Fair Use in Hollywood

Whether it's satirical commentary after showing a news clip on The Daily Show with Jon Stewart, or Family Guy's reference to an '80s sitcom through use of a brief excerpt, creators of a program may want to add humor or other contextual commentary by referring to a completely different (and copyrighted) work. When that happens, the author of the included work may emerge from the shadows with a legal claim, bringing to center stage the issue of fair use.

Fair use is an affirmative defense to an allegation of copyright infringement. It allows a person to use a copyrighted work without first obtaining permission from the copyright owner - provided that the use satisfies several requirements.

To successfully invoke the fair use defense, a party must satisfy four factors expressly stated in the federal Copyright Act:

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

- 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. (See 17 U.S.C. §107.)

Three recent - and colorful - cases illustrate how the issue arises and the analysis courts undertake to resolve it.

Transformative or Fair Use?
In the stage musical Jersey Boys, which centers on a singing group called the Four Seasons, the producers incorporated into their script a seven-second video clip from The Ed Sullivan Show. In the clip, which dates back to the 1960s, host Ed Sullivan introduces the Four Seasons to his television audience. Last year the Ninth Circuit concluded, after a trial and appeal, that inclusion of the clip constituted fair use and did not subject the defendants to liability for copyright infringement. (Sofa Entm't, Inc. v. Dodger Prods., 709 F.3d 1273 (9th Cir. 2013).)

The court found that the brief portion of the television show was used "to mark a historical point in the band's career" and affirmed the trial court's decision, finding fair use in favor of the musical's producer. "By using the clip for its biographical significance, [the producer] has imbued it with new meaning and did so without usurping whatever demand there is for the original clip." (Sofa Entm't, 709 F.3d at 1276-77.)

In evaluating the purpose and character of a borrowed passage, courts examine whether the new work is "transformative," which means that it adds "new expression, meaning, or message" to the original copyrighted piece. (Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 579 (1994).) Because Jersey Boys tells the story of the Four Seasons, the Ed Sullivan clip marks a moment of vital significance. It was used as a "biographical anchor," the court wrote, since "[b]eing selected by Ed Sullivan to perform on his show was evidence of the band's enduring prominence in American music." (Sofa Entm't, 709 F.3d at 1278.) The clip was in essence a narrative device used to advance the story. Though the plaintiff argued that the clip was used in the show merely for its entertainment value, the Ninth Circuit disagreed. It found the purpose and nature of the use to weigh in the defendant's favor.

Nature of the Work
The second fair use factor is the nature of the copyrighted work. This refers to the fact that some works - generally creative works, like fictional stories - are closer to the core of intended copyright protection than others. The closer the utilized portion is to the true core of the copyrighted work that has been borrowed, the tougher it is to successfully assert the defense of fair use. In the Jersey Boys dispute, the court concluded that the defendant had indeed satisfied the second part of the test, stating that while the entire episode of The Ed Sullivan Show or the individual performances in it may be near to the core of copyright, "the clip conveys mainly factual information - who was about to perform." (709 F.3d at 1279.)

Portion Used
The third factor is the amount and substantiality of the portion used in the work. In this part of the analysis, the court examines the quantitative amount and qualitative value of the original work used in relation to the defendant's justification for the use. The plaintiff in the Jersey Boys case conceded that the seven-second clip was quantitatively insignificant. However, as to the qualitative prong, the plaintiff argued that by using a clip of Sullivan introducing the band, the defendant " 'attempted to capitalize on the central and most beloved part of The Ed Sullivan Show, namely, Ed Sullivan's introduction of popular new rock and roll acts. ...' " (709 F.3d 1279.)

The Ninth Circuit had two reasons for finding that the clip was not qualitatively significant. First, the court said that because the material borrowed from the show merely identifies the group that is about to perform and the section of his audience to whom the Four Seasons would appeal, the clip likely would not even obtain copyright protection on its own. Second, the court noted that Ed Sullivan's "trademark gesticulation and style" and his "charismatic personality" are not copyrightable. (709 F.3d at 1279.)

Impact on the Market
The fourth and final factor in the fair use analysis is the market effect of the original work, which refers to "the secondary use's impact on the market for the original work and the market for derivative works, including if the defendant's actions became 'unrestricted and widespread.' " To illustrate the point, the court provided an example of a book review, which would not displace the market for the book it discusses. In deciding this factor in favor of the defendant, the Ninth Circuit offered the following explanation as to why Jersey Boys, by using the Ed Sullivan clip, did not function as a replacement for the original television program: "The clip is seven seconds long and only appears once in the play."

Moreover, observed the court, the defendant "does not reproduce Jersey Boys on videotape or DVD, which would allow for repeated viewing of the clip. [The defendant's] use of the clip advances its own original creation without any reasonable threat to [plaintiff's] business model." (709 F.3d at 1280.)

After reviewing all four factors, the court held that the use of the video clip constituted "fair use" and did not harm the plaintiff's copyright; indeed, use of the clip heightened "society's enjoyment" of the defendant's "creative endeavor." But the court did not stop there: It affirmed an award of more than $150,000 in attorneys fees and costs to the defendant, as permitted under the Copyright Act. (See 17 U.S.C. § 505.) Such an award, stated the court, "encourages a defendant to litigate a meritorious fair use claim against an unreasonable claim of infringement." In the eyes of the Ninth Circuit, the award furthered the copyright policy supporting creative expression. (709 F.3d at 1280.)

