Case Information
*3 WARDLAW, Circuit Judge:
In this copyright infringement action against 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, Tresóna Multimedia, LLC claims that the Burbank High School student show choirs failed to obtain licenses for their use of copyrighted sheet music in arranging a show choir performance. We conclude that Tresóna lacks standing to *4 sue as to three of the four musical works at issue, and that the defense of fair use renders the use of the fourth noninfringing. We therefore affirm the district court’s grant of summary judgment in favor of Defendants, but reverse its denial of attorneys’ fees to Carroll and the Boosters Club. I. FACTUAL AND PROCEDURAL BACKGROUND
A. The Burbank High School Performances
Giving Rise to this Suit
Burbank High School’s music education program includes instructional classes and five competitive show choirs. The competitive show choirs—Out Of The Blue, Sapphire, Impressions, Sound Dogs, and In Sync—are “nationally recognized as top competitors in their respective divisions,” and reportedly inspired the television series “Glee.” To participate in the show choirs, students “must be enrolled in one of the four music classes offered [by Burbank High School] during the instructional day,” and must also make financial contributions to defray expenses, including those for costume rentals, competition entry fees, transportation, choreographers, and professional music arrangers.
Because student contributions do not cover the full costs of the competitive show choirs, and many students at Burbank High School cannot afford to make any financial contributions, the Boosters Club, a registered 501(c)(3) non- profit organization, holds several annual fundraisers at Burbank High School to help cover the show choirs’ expenses. These annual fundraisers include the “Burbank Blast,” a show choir competition that features performances by 40 show choirs, as well as the spring “Pop” show, during which the Burbank High School competitive show choirs perform their competition sets. To generate revenue from these events, the Boosters Club sells entry tickets , as well as advertisements in the event programs. T RESÓNA M ULTIMEDIA V . B URBANK H IGH S CH . V OCAL M USIC A SS ’ N
Brett Carroll is the music director at Burbank High School, where he teaches an instructional day class and directs the show choirs. Carroll also acts as a “teacher liaison/coach” to the Boosters Club. In this capacity, Carroll decides how the funds raised by the Boosters Club are spent and selects the show choirs’ choreographers, arrangers, and accompanists. Carroll also decides, with input from parents, which competitions the show choirs will attend during the school year.
Carroll commissioned music arranger Josh Greene, who is not a party to this action, to create custom sheet music for two shows: “Rainmaker” and “80’s Movie Montage,” performed by the group In Sync. “Rainmaker” is an approximately eighteen-minute performance of stanzas from many musical works, including a rearranged segment of “Magic,” a song originally performed by Olivia Newton- John. The “Magic” segment used by In Sync to close out the last two minutes of “Rainmaker” includes a rearranged chorus and small segments from another verse of the song. “80’s Movie Montage” is an approximately twenty-minute performance, and incorporates a segment of the song “(I’ve Had) The Time of My Life” by Bill Medley and Jennifer Warnes. That segment is approximately sixteen seconds of the song’s chorus, out of the song’s four-minute and twenty- two-second runtime, and is used only once in “80’s Move Montage” to transition between other songs. Each show also incorporates small segments of several other musical works, none of which is at issue in this case. In Sync performed these shows on several occasions, including at the Burbank Blast fundraiser and during several student competitions.
After In Sync’s performances of “Rainmaker” and “80’s Movie Montage,” Tresóna, an Arizona-based licensing company, brought copyright infringement claims against Carroll, the Boosters Club, and parent members of the Boosters Club, alleging infringement of Tresóna’s copyright interests in “Magic” and “(I’ve Had) The Time of My Life.” Tresóna also alleged that performances by the Jon Burroughs High School show choirs at the Burbank Blast, 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 was “the only authorized issuer in the United States and Canada for the . . . *6 infringed songs,” and that Carroll, the Boosters Club, and the parents’ use of the songs without obtaining a “custom arrangement license, grand right license, synchronization license, or mechanical license” for them infringed its copyright interests under 17 U.S.C. § 501.
B. Tresóna’s Copyright Interests Tresóna acquired its copyright interests in the songs through a series of assignments of those rights. PEN Music Group (PEN), which is not a party to this action, had “grant[ed] to Tresóna the exclusive, non-transferable right . . . to (i) issue Copyright Use Licenses” for “Magic,” “(I’ve Had) The Time of My Life,” and “Hotel California.” The relevant contract defines “Copyright Use Licenses” as “Synchronization Licenses, Custom Arrangement Licenses, Grand Rights Licenses, [and] Dramatic Rights Licenses[.]”
