
that the “key issue in a false endorsement case” is consumer confusion).
See Am. Rice, Inc. v. Producers Rice Mill, Inc., 518 F.3d 321, 329 (5th Cir. 2008) (“To recover on a claim
of trademark infringement, a plaintiff must first show that the mark is legally protectable and must then establish
infringement by showing a likelihood of confusion.”).
315

316

Id. (internal citations omitted).

56

of any one factor ordinarily is not dispositive; indeed, a finding of likelihood of confusion need
not be supported even by a majority of the . . . factors.”317
In their amended complaint, Plaintiffs assert a claim for false endorsement pursuant to
Section 43 of the Lanham Act, 15 U.S.C. § 1125(a), as Plaintiffs allege that Defendants used
Anthony Barré’s “actual, distinctive voice, words and performance” in “Formation” in an
“unethical, misleading, false, unfair and deceptive” manner.318 According to Plaintiffs, Defendants
allegedly had other performers, such as Big Freedia, imitate Anthony Barré’s “voice and cadence”
in saying his popular phrases during the “Formation World Tour.”319 Plaintiffs further allege that
Defendants’ unauthorized actions are likely to result in consumer confusion as to whether Anthony
Barré or his Estate were involved in or contributed to “Formation,” Plaintiffs granted permission
to Defendants to copy Plaintiffs’ works, or Plaintiffs endorsed the use of Plaintiffs’ works in
“Formation.”320 For example, Plaintiffs aver in their amended complaint that Defendants’
“unauthorized use of Mr. Barré’s actual voice and words” influenced the purchasing decisions of
Anthony Barré’s fans and consumers of “Bounce Music,” with which Anthony Barré was closely
associated.321
Based on the foregoing, the Court finds at this time that Plaintiffs have alleged sufficient
facts to bring a false endorsement claim under the Lanham Act. Defendants have not pointed to

317

Id. (quoting Conan Props., Inc. v. Conans Pizza, Inc., 752 F.2d 145, 150 (5th Cir. 1985)) (internal
quotation marks omitted).
318

Rec. Doc. 2 at 29–32.

319

Id. at 18.

320

Id. at 30.

321

Id. at 12, 31.

57

any authority in the Fifth Circuit, nor has the Court found any, that would foreclose Plaintiffs from
alleging a claim under the Lanham Act for false endorsement.
Defendants cite to Oliveira v. Frito-Lay, Inc., where the Second Circuit held that the
plaintiff did not have trademark rights in the recording of her “signature performance” in a song
uniquely associated with her, i.e. “The Girl from Ipanema.”322 However, contrary to Defendants’
assertion, Plaintiffs do not just allege that Defendants violated the Lanham Act by using Plaintiffs’
copyrighted works or performances. Rather, Plaintiffs also allege that Defendants misused
Anthony Barré’s “actual, distinctive voice [and] words” in “Formation” and had others imitate
Anthony Barré’s “voice and cadence” during the “Formation World Tour” in a manner that created
consumer confusion regarding whether Anthony Barré or his Estate were involved with or
endorsed Defendants’ works.323 In other words, Plaintiffs have sufficiently alleged a Lanham Act
claim based on Defendants’ unauthorized use of Anthony Barré’s voice, words, and well-known
persona in a manner that created consumer confusion.
Thus, the Court concludes that Plaintiffs have sufficiently stated a claim for false
endorsement, as Plaintiffs allege that: (1) Anthony Barré was a “very famous” artist whose
“distinctive,” “raspy voice” was a “unique instrument” and whose quotes and catchphrases were
“well-known” and recognized by consumers; (2) Anthony Barré was a “YouTube sensation with
many videos” receiving over two million views and who produced or was featured on two albums
and “numerous songs”; (3) Plaintiffs own Anthony Barré’s marks and works; (4) Defendants
intentionally copied Plaintiffs’ well-known and recognizable marks in connection with a good or

322

Oliveira v. Frito-Lay, Inc., 251 F.3d 56, 62 (2d Cir. 2001).

323

Rec. Doc. 2 at 18, 29–32.

58

service, as Plaintiffs allege that Defendants earned substantial revenues through Tidal
subscriptions, copies of “Formation” and “Lemonade” sold, and concert ticket sales; and (5) it is
likely to cause consumer confusion regarding Plaintiffs’ sponsorship or approval of Defendants’
works, and even influenced the purchasing decisions of Anthony Barré’s and consumers of
“Bounce Music.”324 Accordingly, the Court finds that Plaintiffs have alleged sufficient facts to state
a claim for false endorsement under the Lanham Act.
ii.

