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.

Cover of The Four Seasons

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.

Ed Sullivan (Photo credit: Wikipedia)

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.

Sony Pictures: Zero Dark Thirty

I’m proud to have been quoted in the International Business Times regarding Academy Award winning film, “Zero Dark Thirty,” which used a telephone message from a victim of 9/11, seemingly without the consent of the victim’s grieving family.

Interesting article.
http://www.ibtimes.com/did-zero-dark-thirty-use-final-phone-call-911-victim-without-permission-1106130

And here’s my contribution to:

Whether or not Mary Fetchet [the victim's grieving Mother] could bring a successful legal case against the filmmakers is hard to say, but legal options in situations such as this are tricky.

Lemoine added that he sympathizes with Fetchet, and acknowledged that a legal analysis of her rights seems cold in light of her obvious — and understandable — emotional distress.

Fashion Care Laundromat, Albany, N.Y. - sprocket hole and layered film (Photo credit: chuckthewriter)

I often receive calls from creatives with business and legal questions about their project. Many thinly funded project leaders balk when they find out that an attorney (including yours truly) charges from $375 per hour and up  – to negotiate deals or assist with disputes, draft entertainment or business contracts or settlements, do copyright or life rights clearance work, assist in obtaining life rights and rights of publicity, file Trademark applications, work on some other intellectual property issue or problem or handle the myriad other needs that are necessary to: develop and produce a film, TV project, pilot, or reality program; develop a smartphone app or game; protect music and publishing rights; protect, option or sell a script; sell photographs, etc., etc., etc.

While I sympathize with the thinly funded creative project, the fact is the creative can’t afford NOT to hire an attorney to do what is needed. A few examples:

- a group of friends decide to write a script and develop a film, and shoot a sizzle reel to help raise money to produce the project. Problems presented? Without a legal structure such as an LLC or corporation, they may all be subject to personal liability if anyone sues… for anything; without proper contracts, the rights to the script, dialog, characters, plot, art direction, costumes, special effects, footage, sound recordings, talent’s performances are not vested in – that is, “owned” by – any single person or entity — meaning the rights to the various content are so split and fractured the project likely can NEVER be used by anyone for a commercial purpose. Or perhaps ANY purpose, commercial or not.

- a writer bases a script on a real person for whom the writer does not have the “life rights.” Problem? After toiling away for months or years on the script, the writer can’t do ANYTHING with the script until that little “life rights” issue is taken care of.

- adaptation of a preexisting work – a book, comic, film, or riff on someone else’s intellectual property. Same problem – without getting the rights to adapt the prior work, he who is doing the adapting can’t do ANYTHING with the work product until working out that little “adaptation rights” issue.

There are thousands of variations to these and similar scenarios.

In the attempt to save perhaps as little as a few hundred dollars on legal advice or properly drafted contracts, the creative has wasted months or years of their own time, and potentially the time and effort of all those working on the project as well.

And pulling random contracts off the internet is equally effective. The non-entertainment attorney has little concept of what they are NOT getting via the “free” internet contract. Omissions from the “free” contract may be TERMINAL to a project – but that may not be realized until far down the line, after hours and weeks and months – or years, of blood, sweat and tears.

Don’t skimp on legal advice and properly drafted agreements.

Get the needed advice and legal work at the outset of the project.

I will happily accept credit card payment for the help you need. Many other entertainment attorneys will as well.

So what do entertainment attorneys cost? A small price, considering their involvement may mean the difference between being able to utilize and prosper from your project, versus having wasted a wealth of time, effort, and creativity.

***

If I may be of assistance in the development of your entertainment, media, video game or app project, or in the development and growth of your business, please call or email at your convenience.

Gano Lemoine

Related articles

• What do movie producers do? (gointothestory.blcklst.com)

Sign up for Pilar Alessandr’aScreenplay Adaptation Workshop on December 12th, and get a special bonus… ME!

December 12th, 7PM to 10:30PM, in Sherman Oaks, CA.

Screenwriting teacher Pilar Alessandra will instruct on the screen adaptation of a play, comic or book, helping you find the right story, structure and style for your project — ultimately guiding you toward developing it for the big screen.

I will be on hand to deliver a primer on life rights, rights of publicity, and copyright licenses needed to make the adaptation yours.

See the link below for more info.

Pilar’s “On The Page” Website – to sign up for the class.

My legal practice is a mix of business clients and entertainment clients, so I come across many people that are growing their endeavor from an early stage. That early stage is frequently a natural progression from a unique combination of passion, interest and skill toward (hopefully) a profession – a going concern – whether that is a business of some sort, or a successful film, writing or music career, or the like.

