The End Of Tresona
The End of Tresona and “Copyright Trolling” in the Ninth Circuit
By Steve Riley – California Licensed Attorney | Show Choir Arranger | Former Combo Drummer
On March 24, 2020, the Ninth Circuit Court of Appeal issued a stunningly decisive victory for school music programs against Tresona Music Publishing, LLC. It is a particularly relevant decision for school show choirs, but also may also be applied to acapella groups, drama programs, instrumental music programs, drum corps, marching bands, and just about anyone who has been threatened with a lawsuit by Tresona.
The Court’s opinion (which you can read in its entirety here) touched on three key points:
What is the Ninth Circuit and Who Cares What It Says?
The Ninth Circuit is the federal court system which encompasses the Western part of the U.S. including California, Oregon, Washington, Idaho, Hawaii, Arizona, Alaska and Montana. Its rulings are law in the Circuit and are often adopted by the U.S. Supreme Court, becoming supreme law of the land. In California, where Burbank High School is located, they are top dogs. They decide issues of Copyright law. They have the power to decide who and who cannot be sued for Copyright infringement and on what grounds such lawsuits can be brought.
As it happened here, Tresona brought its Copyright infringement lawsuit against Burbank High in the Ninth Circuit District Court (level 1) and lost. Tresona could not leave well enough alone and they appealed their loss to the Ninth Circuit Court of Appeals (level 2); (level 3 is the last level - the U.S. Supreme Court). Tresona’s decision to appeal their loss turned out to be a tactical disaster. Not only did the Court of Appeals have no patience for the uncalled-for appeal, it also took it upon itself to essentially deliver a death-blow to Tresona’s whole Copyright trolling strategy. The Court also decided to publish this case, which is huge. Published cases are infinitely more important unpublished cases. This case will be cited by lawyers and judges for possibly decades to come because it the Ninth Circuit decided to publish it. The Court wants the world (or at least the country) to hear what it had to say about Tresona and the practice of threatening Copyright infringement lawsuits against school music programs and non-profits.
Point #1: Does Tresona ACTUALLY Have Any Right to Sue Your School/Organization?
In its published opinion, the Court first looked at whether Tresona actually had the right to sue Burbank High for Copyright infringement. This issue is known as standing. If you don’t have standing, you simply cannot sue. [I can’t sue my neighbor for backing into my brother’s car. I lack standing in that situation because it wasn’t my car that was damaged.]
Tresona has certain rights to many songs – but it doesn’t necessarily have all the rights needed to bring lawsuits for Copyright infringement. Here’s why: Many (most) songs have multiple writers who each own a part of the copyright of the song. Tresona may have acquired rights to part(s) of a song from one or two of the song’s writers, but if even one writer did not transfer their rights to Tresona, Tresona cannot sue for Copyright infringement as to that song. To sue for infringement based on unauthorized sheet music based on that song, you need exclusive rights to bring such a lawsuit. As this case points out, Tresona almost never has those exclusive rights.
The Court noted that Tresona had initially complained that Burbank High had committed Copyright infringement as to 79 Tresona-controlled songs used by its show choirs. In other words, Tresona claimed to have the exclusive rights to issue “custom arrangement licenses” for 79 songs that Burbank High used in its various show choir sets. When it came time to prove that they actually had those exclusive rights, Tresona did not provide any evidence whatsoever for 75 of the 79 songs they sued over. Of 79 total songs, Tresona could only prove that it had exclusive rights to sue for “unauthorized” sheet music distribution for ONE SONG.
That one song was “Magic” from the Xanadu movie soundtrack. “Magic” is credited as written by a single person: John Farrar. A company called PEN Music Group acquired ownership of John Farrar’s composition catalog, and PEN Music Group later granted Tresona the right to “issue Copyright Use Licenses” for PEN’s catalog, which included John Farrar’s catalog. Tracing back as to “who owns what” establishes the chain-of-title.
For the 79 songs that Tresona initially sued Burbank High over, it was only able to prove chain-of-title as to “Magic” alone. It is difficult to imagine how many threats Tresona issued over the years based on false and unproveable claims of “exclusive rights.” But this case makes clear that Tresona almost always lacks standing to bring Copyright infringement lawsuits, even when it so confidently and persistently threatens them.
