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High School Show Choir’s Use Of Rearranged Musical Work Deemed Fair Use
Burbank High School has five nationally recognized, competitive show choirs led by vocal music director Brett Carroll. The Burbank High School Vocal Music Association Boosters Club, a nonprofit organization operated by parent volunteers, holds fundraising events, such as show choir competitions, to help fund the show choir program.
Carroll commissioned an outside music arranger to create custom sheet music for two shows, “Rainmaker” and “80’s Movie Montage” for one of the show choirs, In Sync, to perform. “Rainmaker” is an eighteen-minute performance composed of multiple musical works, including a small, rearranged segment of the chorus and a small segment of another verse of the song “Magic.” “80’s Movie Montage” is a twenty-minute performance that contains a sixteen-second segment of the chorus of the song “(I’ve Had) The Time of My Life.” In Sync performed the two shows on several occasions, including at the Burbank Blast choir competition fundraiser hosted by the Boosters Club. Also at Burbank Blast, the John Burroughs High School show choir competed with a choir performance, which contained segments of the songs “Hotel California” and “Don’t Phunk With My Heart.”
Following the Burbank Blast choir competition, Tresóna Multimedia, LLC, (Tresóna) filed a copyright infringement claim under the Copyright Act of 1976 (Copyright Act) against Carroll, the Boosters Club, and several of its parent volunteers. Tresóna alleged that it held the exclusive right to issue copyright licenses for four musical works, “Magic,” “(I’ve Had) The Time of My Life,” “Hotel California,” and “Don’t Phunk With My Heart,” and the show choir failed to obtain licenses for its use of the copyrighted sheet music in the Burbank Blast performances.
The Copyright Act grants the right to the “legal or beneficial owner of an exclusive right under a copyright… to institute an action for any infringement of that particular right committed while he or she is the owner of it”; those who hold non-exclusive rights do not have standing to sue under the Copyright Act.
The trial court determined that Tresóna failed to produce evidence showing that it held an exclusive right to “(I’ve Had) The Time of My Life,” “Hotel California,” or “Don’t Phunk With My Heart.” Tresóna received its interests in “(I’ve Had) The Time of My Life” from PEN Music Group (PEN), which only controlled, and could only license, a 25 percent interest in the song. Similarly, Tresóna received its interests in “Hotel California” from PEN, which only controlled, and could only license, a 50 percent interest in the song. Moreover, Tresóna received its interests in “Don’t Phunk With My Heart” from The Royalty Network, which only controlled, and could only license, a one-sixth interest in the song. Accordingly, the trial court found that Tresóna lacked standing to sue under the Copyright Act for infringement of those three songs because Tresóna did not hold exclusive rights in the musical works. However, the trial court found that Tresóna produced sufficient evidence to show that it had an exclusive right to “Magic” from PEN.
Carroll asserted the defenses of fair use and qualified immunity to the show choir’s use of “Magic,” while the Boosters Club and the parent volunteers asserted that they could not be held liable for direct or secondary copyright infringement. The trial court did not address Carroll’s fair use defense, but found that Carroll was entitled to qualified immunity for the show choir’s use of “Magic” and the Boosters Club and parent volunteers were not liable for direct or secondary copyright infringement. Carroll and the Boosters Club moved to recover attorneys’ fees, and the trial court denied the motion. Tresóna appealed the trial court’s findings and Carroll and the Boosters Club appealed the denial of attorneys’ fees.
On appeal, the U.S. Court of Appeals for the Ninth Circuit held that the trial court was correct in holding that Tresóna lacked standing under the Copyright Act to bring an infringement claim based on “(I’ve Had) The Time of My Life,” “Hotel California,” and “Don’t Phunk With My Heart,” because Tresóna only held non-exclusive licenses to those musical works.
The Court then turned to the show choir’s use of the song “Magic” and the trial court’s ruling in favor of Carroll on qualified immunity grounds. The Ninth Circuit affirmed the judgment in favor of Carroll on the show choir’s use of the song “Magic,” but based on Carroll’s defense of fair use and not on the ground of qualified immunity. The Court found the fair use question “begs to be answered” because the defense of qualified immunity is only available to public school teachers, while the fair use defense would apply to both public and private school teachers.
Fair use is a defense that permits copyrighted works to be used “for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research.” To determine whether the use of copyrighted material qualifies as fair use, Congress has directed the courts to consider at minimum, “(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.”
Here, the Court said, “Carroll’s use of the musical work was in his capacity as a teacher in the music education program at Burbank High School… and [s]uch an educational use weighs in favor of fair use.” The Court then analyzed each of the four factors. First, the Court noted that “the purpose and character of the use” weighed strongly in favor of finding fair use. The segments of the song “Magic,” used in the “Rainmaker” compilation was a transformative use of the song, which was performed by students as part of a music education program. The proceeds from the performance went to the nonprofit Boosters Club to further fund and support the school’s music education program. Second, the Court found that the nature of the use of “Magic” in the “Rainmaker” compilation was “undoubtedly creative,” which also supported a finding of fair use.
Third, the Court noted that the amount and substantiality of the portion of “Magic” used in the “Rainmaker” compilation was significant, because the “song’s principle chorus, which is the central element of the musical work” was used and repeated in “Rainmaker” more than once. Nevertheless, the Court found that this factor did not weigh against a finding of fair use because those portions of the song were “embedded … into a larger, transformative showpiece that incorporated many other works.” Fourth, the Court found that the use of “Magic” in “Rainmaker” did not affect the consumer market for sheet music of “Magic” because individuals truly interested in purchasing and performing “Magic” would not, instead, purchase sheet music for “Rainmaker.”
The Court concluded that the choir’s use of “Magic” for educational, nonprofit purposes in their high school choir performance was a fair use based on the weight of the factors. The Court also granted attorneys’ fees to Carroll, the Boosters Club, and the parent volunteers to deter copyright holders with no reasonable infringement claim from bringing similar suits in the future in hopes that it would allow “for greater breathing room for classroom educators and those involved in similar educational extracurricular activities.”
Tresóna Multimedia, LLC v. Burbank High School Vocal Music Association (9th Cir. 2020) 953 F.3d 638.
The decision in Tresóna appears to broaden how schools may use copyrighted materials for educational purposes. Nevertheless, schools and community college districts should thoughtfully analyze whether their use of copyrighted materials is legally compliant and become familiar with the boundaries of “fair use” in the educational setting. When in doubt, it is advisable to obtain written permission from the copyright holder.