That transition into a “going concern” is incredibly difficult for many reasons, not the least of which is the difficulty many entrepreneurs find in demanding value for their skill, service or idea. Too often entrepreneurs treat their “it”, whatever it may be, not as a business, but as the uncompensated passion from which the “it” evolved.

In doing so, they hold themselves back – they stifle their own growth into a going concern.

Here are a few common pitfalls to avoid.

After reading these suggestions you can push back from these difficulties with a simple phrase – “I wish I could do that, but my lawyer says I can’t.” (Feel free to substitute “business manager”, “accountant” or “soothsayer” if it helps get the message across).  Somehow blaming the bad news on a trusted advisor makes the refusal more palatable to them that’s hearing it.

1. Do not give “it” away – whatever “it” is.        Whether you are producing a widget, selling a thing-a-ma-jig, or building a client base,  it always seems that the intended customer wants it, initially, for free. Beware – and resist this as much as possible.  Admittedly this may be the most difficult of these pitfalls to avoid. Every entrepreneur has to “give away” some of their time, advice, know how, product, samples, skills, etc., to prove to the world that they have something of value that should be paid for. Granted.

But as the old country wisdom goes, “why buy the cow if the milk’s for free?”

Resist the give-away. If what you are offering has value, require that its value be recognized. If a “free sample” has to be given, fine. Just keep it to a minimum, and be clear in your communication that very quickly the value must be recognized – and paid.

Anyone that expects otherwise is unreasonable – and should be passed by quickly and without regret.

2. Confirm that value in a clear writing – always.     Early entrepreneurs often find it difficult insisting that an agreement be put in writing. They often feel that insisting on a writing shows distrust of the opposite party, and therefore may sour the new relationship.

That is looking at a written agreement from the wrong end.  First and foremost, forming a written agreement is a process that makes the parties focus on the details of their intended arrangement – clarifies the deal and the details of the deal – so as to avoid misunderstandings later.  Simply going through the process of discussing and committing to writing what each party intends will help avoid future misunderstandings and mistakes.

Focus on the who, what, when, where, why (sometimes), and how of the transaction.  How will the performance unfold – multiple stages, milestones and approvals leading to the next stage? How will payment unfold – 1, 2, 3 or more installments as performance goes forward?

If you’re finding it difficult to put your understanding in writing, it may be that the transaction is unclear. But it must be. Otherwise the situation is an invitation to problems, disagreement and miscommunication – i.e. disappointment and mistrust by one or all.

3. Beware “friend” pricing .     Much of an entrepreneur’s early success may come from friends, family or acquaintances  - and that’s great and necessary.  But with that comes the danger of giving a price or terms that are, frankly, unfair and unsustainable.

For example, quoting a price for a service that – without the friend even having requested a discount – is steeply discounted from the standard price. The person giving the quote just negotiated against himself because of the “guilt” of giving the friend a “standard” (and presumably fair) price – for example, quoting a $25,000 job for say, $18,000 – a $7,000 discount off the top – as a sort of favor. Albeit one that wasn’t even requested.

Try to think of that “friend discount” this way. What is the value of what you have to offer? And therefore, what is the discount off of the “standard” rate? (here $7,000).

Independent of this transaction, if you were to go to that friend and say, “Friend, would you do me the favor ofgiving me $7,000? Please? As a gift?” What would the answer most likely be?

But in underpricing the actual value of what you have to offer, you have volunteered to do exactly that.

I’m not suggesting you do not provide “friend” pricing – just be well aware of what you are doing when you do it. Make the decision consciously, and without the cloud of guilt merely because the potential new customer is a friend.

When they come to you as a customer or client, their role has shifted, and your judgment must shift to treating yourself and your business fairly.

4.  Where is the business plan?     Many new business owners dismiss the need for a business plan until someone demands one – a bank or potential investor.

That is certainly understandable. Business plans are tedious and time consuming to put together. No fun. And many people do not have a clear understanding of what a business plan is.

But more dauntingly, business plans require the fledgling business to focus on many scary and nebulous concepts: is there a demand for what I’m offering, is it enough of a demand on which to base a business (in other words, “what is my market”), what are my costs, my expenses, overhead, and therefore profits, and over a one, two, three or longer timeline (in other words, “projected profits/losses”), who are my competitors and can they respond to my presence, how much capital do I need, and how long before I am profitable, and therefore, can I last that long, etc.

