Case 2:16-cv-04781-SVW-FFM Document 157 Filed 01/09/17 Page 1 of 10 Page ID #:5151

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LECLAIRRYAN, LLP
Christiane C. Kinney (State Bar No. 199056)
Christiane.Kinney@leclairryan.com
725 S. Figueroa Street, Suite 350
Los Angeles, California 90017-5455
Telephone: (213) 488-0503
Fax: (213) 624-3755
Attorneys for Third Party Defendants
JOSH GREENE and SQUAREPLAY, INC.
(erroneously sued and served as SQUAREPLAY, INC.
d/b/a SQUAREPLAY ENTERTAINMENT)

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IN THE UNITED STATES DISTRICT COURT

FOR THE CENTRAL DISTRICT OF CALIFORNIA

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TRESONA MULTIMEDIA, LLC, an

Arizona limited liability company,

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Plaintiff,
v.
BURBANK HIGH SCHOOL VOCAL
MUSIC ASSOCIATION; BRETT
CARROLL and JOHN DOE CARROLL, a
married couple; ELLIE STOCKWELL and
JOHN DOE STOCKWELL, a married
couple; MARIANNE WINTERS and
JOHN DOE WINTERS, a married couple;
GENEVA TARANDEK and JOHN DOE
TARANDEK, a married couple; LORNA
CONSOLI and JOHN DOE CONSOLI, a
married couple; CHARLES RODRIGUEZ
and JANE DOE RODRIGUEZ, a married
couple,

Case No.: 2:16-cv-04781-SVW-FFM

JOSH GREENE AND SQUAREPLAY,
INC.S MEMORANDUM OF
CONTENTIONS OF FACT AND LAW
PURSUANT TO L.R. 16-4
Pretrial Conference: 1/30/17
Time: 3:00 p.m.
Courtroom: 10A (1st Street Courthouse)
Judge: Stephen V. Wilson
Complaint Filed: June 29, 2016
Trial Date: February 7, 2017

Defendants.

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AND RELATED THIRD-PARTY

COMPLAINTS.

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JOSH GREENE AND SQUAREPLAY, INC.S MEMORANDUM OF CONTENTIONS

OF FACT AND LAW PURSUANT TO L.R. 16-4
U.S.D.C. Case No. 2:16-cv-04781-SVW-FFM
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Case 2:16-cv-04781-SVW-FFM Document 157 Filed 01/09/17 Page 2 of 10 Page ID #:5152

I. INTRODUCTION

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Pursuant to Local Rule 16-4 of the Local Rules for the Central District of

California, Third Party Defendants JOSH GREENE (Greene) and SQUAREPLAY, INC.

(erroneously sued and served as SQUAREPLAY, INC. d/b/a SQUAREPLAY

ENTERTAINMENT) (Squareplay) (and collectively referred to as Third Party

Defendants) hereby submit this Memorandum of Contentions of Fact and Law.

This main action involves a claim of copyright infringement asserted against the

Burbank High School Vocal Music Association Booster Club (BHSVMA) and various

volunteer parent-members related to the high schools performances of an arrangement of

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the song Magic. The alleged performances occurred during the 2010-2011 school year.1

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BHSVMA filed a Third Party Complaint against one of Burbank High Schools

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vocal music association arrangers, Josh Greene, and his company Squareplay, Inc., for

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indemnity, contribution, and declaratory relief, along with claims for breach of oral or

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implied contract, and breach of implied warranties. BHSVMA alleges that it entered into

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an oral contract with Greene and Squareplay during the 2010-2011 school year to prepare

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musical arrangements for Burbank High School show choirs, including one such

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arrangement containing an excerpt from the musical composition Magic, and that during

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negotiations for the arrangements, Greene/Squareplay represented and/or implied that the

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Arrangements could be used in the show choir, so that, in exchange for the fees paid, if any

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licenses and permissions were necessary for Carroll and the Burbank High School show

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choirs to use the Arrangements, such licenses and/or permissions had been or would be

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obtained by Greene/Squareplay. Greene and Squareplay adamantly deny these allegations

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and have asserted numerous affirmative defenses.

