Case Scenario: Protecting intellectual property: elvis's Memory and intellectual property live On

Introduction: Savvy owners of intellectual property are always on the lookout for people who infringe on their intellectual property and take legal action when necessary. From 2002 to 2005, this scenario played out in a dispute involving a company named Passport Video and the copyright holders of music and videos produced by the late Elvis Presley. Alleged copyright violation Elvis, affectionately known as "The King" of rock and roll, was a musical icon for more than 20 years until his death on August 16, 1977. During his career Elvis was very prolific, and a wide variety of people own the copyrights to his music, videos, and films. In 2002, Passport Video, a video production company, produced a video documentary of Elvis's life titled the Definitive elvis. The documentary, which included eight DVDs and 16 hours of video, focused on every aspect of Elvis's life and was priced at $99.00. Each episode contained shots of Elvis performing-many of which were taken from sources that are copyrighted and owned by Elvis Presley Enterprises or others.

The shots included Presley home movies (owned by Elvis Presley Enterprises), material from the ed Sullivan Show, and portions of ed Sullivan Rock & Roll classics-elvis Presley (owned by SOFA Entertainment). Other material included shots from the elvis 1968 comeback Special, aloha from Hawaii, and elvis in concert, which included songs written by Jerry Leiber and Mike Stoller. Passport did not obtain permission to use the material. As a result, the copyright holders, who caught wind of the production of the video, informed Passport Video that they objected to the production of the videos. Passport Video persisted, and in August 2003 the copyright holders sued Passport Video for unauthorized use of footage and copyright violations. They also asked for a preliminary injunction stopping Passport Video from selling any more copies of the documentary, which a U.S. District Court granted. passport's defense Passport mounted a defense, claiming that its use of the copyrighted material was fair use and that it had spent over $2 million producing and marketing the documentary. Fair use is a doctrine in U.S. copyright law that allows limited use of copyrighted material without requiring permission from the copyright holder. In general, the following uses are protected under this doctrine:

¦ Quotation of the copyrighted work for review or criticism or in a scholarly or technical work

¦ Use in a parody or satire

¦ Brief quotation in a news report

¦ Reproduction by a teacher or a student of a small part of the work to illustrate a lesson

¦ Incidental reproduction of a work in a newsreel or broadcast of an event being reported

¦ Reproduction of a work in a legislative or judicial proceeding Passport Video also asserted that it interviewed more than 200 people to make the documentary and that only 5 to 10 percent of the length of the videos contained copyright material. the initial decision, the Appeal, and the Final decision After listening to both sides, the U.S. District Court ruled in favor of the plaintiffs, saying that fair use didn't apply and Passport Video should have obtained the appropriate copyright permissions. The court stated that Passport Video released the videos with full knowledge that the plaintiffs did not consent to their production, and that Passport Video's documentary would mislead consumers (regarding its legal production) and damage the plaintiffs. Passport persisted, appealing the decision to the ninth Circuit Court of Appeals, arguing that its documentary of Elvis's life constituted scholarly research and should therefore be protected under fair use. In a 2005 ruling, the ninth Circuit Court of Appeals disagreed and affirmed the ruling of the lower court. In its ruling, the court said, "The King is dead. His legacy, and those that wish to profit from it, remain very much alive." The court found that Passport's documentary was for commercial use rather than scholarly research, although the commercial nature of the project was not the deciding factor. Instead, the extent to which the copyrighted material was used tipped the decision for the court, which referred to the lower court's original assessment in its ruling.

In its decision, the ninth Circuit Court of Appeals, quoting from the decision of the lower court, said: Passport's use of clips from television appearances, although in most cases of short duration, were repeated numerous times throughout the tapes. While using a small number of clips to reference an event for biographical purposes seems fair, using a clip over and over will likely no longer serve a biographical purpose. additionally, some of the clips were not short in length. Passport's use of elvis' appearance on The Steve Allen Show plays for over a minute and many more clips play for more than just a few seconds. The ruling barred Passport from selling any additional copies of the Definitive elvis. It also outlined the limits of the fair use defense. Subsequent to the ruling, the United States District Court in Los Angeles awarded plaintiffs Elvis Presley Enterprises, SOFA Entertainment, and songwriters Leiber and Stoller $2.8 million in monetary damages and attorneys' fees to be paid by Passport Entertainment and its owner, Dante Pugliese. Leiber and Stroller wrote "Hound Dog" and other Elvis hits. The ruling was considered to be a significant monetary judgment for a copyright infringement case. takeaways In this case, the copyright law did exactly what it is designed to do: protect the legal owners of Elvis's material from copyright infringement. It also put publishers on notice that claiming fair use has limits and is not a blanket escape from paying copyright holders appropriate licensing fees. The ruling suggested that arguing fair use is more likely to hold water when used in conjunction with scholarly work or historical analysis than commercial projects.

Discussion Questions

1. Do you agree with the ninth Circuit Court ruling? Why or why not?

2. Why do you think the copyright holders of Elvis's work objected to Passport's video series? How were they "harmed" by the production and sale of the videos?

3. Do you think Passport Video acted ethically and honestly and believed that its production was protected by fair use, or do you think the firm was simply using fair use as a way of avoiding paying royalties for the copyrighted material it was using?

4. What can entrepreneurs who are interested in trademark law learn from this case?