Your General Counsel
A recent (March 2013) opinion by the U.S. Ninth Circuit Court of Appeals (covering the West Coast and many of Western states) provides an excellent analysis of U.S. copyright law and the fair use defense.
In SOFA Entertainment, Inc., v. Dodger Productions, Inc., the plaintiff, SOFA Entertainment, held the copyright to The Ed Sullivan Show, Ed Sullivan being the iconic maker of music and entertainment careers in the 50′s and 60′s. Dodger Productions produced the live stage musical Jersey Boys, which presented in a morphed live stage musical / documentary style, the formation, success and eventual break-up of the 60′s rock ‘n roll group, The Four Seasons.
At one moment in the Jersey Boys stage show, a brief video clip of The Ed Sullivan show was shown on stage, depicting Ed introducing The Four Seasons. Following that, live performers portraying The Four Seasons began a Four Seasons musical number on stage.
In the stage production, the Ed Sullivan clip is used to emphasize the historical and real life importance of Sullivan’s introduction of The Four Seasons, thereby showing the group’s importance in American music, and particularly in response to the then-occuring British invasion.
The lawsuit arose as Dodger Productions had not licensed the clip of Sullivan from SOFA Entertainment. SOFA sued Dodger alleging copyright infringement.
In a very clearly reasoned opinion, the Ninth Circuit laid out the fair use analysis. The four simple criteria of the test, however, belies an often tricky and nuanced question, which turns on the specific facts of each specific use of copyrighted material. The SOFA court even noted, “Many fair use cases still manage to approach ‘the metaphysics of the law…’”
The basic fair use test is as follows:
1. what is the purpose and character of the use (of another’s copyright protected material), 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.
Despite 4 seemingly simple factors, the inquiry within the inquiry goes deeper down the rabbit hole.
Regarding factor #1, the “purpose and character of the use,” the central inquiry is whether the new work is “transformative.” Does the new work “add something new” to the existing work – new expression, meaning or message?
In the Jersey Boys musical, the Court found that the production had used the clip as a “biographical anchor,” using the importance and relevance of an introduction on The Ed Sullivan show to demonstrate “evidence of the band’s enduring prominence in American music.”
Transformative? Yes. Element 1, satisfied in favor of fair use.
Factor #2 – The nature of the copyrighted work, recognizes that some works, “generally creative works, like fictional stories – ‘are closer to the core of intended copyright protection than others.’” The Court found that while the entire Ed Sullivan episode, or perhaps the performances contained therein, may have been more at the core of copyright, the brief clip at issue conveyed mainly factual information – who was about to perform.
By contrast, the Court may have reached a different conclusion on this factor had the clip been one of the creative performances in the episode, as opposed to this clip being more factual in nature.
Element 2, satisfied in favor of fair use.
Factor #3 is the amount and substantiality of the portion used – the qualitative amount and qualitative value of the original work used in relation to the defendant’s justification for the use.
SOFA admitted that the 7 second clip used was quantitatively insignificant, but argued that Dodger had attempted to capitalize on the central and most beloved part of The Ed Sullivan show, Sullivan’s introduction of popular new rock and roll acts.
The Court found that, because of the brevity of the clip and the simple factual information conveyed in the introduction, it was doubtful whether the clip alone qualified for copyright protection. Moreover, the Court found SOFA’s attempt to rely on Sullivan’s “trademark gesticulation and style” as an element of copyrightable “distinctive expression” to be misplaced.
“It is Sullivan’s charismatic personality that SOFA seeks to protect. Charisma, however, is not copyrightable.”
Element 3, satisfied.
Factor #4 – the market effect; whether the supposedly fair use had a negative impact on the market for the original work and the market for derivative works (other works based on the original work), including whether the supposedly fair use became “unrestricted and widespread.”
Review of this factor, in part, reflects back to the first element, and whether the new use was “transformative.” If the new use was “transformative,” it would perhaps not have a negative effect on the market for the original material. “Where the secondary use [the allegedly fair use - here, the clip used in the stage show] is not a substitute for the original and does not deprive the copyright holder of a derivative use, the fourth factor weighs in favor of fair use. … When the second use is transformative, market substitution is at least less certain.”
The Court found that Jersey Boys was not a substitute for The Ed Sullivan Show, the 7 second clip only appeared once in the stage production, the stage production was not being reproduced on DVD, which would have allowed for repeated viewing of the clip, and that Dodger’s use advanced only its own creation without reasonable threat to SOFA’s business model.
This particular finding does seem to ignore that part of SOFA’s business model was to license clips of its intellectual property, and Dodger’s “free” use deprived SOFA of revenue it would have earned had Dodger paid to license the clip.
But no matter. According to the Court, element 4, satisfied.
Dodger’s use of the 7 second clip was deemed fair use.
The cost of Dodger proving its case – $150,000 in attorney’s fees and costs (at least). This is known because SOFA had lost a similar case previously, so the Court awarded Dodger’s attorney’s fees and costs, noting that SOFA should have known its claims in this case were likely to fail based on the outcome of the previous case.
Had SOFA not lost in a previous and similar case, it is entirely possible that Dodger would NOT have been awarded its attorneys fees and costs, thereby having paid $150,000 to defend its “fair use” of a 7 second clip it likely could have licensed for a few thousand dollars.
So while this case may support a project’s claim that their use of someone else’s copyright protected material is “fair use,” it must be considered whether a project can afford to fight that legal fight – even if certain of victory. Which, in litigation, is never certain.