Court: Court of Appeals for the Ninth Circuit; November 5, 2003; Federal Appellate Court
The case involves Elvis Presley Enterprises, various copyright holders, and Passport Video, concerning the fair use of copyrighted materials in a biography about Elvis Presley. The Ninth Circuit Court affirmed the district court's decision that the filmmaker likely did not utilize the copyrighted materials fairly under the four statutory fair use factors of 17 U.S.C. § 107, resulting in an injunction against further distribution of the biography.
Plaintiffs include companies and individuals holding copyrights to significant Elvis-related content, such as television appearances and songs. For example, SOFA Entertainment owns copyrights to several Elvis performances on The Ed Sullivan Show, while the Promenade Trust holds rights to key television specials. Songwriters Jerry Leiber and Mike Stoller own copyrights to iconic songs like "Jailhouse Rock," and photographer Alfred Wertheimer possesses numerous photographs of Elvis.
The documentary in question, titled "The Definitive Elvis," is a 16-hour series encompassing extensive footage and interviews related to Elvis's life, marketed as a comprehensive exploration of his career. Plaintiffs allege that thousands of copies of this documentary were distributed without their consent, highlighting the commercial nature of the materials and emphasizing their licensing practices, including significant fees for usage rights. The court's opinion underscores the tension between the preservation of creative rights and the filmmaker's attempt to use existing materials in a biographical context.
The Definitive Elvis incorporates Plaintiffs' copyrighted materials in multiple ways, prominently featuring clips of Elvis on television, often accompanied by narration or commentary. These clips vary in length from a few seconds to over a minute, with significant portions of the documentary including repeated use of the footage—estimated at 5% to 10% of the total content. Notably, extensive segments of Elvis' performances are shown, including nearly all of his appearance on The Steve Allen Show and significant portions of his appearances on The Ed Sullivan Show and The 1968 Comeback Special.
In addition to video footage, the documentary employs Plaintiffs' copyrighted still photographs and music, with the photographs serving as visual filler during commentary, while the music is used as background and in concert excerpts. Plaintiffs have sued Passport for copyright infringement, asserting that Passport used their materials without licenses, despite Passport's attempt to obtain a license from Elvis Presley Enterprises, Inc., which was denied due to the company's plans for its own anthology release.
Passport claims its use constitutes "fair use" under 17 U.S.C. 107. However, following a hearing, the district court granted a preliminary injunction against Passport, finding that its use was likely not fair use, thus prohibiting the sale or distribution of The Definitive Elvis. Passport has appealed this decision, arguing that the injunction is unconstitutional on grounds of a plausible fair use defense, potential prior restraint issues, and First Amendment considerations. The appellate court has jurisdiction to review the preliminary injunction under 28 U.S.C. 1292(a), with standards focusing on potential abuses of discretion by the district court.
First Amendment concerns in copyright cases are integrated into the fair use analysis; if a use is not deemed fair use, a preliminary injunction can be issued without First Amendment barriers. Passport claims that the plaintiffs’ delay in filing their suit prejudiced its investment of over $2 million and argues that laches should prevent injunctive relief. However, the plaintiffs learned of Passport's use of their copyrighted materials only in June 2001 and filed suit in September 2002, which Passport compares to a case where plaintiffs were aware of infringing content for over two years prior to filing. The court finds Passport's arguments unconvincing, noting that the plaintiffs had no way to determine fair use until they saw Passport's final product published in July 2002, and that their prompt action thereafter does not constitute an unreasonable delay.
A preliminary injunction can be granted if the plaintiff demonstrates probable success on the merits and potential irreparable harm, or if serious questions are raised that favor the plaintiff. In copyright cases, if the plaintiff is likely to succeed, irreparable harm is presumed. Passport only contests this presumption with the previously dismissed laches argument. The key issue is whether the district court abused its discretion in concluding that the plaintiffs are likely to succeed on the merits, focusing solely on the fair use question.
Fair use, as outlined in 17 U.S.C. § 107, considers: (1) the purpose and character of the use (commercial vs. nonprofit), (2) the nature of the copyrighted work, (3) the amount and substantiality of the portion used compared to the whole, and (4) the effect of the use on the potential market and value of the copyrighted work.
A case-by-case analysis is essential for determining fair use, avoiding simplified rules and recognizing that factors must not be treated in isolation. The commercial nature of a new use weighs against fair use, with the degree of exploitation for commercial gain being significant. The transformative nature of the new work is crucial; it must add new expression, meaning, or character rather than merely superseding the original. Two district courts have ruled that using film clips in biographies can be transformative, as seen in *Monster Communications*, where the biography of Muhammad Ali was deemed fair use due to its commentary and public concern focus, and in *Hofheinz*, where clips in a biography of Peter Graves were considered transformative due to their outdated presentation. Ultimately, the district court found that the purpose and character of "The Definitive Elvis" likely weigh against fair use, and no abuse of discretion was identified in this decision.
Passport's use of copyrighted materials in "The Definitive Elvis" is primarily commercial, aiming to profit from Elvis's entertainment value without obtaining the necessary licenses. While Passport claims to provide a scholarly biography, the marketing emphasizes the entertainment aspect of Elvis's appearances on iconic shows. The use of television clips is partially transformative, as some clips serve as references during narration. However, the mere presence of voice-overs does not necessarily transform the original works, and significant portions of these clips are used without sufficient transformation, serving primarily to entertain rather than to add biographical context.