PEN, in turn, had been assigned its rights to “Magic” by John Farrar Music (BMI). The contract between PEN and John Farrar Music (BMI) states that PEN “shall solely own each and all of [John Farrar Music (BMI)’s] interest in the musical compositions to the extent that they are written, composed, co-written or co-composed by John Farrar.” John Farrar composed the words and music to “Magic,” and John Farrar Music is the sole copyright claimant of “Magic,” according to the Copyright Office’s online public catalog of registration. Despite this chain of title, however, it is undisputed that Tresóna does not own the public performance rights to “Magic”; rather, John Farrar Music (BMI) has retained those rights, as to which it is the sole owner.
Tresóna failed to provide evidence of its chain of title to “Hotel California.” It is undisputed, however, that PEN controlled only co-owner Don Felder’s interest in “Hotel California,” the rights to which are jointly owned, and only a 25 percent interest in “(I’ve Had) The Time of My Life.” Accordingly, neither PEN nor Tresóna is the sole copyright owner of its purported interests in either song.
As for “Don’t Phunk With My Heart,” Tresóna was assigned interests from a separate music publisher, The Royalty Network, which is also not a party to this action. The contract between The Royalty Network and Tresóna provides that The Royalty Network “grants to Tresóna the exclusive, non-transferable right . . . to . . . issue Copyright Use Licenses” for “Don’t Phunk With My Heart.” However, the record evidence shows that “The Royalty Network *7 controls only Kalyanji [Anandji] and Indivar Anandji’s interest[s] in ‘Don’t Phunk With My Heart,’” a work that is jointly owned with six other entities. Therefore, neither The Royalty Network nor Tresóna is the sole copyright owner of its purported interests in “Don’t Phunk With My Heart.”
C. District Court Proceedings
Despite the minimal evidence of Tresóna’s claim to exclusive rights in these four musical works, Tresóna brought this action against Carroll, the Boosters Club, and the parents, claiming it held exclusive rights in 79 songs, including “Magic,” “(I’ve Had) The Time of My Life,” “Hotel California,” and “Don’t Phunk With My Heart.” [1] Carroll, the Boosters Club, the parents, and Tresóna cross- moved for summary judgment. The district court granted in part Carroll’s motion for summary judgment, holding that Tresóna lacked standing to sue under the Copyright Act for infringement of the songs “(I’ve Had) The Time of My Life,” “Hotel California,” and “Don’t Phunk With My Heart,” because Tresóna held only non-exclusive rights to these works. For Tresóna’s claims based on the song “Magic,” the district court concluded that Carroll was entitled to qualified immunity from suit, and that the Boosters Club and Boosters Club parents could not be held liable for direct or secondary copyright infringement.
After successfully defending against Tresóna’s claims on summary judgment, Carroll and the Boosters Club moved to recover their attorneys’ fees under 17 U.S.C. § 505. The district court denied the motions, concluding that Carroll and the Boosters Club had achieved only a minimal level of success on the merits, and that an award of attorneys’ fees would not otherwise further the purposes of the Copyright Act.
Tresóna timely appeals the district court’s summary judgment orders. Carroll and the Boosters Club appeal the denial of their motions for attorneys’ fees.
[1] 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. T RESÓNA M ULTIMEDIA V . B URBANK H IGH S CH . V OCAL M USIC A SS ’ N
II. JURISDICTION AND STANDARD OF REVIEW
We have jurisdiction under 28 U.S.C. § 1291.
We review a district court’s grant of summary judgment
de novo.
L.A. Printex Indus., Inc. v. Aeropostale, Inc.
,
We review the district court’s denial of attorneys’ fees
under the Copyright Act for an abuse of discretion.
Shame
On You Prods., Inc. v. Banks
,
III. STANDING
The district court correctly granted summary judgment on Tresóna’s claims of infringement of its rights in the songs “(I’ve Had) The Time of My Life,” “Hotel California,” and “Don’t Phunk With My Heart” for lack of standing to sue under 17 U.S.C. § 501(b).
Under the Copyright Act of 1976, only “[t]he legal or
beneficial owner of an exclusive right under a copyright is
entitled . . . to institute an action for any infringement of that
particular right committed while he or she is the owner of
it.”
Id.
;
see also Silvers v. Sony Pictures Entm’t, Inc.