Point #2: Show Choir Arrangements Are “Fair Use” Under Copyright Law – But Use Common Sense (And Be Artistic)
Reading through this Court’s opinion on the Fair Use argument (explained below) was frankly astonishing. I never thought in a million years that the Court would take such a hard look at a common show choir set and set forth a detailed legal analysis as to the Copyright implications. But they did, and it’s a giant win for schools.
So, what is fair use? Fair use is an exception to certain parts of the U.S. Copyright Law for creative uses of existing creative works like music, film, writings, etc. Fair use is often seen in the form of parody, satire and commentary. Fair use also sometimes covers education, such as using copyrighted material to teach students in the classroom. Congress recognized that these uses are actually beneficial to society, and not noticeably harmful to the copyright owner. Therefore, Congress decided that such fair uses would be free from licensing requirements and not subject to infringement penalties. Though the concept of fair use cannot be adequately and completely explained here, those are the basic principles.
The Court was very interested in whether the use of a copyrighted song in a show choir set – and the distribution of custom arranged sheet music to teach that song – are considered fair uses under U.S. Copyright law. This goes beyond the question of whether Tresona has the right to sue for infringement. It answers the question of whether anyone can sue for infringement for a show choir’s use of a song in its artistic programming.
The Court determined that the use of copyrighted songs in show choir sets is, in fact, fair use and thus totally exempt from many typical Copyright law requirements. Licenses to perform the songs are not required; licenses to create and distribute custom arranged sheet music based on the songs are not required. Under typical show choir circumstances, no one can charge a license fee or even require a free license for the use of popular songs. Not Tresona, not Disney, not Taylor Swift…no one. Show choirs can do as they please in this regard and do not to need to pay anyone or ask permission, within certain guidelines to be discussed a bit later.
The Court based its decision on the fair use issue on two main factors: (1) the inherent educational value in having students learn, perform and compete with these custom arranged songs, and (2) the “transformation” of the original song in the show choir context.
As for educational value, the Court noted that “this use was not of a traditional commercial nature, but rather for the nonprofit education of the students in the music program. [VMA Director] Carroll distributed the sheet music arranged by [arranger] Greene at no charge to the students.”
The school was not trying to profit off the use of the song. They were merely intent on performing it in a not-for-profit manner, mostly for parents and other show choir enthusiasts. That is a big deal to the Court in determining fair use. Courts do not like when people or companies make profit off of someone else’s work. But since there is no profit motive here, only targeted fundraising efforts and a very limited audience, the Court felt that the use was mainly for educational and cultural enrichment purposes.
Next, and perhaps more importantly, the Court examined whether Burbank High’s use of the song “Magic” was essentially a “copy” of the original or whether the arrangement of “Magic” transformed the original into something new and inventive. The Court looked how “Magic” was used in the film of Xanadu, an 80’s musical fantasy film; and then looked at how Burbank High used “Magic” in its show choir work, “Rainmaker,” about a Dust Bowl-era town in the midst of drought. The Court could clearly see a difference there, and determined the use undoubtedly transformed the original into something new:
“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.”
Here lies the crux of the Court’s logic. If a show choir incorporates a song into a larger, transformative work, like a new storyline, the song is free to use. Extra "fair use points" would be earned for using only a small part of the song and changing some lyrics or other musical qualities of the original.
Show choir directors are thus on notice on how to make a 100% fair use show choir set. Be creative. Tell a story. Use many different songs to tell that story. Do not use too much of a single song. Directors and their staff must take genuine care to meet these standards, and require their arrangers to “get creative.” I somehow do not see this as a big problem. The show choir community thrives on creativity.
This is the heart of the Court’s fair use decision. It wants to encourage creative rearranging of existing songs, and it wants to encourage educational institutions to continue what they have already been doing. The Court also wants Tresona to get the hell out of the way and stop bringing infringement lawsuits against schools and their supporters. That brings me to the last key point from the case.
Point #3: The Court Does Not Like Tresona and Wants These Lawsuits to Stop
Without getting into the boring legal details, I found the last part of the Court’s opinion almost shocking. The Court took it upon itself to require Tresona to pay for Burbank High’s attorney’s fees. This case is several years in the making, and the attorney’s fees could easily be in the six figures. This is very significant. In the American system, both sides to a lawsuit are almost always required for pay for their own attorney(s). Only in rare situations does the winning side receive reimbursement from the losing side for its attorney’s fees (usually when there is a contractual agreement to do so), and Courts generally do not like to wade into the issue of attorney’s fees if they can help it.
