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Jersey Boys’ Use of Ed Sullivan Show Clip Is Fair Use, Ninth Circuit Affirms

Copyright Patent Telecommunications
SOFA Entm't, Inc. v. Dodger Prods., Inc. By Erica Larson – Edited by Alex Shank SOFA Entm't, Inc. v. Dodger Prods., Inc. No. 2:08-cv-02616 (9th Cir. Mar. 11, 2013) Slip Opinion [caption id="attachment_3129" align="alignleft" width="150"] Photo By: bagaball - CC BY 2.0[/caption] The Ninth Circuit affirmed the decision of the District Court for the Central District of California to grant summary judgment and award attorneys’ fees to Dodger Productions, Inc. (“Dodger”) in its suit against SOFA Entertainment, Inc. (“SOFA”). In an opinion by Judge Trott, the court concluded that Dodger’s unlicensed use of a clip from the Ed Sullivan Show fell squarely within the fair use exception. In so holding, the court stated that the use was transformative and the clip used was not at the core of the copyrighted work. In addition, the court awarded attorneys’ fees to Dodger, on the grounds that SOFA should have known that it had little chance of success. Dan Levine, writing for Thomson Reuters, offers a concise overview of the case. All Media Law provides a more detailed discussion. In her blog, Rebecca Tushnet focuses on the court’s use of fees to send a message about the purposes of copyright. The clip in question was a seven-second shot of the late Ed Sullivan introducing the Four Seasons, a 1960s-era rock band. SOFA owns the copyrights to the Ed Sullivan Show, as well as those of several other television series. Dodger produces a musical, Jersey Boys, based on the career and lives of the members of the Four Seasons. The two-hour show has been staged in several major cities. In the musical, immediately before the contested clip is shown, an actor portraying one of the Four Seasons’ members explains that the band hopes to use its performance on the Ed Sullivan Show to redirect the attention of music-listeners away from British bands and onto American groups such as the Four Seasons. Ed Sullivan’s introduction plays for the audience as the actor-band warms up and old-fashioned NBC cameras roll past. The court considered Dodger’s claim of fair use in light of the factors specified by the Copyright Act of 1976: (1) the purpose and character of the use, including whether such use is of a commercial nature or for a nonprofit educational purpose; (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 or value of the copyrighted work. 17 U.S.C. § 107. The court emphasized that the use of the clip was transformative because it imbued the material with new historical meaning rather than simply offering the same entertainment contained in the original episode of the Ed Sullivan Show. Additionally, the clip was not, in the court’s opinion, close to the “core” of the copyrighted show. The short clip presented Sullivan’s introduction of the Jersey Boys, but did not include such “core” material as the actual Jersey Boys performance on the show or the episode as a whole. SOFA Entm't at 9. The court awarded attorneys’ fees to Dodger because SOFA should have known from its experience as a plaintiff in a similar case that its chances of success were slim. Awarding fees in such cases encourages defendants to litigate against unreasonable claims of copyright infringement and discourages plaintiffs from bringing such claims in the first place. Given the context of the Ed Sullivan clip within Jersey Boys and its experience as a plaintiff in Elvis Presley Enterprises, Inc. v. Passport Video, SOFA should have known that it was unlikely to succeed in this suit. 349 F.3d 622 (9th Cir. 2003). Elvis Presley was a “close call,” id. at 629, in which the Ninth Circuit affirmed a district court judge’s holding that the use of television clips, photographs and musical recordings were not fair use under the Copyright Act. In contrast to Elvis Presley, the Ninth Circuit believed that this case fit so easily into the fair use exception that awarding attorney’s fees was appropriate to deter similar suits. SOFA Entm't at 12-13. Erica Larson is a 1L at Harvard Law School.