Attorneys’ Fees Awarded in Fair Use Litigation

Some lessons are learned the hard way. Recently SOFA Entertainment Inc. “SOFA” was taxed attorneys’ fees and costs in the amount of $155,000 as a result of their losing copyright infringement lawsuit. Plaintiff SOFA had brought suit against Defendant Dodger Productions Inc. “Dodger” for its use of a 7-second clip of the Four Season’s ’60s performance on the Ed Sullivan Show as part of their smash Broadway hit Jersey Boys. At the Summary Judgment hearing, the Federal District Court found the Defendant’s use of the clip to be fair, clearly within the guidelines of limitation on exclusive rights: fair use, 17 USC Section 107, and awarded attorneys’ fees.

The Court of Appeals Ninth Circuit upheld the verdict in Sofa Entertainment v. Dodger Productions. The clip in question is portrayed in Jersey Boys with a narration by band member, Bob Gaudio, depicting the history of the Four Seasons and contrasting the group with other musicians and historical events of the time. The Ninth Circuit found this use to be transformative, stating, “transformative works add something new to an existing work, endowing the first with new expression, meaning, or message, rather than ‘merely superseding the objects of the original creation.”

Section 107, Limitations on exclusive rights: fair use, states in part “……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. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include—

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.

Here, Dodger had imbued the clip with new meaning as a retrospective on American rockers in the ’60s fending off the “British Invasion” and as such the use was transformative. The historical significance of the clip in the dramatic production of the musical overshadowed any objection by reason of commercial purpose. The nature of the copyrighted work was factual, an introduction by Ed Sullivan, not a typically protected work such as fiction. Both sided agreed that the portion used, 7 seconds, was relatively insignificant in comparison to the work as a whole. Moreover, the use did not impact or otherwise affect the commercial market for Ed Sullivan Show performances. Finally, the Ninth Circuit upheld the award of attorney’s fees finding that SOFA as Plaintiff in Elvis Presley Enterprises had previously unsuccessfully litigated a similar matter.

The Court may award an attorney’s fee to the prevailing party in furtherance of the purposes of Copyright law. And the law’s primary aim is encouraging the creation and production of “original literary, artistic, and musical expression for the good of the public.” As lawsuits of the variety filed by SOFA can have a chilling effect in so far as they discourage the legitimate use of existing works in the creation of new ones, the Ninth Circuit felt the award of attorneys’ fees was clearly justified. Fortunately, Dodger had the financial resources to litigate this matter. Many who are slammed with take down requests and cease and desist letters lack the deep pockets to do so.  The creation of new original works suffers as a result. Possibly the award in this case will encourage Counsel to work with those artists who can least afford legal services.

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