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

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URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386020_1671%3A2

## Record

- **Collection:** Supreme Court brief
- **Document type:** Appendix
- **Published:** January 1, 2004
- **Citation:** 542 U.S. 921

## Text

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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.

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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.

|

A

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

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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.

B

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

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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

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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.

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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.

I]

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.

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Appendix A

III

A

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).

B

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).

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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.

IV

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
copyright infringement claim, itreparable harm is presumed.
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

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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).

A

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...

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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.)).

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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.

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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.

B

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
copyright protection. See Sony Corp. v. Universal City
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.

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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.

c

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).

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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.

D

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.

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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.

V

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,
v.

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.

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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
copyright is to forget the purpose of copyright law.
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,
V.

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
Copyright Office pursuant to Certificate of Registration No.

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
copyright and the plaintiffs’ ownership of them. See 17 U.S.C.
§ 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
copyright owners’ distribution, reproduction, and display
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,
V.

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.”

49a
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,
v.

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.

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386020_1671%3A2. Public record. Not legal advice.