Appendix — Passport Video v. Elvis Presley Enterprises, Inc.

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APPENDIX A — OPINION OF THE UNITED STATES

COURT OF APPEALS FOR THE NINTH CIRCUIT

FILED NOVEMBER 6, 2003

United States Court of Appeals,

Ninth Circuit.

No. 02-57011.

ELVIS PRESLEY ENTERPRISES, INC., a Tennessee

Corporation; National Bank of Commerce, trustee of the

Promenade Trust; Sofa Entertainment, Inc., a California

corporation; Jane Meadows Allen, trustee of the Allen Family

Revocable Living Trust; Jerry Leiber, individually dba Jerry

Leiber Music; Mike Stoller, individually dba Mike Stoller

Music; Julian J. Aberbach, an individual; Alfred Wertheimer,

an individual,

Plaintiffs-Appellees,

¥,

PASSPORT VIDEO, a business of unknown form and origin;

Passport International Productions, Inc., a California

Corporation; Passport International Productions of

California, Inc., a California Corporation; Dante J. Pugliese,

an individual,

Defendants-Appellants,

and

Does, 1 Through 10, inclusive; Passport Entertainment, a

California Corporation,

Defendants.

Appendix A

Argued and Submitted Aug. 8, 2003.

Filed Nov. 6, 2003.

Before NOONAN, TALLMAN, and RAWLINSON,

Circuit Judges.

Opinion by Judge TALLMAN; Dissent by Judge

NOONAN

OPINION

TALLMAN, Circuit Judge:

The King is dead. His legacy, and those who wish to

profit from it, remain very much alive. To what extent may a

film maker, under the banner of “fair use,” incorporate video

clips, photographs, and music into a biography about Elvis

Presley without permission from the copyright owners of

those materials? The district court—weighing the four

statutory fair use factors under 17 U.S.C. § 107—held that

the film biographer in this case likely did not use the

copyrighted materials fairly and enjoined the film maker from

further distribution of its biography. We affirm.

Plaintiffs are a group of companies and individuals

holding copyrights in various materials relating to Elvis

Presley. For example, plaintiff SOFA Entertainment, Inc., is

the registered owner of several Elvis appearances on The Ed

Appendix A

Sullivan Show. Plaintiff Promenade Trust owns the copyright

to two television specials featuring Elvis: The Elvis 1968

Comeback Special and Elvis Aloha from Hawaii. Plaintiff

Allen Family Revocable Living Trust owns the copyright to

the 1956 episode of The Steve Allen Show that featured Elvis

as a guest.

Plaintiffs’ copyright holdings extend beyond the

television medium. Plaintiffs Jerry Leiber and Mike Stoller

are song-writers who own copyrights in many of Elvis’ most

famous songs, including Jailhouse Rock and Hound Dog.

Plaintiff Alfred Wertheimer is a professional photographer

who owns numerous copyrighted photographs of Elvis.

Many Plaintiffs are in the business of licensing their

copyrights. For example, SOFA Entertainment charges

$10,000 per minute for use of Elvis’ appearances on The Ed

Sullivan Show.

Passport Entertainment and its related entities

(collectively “Passport”) produced and sold The Definitive

Elvis, a 16-hour video documentary about the life of Elvis

Presley. The Definitive Elvis sold for $99 at retail. Plaintiffs

allege that thousands of copies were sent to retail outlets

and other distributors. On its box, The Definitive Elvis

describes itself as

an all-encompassing, in-depth look at the life and

career of a man whose popularity is unrivaled in

the history of show business and who continues

Appendix A

to attract millions of new fans each year. This

ground-breaking, sixteen-hour series is brimming

with classic film clips, rare home movies, [and]

never- before-seen photos...

Every Film and Television Appearance is

represented in this series as well as Rare Footage

Of Many of Elvis’ Tours & Concerts

(emphasis in original).

The biography itself is indeed exhaustive. The producers

interviewed over 200 people regarding virtually all aspects

of Elvis’ life. The documentary is divided into 16 one-

hour episodes, each with its own theme. For example, one

episode is entitled “The Army Years,” whereas another—

“The Spiritual Soul of Elvis”—chronicles the religious

themes of Elvis’ life and music.

The Definitive Elvis uses Plaintiffs’ copyrighted materials

in a variety of ways. With the video footage, the documentary

often uses shots of Elvis appearing on television while a

narrator or interviewee talks over the film. These clips range

from only a few seconds in length to +~ tions running as

long as 30 seconds. In some instances, th~ . lips are the subject

of audio commentary, while in other instances they would

more properly be characterized as video “filler” because the

commentator is discussing a subject different from or more

general than Elvis’ performance on a particular television

show. But also significant is the frequency with which the

o ee "7

Appendix A

copyrighted video footage is used. The Definitive Elvis

employs these clips, in many instances, repeatedly. In total,

at least 5% to 10% of The Definitive Elvis uses Plaintiffs’

copyrighted materials.

Use of the video footage, however, is not limited to brief

clips. In several instances, the audio commentary discusses

Elvis’ appearance on a show and then, without additional

voice-over, a clip is played from the show featuring Elvis.

For example, one excerpt from The Steve Allen show plays

continuously for over one minute without interruption. This

excerpt includes the heart of Elvis’ famous “Hound Dog”

appearance on The Steve Allen show. Many other clips from

Elvis’ appearances on various television shows run between

10 and 30 seconds.

In the aggregate, the excerpts comprise a substantial

portion of Elvis’ total appearances on many of these shows.

For example, almost all ot Elvis’ appearance on The Steve

Allen Show is contained in The Definitive Elvis. Thirty-five

percent of his appearances on The Ed Sullivan Show is

replayed, as well as three minates from The 1968 Comeback

Special.

The use of Plaintiffs’ copyrighted still photographs and

music is more subtle and difficult to spot. The photographs

are used in a way similar to some of the video footage: the

photograph is displayed as video filler while a commentator

discusses a topic. The photographs are not highlighted or

discussed as objects of the commentary like many of the video

pieces are. Finally, the songs are played both as background

music and in excerpts from Elvis’ concerts, television

appearances, and movies.

Appendix A

Plaintiffs sued Passport for copyright infringement. It is

undisputed that ?assport used Plaintiffs’ copyrighted

materials in The Definitive Elvis without obtaining licenses.

Indeed, Passport had sought a license from at least one of

the Plaintiffs, Elvis Presley Enterprises, Inc., but it refused

Passport’s request since it planned to release its own

anthology in 2004 to commemorate the 50th anniversary of

the beginning of Elvis’ musical career. Passport, however,

asserts that its use of the copyrighted materials was “fair use”

under 17 U.S.C. § 107.

Plaintiffs moved for a preliminary injunction, which was

granted by the district court after a hearing. The district court

found that Passport’s use of Plaintiffs’ copyrighted materials

was likely not fair use. The court enjoined Passport from

selling or distributing The Definitive Elvis. Passport timely

appeals.

This Court has jurisdiction over an appeal from an order

granting a preliminary injunction under 28 U.S.C. § 1292(a).

A district court’s order granting a preliminary injunction is

reviewed for an abuse of discretion. Gerling Global

Reinsurance Corp. of Am. v. Low, 240 F.3d 739, 743 (9th

Cir.2001). A district court abuses its discretion if it bases its

decision on an erroneous legal standard or clearly erroneous

factual findings. Jd.

Appendix A

III

Passport first argues that the preliminary injunction is

unconstitutional because (1) Passport can present a plausible

fair use defense; (2) commentators have suggested in such

situations that a preliminary injunction might be an

unconstitutional prior restraint; and (3) some cases have

refused to grant preliminary injunctions based on, at least in

part, First Amendment principles.

We need not jump into this briar patch. We have held

that First Amendment concerns in copyright cases are

subsumed within the fair use inquiry. In other words, if the

use of the alleged infringer is not fair use, there are no First

Amendment prohibitions against granting a preliminary

injunction. See, e.g., A & M Records, Inc. v. Napster, Inc.,

239 F.3d 1004, 1028 (9th Cir.2001) (“Uses of copyrighted

material that are not fair uses are rightfully enjoined.”);

Dy. Seuss Enters. v. Penguin Books USA, Inc., 109 F.3d 1394,

1403 (9th Cir.1997).

