District court holds that director of school show choir that inspired TV series “Glee” is protected by qualified immunity in copyright suit over unlicensed performance of songs.
Tresona Multimedia sued Brett Carroll, the music director at Burbank High School and leader of the show choir that inspired Fox’s hit show “Glee,” as well as the Burbank High School Vocal Music Association and its members, for copyright infringement. Tresona alleged that Carroll’s show choir “In Sync” and a third-party show choir performed songs controlled by Tresona without obtaining the necessary arrangement, synchronization and grand rights licenses. The four songs at issue in the suit were “Magic,” “(I’ve Had) the Time of My Life,” “Don’t Phunk With My Heart” and “Hotel California.”
Defendants challenged Tresona’s standing to bring its copyright infringement suit, arguing that Tresona’s rights as licensee were derived from less than 100 percent ownership of the songs’ copyrights. The court agreed with respect to three of the songs – “(I’ve Had) the Time of My Life,” “Don’t Phunk With My Heart” and “Hotel California” – relying on Ninth Circuit precedent holding that a license conferred by one of many co-owners is a nonexclusive license that is insufficient to confer standing to sue for copyright infringement.
Carroll separately argued that as a public school teacher and governmental employee, he is entitled to qualified immunity from Tresona’s copyright claim. The court agreed, holding that the doctrine of qualified immunity applies to claims of copyright infringement despite there being “no binding authority which applies the doctrine of qualified immunity to copyright law.” Reviewing other authority, the court explained that qualified immunity will protect governmental officials where the defendant acts in his capacity as a public official, and either the rights that were allegedly violated were not clearly established at the time or the conduct was objectively reasonable.
Applying these factors, the court first found that Carroll acted in his capacity as a public school teacher in connection with the alleged infringing activity, rejecting Tresona’s argument that Carroll also acted in his capacity as the director of a school “booster club” that was registered as a nonprofit distinct from the school. The court further held that Carroll did not violate Tresona’s clearly established rights. While the copyright laws in general were clearly established – including the need to obtain licenses to create a derivative work, to perform a musical work in a dramatic fashion and to distribute recordings of the work – the court held that the “contours” of these rights were not sufficiently clear so that a reasonable official would understand that the conduct violated plaintiff’s rights. The court noted that “most choir directors do not, in fact, get copyright licenses for their works,” and relied on Tresona’s inability to cite any legal authority specific to the performance of custom choral arrangements by school choirs. Finally, the district court found Carroll’s actions to be objectively reasonable in light of his defense of fair use. While withholding opinion on the ultimate merits of the defense, the district court held it was reasonable for Carroll to believe that his fair use defense would apply because the Copyright Act specifically identifies use for teaching purposes as fair use. Accordingly, the court granted summary judgment to Carroll, dismissing him from the case.
The claim against the other defendants remains as to the song “Magic.” The court rejected defendants’ statute of limitations argument with respect to this song, relying on the Ninth Circuit’s application of the “discovery rule” in copyright infringement cases. While it was undisputed that defendants last performed the song outside the three-year statute of limitations period, the court denied summary judgment because there were disputed issues of fact regarding when Tresona should have known of the infringements.
Summary prepared by Wook Hwang and Kyle Petersen