But much like the process of forming a written agreement, one of the most beneficial functions of a business plan is in forcing the business to focus on all of the relevant factors. On what must be done, and known, to continue in business – and hopefully move to profitability.

These pitfalls are applicable to businesses and entertainment professionals alike.

The simple fact is that one must treat “it” like a business to become a professional.

I’m looking forward to being a panelist at the Scriptwriters Network Entertainment Attorney Panel – about the law and business of screenwriting – August 13, 2011, 1PM.

Come on out and join us on the Universal Studios Backlot.

http://www.scriptwritersnetwork.org/event20110813.html

Universal Studios Backlot
Rehearsal Hall 3269
Universal City, CA 91608
Any questions, email the Scriptwriters Network at universal@scriptwritersnetwork.org.

A recent question asked whether a project was a permissible “parody” of a preexisting work, or whether the project was too close to the original and was therefore an impermissible rip off – a/k/a copyright infringement.

The answer can be maddeningly complex, and frustratingly (or entertainingly) fact specific.

First the basics: An “idea” is not copyright protectable – an “idea” is too general.

What is copyright protectable is the specific execution of an idea.

A “comedy about a family” is not copyright protectable – it’s just an idea, and far too general. But the specific characters and setting and plot and other myriad details of a specific family, such as The Simpsons, are copyright protectable; because of the specific execution of the details of the idea. And therefore another specific, unique execution of the same idea is also separately, independently, copyright protectable, such as The Family Guy.

Each specific execution is protected from being copied without the authorization of the owner.

But beyond those general rules, the U.S. Copyright Act excuses certain circumstances that would otherwise be impermissible copying.

One of those certain circumstances is what is commonly known as “fair use.” More accurately, the “fair use defense,” because technically it is a legal defense to having been sued for copyright infringement.

Parody is one of those “fair uses.” But not a specifically listed use – or even a clearly referenced use. So much for the basics – now onto the specifics.

Or at least the basics… of the specifics.

Four factors are considered in analyzing whether a use was a “fair use.”
1. The purpose and character of the use of the original copyrighted work – commercial or non-commercial; whether a Section 107 favored purpose – criticism, comment, scholarship, research, news reporting or teaching; the degree of transformation from the purpose of the original to the purpose of the new work;
2. The nature of the copyrighted work – certain types of work are more deserving of protection than others;
3. The amount and substantiality of the portion used of the copyrighted work – in relation to the whole of the copied work; and
4. The effect on the potential market or value of the copyrighted work.

An interlude – Mr. Webster’s definition of “parody” – “a literary or musical work in which the style of an author or work is closely imitated for comic effect or in ridicule; a feeble or ridiculous imitation.” Synonyms include: burlesque, caricature, put-on, rib, send-up, spoof, takeoff, travesty.

So by it’s very nature, a parody MUST closely resemble or reference the original enough for the audience to recall the original, but not so much as to actually BE infringement – thereby “fair use.”

But because parody takes so many forms, bright line, preemptive rules are next to impossible.

Nevertheless, to qualify as a parody the new work PROBABLY should, at the least, (referencing the fair use rules above)
1. aim for comment and/or criticism – not necessarily of the original work, but of something that is shown by the contrast between the original and the parody; and therefore is transformative from the purpose of the original to a new purpose (the original was serious, the new is silly). For example…

A federal court found that one of these photos was a permissible fair use parody of the other. Although very similar in a number of respects, details of lighting, shading, and facial expression made one a parody, as opposed to an impermissible copy.

(But which is the parody…?) (What made you choose the one you chose?)

2. regarding the nature of the copyrighted original work…? OK, a bit of a blind alley here. Admittedly this fair use factor is of little use in determining parody – as even the U.S. Supreme Court agrees (in the “2 Live Crew” case).
3. use an amount and substantiality of the original as is necessary to recall and reference the original, but then inserting sufficient originality (and presumably originality that is mocking or critiquing or deriding or insulting or jeering or taunting or in some way chiding) as to separate the intended parody from the purpose of the original.

The photos above differ in very subtle but very significant ways – sufficient to qualify as parody in that instance.

This one is particularly hard – because it’s a bit like trying to define “funny.” Sometimes a very tricky thing to explain:
Interlude Part Deaux: Tommy DeVito: … I’m funny how, I mean funny like I’m a clown, I amuse you? I make you laugh, I’m here to fuckin’ amuse you? What do you mean funny, funny how? How am I funny?
Henry Hill: Just… you know, how you tell the story, what?
Tommy DeVito: No, no, I don’t know, you said it. How do I know? You said I’m funny. How the fuck am I funny, what the fuck is so funny about me? Tell me, tell me what’s funny!