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All other songs originally at issue in this lawsuit were eliminated as a result of Judge Wilsons In Chambers Order
Granting in Part and Denying in Part Defendant Brett Carrolls Motion for Summary Judgment, filed on 12/22/16.
JOSH GREENE AND SQUAREPLAY, INC.S MEMORANDUM OF CONTENTIONS
OF FACT AND LAW PURSUANT TO L.R. 16-4
U.S.D.C. Case No. 2:16-cv-04781-SVW-FFM
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II. STATEMENT OF CLAIMS AND DEFENSES

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a. Plaintiffs Copyright Infringement Claim, and BHSVMAs Claims for

Indemnity, Contribution and Declaratory Relief

Plaintiff Trsona Multimedia, LLC has a single claim for copyright infringement of

the song Magic, which was performed by a high school show choir during spring 2011

of the 2010-2011 school year.

In order to establish its claim against BHSVMA for copyright infringement,

Trsona Multimedia, LLC must prove, by a preponderance of the evidence, that the

plaintiff is the owner of a valid copyright; and the defendant unlawfully copied original

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expression from the copyrighted work. 17 U.S.C. 501. In this action, the unlawful

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copying addresses whether or not the performance of Magic constituted an unlawful

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derivative work under the copyright act. Specifically, Plaintiff must show that the

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arrangement in which the pre-existing work is incorporated has been recast, transformed,

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or adapted as defined under copyright law.

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Josh Greene and Squareplay, as Third Party Defendants in a separate third party

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complaint for indemnity, contribution, and declaratory relief, have raised several

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affirmative defenses to the copyright infringement claims that would support that they

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should not be found secondarily liable in an infringement cause of action. The key

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defenses are summarized below:

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A. Statute of Limitations (Greene/Squareplays 29th Affirmative Defense; see Dckt.

#85).

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Actions for copyright infringement must be commenced within three years after the

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claim accrues. 17 U.S.C. 507(b). The Ninth Circuit employs a discovery rule, in

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which the statute of limitations begins to run on the date that plaintiff knew, or should have

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known, that the infringement occurred. See Polar Bear Productions, Inc. v. Timex Corp.,

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384 F.3d 700, 705-06 (9th Cir. 2004). The parties do not dispute that the high school show

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choir in question, In Sync, performed Magic in 2011, more than three years before filing

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JOSH GREENE AND SQUAREPLAY, INC.S MEMORANDUM OF CONTENTIONS

OF FACT AND LAW PURSUANT TO L.R. 16-4
U.S.D.C. Case No. 2:16-cv-04781-SVW-FFM
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this case. There is also evidence that Trsona gained actual knowledge of this infringement

at least by November of 2014. The question, for purposes of this defense, is whether

Trsona or its publisher, PEN Music Group, Inc., should have discovered the infringing

activity earlier specifically, before June 29, 2013 (three years before the case was filed).

Judge Wilson considered these issues in Carrolls Motion for Summary Judgment,

and specifically, the facts that: (1) the videos were posted to YouTube in 2011 and 2012

and included in the title In Sync, (2) part of Tresonas business is to sell licenses to show

choirs, and thus they would be incentivized to look for infringing activity, (3) Tresona

knew that Burbank show choirs put videos on YouTube because Tresona sent Carroll an

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email in 2012 proposing that Tresona and the Burbank show choir team-up to monetize

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videos posted on YouTube, and (4) PENs President stated in 2015 that he monitored

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YouTube for infringing performances by Burbank show choirs.

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While the Court did not grant summary judgment on this ground, it left credibility

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determinations and weighing of evidence to the jury with respect to these material issues of

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fact.

(See Dckt. 135, p. 6).

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B. Fair Use (Greene/Squareplays 20th Affirmative Defense; see Dckt. #85).

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One who is not the owner of a copyright may use the copyrighted work in a

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reasonable way under the circumstances without the consent of the copyright owner if it

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would advance the public interest. Such use of a copyrighted work is called a fair use.

