953 F.3d 638
9th Cir.2020Background
- Burbank High School’s competitive show choirs (student performers) used custom arrangements for school performances and fundraisers; the Boosters Club (a 501(c)(3)) raised funds by ticket and program ad sales to support the choirs.
- Brett Carroll, the school music director, commissioned arranger Josh Greene to create two show arrangements: “Rainmaker” (≈18 min., includes a ~20-second, rearranged chorus of “Magic”) and “80’s Movie Montage” (≈20 min., includes ~16 seconds of “(I’ve Had) The Time of My Life”).
- Tresóna Multimedia, a licensing company, sued Carroll, the Boosters Club, and parent volunteers for copyright infringement, alleging exclusive licensing rights in 79 songs (including "Magic," "Time of My Life," "Hotel California," and "Don't Phunk With My Heart").
- Tresóna’s documentary chain showed it held only partial or nonexclusive interests in three of the four disputed songs and did not own public performance rights to "Magic." The district court granted summary judgment to defendants on standing for three songs and on qualified immunity for "Magic." Defendants also asserted fair use.
- The Ninth Circuit held Tresóna lacked standing for three songs (claims based on licenses from individual co-owners without others’ consent) and that the use of “Magic” in “Rainmaker” was fair use (transformative, nonprofit educational use; limited portion; no market substitution). The court affirmed summary judgment for defendants and reversed the district court’s denial of attorneys’ fees, remanding for calculation.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Standing to sue for works where Tresóna had licenses from individual co-owners | Tresóna claimed it had exclusive copyright use licenses and thus statutory standing to sue under 17 U.S.C. § 501 | Tresóna only held nonexclusive/partial interests from individual co-owners; a license from one co-owner cannot give standing to sue absent other co-owners’ consent | Tresóna lacked standing for three songs because its rights were nonexclusive transfers from individual co-owners (Sybersound/Corbello controlling) |
| Fair use for use of “Magic” in “Rainmaker” | Tresóna argued unauthorized use of a qualitatively significant chorus (central element) was infringement | Defendants argued nonprofit educational, transformative use in a new theatrical choir piece; limited portion; no market substitution | Use of “Magic” was fair use: transformative, educational purpose, limited portion, and no likely market harm |
| Effect of Minden Pictures on standing precedent (Sybersound/Corbello) | Tresóna: Minden Pictures overruled or undermined Sybersound/Corbello, supporting Tresóna’s standing | Defendants: Minden did not address the co-owner unilateral license issue and did not overrule prior panel precedent | Minden did not overrule Sybersound/Corbello; panel precedent requires applying Sybersound/Corbello to deny standing |
| Award of attorneys’ fees under 17 U.S.C. § 505 | Tresóna implied defendants were only minimally successful and fees were not warranted | Defendants argued full success on the merits and objectively unreasonable claims/misconduct by Tresóna merited fees | Court reversed the district court: defendants entitled to attorneys’ fees (defendants prevailed on central fair-use defense; Tresóna’s claims were objectively unreasonable and litigative conduct supported deterrence) |
Key Cases Cited
- Corbello v. DeVito, 777 F.3d 1058 (9th Cir. 2015) (a co-owner cannot unilaterally grant exclusive rights that bind other co-owners; standing depends on the nature of the transferred interest)
- Sybersound Records, Inc. v. UAV Corp., 517 F.3d 1137 (9th Cir. 2008) (license from one co-owner insufficient to confer standing to sue third-party infringers)
- Minden Pictures, Inc. v. John Wiley & Sons, Inc., 795 F.3d 997 (9th Cir. 2015) (licensing-agent exclusive rights vis-à-vis the world can confer standing; did not decide co-owner unilateral-license issue)
- Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994) (fair use framework; transformative use central to first factor)
- Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417 (1984) (fair use as an equitable rule of reason)
- Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994) (prevailing party may be awarded attorneys’ fees under § 505; fee awards aim to encourage meritorious defenses)
- Kirtsaeng v. John Wiley & Sons, Inc., 136 S. Ct. 1979 (2016) (considerations guiding attorneys’ fees under copyright law)
- SOFA Entm’t, Inc. v. Dodger Prods., 709 F.3d 1273 (9th Cir. 2013) (encouraging defendants to litigate meritorious fair use defenses; fees appropriate where policies of Copyright Act are furthered)