Whether Plaintiffs’ Lanham Act claim is barred by the First Amendment

Second, Defendants assert that the First Amendment bars Plaintiffs’ false endorsement
claim.325 Defendants argue that the Court should apply the Rogers test here.326
In Rogers v. Grimaldi, the Second Circuit considered whether a famous actress could bring
a false endorsement claim under the Lanham Act for the use of her name in the title of a movie.327
The Second Circuit rejected the plaintiff’s false endorsement claim, as it held that the Lanham Act
must be construed narrowly to avoid intruding on First Amendment values when titles of works of
artistic expression are at issue.328 The Rogers court determined that the proper balance between
trademark law and free expression “will normally not support application of the [Lanham] Act
unless the title [1] has no artistic relevance to the underlying work whatsoever, or . . . [2] the title
explicitly misleads as to the source or the content of the work.”329 Several circuit courts appear to

324

See Facenda, 542 F.3d at 1014; Waits, 978 F.2d at 1108; Bruce Lee Enterprises, LLC, 2011 WL 1327137,

325

Id.

326

Id. at 18–21.

327

875 F.2d 994 (2nd Cir. 1989).

328

Id. at 997.

329

Id. at 999.

at *4.

59

have adopted and extended the Rogers test beyond claims of false endorsement in titles of artistic
works to the use of trademarks in the body of an artistic work.330
The Fifth Circuit has applied the Rogers test with respect to trademark infringement claims
involving titles of works.331 However, it does not appear that the Fifth Circuit has considered
whether the Rogers test should be applied in trademark infringement cases involving artistic works
generally. Regardless, the Court need not decide this issue here, as even if the Rogers test applies
in this case, Plaintiffs have alleged sufficient facts to survive the motion to dismiss. As stated
supra, the Rogers test will not preclude a claim under the Lanham Act if either: (1) “the use of the
trademark or other identifying material has no artistic relevance to the underlying work;” or
(2) “the use of trademark or other identifying material explicitly misleads as to the source or the
content of the work.”332
Here, Plaintiffs have sufficiently alleged that Defendants’ use of Anthony Barré’s voice
and words “explicitly misleads as to the source or content of the work,” and thus the Rogers test
does not bar their Lanham Act claim.333 For example, Plaintiffs allege in the amended complaint
that the “conduct of Defendants has been willful from the inception of the creation of ‘Formation’
and ‘Lemonade.’”334 Plaintiffs contend that Defendants “intentionally and unlawfully copied the

E.S.S. Entm’t 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095, 1099 (9th Cir. 2008) (“[T]here is no
principled reason why [the Rogers test] ought not also apply to the use of a trademark in the body of the work.”); Cliffs
Notes, Inc. v. Bantam Doubleday Dell Publ’g Group, 886 F.2d 490, 495 (2d Cir. 1989) (applying Rogers test to a
parody book cover); see also Facenda, 542 F.3d at 1015–16 (discussing Rogers test).
330

331

Westchester Media v. PRL USA Holdings, Inc., 214 F.3d 658, 664–65 (5th Cir. 2000) (use of mark
“POLO” to title a magazine); Sugar Busters LLC v. Brennan, 177 F.3d 258 (5th Cir. 1999) (use of mark
“SUGARBUSTERS” in book title).
332

Brown v. Elec. Arts, Inc., 724 F.3d 1235, 1239 (9th Cir. 2013) (alterations omitted).

333

Id.; see also Rogers, 875 F.2d at 999.

334

Rec. Doc. 2 at 22–23.

60

unique and original voice and words of Anthony Barré” to use as the “defining introduction of the
song ‘Formation’” and to be “the seed from which the entire song grows.”335 Plaintiffs also allege
that Defendants “used and exploited” Anthony Barré’s voice and words during the live
performances by having another person imitate his voice and cadence “to provide a false and
unauthorized endorsement of Mrs. Carter and the ‘Formation World Tour.’”336 Plaintiffs further
aver that even after receiving notice from Plaintiffs, “Defendants have failed to cease their
exploitation of Anthony Barré’s voice, words and performance, and have continued their knowing,
intentional and willful infringing activity.”337 Moreover, Plaintiffs assert in their amended
complaint that “Defendants have deceived consumers by their unauthorized use of Anthony
Barré’s actual voice, words and performance,” as Defendants failed to give credit or compensation
in an “unethical, misleading, false, unfair and deceptive” manner.338 Accordingly, construing the
complaint liberally, the Court finds that Plaintiffs have alleged sufficient facts to show that, even
if the Rogers test applies, the First Amendment does not bar Plaintiffs’ Lanham Act claim.
Therefore, the Court denies Defendants’ motion to the extent that it requests that Plaintiffs’
Lanham Act claim be dismissed.
4.

Plaintiffs’ Louisiana Unfair Trade Practices Claim

Defendants argue that Plaintiffs’ claim under LUTPA fails “for the same reasons as their
Lanham Act claim.”339 However, the Court found supra that Plaintiffs have sufficiently alleged a

335

Id. at 19–20.

336

Id. at 18.

337

Id. at 23.