402 F.3d 881, 885 (9th Cir. 2005) (en banc). Although
*9
“copyrights are divisible,” and can be freely transferred,
Corbello v. DeVito
,
After all, one co-owner, acting independently, “may not limit the other co- owners’ independent rights to exploit the copyright.” . . . Such a conclusion stems from the self-evident principle that a joint-owner cannot transfer more than he himself holds; thus, an assignment or exclusive license from one joint-owner to a third party cannot bind the other joint-owners or limit their rights in the copyright without their consent. In other words, the third party’s right is “exclusive” as to the assigning or licensing co-owner, but not as to the other co-owners and their assignees or licensees. As such, a third-party assignee or licensee lacks standing to challenge the attempted assignments or licenses of other copyright owners.
Id.
(citing
Sybersound
,
Of course, even if
Minden Pictures
purported to overrule
Sybersound
and
Corbello
, it could not do so, for “[o]nce a
panel resolves an issue in a precedential opinion, the matter
is deemed resolved, unless overruled by the court itself
sitting en banc, or by the Supreme Court.”
Hart v.
Massanari
,
But Minden Picture s did not purport to overrule Sybersound or Corbello . It did not even address the issue Corbello , 777 F.3d at 1066. We made clear that a co-owner of a copyright is free to transfer that ownership interest to another, as long as the transfer was only of “exclusive copyright interests that [the co-owner itself] possesses.” Id.
presented in both cases: whether a co-owner of a copyright interest can unilaterally grant an exclusive license to that interest to a third party. In Minden Pictures , “a stock photography company that serves as [a] licensing agent for dozens of photographers” granted rights to third parties to use copyrighted photographs. 795 F.3d at 999–1000. Although Minden Pictures had the exclusive right to act as their licensing agent, the photographers had retained the rights both to “use the photographs themselves and to license them to others.” Id. at 999. Minden Pictures sued its licensee, a textbook publisher, for copyright infringement, claiming that the publisher exceeded the terms of its licensed use of the photographic works. Id. at 1000–01. The question before us was whether Minden Pictures had statutory standing to sue the publisher. Despite the fact that Minden Pictures had received licenses from the sole owners of the copyright interests, rather than from co-owners of those interests, the publisher argued that Minden Pictures did not receive exclusive licenses from the photographers, as the photographers retained the right to issue licenses themselves. Id. at 1004. But, as we pointed out, Minden Pictures had received an exclusive right to act as the licensing agent for each of the individual photographers, which was a grant of rights vis-à-vis the world. Even if that exclusive right was shared with the photographers, Minden Pictures would still have standing to sue over infringement *11 of its license. As we there reasoned:
The reason the [Copyright] Act prevents a holder of a “nonexclusive license” to use a copyrighted photograph from bringing an infringement action against others who use the same photograph is that such a licensee has no more than “a privilege that protects him from a claim of infringement by the owner” of the copyright. That is, because such a licensee has been granted rights only vis-à-vis the licensor, not vis-à-vis the world, he or she has no legal right to exclude others from using the copyrighted work, and thus no standing to bring an infringement suit. But when a licensee has been granted rights vis- à-vis the world—even if he or she shares those rights with another party, including the owner of the copyright—we see nothing in the Copyright Act that requires us to deem such an arrangement a mere “nonexclusive license” insufficient to give rise to standing to sue.
Id. (citations omitted).
We accordingly saw “no reason why, having appointed Minden [Pictures] to manage the commercial use of their photographs in the first instance as their licensing agent, the photographers should not also be able to rely on Minden [Pictures] to protect and defend the licenses that it has issued on their behalf.” Id. at 1005. In other words, even if an exclusive right is shared between two entities, a sole owner can promise exclusivity to just those two, while a co-owner cannot make that same promise unilaterally. Because the issue of whether a co-owner of a copyright interest can unilaterally grant an exclusive license to that interest was not present in Minden Pictures , Tresóna’s reliance on Minden Pictures is misplaced.
The district court correctly held that Tresóna lacked standing under 17 U.S.C. § 501(b) to bring copyright infringement claims based on the songs “(I’ve Had) The Time of My Life,” “Hotel California,” and “Don’t Phunk
T RESÓNA M ULTIMEDIA V . B URBANK H IGH S CH . V OCAL M USIC A SS ’ N With My Heart,” as Tresóna received its interests in those songs from individual co-owners of copyright, without the consent of the other co-owners, and therefore held only non- exclusive licenses in those works.
