Use of 7-Second Historic TV Clip in Broadway Show Deemed “Fair Use”
Federal Judge Grants Jersey Boys’ Motion for Summary Judgment in Copyright Action
By Itai Maytal (first author) – Originally published in MLRC Medialawletter July 2010
A Broadway production’s display of seven seconds of historic footage during its reenactment of a famous rock-and-roll group’s television debut is fair use, a California federal district court judge ruled last week.
In the copyright infringement case, Sofa Entertainment Inc. v. Dodger Productions, Inc. No. Civ. 08-02616 (C.D. Cal July 12, 2010), Judge Dolly M. Gee granted summary judgment in favor of the defendant producer of the musical, Jersey Boys, finding its use of an introduction by the late television variety show host, Ed Sullivan, was fair use. Judge Gee explained that the use of the seven-second television clip in the stage-version introduction of the band, Frankie Valli and The Four Seasons, was “decidedly transformative,” was not “the heart” of the copyrighted work at issue, and could not reasonably usurp an “existing or potential market” for the plaintiff-copyright owner.
The Backdrop Behind the 7-Second Clip Controversy
Jersey Boys is a dramatic work of biographical and cultural history that has been staged in multiple cities including New York, Chicago, Las Vegas, London and Los Angeles. The two-and-a half hour production tells the story of Frankie Valli and The Four Seasons and their impact on popular culture in the early 1960s. It traces how the group was formed and how its members struggled out of the Jersey swamps to make their way to success. For example, the musical recounts the band members’ youthful criminal indiscretions as they brushed with both the law and the mob, illustrates the genesis of some of their major hits, and how the band found their way through the daunting maze of the record business in the 1960’s. The show also covers many of the band members’ personal problems involving their marriages, their financial difficulties, and the death of Valli’s daughter. In addition, the musical illustrates their setbacks from the U.S. arrival of The Beatles and other British performers during the “British invasion,” their comeback, and their later break-up.
This lawsuit arose from the musical’s unauthorized use of a 7-second copyrighted video clip of host Ed Sullivan introducing The Four Seasons on the January 2, 1966 episode of The Ed Sullivan Show (“the Clip”). The Clip is displayed on a large screen at the end of the musical’s first act. Immediately before the Clip is played, an actor portraying The Four Seasons’ member Bob Gaudio addresses the Jersey Boys audience and says:
“Around this time there was a little dust-up called The British Invasion. Britannia is 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 these lines are spoken, the actors portraying The Four Seasons are seen preparing themselves to perform on The Ed Sullivan Show. Old-style CBS cameras bearing the CBS logo roll across the stage The audience is led to feel they are backstage with the band-performers, setting up their instruments, facing the back of the stage as if the Sullivan audience is in front of them.
Then, just as the actor playing Gaudio completes his line “…the whole world is watching,” the Clip is played in the middle of three video screens above the stage—which display stills and video images from the 1960s throughout the show. In the Clip, a black-and-white head-shot of Ed Sullivan appears and says: “Now, Ladies and Gentlemen, for all the youngsters in the country, The Four Seasons.” Mr. Sullivan then waves his left hand toward where The Four Seasons are to perform, at which point the Clip ends and the actors in Jersey Boys perform a song on stage.
There is no further use of the Clip and no other segments from The Ed Sullivan Show appear in the musical. Moreover, the Clip has no music nor does it display any images of the original Four Seasons or performances of any kind. It is simply a pedestrian headshot video depiction of Mr. Sullivan providing these ordinary words of introduction.
In 2008, Plaintiff Sofa Entertainment, owner of The Ed Sullivan Show library, filed a complaint in district court in the Central District Court of California, asserting a single copyright infringement claim against Defendant Dodger Productions for its use of the Clip in the Jersey Boys musical. Upon receipt of the claim, it was decided not to remove the Clip from the show. The parties then filed cross motions for summary judgment.
Fair Use Granted
On July 12, 2010, Judge Gee granted Dodger Productions’ motion for summary judgment and denied Plaintiff’s partial summary judgment, finding the Defendant’s use of the Clip was fair. In so ruling, the Court considered each of the four statutory factors for fair use. 17 U.S.C. §107.
(1) Purpose and Character of the Use
Judge Gee found that the first factor weighed in favor of the Defendant, noting the use of the Clip was “decidedly transformative.” Judge Gee cited to Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994) and held that “the more transformative the use of a copyrighted work, the more likely it is that the use will come within the protection of the fair use defense.”
Specifically, Judge Gee found that the use of the Clip was transformative as it “served as a historical reference point in The Four Seasons’ career, which use the Ninth Circuit has contrasted with uses that ‘serve the same intrinsic entertainment value that is protected’ by the copyright in the copied work” quoting Elvis Presley Enterprises, Inc v. Passport Video, 349 F.3d 622, 629 (9th Cir. 2003). She rejected Plaintiff’s argument that the Clip was merely a re-broadcasting of a portion of a copyrighted episode of The Ed Sullivan Show, noting that the lines spoken by the actor portraying The Four Seasons’ member Bob Gaudio prior to the Clip’s appearance had served to “frame the transformative use” of the Clip in the musical. She also rejected Plaintiff’s argument that Ninth Circuit case law required a voice-over or other explicit “introductions” to render a use transformative.