A Show About Nothing?
When it comes to fair use, even Jerry Seinfeld gets into the act. The issue arose in a case involving a company that published a book titled SAT: Seinfeld Aptitude Test. The book included hundreds of trivia questions based on Seinfeld TV episodes, for example: "To impress a woman, George Costanza passes himself off as (pick one): a gynecologist; a geologist; a marine biologist; or a meteorologist." (See Castle Rock Entm't v. Carol Publ'g Group, 150 F.3d 132, 135 (2d Cir. 1998).)

In the Castle Rock case, the plaintiff was the owner of the copyright covering Seinfeld, and the defendants included the publisher of the book containing the trivia questions and answers. The fact that the book had a disclaimer stating that it had "not been approved or licensed by any entity involved in creating or producing Seinfeld" did not prevent the court from finding, at the summary judgment stage, that the book publisher's actions constituted copyright infringement. (Castle Rock, 150 F.3d at 136.)

In essence, the Second Circuit asked a classic comedic question: Can you take a joke? But this was no laughing matter, as the defendants literally did "take a joke" - in the form of protected intellectual property owned by the creators of Seinfeld - and used it for their own benefit.

In deciding that fair use was not a defense, the court dealt with the definition of "substantial similarity" - in short, whether the copying in question was "quantitatively and qualitatively sufficient to support the legal conclusion that infringement (actionable copying) has occurred." The core of the issue, said the court, was whether the amount of material utilized was "more than 'de minimis.' "

The court reviewed the defendant's book and held that it not only copied parts of the Seinfeld show, but did so to such an extent that it clearly exceeded the de minimis threshold. "By copying not a few but 643 fragments from the Seinfeld television series ... [the defendant] has plainly crossed the quantitative copying threshold." (Castle Rock, 150 F.3d at 138.)

And when the court analyzed the qualitative component of the analysis, it found that "each SAT trivia question is based directly upon original, protectable expression in Seinfeld." That is, the book purloined the essence of the show's copyrighted material. Each "fact" forming the basis for a question, said the Second Circuit, "is in reality fictitious expression created by Seinfeld's authors." (150 F.3d at 138-39.)

An important lesson from the Castle Rock decision is that a trial court in many cases may be able to dispose of a fair use claim via summary judgment. (See 150 F.3d 137.)

Hindsight Is 20/20
In yet another case involving a popular television show, a court confronted an infringement claim brought by a production company alleging that the animated television show South Park infringed its rights in a YouTube video. (See Brownmark Films, LLC v. Comedy Partners, 682 F.3d 687 (7th Cir. 2012).) In the South Park episode at issue, the characters created a video titled "What What (In the Butt)." The South Park characters used the same title and recreated "a large portion of the original version" of a YouTube video owned by plaintiff, "using the same angles, framing, dance moves and visual elements." (Brownmark Films, 682 F.3d at 689.)

The Seventh Circuit upheld the trial court's summary judgment ruling that South Park had engaged in fair use. "When a defendant raises a fair use defense claiming his or her work is a parody, a court can often decide the merits of the claim without discovery or a trial. When the two works in this case are viewed side-by-side, the South Park episode is clearly a parody of the original WWITB video, providing commentary on the ridiculousness of the original video and the viral nature of certain YouTube videos." (Brownmark Films, 682 F.3d at 692.)

It is worth noting that the South Park dispute involved a parody - as opposed to taking copyrightable expression in Castle Rock, where it was foreseeable that the Seinfeld creators would want to sell a trivia test of their own based upon their copyrighted work. In parody cases, the courts are generally more amenable to a fair use defense because the second work offers social commentary on the original work, rather than simply duplicating key portions of it and supplanting the potential market for spin-off products.

The court in Brownmark used the four statutory factors cited in Sofa Entertainment and held (as to the first factor) that the purpose of South Park's work was social commentary, specifically as to viral videos. The show "imitates viral video creation while lampooning one particularly well-known example of such a video."

The court did not dispute that the original YouTube video was entitled to copyright protection, and it observed, with respect to the third factor, that South Park "used the 'heart' of the work; the work's overall design and distinctive visual elements." However, the court said that this factor weighed in South Park's favor because the show "is clearly a parody and has not supplanted" the original YouTube video.

When it came to the fourth and final factor, the court also held in favor of the defendant: "As the South Park episode aptly points out, there is no 'Internet money' for the video itself on YouTube, only advertising dollars that correlate with the number of views the video has had." In the court's eyes, South Park's production would ironically have the effect of increasing the ad revenue to be derived by the plaintiff from its video. Thus, the South Park episode did not harm the plaintiff's potential market. (See Brownmark Films, 682 F.3d at 693.)

Fair use copyright cases involving popular culture can be especially interesting to read, and some even provide a chuckle or two. (By the way, the answer to that Seinfeld SAT question above is: marine biologist.). But these cases also yield important lessons, one of which is that courts may dispose of a fair use claim on summary judgment, thereby saving time and expense all around. Even so, the issue requires careful analysis of the four statutory factors involved, as well as the particular interests at stake. As Sofa Entertainment, Castle Rock, and Brownmark Films illustrate, context matters.

Authors continue to incorporate portions of previously published popular works into their creations, and as long as they do the fair use doctrine will occupy a healthy space within the sphere of copyright law. And, as technology allows greater access to published works, the number of fair use disputes may well increase, and courts will have to adapt the doctrine to ever-changing circumstances. Regardless of who wins or loses, lawyers will continue to enjoy reading about disputes involving their favorite novel, play, movie, or television show.

Shelly Rosenfeld, an attorney at the Los Angeles office of Lewis, Brisbois, Bisgaard & Smith, specializes in intellectual property and entertainment law.

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