A federal appeals court has upheld a $155,000 attorney fee award to the producers of the musical Jersey Boys in a copyright infringement case over their use of a seven-second clip from The Ed Sullivan Show. On March 11, the U.S. Court of Appeals for the Ninth Circuit held that the fees were warranted because the plaintiff should have known the clip was fair use, based on its experience in another case over a clip of Elvis Presley.

Jersey Boys dramatizes the story behind the band the Four Seasons. The producers used a 1966 clip of Ed Sullivan introducing them. The musical included the clip to illustrate the band’s U.S. popularity even in light of the so-called British Invasion of popular English bands, including the Beatles.

Sofa Entertainment Inc., which owns the copyrights to the entire run of The Ed Sullivan Show from 1948 until 1971, sued Dodgers Theatricals Ltd. and Dodger Productions Inc. in April 2008 for using the clip in the musical.

In September 2010, Judge Dolly Gee of the Central District of California granted the defendants’ summary judgment motion. "Discouraging similar lawsuits would not erode the value of copyright protection," Gee wrote."Moreover, lawsuits of this nature also have a chilling effect on creativity insofar as they discourage the fair use of existing works in the creation of new ones."

That November, Gee granted the defendants’ attorney fee request, brought by David Korzenik, a partner at New York’s Miller Korzenik Sommers, and Walter Sadler, a partner at Leopold, Petrich & Smith in Los Angeles. Gee held that the suit was not objectively reasonable, a factor which "tends to favor a fee award." Sofa Entertainment appealed.

Judge Stephen Trott wrote the opinion in Sofa Entertainment Inc. v. Dodger Productions Inc., joined by judges Richard Clifton and Diarmuid O’Scannlain.

Trott wrote, "By using the clip for its biographical significance, Dodger has imbued it with new meaning and did so without usurping whatever demand there is for the original clip."

Trott observed that this wasn’t a subtle case and that Dodger’s use of the clip was transformative because it marked an important moment in the band’s career.He also noted that the clip is mainly factual, it’s not a qualitatively significant part of the Ed Sullivan episode in question, Sullivan’s charisma is not copyrightable and the clip didn’t affect the market for the Ed Sullivan show.

"Dodger’s use of the clip did not harm Sofa’s copyright in The Ed Sullivan Show, and society’s enjoyment of Dodger’s creative endeavor is enhanced with its inclusion. This case is a good example of why the ‘fair use’ doctrine exists," Trott wrote.

On the attorney fee issue, Trott wrote, "In light of the education SOFA received as the plaintiff in Elvis Presley Enterprises [v. Passport Video, a 2003 Ninth Circuit case], SOFA should have known from the outset that its chances of success in this case were slim to none."

In that case, the Ninth Circuit recognized that the defendants’ use of television clips of Presley’s performances were transformative because they were used as historical reference points.

Both Korzenik and Sadlerargued for the Dodger defendants.

Sadler said the ruling defines the parameters of the fair use doctrine for other struggling artists, documentarians and their insurance carriers when the work is used in a historical context.

He also said the court’s language explains that the fair use doctrine is an integral part of copyright because it gives authors breathing space within copyright law to build upon their predecessors’ works."That is very important to me."

Neither Sofa nor its lawyer, Jaime Marquart of Baker Marquart in Los Angeles, responded to requests for comment.

Sheri Qualters can be contacted at
squalters@alm.com.