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IP/Entertainment Case Law Updates

Tresóna Multimedia, LLC v. Burbank High School Vocal Music Association

In copyright infringement action involving high school choirs that reportedly inspired television series Glee, Ninth Circuit affirms summary judgment in favor of choirs’ music director, holding that licensee of one copyright co-owner lacks standing to sue third-parties for infringement, and that choirs’ use of rearranged short song segments in transformative show piece is fair use.

Licensing company Tresóna Multimedia, LLC, sued Brett Carroll, the vocal music director at Burbank High School, the Burbank High School Vocal Music Association Boosters Club and several individual Boosters Club parents for copyright infringement. Tresóna claimed that the Burbank High School student show choirs failed to obtain licenses for their use of segments of four pieces of copyrighted sheet music in arranging show choir performances. The California district court granted summary judgment to the defendants, but denied their motion for attorneys’ fees. Both sides appealed to the Ninth Circuit.

Burbank High School’s music education department includes several nationally recognized competitive show choirs, which reportedly inspired the television series Glee. These choirs are supported financially in part by the Boosters Club, a registered nonprofit organization, which holds annual fundraisers to help cover the school choirs’ expenses. Brett Carroll, the school’s music director, commissioned a music arranger to create custom sheet music for two shows, Rainmaker and 80s Movie Montage, performed by one of the show choirs, In Sync. These shows included stanzas from several musical works, including “Magic,” a song originally performed by Olivia Newton-John in the musical fantasy film Xanadu, and “(I’ve Had) The Time of My Life” by Bill Medley and Jennifer Warnes. In Sync performed these shows on several occasions.

After In Sync’s performances of the two shows, Tresóna brought copyright infringement claims against the defendants, alleging infringement of its copyright interests in “Magic” and “(I’ve Had) The Time of My Life.” Tresóna also alleged that another performance by the choir at a fundraiser hosted by the Boosters Club, which incorporated segments of the songs “Hotel California” and “Don’t Phunk With My Heart,” violated its copyright interests in those songs. Tresóna alleged that it held the exclusive right to issue licenses for these four songs. Although Tresóna had been assigned the rights to “Magic” from the song’s sole owner, Tresóna’s rights to the other songs derived from less than all the co-owners of those songs.

The district court found that Tresóna lacked standing to sue for infringement of the three songs for which its rights originated from co-owners. For the claim based on the remaining song, “Magic,” the district court found that Carroll was entitled to qualified immunity and that the remaining defendants could not be held liable for direct or secondary copyright infringement. The district court then denied the defendants’ motion for attorneys’ fees, finding they had achieved only a minimal level of success on the merits.

On appeal, the Ninth Circuit affirmed the grant of summary judgment as to “(I’ve Had) The Time of My Life,” Hotel California,” and “Don’t Phunk With My Heart.” The court relied on Ninth Circuit precedent holding that when one copyright co-owner independently attempts to grant an exclusive license, the licensee does not have standing to sue alleged third-party infringers. The court noted that this rule is based on the principle that one joint owner’s assignment cannot bind the other joint owners or limit their rights without their consent. Tresóna argued that a later Ninth Circuit decision had abrogated that rule, but the court noted that the more recent case addressed rights shared by a sole owner and assignee rather than by co-owners of those rights. The court reaffirmed the rule that a co-owner of a copyright cannot unilaterally grant an exclusive license without the consent of all other co-owners.

As to the song “Magic,” the Ninth Circuit likewise affirmed the grant of summary judgment, but on fair use grounds rather than qualified immunity. The court chose to address the fair use rather than qualified immunity based on the limited applicability of the qualified immunity doctrine. Shows choirs and their arrangements, the court explained, are not limited to public schools, which, as opposed to private schools, may invoke the qualified immunity defense. The court also explained that fair use, unlike qualified immunity, serves as an important defense in copyright law. 

In conducting the fair use analysis, the court first noted that “teaching” is among the categories of uses identified by Congress as examples of non-infringing uses, and that Carroll used the song “Magic” in his capacity as a music teacher. The educational nature of the use, therefore, weighed in favor of fair use. 

With respect to the first fair use factor, the purpose and character of the use, the court held that the arrangement of segments from “Magic” and other musical works was for nonprofit educational purposes and was highly transformative—as it was used to tell a story very different from the use of “Magic” in the original Xanadu fantasy film—which weighed strongly in favor of a fair use finding. The sheet music for the choir show piece was distributed to the students at no charge, and the show piece used the segments from “Magic” and other works to tell an entirely different story, including by employing additional, new lyrics. As to the second factor, the nature of the copyrighted work, the court found that the creative nature of “Magic” weighed against a finding of fair use.

As to the third fair use factor, the amount and substantiality of the portion used, the court explained that the segment from “Magic” that was used comprised only 20 seconds of the four-minute and 22 second song. Furthermore, even though the segment included the song’s chorus, a qualitatively substantial portion, the court held that embedding that portion into a larger, transformative choir show piece that imbued it with new expression and meaning tilted the third factor in favor of fair use. 

Finally, on the fourth factor, the effect of the use on the potential market for the copyrighted work, the court reasoned that the short segment was not a substitute for the full song, and that it served a different function as part of a high school show choir’s nonprofit extracurricular activities. The court concluded that, overall, the educational, limited and transformative nature of the use rendered it non-infringing.

Turning to the defendants’ motion for attorneys’ fees, the Ninth Circuit reasoned that the fair use determination was sufficient on the merits, in combination with the defendants’ across-the-board victory, to qualify for an award of attorneys’ fees. The court also held that Tresóna’s arguments were objectively unreasonable, as it should have known that Ninth Circuit precedent precluded its claims as to three of the four songs at issue due to a lack of standing, and that the use of the fourth plainly constituted fair use. The court was also swayed to award attorneys’ fees to the defendants based on Tresóna’s litigation strategy, which involved suing a public school teacher, a nonprofit Boosters Club and other individual defendants, as well as repeatedly mischaracterizing its copyright interests in other songs by claiming to be the sole entity authorized to issue licenses. The Ninth Circuit panel remanded the case to the district court for calculation of the attorneys’ fees award.

Summary prepared by Tal Dickstein and Jordan Meddy