A recent decision of the United States Court of Appeals (9th Circuit) provides a refreshing update on fair use involving use of a short excerpt of another work, in this case involving a play. The case is SOFA Entertainment v. Dodger Productions 709 F.3d 1273 (9th Cir. 2013.)

The plaintiff, SOFA, owns copyright in a library of film, television and other media, including the entire run of The Ed Sullivan Show, which was broadcast from 1948 until 1971.

SOFA’s founder attended a performance of highly successful Jersey Boys play, which told the story of the Four Seasons band, and he noticed that the play used a seven second clip of the Ed Sullivan Show, and this led to SOFA suing Dodger for copyright infringement for the unlicensed use of the clip.

The clip was shown towards the end of the first act where one of the performers in the Four Seasons provides narration referring to the so-called “British Invasion” of pop bands in the 1960′s, and refers to the need for an American “Revolution”, with the battle beginning on Sunday night at 8:00 with the whole world watching The Ed Sullivan Show.  After the character provides this context, a seven second clip from The Ed Sullivan Show is shown, with Sullivan in his signature pose, introducing the Four Seasons.

The District Court dismissed SOFA’s claim on summary judgment, and this appeal involved a review of that decision.

The Court noted that the Copyright Act exists to stimulate artistic creativity for the general public good, and does so by granting authors a limited monopoly over their works, but the Court stated that “an overzealous monopolist can use his copyright to stamp out the very creativity that the Act seeks to ignite.”

The fair use assessment in USA includes four factors, which are very similar to the current factors used to assess fair dealing in Canada.

The first factor is the purpose and character of the use.  The Court noted that the Ed Sullivan clip was used to mark an important moment in the band’s career, when many American bands were pushed into obscurity by the British Invasion, kicked off by The Beatles’ own performance on The Ed Sullivan Show.  The Court described the use of the clip as a “biographical anchor” where Dodger was using the clip for “transformative ends”.  Such transformative use favours a finding of fair use.

The second factor is the nature of the work, and the Court noted that while the entire episode of The Ed Sullivan Show or the individual performances may be “near to the core of copyright”, this short clip mainly conveyed factual information about who was about to perform, and therefore favoured the play’s producers.

The third factor looks at quantitative and qualitative value of the work used.  The plaintiff argued that the play’s producers 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.  The Court strongly disagreed and said that: “It is doubtful that the clip on its own qualifies for copyright protection, much less as a qualitatively significant segment of the overall episode.” The Court found that SOFA was seeking to use copyright to try and protect Sullivan’s charismatic personality, which copyright did not do.

The fourth and final factor requires the Court to consider impact on the market for the original work.  The Court found that Jersey Boys was not a substitute for The Ed Sullivan Show, and noted that the clip was just seven seconds long and only appeared once in the play.  The clip was not reproduced in videotape format which would allow for repeated viewing.  The use of the clip only advanced the play but did not threaten SOFA’s business model of licensing footage.

The Court found the use was clearly fair. 

This case provides an interesting contrast to the 1997 2nd Circuit decision in Ringgold v. Black Entertainment Television, which found that the use for about 27 seconds of a poster as background set decoration in a TV show did not constitute fair use.

In this new decision, the Court was so unimpressed with the plaintiff’s claim that the defendant was awarded its legal fees of $155,000.  The Court of Appeals approved this award and stated that:

“SOFA should have known from the outset that its chances of success in this case were slim to none.  Moreover, we agree with the district court that ‘lawsuits of this nature … have a chilling effect on creativity insofar as they discourage the fair use of existing works in the creation of new ones’.”

This case will provide an interesting benchmark which will be assessed again and again as producers of content consider the necessity for clearance for material, and whether fair use (or, in Canada, fair dealing) may relieve the producer from the obligation to license and pay.