The use of clips from "The Steve Allen Show" raises particular concerns, as Passport shows substantial segments rather than merely referencing them. Additionally, Passport does not justify its use of copyrighted still photographs and music. The transformative nature of the biography could support fair use, but many clips appear to exceed this purpose and are used for entertainment, which is a violation of the plaintiffs' copyrights.
The district court's assessment that the first fair use factor weighs against Passport was appropriate, as it did not reflect an erroneous legal standard or factual misjudgment. Furthermore, the nature of the plaintiffs' works is relevant: factual works receive more protection under copyright law, making fair use more challenging to claim for those types of works compared to fictional or fantasy works. Overall, the court recognizes that published works are more likely to qualify for fair use, but the substantial commercial basis of Passport's usage complicates its claim.
Original songs, motion pictures, and aesthetically-focused photographs qualify for copyright protection due to their creative nature, as established in case law (Sony Corp. v. Universal City Studios, Inc.). In contrast, factual works like news broadcasts are more aligned with fair use, supported by previous rulings. The television footage in question presents a complex scenario; it contains creative elements from performances but is also significant due to its newsworthy nature, particularly as these events have been broadcasted previously.
Still photographs and songs featured in "The Definitive Elvis" require separate consideration. The photographs do not depict newsworthy events and represent the photographer's artistic work, while original songs are recognized as inherently creative. The district court ruled that these factors favored the Plaintiffs, a decision deemed not an abuse of discretion.
The analysis of the amount and substantiality of the portion used is crucial, examining both the quantity and quality of the material taken. The court noted that even insubstantial copying does not excuse infringement, and substantial use could indicate the value of the copyrighted work. The repeated use of short clips from television appearances, particularly those featuring key performances, diminishes the biographical justification for their use. Some clips, such as those from "The Steve Allen Show," last over a minute, and many are central to the copyrighted works' value, specifically highlighting Elvis' most popular songs.
In summary, while some clips are short compared to the full shows, they often represent the essence of those works. The district court's conclusion that these factors favored the Plaintiffs was upheld as reasonable.
The most critical factor in determining fair use is the impact of the use on the potential market for and value of the copyrighted works. Courts must evaluate both the specific market harm caused by the infringer's actions and the broader implications of widespread use of similar conduct on the market for the original works. The more transformative a new work is, the less likely it will negatively impact the market for the original materials. A commercial purpose typically presumes market harm.
In this case, the district court found that Passport's use of Plaintiffs' copyrighted materials likely affects their market, a conclusion deemed not clearly erroneous. Passport's commercial use allows for an assumption of market harm, especially as it advertised the inclusion of television appearances that ordinarily incur licensing fees. Such widespread use could undermine the market for Plaintiffs' works, although this concern does not extend to music and photographs, where the likelihood of market substitution is lower. Additionally, some of Passport's uses were not transformative, directly serving the same purpose as the original works.
The court did not find this factor to strongly favor either party but upheld the district court's decision, concluding there was no abuse of discretion in granting the preliminary injunction. The reviewing court clarified that its ruling was limited to the district court's discretion regarding the likelihood of success on the merits, rather than a full re-evaluation of the case.
In dissent, Judge Noonan argued that the district court misrepresented crucial facts and misapplied the law, asserting that the findings indicated Passport's use was not transformative, as portions of the original shows were reproduced without any new contribution. Specifically, the dissent highlighted that critical findings regarding the exact reproductions of segments from various Elvis-related shows indicated a lack of transformative addition by Passport.
Portions of the 1956 episode of The Steve Allen Show featuring Elvis Presley are reproduced in The Definitive Elvis without any new or transformative additions by the Defendants. The document notes the absence of acknowledged voice-overs produced by Passport, which are new and transformative, as they provide context and analysis of Elvis's performance and its impact, rather than mere repetition. The court's failure to recognize the transformative nature of these voice-overs represents significant factual errors. Additionally, the district court overlooked the minimal use of material from Elvis Presley Home Movies, where a 4-second clip was integrated into a larger biographical narrative, and mischaracterized the use of Alfred Wertheimer's photos, which were incorporated into a comprehensive biography rather than used independently. The court also inaccurately assessed the use of music, which was primarily background and often rendered inaudible by accompanying voice-overs. The district court adopted eight of the plaintiffs' Findings of Fact on fair use without substantial alteration, leading to reliance on demonstrably incorrect conclusions. This practice of adopting party-prepared findings without critical evaluation undermines the necessary scrutiny in copyright fair use cases, justifying a lack of deference to the trial judge's decisions.
The district court's ruling is criticized for inaccurately applying the law regarding the public interest in preliminary injunctions. It failed to consider the significant public interest in the case, particularly as it relates to the documentary about Elvis Presley, which is described as a comprehensive portrayal of his legacy. Citing precedents like *Sammartano* and *Abend*, the text emphasizes that when public interest is at stake, monetary damages may be a more appropriate remedy than an injunction. The court also notes that the district court neglected to analyze the public interest as a separate inquiry, which is essential, especially in cases involving influential figures. This oversight contributed to an erroneous application of legal standards, which is deemed an abuse of discretion. The opinion asserts that the district court's factual errors warrant reconsideration, as they substantially impacted the legal analysis. Ultimately, the preliminary injunction is characterized as a miscarriage of justice due to these judicial failures.
