Tuesday, March 12, 2013
Ninth Circuit Upholds Fair Use Ruling in ‘Jersey Boys’ Case
By KENNETH OFGANG, Staff Writer
The producer of the stage musical “Jersey Boys” did not infringe copyright by using a seven-second clip of Ed Sullivan introducing the Four Seasons on his television show, the Ninth U.S. Circuit Court of Appeals ruled yesterday.
The panel agreed with U.S. District Judge Dolly M. Gee of the Central District of California, who ruled that the defendant’s use of the clip was protected by the fair use doctrine. The appellate court also affirmed an award of $155,000 in attorney fees to the defendant, Dodger Productions, Inc.
The award-winning show, which has been performed around the world, uses the band’s music to tell the story of its rise to fame and the times in which that occurred.
At the end of the first act, band member Bob Gaudio addresses the audience about the significance of the band’s January 1966 appearance on the Sullivan show, which ran from 1948 to 1971, explaining:
“Around this time there was a little dust-up called The British Invasion. Britannia’s ruling the air waves, so we start our own American revolution. The battle begins on Sunday night at eight o’clock and the whole world is watching.”
As Gaudio speaks, the rest of the band is seen on a CBS studio stage preparing for their performance on the Sullivan show, and the clip of Sullivan saying “Now ladies and gentlemen, here, for all of the youngsters in the country, the Four Seasons . . .” is shown from a screen hanging over the center of the stage.
The clip ends with Sullivan directing attention to the stage, then the screen goes dark and the actors sing “Dawn.”
SOFA Entertainment, Inc., which owns the copyright in the entire library of the Sullivan show, filed suit after the company’s president, Andrew Solt, saw the musical. Solt purchased the rights to the show from Sullivan’s daughter and son-in-law in 1990 for a sum reported to be between $5 million and $10 million.
Gee, in granting the defendant’s motion for summary judgment, used the four-factor test of 17 U.S.C. § 107.
‘Fair Use’ Statute
The section says “the fair use of a copyrighted work . . . for purposes such as criticism, comment, news reporting, teaching . . . , scholarship, or research  is not an infringement of copyright.” It directs the court to consider “the purpose and character of the use,” “the nature of the copyrighted work,” “the amount and substantiality of the portion used in relation to the copyrighted work as a whole” and “the effect of the use upon the potential market for or value of the copyrighted work.”
The judge also granted a discretionary attorney fee award, saying “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.”
Senior Judge Stephen Trott, in his opinion for the appellate panel, said the defendant’s use of the clip was “undoubtably” fair “because by using the clip for its historical significance, the defendants…imbued it with new meaning and [did] so without usurping whatever demand there was for the original clip. “
The judge explained that the clip showed a historical event, did not involve a great deal of creative content, and was not qualitatively significant, and that its use in “Jersey Boys” posed no “reasonable threat to SOFA’s business model.”
Trott also concluded that the fee award was fair because “SOFA should have known from the outset that its chances of success in this case were slim to none” based on precedent and because the district judge’s analysis of the chilling effect of this type of suit was correct.
Trott was joined by Judges Diarmuid F. O’Scannlain and Richard R. Clifton.
Attorneys on appeal were Jaime W. Marquart of Baker Marquart LLP for the plaintiff and Walter R. Sadler of Leopold, Petrich & Smith, P.C. for the defendant.
The case is SOFA Entertainment, Inc. v. Dodger Productions, Inc., 10-56535.
Copyright 2013, Metropolitan News Company