Passport next alleges that Plaintiffs’ delay in bringing

their suit prejudiced Passport after Passport invested more

than $2 million in the venture, and thus injunctive relief is

barred by laches. Some Plaintiffs learned of Passport’s

possible use of their copyrighted materials in June 2001, but

did not file their complaint until September 2002. Passport

asserts that this case is similar to Jrust Co. Bank v. Putnam

Publishing Group, Inc., 5 U.S.P.Q.2d 1874 (C.D.Cal.1988).

Appendix A

Passport’s contentions have little merit. First, Passport

did not publish The Definitive Elvis until July 2002. Plaintiffs

filed suit within two months. There was no way for Plaintiffs

to assess whether Passport’s use would be fair until they saw

the final product. Second, as Plaintiffs point out, if Plaintiffs

had brought suit before the work was published it might have

raised a viable prior restraint argument by Passport. See, e.g.,

Globe Int’l, Inc. v. Nat'l Enquirer, Inc., 27 Media L. Rep.

1491, 1999 WL 727232, at *1 (C.D.Cal.1999). Finally,

Passport’s reliance on 7rust Co. Bank is unavailing. There,

the plaintiffs knew the exact content of the infringing book

well over two years before they brought suit. 5 U.S.P.Q.2d

at 1877, 1988 WL 62755. Based on that fact, as well as the

substantial investment by the defendants in the interim, the

district court held that the plaintiffs were barred by laches.

Id. at 1879-80, 1988 WL 62755. Here, conversely, Plaintiffs

did not have knowledge of the final product produced by

Passport until July 2002, and their subsequent complaint filed

weeks later was not an unreasonable delay.

A preliminary injunction should be granted if a plaintiff

can show either: (1) a combination of probable success on

the merits and the possibility of irreparable harm; or (2) that

serious questions are raised and the balance of hardships tilt

in the plaintiff’s favor. A & M Records, 239 F.3d at 1013.

When a plaintiff is likely to succeed on the merits of a

Triad Sys. Corp. v. Southeaste,n Exp. Co., 64 F.3d 1330,

1335 (9th Cir.1995). The only argument Passport presents to

counter the irreparable harm presumption is the laches

Appendix A

argument rejected above. Therefore, this case turns on

whether the district court abused its discretion when it

determined that Plaintiffs will probably succeed on the merits.

Fair use is the only issue in contention on the merits.

17 U.S.C. § 107 states:

the fair use of a copyrighted work ... for purposes

such as criticism, comment, news reporting,

teaching (including multiple copies for classroom

use), scholarship, or research, is not an

infringement of copyright. In determining whether

the use made of a work in any particular case is

a fair use the factors to be considered shall

include—

(1) the purpose and character of the use,

including whether such use is of a commercial

nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the

portion used in relation to the copyrighted

work as a whole; and

(4) the effect of the use upon the potential

market for and value of the copyrighted work.

This analysis should not be “simplified with bright-line

: rules,” but instead requires a “case-by-case analysis.” Los

Angeles News Serv. v. CBS Broad., Inc., 305 F.3d 924, 938

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Appendix A

(9th Cir.2002), amended by 313 F.3d 1093 (2002) (quoting

Campbell vy. Acuff-Rose Music, inc., 510 U.S. 569, 577-78,

114 S.Ct. 1164, 127 L.Ed.2d 500 (1994)). Contrary to the

divide and conquer approach taken by the dissent, we may

not treat the factors in isolation from one another. “All are to

be explored, and the results weighed together, in light of the

purposes of copyright.” Los Angeles News Serv., 305 F.3d at

938. See also Kelly v. Arriba, 336 F.3d 811, 822 (9th

Cir.2002).

We first address the purpose and character of Passport’s

use of Plaintiffs’ copyrighted materials. Although not

controlling, the fact that a new use is commercial as opposed

to non-profit weighs against a finding of fair use. Harper &

Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 562,

105 S.Ct. 2218, 85 L.Ed.2d 588 (1985). And the degree to

which the new user exploits the copyright for commercial

gain—as opposed to incidental use as part of 4 commercial

enterprise—affects the weight we afford commercial nature

as a factor. See e.g., Kelly 336 F.3d at 818; see also Harper

& Row, 471 U.S. at 562, 105 S.Ct. 2218 (“The crux of the

profit/nonprofit distinction is not whether the sole motive of

the use is monetary gain but whether the user stands to profit

from exploitation of the copyrighted material without paying

the customary price.’’).

More importanily for the first fair-use factor, however,

is the “transformative” nature of the new work. Campbell,

510 U.S. at 579, 114 S.Ct. 1164; CBS Broadcasting, 305

F.3d at 938. Specifically, we ask “whether the new work...

lla

Appendix A

merely superseues the objects of the original creation, or

instead adds something new, with a further purpose or

different character, altering the first with new expression,

meaning, or message... .” Campbell, 510 U.S. at 579, 114

S.Ct. 1164 (citation and quotation marks omitted). The more

transformative a new work, theless significant other

inquiries, such as commercialism, become. Jd.

_ Two district courts have found that the use oi film clips in

biograpnies is transformative. In Monster Communications, Inc.

v. Turner Broadcasting System, Inc., 935 F.Supp. 490, 491

(S.D.N.Y.1996), the district court considered whether a movie

biography about Muhammad Ali violated the plaintiff’s

copyrights in video footage that was used in the boxer’s

biography for less then two minutes. The court found that the

biography, while commercial, “constitutes a combination of

comment, criticism, scholarship and research” concerning

“a figure of legitimate public concern” and thus the purpose

and character of the biography weighed in favor of fair use.

Id. at 493-94 (citation and quotation marks omitted).

In Hofheinz v. A & E Television Networks, 146 F.Supp.2d

442, 444 (S.D.N.Y.2001), the court considered whether A &

E’s use of copyrighted film clips for a biography of actor

Peter Graves was fair use. The court found that the biography

was transformative because use of a movie trailer clip for a

“B” movie “was not shown to recreate the creative expression

reposing in plaintiff’s film.” /d. at 446. The biography

narrator introduced the movie clip as outdated and “campy.”

Id. at 444. Its purpose was to “enabl[e] the viewer to

understand the actor’s modest beginnings in the film

business.” Jd. at 446-47.

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Appendix A

The district court below found that the purpose and

character of The Definitive Elvis will likely weigh against a

finding of fair use. We cannot say, based on this record, that

the district court abused its discretion.

First, Passport’s use, while a biography, is clearly

commercial in nature. But more significantly, Passport seeks

to profit directly from the copyrights it uses without a license.

One of the most salient selling points on the box of The

Definitive Elvis is that “Every Film and Television

Appearance is represented.” Passport is not advertising a

scholarly critique or historical analysis, but instead seeks to

profit at least in part from the inherent entertainment value

of Elvis’ appearances on such shows as The Steve Allen Show,

The Ed Sullivan Show, and The 1968 Comeback Special.

Passport’s claim that this is scholarly research containing

biographical comments on the life of Elvis is not dispositive

of the fair use inquiry.

Second, Passport’s use of Plaintiffs’ copyrights is not

censistently transformative. True, Passport’s use of many of

the television clips is transformative because the clips play

for only a few seconds and are used for reference purposes

while a narrator talks over them or interviewees explain their

context in Elvis’ career. But voice-overs do not neces: arily

transform a work. See L.A. News Serv. v. KCAL-TV Channel

9, 108 F.3d 1119, 1122 (9th Cir.1997). “ ‘There must be

- real, substantial condensatior: of the materials ... and not

merely the facile use of scissors; or extracts of the essential

parts, constituting the chi-f value of the original work.’ ”

CBS Broad., Inc., 305 F.5¢. at 939 (quoting Folsom v. Marsh,

9 F. Cas. 342, 345 (C.C.0.Mass.1841) (Story, J.)).

pi Raisierhacaatides

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Appendix A

It would be impossible to produce a biography of Elvis

without showing some of his most famous television

appearances for reference purposes. But some of the clips

are played without much interruption, if any. The purpose of

showing these clips likely goes beyond merely making a

reference for a biography, but instead serves the same intrinsic

entertainment value that is protected by Plaintiffs’ copyrights.