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Defendants contend that any arrangement of the song Magic constituted a fair use of

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the copyrighted work for purposes of criticism, comment, and teaching. In determining

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whether use of the work was fair, a jury will consider multiple factors, including the

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following:

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Purpose and Character of the Defendants Use, including whether such use is of a

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commercial nature or is for nonprofit educational purposes: Campbell, 510 U.S. at

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579-80, 583, 588 (explaining that the purpose of this element is to investigate the

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commercial nature of the use, whether the use was transformative, whether the use

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JOSH GREENE AND SQUAREPLAY, INC.S MEMORANDUM OF CONTENTIONS

OF FACT AND LAW PURSUANT TO L.R. 16-4
U.S.D.C. Case No. 2:16-cv-04781-SVW-FFM
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tended to supplant or supersede the infringed work, and whether the use parodied or

conjure[d] up the infringed work); Seltzer, 725 F.3d at 1176-77 (finding bands

use of artists original work in its four-minute concert video backdrop

transformative because original work took on new and different meaning in video);

SOFA Entmt, Inc. v. Dodger Prods., Inc., 709 F.3d 1273, 1278 (9th Cir.2013)

(stating that use of seven-second television clip that introduces band as

biographical anchor in musical about band supports finding of fair use); Elvis

Presley Enters., 349 F.3d at 629 (Courts have described new works as

transformative when works use copyrighted material for purposes distinct from

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the purpose of original material);

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Nature of Copyrighted Work: Campbell, 510 U.S. at 586 (considering whether work

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is factual or creative in nature and whether it was published); Seltzer, 725 F.3d at

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1178 (noting that prior publication by original author tends to support finding of fair

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use); Bleem, 214 F.3d at 1028 (explaining that nature of copyrighted work is most

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relevant when the original material and the copy are of a different nature);

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Amount and Substantiality of Portion of Infringed Work Used by Infringing Work in

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Relation to the Copyrighted Work as a Whole: Campbell, 510 U.S. at 586-88

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(explaining importance of quantity of materials used, as well as their quality and

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importance); Seltzer, 725 F.3d at 1178-79 (addressing when original works are

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copied in full because they are not meaningfully divisible);

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Effect of Use of Infringing Work on the Potential Market for or Value of the

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Copyrighted Work: Campbell, 510 U.S. at 590-91, n.21 (assessing harm use can

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cause to plaintiffs market and market effect if others also infringe through such

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use; considering if use displaces or substitutes for original work; examining effect

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of use on derivative market for protected work; noting that the importance of this

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[fourth] factor will vary, not only with the amount of harm, but also with the

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relative strength of the showing on the other factors); Harper & Row, Publishers,

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JOSH GREENE AND SQUAREPLAY, INC.S MEMORANDUM OF CONTENTIONS

OF FACT AND LAW PURSUANT TO L.R. 16-4
U.S.D.C. Case No. 2:16-cv-04781-SVW-FFM
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471 U.S. at 566 (noting that effect of defendants infringing work on market for or

value of plaintiffs work is most important of fair use factors); SOFA Entmt, Inc.,

709 F.3d at 1280 (explaining that this factor favors finding of fair use when use

advances [the alleged infringers] own original creation without any reasonable

threat to [the original authors] business model); Dr. Seuss Enters., 109 F.3d at

1403 (balancing public benefit that will result from defendants use against personal

gain copyright owner will receive if use is denied); and

Additional Factors: Campbell, 510 U.S. at 585 n.18 (considering defendants state

of mind and explaining that permission is not necessary if use is fair); Harper &

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Row, Publishers, 471 U.S. at 562 (stating fair use presupposes good faith and fair

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dealing); Fisher v. Dees, 794 F.2d 432, 437 (9th Cir.1986) (courts may weigh the

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propriety of the defendants conduct in the equitable balance of a fair use

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determination).

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C. Waiver (Greene/Squareplays 14th Affirmative Defense; see Dckt. #85).

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The reason Greene and Squareplay were not named in the main action for direct

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copyright infringement is because Greene responded to Trsonas initial requests to submit

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custom arrangements through their system moving forward, to sign the required work for

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hire agreements, and to obtain the necessary permissions to arrange in the future, in

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exchange for immunity from his alleged past infringements.

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Further, Greene, in spite of having immunity, proposed payment for the charts he

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wrote for the last two years, to send a good message to the show choir community.

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Trsonas response was that they were taking it in trade, and as such, his offer to pay for

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the charts was declined.

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D. Laches (Greene/Squareplays 13th Affirmative Defense; see Dckt. #85).

