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A 1980s comedy act, an Andy Warhol painting, and the Copyright Claims Board walk into a bar

Or, what ‘The Diceman’ can teach us about fair use.

Andrew Dice Clay dressed as "The Diceman" in a black t-shirt, leather vest and fingerless gloves, and large sunglasses. He is standing on a stage holding a microphone.

You might recognize Andrew Dice Clay from his popular TikTok account, or as the actor who played Lady Gaga’s father in A Star is Born. But for a time in the 1980s and 1990s, he was most famous for being the first stand-up comedian to sell out Madison Square Garden two nights in a row with his leather jacket wearing, cigarette smoking alter-ego/character, “The Diceman.” And now, because of a new copyright case, The Diceman may be able to teach us something about fair use law today, and particularly, about the role of a relatively new governmental body called the Copyright Claims Board.

One Case with Dice and the Copyright Claims Board

In 1986, Andrew Dice Clay recorded a comedy performance in Philadelphia called One Night with Dice. Years later, in 2020, a company called Store on Sunset produced a documentary series on stand-up comedy that used small parts of this performance. The owner of the rights to that performance, Comedy Spotlight Productions, did not authorize this use and decided to file a lawsuit.  

Comedy Spotlight Productions did not take its case to federal court, but instead filed with the Copyright Claims Board. The Copyright Claims Board is a three-officer tribunal that exists within the United States Copyright Office and that can hear a limited range of disputes. One significant limitation of the jurisdiction of the Board is that it can only hear claims with $30,000 or less in controversy, and can only issue certain types of determinations, including determinations of fair use. Because of this limitation, it is sometimes called the copyright small claims court.  

The Copyright Claims Board is a relatively new institution within the federal government. Congress created the Board as part of an enormous COVID relief funding bill in late 2020, but the Board did not start hearing cases until June 2022. A year and a half later, litigants have filed around 800 claims with the Copyright Claims Board and the tribunal has issued 22 final determinations, the most recent of which was the Andrew Dice Clay case, Comedy Spotlight Productions, Inc. v. Store on Sunset LLC.  

Congress created the Copyright Claims Board to provide an easier, cheaper, and faster way for rightsholders to enforce their rights under copyright than typical federal litigation. Copyright litigation is slow and expensive, typically taking multiple years, and many thousands of dollars to go from filing through trial, and even more time and money if there is an appeal. The Copyright Claims Board’s process is significantly streamlined and designed to be more accessible than normal litigation. As such, it can give people who otherwise can’t enforce their rights the ability to do so.  

At the same time, however, providing a cheaper, easier avenue for rights enforcement may also encourage frivolous lawsuits and feed copyright trolls. Typically, copyright trolls are not creators themselves, but instead are rightsholders whose business models involve suing or otherwise enforcing the rights they hold primarily as a way to generate revenue. In the past, the high cost of federal litigation may have provided a barrier against dubious lawsuits. Lowering the bar to litigation can make lawsuits easier for trolls and normal litigants alike.

To prevent frivolous lawsuits, the Copyright Claims Board includes several safeguards, including one that is particularly important for libraries -- the opt-out provision. Cases before the Board are voluntary insofar as anyone can opt-out of the proceedings and force the case to go to federal court or go away. Because libraries and archives are potentially larger targets for frivolous lawsuits than most individuals, the law includes a special provision that allows these institutions to preemptively opt-out from all proceedings before the Copyright Claims Board. To date, just over a thousand libraries have opted out, including the Penn Libraries.

Where’s Andy?

So what happened with the Andrew Dice Clay case and what can it teach us about the future of fair use law?  

Upon review, the Copyright Claims Board determined that the documentary’s inclusion of small, unlicensed portions of One Night with Dice was fair use. As with any fair use case, the Board looked at the four non-exclusive fair use factors against each other -- 1. The purpose and character of the use; 2. The nature of the copied work; 3. The amount copied from the original work; 4. The harm to the market for the original -- and determined that this use did not infringe on the rights of the copyright holder. It wrote that the factors “overwhelmingly” favored fair use, finding that three out of four factors weighed toward fair use, with only factor 2 cutting slightly against. Ultimately, this was not a close case for the Copyright Claims Board.  

Surprisingly, the Copyright Claims Board did not cite to the recent United States Supreme Court case Andy Warhol Foundation v. Goldsmith, when discussing the first fair use factor, the purpose and character of the use. That case held that Vanity Fair’s use of Orange Prince -- a portrait of the musician, Prince, that used a photograph by Lynn Goldsmith as reference -- was, by law, not transformative. This case upheld a decision from the Court of Appeals for the Second Circuit, holding that this was not fair use. The Court wrote in Warhol that “If an original work and a secondary use share the same or highly similar purposes, and the secondary use is of a commercial nature, the first factor is likely to weigh against fair use, absent some other justification for copying.”

It is odd that the Copyright Claims Board did not cite Warhol, given that Warhol involved a very similar issue. The documentary’s use of the clips from the comedy show was both potentially transformative and commercial -- two things specifically addressed in Warhol. Indeed, Store on Sunset itself cited Warhol when making its argument for fair use.  

So what is going on here? While we can’t be sure, it could be that Warhol’s impact on future fair use cases will be more limited than some people predicted when the case came down. It could be that Warhol’s reasoning only works well for the idiosyncratic facts of that case and may be difficult to apply to other cases.  

Importantly, the Copyright Claims Board can’t create precedent the way decisions from other kinds of courts can, so this determination does not bind any court and does not make new law. Nevertheless, this case is noteworthy because it shows us how an official governmental body thinks about fair use post-Warhol. Warhol wasn’t a factor, and this determination might persuade courts to approach it similarly in the future. Moreover, it is relevant to anyone who may find themselves before the Board, either enforcing their rights, or defending a fair use claim.

More cases will come, both from the Copyright Claims Board and the federal courts, and each one gives us a little more information about how to understand fair use.   



April 17, 2024