We think Passport’s use of significant portions of

The Steve Allen Show is especially troubling. While showing

a clip from these television shows is permissible to note their

historical value, Passport crosses the line by making more

than mere references to these events and instead shows

significant portions of these copyrighted materials. Finally,

Passport does not even offer up a specific justification

regarding its use of Plaintiffs’ copyrights in still photographs

and music.

This first factor is a close issue. Courts have described

new works as “transformative” when the works use

copyrighted material for purposes distinct from the purpose

of the original material. Here, Passport’s use of many of the

television clips is transformative because they are cited as

historical reference points in the life of a remarkable

entertainer. The Definitive Elvis “nature as a biography

transforms the purpose of showing these clips from pure

entertainment to telling part of the story of Elvis” life. But

many of the film clips seem to be used in excess of this benign

purpose, and instead are simply rebroadcast for entertainment

purposes that Plaintiffs rightfully own. This comes as no

surprise to the viewer since The Definitive Elvis advertises

as much on its external packaging.

l4a

Appendix A

We need not decide how we would resolve this factor

were we to review it de novo. For our inquiry is simply

whether the district court abused its discretion. The district

court’s decision that the first factor weighs against fair use

was not based on an erroneous legal standard or clearly

erroneous factual finding. See A & M Records, Inc., 239 F.3d

et 1015.

We next examine the nature of Plaintiffs’ copyrighted

works. “The law generally recognizes a greater need to

disseminate factual works than works of fiction or fantasy.”

Harper & Row, 471 U.S. at 563, 105 S.Ct. 2218. In other

words, “this factor calls for recognition that some works are

closer to the core of intended copyright protection than others,

with the consequence that fair use is more difficult to

esiablish when the former works are copied.” Campbell, 510

U.S. at 586, 114 S.Ct. 1164. Additionally, published works

are more likely to qualify for fair use by subsequent users.

Kelly, 336 F.3d at 820.

For example, works such as original songs, motion

pictures, and photographs taken for aesthetic purposes, are

creative in nature and thus fit squarely within the core of

Studios, Inc., 464 U.S. 417, 455 n. 40, 104 S.Ct. 774, 78

L.Ed.2d 574 (1984); Kelly, 336 F.3d at 820. But works such

as news broadcasts and news video footage are more factual

in nature and thus are more conducive to fair use. See Sony,

464 US. at 455 n. 40, 104 S.Ct. 774; KCAL-TV, 108 F.3d at

1122.

i as Sori te

15a

Appendix A

Here, the television footage is a close call. On the one

hand, the appearances and concerts are creative in nature and

thus fit into a category of work copyright is designed to

protect. On the other hand, the footage is of such a

significance that it can properly be. characterized as

“newsworthy” events. The fact that these appearances have

already been broadcast on television also weighs in Passport’s

favor.

But the still photographs and songs used throughout The

Definitive Elvis require a different analysis. The pictures, in

most instances, do not depict newsworthy events, nor are

the pictures inherently newsworthy, but instead comprise the

photographer’s artistic product. Moreover, it is undisputed

that original musical compositions are inherently creative.

See Campbell, 510 U.S. at 586, 114 S.Ct. 1164; A & M

Records, 239 F.3d at 1016.

The district court found that in total this factor weighed

in Plaintiffs’ favor. We cannot say that the district court

abused its discretion in reaching that conclusion.

The third factor is the amount and substantiality of the

portion used in relation to the copyrighted work as a whole.

This factor evaluates both the quantity of the work taken

and the quality and importance of the portion taken.

Campbell, 510 U.S. at 586, 114 S.Ct. 1164. Regarding the

quantity, copying “may not be excused merely because it is

insubstantial with respect to the infringing work.” Harper &

Row, 471 U.S. at 565, 105 S.Ct. 2218 (emphasis in original).

l6a

Appendix A

But if the amount used is substantial with respect to the

infringing work, it is evidence of the value of the copyrighted

work. /d. Regarding the qualitative nature of the work used, we

look to see whether “the heart” of the copyrighted work is

taken—1in other words, whether the portion taken is the “most

likely to be newsworthy and important in licensing serialization.”

Campbell, 510 U.S. at 586, 114S.Ct. 1164; see also CBS Broad.,

305 F.3d at 941. Finally, if the new user only copies as much as

necessary for his or her intended use, this factor will not weigh

against the new user. Kelly, 336 F.3d at 820-21.

The district court found that this factor also weighs in

Plaintiffs’ favor. This conclusion was not an abuse of discretion.

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.

Additionally, although the clips are relatively short when

compared to the entire shows that are copyrighted, they are in

many instances the heart of the work. What makes these

copyrighted works valuable is Elvis’ appearance on the shows,

in many cases singing the most familiar passages of his most

popular songs. Plaintiffs are in the business of licensing these

copyrights. Taking key portions extracts the most valuable part

of Plaintiffs’ copyrighted works. With respect to the photographs,

the entire picture is often used. The music, admittedly, is usually

played only for a few seconds.

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Appendix A

But when we consider all these facts together, we cannot

say that the district court abused its discretion in finding that

this factor weighed in Plaintiffs’ favor.

The last, and “undoubtedly the single most important” of

all the factors, is the effect the use will have on the potential

market for and value of the copyrighted works. Harper & Row,

471 U.S. at 566, 105 S.Ct. 2218. We must “consider not only

the extent of market harm caused by the particular actions of

the alleged infringer, but also whether unrestricted and

widespread conduct of the sort engaged in by the defendant. . .

would result in a substantially adverse impact on the potential

market for the original.” Campbell, 510 U.S. at 590, 114 S.Ct.

1164 (quotation marks omitted). The more transformative the

new work, the less likely the new work’s use of copyrighted

materials will affect the market for the materials. See CBS

Broad., 305 F.3d at 941. Finally, if the purpose of the new work

is commercial in nature, “the likelihood [of market harm] may

be presumed.” A & M Records, 239 F.3d at 1016 (quoting Sony,

464 US. at 451, 104 S.Ct. 774).

The district court found that Passport’s use of Plaintiffs’

copyrighted materials likely does affect the market for those

materials. This conclusion was not clearly erroneous.

First, Passport’s use is commercial in nature, and thus we

can assume market harm. See id. Second, Passport has expressly

advertised that The Definitive Elvis contains the television

appearances for which Plaintiffs normally charge a licensing

fee. If this type of use became widespread, it would likely

undermine the market for selling Plaintiffs’ copyrighted material.

18a

Appendix A

This conclusion, however, does not apply to the music and still

photographs. It seems unlikely that someone in the market for

these materials would purchase The Definitive Elvis instead of

a properly licensed product. Third, Passport’s use of the

television appearances was, in some instances, not

transformative, and therefore these uses are likely to affect the

market because they serve the same purpose as Plaintiffs’

original works.

We do not think this factor weighs strongly in either side’s

favor. But, for the reasons stated above that support the district

court’s decision, we cannot say that the district court abused its

discretion in analyzing this factor. Furthermore, because we do

not see any legal error or clear error in the district court’s factual

findings underlying any of the fair-use factors, we hold that the

district court did not abuse its discretion in granting the

preliminary injunction.

We emphasize that our holding today is not intended to

express how we would rule were we examining the case ab

initio as district judges. Instead, we confine our review to

whether the district court abused its discretion when it weighed

the four statutory fair-use factors together and determined that

Plaintiffs would likely succeed on the merits. Although we might

view this case as closer than the district court saw it, we hold

there was no abuse of discretion in the court’s decision to grant

Plaintiffs’ requested relief.

AFFIRMED.

19a

APPENDIX B — AMENDED DISSENT OF THE

UNITED STATES COURT OF APPEALS FOR THE

NINTH CIRCUIT DATED FEBRUARY 6, 2004

United States Court of Appeals,

Ninth Circuit.

No. 02-57011.

