Display in Musical of Clip from 'Ed Sullivan' Show Was Fair Use

The U.S. Court of Appeals for the Ninth Circuit affirmed that decision, determining that Dodger had transformed the clip and filled it with new meaning by using it for biographical significance. This court analyzed the fair use defense under the factors provided in the Copyright Act (17 U.S.C. ' 107): 1) the purpose and character of the use of the copyrighted material, whether of a commercial nature or for nonprofit educational purposes; 2) the nature of the work; 3) the amount and substantiality of the portion of the material used in relation to the copyrighted work as a whole; and 4) the effect of the use on the potential market for or the value of the copyrighted work.

The Ninth Circuit noted that this analysis can be nearly metaphysical, where the distinctions between fair use and infringement may be “subtle and refined, and, sometimes, almost evanescent.” However, in this case, the Ninth Circuit found this to be an easy case, concluding that Dodger's use of the Sullivan clip was “undoubtedly fair.”

The Purpose and Character of the Use

Under the first factor, courts consider whether the use of the copyrighted material in the new work is “transformative”; that is, whether the use adds something new to an existing work and endows it with “new expression, meaning, or message.” The Ninth Circuit determined that Dodger used the clip as a “biographical anchor” to transform it into a “historical reference point.” Contrary to SOFA's position, the clip was not used for its own entertainment value but as historical evidence that the Four Seasons band was thriving despite the British Invasion and had “enduring prominence in American music.” Because use of the clip was transformative, the Ninth Circuit found little significance to the fact that “Jersey Boys” was a commercial production.

The Nature of the Copyrighted Work

In considering the second fair use factor, the Ninth Circuit noted that an infringer has a more difficult time establishing fair use if it appropriates a work of a creative nature, which is “closer to the core of intended copyright protection” than nonfictional works. Although the entire episode of “The Ed Sullivan Show” at issue or the individual performances on the show are of that core creative nature, the clip conveys mainly the merely factual information of who was about to perform.

The Amount and Substantiality of the Portion Used

The Ninth Circuit also determined that the third factor weighed in Dodger's favor. The seven-second clip is quantitatively insignificant and merely identifies the performers and the section of Sullivan's audience to whom they would appeal. It did not become qualitatively significant because of Sullivan's well-known “gesticulation and style” and “charismatic personality,” none of which are copyrightable.

The Market Effect

In concluding that the fourth fair use factor also weighed in Dodger's favor, the Ninth Circuit observed that “Jersey Boys” is not a substitute for “ The Ed Sullivan Show,” the seven-second clip only appears once, and the play is not reproduced on videotape or DVD, so as to allow repeated viewing of the clip. Thus, the use of the clip in “Jersey Boys” has no impact on the market for “ The Ed Sullivan Show.”

Because all four fair use factors weighed in Dodger's favor, the Ninth Circuit concluded that this was a good example of why the fair use doctrine exists.

Attorneys' Fees

Noting that the primary objective of the Copyright Act is to “encourage the production of original literary, artistic, and musical expression for the good of the public,” the Ninth Circuit concluded that awarding attorneys' fees to Dodger would further those purposes. Although the court observed that it is not necessary to show that the losing party's claim was factually and legally objectively unreasonable, that can be a relevant indicator of whether the primary objective of the Copyright Act is being served by the litigation. Because SOFA was the plaintiff in a previous case where the defendant's use of many television clips of performances by Elvis Presley was found to be transformative because they were used as historical reference points, the Ninth Circuit determined that SOFA should have known from the start that its chances of success were “slim to none.” Accordingly, the fee award to Dodger served the policies of the Copyright Act by encouraging a defendant to litigate a meritorious fair use claim against an unreasonable infringement claim.

Right of Publicity/'Persona Rights'

In passing, the Ninth Circuit noted that copyright law does not cover a person's name and likeness, often known as the “persona.” However, persona rights are often protectable under a patchwork of state statutes and common law rights covering the right of publicity or privacy. Some states do not recognize any right of publicity, some require that the person whose right is being asserted have commercialized that right prior to death, and some protect the right for limited periods after death (10-100 years). Whether the estate of a deceased celebrity owns a posthumous right of publicity generally depends on the celebrity's domicile at death. Some states, such as California, recognize a posthumous right of publicity, while some, such as New York, do not.

