An update from Kevin Sandoval, one of the firm’s summer associates:

What started as a copyright infringement claim against the California high school that inspired the television series “Glee” has developed into a conflict that could have ramifications for copyright holders and potential copyright infringers everywhere. In 2016, Tresóna Multimedia, LLC filed a suit against Burbank high school’s vocal music director Brett Carroll, the Burbank high school vocal music boosters club, and individual boosters club parents claiming copyright infringement for the use and performance of four songs, including “Magic,” a song originally performed by Olivia Newton-John in a 1980 musical movie. Tresóna claimed at least partial interest in all four songs.

The Central District of California (“District Court”) held that Tresóna did not have standing to bring copyright infringement claims for three of the songs because it received its interests in those songs from individual co-owners of copyright and thus it held only non-exclusive rights in those songs. As to the fourth song, the District Court acknowledged that Tresóna had rights in “Magic,” but held that Carroll was protected from suit because of his qualified immunity as a public employee and that the other defendants could not be held liable for direct or secondary copyright infringement.

34126235 - copyrightOn appeal, in a decision dated March 24, 2020, the Court of Appeals for the Ninth Circuit affirmed the District Court’s holding that Tresóna did not have standing to bring a copyright infringement suit for the three songs, but determined that the merits of Carroll’s fair use defense in regard to “Magic” needed to be evaluated because the question of fair use was applicable to a broader music and teaching community. The Ninth Circuit used the four fair use factors outlined in 17 U.S.C. § 107, and ultimately held the defense of fair use applied to “Magic,” most notably because the use was limited and transformative and was for nonprofit educational purposes.

Further, although the District Court had declined to award Carroll’s attorney’s fees to Tresóna, the Ninth Circuit reversed because it determined that Tresóna pursued groundless claims against a school teacher, boosters club, and parent volunteers. According to the Ninth Circuit, Tresóna was an “overzealous monopolist” that sought to “stamp out the very creativity that the [Copyright] Act seeks to ignite.” Despite the Court’s harsh holding, Tresóna is pushing forward because it sees a larger issue at play than fair use.

On May 21, 2020, Tresóna filed a motion to stay so that it can petition for writ of certiorari to the United States Supreme Court, which it says is due later this summer. In its motion, which the Ninth Circuit just granted on June 26, 2020, Tresóna states that the issue to be presented to the Supreme Court concerns the Ninth’s Circuit’s reading of the word “exclusive” in the Copyright Act, and it argues that a third-party who has received exclusive rights or an assignment of its rights from a copyright co-owner should be able to stand in the shoes of the copyright owner on an infringement claim. If Tresóna ends up in front of the Supreme Court on this issue, it will be an interesting case to watch as it could impact whether copyright infringers could be more susceptible to suit from any number of copyright co-owners or assignees.