While Judge Gee observed that Jersey Boys’ use, a “dramatic production intended to entertain,” was not among the examples of fair use set forth in the preamble of §107 (works reproduced “for purposes such as criticism, comment, news reporting teaching…, scholarship, or research”), Judge Gee recognized that the list was not exhaustive. Against the urging of the Plaintiff, the Judge refused to distinguish between documentaries and dramatizations of historical events for the purposes of fair use. Though Judge Gee saw a commercial dimension to Jersey Boys which could weigh against fair use, she did not accord this aspect of the first factor great weight as the Defendants sought “to profit in very small measure by the inherent entertainment value of Ed Sullivan’s [short] introduction of The Four Seasons.”
(2) Nature of the Copyrighted Work
Judge Gee found that the second factor weighed only slightly in favor of fair use. She explained that the fact the Clip at issue had already been broadcast weighed in favor of Defendant, given that unauthorized use of a previously published work is more likely to constitute a fair use than an unpublished work.
(3) Amount and Substantiality of the Portion Used
As to the third factor, Judge Gee found this favored fair use, not only because the Clip represented quantitatively a small portion of the episode at issue, (1/400th or 0.0023 percent of the 45 to 50 minute episode (excluding advertisements), by Defendant’s calculation), but because it was not the heart of Plaintiff’s copyrighted work. Judge Gee held that “the actual performances by featured talent were, and are, the heart of The Ed Sullivan Show generally, and that is true of the episode on which The Four Seasons performed.” She ruled that the introduction by Ed Sullivan at most could be an “artery to the heart of the episode.” Finally, even if the Clip were to be the “heart” of the recording of Plaintiff’s full episode, Judge Gee concluded that there was no evidence in the record that would lead a reasonable jury to conclude the Clip is “the heart” of the Jersey Boys. (It certainly occupied an infinitesimal amount of the musical itself, accounting for nothing more than 1/100th or 0.0009 percent of its 130 minute runtime.)
(4) Effect on the Market
Finally, Judge Gee found the effect upon the potential market, weighed in Defendant’s favor. She recognized that the “marketability of Jersey Boys cannot reasonably be said to be primarily dependent on Defendant’s transformative use of the Clip.” Judge Gee ruled that the extent to which the Defendant profited from the use of the Clip itself was minimal and they used none of it to market the Show. She further noted that Plaintiff introduced no evidence that it currently licensed or planned to license the Clip in support of its argument that Defendant’s use was depriving it of income from licensing fees. Judge Gee agreed with Defendant that the notion any such market existed for the introductions of Ed Sullivan was “speculative at best.”Further, Judge Gee noted that to the extent that “any existing or potential derivative market [for the Plaintiff] is, in fact, one for similarly transformative uses [like the Defendant’s], this factor is less likely to weigh in Plaintiff’s favor.” This is because “the market for potential derivatives uses includes only those that creators of the original works would in general develop or license others to develop.” quoting Campbell, 510 U.S. at 592. The loss of revenues from the transformative market cannot count for market impact under the fourth factor.
In short, Judge Gee found all four fair use factors favored a ruling that the Defendant’s use of the Clip was fair. The fact that (1) the use of the Clip was decidedly transformative in nature, (2) the short Clip was published and (3) not the heart of Plaintiff’s work, and (4) the use of the Clip had no credible effect on the value of the original copyrighted work, led Judge Gee to reject Plaintiff’s copyright claims on fair use grounds.
At least for the Plaintiff, this decision was foreshadowed by a ruling in one of its previous copyright cases. In the Ninth Circuit’s decision, Elvis Presley Enterprises, Inc v. Passport Video, 349 F.3d 622 (9th Cir. 2003), the court made a “close call” against a fair use defense where some 30 minutes of Elvis TV performances were used by a defendant. But, it also ruled that a use of a “small number of clips to reference an event for biographical purposes seems fair” and that it would be “permissible” to use Elvis clips from television shows “to note their historical value.” Here, only one 7-second clip of historic import was used by the Defendant. Unlike the Elvis Presley case, this was not a close call at all.
Indeed, Judge Gee’s decision confirmed that there was no basis for Plaintiff’s claim that the use of a 7-second historic clip in the context of a two-and-one-half hour biographical and historical play was in any way improper. Plainly, the use of the Clip played a transformative role in the Jersey Boys telling of the cultural history and life stories of the band members. The limited use of the Clip, a single, fractional excerpt of Plaintiff’s copyrighted work, helped transport the audience back to the cultural and historic setting of the 1960s so that their understanding of the events presented in the musical was meaningful; and it did so without any significant economic consequence to the Plaintiff.
David S. Korzenik of Miller Korzenik Sommers LLP and Walter R. Sadler of Leopold, Petrich & Smith represented the Defendant. Mr. Korzenik was supported by his firm associates Mona Houck and Itai Maytal. Mr. Sadler was supported by his firm associate Nicholas Morgan. Plaintiff was represented by Jeffery McFarland, George Hedges and Noah Helpern of Quinn Emanuel Urquhart Oliver & Hedges, LLP. and by Jaime Marquart of Baker Marquart Crone & Hawxhurt.