As Ed Sullivan appears to have died domiciled in New York, where there is no postmortem right of publicity, SOFA Entertainment was limited to relying on its claim that his characteristic gestures and other parts of his persona were copyrightable and infringed by the seven-second clip. Had Sullivan died while domiciled in a state that recognized a postmortem right of publicity, SOFA Entertainment might have been able to assert that the seven-second clip infringed that right. For example, Indiana has a very broad, statutory postmortem right of publicity that protects the rights of a living or deceased (within the last 100 years) natural person, whether or not the person used or authorized the use of his or her rights of publicity for a commercial purpose during the person's lifetime, and regardless of whether the person lived in Indiana. Unless a federal right of publicity statute is enacted, this issue will continue to be determined on a state-by-state basis.

Judith L. Grubner is a partner in the IP Practice Group of Arnstein & Lehr LLP and a member of this newsletter's Board of Editors. She may be contacted via e-mail at [email protected].

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In SOFA Entertainment, Inc. v. Dodger Productions, Inc. , __ F.3d __ (9th Cir. 2013), the U.S. Court of Appeals for the Ninth Circuit considered whether it was “fair use” under the Copyright Act for the award-winning musical “Jersey Boys” to use a seven-second clip of Ed Sullivan's introduction of the Four Seasons rock band on “ The Ed Sullivan Show” that aired in 1966. The clip is used in the musical to illustrate an important moment in the Four Seasons' history. In a projection on a screen hanging over the center of the stage, Ed Sullivan is seen in his “ signature pose,” saying “Now ladies and gentlemen, here, for all of the youngsters in the country, the Four Seasons. ' “' He turns, extends his hand and open palm, and directs the attention of the audience to the stage. The screen goes dark and the actors in the musical perform the song “Dawn.”

The play, a historical dramatization, is divided into four acts, each narrated by an actor playing one of the band members ' Tommy DeVito, Bob Gaudio, Nick Massi, and Frankie Valli. The clip, which appears at the end of the first act, is introduced by the Bob Gaudio character, who places it in context as a “battle” of an American rock band against the “British Invasion” of bands, originally kicked off by the Beatles' prior performance on “The Ed Sullivan Show.” After the song ends, the Gaudio character speaks again, explaining that the Four Seasons was not a social movement like the Beatles, but appealed to military personnel and blue collar workers.

SOFA Entertainment, Inc., owner of the copyrights in the entire run of “The Ed Sullivan Show,” sued Dodger Productions, Inc. and Dodger Theatricals, Ltd. (collectively, “Dodger”) over their use of the Sullivan introduction. The U.S. District Court for the Central District of California concluded that Dodger had made a “fair use” of the clip, granted Dodger summary judgment, and awarded Dodger $155,000 in attorneys' fees and costs. The District Court found that SOFA's copyright infringement claim was objectively unreasonable.

The U.S. Court of Appeals for the Ninth Circuit affirmed that decision, determining that Dodger had transformed the clip and filled it with new meaning by using it for biographical significance. This court analyzed the fair use defense under the factors provided in the Copyright Act (17 U.S.C. ' 107): 1) the purpose and character of the use of the copyrighted material, whether of a commercial nature or for nonprofit educational purposes; 2) the nature of the work; 3) the amount and substantiality of the portion of the material used in relation to the copyrighted work as a whole; and 4) the effect of the use on the potential market for or the value of the copyrighted work.

The Ninth Circuit noted that this analysis can be nearly metaphysical, where the distinctions between fair use and infringement may be “subtle and refined, and, sometimes, almost evanescent.” However, in this case, the Ninth Circuit found this to be an easy case, concluding that Dodger's use of the Sullivan clip was “undoubtedly fair.”

