By  James Kachmar

The fair use doctrine is a defense that a defendant may raise in a copyright infringement action when an otherwise copyrighted work is used for purposes “such as criticism, comment, news reporting, teaching …, scholarship or research.”  (17 U.S.C. §107.)  Although Congress has listed four factors to guide courts in their analysis of the fair use doctrine, the Ninth Circuit has recognized that: “Many fair use cases still manage to approach `the metaphysics of the law, where the distinctions are or at least may be very subtle and refined and sometimes almost evanescent.’”  It is with that background that the Ninth Circuit recently considered the fair use doctrine as a defense to copyright infringement in the case, SOFA Entertainment, Inc. v. Dodger Productions, Inc.

SOFA owns the copyrights in a vast library of films and television shows which it allows others to use for a licensing fee.  SOFA’s library includes all of The Ed Sullivan Show episodes.

Dodger is the producer of the musical, Jersey Boys, which is about the history of The Four Seasons and its members.  At the end of the first act, the audience is shown a clip from the January 2, 1966 episode of The Ed Sullivan Show wherein Mr. Sullivan introduces the band The Four Seasons.  The clip lasts for approximately seven second and shows Mr. Sullivan in his “signature pose” as he introduces the band to his studio and television audiences.  

The founder of SOFA attended a performance of the Jersey Boys and learned that this clip appeared in the play.  After he determined that Dodger had not obtained SOFA’s permission to air the clip during the performance, SOFA sued Dodger for copyright infringement.  Dodger answered and asserted the defense of the fair use doctrine.  Both parties moved for summary judgment as to the fair use affirmative defense and the district court found in Dodger’s favor that its use of the clip had been a “fair use.”  The trial court also awarded Dodger $150,000 in attorney’s fees and costs because it viewed SOFA’s infringement claim to be objectively unreasonable and determined that an attorney’s fee award would deter future lawsuits that “might chill the creative endeavors of others.”  SOFA appealed the trial court’s rulings.

The Ninth Circuit began by recognizing that the Copyright Act exists “to stimulate artistic creativity for the general public good” by granting authors a “special reward” in the form of “a limited monopoly over their works.”   Despite this, Congress had codified the fair use doctrine to prevent “an overzealous monopolist [from using] his copyright to stamp out the very creativity that the [Copyright] Act seeks to ignite.”   The Ninth Circuit noted that there are four factors to guide the courts in their “fair use” analysis: (1) the purpose and character of the uses including whether such use is of a commercial nature; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the whole of the copyrighted work; and (4) any effect the use may have on the value or potential market for the copyright work.

In reviewing these four factors, the Ninth Circuit concluded that the trial court had properly determined that Dodgers’ use of The Ed Sullivan Show clip was protected under the fair use doctrine.  First, the Ninth Circuit recognized that the central inquiry under the first factor “is whether the new work is `transformative’”.  This means whether the new work “adds something new” to an existing work resulting in the protected work having a “new expression meaning or message” instead of just “superseding the objects of the original creation.”  The Ninth Circuit noted that the use of the clip in the Jersey Boys production was intended “to mark an important moment in the band’s career.”   It was intended to show how the Four Seasons were able to thrive despite the “British Invasion” that was occurring at the time and that by using it for this purpose, “Dodger put the clip to its own transformative ends.”  The Court noted that it was this historical reference that was its intended use and rejected SOFA’s argument that the use of the clip was for its “own entertainment value”.

The Court then turned to the second factor which recognizes that “creative works like fictional stories” tend to be more difficult for an alleged infringer to establish fair use.  However, the use of The Ed Sullivan Show clip was used only to convey historical information, i.e., who was about to perform, and therefore this factor also favored Dodger.

The third factor in the Court’s analysis was to examine “the quantitative amount and qualitative value of the original work used in relation to the defendant’s justification for the use.”  SOFA did not and could not contest that the use of only seven seconds of the clip was “quantitatively insignificant.”  It argued instead that Dodger was intending to capitalize on the “central and most beloved part of The Ed Sullivan Show, namely Ed Sullivan’s introduction of popular new rock and roll acts.”  The Ninth Circuit rejected this position.  First, it held that the seven-second introduction is hardly “qualitatively significant”.  The Ninth Circuit doubted that the clip standing on its own would otherwise qualify for copyright protection.  The Ninth Circuit likewise rejected SOFA’s apparent position that Mr. Sullivan’s “trademark” gesticulation and styling was “copyrightable.”  The court noted that “[c]opyright only attaches to an original work fixed in a tangible medium of expression, never in the underlying ideas or facts.”  While movement and innovation could be elements in an original performance, what SOFA was really arguing was “Sullivan’s charismatic personality” should be copyrightable.  The Ninth Circuit rejected this argument and found that the third factor also favored Dodger.

Finally, the Court looked at the market effect and focused on whether the defendant’s actions became “unrestricted and widespread”.  The Court noted that it was significant that “where the secondary use is not a substitute for the original and does not deprive the copyright holder of the derivative use, the fourth factor weighs in favor of fair use.”  The Ninth Circuit concluded that the Jersey Boys was not a substitute for The Ed Sullivan Show, especially since the clip was only seven seconds and appeared only once.  The Court also found it significant that Dodger did not reproduce Jersey Boys on video tape or DVD which would allow for otherwise repeated viewing.  Thus, there was no reasonable threat that Dodger’s use of the clip in the Jersey Boys posed any danger to SOFA’s business model.  Therefore, the fourth factor favored Dodger’s use of the clip.

After balancing the four factors, the Court was left with the conclusion: “Dodger’s use of the clip did not harm SOFA’s copyright in The Ed Sullivan Show and society’s enjoyment of Dodger’s creative endeavor is enhanced with this inclusion.  This case is a good example of why the ‘fair use doctrine exists.’”  

Next, turning to the issue of attorneys’ fees, the Ninth Circuit recognized that the Copyright Act gives discretion to trial courts to grant a prevailing party its reasonable attorney’s fees.  The most important factor to justify an award is whether an award will further the purposes of the [Copyright] Act.  The Court noted that SOFA had previously lost a similar infringement action, Elvis Presley Enterprises, Inc. v. Passport Video, 349 F.3d 622 (9th Cir. 2003).”  Thus, SOFA should have known “from the outset that its chances of success in this case were slim to none.”   The Ninth Circuit agreed with the trial court that lawsuits of this nature posed the danger of having “a chilling effect on creativity insofar as they discourage the fair use of existing works and the creation of new ones.”  The Court concluded that “when a fee award encourages a defendant to litigate a meritorious fair use claim against an unreasonable claim of infringement, the policies of the Copyright Act are served” and thus, Dodger was entitled to its attorney’s fees.

The SOFA Entertainment case demonstrates the strength of the fair use doctrine as a defense to claims of copyright infringement.  However, given that the analysis is fact intensive, artists are cautioned that although they may eventually prevail on the affirmative defense of fair use, they are likely going to be subject to costly litigation to defend their “fair use” of another’s copyrighted work.