This article first appeared in Entertainment Law Matters, a Frankfurt Kurnit legal blog.
On March 11, 2013, the United States Court of Appeals for the Ninth Circuit affirmed the district court's judgment and award of attorneys' fees in favor of the company that produced the Broadway musical hit Jersey Boys. The company had been sued for copyright infringement for including in the musical a 7-second clip from a January 2, 1966 episode of The Ed Sullivan Show in which Ed Sullivan introduces the Four Seasons.
In holding that the producer's use of the clip constituted fair use as a matter of law, the Ninth Circuit did not hide its deep skepticism of the interests of the plaintiff, SOFA Entertainment, Inc. ("SOFA"). The court observed that while the Copyright Act grants authors a "limited monopoly over their works" in order to foster creativity, "an overzealous monopolist can use his copyright to stamp out the very creativity that the Act seeks to ignite."
Several points about the Ninth Circuit's application of the four-factor test for fair use are worth exploring.
Purpose and Character of the Use
In analyzing the first factor, the court, following a common trend in cases grappling with fair use, jumped directly to the question of whether the use of the clip was "transformative." The court held that by using the Ed Sullivan introduction as a "biographical anchor" to mark an "important moment in the band's career," the producer "put the clip to its own transformative ends." In support of that holding, the court relied on Elvis Presley Enters., Inc. v. Passport Video, 349 F.3d 622, 629 (9th Cir. 2003) and Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605, 609 (2d Cir. 2006).
The court's reliance on the Elvis case is particularly noteworthy.In that case, owners of copyrighted materials relating to Elvis Presley, including SOFA (a point not lost on the Ninth Circuit, as discussed below), sued the producer of a 16-hour video documentary covering the life of Elvis that incorporated many copyrighted video clips of The Ed Sullivan Show and other programs without authorization. Although you would not know it from reading the Jersey Boys decision (this blogger certainly did not), SOFA and the other plaintiffs actually prevailed in that lawsuit, with the Ninth Circuit affirming the lower court's grant of a preliminary injunction against the filmmaker.Elvis Presley Enters., 349 F.3d at 911. However, the Ninth Circuit noted that its decision might have been different had it been "examining the case ab initio as district judges," as opposed to "whether the district court abused its discretion" in determining that the plaintiffs were likely to succeed on the merits of their attack against the documentarian's fair use defense.Id. at 630. Indeed, the Ninth Circuit observed that the first fair use factor was "a close issue" based on its finding that the "use of many of the television clips is transformative because they are cited as historical reference points in the life of a remarkable entertainer."Id. at 629 (emphasis added). But the inclusion of lengthier clips, played without interruption, had the "same intrinsic entertainment value" as the original, and thus tipped the first factor against a finding of fair use.Id. In the case of Jersey Boys, on the other hand, the court was not persuaded that the 7-second clip was used for its "own entertainment value," even though it was part of a feel-good Broadway musical about a rock and roll band.
Interestingly, the first fair use factor does not mention the "transformative use" test, but does direct courts to examine "whether such use is of a commercial nature." Nevertheless, the Ninth Circuit swept aside the fact that Jersey Boys is a commercial production as having "little significance," based solely on the court's determination that the use of the clip was "transformative."
The Nature of the Copyrighted Work
The court found that the second factor, which looks to whether the use is "closer to the core of intended copyright protection," Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 579, favored the producer because the clip contained "mainly factual information – who was about to perform."Remarkably, the Ninth Circuit held that it was "doubtful that the clip on its own qualifies for copyright protection" at all. The court rejected SOFA's argument that Sullivan's "trademark gesticulation and style" warranted strong copyright protection. While "movement and intonation are elements of original performance," held the court, Sullivan's "charismatic personality" is not copyrightable.
The Amount and Substantiality of the Portion Used
SOFA conceded that the 7-second clip was not quantitatively significant, but argued that Jersey Boys "attempted to capitalize on the central and most beloved part of The Ed Sullivan Show" – the host's introduction of new acts – attempting to analogize the face to The Nation's infringing publication of the "heart" of President Ford's memoirs in Harper & Row Publishers, Inc. v. Nation Enterpises, 471 U.S. 539, 565 (1985).The Ninth Circuit rejected the analogy, holding that unlike the "distinctive expression" of President's Ford's writing copied by the magazine, in the clip used by Jersey Boys Ed Sullivan was only introducing a band. As discussed above, the court was not convinced that that footage contained any "qualitatively significant" expression under copyright law.
The Market Effect
The most interesting point about the court's analysis of the fourth factor was its brevity and what it did not say. The court found that the fourth factor favored fair use because "Jersey Boys is not a substitute for The Ed Sullivan Show."Despite the fact that SOFA's business model is based on obtaining fees for licensing its library of content, the decision contains no discussion of the impact that the unlicensed use of its materials by Jersey Boys and others in its wake would have on SOFA's licensing market. This absence can be explained by the district court's finding that SOFA's "only evidence in support of its argument that Defendant's use of the Clip has a deleterious effect on an existing or potential market for Plaintiff's copyrighted work" was a self-serving and unsubstantiated declaration. Sofa Entm't, Inc. v. Dodger Prods., Inc., 782 F. Supp. 2d 898, 909 (C.D. Cal. 2010).
Attorneys' Fees
The Ninth Circuit also affirmed the district court's award of attorneys' fees." In light of the education SOFA received as the plaintiff in Elvis Presley Enterprises," the court found, "SOFA should have known from the outset that its chances of success were slim to none." Given that SOFA won in the Elvis case, SOFA and its attorneys must be scratching their head at this harsh ruling.
While this, like so most copyright cases, is very fact specific, the decision does run counter to a number of recent copyright cases in which the use of relatively small amounts of visual or musical materials in a commercial production was found to be infringing. It also stands as a warning to aggressive copyright owners that there may be a price to pay for over-zealously asserting their rights, especially when they fail to produce hard evidence of the adverse impact that the challenged use is having on the value of their copyright.
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