338

Id. at 29–30.

339

Rec. Doc. 50-1 at 21.

61

Lanham Act claim, and Defendants did not offer additional arguments as to why Plaintiffs’ claim
under LUTPA should be dismissed.
LUTPA declares unlawful “[u]nfair methods of competition and unfair or deceptive acts
or practice in the conduct of any trade or commerce.”340 Courts determine what constitutes “unfair”
and “deceptive” conduct on a case-by-case basis.341 Louisiana courts have stated that a practice is
unfair “when the practice is unethical, oppressive, unscrupulous, or substantially injurious.”342
Likewise, Louisiana courts have described a trade practice as deceptive when it amounts to “fraud,
deceit or misrepresentation.”343
Here, Plaintiffs allege that Defendants have committed unfair trade practices in violation
of LUTPA “by digitally sampling, using and exploiting Anthony Barré’s actual voice, reputation
and personality, and converting Plaintiffs’ intellectual property to their benefit.” 344 Plaintiffs
further allege that Defendants “have gone beyond copyright infringement and have acted
unethically, wrongfully and fraudulently, have made misrepresentations, and have profited from
the unique speaking style, gravelly voice, tone, phrasing and manner that defined Mr. Barré.”345

340

La. Rev. Stat. § 51:1405.

341

American Machinery Movers, Inc. v. Machinery Movers of New Orleans, LLC, 136 F. Supp. 2d 599, 604
(E.D. La. 2001); Core v. Martin, 543 So.2d 619, 621 (La. App. 2 Cir. 1989).
342
See Pinero v. Jackson Hewitt Tax Serv. Inc., 594 F. Supp. 2d 710, 720–21 (E.D. La. 2009) (Vance, J.)
(citing Jefferson v. Chevron U.S.A. Inc., 713 So.2d 785, 792 (La. App. 4 Cir. 1998)).
343

See id. at 721 (citing Jefferson, 713 So.2d at 793); see also Computer Mgmt. Assistance Co. v. Robert F.
DeCastro, Inc., 220 F.3d 396, 404 (5th Cir. 2000) (“To recover under LUTPA, a plaintiff must prove fraud,
misrepresentation, or other unethical conduct.”).
344

Rec. Doc. 2 at 32.

345

Id.

62

Accordingly, the Court finds that Plaintiffs have stated a claim under LUTPA, and hereby denies
Defendants’ motion to dismiss Plaintiffs’ LUTPA claim.
5.

Unjust Enrichment Claim

Defendants assert that Plaintiffs’ unjust enrichment claim fails because (1) it is preempted
by the Copyright Act, and (2) it is only available when there is no other remedy available. 346 In
response, Plaintiffs argue that they only bring an unjust enrichment cause of action in the
alternative, and Plaintiffs point to other courts that allowed an unjust enrichment claim to remain
in case the jury determined that the plaintiff could not bring a Copyright Act claim.347
The Louisiana Civil Code clearly states that unjust enrichment “shall not be available if the
law provides another remedy for the impoverishment [of a plaintiff] or declares a contrary rule.”348
The Supreme Court of Louisiana has held that unjust enrichment is a remedy “subsidiary in
nature,” applicable only “to fill a gap in the law where no express remedy is provided.” 349 As the
Fifth Circuit held in Ferrara Fire Apparatus, Inc. v. JLG Industry, Inc., “[t]he important question
is whether another remedy is available, not whether the party seeking a remedy will be
successful.”350 Likewise, this Court has previously held that when a court finds that there are other
remedies at law available, an unjust enrichment claim is precluded by the plain words of Louisiana

346

Rec. Doc. 50-1 at 23.

347

Rec. Doc. 72 at 21.

348

La. Rev. Stat. 2298.

349

Walters v. MedSouth Record Mgmt., 38 So. 3d 243, 244 (La. 2010) (internal citations and quotation marks

omitted).
581 F. App’x 440, 443–44 (5th Cir. 2014). See also Cenac Inland, LLC v. River Valley Shipyards, LLC,
No. CIV.A. 12-2260, 2013 WL 1786641, at *4 (E.D. La. Apr. 25, 2013) (Brown, J.) (holding that, where a court finds
that the plaintiff has stated a claim for the conduct alleged, the Court “must dismiss Plaintiff’s alternative claim for
unjust enrichment, irrespective of whether Plaintiff is ultimately able to successfully pursue its claim.”).
350