And, Interlude: The Final Insult: A mashup of the Charles Schultz Peanuts characters giving voice to the GoodFellas dialog above. The Peanuts characters, the video of the Peanuts characters and the dialog from Goodfellas are each separately copyright protected content. So is the mashup a copyright violation, or permissible parody?

And is it funny?   (if you answered “no,” seek counseling).

And the last of the fair use rules; 4. the effect of the use on the potential market for or value of the original work.

But this too is of only limited use in determining parody because usually the owner of the original work would not grant a license (a purchased permission) to the parody artist; so an uncompensated fair use of the original material would not deprive the holder of the original work from a payment; the original material’s owner wouldn’t take the money even if it was offered.

Therefore fair use reference of the original in the parody typically would not affect the market or value of the original.

Parody – it’s just that simple!

Obviously not at all simple.

Which is why it may be important to involve an entertainment attorney early in your creative process, before you have spent months or years writing the script, or developing and producing the film – only to find out that it is NOT a fair use parody. But is instead an impermissible copyright violation, likely to be shut down the moment it sees the light of day.

Additional (and dense) reading:

Luther R. Campbell aka Luke Skyywalker, et. al., Petitioners v. Acuff-Rose Music, Inc., 510 U.S. 569, 114 S.Ct. 1164, 127 L.Ed.2d 500 (S.Ct. 1994);

Leibovitz v. Paramount Pictures Corp., 137 F.3d 109 (2nd Cir. 1998)

**
As an entertainment attorney, my focus is protecting and advancing your project. Please contact me at your convenience if I may be of assistance.

**

Disclaimer: The above is for general information purposes only, is not legal advice and does not create any attorney/client relationship. Please seek legal counsel regarding your specific projects and needs.

Saturday I attended the 2010 USC Institute on Entertainment Law & Business – terrific speakers on the state and future of the industry. The quality of the topics was exceeded only by the high caliber and knowledge of the speakers.

Highlights included…

• The section on the Asian film market. While it’s accurate to say that China and India are a “developing” film market for the American and European film industries, it is also a gross understatement. These countries are already a huge market opportunity for the right films. They will grow exponentially in a very short time. And they are beginning to be enter the arena for American film investment.

• The luncheon keynote by Sony’s Chairman & CEO, Michael Lynton, whose wide ranging conversation reflected on the past, and informed about the future of film, television, new media, 3D in theaters and homes, and how the new generation of entertainment consumers will interact with media in ways we can’t yet imagine.

• The segment on digital distribution and the evolution from the DVD model, to Netflix/Redbox, to Video-on-Demand, purchase vs. rental/timed access, and all the many permutations beyond – multiple devices, revenue models, and where it’s all headed.

• The session on Negotiating TV Deals with Media Giants – authoritative advice and opinion from those representing talent, and counterpoint from representatives of two media giants, Twentieth Century Fox Television and CBS Television.

A terrific day of deepening knowledge and meeting others in the industry.

I even met an attorney from Louisiana who is the cousin of a college roommate! Weird.

My interview with screenwriting teacher and consultant Pilar Alessandra is now up and available!

Our wide ranging conversation was focused on Legal and Business Do’s and Don’ts for screenwriters, and covered many hypotheticals and real world, practical obstacles faced by screenwriters, filmmakers and other creative professionals.

Pilar’s “On The Page” Podcast is a constant source of great information about the craft and business of screenwriting.

From substantive writing lessons, to the information shared by her writer, producer and director guests (and the occasional entertainment attorney), the podcast is a must for those trying to elevate their talent and knowledge. I’ve been a longtime listener, and have found the information invaluable.

www.onthepage.tv

My podcast episode is Episode 162, available through iTunes. Full access to this, and all other OnThePage episodes requires a subscription – well worth the meagre cost considering the wealth of screenwriting instruction the Podcast delivers.

Thanks again Pilar! I throughly enjoyed it.

This week I had the honor of being interviewed on Pilar Alessandra’s excellent Podcast “On The Page,” a fantastic source of information about the craft and business of screenwriting.

www.onthepage.tv

The topic for the interview was “Legal and Business Do’s and Don’ts for Screenwriters,” although we had a wide ranging discussion covering life rights, the newly released movie “The Social Network,” WGA versus U.S. Copyright office script registration, story and idea theft, and plenty of other information useful to writers and filmmakers alike.

The interview will air on October 15th, via the On The Page website and through iTunes.

Thanks Pilar! it was a pleasure.