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Laches is an equitable defense, in which a claim will not be allowed due to

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unreasonable delay by the plaintiff in bringing a claim. In the instant case, the evidence

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will show that publishers were uninterested in custom arrangement licenses back in 2011.

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JOSH GREENE AND SQUAREPLAY, INC.S MEMORANDUM OF CONTENTIONS

OF FACT AND LAW PURSUANT TO L.R. 16-4
U.S.D.C. Case No. 2:16-cv-04781-SVW-FFM
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Even after Trsona entered the scene and attempted to secure licenses for alleged past

infringements, they only pursued infringements from 2013 2015. As such, any alleged

infringement from 2011 should be eliminated from this case under the doctrine of laches.

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E. Authorization,

License,

Acquiescence,

Ratification,

Consent

(Greene/Squareplays 16th Affirmative Defense; see Dckt. #85).

PEN Music Group, Inc. entered into an Agreement for License to Arrange, Print

and Sell with Custom Arrangements on June 26, 2013 for Greenes arrangement of

Magic. Custom Arrangements then entered into a Royalty Agreement Contract with

Greene for his arrangement on July 6, 2013. While this license to arrange, print and sell

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the custom arrangement of Magic was entered into for a three year period that

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commenced after the alleged infringement, it supports consent and acquiescence with

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respect to the arrangement in question.

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F. Lack of Willfulness / Good Faith (Greene/Squareplays 18th and 19th Affirmative

Defense; see Dckt. #85).

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Greene/Squareplay will also raise affirmative defenses supporting a lack of

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willfulness and good faith on their part. An infringement is considered innocent when

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defendant has proved that it was not aware that his acts constituted infringement of the

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copyright, and defendant had no reason to believe that his acts constituted an infringement

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of the copyright. 17 U.S.C. 504(c)(2). While any infringement in this case is wholly

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denied, if infringement was found, defendants contend that their innocence mandates a

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reduction in the statutory damages.

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b. BHSVMAs Claims for Breach of Implied/Oral Contract, Warranty,

Indemnity, Contribution and Declaratory Relief

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BHSVMA has asserted affirmative claims for breach of implied/oral contract and

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breach of implied warranties. To recover damages for breach of implied or oral contract,

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BHSVMA must prove all of the following: (1) That BHSVMA and Greene/Squareplay

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entered into an oral and/or implied contract; (2) that BHSVMA did all, or substantially all,

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JOSH GREENE AND SQUAREPLAY, INC.S MEMORANDUM OF CONTENTIONS

OF FACT AND LAW PURSUANT TO L.R. 16-4
U.S.D.C. Case No. 2:16-cv-04781-SVW-FFM
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of the significant things that the contract required it to do; (3) that Greene/Squareplay did

something that the contract prohibited him/it from doing; and (4) that BHSVMA was

harmed by Greene/Squareplays breach of contract.

purported breach of implied warranty, BHSVMA must prove: (1) that BHSVMA and

Greene/Squareplay entered into a contract; (2) that BHSVMA did all, or substantially all of

the significant things that the contract required it to do; (3) that all conditions required for

Greene/Squareplays

Greene/Squareplay unfairly interfered with BHSVMAs right to receive the benefits of the

contract; and (5) that BHSVMA was harmed by Greene/Squareplays conduct. CACI

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performance

had

occurred

CACI 303.

or

were

With respect to a

excused;

(4)

that

325.2

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Third Party Plaintiff BHSVMA attempts to shift blame on the schools own

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arranger, alleging that he either stated or implied that no licenses were required in

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exchange for his arrangements. Notwithstanding the fact that no school district or booster

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club in its right mind would leave themselves exposed in this regard by leaving complex

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copyright and licensing issues in the hands of an independent arranger without bothering to

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document it no evidence has been offered to support that there was a direct contractual

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relationship oral, implied or otherwise between Greene/Squareplay and BHSVMA.

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They simply paid the bills.

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contract-based claims.