But here, the Court reversed the lower court (which had denied awarding attorney’s fees) and will now force Tresona to pay Burbank High’s attorney’s fees all the way through the appeal process. This was meant as one last “nail in the coffin” to prevent Tresona from bringing a similar lawsuit again. The Court noted, “Tresona’s arguments are objectively unreasonable” as to both the standing and fair use issues. In other words, Tresona and its lawyers should have known they would lose and should not have dragged Burbank High into a bad faith lawsuit.
The Court further admonished Tresona:
“Tresona 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, Tresona repeatedly mischaracterized its copyright interests in the songs at issue by claiming to be the sole entity empowered to issue licenses.”
The Court made clear that its reasoning to award attorney’s fees to Burbank High was meant to deter future Tresona lawsuits elsewhere:
“After almost four years of litigation, Tresona . . . lost both in the district court and on appeal on two independent legal theories. Awarding attorneys’ fees to Defendants appropriately serves the interest in deterrence.”
“Awarding Defendants their attorneys’ fees insures that [Burbank High] is properly compensated for defending against overreaching claims of copyright infringement and pressing a defense that benefits those educating our youth.”
It is hard to imagine what Tresona hoped to accomplish by appealing its loss to Burbank High to a higher court. Sometimes lawyers get stuck in their own heads and fail to see the other side of the argument. Sometimes lawyers just want to drag out their billings and therefore convince their client to appeal. Perhaps being in perpetual disagreement with school leaders, arrangers, and boosters for years convinced Tresona that they were right. They weren’t right. They never were. At least now there is something definitive proving how wrong they were.
Disclaimer: This article is an opinion piece. It is not to be construed as legal advice. If any reader has questions, feel free to email me at stephen.riley.law@gmail.com
By Steve Riley – California Licensed Attorney | Show Choir Arranger | Former Combo Drummer
On March 24, 2020, the Ninth Circuit Court of Appeal issued a stunningly decisive victory for school music programs against Tresona Music Publishing, LLC. It is a particularly relevant decision for school show choirs, but also may also be applied to acapella groups, drama programs, instrumental music programs, drum corps, marching bands, and just about anyone who has been threatened with a lawsuit by Tresona.
The Court’s opinion (which you can read in its entirety here) touched on three key points:
- Tresona rarely possesses the “exclusive” rights that it claims it has and, therefore, likely cannot bring copyright infringement lawsuits they so frequently threaten.
- School show choir competition sets, when conceived around a story and artistically executed, are inherently free and exempt from copyright infringement concern under the legal doctrine known as fair use.
- The Court rebuked Tresona’s whole approach (badgering and threatening public schools and non-profit institutions for payment of license fees) and made it pay HUGE for suing Burbank High’s choir director and boosters.
What is the Ninth Circuit and Who Cares What It Says?
The Ninth Circuit is the federal court system which encompasses the Western part of the U.S. including California, Oregon, Washington, Idaho, Hawaii, Arizona, Alaska and Montana. Its rulings are law in the Circuit and are often adopted by the U.S. Supreme Court, becoming supreme law of the land. In California, where Burbank High School is located, they are top dogs. They decide issues of Copyright law. They have the power to decide who and who cannot be sued for Copyright infringement and on what grounds such lawsuits can be brought.
As it happened here, Tresona brought its Copyright infringement lawsuit against Burbank High in the Ninth Circuit District Court (level 1) and lost. Tresona could not leave well enough alone and they appealed their loss to the Ninth Circuit Court of Appeals (level 2); (level 3 is the last level - the U.S. Supreme Court). Tresona’s decision to appeal their loss turned out to be a tactical disaster. Not only did the Court of Appeals have no patience for the uncalled-for appeal, it also took it upon itself to essentially deliver a death-blow to Tresona’s whole Copyright trolling strategy. The Court also decided to publish this case, which is huge. Published cases are infinitely more important unpublished cases. This case will be cited by lawyers and judges for possibly decades to come because it the Ninth Circuit decided to publish it. The Court wants the world (or at least the country) to hear what it had to say about Tresona and the practice of threatening Copyright infringement lawsuits against school music programs and non-profits.
Point #1: Does Tresona ACTUALLY Have Any Right to Sue Your School/Organization?
In its published opinion, the Court first looked at whether Tresona actually had the right to sue Burbank High for Copyright infringement. This issue is known as standing. If you don’t have standing, you simply cannot sue. [I can’t sue my neighbor for backing into my brother’s car. I lack standing in that situation because it wasn’t my car that was damaged.]
