UPDATE: There is a one hour videoconference Friday, April 3rd at 3:30pm Eastern explaining this in more detail and what it means for your music/vocal programs. CLICK HERE TO RESERVE YOUR SEAT.
The Burbank High School show choir, which was the basis for the television series Glee, has been involved in a long running copyright litigation battle waged by Tresona Multimedia, LLC (“Tresona”). A significant decision was published earlier today by the Ninth Circuit Court of Appeals, which is embedded below. This is a fact intensive post, so please read closely.
Summary: Tresona is a music licensing company. Burbank (Ca.) High School has several show choirs. In 2017, Tresona filed a copyright infringement lawsuit against Brett Carroll, the Burbank HS choir director, the Burbank HS Vocal Music Association Boosters Club, several Booster Club parents. Why the plaintiff chose to name the individuals, particularly the Booster Club parents, is a mystery.
All of the facts that follow are integral to the result that the Court reached: The performers are Burbank High School students. Because the costs of the ensemble are not covered by the School District’s budget, the Boosters Club (a 501(c)(3) tax exempt organization) holds several fundraising concerts. One of these is an annual show choir competition. The Boosters sell tickets and advertisements in the programs for these events.
During one particular such fundraiser, one of the Burbank HS choirs performed a two minute excerpt of “Magic”, by Olivia Newtown-John. Burbank’s performance of “Magic” was contained in a medley of other songs. Similarly, Burbank HS performed a sixteen second excerpt of “(I’ve Had) the Time of My Life” by Bill Medley and Jennifer Warner, which runs four minutes and twenty two seconds in total.
For the educators and show presenters out there, please note that in this litigation, Tresona also alleged that the Jon Borroughs High School show choir, who performed at a concert hosted by Burbank High School, also violated Tresona’s copyright interests in the songs “Hotel California” by the Eagles and “Don’t Phunk With My Heart” by the Black Eyed Peas. However, from the court record it does not appear that Jon Borroughs High School was sued. You read that right: Tresona sued the Burbank High School Defendants for the performance of another school.
Key Concept: Many of these songs were co-written by multiple songwriters, each who own a percentage of the rights to the songs. This is true at least for “Hotel California” and “Don’t Phunk With My Heart.” We will come back to this shortly.
Key Allegation: Tresona claims that it has exclusive rights to these songs. In order for this to be true, Tresona would have to have contractual licensing rights with ALL of the songwriters. The Court goes out of its way in a footnote to point out that:
Although Tresóna claimed exclusive rights in its complaint to 79 songs used by the show choirs, Tresóna did not allege copyright infringement as to the remaining 75 songs. Nor did it produce any evidence in the course of the litigation to support its claim of exclusive rights in any of the remaining 75 songs. Opinion at 9, n.1
Key Concept: COPYRIGHTS ARE DIVISIBLE. Fractional copyright interests really matter when it comes to whether a party has standing to sue. The court noted: “[i]n the case of joint ownership of exclusive rights in copyright, for example, “when one co-owner independently attempts to grant an exclusive license of a particular copyright interest, that licensee . . . does not have standing to sue alleged third-party infringers.” Id. (citing Sybersound Records, Inc. v. UAV Corp., 517 F.3d 1137, 1146 (9th Cir. 2008))(emphasis added).
BOOM. Tresona obtained its copyright interests in the songs “(I’ve Had) The Time of My Life,” “Hotel California,” and “Don’t Phunk With My Heart,” as a license from some of the individual co-owners of those interests without the consent of the other co-owners. Therefore, Tresona did not have exclusive rights to the songs, therefore, Tresona lacks standing to sue and their claims as to three of the four songs identified in the complaint is dismissed.
For educators reading this, the concept of legal standing to sue is a lengthy topic unto itself. Suffice it so say, once a Court determines that the plaintiff lacks standing to sue, the case is over. No soup for you.
Key Concept: FAIR USE. With respect to the fourth song, “Magic”, the Court found that the Fair Use Doctrine protected the Defendants. Here is a very quick primer on Fair Use. Section 107 of the Copyright Act provides that:
“the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright.”
The key facts that the Court identified in its Fair Use analysis were that Brett Carroll’s use of the musical work was done in his capacity as a teach in the music education program at Burbank High School. The court also noted that a portion of the fundraising went to the nonprofit Boosters Club to support other aspects of the music education program and the work of the show choir. The Court continued “This use was not of a traditional commercial nature, but rather for the nonprofit education of the students in the music program.”
Armed with those two facts, the Court then applied the facts of the case to the four factors listed in Section 107 of Copyright Act to be considered in determining whether an unauthorized (i.e unlicensed) use constitutes infringement: (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. Copyright Act, § 107.
ENCORE: The Court awards the defendants their attorneys fees. This following passage from the Court’s opinion speaks volumes. It is lengthy, but worth reading every sentence if you are a music educator:
Tresóna did more than simply pursue an aggressive litigation strategy. It sued a public school teacher, a not-for- profit Boosters Club, and parent volunteers. Both during litigation, and in pre-litigation communications with Carroll, Tresóna repeatedly mischaracterized its copyright interests in the songs at issue by claiming to be the sole entity empowered to issue licenses. In light of Tresóna’s minimal and belatedly produced evidence supporting its claimed chain-of-title, these communications appear specifically designed to frighten Carroll and the Boosters Club into purchasing licenses from Tresóna, rather than to legitimately enforce its limited licensing interests or those of the true copyright owners. Indeed, Tresóna’s initial complaint alleged exclusive rights in 79 songs used by the Burbank show choirs. And it was not until after briefing on Carroll’s summary judgment motion was complete that Tresóna belatedly produced any evidence of its chain of title, which demonstrated its claimed interests were almost entirely unsubstantiated. None of these actions furthers the purposes of the Copyright Act. SOFA Entm’t, 709 F.3d at 1280–81.
Courts have a legitimate interest in deterring the type of litigation conduct in which Tresóna engaged, and in compensating those who have been harmed by such conduct. Although the district court noted that it “[did] not believe that [Tresóna] will groundlessly reassert these claims,” the basis for that finding is unclear. Tresóna groundlessly asserted at least three claims of infringement in this very case, while simultaneously representing that it could have brought many more such claims. And while, after almost four years of litigation, Tresóna turned out to have standing as to the fourth remaining claim of infringement, it lost both in the district court and on appeal on two independent legal theories. As much of this litigation was avoidable from the beginning based on settled law when Tresóna filed its complaint, awarding attorneys’ fees to Defendants appropriately serves the interest in deterrence. See Kirtsaeng, 136 S. Ct. at 1987 (explaining that awarding fees encourages “[t]he copyright holder with no reasonable infringement claim . . . not to bring suit in the first instance”).
Awarding Defendants their attorneys’ fees insures that they are properly compensated for defending against overreaching claims of copyright infringement and pressing a defense that benefits those educating our youth. An award of attorneys’ fees here assures that “an overzealous monopolist [cannot] use his copyright to stamp out the very creativity that the [Copyright] Act seeks to ignite,” SOFA Entm’t, 709 F.3d at 1278, allowing for greater breathing room for classroom educators and those involved in similar educational extracurricular activities.
Opinion 29-31.
Tresona Multimedia, LLC v. ... by Bryan Tuk on Scribd