As such, BHSVMA cannot establish the first element of its

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Additionally, Greene/Squareplay have asserted numerous affirmative defenses to

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the claims in the Third Party Complaint. In addition to the affirmative defenses raised

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above, and without waiving and subject to all affirmative defenses set forth

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Greene/Squareplays Answer on file, some of the additional key defenses are outlined in

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further detail below:

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In addition to its contract-based claims, BHSVMA has asserted claims for equitable indemnity, contribution, and
declaratory relief, which will only be relevant if BHSVMA is found liable for copyright infringement in the
underlying action, and further establishes that Greene/Squareplay contributed to the purported copyright infringement.
JOSH GREENE AND SQUAREPLAY, INC.S MEMORANDUM OF CONTENTIONS
OF FACT AND LAW PURSUANT TO L.R. 16-4
U.S.D.C. Case No. 2:16-cv-04781-SVW-FFM
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A. Estoppel / Unclean Hands / Lack of Mitigation (Greene/Squareplays 15th, 24th

and 27th Affirmative Defense; see Dckt. #85).

BHSVMAs Third Party Complaint should be dismissed as to Greene and

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Squareplay on the grounds of estoppel and unclean hands, and lack of mitigation.

California has long recognized the maxim that No one can take advantage of his

own wrong. Civ. Code 3517. In other words, [h]e who comes into equity must come

with clean hands. See, Wilson v. S.L. Rey, Inc. (1993) 17 Cal.App.4th 234, 244; Kendall-

Jackson Winery, Ltd. v. Superior Court (1999) 76 Cal.App.4th 970, 978.

protects judicial integrity because allowing a plaintiff with unclean hands to recover in an

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action creates doubts as to the justice provided by the judicial system. Thus,

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precluding recovery to the unclean plaintiff protects the courts, rather than the opposing

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parties interest. . . . The doctrine promotes justice by making a plaintiff answer for its own

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misconduct in the action. It prevents a wrongdoer from enjoying the fruits of his

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transgression . . .

It

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Greene was hired not by anyone in the BHSVMA, but by a school employee who

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was recently dismissed from this action under a qualified immunity defense to create an

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arrangement for the show choir group, In Sync. Squareplay was paid $1,200.00 for its

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arrangement of Magic. The schools vocal music program then publically performed

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that arrangement in multiple performances all over the country.

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Importantly, when Trsona claimed that licensing fees were owed for these

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performances many years later, Greene worked out a potential resolution for his and

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other arrangers charts, under which BHSVMA and the Burbank High School District

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would owe nothing for alleged past infringements, and would even have a handsome

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donation made to their vocal music program. They declined that offer. As such, they

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should be estopped from attempting to shift blame onto their arranger, who went out of his

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way to insulate them from harm. Their failure to mitigate their own damages or to accept

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JOSH GREENE AND SQUAREPLAY, INC.S MEMORANDUM OF CONTENTIONS

OF FACT AND LAW PURSUANT TO L.R. 16-4
U.S.D.C. Case No. 2:16-cv-04781-SVW-FFM
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an offer of amnesty from the publishers and Trsona was the cause of their harm and

nothing more.
III.

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Not applicable.
IV.

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BIFURCATION OF ISSUES

JURY TRIAL

Yes, a timely demand for trial by jury was made by all parties in this case.

V. ATTORNEYS FEES

As is set forth in Greene/Squareplays Eleventh Affirmative Defense, Third Party

Plaintiffs Complaint, and each cause of action alleged therein, fails to state facts sufficient

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to entitle BHSVMA to recover attorneys fees and costs against Greene/Squareplay.

VI. ABANDONMENT OF ISSUES

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It is our understanding that Plaintiff has abandoned claims against the spouses of

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the parent board members. Likewise, since Brett Carroll was recently dismissed from the

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case, he has not engaged in any trial preparation or other activities with respect to his third

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party complaint on file as against Josh Greene and Squareplay, Inc. and we contend that

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this pleading has effectively been abandoned.

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Respectfully Submitted,

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LECLAIRRYAN LLP

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Dated: January 9, 2017

By: /s/ Christiane Kinney

Christiane Kinney
Attorneys for Third Party Defendants
JOSH GREENE and SQUAREPLAY,
INC.

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JOSH GREENE AND SQUAREPLAY, INC.S MEMORANDUM OF CONTENTIONS

OF FACT AND LAW PURSUANT TO L.R. 16-4
U.S.D.C. Case No. 2:16-cv-04781-SVW-FFM
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