Tresona has certain rights to many songs – but it doesn’t necessarily have all the rights needed to bring lawsuits for Copyright infringement. Here’s why: Many (most) songs have multiple writers who each own a part of the copyright of the song. Tresona may have acquired rights to part(s) of a song from one or two of the song’s writers, but if even one writer did not transfer their rights to Tresona, Tresona cannot sue for Copyright infringement as to that song. To sue for infringement based on unauthorized sheet music based on that song, you need exclusive rights to bring such a lawsuit. As this case points out, Tresona almost never has those exclusive rights.
The Court noted that Tresona had initially complained that Burbank High had committed Copyright infringement as to 79 Tresona-controlled songs used by its show choirs. In other words, Tresona claimed to have the exclusive rights to issue “custom arrangement licenses” for 79 songs that Burbank High used in its various show choir sets. When it came time to prove that they actually had those exclusive rights, Tresona did not provide any evidence whatsoever for 75 of the 79 songs they sued over. Of 79 total songs, Tresona could only prove that it had exclusive rights to sue for “unauthorized” sheet music distribution for ONE SONG.
That one song was “Magic” from the Xanadu movie soundtrack. “Magic” is credited as written by a single person: John Farrar. A company called PEN Music Group acquired ownership of John Farrar’s composition catalog, and PEN Music Group later granted Tresona the right to “issue Copyright Use Licenses” for PEN’s catalog, which included John Farrar’s catalog. Tracing back as to “who owns what” establishes the chain-of-title.
For the 79 songs that Tresona initially sued Burbank High over, it was only able to prove chain-of-title as to “Magic” alone. It is difficult to imagine how many threats Tresona issued over the years based on false and unproveable claims of “exclusive rights.” But this case makes clear that Tresona almost always lacks standing to bring Copyright infringement lawsuits, even when it so confidently and persistently threatens them.
Point #2: Show Choir Arrangements Are “Fair Use” Under Copyright Law – But Use Common Sense (And Be Artistic)
Reading through this Court’s opinion on the Fair Use argument (explained below) was frankly astonishing. I never thought in a million years that the Court would take such a hard look at a common show choir set and set forth a detailed legal analysis as to the Copyright implications. But they did, and it’s a giant win for schools.
So, what is fair use? Fair use is an exception to certain parts of the U.S. Copyright Law for creative uses of existing creative works like music, film, writings, etc. Fair use is often seen in the form of parody, satire and commentary. Fair use also sometimes covers education, such as using copyrighted material to teach students in the classroom. Congress recognized that these uses are actually beneficial to society, and not noticeably harmful to the copyright owner. Therefore, Congress decided that such fair uses would be free from licensing requirements and not subject to infringement penalties. Though the concept of fair use cannot be adequately and completely explained here, those are the basic principles.
The Court was very interested in whether the use of a copyrighted song in a show choir set – and the distribution of custom arranged sheet music to teach that song – are considered fair uses under U.S. Copyright law. This goes beyond the question of whether Tresona has the right to sue for infringement. It answers the question of whether anyone can sue for infringement for a show choir’s use of a song in its artistic programming.
The Court determined that the use of copyrighted songs in show choir sets is, in fact, fair use and thus totally exempt from many typical Copyright law requirements. Licenses to perform the songs are not required; licenses to create and distribute custom arranged sheet music based on the songs are not required. Under typical show choir circumstances, no one can charge a license fee or even require a free license for the use of popular songs. Not Tresona, not Disney, not Taylor Swift…no one. Show choirs can do as they please in this regard and do not to need to pay anyone or ask permission, within certain guidelines to be discussed a bit later.
The Court based its decision on the fair use issue on two main factors: (1) the inherent educational value in having students learn, perform and compete with these custom arranged songs, and (2) the “transformation” of the original song in the show choir context.
As for educational value, the Court noted that “this use was not of a traditional commercial nature, but rather for the nonprofit education of the students in the music program. [VMA Director] Carroll distributed the sheet music arranged by [arranger] Greene at no charge to the students.”
The school was not trying to profit off the use of the song. They were merely intent on performing it in a not-for-profit manner, mostly for parents and other show choir enthusiasts. That is a big deal to the Court in determining fair use. Courts do not like when people or companies make profit off of someone else’s work. But since there is no profit motive here, only targeted fundraising efforts and a very limited audience, the Court felt that the use was mainly for educational and cultural enrichment purposes.
