Burbank High Vocal Music Association Wins Landmark Ruling In Tresona Copyright Suit

By On March 30, 2020

The Burbank High School Vocal Music Association won big in the copyright infringement suit brought against them by Tresona Multimedia, LLC, with a recent judgement from the 9th Circuit Court of Appeals, filed on March 24.

The 9th Circuit panel of three judges found in unanimous favor, again, for BHS VMA Booster Association and BHS vocal music teacher Brett Carroll and ordered Tresona to pay all legal fees for the defendants. In the published opinion, which can be found online here, the panel of judges published a negative view of Tresona’s actions.

The judges also ordered Tresona to pay the defendants’ attorney fees and costs of the court because they felt it would be a deterrent to those trying to file similar lawsuits against public school teachers and music education programs.

Tresona had appealed a judgement by Federal District Court that found in favor of the BHS Boosters, Carroll and several Booster Association parents, regarding its 2017 copyright infringement lawsuit in which the company alleged the use of snippets of popular songs during a BHS show choir fundraising concert, which raised money for the program through ticket sales and program ads, constituted copyright infringement.

The 9th Circuit Court found: “This use was not of a traditional commercial nature, but rather for the nonprofit education of the students in the music program.”

Burbank High’s In Sync performs at the January 2020 Music Is Instrumental public school education fundraising concert. (Photo By Ross Benson)

The 9th Circuit also found that Tresona, which claimed to have exclusive rights to the 79 named songs in the original complaint, did not have contractual licensing rights with all of the songwriters of those songs. So, Tresona lacked standing to sue in most cases of the 79 songs named in the original complaint.

The Court stated, “Tresona repeatedly mischaracterized its copyright interests in the songs at issue by claiming to be the sole entity empowered to issue licenses. In light of Tresona’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 Tresona, rather than to legitimately enforce its limited licensing interests or those of the true copyright owners.”

The 9th Circuit also found the the Burbank High show choir’s use of copyrighted material fell under “Fair Use,” as Carroll used the songs to teach music in his public school program.

Text from pages 29-31 of the 9th Circuit Court judgement:

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 demonstrated its claimed interests were almost entirely unsubstantiated. None of these actions furthers the purposes of the Copyright Act. SOFA Entm’t, 709 F.3d at 1280–81.

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, 136 S. Ct. at 1987 (explaining that awarding fees encourages “[t]he copyright holder with no reasonable infringement claim . . . not to bring suit in the first instance”).

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 9th Circuit Court’s judgement is a landmark ruling that affects music education programs across the United States and is one of the first cases of its kind to reinforce the concept of “Fair Use” as outlined in Federal Copyright Law, which addresses music usage in educational non-profit settings.