Rodney A. Smolla, President, Furman University
April 16, 2013

A claim of copyright infringement that is deemed objectively unreasonable may occasionally result in the imposition of attorneys’ fees against the plaintiff alleging infringement.  Section 505 of the Copyright Act allows a court to award the prevailing party a “reasonable attorney’s fee.”1

In SOFA Entertainment, Inc. v. Dodger Productions, Inc.2 the U.S. Court of Appeals for the Ninth Circuit granted a prevailing defendant $155,000 in attorneys’ fees, holding that the plaintiff should have understood that the alleged infringement was protected by the fair use doctrine, and that the plaintiff thus “should have known from the outset that its chances of success in this case were slim to none.”3

The result is striking, because fair use is an affirmative defense, in which a multiplicity of statutory and common-law factors are traditionally weighed, a doctrine notorious for its case-by-case nuances.  SOFA thus stands for the proposition that, notwithstanding the malleability of the doctrine, there are some uses of copyrighted material that are so manifestly fair, that a plaintiff who still sues may expect the penalty of a fee shift.

The case arose out of the musical “Jersey Boys,” which employs a seven-second video clip taken from the copyrighted program “The Ed Sullivan Show,” documenting the historic rock-and-roll moment when The Four Seasons had their big break and made it on “Ed Sullivan.”  Applying the statutory factors for fair use,4 the court held that plainly it was permissible for the television clip to be included in the documentary.

The musical, the court noted, showed the clip to mark a critical juncture in the group’s career.  “At that point in rock & roll history, many American bands were pushed into obscurity by the weight of the ‘British Invasion,’ which was kicked off by the Beatles’ performance on The Ed Sullivan Show.  The Four Seasons, however, thrived.  Being selected by Ed Sullivan to perform on his show was evidence of the band’s enduring prominence in American music.”5  The use of the clip for this historic purpose was “transformative,” the court held, and the clip plainly was miniscule in its length, and could not possibly have damaged the commercial market for excerpts from “The Ed Sullivan Show” or operated as any kind of market substitute for “Ed Sullivan.”

The court drew on a prior precedent involving the similar use of clips of performances of Elvis Presley, Elvis Presley Enters., Inc. v. Passport Video,6 in which a defendant used many television clips of Elvis Presley’s television  performances as historic reference points.

To be sure, the court conceded, there were unique elements of charisma and style in Ed Sullivan’s performance.  But as the court observed: “Charisma, however, is not copyrightable.”7