IV. FAIR USE
We affirm the district court’s grant of summary judgment against Tresóna on its claim of infringement of “Magic,” but not on the ground of qualified immunity. From the outset of this litigation, Carroll asserted the defense of fair use, and on cross-motions for summary judgment Tresóna sought a ruling that there was no fair use. [3] The district court, however, ruled in favor of Carroll on qualified immunity grounds, holding that “since teaching is explicitly listed as fair use [in the Copyright Act], a public school teacher acting in his teaching capacity would be reasonable in believing the fair use defense applies.” It thus elided the question of whether Carroll’s use of a rearranged segment of a copyrighted musical work in the arranged show music was an infringement. But that question begs to be answered, for show choirs and the arrangements they perform are not limited to public schools where the defense of qualified immunity might be invoked by public school teachers. And the defense of fair use, if applicable, should cover “teaching” whether in a private or public setting. Moreover, the fair use defense renders a use noninfringing, and has long served as an important defense in copyright law, unlike the qualified immunity defense which has never been used in our circuit [3] The Booster’s Club also asserted the defense of fair use. or by the Supreme Court to shield a public official from a copyright infringement action. [4]
First recognized by United States courts in 1841,
see
Folsom v. Marsh
,
must be free to adapt the [fair use] doctrine to particular situations on a case-by-case basis.” Id.
In section 107, Congress first provides examples of traditionally noninfringing uses of copyright:
[n]otwithstanding the provisions of sections 106 and 106A, 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.
Congress then lists four nonexclusive “factors to be considered” in determining whether an unauthorized use is *14 infringing:
(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.
Id.
We first look to whether the allegedly infringing use falls
into the categories of uses given by Congress as examples of
noninfringing uses.
See Leadsinger, Inc. v. BMG Music
Publ’g
, 512 F.3d 522, 530 (9th Cir. 2008); 4 Nimmer
§ 13.05[A][1][a] (explaining the importance of the preamble
examples to the fair use analysis). We then turn to the
nonexclusive list of factors, looking not only to the statutory
language of section 107 but also to prior judicial decisions
addressing the contours of fair use.
See Campbell v. Acuff
Rose Music Inc.
,
Carroll’s use of the musical work was in his capacity as a teacher in the music education program at Burbank High School. Such an educational use weighs in favor of fair use. But that does not end our inquiry because the preamble’s “text employs the terms ‘including’ and ‘such as’ . . . to indicate the ‘illustrative and not limitative’ function of the examples given.” Campbell , 510 U.S. at 577 (quoting 17 U.S.C. § 101). We next analyze and weigh the listed factors.
A. The Purpose and Character of the Use, Including
Whether Such Use Is of a Commercial Nature or Is for
Nonprofit Educational Purposes
We first look to “the purpose and character of the use.”
17 U.S.C. § 107(1). Josh Greene’s arrangement of segments
from several musical works, including the chorus from
“Magic,” was for “nonprofit educational purposes,”
id.
, and
the resulting work was transformative. Greene’s new
arrangement became an eighteen-minute-long competitive
choir show, “Rainmaker,” that included the rearranged
chorus of “Magic.” It was performed by students as part of
Burbank’s music education program. Part of the proceeds
went to the nonprofit Boosters Club to support other aspects
of the music education program and the work of the show
choir. This use was not of a traditional commercial nature,
but rather for the nonprofit education of the students in the
music program.
[5]
Carroll distributed the sheet music
arranged by Greene at no charge to the students.
See Marcus
v. Rowley
,
cake decorating booklet and distribution to students at no charge).
However, “the mere fact that a use is educational and not
for profit does not insulate it from a finding of
infringement.”
Campbell
, 510 U.S. at 584;
Marcus
,
“Magic” was an original song in the 1980 musical movie fantasy “Xanadu.” Olivia Newton-John played Kira, a muse descended from Mount Olympus, who encourages and inspires the male protagonist, Sonny, to pursue his dream of opening a fantastical nightclub, Xanadu. “Magic” plays during their first encounter, reprises first when Kira must return to Olympus, and then again when Kira seemingly reappears as a Xanadu waitress. It is thus used as a vehicle of inspiration for pursuit of one’s dreams and love.
