The U.S. Court of Appeals for the Ninth Circuit concluded that the use by a musical production company in the musical Jersey Boys of a seven-second clip from The Ed Sullivan Show was protected as fair use. Sofa Entertainment Inc. v. Dodger Productions Inc., 9th Cir., No. 10-56535 (9th Cir., Mar. 11, 2013) (Trott, J.)

Jersey Boys is a historical dramatization of the story of Frankie Valli and the Four Seasons. The play is broken up into four acts or “seasons,” each of which is narrated by an actor playing one of the band members. At the end of the first act, an actor playing band member Bob Gaudio describes the British Invasion and the start of the band’s own American revolution. As Gaudio finishes his lines, the Four Seasons are seen setting up for their performance on The Ed Sullivan Show, followed by a seven-second clip from the January 2, 1966, episode of The Ed Sullivan Show in which Ed Sullivan introduces the band. After the district court concluded the use was a fair use under the Copyright Act, Sofa appealed.

In considering whether Dodger’s use of the clip constituted fair use, the Ninth Circuit reviewed the purpose of fair use under the Copyright Act as set out in Twentieth Century Music Corp. v. Aiken, and then applied each of the codified four fair use factors.

The main inquiry under the first factor was whether the new work was, under Campbell v. Acuff-Rose Music, “transformative.” In considering the use of the clip in Jersey Boys, the Court found that Dodger relied on the Four Seasons’ performance on The Ed Sullivan Show to underscore an important moment in the band’s career. The Court found, “by using it as a biographical anchor, Dodger put the clip to its own transformative ends.” As a result, the Court found the first fair use factor to heavily favor Dodger.

In applying the second factor, in which the nature of the copyrighted work is considered (i.e., whether the work is close to the core of the intended copyright protection), the Court found that since the clip conveyed mainly factual information regarding who was about to perform, the second factor also favored Dodger.

The third factor looks to the amount and substantiality of the portion used in relationship to the copyrighted work as a whole. Sofa conceded that the seven-second clip was quantitatively insignificant, but argued that Dodger attempted to capitalize on the central and most beloved part of The Ed Sullivan Show, namely, Ed Sullivan’s introduction. The Court disagreed, stating that it was doubtful that the clip on its own qualified for copyright protection, much less as a significant segment of the overall episode. In response to Sofa’s reliance on Sullivan’s distinct mannerisms and style, the Ninth Circuit, citing Harper & Row v. Nation Enterprises, emphasized that charisma was not copyrightable.

The Ninth Circuit found that the fourth factor, the impact of secondary use on the market for the original work and the market for derivative works, also weighed in Dodger’s favor. The Court determined that Jersey Boys was not a substitute for The Ed Sullivan Show, and that use of the clip advanced Dodger’s own original creation without any reasonable threat to SOFA’s business model.

Finding that all of the fair use factors weighed in favor of Dodger, the Ninth Circuit concluded that use of the clip did not harm SOFA’s copyright and was a fair use.

Finally, turning to the district court’s award of attorneys’ fees, the Ninth Circuit affirmed the award, stating that “[w]hen 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.”