Corey Whitt
On May 19, 2009, William McKinley High School’s Glee Club opened for audition on the television series Glee.[1] Across six critically-acclaimed seasons, the coming of age jukebox-musical followed the ups and downs of the program and its members on the high school show choir circuit.[2] However, just as the fictional story reached its final cadence in 2015, the spotlight shifted to the Burbank High School choir program that inspired it all when Tresóna Multimedia, LLC (Tresóna)—a music licensing company—filed suit against the real-life Mr. Schuester and the Burbank High School Vocal Music Association.[3]
Tresóna’s 2016 claim centered around the performance of four songs: “Magic,” “(I’ve Had) the Time of My Life,” “Don’t Phunk with My Heart,” and “Hotel California.”[4] On multiple occasions, the Burbank High School show choir performed “Magic” and “(I’ve Had) the Time of My Life” without a copyright license.[5] Similarly, Burbank High School facilitated performances of “Don’t Phunk with My Heart” and “Hotel California” by another school at their annual fundraiser and competition, the “Burbank Blast,” without a grand right license.[6] Alleging infringement of its copyright interests as the exclusive licensing agent, Tresóna brought suit against the Burbank High School director, Brett Carroll, and the Burbank High School Vocal Music Association for the unlicensed use of the four songs.[7]
However, District Judge Stephen V. Wilson found that Tresóna’s claim concerning “(I’ve Had) the Time of My Life,” “Don’t Phunk with My Heart,” and “Hotel California” lacked standing.[8] Under the Copyright Act of 1976, “[t]he legal or beneficial owner of an exclusive right under a copyright is entitled . . . to institute an action for any infringement of that particular right committed while he or she is the owner of it.”[9] Tresóna, though, was not the exclusive rights owner of the aforementioned songs.[10] The company’s licensing rights were “derived from less than 100% of copyright owners for [the] three songs and thus Tresóna . . . [did] not have an exclusive right.”[11] Therefore, Tresóna lacked standing to sue for the infringement of the three musical works.
The only song at issue that Tresóna possessed exclusive licensing rights over was “Magic,” and after a grant of summary judgement against the licensing company on the grounds of qualified immunity for Brett Carroll, the Ninth Circuit considered the case on appeal in 2020.[12]
The Appeals Court affirmed the District Court’s decision that Tresóna lacked standing for the three songs mentioned above but pivoted on the question of “Magic.”[13] The decision would rest on the following consideration:
Did Burbank High School’s usage of “Magic” in their 2010–2011 show choir program constitute fair use?
To determine whether an unauthorized use of copyrighted material is fair use, courts consider four factors:
(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.[14]
First, the Circuit Court held that “Magic” was utilized for a non-profit, educational purpose: students performed the work as part of their involvement with Burbank’s music education program and the music was disseminated to them at no cost.[15] More, the use of “Magic” was transformative. Far from the original setting of the 1980 musical film “Xanadu,” “Magic” told a different story in the show choir’s performance setting.[16] Taken together, the first factor weighed heavily in favor of finding fair use.
Secondly, the nature of the copyrighted work was more creative than informational, weighing against a finding of fair use.[17]
Third, while “Magic’s” principal chorus was directly embedded into the new musical performance and repeated multiple times, the portion lasted only twenty seconds out of the roughly four-minute song—a consideration that does not weigh against fair use.[18]
Finally, the Ninth Circuit reasoned that the short appearance of “Magic” within the show choir set did not displace the market for the full work, limiting its infringement.[19]
Taken together, the Ninth Circuit held that Burbank’s utilization of “Magic” constituted fair use, securing a summary judgement decision in favor of Burbank High School and its director.[20] However, the trail of litigation sings a cautionary tale to music directors across the country; there is no glee in potential copyright infringement.
[1] Mary McNamara, This High School Sings with ‘Glee’, L.A. Times (May 19, 2009), https://www.latimes.com/archives/la-xpm-2009-may-19-et-glee19-story.html [https://perma.cc/EG9A-674V] [https://web.archive.org/web/20230402170033/https://www.latimes.com/archives/la-xpm-2009-may-19-et-glee19-story.html].
