Ninth Circuit and Supreme Court Issue Favorable Rulings for School Districts
On March 24, 2020, the Ninth Circuit Court of Appeals issued a published opinion in favor of school choir programs across the state. Specifically, the Court determined that incorporating a portion of copyrighted music into a custom musical arrangement, which is to be used by a school choir for the nonprofit education of students, is fair use under the Copyright Act of 1976 and does not constitute infringement.
In the underlying case, Tresona Multimedia, LLC v. Burbank High School Vocal Music Association, et al., Tresona Multimedia, LLC sued the Burbank Vocal Music Director, the music program Boosters Club, and the Board members of the Boosters Club for copyright infringement related to four separate musical works used in choir performances. On summary judgment, the Federal District Court dismissed the entire case. The Court ruled that Tresona lacked standing to sue for three of the songs – “Don’t Funk With My Heart,” “Hotel California,” and “(I’ve Had) The Time Of My Life.” For the remaining song “Magic,” the Court ruled that the Music Director was entitled to qualified immunity and the remaining Defendants could not be held liable through direct or secondary copyright infringement. Despite Defendants’ success, the District Court denied their requests for attorneys’ fees under 17 U.S.C. § 505.
On appeal, the Ninth Circuit affirmed the determination that Tresona lacked standing for three of the songs. In doing so, the Court definitively upheld its prior decisions in Sybersound Records, Inc. v. UAV Corp., 517 F.3d 1137 (9th Cir. 2008) and Corbello v. DeVito, 777 F.3d 1058 (9th Cir. 2015), finding that Tresona held only non-exclusive licenses for the song – having received only a copyright use license from less than all the registered copyright owners.
As to the remaining song “Magic,” the Ninth Circuit refrained from reaching the issue of qualified immunity, instead finding that the use was a “fair use” permitted by 17 U.S.C. § 107. In formulating this decision, the Court initially noted that the Music Director’s “use of the musical work was in his capacity as a teacher in the music education program at Burbank High School,” which “weighs in favor of fair use.” Thereafter, it analyzed the following factors:
- The purpose and character of the use: Finding that the song’s use was “not of a traditional commercial nature, but rather for the nonprofit education of the students in the music program.” Furthermore, it found that the use of “Magic” was highly “transformative,” meaning it helped “tell a story with new expressive content and meaning.” As noted by the Court, the “transformative” nature of the use was very important to the total analysis.
- The nature of the original copyrighted work and the subsequent use of the work (informational or creative): Finding that both the original and the new uses were creative, which weighed against fair use.
- The amount and substantiality of the portion used in relation to the copyrighted work as a whole: Finding only a small portion of the song was used and its use “imbued that entire piece with new expression and meaning not contained within any of the individual works.”
- The effect of the use upon the potential market for or value of the copyrighted work: Finding that the effect on the potential market for the original piece was minimal and the use in this case served a different function – “Tresona was not harmed by the loss of any fees for the licensing of the song ‘Magic.’ ”
Along with its fair use decision, the Ninth Circuit determined that Defendants were entitled to attorneys’ fees and it was an abuse of discretion for the District Court to deny Defendants’ requests for fees after summary judgment was granted. In particular, the Ninth Circuit stated that courts have a legitimate interest in deterring lawsuits of this type and therefore the case should be remanded back to the District Court to determine the amount of attorneys’ fees for Defendants. In October 2020, the parties resolved the remaining proceedings and the litigation concluded.
Interestingly, the Ninth Circuit’s decision was issued approximately 24 hours after the United States Supreme Court published its decision in Allen v. Cooper, 140 S. Ct. 994, 996, 206 L. Ed. 2d 291 (2020). In no uncertain terms, the Supreme Court rejected the idea that States could be held liable for copyright infringement pursuant to the provisions of 17 U.S.C. §§ 501(a), 511(a) and (b). The Court explained that the United States Legislature did not have authority under Article I’s Intellectual Property Clause or the Fourteenth Amendment to abrogate sovereign immunity for infringement.
As arms of the state, public school districts therefore appear to be immune from liability for copyright infringement under 17 U.S.C. § 501 et seq.