ELVIS PRESLEY ENTERPRISES, INC., a Tennessee

corporation; National Bank of Commerce, trustee of the

Promenade Trust; Sofa Entertainment, Inc., a California

corporation; Jane Meadows Allen, trustee of the Allen Family

Revocable Living Trust; Jerry Leiber, individually dba Jerry

Leiber Music; Mike Stoller, individually dba Mike Stoller

Music; Julian J. Aberbach, an individual; Alfred Wertheimer,

an individual,

Plaintiffs-Appellees,

PASSPORT VIDEO, a business of unknown form and origin;

Passport International Productions, Inc., a California

corporation; Passport International Productions of California,

Inc., a California corporation; Dante J. Pugliese, an

individual,

Defendants-Appellants.

and

Does, 1 through 10, inclusive; Passport Entertainment, a

California corporation,

Defendants.

20a

Appendix B

Argued and Submitted Aug. 8, 2003.

Filed Nov. 6, 2003.

Amended Dissent Feb. 6, 2004.

Before: NOONAN, TALLMAN, and RAWLINSON,

Circuit Judges.

NOONAN, Circuit Judge, dissenting:

AMENDED DISSENT

The district court has misstated critical facts and has

misstated the governing law. For these reasons, we should

reverse its grant of a preliminary injunction.

The Facts. That the plaintiffs hold copyrighted materials

and the defendant used portions of them were not and are

not disputed facts. Passport’s principal defense was that its

use of the materials was fair use. Here the facts were disputed.

Here the district court made critical misstatements as follows:

Finding of Fact 11: “The portions of The Ed Sullivan

Show included on The Definitive Elvis are exact

reproductions; the Defendants did not add anything new or

transformative to the copyrighted work.”

Finding of Fact 13: “The portions of Ed Sullivan's Rock

& Roll Classics— Elvis Presley included on The Definitive

Elvis are exact reproductions; the Defendants did not add

anything new or transformative to the copyrighted work.”

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Appendix B

Finding of Fact 22: “Portions of ‘The Elvis 1968

Comeback Special,’ ‘Elvis Aloha From Hawaii,’ and ‘Elvis

in Concert’ have been copied and appear in The Definitive

Elvis. The portions of these works included on The Definitive

Elvis are exact reproductions; the Defendants did not add

anything new or transformative to the copyrighted works.”

Finding of Fact 35: “Portions of the 1956 episode of

The Steve Allen Show featuring Elvis Presley are copied and

appear on The Definitive Elvis. The portions of The Steve

Allen Show included on The Definitive Elvis are exact

reproductions; the Defendants did not add anything new or

transformative to the copyrighted works.”

In each of these instances, there are in fact voice-overs

produced by Passport. None of the Findings of Fact

acknowledge the existence of the voice- overs. These

omissions are capital. The voice-overs are indisputably new.

Not only are the ignored voice-overs new. They are

transformative. They turn the original Presley shows into part

of a substantial biography. The court’s denials that newness

and transformative quality are characteristic of these uses

are substantial errors of fact. To give one example, in the

clips taken from The Steve Allen Show, the voice-over

includes comments from the narrator, Elvis’s friends and

band members about his appearance on the show and later

reactions to his performance from Elvis himself. Rather than

regurgitation, Passport provides independent analysis of the

appearance and frames it in the context of Elvis’s life and

Career.

22a

Appendix B

In addition to these large errors as to the new aud

transformative uses, in Finding of Fact 19 on the material

used from Elvis Presley Home Movies, the district court

failed to note the extraordinarily small amount of material

used by Passport. The length of the clip is 4 seconds. It was

error to treat as unf2i: use such a tiny fragment integrated

into a large biograph.ca! mosaic.

Finding of Fact 43 denies newness or transformative

quality to photos copyrighted by photographer Alfred

Wertheimer. As in the rest of the documentary, voice-overs

accompany many if not all of the photos. The photos are not

presented for their own sake. They are intelligently

incorporated into the larger, 16-hour biography that Passport

has made. Fans wanting photos of Elvis would not find The

Definitive Elvis to be a viable substitute. The use in the

biography is new and transformative.

Finding of Fact 25 bears on music whose copyright is in

The Promenade Trust and Finding of Fact 40 bears on music

whose copyright holder is L & S. As in its other findings, the

district court found nothing new or transformative in the use

made by Passport. However, the music is used largely as

background, and the median length of the excerpts played

was about ten seconds. Voice- overs accompany much of the

music, rendering large parts of the excerpts virtually

inaudible. Findings of Fact 25 and 40 fail to address the

audibility of the music and the relation of the new words to

what is played.

The district court adopted eight of the plaintiffs’ Findings

of Fact on fair use. Six are demonstrably wrong. The two on

et Re ee tiated: ae ‘

23a

Appendix B

music are ambiguous. None can be relied upon. Why the court

committed these errors is not difficult to discover. The court

adopted wholesale the twelve pages entitled “Findings of

Fact” prepared by the plaintiffs. With the exception of

eliminating five irrelevant sentences, the court did not change

a comma or a phrase.

Such a practice of using findings prepared by a party is

i0t unusual. It is not forbidden, although a iudge may not

abdicate his responsibility by continuing to omit key facts

that have been omitted by the party on whose work the judge

is relying. In a copyright case where fair use is the issue, this

practice destroys the delicate discrimination necessary if fair

use is to be fairly evaluated. We have more than once stated

that such mass adoption of “the suggestions” of a party will

require “special scrutiny” on appeal. L.K. Comstock & Co.

v. United Eng ’rs & Constructors Inc., 880 F.2d 219, 222 (Sth

Cir.1989); Photo Elecs. Corp. v. England, 581 F.2d 772, 776-

77 (9th Cir.1978). In the instant case, the repeated errors

committed by the district court because of its reliance on the

drafting of the plaintiffs relieve us of any duty to defer to the

trial sudge.

The district judge’s job in reviewing uses claimed to be

transformative is particularly important as the fair use

doctrine is intended to preserve the values enshrined in the

First Amendment. See Eldred v. Ashcroft, 537 U.S. 186, 219-

20, 123 S.Ct. 769, 154 L.Ed.2d 683 (2003). When the trial

court simply accepts the defendant’s assertions, the

constitutional values are ignored.

24a

Arpenaix TI?

The Law. The district court found the plaintiffs’

statement of the law as exact as the plaintiffs’ rendition of

the facts. Doing so, the court repeated several truisms, but

on the critical point at issue it again fell into serious error.

What the plaintiffs, and the district court following the

plaintiffs, neglected to note is the need of an examination of

“the public interest in determining the appropriateness of a

preliminary injunction.” Sammartano v. First Judicial

District, 303 F.3d 959, 974 (9th Cir.2002); see also Fund for

Animals v. Lujan, 962 F.2d 1391, 1400 (9th Cir.1992).

Sammartano makes clear that “[w]hile we have at times

subsumed this inquiry into the balancing of hardships, it is

better seen as an element that deserves separate attention in

cases where the public interest may be affected.”

Sammartano, 303 F.3d at 974 (citation omitted).

The resolution of this case and the grant of the

preliminary injunction affect the public interest. The King is

dead but his legacy remains very much alive. The Definitive

Elvis documentary purports to offer the public, as described

by its packaging, “‘an all-encompassing, in-depth look at the

life and career of a man whose popularity is unrivaled 1° the

history of show business and who continues to attract millions

of new fans each year.” A review by a more objective source,

The USA Today, described the documentary as “the most

comprehensive overview yet of the King’s personal and

professional life.” Edna Gunderson, ‘The Definitive Elvis’:

Eight CDs, 16 Hours, $99, USA Today, July 19, 2002, at 1E.

In Abend v. MCA, 863 F.2d 1465, 1479 (9th Cir.1988),

aff'd sub nom. Stewart v. Abend, 495 U.S. 207, 110 S.Ct.

1750, 109 L.Ed.2d 184 (1990), another case not addressed

25a

Appendix B

by the district court’s Conclusions of Law, our court found

that because “an injunction could cause public injury by

denying the public the Opportunity to view a classic film,”

Hitchock’s Rear Window, monetary damages would

adequately compensate the plaintiff for any infringement.

Other courts have reached similar conclusions, finding

‘‘a strong public interest favoring the publication of books

and novels.” 7rust Co. Bank v. Putnam Publ’g Group, Inc.,

5S U.S.s.Q.2d 1874, 1877, 1988 WL 62755 (C.D.Cal.1988).