[2] See Glee (2009–2015): Awards, IMDb, https://www.imdb.com/title/tt1327801/awards/?ref_=tt_awd [https://perma.cc/N3PF-CLCR] [https://web.archive.org/save/https://www.imdb.com/title/tt1327801/awards/?ref_=tt_awd] (last visited Apr. 2, 2023).
[3] Ashley Cullins, High School Show Choir that Inspired ‘Glee’ Sued for Stealing Music, Hollywood Rep. (July 1, 2016), https://www.hollywoodreporter.com/business/business-news/high-school-show-choir-inspired-907881/ [https://perma.cc/V9E3-6R9M] [https://web.archive.org/web/20230402175900/https://www.hollywoodreporter.com/business/business-news/high-school-show-choir-inspired-907881/].
[4] Tresóna Multimedia, LLC v. Burbank High Sch. Vocal Music Ass'n, No. CV 16-4781-SVW-FFM, 2016 U.S. Dist. LEXIS 186059, at *1–2 (C.D. Cal. Dec. 22, 2016), aff’d on other grounds, Tresóna Multimedia, Ltd. Liab. Co. v. Burbank High Sch. Vocal Music Ass'n, 953 F.3d 638 (9th Cir. 2020).
[5] Tresóna Multimedia, 2016 U.S. Dist. LEXIS 186059, at *3. Burbank High School’s “Magic” performances occurred between the years 2010 and 2011, while performances of (I’ve Had) the Time of My Life” took place between 2013 and 2014. Id. at *3.
[6] Id. at *3. “Don’t Phunk with My Heart” was performed at the 2014–2015 “Burbank Blast,” and the “Hotel California” performance occurred at the event one year later. Id. at *3. “When one uses a copyrighted musical composition/song or concert work of any sort, [and combines] it with choreography, costuming, and/or props, [to create] a dramatico-musical work, the license that must be obtained from the rights holder is known as a ‘grand right license.’” Complaint for Copyright Infringement at 3, Tresóna Multimedia, 2016 U.S. Dist. LEXIS 186059 (No. 2:16-cv-04781). This distinction is highly relevant to the show choir context, where costuming, choreography, staging, prop utilization, and storytelling often become key components of the format. For further clarification of the distinct copyright licenses see Complaint for Copyright Infringement at 3, Tresóna Multimedia, 2016 U.S. Dist. LEXIS 186059 (No. 2:16-cv-04781).
[7] Tresóna also named several parent volunteer members of the Burbank High School Vocal Music Association as defendants. See Tresóna Multimedia, 2016 U.S. Dist. LEXIS 186059.
[8] Id.
[9] 17 U.S.C. § 501(b) (emphasis added).
[10] Tresóna Multimedia, 2016 U.S. Dist. LEXIS 186059, at *2, *4–5. Tresóna’s rights to the songs at issue were derived from either the PEN Music Group (“PEN”) or The Royalty Network. PEN controlled only 25% of “(I’ve Had) the Time of My Life” and only one interest in the joint ownership of “Hotel California.” Id. at *4. Similarly, The Royal Network controlled only two out of the total eight interests in “Don’t Phunk with My Heart.” Id. at *4–5.
[11] Id. at *8 (internal quotations omitted).
[12] See id.; Tresóna Multimedia, 953 F.3d.
[13] “The court chose to address the fair use rather than qualified immunity based on the limited applicability of the qualified immunity doctrine.” Tal Dickstein & Jordan Meddy, Tresóna Multimedia, LLC v. Burbank High School Vocal Music Association, Loeb & Loeb LLP, https://www.loeb.com/en/insights/publications/2020/04/tresona-multimedia-v-burbank-high-school-vocal-music-association [https://perma.cc/VPL2-N53W] [https://web.archive.org/web/20230404001938/https://www.loeb.com/en/insights/publications/2020/04/tresona-multimedia-v-burbank-high-school-vocal-music-association] (last visited Apr. 3,2023).
[14] Tresóna Multimedia, 953 F.3d. at 648.
[15] Id. at 648–49.
[16] Id. at 649–50.
[17] Id. at 650.
[18] Id. at 650–51.
[19] Id. at 651-52.
[20] Id.