SOFA sued over a 7-second clip of Ed Sullivan’s introduction of the Four Seasons on The Ed Sullivan Show, used in a musical about the Four Seasons, Jersey Boys, to mark a moment in the band’s career. The court of appeals affirmed the grant of summary judgment on fair use and the award of attorneys’ fees to Dodger. “By using the clip for its biographical significance, Dodger has imbued it with new meaning and did so without usurping whatever demand there is for the original clip.”
The clip appears at the end of the first act, just after one of the band members addresses the audience and explains that the band is contending with the British Invasion, appearing on television with the "whole world" watching: The clip is shown on a screen hanging over center stage; in it, Sullivan assumes his “signature pose” and introduces the band: “Now ladies and gentlemen, here, for all of the youngsters in the country, the Four Seasons . . . .” He turns and gestures for the audience to turn its attention to the stage. The screen goes dark, and then the actors sing.
The district court, viewing SOFA’s infringement claim as objectively unreasonable and chilling of the creativity of others, awarded $155,000 in attorneys’ fees and costs. Many fair use cases involve subtle and refined distinctions; “[f]ortunately, this is not one of those cases.”
First, the use was transformative: it used the clip to mark an important moment in the band’s career. “Being selected by Ed Sullivan to perform on his show was evidence of the band’s enduring prominence in American music. By using it as a biographical anchor, Dodger put the clip to its own transformative ends.” The argument that the clip was merely used for its own entertainment value wasn’t supported by the record. Jersey Boys’ commerciality was therefore of little significance.
As for the nature of the work, “[w]hile the entire episode of The Ed Sullivan Show or the individual performances may be near to the core of copyright, the clip conveys mainly factual information – who was about to perform.” This factor also favored Dodger
So did the amount and substantiality of the portion used. Of course the use was quantitatively insignificant, but SOFA argued that Dodger “attempted 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,” by incorporating the clip into the play. This was wrong for two reasons. First, the 7-second intro was “hardly” qualitatively significant—it was Sullivan identifying the group and the section of his audience to whom The Four Seasons would appeal. “It is doubtful that the clip on its own qualifies for copyright protection, much less as a qualitatively significant segment of the overall episode.” Second, Sullivan’s “trademark gesticulation and style” was uncopyrightable. “It is Sullivan’s charismatic personality that SOFA seeks to protect. Charisma, however, is not copyrightable.”
Market effect also favored Dodger. Jersey Boys wasn’t a substitute for The Ed Sullivan Show; it didn’t even allow repeated viewing of the clip (not that this would matter, as indicated by the court’s invocation of, among others, Ty v. Publications Int’l and Bill Graham Archives v. Dorling Kindersley, both cases about books). “Dodger’s use of the clip advances its own original creation without any reasonable threat to SOFA’s business model.”
Overall, “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 its inclusion. This case is a good example of why the ‘fair use’ doctrine exists.”
Fees: the most important consideration in a fee award is whether it will further the purposes of the Copyright Act, to encourage the production of original expression for the public good. Objective unreasonableness is also relevant. “In light of the education SOFA received as the plaintiff in Elvis Presley Enterprises [an earlier case], SOFA should have known from the outset that its chances of success in this case were slim to none.” Plus, the court of appeals agreed that lawsuits like this one chill creativity by discouraging fair use. “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.”