63

substantive law, regardless of whether it is was pled in the alternative under federal procedural
law.351 “In Louisiana, by law, an unjust enrichment claim is a ‘subsidiary’ claim, not an alternative
claim.”352 Importantly, it is the availability of another remedy at law that determines whether an
unjust enrichment claim is barred, and not the outcome of Plaintiffs’ other causes of action.353
Here, it appears that Plaintiffs’ unjust enrichment claim is based on the same factual
premises and alleged wrong as their LUTPA, Copyright Act, and Lanham Act claims.354 For
example, Plaintiffs allege that Defendants “were unjustly enriched by their unauthorized use of
Anthony Barré’s actual voice” and that Defendants failed to contract with Plaintiffs to use their
works.355 Moreover, as stated supra, Plaintiffs have sufficiently stated claims under the Copyright
Act, the Lanham Act, and LUTPA, such that those remedies are available to Plaintiffs.
Accordingly, regardless of whether Plaintiffs have brought an unjust enrichment action in the
alternative, because Plaintiffs have other remedies available at law, Louisiana state law precludes
Plaintiffs from bringing an unjust enrichment claim. Therefore, the Court grants Defendants’
motion to the extent that it seeks to dismiss Plaintiffs’ unjust enrichment claim.

351

JP Mack Indus. LLC v. Mosaic Fertilizer, LLC, 970 F. Supp. 2d 516, 521 (E.D. La. 2013) (Brown, J.).

352

Id.

353

See also Mabile v. BP, p.l.c., No. 11-1783, 2016 WL 5231839, at *22 (E.D. La. Sept. 22, 2016) (Brown,
J.); Patterson v. Dean Morris, L.L.P., No. 08–5014, 2011 WL 1743617 (E.D. La. May 6, 2011) (Duval, J.)(holding
that “[t]he availability of an alternative remedy bars [the plaintiff's] claim for unjust enrichment and entitles [the
defendant] to summary judgment on her claim of unjust enrichment” and noting that the fact that the plaintiff failed
to prevail on other remedies does not negate the fact that such remedies were available to the plaintiff).
354

See Rec. Doc. 2 at 33.

355

Rec. Doc. 2 at 33.

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Angel Barré’s Standing

6.

Finally, Defendants argue that Angel Barré lacks standing to assert a copyright
infringement claim, as she allegedly does not own the intellectual property rights at issue.356
According to Defendants, “[w]hile there are two named plaintiffs in this case, the [complaint]
alleges that only one of them owns any rights in the alleged copyright and trademarks at issue,”
i.e. the Estate of Anthony Barré.357 However, Plaintiffs, i.e. the Estate of Anthony Barré and Angel
Barré, also allege in their complaint that “Plaintiffs own a protectable copyright interest” in
Anthony Barré’s YouTube videos.358 Moreover, Plaintiffs allege that Angel Barré is Anthony
Barré’s “sole heir,” and that she was judicially appointed as the Independent Administrator of the
Estate of Anthony Barré.359 In the amended complaint, Plaintiffs also provide links to “Angel
Barré’s videos,” i.e. the YouTube videos at issue in this litigation.360 Moreover, Plaintiffs attach
two Certificates of Registration for copyrights for Anthony Barré’s two YouTube videos, which
both state that the copyright claimant is “Angel Barré.”361 Accordingly, the Court finds that
Plaintiffs’ allegations are sufficient to demonstrate that Angel Barré has standing to proceed in this
litigation. Therefore, the Court denies Defendants’ motion to the extent that it requests dismissal
of Angel Barré for lack of standing.

356

Rec. Doc. 50-1 at 23.

357

Id. at 24.

358

Rec. Doc. 2 at 3.

359

Id.

360

Id. at 2.

361

Rec. Docs. 1-1, 1-2.

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IV. Conclusion
Based on the foregoing, the Court finds that Plaintiffs have alleged sufficient facts to state
a claim for copyright infringement under the Copyright Act and, under the Rule 12(b)(6) motion
to dismiss standard, to overcome Defendants’ fair use defense at this stage of litigation. The Court
also finds that Plaintiffs have alleged sufficient facts to state a claim for false endorsement under
the Lanham Act and a violation of LUTPA. Therefore, the Court denies Defendants’ motion to
dismiss with respect to those claims. The Court further finds that Plaintiffs have failed to state a
claim for unjust enrichment, as there are other remedies available at law to Plaintiffs such that
Louisiana law precludes an unjust enrichment claim here. Therefore, the Court grants Defendants’
motion to dismiss with respect to Plaintiffs’ unjust enrichment claim. Accordingly,
IT IS HEREBY ORDERED that Defendants’ “Motion to Dismiss for Failure to State a
Claim”362 is GRANTED to the extent that it seeks dismissal of Plaintiffs’ claim for unjust
enrichment and DENIED to the extent that it seeks dismissal of Plaintiffs’ copyright infringement
claim on fair use grounds, Plaintiffs’ false endorsement claim under the Lanham Act, and
Plaintiffs’ LUTPA claim.
NEW ORLEANS, LOUISIANA, this 25th day of July, 2017.
____

_________________________________
NANNETTE JOLIVETTE BROWN
UNITED STATES DISTRICT JUDGE

362

Rec. Doc. 50.

66