“Rainmaker” is an entirely different theatrical work—a show piece for the high school choir that reworks pieces from multiple songs to tell a story with new expressive content and meaning. “Rainmaker” tells the story of a local Dust Bowl-era community ravaged by drought. After a stranger visits the town, he promises rain in return for faith in his magical powers and performs several miracles to encourage the townspeople to believe in him. When the town’s last holdout, the Sheriff, drops to his knees to proclaim his faith, lifesaving rain finally arrives. The townspeople celebrate the newfound rain, singing the rearranged chorus of “Magic,” including additional, new lyrics.
This rearrangement of “Magic” along with other musical
works was thus transformative. Greene did not “simply
omit[] portions” of the original work while retaining the
“same intrinsic entertainment value.”
Disney Enters., Inc. v.
VidAngel, Inc.
,
The “purpose and character” factor of the use of “Magic” weighs strongly in favor of a finding of fair use.
B. The Nature of the Copyrighted Work
In analyzing the second factor, “the nature of the
copyrighted work,” we examine “whether the work is
informational or creative.”
Worldwide Church of God v.
Phila. Church of God, Inc
.,
C. The Amount and Substantiality of the Portion Used in
Relation to the Copyrighted Work as a Whole
*18
The third factor examines whether “the amount and
substantiality of the portion used in relation to the
copyrighted work as a whole . . . [is] reasonable in relation
to the purpose of the copying.”
Campbell
,
Here, the segment taken from the song “Magic” is
approximately twenty seconds of a four-minute and twenty-
two second song. The portion that was used, however,
incorporates the song’s principle chorus, which is the central
element of the musical work, and is repeated more than once.
Thus, the copied portion is undoubtedly a qualitatively
significant portion of “Magic.”
See Campbell
, 510 U.S.
at 587–89. However, as the Supreme Court has explained in
discussing both parody and news reporting, “context is
everything, and the question of fairness asks what else the
[copier] did besides go to the heart of the original.”
Id.
at 589. Even “entire verbatim reproductions are justifiable
where the purpose of the work differs [enough] from the
original.”
Mattel, Inc. v. Walking Mountain Prods.
, 353 F.3d
792, 803 n.8 (9th Cir. 2003) (citing
Kelly
,
In this case, Greene’s rearrangement did not simply copy
several lines from one chorus of the song and repeat it, but
embedded that portion into a larger, transformative choir
showpiece that incorporated many other works, and imbued
that entire piece with new expression and meaning not
contained within any of the individual works. Carroll thus
“departed markedly from” the original lyrics,
Campbell
In light of Carroll’s non-profit educational and transformative use of “Magic,” the amount and substantiality of the portion used does not weigh against of fair use. T RESÓNA M ULTIMEDIA V . B URBANK H IGH S CH . V OCAL M USIC A SS ’ N D. The Effect of the Use Upon the Potential Market for or
Value of the Copyrighted Work
The fourth factor, “the effect of the use upon the
potential market for or value of the copyrighted work,”
17 U.S.C. § 107(4), requires us “to 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
,
Carroll and the Boosters Club submitted uncontroverted evidence that the sheet music incorporating twenty seconds of “Magic” was used only by students and their accompanists during the show choir’s extracurricular activities as part of their performance of a new work. Although the creation of sheet music incorporating the copyrighted work is a derivative use, the twenty seconds used in the “Rainmaker” choir piece is not a substitute for the song “Magic.” See SOFA Entm’t , 709 F.3d at 1280 (“Where the secondary use is not a substitute for the original and does not deprive the copyright holder of a derivative use, the fourth factor weighs in favor of fair use.”).
As Professor Nimmer explains, “if, regardless of medium, defendant’s work performs a different function from plaintiff’s, then notwithstanding its use of substantially similar material, the defense of fair use may prevail.” 4 Nimmer § 13.05[B][1]. Fair use exists when “[t]hose *20 interested in obtaining plaintiff’s music for musical purposes would not find their need fulfilled by purchasing” the defendant’s allegedly infringing work. Id. ; cf. Campbell , 510 U.S. at 591 (explaining that parody is not likely to substitute for an original work because the two “usually serve different market functions”). A consumer interested in acquiring sheet music for “Magic” would not purchase the sheet music for “Rainmaker,” as it omits much of the song except the chorus, and even the portions that are included are substantially rearranged. Similarly, a person wishing to purchase the sheet music for “Magic” in order to play or perform that song would necessarily purchase the sheet music for the song itself from the owner of the performance rights—not the sheet music for “Rainmaker.” See Kelly , 336 F.3d at 821–22 (finding no market harm where a person could not use the allegedly infringing work, a thumbnail photograph, as a substitute for the copyrighted high- resolution photograph); L.A. News Serv. , 305 F.3d at 941 (finding a transformative use of a news clip on Court TV “quite unlikely to affect the relevant market”). Thus, the use of “Magic” in “Rainmaker” does not affect the consumer market for the sheet music in the song at all. It is difficult to see how even widespread and unrestricted use of the chorus, in the context of nonprofit show choir performances, could displace the market for sheet music for the entire song.