There is “little doubt” that a television biography of

Muhammed Ali “is a subject of public interest,” Monster

Communications, Inc. v. Turner Broad. Sys., Inc., 935 F.Supp.

490, 494 (S.D.N.Y.1996). There is equally little doubt of the

public interest in Elvis.

The district court conducted no analysis of the public

interest, either as part of a balancing of hardships or as the

separate inquiry called for by Sammartano. This failure also

led to the district court ignoring money damages as the

appropriate equitable remedy for any infringement where fair

use was not shown. Abend, 863 F.2d at 1479. Ina case of

this kind involving the biography of a man with an immense

following, it is necessary for a court to keep in mind that

injunctions are a device of equity and are to be used equitably,

and that a court suppressing speech must be aware that it is

trenching on a zone made sacred by the First Amendment.

See Mark A. Lemley & Eugene Volokh, Freedom of Speech

and Injunctions in Intellectual Property Cases, 48 Duke L.J.

147 (1998).

The district court’s absolute neglect of this interest is

compounded by the absolute absence of attention to it by

26a

Appendix B

this court in its opinion in this case. Indifference to the public

interest at stake incorporates a profound misunderstanding

of the purpose of the constitutional empowerment of

Congress to protect copyright. As the Supreme Court,

reversing this circuit twenty years ago, patiently explains:

“The monopoly privileges that Congress may authorize are

neither unlimited nor primarily designed to provide a special

private benefit. Rather, the limited grant is a means by which

an important public purpose may be achieved.” Sony Corp.

of America v. Universal City Studios, Inc., 464 U.S. 417,

429, 104 S.Ct. 774, 78 L.Ed.2d 574 (1984).

The Sony Court went on to quote United States v.

Paramount Pictures:

“The sole interest of the United States and the

primary object in conferring the monopoly lie in

the genera! benefits derived by the public from

the labors of authors.” It is said that reward to the

author or artist serves to induce release to the

public of the products of his creative genius.

334 U.S. 131, 158, 68 S.Ct. 915, 92 L.Ed. 1260 (1948)

(quoting Chief Justice Hughes in Fox Film Corp. v. Doyal,

286 U.S. 123, 127, 52 S.Ct. 546, 76 L.Ed. 1010 (1932)).

To neglect the public interest in the protection afforded a

The constitution permits the creation of temporary

monopolies in a context ruled by our American suspicion of

monopolies and our high valuation of freedom of expression.

See Eldred v. Ashcroft, 537 U.S. at 219, 123 S.Ct. 769.

27a

Appendix B

“We review a grant or denial of a preliminary injunction

for abuse of discretion,” and “[a]pplication of erroneous legal

principles represents an abuse of discretion by the district

court.” A & M Records, Inc. vy. Napster, Inc., 239 F.3d 1004,

1013 (9th Cir.2001). The district court’s failure to apply the

appropriate legal standard was such an abuse of discretion.

As to each of the factors bearing on fair use, the present

opinion of the court defers to the factfinding of the district

court and emphasizes that “our holding today is not intended

to express how we would rule were we examining the case

ab initio as district judges.” But given the string of factual

errors committed by the district judge, we make a mistake in

according such deference. The mistake is magnified by the

district court’s and this court’s remarkable error of law in

failing to weigh the public interest in a biography of Elvis.

For these reasons, the grant of the preliminary injunction

was a miscarriage of justice.

28a

APPENDIX C — FINDINGS OF FACT AND

CONCLUSIONS OF LAW IN CONNECTION WITH

ORDER GRANTING PRELIMINARY INJUNCTION

OF THE UNITED STATES DISTRICT COURT FOR

THE CENTRAL DISTRICT OF CALIFORNIA DATED

NOVEMBER 15, 2002 AND FILED NOVEMBER 18, 2002

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

WESTERN DIVISION

CASE NO. 02-7042 RSWL (RZx)

ELVIS PRESLEY ENTERPRISES, INC.,

a Tennessee corporation, et al.

Plaintiffs,

PASSPORT ENTERTAINMENT,

a California corporation, et al.

Defendants.

FINDINGS OF FACT AND CONCLUSIONS OF LAW

IN CONNECTION WITH ORDER GRANTING

PRELIMINARY INJUNCTION

Courtroom: 21

Judge: Hon. Ronald S.W. Lew

As ordered by the Court at the hearing on October 22,

2002 at 9:00 a.m. on Plaintiffs’ Application for Preliminary

Injunction, plaintiff’s submit the following Findings of Fact

and Conclusions of Law.

29a

Appendix C

FINDINGS OF FACT

The Court finds that the following facts are likely to be

established at triai.

A. The Definitive Elvis

1. On July 23, 2002, Defendants released a rroduct

entitled “25th Anniversary Elvis: The Definitive Collection

August 16, 1977 - August 16, 2002,” otherwise entitled

“The Definitive Elvis.” .

2. The Definitive Elvis box set includes a 16-hour series

on 8 videos, in both DVD or VHS format, and has a list

price of $99.00.

3. The Definitive Elvis box set product prominently

features the name and images of Elvis Presley throughout

the recordings, and over a substantial portion of the product’s

packaging and advertising.

4. The Definitive Elvis is advertised as an

“all-encompassing, in-depth took” at the life and career of

Elvis and is touted as a “groundbreaking” series “brimming

with classic film clips, rare home movies, never-before-seen

photos” and newly produced footage.

5. The packaging of The Definitive Elvis represents that

“every film and television appearance is represented in this

series as well as rare footage of many of Elvis’ tours and

concerts.”

30a

Appendix C

6. The name “ELVIS” is stamped in large print on the

top and main panel of The Definitive Elvis box set, and an

image of Elvis Presley appears on the cover and spine of

each individual disc in the set.

7. The Definitive Elvis includes reproductions of

excerpts, and material portions of each of Plaintiffs’

copyrighted works, as well as additional intellectual

properties, including Elvis Presley’s name, voice, likeness,

or marks.

8. The Defendants are not licensees of, and are not

authorized by any of Plaintiffs to manufacture, promote,

advertise, distribute, display, offer for sale or sell any of the

copyrighted works reproduced and incorporated into The

Definitive Elvis box set, nor have the Defendants paid any

compensation to plaintiffs for their use of the copyrighted

material.

B. SOFA Entertainment, Inc.

10. Plaintiff SOFA Entertainment, Inc. (“SOFA”) is a

producer of movies, videos and television programs and

is the owner of various entertainment properties, including

The Ed Sullivan Show.

11. SOFA is the registered copyright holder of various

episodes of The Ed Sullivan show which feature Elvis

Presley. SOFA is the registered copyright holder of the

episode of The Ed Sullivan Show featuring Elvis Presley that

aired January 6, 1957, registered with the United States

31a

Appendix C

No. PAu-910-701. Clips from the copyrighted The Ed

Sullivan Show have been reproduced and appear in The

Definitive Elvis. The portions of The Ed Sullivan Show

included on The Definitive Elvis are exact veproductions;

the Defendants did not add anything new or transformative

to the copyrighted work.

12. Although initially registered to Sullivan Productions,

Inc., Copyright Registration No. No. PAu-910-701 was

transferred to SOFA Entertainment, L.P. pursuant to a

Television Library Acquisition Agreement dated on August

16, 1990 between Sullivan Productions, Inc. and SOFA

Entertainment, L.P. In 1995, SOFA Entertainment L.P. was

dissolved and the rights were assigned to Plaintiff SOFA.

13. Plaintiff SOFA is the registered copyright holder of

Ed Sullivan's Rock & Roll Classics - Elvis, registered with

the United States Copyright Office pursuant to Certificate of

Registration No. PA I-069-583, portions of which have

been reproduced and appear on The Definitive Elvis.

The portions of Ed Sullivan’s Rock & Roll Classics - Elvis

Presley included on The Definitive Elvis are exact

reproductions; the Defendants did not add anything new or

transformative to the copyrighted work.

14. Part of SOFA’s business consists of licensing the

above Ed Sullivan copyrighted works as well as other works.

