• In a copyright infringement action brought by the owner of a seven-second clip of the “Ed Sullivan Show” against the producers of the live-stage musical “Jersey Boys,” the Ninth Circuit affirmed summary judgment and an award of attorneys’ fees in favor of the defendants, finding that defendants’ use of the historical clip constituted fair use and that plaintiff’s claims were objectively unreasonable.

Plaintiff SOFA Entertainment owns the copyright of a media library, which it licenses for a fee and which includes the entire run of the “Ed Sullivan Show.” Defendants Dodger Productions, Inc., and Dodgers Theatricals, Ltd., are the producers of the live-stage musical “Jersey Boys,” a historical dramatization about the Four Seasons and the lives of its members: Tommy DeVito, Bob Gaudio, Nick Massi, and Frankie Valli. SOFA sued defendants for copyright infringement, based on defendants’ unlicensed use of a seven-second clip of the “Ed Sullivan Show” in “Jersey Boys.” At the end of the first act of “Jersey Boys,” the members of the Four Seasons are shown preparing for their performance on the Ed Sullivan Show, and defendants display a seven-second clip of Ed Sullivan introducing the band to studio and television audiences on a screen hanging over center stage. Defendants argued that their use of the clip in “Jersey Boys” constituted fair use. The trial court agreed, granted summary judgment for defendants, and, finding plaintiff’s claims to be objectively unreasonable, awarded defendants their attorneys’ fees.

On appeal, the Ninth Circuit, applying the Copyright Act’s four-factor test for fair use, also found that the defendants’ use of the clip was “undoubtedly fair.” First, the purpose and character of the use was “transformative,” in that it added something new to the clip’s meaning or message. Defendants used the clip to establish a reference point in rock and roll history and the Four Seasons’ career, rather than for the clip’s own entertainment value. Second, the clip conveyed facts, rather than creative content, which weighs in favor of fair use. Third, Ed Sullivan’s seven-second introduction of the band was not a qualitatively significant portion of that episode of the “Ed Sullivan Show,” and did not, on its own, qualify for copyright protection. Ed Sullivan’s intonations and gesticulations in introducing the Four Seasons were merely part of his personality and charisma, which are not copyrightable. Finally, the court found that defendants’ use of the clip in “Jersey Boys” was unlikely to have an impact on the market for the “Ed Sullivan Show,” particularly because defendants did not market reproductions of “Jersey Boys” on video or DVD where it could repeatedly be seen by the viewer. Accordingly, the four factors weighed heavily in favor of fair use.

The Ninth Circuit also affirmed the award of attorneys’ fees to defendants. The Copyright Act permits an award of reasonable attorneys’ fees if the award will further the purposes of the Copyright Act to encourage production of original works for the good of the public. Plaintiff had litigated very similar issues and lost in a previous action titled Elvis Presley Enterprises, Inc. v. Passport Video. Because plaintiff should have known that its chances of success were low or nonexistent and its lawsuit had a chilling effect on fair use, an award of attorneys’ fees was inappropriate.