Bada Bing: Jersey Boys Restore Some Common Sense to Copyright Fair Use

Guest blog: Film and television producers must be careful to determine whether the appearance of another's copyrighted material constitutes a fair use

Forty years after Frankie Valli and the Four Seasons appeared on "The Ed Sullivan Show,"  Sullivan first appeared, albeit involuntarily and briefly, in the Tony Award-winning musical about the Four Seasons, "Jersey Boys." At the end of the first act, the producers utilize an unauthorized seven-second clip of Sullivan's introduction to mark a historical point in the band's career. The clip's owner sued for copyright infringement.

While the musical producer's fair-use defense was expected, the dearth of helpful Ninth Circuit case law applying the defense in this context is surprising. Producers facing similar claims have been forced to rely upon limited, flawed Second Circuit precedent. Thanks to "Jersey Boys," the Ninth Circuit has restored some common sense to fair use in SOFA Entertainment, Inc. v. Dodger Productions, Inc.

Second Circuit Precedent

Until now, the Second Circuit's opinion in Ringgold v. Black Entertainment Television, Inc. provided the most thorough — and in many ways troubling — fair-use analysis in this context. Artist Faith Ringgold sued BET for using a poster of her "Church Picnic Story Quilt" as set dressing in an episode of the television show “ROC.”

The poster appeared, in whole or in part, as a wall-hanging in a church for a total of 26.75 seconds of a five-minute scene, although nothing in the dialogue, action or camera work particularly called the viewer's attention to it. BET raised a fair-use defense, but the court rejected it and found for Ringgold.

Particularly troubling for film and television producers was the court's consideration of two of the four fair-use factors. With regard to the "purpose and character of the use" (i.e. whether it is meant to transform the original work, as critical or education uses do), the Ringgold Court concluded that they were the same — a decorative purpose.

Thus, the use of the work was not transformative but duplicative. This analysis, however, is circular — any piece of art could be said to have a decorative purpose and any portrayal of that work to have, at least in part, the same purpose.

With regard to the "market effect of the use" (i.e. whether the secondary use harms the market for the original work), the Ringgold Court again applied circular logic. Rather than focus on the possible effect on the licensing market for posters of her work, it applied a sweeping standard which favored Ringgold if she could show a "traditional, reasonable, or likely to be developed" market for licensing her work as set decoration.

While Ringgold was able to establish a history of such licensing activity, this broad interpretation permanently swung this factor in the plaintiffs' favor, regardless of whether they have any real interest in licensing their works as set decoration.

Under the Ringgold analysis, therefore, almost any unauthorized use of a copyrighted work as set dressing would constitute copyright infringement. Thereafter, the Second Circuit provided some refuge for producers where the use is de minimis.

In Sandoval v. New Line Cinema, the Second Circuit distinguished Ringgold and found that New Line's use of Jorge Antonio Sandoval's photographs as set dressing in the motion picture "Seven" was not actionable because they were displayed in poor lighting and at a great distance. Thus, so long as an average lay observer could not identify the work, the producers would not be liable. This standard did not provide much guidance or solace.

SOFA Entertainment v. Dodger Productions

In SOFA Entertainment, the Ninth Circuit seized the opportunity to provide a practical application of the fair use defense in this context. Departing from Ringgold, the Ninth Circuit affirmed not only the dismissal of the plaintiff's case on fair use grounds but also awarded attorneys’ fees to the defendant.

Addressing the first factor, the court concluded that the use of the clip of Frankie Valli and the Four Seasons on "The Ed Sullivan Show" was transformative. The secondary use did not supplant the clips original entertainment purpose but served a biographical and time-marking purpose. Similarly, the court held that the clip of "The Ed Sullivan Show" in the stage musical was not a substitute for the show itself. Thus, the use of the clip in "Jersey Boys" did not affect the market for licensing "The Ed Sullivan Show."

The SOFA Entertainment decision avoids the circular arguments that plague Ringgold. In doing so, the case strikes a balance between protecting copyright holders and those who fairly use copyrighted works in productions.

Conclusion

Film and television producers must be careful to determine whether the appearance of another's copyrighted material constitutes a fair use. Fair use is a murky defense, but the Ninth Circuit's opinion in Sofa Entertainment provides some helpful guidance or, at the very least, a well-reasoned case upon which to rely.