SOFA paid a large sum of money to obtain the rights to the

above copyrighted works in order to be able to license them

for profit. SOFA is in the market of licensing its copyrighted

works, including the copyrighted The Ed Sullivan Show, to

documentary film makers, biographers, advertisers, movie

32a

Appendix C

makers, and television producers to show small portions of

SOFA’s copyrighted works in their own productions.

15. Elvis Presley appeared on The Ed Sullivan show

three times. He appeared in September 9, 1956, October 28,

1956, and January 6, 1957. The September 9, 1956

appearance lasted 13 minutes 2 seconds, the October 28, 1956

appearance lasted 14 minutes 15 seconds, and the January 6,

1957 appearance lasted 14 minutes 42 seconds.

16. In October 2001, Andrew W. Solt, President of

SOFA, was informed that the Passport Defendants and

Pugliese were in the process of producing a series or program

in which they planned to use clips of Elvis from The Ed

Sullivan Show. Mr. Solt contacted Pugliese on or about

October 29, 2001, to inform him that SOFA had not licensed

or otherwise approved or authorized the use of any of its

Elvis or The Ed Sullivan Show properties by any of the

Defendants, and that SOFA would consider any unauthorized

use of the properties by Defendants to be copyright

infringement.

17. The Defendants Dante J. Pugliese,. Passport

International Productions, Passport Entertainment, Inc.,

Passport Video and Passport International Productions, of

California, Inc. are not licensees of, and are not authorized

by SOFA to manufacture, promote, advertise, distribute,

display, offer for sale or sell any of the copyrighted Ed

Sullivan material incorporated into The Definitive Elvis.

Defendants have not paid any compensation to Plaintiff SOFA

for their use of the copyrighted material.

33a

Appendix C

C. Elvis Presley Enterprises, Inc. and The Promenade

Trust

18. Plaintiff Elvis Presley Enterprises, Inc. (“EPE”) is

the corporate entity that was created by The Elvis Presley

Trust to conduct business and manage its assets. In addition

to operating Elvis Presley’s home, known as “Graceland,”

EPE’s business includes the worldwide licensing of

Elvis-related products and ventures, the development of

Elvis-related music, film, video, television and stage

productions, the ongoing development of EPE’s Internet

presence, and the management of significant music

publishing assets. Lisa Marie Presley, Elvis Presley’s only

child and the sole remaining heir to Elvis’ estate, is the owner

and Chairman of the Board of EPE.

19. EPE is the registered copyright holder of several of

Elvis’ performances, including Elvis Presley - Home Movies

(the “Home Movies Copyrighted Work”), registered with the

United States Copyright Office pursuant to Certificate of

Registration No. PAu 1 262 281. Portions of this material

have been reproduced and included on The Definitive Elvis.

The portion of Elvis Presley - Home Movies included

on The Definitive Elvis is an exact reproduction; the

Defendants did not add anything new or transformative to

the copyrighted work.

20. The Defendants Dante J. Pugliese, Passport

International Productions, Passport Entertainment, Inc.,

Passport Video and Passport International Productions, of

California, Inc. are not licensees of, and are not authorized

by EPE to manufacture, promote, advertise, distribute,

34a

Appendix C

display, offer for sale or sell the copyrighted material from

Elvis Presley - Home Movies, which is reproduced in The

Definitive Elvis. Defendants have not paid any compensation

to Plaintiff EPE for their use of the copyrighted material.

21. The Promenade Trust is the holder of the rights to

the following copyrighted works: “The Elvis 1968 Comeback

Special (a/k/a “The Singer Special’’),” registered with the

United States Copyright Office pursuant tc Certificate of

Registration No. PAu 541-4438; “Elvis Aloha From Hawaii,”

registered with the United States Copyright Office pursuant

to Certificate of Registration No. PAu 541-442C; “Elvis in

Concert” registered with the United States Copyright Office

pursuant to Certificate of Registration No. PAu 545-679D.

22. Portions of “The Elvis 1968 Comeback Special,”

“Elvis Aloha From Hawaii,” and “Elvis in Concert” have

been copied and appear in “The Definitive Elvis.” The

portions of these works included on The Definitive Elvis are

exact reproductions; the Defendants did not add anything

new or transformative to the copyrighted works.

23. The Defendants are not licensees of, and are not

authorized by The Promenade Trust to manufacture, promote,

advertise, distribute, display, offer for sale or sell the

copyrighted material from “The Elvis 1968 Comeback

Special,” “Elvis Aloha From Hawaii,” and “Elvis in Concert”

that is reproduced in The Definitive Elvis. Defendants have

not paid any compensation to Plaintiff The Promenade Trust

for their use of the copyrighted material.

35a

Appendix C

24. The Promenade Trust possesses ownership interests

in the copyrights of the following musical compositions:

Musical Composition Copyright Renewal Number

“Can’t Help Falling in

Love With You” RE 415-211

“Don’t Be Cruel” RE 193250; RE 195606

“GI. Blues” RE 367-167; RE 370-310

“Hound Dog”’ RE 82-406; RE 198443

“It’s Now or Never” RE 368-224; RE 366-671

“Love Me Tender” RE 203831; RE 203829

‘Return to Sender” RE 477698

“Stuck on You”’ RE 369-439; RE 386-593;

RE 366-560

‘Teddy Bear” RE 233-752; RE 234-403;

RE 233-757

25. The copyrights for each of the musical compositions

identified in paragraph 23 above, were Originally registered

to EP Music Inc. and Gladys Music Inc. EP Music Inc. and

Gladys Music Inc. were owned 50% by Elvis Presley (later

the Estate of Elvis Presley), 25% by Julian Aberbach, and

25% by Susan Aberbach. The Estate of Elvis Presley’s

interests were then transferred to The Promenade Trust in

accordance with an Assignment of Copyright and Transfer

of Rights dated January 29, 1993. The Promenade Trust now

holds Elvis’ rights, title and interest to all the identified

musical compositions. The Definitive Elvis contains excerpts

36a

Appendix C

constituting material portions of each of the identified

musical compositions. The portions of these works included

on The Definitive Elvis are exact reproductions; the

Defendants did not add anythi..g new or transformative to

the copyrighted works.

26. The Defendants Dante J. Pugliese, Passport

International Productions, Passport Entertainment, Inc.,

Passport Video and Passport International Productions, of

California, Inc. are not licensees of, and have never received

authorization from The Promenade Trust or EPE to

manufacture, produce, promote, advertise, distribute, display,

offer for sale or sell any of the musical compositions

for which The Promenade Trust holds an interest. Neither

The Promenade Trust nor EPE has received compensation

from Defendants for their use of material subject to the above

copyrights in The Definitive Elvis.

27. Part of EPE and The Promenade Trust’s business

consists of licensing the above copyrighted works as well as

other works. EPE and The Promenade Trust are both in the

market of licensing their copyrighted works, including the

above copyrighted works, to documentary film makers,

biographers, advertisers, movie makers, and television

producers to show small portions of the copyrighted works

in their own preductions.

28. In 2004, EPE is planning to release a video series

commemorating the anniversary of Elvis Presley’s first

performance. To that end, since 1998 EPE and the Promenade

Trust have not granted licenses of the Copyrighted Works to

documentary or biographical types of programs which would

37a

Appendix C

compete with EPE’s planned production. EPE’s market for

the licensing of the above Elvis copyrighted works operates

in the same competitive marketplace as The Definitive Elvis.

EPE’s planned documentary production also would compete

in the same marketplace as The Definitive Elvis.

29. EPE holds federal registrations for the marks

“ELVIS” and “ELVIS PRESLEY.”

30. On or about June 1, 2001, EPE became aware that

Defendants were in the initial stages of a production called

“The Definitive Elvis,” and that Defendants planned to use

Elvis’ publicity rights, name, and marks, as well as

copyrighted materials.

31. On or about June 20, 2001, Gary Hovey,

Vice-President, Entertainment and Music Publishing of EPE,

met with Defendant Pugliese. Pugliese told Mr. Hovey that

his production company had conducted interviews of various

people who knew or had met Elvis and that he was planning

to produce a series to commemorate the 25th anniversary of

Elvis’ August 1977 death. He told Mr. Hovey that he planned

to include excerpts from the interviews as well as video and

audio material from Elvis’ recordings, concerts, television

appearances, movies and other appearances. He planned to

call the series “The Definitive Elvis.” Pugliese asked Mr.