Of course, “it is a given in every fair use case that
plaintiff suffers a loss of a
potential
market if that potential
is defined as the theoretical market for licensing the very use
at bar.” 4 Nimmer § 13.05[A][4];
see also
Pierre N. Leval,
Toward a Fair Use Standard
, 103 Harv. L. Rev. 1105, 1124
(1990) (“By definition every fair use involves some loss of
royalty revenue because the secondary user has not paid
royalties.”). However, “a copyright holder cannot prevent
others from entering fair use markets merely ‘by developing
or licensing a market for parody, news reporting,
educational, or other transformative uses of its own creative
work.’”
Bill Graham Archives v. Dorling Kindersley Ltd.
E. Conclusion
We weigh each of these factors in light of the Copyright
Act’s purpose “to stimulate artistic creativity for the general
public good.”
Twentieth Century Music Corp. v. Aiken
V. ATTORNEYS’ FEES
The district court denied attorneys’ fees to Defendants because it granted summary judgment on grounds of standing and qualified immunity, procedural issues it found unrelated to the purposes of copyright. Having declined to rule on the critical question of fair use, the district court found that Defendants’ status as the prevailing party did not weigh as heavily toward an award of attorneys’ fees. But Defendants’ fair use defense, upon which we rely in part today, goes to the heart of the copyright dispute in this case. Indeed, even in its qualified immunity ruling, the district court analyzed fair use to the extent that it found that it was reasonable for Carroll to believe that his use was noninfringing.
Under section 505 of the Copyright Act, a district court
may award a “reasonable attorney’s fee” and costs to the
prevailing party.
See
17 U.S.C. § 505. “[D]efendants who
seek to advance a variety of meritorious copyright defenses
should be encouraged to litigate them to the same extent that
plaintiffs are encouraged to litigate meritorious claims of
infringement.”
Fogerty v. Fantasy, Inc.
,
party’s legal and factual arguments, and (5) the need to
advance considerations of compensation and deterrence.”
Wall Data Inc. v. L.A. Cty. Sheriff’s Dep’t
, 447 F.3d 769,
787 (9th Cir. 2006). Substantial weight should be accorded
to the fourth factor.
Shame On You
,
Defendants prevailed across the board in this action in
the district court and won a ruling on their fair use defense
on appeal. This complete success weighs in favor of an
award of attorneys’ fees.
See id.
at 667;
Glacier Films
(USA), Inc. v. Turchin
,
We examine objective reasonableness next, because that
factor is given “substantial” weight.
Shame On You
, 893
F.3d at 666. While “a legal argument that loses is not
necessarily unreasonable,”
id.
, this is not “a close and
difficult case,”
Seltzer
,
T RESÓNA M ULTIMEDIA V . B URBANK H IGH S CH . V OCAL M USIC A SS ’ N unreasonable because our opinion in Minden Pictures did not purport to overrule Sybersound ; nor did it address the precise standing issue decided in Sybersound and Corbello .
Tresóna’s fair use argument as to the one song it did have
exclusive rights to, “Magic,” was likewise objectively
unreasonable.
Seltzer
, in which we confronted “a close and
difficult case” and found an action for infringement
reasonable, is instructive in its differences.
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
*24
demonstrated its claimed interests were almost entirely
unsubstantiated. None of these actions furthers the purposes
of the Copyright Act.
SOFA Entm’t
,
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
,
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.
The district court abused its discretion in denying
Defendants’ motion for attorneys’ fees. We therefore award
Defendants’ attorneys’ fees and remand to the district court
for the calculation of the award.
See Mag Jewelry Co. v.
Cherokee, Inc.
,
VI. CONCLUSION
We affirm the grant of summary judgment in favor of Defendants but reverse the denial of attorneys’ fees under 17 U.S.C. § 505.
Costs on appeal shall be awarded to Defendants. AFFIRMED IN PART; REVERSED IN PART; REMANDED.