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“Oh What A Night!” Ed Sullivan’s Charisma Not Enough To Overcome Fair Use Defense For The Jersey Boys’ Use Of A Seven-Second Clip

The Ninth Circuit affirmed the lower court’s summary judgment and award of attorneys’ fees in a copyright infringement case finding that a 7-second clip from The Ed Sullivan Show used in the musical Jersey Boys constituted fair use because of its historical significance.  SOFA Entertainment, Inc. v. Dodger Productions, Inc., Case No. 10-56535 (9th Cir. March 11, 2013) (available here).  The clip was from the introduction of the band the Four Seasons on The Ed Sullivan Show and was used in the Jersey Boys musical about the Four Seasons.  SOFA owns the copyrights to the entire Ed Sullivan Show, including the clip in which Ed Sullivan introduces the Four Seasons.  Dodger produced the musical Jersey Boys, which is a historical dramatization about the Four Seasons.  The clip portrayed Ed Sullivan in his “signature pose” introducing the Four Seasons to his studio and television audiences.

SOFA Entertainment, Inc. (“SOFA”) sued Dodger Productions, Inc. (“Dodger”) alleging copyright infringement.  Dodger argued that the use constituted fair use under the U.S. Copyright Act (17 U.S.C. § 107).  Both parties moved for summary judgment and the lower court granted it in favor of Dodger.  The lower court then awarded Dodger attorneys’ fees and costs, finding SOFA’s lawsuit unreasonable.  SOFA appealed.  The Ninth Circuit affirmed.  “By using the clip for its biographical significance, Dodger has imbued it with new meaning and did so without usurping whatever demand there is for the original clip.”  SOFA, Slip Op. P. 3.

The fair use doctrine allows the use of copyrighted works without the permission of the copyright owner for purposes such as criticism, comment, news reporting, teaching, or research.  The Copyright Act lists four factors to aid courts in their fair use analysis: “(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.”  17 U.S.C. § 107.

In analyzing the purpose and character of the use, the Ninth Circuit noted that Dodger’s use of the Ed Sullivan clip was to mark an important moment in the Four Season’s career as a band.  “At that point in rock & roll history, many American bands were pushed into obscurity by the weight of the “British Invasion,” which was kicked off by the Beatles’ performance on The Ed Sullivan Show. The Four Seasons, however, thrived. Being selected by Ed Sullivan to perform on his show was evidence of the band’s enduring prominence in American music.”  SOFA, Slip Op. P. 9.  As a result, even though Jersey Boys is a commercial production, Dodger transformed the clip by citing to its historical significance and therefore met the first prong of the fair use test.

In looking at the nature of the Ed Sullivan clip, the Ninth Circuit stated that “[a]n alleged infringer will have a more difficult time establishing fair use when he appropriates a work [creative in nature]. While the entire episode of The Ed Sullivan Show or the individual performances may be near to the core of copyright, the clip conveys mainly factual information – who was about to perform. Therefore, the second factor also favors Dodger.”  SOFA, Slip Op. P. 9.

For the third prong, SOFA did not challenge the conclusion that the 7-second clip was insignificant compared to the length of an Ed Sullivan episode, but argued that Dodger attempted to capitalize on the favorite part of the Ed Sullivan Show, when Ed would introduce the bands.  However, the Ninth Circuit rejected this argument for two reasons.  First, the 7-second clip is not qualitatively significant because Ed Sullivan simply identifies the Four Seasons and it is unlikely that the clip would be copyrightable on its own.  Second, SOFA was incorrect in arguing that Ed Sullivan’s signature pose and style are copyrightable because, while movements and intonations are elements that can be protected, SOFA sought to protect Sullivan’s personality as well.  “Charisma, however, is not copyrightable.”  SOFA, Slip Op. P. 10.

Finally, in examining Dodger’s use of the clip on the market for the Ed Sullivan Show, the Ninth Circuit concluded that the factor weighed in favor of Dodger.  When the use is not a substitute for the original and allows the copyright holder a derivative use, the factor weighs in favor of fair use.  “Jersey Boys is not a substitute for The Ed Sullivan Show. The clip is seven seconds long and only appears once in the play. Dodger does not reproduce Jersey Boys on videotape or DVD, which would allow for repeated viewing of the clip. Dodger’s use of the clip advances its own original creation without any reasonable threat to SOFA’s business model.”  SOFA, Slip Op. P. 11.

Turning to attorneys’ fees, the Ninth Circuit found that an award of attorneys’ fees would further the purpose of the Copyright Act, which is to “encourage the production of original literary, artistic, and musical expression for the good of the public.” Fogerty v. Fantasy, Inc., 510 U.S. 517, 524 (1994).  The Ninth Circuit affirmed the summary judgment in favor of Dodger under the fair use doctrine and affirmed the award of attorneys’ fees.

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