Hovey whether EPE would license its rights to the Elvis

intellectual properties owned by EPE. Mr. Hovey informed

Pugliese that EPE would not license any of its properties for

use in his proposed “The Definitive Elvis.” Mr. Hovey

explained that EPE was in the process of preparing its own

“definitive” anthology to commemorate the 50th anniversary

38a

Appendix C

of the beginning of Elvis Presley’s professional career in

1954, and did not want to undercut that project by

participating in another “definitive” production.

D. The Allen Trust Copyrighted Works

32. Plaintiff Jayne Meadows Allen is the widow of Steve

Allen and the surviving trustee of the Alien Family Revocable

Living Trust (the “Allen Trust’).

33. The Allen Trust is the holder of approximately 147

one hour programs of “The Steve Allen Show,” including

the 1956 episode featuring Elvis Presley, registered with

the United States Copyright Office pursuant to Certificate

No. PAu 1 C44 563. This registration includes the 1956

episode featuring Elvis Presley.

34. The Allen Trust is also the registered copyright

owner of the shorter, edited versions of approximately 100

episodes of “The Steve Allen Show”, registered with the

United States Copyright Office pursuant to Certificate of

Registration No. PA 571 415. Although each of the Allen

Trust copyrights initially were registered to Steve Allen, the

registrations were assigned to the Allen Trust in 1996.

35. Portions of 1956 episode of The Steve Allen Show

featuring Elvis Presley are copied and appear on The

Definitive Elvis. The portions of The Steve Allen Show

included on The Definitive Elvis are exact reproductions;

the Defendants did not add anything new or transformative

to the copyrighted works.

39a

Appendix C

36. The Allen Trust is engaged in the business of

licensing clips of The Steve Allen Show, including the clips

that were copied and used in The Definitive Elvis.

37. The Defendants Dante J. Pugliese, Passport

International Productions, Passport Entertainment, Inc.,

Passport Video and Passport International Productions, of

California, Inc. are not licensees of, and are not authorized

by the Allen Trust to manufacture, promote, advertise,

distribute, display, offer for sale or sell any portion of

The Sieve Allen Show incorporated into The Definitive Elvis

box set, nor have the Defendants paid any compensation

to The Allen Trust for their use of the copyrighted material.

E. Leiber & Stoller

38. Plaintiff’s Jerry Leiber and Mike Stoller (“L&S”)

have composed numerous musicial compositions, including

some performed by Elvis Presley. L&S’s business consists

in large part of licensing musical compositions for which

L&S owns copyrights, including the L&S cop ‘ghted works

below, which were played in The Definitive Elvis.

39. L&S are the holders of the copyrights to the

following musical compositions:

Appendix C

Copyrighted Copyright Renewal

Song Registration Registration

Number Number

“Bossa Nova, Eu 746 167 RE 473 378

Baby” Eu 180 434 RE 537 763

“Jailhouse Rock” Ep 112 749 RE 234 387

Eu 477 666 RE 234 406

“King Creole” Ep 120 744 RE 285 419

“Loving You” Eu 473 857 RE 255 169

Ep 108629 RE 255 173

“Girls, Girls, Ep 169 753 RE 473 389

Girls”

“Little Egypt” Eu 665 251 RE 418 893

Ep 153 524 RE 423 008

“(You’re So Eu 480 671 RE 248 691

Square) Baby, I Ep 112 883 RE 243 233

Don’t Care”

“Good Rockin’ Eu 128513 R 604413

Tonight”

“Do Wah Diddy” Eu 796 084 RE 585 084

Ep 193 467 RE 529 632

RE 569 560

40a

40. Portions of each of the above musical compositions

were played in The Definitive Elvis, effectively supplementing

the soundtrack of the production. The pertions of these works

4la

Appendix C

included on The Definitive Elvis are exact reproductions; the

Defendants did not add anything new or transformative to the

copyrighted works.

41. The Defendants Dante J. Pugliese, Passport

International Productions, Passport Entertainment, Inc.,

Passport Video and Passport International Productions, of

California, Inc. are not licensees of, and have never received

authorization from L&S to manufacture, produce, promote,

advertise, distribute, display, offer for sale or sell any of the

above musical compositions. L&S has not received

compensation from Defendants for their use of the L&S

copyrighted works in The Definitive Elvis.

F. Alfred Wertheimer

42. Plaintiff Alfred Wertheimer (“Wertheimer”)

compiled the photographs he took of Elvis Presley and put

them into a photograph collection entitled, “Elvis Presley

1956 and 1958,” which he then registered with the United

States Copyright Office pursuant to Certificate of Registration

No. VA 825-950.

43. Seventeen photographs from the copyrighted

collection “Elvis Presley 1956 and 1958” appear in The

Definitive Elvis. Some of the photographs appear multiple

times. Defendants did not add anything new or transformative

to the copyrighted works, but merely included images of the

copyrighted photographs throughout The Definitive Elvis.

44. Mr. Wertheimer assesses a licensing fee for the use

of any of the photographs in the copyrighted collection.

42a

Appendix C

45. The Defendants Dante J. Pugliese, Passport

International Productions, Passport Entertainment, Inc., Passport

Video and Passport International Productions, of California, Inc.

are not licensees of, and have never received authorization from

Mr. Wertheimer to manufacture, produce, promote, advertise,

distribute, display, offer for sale or sell any photographs from

“Elvis Presley 1956 and 1958.” Mr. Wertheimer did not receive

compensation from Defendants for their use of photographs in

The Definitive Elvis.

G. Laches

46. Based on the findings of fact set forth above, the Court

concludes that Plaintiffs did not unreasonably delay in bringing

this action or in seeking equitable relief.

CONCLUSIONS OF LAW

1. This court has jurisdiction pursuant to 28 U.S. §§ 1331

and 1338.

2. Apreliminary injunction should be granted if a plaintiff

can show either: (1) a combination of probable success on the

merits and the possibility of irreparable injury; or (2) that serious

questions are raised and the balance of hardships tips sharply in

plaintiff’s favor. Rodeo Collection, Ltd. v. West Seventh, 812

F.2d 1215 (9th Cir. 1987); Apple Computer, Inc. v. Formula

International, Inc., 725 F.2d 521, 523 (9th Cir. 1984).

These standards apply where a preliminary injunction 1s sought

as relief from alleged acts of trademark or copyright infringement

and unfair competition. See Apple Computer, Inc. v. Formula

International, Inc., 725 F.2d at 523; 4 R. Callman, The Law of

Unfair Competition, Trademarks and Monopolies, § 22.34 at

158 (4th ed. 1983 and Supp. 1990).

43a

Appendix C

3. Issuing a preliminary injunction in a copyright

infringement case such as this is not an unconstitutional prior

restraint of speech. A&M Records, Inc., v. Napster, Inc., 239

F.3d 1004 (9th Cir. 2001); Dr. Seuss Enters. v. Penguin Books

USA Inc., 109 F.3d 1394, 1403 (9th Cir. 1997).

4. To prove copyright infringement pursuant to

17 U.S.C. § 106, Plaintiffs must show that (i) they own

copyrights; (ii) the Defendants had “access” to the works

subject to copyright; and (iii) the copyrighted works and

Defendants’ work share “substantial similarity.” McCulloch

v. Albert E. Price, Inc., 823 F.2d 316, 318 (9th Cir. 1987);

Sid & Marty Krofft Television Productions, Inc. vy.

McDonald's Corp., 562 F.2d 1157, 1164 (9th Cir. 1977).

5. The certificates of registration and renewal of the

copyrights are prima facie evidence of the validity of the

§ 41-(c); Academy of Motion Picture Arts and Sciences v.

Creative House Promotions, Inc., 944 F.2d 1446, 1451

(9th Cir. 1991).

6. The Copyright Act grants copyright holders the

“exclusive nght” to control “distribution” and “reproduction”

of their copyrighted works as they deem fit. 17 U.S.C.

§§ 106(1), (3). Copyright owners thus have the exclusive

right under the Copyright Act to make their works available

to the public however they wish — including the right

arbitrarily to refuse to make their works available in a certain

way, as well as the right to hoard the works and refuse to

make them publicly available at all. Stewart v. Abend, 495

U.S. 207, 228-29 (1990).

