There's a commercial touring musical called Jersey Boys about Frankie Valli and the Four Seasons, and their emergence to national pop-music prominence during my misspent youth. Part of the show is a seven-second-long clip from The Ed Sullivan Show that is shown with purpose of establishing newsworthiness and a real-world contextual link to a specific point in the group's career — their status on 02 January 1966. This being the entertainment industry, the current rightsholder in The Ed Sullivan Show sued. The play's producers defended by claiming fair use. The district court granted summary judgment — and awarded attorney's fees — to the play's producers on their fair use defense. This being the Ninth Circuit, the result on appeal was always going to be interesting and unpredictable.
Congress’s guidance, however, has not always been helpful. Many fair use cases still manage to approach “‘the metaphysics of the law, where the distinctions are, or at least may be, very subtle and refined, and, sometimes, almost evanescent.’” Fortunately, this is not one of those cases. As our application of the statutory factors will confirm, Dodger’s use of the clip is undoubtably “fair.”
SOFA Entertainment, Inc. v. Dodger Prods., Inc., No. 1056535 (9th Cir. 11 Mar 2012), slip op. at 78 (citations omitted).
The real dispute here is not over "transformativeness" — there is little question in the context of the musical that the clip is an informational touchstone that is referential more than anything else. That implicates the real cause of the dispute: The continuing problem with distinguishing quantitative use from qualitative use. This has been a problem ever since the Supreme Court, in some remarkably imperceptive rhetoric, discounted quantity as determinative in Harper & Row v. Nation Enters., 471 U.S. 539, 56465 (1985):
Amount and Substantiality of the Portion Used. Next, the Act directs us to examine the amount and substantiality of the portion used in relation to the copyrighted work as a whole. In absolute terms, the words actually quoted were an insubstantial portion of "A Time to Heal." The District Court, however, found that "[T]he Nation took what was essentially the heart of the book." 557 F. Supp. , at 1072. We believe the Court of Appeals erred in overruling the District Judge's evaluation of the qualitative nature of the taking. See, e.g., Roy Export Co. Establishment v. Columbia Broadcasting System, Inc., 503 F. Supp. , at 1145 (taking of 55 seconds out of 1 hour and 29-minute film deemed qualitatively substantial). A Time editor described the chapters on the pardon as "the most interesting and moving parts of the entire manuscript." The portions actually quoted were selected by Mr. Navasky as among the most powerful passages in those chapters. He testified that he used verbatim excerpts because simply reciting the information could not adequately convey the "absolute certainty with which [Ford] expressed himself"; or show that "this comes from President Ford"; or carry the "definitive quality" of the original. In short, he quoted these passages precisely because they qualitatively embodied Ford's distinctive expression.
(italicized run-in heading in original; record citations omitted).
The Ninth Circuit's holding depends almost entirely upon the transformativeness issue, although it also tries (and ultimately fails, but that's largely because words are so unsuited to the task) to distinguish allusion from quotation:
Second, SOFA contorts the Supreme Court’s use of the phrase“distinctive expression” in  Nation Enterprises to give the false impression that Mr. Sullivan’s “trademark gesticulation and style” is copyrightable. Copyright only attaches to an original work fixed in a tangible medium of expression, never in the underlying ideas or facts. The Court used the words “distinctive expression” to explain that defendant had copied sections of President Ford’s memoirs that contained Mr. Ford’s writing, as opposed to the events he was discussing.
It is Sullivan’s charismatic personality that SOFA seeks to protect. Charisma, however, is not copyrightable.
(slip op. at 10, citations omitted, paragraphing in original). This analysis, however, proves too much, particularly in the context of the earlier analysis of transformativeness.
Dodger references the Four Seasons’ performance on the January 2, 1966 episode of The Ed Sullivan Show to mark an important moment in the band’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. By using it as a biographical anchor, Dodger put the clip to its own transformative ends.
(slip op. at 8) That this analysis is entirely inconsistent with the misbegotten Dr. Juice opinion (Dr Seuss Enters. v. Penguin Books USA, 109 F.3d 1394 (1997)), which under circuit precedent should be controlling, is never acknowledged.
When the Ninth Circuit confirmed not merely the summary judgment, but the award of attorneys' fees under the Fogerty factors, in SOFA, it demonstrated an implicit conflict with the Sixth Circuit's varied, and ever-shrinking, holdings on sampling of musical recordings, such as that in Bridgeport Music, Inc. v. Dimension Films, 383 F.3d 390, 39899 (6th Cir. 2003) (footnote omitted).
To begin with, there is ease of enforcement. Get a license or do not sample. We do not see this as stifling creativity in any significant way. It must be remembered that if an artist wants to incorporate a "riff" from another work in his or her recording, he is free to duplicate the sound of that "riff" in the studio. Second, the market will control the license price and keep it within bounds. The sound recording copyright holder cannot exact a license fee greater than what it would cost the person seeking the license to just duplicate the sample in the course of making the new recording. Third, sampling is never accidental. It is not like the case of a composer who has a melody in his head, perhaps not even realizing that the reason he hears this melody is that it is the work of another which he had heard before. When you sample a sound recording you know you are taking another's work product.
Of note, the Sixth Circuit opinion in Bridgeport Music (or, at least, this Bridgeport Music — it's a frequent litigant) never considers fair use at all. On the strength of the rhetoric, though, a fair use defense would have been unavailing (which is not surprising, considering the continuing ire at the Supreme Court in the Sixth Circuit bar over 2Live Crew and the undoubted filtering of that ire into the court itself).
So, what does this mean for authors? Really, at the moment, it's hard to say more than that SOFA implies — in a fashion that is not definitive — that:
- The ridiculous license fees and permissions regimes demanded by ASCAP, BMI, and that ilk for short quotations used in works of fiction (particularly as chapter headings) are in trouble, as they should be. This could get even more interesting, of course, if authors "sample" performances of the respective lines/verses in their e-books...
- Characterizing the purpose of the use is even more important than previously understood. It's approaching the import of market definition in antitrust law. My major concern here is with retconning and hindsight statements of purpose.
- There is no enforceable, explicit minimum threshold beyond which fair use is either always presumed or never available. This has interesting implications for the various aspects of the Google Book Search litigation, and the Hathitrust summary judgment currently on appeal in the Second Circuit.
- We'd all be better off enlarging the Federal Circuit and sending all copyright matters there, just like we already do with patent matters. This is an entirely needless circuit split, and given the Supreme Court's calendar and the briefing schedules on certiorari the earliest we could expect a decision is May or June of 2014... and that's unduly optimistic, assuming that all briefing schedules will be met and the Court issues a prompt decision to take the matter on cert. The October 2014 term is far more likely, meaning that a decision could come by June 2015.