Jersey Boys, Ed Sullivan and Fair Use

Jersey Boys, Ed Sullivan and Fair Use

by Jerry Glover
July 9, 2013

“Jersey Boys” was a big success both on Broadway and in national tours.  The so-called juke box musical portrayed the career of the Four Seasons, a male quartet popular in the 1960’s and early 1970’s.  At the end of Act One of the Broadway show, the Four Seasons find out that they’ve been invited to appear for the first time on “The Ed Sullivan Show” on CBS.  If you’re too young to know, “The Ed Sullivan Show” was a variety show that featured well-known, and premiered emerging new, talent including Elvis Presley and the Beatles.

The end of Act One is a seven-second video clip from the television series of Sullivan introducing the singing group.  The owner of the Sullivan archives sued the Broadway show’s production company for copyright infringement.  The production company claimed its use of the clip was a fair use and, ultimately, the United States Court of Appeals for the Ninth Circuit agreed.  SOFA Entertainment, Inc. v. Dodger Productions, Inc., 509 F.3d 1273 (9th Cir. 2013).

The clip was introduced in the play by one of the Four Seasons members who addressed the audience as follows:  “Around this time there was a little dust-up called The British Invasion.  Britannia’s ruling the air waves, so we start our own American revolution. The battle begins on Sunday night at eight o’clock and the whole world is watching.”  The group is shown on stage waiting to go on the Sullivan show.  The Sullivan video introduction is then shown on a screen hanging over the center of the stage.  Ed Sullivan says:  “Now ladies and gentlemen, here, for all of the youngsters in the country, the Four Seasons.”  The screen goes dark; the actors perform a song.

The federal district court found the use of the clip was a fair one and granted summary judgment for Dodger Productions.  The trial court also awarded Dodger attorneys’ fees in the amount of $155,000 finding that SOFA’s claim of infringement was objectively unreasonable.

On appeal the Ninth Circuit noted that the U.S. Copyright Act grants the creator’s of copyrightable works the exclusive authority to control uses of those works.  The court added, however, that the Copyright Act is also intended to spur creativity.  The “overzealous monopolist”, the court noted, can stifle that creativity.  So Congress enacted a provision in the Copyright Act that addressed this situation.  Section 107 of the Act allows individuals to use copyrighted material without the owner’s consent if certain tests are met.  Section 107 notes that fair use is most likely to be found where the purpose of an expressive work is “criticism, comment, news reporting, teaching …, scholarship, or research.”  This list of purposes is not an exhaustive list but merely illustrative of the types of use that might be considered fair use.  Even profit-generating films and Broadway shows can legitimately claim fair use if certain factors are met.  Section 107 list four factors (again, a non-exhaustive list) to consider in determining whether use of copyrighted material is fair:

1.  The purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes

The Ninth Circuit noted that the U.S. Supreme Court has held that the first factor requires the use of the copyrighted material be “transformative.”  See Campbell v. Acuff-Rose Music, Inc.¸510 U.S. 569 (1994).  “Transformative” means the user “add[s] something new to an existing work, endowing the first with new expression, meaning, or message rather than merely superseding the objects of the original creation.  Id. at 579.

The use of the Sullivan clip, the court noted, referenced an important milestone in the Four Seasons’ career.  The court added that despite the British musical invasion, the Four Seasons were still successful and their performance on Sullivan proved their prominence.  The use of the Sullivan clip, in the court’s eyes, was a biographical anchor for the show and therefore transformative.  The court concluded that since the use was transformative, it made little difference that the play was produced for commercial purposes.

2.  The nature of the copyrighted work

The court noted that this fair use factor gives more protection for those works that are at the core of copyright protection—fictional and similar creative works.  Although “The Ed Sullivan Show” was a creative work, the court noted that the clip in question in this case was used for its informational purpose—who was performing.

3.  The amount and substantiality of the portion used in relation to the copyrighted work as a whole

The court noted that the third factor requires a court to examine both the quantitative amount of the copyrighted work that was taken as well as the qualitative value of the portion utilized.  Even SOFA did not argue that the seven second clip was a large quantitative use in comparison to the approximately one-hour episode from which it was taken.  Instead, SOFA argued the use of Sullivan’s introduction of rock groups was the “most beloved part” of a Sullivan show; therefore, the portion of the clip used was qualitatively significant.  In addition, SOFA argued that Sullivan’s distinctive body language and his “gesticulation” were copyrightable.  The court disagreed that any of these style matters were copyrightable even though the court noted that “movement and intonation are elements in an original performance.  The Ninth Circuit concluded that Dodger was trying to copyright Sullivan’s personality which is not copyrightable.

4.  The effect of the use upon the potential market for ore value of the copyrighted work.

This factor requires a court to determine if the new use of the copyrighted material substitutes for the original.  The court stated that “Jersey Boys” was not a substitute for “The Ed Sullivan Show”.  The court emphasized again the short duration of the video clip and noted that Dodger did not sell the Broadway show on DVD which might allow for repeated viewing of the clip.  The court found no threat to SOFA’s ability to license its library of Sullivan shows.

In balancing all four factors, the court concluded that Dodger’s use of the Sullivan clip was a fair use.

The court turned to the question of attorneys’ fees which the trial court had awarded to Dodger.  The court noted that Section 505 of the Copyright Act allows the district court discretion to grant to “the prevailing party” a “reasonable attorney’s fee.”  A party’s “objective unreasonableness (both in the factual and in the legal components of the case)” of the losing party’s claim can be relevant to determining whether an award of attorney’s fees would advance the purposes of the Copyright Act.  Fogerty v. Fantasy, Inc., 510 U.S. 517, 524 (1994).  Here the court noted that SOFA had lost an earlier case involving the fair use of Elvis Presley video clips (Elvis Presley Enterprises, Inc. v. Passport Video, 349 F.3d 622 (9th Cir. 2003)) and should have known that its chances of success in this case were slim to none.  The court affirmed the award of attorney’s fees to Dodger.

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