44a

Appendix C

7. The unauthorized use of Plaintiffs copyrighted works

in The Definitive Elvis constitutes infringement of a

rights. 17 U.S.C. § 101, 106(5), 501; Schmidt v. Holy Cross

Cemetary, 840 F. Supp. 829 (D. Kan. 1993); Thomas v. Pansy

Ellen Products, Inc., 672 F. Supp. 237 (W.D.N.C. 1987).

8. Based on the findings of fact set forth above, the Court

concludes that Plaintiffs are likely to succeed on the merits

of their claims for copyright infringement.

9. Defendants’ use of Plaintiffs’ the copyrighted

materials in The Definitive Elvis is not fair use.

10. In determining the validity of the fair use defense,

courts balance the following non-exclusive factors set forth

in 17 U.S.C. § 107:

(1) the purpose and character of the use, including

whether such use is of a commercial nature or is

for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used

in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for

or value of the copyrighted work.

11. The Court concludes that it is unlikely that

Defendants’ reproduction and use of plaintiffs’ copyrighted

45a

Appendix C

materials in The Definitive Elvis is fair use because plaintiffs

will establish the purpose and the character of the use is

commercial and is not transformative; each of the copyrighted

works is inherently creative; Defendants have taken a substantial

portion of the copyrighted materials; and Defendants’ taking

will result in a substantially adverse impact on the potential

market for, or value of, the copyrighted materials. Los Angeles

News Service v. KCAL-Channel 9, 108 F.3d 1119 (9th Cir. 1997),

cert. denied, 522 U.S. 823 (1997); Los Angeles News Service v,

CBS Broadcasting, 2002 WL 3105154] (9th Cir. 2002); Harper

& Row Publishers, Inc. v. Nation Enterprises, 471 U.S. 539,

562 (1985); Los Angeles News Service vy. Reuters Television Int'l,

Lid., 149 F.3d 987, 994 (9th Cir, 1998), cert. denied, 525 U.S.

1141 (1999); Los Angeles News Service v Tullo, 973 F.2d 791,

798 (9th Cir. 1991); Campbell y. Acuff-Rose Music, Inc., 510

U.S. 569, 592 (1994).

12. Because the Court concludes that Plaintiffs are likely

to succeed on the merits of their claims of copyright

infringement, irreparable injury is presumed. Apple Computer,

Inc. v. Franklin Computer Corp., 714 F.2d 1240, 1254 (3d Cir.

1983), cert. dismissed, 464 U.S. 1033 (1984).

13. Here, based on the findings of fact set forth above, the

Court concludes that Plaintiffs did not unreasonably delay in

bringing this action and that their request for equitable relief is

not barred by the doctrine of laches. Sega Enterprises Ltd. vy.

Accolade, Inc., 785 F. Supp. 1392 (N.D.Cal.,1992); Hampton

v. Paramount Pictures Corp., 279 F.2d 100 (9th Cir. 1960);

Central Point Software, Inc. v. Global Software & Accessories,

880 F. Sup. 957 (E.D.N.Y. 1995); In Design v. Lauren Knitwear

Corp., 782 F. Supp. 824, 831 (S.D.N.Y. 1991).

46a

Appendix C

14. By reason of the foregoing, Plaintiffs have

established an entitlement to a preliminary injunction.

If any fact is a conclusion of law, it shall be deemed a

conclusion of law; if any conclusion of law is better construed

as a fact, it shall be deemed a fact.

ACCORDINGLY, IT IS ORDERED that Plaintiffs’

Application for Preliminary Injunction is Granted.

DATED: 11-15, 2002 s/ Ronald S.W. Lew

Judge Ronald S.W. Lew

United States District Judge

47a

APPENDIX D — ORDER GRANTING PRELIMINARY

INJUNCTION OF THE UNITED STATES DISTRICT

COURT FOR THE CENTRAL DISTRICT OF

CALIFORNIA DATED NOVEMBER 15, 2002

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

WESTERN DIVISION

CASE NO. 02-7042 RSWL (RZx)

ELVIS PRESLEY ENTERPRISES, INC., a Tennessee

corporation NATIONAL BANK OF COMMERCE, trustee of

“THE PROMENADE TRUST”; SOFA ENTERTAINMENT.

INC. a California corporation; JAYNE MEADOWS ALLEN,

trustee of the “ALLEN FAMILY REVOCABLE LIVING

TRUST’ JERRY LEIBER individually and dba JERRY LEIBER

MUSIC’ MIKE STOLLER individually and dba MIKE

STOLLER MUSIC JULIAN J. ABERBACH and ALFRED

WERTHEIMER, an individual,

Plaintiffs,

PASSPORT ENTERTAINMENT, a California corporation;

PASSPORT VIDEO a business of unknown form and origin;

PASSPORT INTERNATIONAL PRODUCTIONS, INC. a

California corporation; PASSPORT INTERNATIONAL

PRODUCTIONS, OF CALIFORNIA, INC., a California

corporation; DANTE PUGLIESE, an individual, and DOES

| through 100, inclusive,

Defendants.

48a

Appendix D

ORDER GRANTING PRELIMINARY INJUNCTION

The Application of Plaintiffs for an Order to Show Cause

re Preliminary Injunction and Impoundment came on for

hearing before this Court on October 21, 2002. All parties

appeared and were represented by counsel. The Court, having

considered all arguments made and all papers submitted, finds

that Plaintiffs have carried the burden of demonstrating that

they are entitled to the issuance of a preliminary injunction.

(Preliminary Injunction)

1. IT IS HEREBY ORDERED that, pending the final

disposition of this matter, Defendants Passport Video,

Passport International Productions, Inc., Passport

International Productions, of California, Inc., and Dante

Pugliese and each of their officers, agents, servants,

employees, successors and assigns, attorneys and all those

persons in active concert or participation with them who

receive actual notice of the order by personal service or

otherwise, be, and hereby are, PRELIMINARILY ENJOINED

from:

Manufacturing, copying, importing, displaying,

marketing, distributing, advertising, transferring,

circulating, offering for sale, or selling the product

cu isting of an eight video or eight disc set

entitled “25th Anniversary Elvis: The Definitive

Collection August 16, 1977 - August i6, 2002,”

otherwise entitled “The Definitive Elvis.”

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Appendix D

(Bond / Fees)

2. The above preliminary injunction is effective on

Plaintiffs’ filing of an undertaking in the form of a bond,

certified, cashiers or attorneys’ check or check drawn on

Plaintiffs’ bank account, or cash to the amount of three

hundred thousand dollars ($300,000.00) to secure payment

of such costs and damages not to exceed such sum as may be

suffered or sustained by any party who is found to be

wrongfully restrained hereby.

DATED: 11-15, 2002 s/ Ronald S.W. Lew

Judge Ronald S.W. Lew

United States District Judge

50a

APPENDIX E — ORDER OF THE UNITED STATES

COURT OF APPEALS FOR THE NINTH CIRCUIT

DENYING PETITION FOR REHEARING

FILED FEBRUARY 12, 2004

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

No. 02-57011

ELVIS PRESLEY ENTERPRISES, INC.,

a Tennessee corporation; et al.,

Plaintiffs - Appellees,

PASSPORT VIDEO,

a business of unknown form and origin; et al.,

Defendants - Appellants,

and,

DOES, 1 THROUGH 10, inclusive; et al.,

Defendants.

D.C. No. CV-02-7042-RSWL

Central District of California,

Los Angeles

ORDER

| eae:

Sla

Appendix E

Before: NOONAN, TALLMAN, and RAWLINSON, Circuit

Judges.

Judges Tallman and Rawlinson have voted to deny the

petition for panel rehearing and to deny the petition for

rehearing en banc. Judge Noonan has voted to grant the

petition for rehearing and recommends granting the petition

for rehearing en banc.

The full court has been advised of the petition for

rehearing en banc and no judge has requested a vote on

whether to rehear the matter en banc. Fed. R. App. P. 35.

The petition for panel rehearing and the petition for

rehearing en banc are denied.

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.