Next, and perhaps more importantly, the Court examined whether Burbank High’s use of the song “Magic” was essentially a “copy” of the original or whether the arrangement of “Magic” transformed the original into something new and inventive. The Court looked how “Magic” was used in the film of Xanadu, an 80’s musical fantasy film; and then looked at how Burbank High used “Magic” in its show choir work, “Rainmaker,” about a Dust Bowl-era town in the midst of drought. The Court could clearly see a difference there, and determined the use undoubtedly transformed the original into something new:
“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.”
Here lies the crux of the Court’s logic. If a show choir incorporates a song into a larger, transformative work, like a new storyline, the song is free to use. Extra "fair use points" would be earned for using only a small part of the song and changing some lyrics or other musical qualities of the original.
Show choir directors are thus on notice on how to make a 100% fair use show choir set. Be creative. Tell a story. Use many different songs to tell that story. Do not use too much of a single song. Directors and their staff must take genuine care to meet these standards, and require their arrangers to “get creative.” I somehow do not see this as a big problem. The show choir community thrives on creativity.
This is the heart of the Court’s fair use decision. It wants to encourage creative rearranging of existing songs, and it wants to encourage educational institutions to continue what they have already been doing. The Court also wants Tresona to get the hell out of the way and stop bringing infringement lawsuits against schools and their supporters. That brings me to the last key point from the case.
Point #3: The Court Does Not Like Tresona and Wants These Lawsuits to Stop
Without getting into the boring legal details, I found the last part of the Court’s opinion almost shocking. The Court took it upon itself to require Tresona to pay for Burbank High’s attorney’s fees. This case is several years in the making, and the attorney’s fees could easily be in the six figures. This is very significant. In the American system, both sides to a lawsuit are almost always required for pay for their own attorney(s). Only in rare situations does the winning side receive reimbursement from the losing side for its attorney’s fees (usually when there is a contractual agreement to do so), and Courts generally do not like to wade into the issue of attorney’s fees if they can help it.
But here, the Court reversed the lower court (which had denied awarding attorney’s fees) and will now force Tresona to pay Burbank High’s attorney’s fees all the way through the appeal process. This was meant as one last “nail in the coffin” to prevent Tresona from bringing a similar lawsuit again. The Court noted, “Tresona’s arguments are objectively unreasonable” as to both the standing and fair use issues. In other words, Tresona and its lawyers should have known they would lose and should not have dragged Burbank High into a bad faith lawsuit.
The Court further admonished Tresona:
“Tresona 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, Tresona repeatedly mischaracterized its copyright interests in the songs at issue by claiming to be the sole entity empowered to issue licenses.”
The Court made clear that its reasoning to award attorney’s fees to Burbank High was meant to deter future Tresona lawsuits elsewhere:
“After almost four years of litigation, Tresona . . . lost both in the district court and on appeal on two independent legal theories. Awarding attorneys’ fees to Defendants appropriately serves the interest in deterrence.”
“Awarding Defendants their attorneys’ fees insures that [Burbank High] is properly compensated for defending against overreaching claims of copyright infringement and pressing a defense that benefits those educating our youth.”
It is hard to imagine what Tresona hoped to accomplish by appealing its loss to Burbank High to a higher court. Sometimes lawyers get stuck in their own heads and fail to see the other side of the argument. Sometimes lawyers just want to drag out their billings and therefore convince their client to appeal. Perhaps being in perpetual disagreement with school leaders, arrangers, and boosters for years convinced Tresona that they were right. They weren’t right. They never were. At least now there is something definitive proving how wrong they were.
Disclaimer: This article is an opinion piece. It is not to be construed as legal advice. If any reader has questions, feel free to email me at stephen.riley.law@gmail.com
Too soon to celebrate. I suspect that the Ninth's ridiculously expansive view of "fair use" for educational institutions won't stand up, nor will the money judgment against Tresona.
ReplyDeleteTresona had a good-faith reason to go after infringers -- which Burbank was -- as well as go after the booster club. The court treated the boosters as some kind of parent fan club unfairly targeted, when in fact they produced the show -- not the school district. It wasn't a simple school assembly, either.
There's also a conflict between the different federal courts as to who has the standing to enforce song rights if co-owned, and which needs to be resolved.
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