The Purpose and Character of the Use

Under the first factor, courts consider whether the use of the copyrighted material in the new work is “transformative”; that is, whether the use adds something new to an existing work and endows it with “new expression, meaning, or message.” The Ninth Circuit determined that Dodger used the clip as a “biographical anchor” to transform it into a “historical reference point.” Contrary to SOFA's position, the clip was not used for its own entertainment value but as historical evidence that the Four Seasons band was thriving despite the British Invasion and had “enduring prominence in American music.” Because use of the clip was transformative, the Ninth Circuit found little significance to the fact that “Jersey Boys” was a commercial production.

The Nature of the Copyrighted Work

In considering the second fair use factor, the Ninth Circuit noted that an infringer has a more difficult time establishing fair use if it appropriates a work of a creative nature, which is “closer to the core of intended copyright protection” than nonfictional works. Although the entire episode of “The Ed Sullivan Show” at issue or the individual performances on the show are of that core creative nature, the clip conveys mainly the merely factual information of who was about to perform.

The Amount and Substantiality of the Portion Used

The Ninth Circuit also determined that the third factor weighed in Dodger's favor. The seven-second clip is quantitatively insignificant and merely identifies the performers and the section of Sullivan's audience to whom they would appeal. It did not become qualitatively significant because of Sullivan's well-known “gesticulation and style” and “charismatic personality,” none of which are copyrightable.

The Market Effect

In concluding that the fourth fair use factor also weighed in Dodger's favor, the Ninth Circuit observed that “Jersey Boys” is not a substitute for “ The Ed Sullivan Show,” the seven-second clip only appears once, and the play is not reproduced on videotape or DVD, so as to allow repeated viewing of the clip. Thus, the use of the clip in “Jersey Boys” has no impact on the market for “ The Ed Sullivan Show.”

Because all four fair use factors weighed in Dodger's favor, the Ninth Circuit concluded that this was a good example of why the fair use doctrine exists.

Attorneys' Fees

Noting that the primary objective of the Copyright Act is to “encourage the production of original literary, artistic, and musical expression for the good of the public,” the Ninth Circuit concluded that awarding attorneys' fees to Dodger would further those purposes. Although the court observed that it is not necessary to show that the losing party's claim was factually and legally objectively unreasonable, that can be a relevant indicator of whether the primary objective of the Copyright Act is being served by the litigation. Because SOFA was the plaintiff in a previous case where the defendant's use of many television clips of performances by Elvis Presley was found to be transformative because they were used as historical reference points, the Ninth Circuit determined that SOFA should have known from the start that its chances of success were “slim to none.” Accordingly, the fee award to Dodger served the policies of the Copyright Act by encouraging a defendant to litigate a meritorious fair use claim against an unreasonable infringement claim.

Right of Publicity/'Persona Rights'

In passing, the Ninth Circuit noted that copyright law does not cover a person's name and likeness, often known as the “persona.” However, persona rights are often protectable under a patchwork of state statutes and common law rights covering the right of publicity or privacy. Some states do not recognize any right of publicity, some require that the person whose right is being asserted have commercialized that right prior to death, and some protect the right for limited periods after death (10-100 years). Whether the estate of a deceased celebrity owns a posthumous right of publicity generally depends on the celebrity's domicile at death. Some states, such as California, recognize a posthumous right of publicity, while some, such as New York, do not.

As Ed Sullivan appears to have died domiciled in New York, where there is no postmortem right of publicity, SOFA Entertainment was limited to relying on its claim that his characteristic gestures and other parts of his persona were copyrightable and infringed by the seven-second clip. Had Sullivan died while domiciled in a state that recognized a postmortem right of publicity, SOFA Entertainment might have been able to assert that the seven-second clip infringed that right. For example, Indiana has a very broad, statutory postmortem right of publicity that protects the rights of a living or deceased (within the last 100 years) natural person, whether or not the person used or authorized the use of his or her rights of publicity for a commercial purpose during the person's lifetime, and regardless of whether the person lived in Indiana. Unless a federal right of publicity statute is enacted, this issue will continue to be determined on a state-by-state basis.

Judith L. Grubner is a partner in the IP Practice Group of Arnstein & Lehr LLP and a member of this newsletter's Board of Editors. She may be contacted via e-mail at [email protected].

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