While many of us have known that every time a bell is rung an angel gets its wings, very few of us have known that for decades Warner Music has been receiving money every time the song “Happy Birthday” was sung as birthday candles were being blown out across America. But there is now good news for birthday clowns, family restaurants and the thousands of others who have collectively paid upwards of $50 million in royalties to Warner Music and its predecessors. Warner Music
has agreed to enter into a $14 million dollar class action settlement for litigiously enforcing rights in the song “Happy Birthday“—rights, it turns out, Warner Music never owned.
Readers of our blog will recall that last August we reported on
Rupa Marya, et al. v. Warner/Chappell Music, Inc., et al. a Federal class action lawsuit in the Central District of California. In that case, Marya, a filmmaker, had filed suit against Warner Music after being billed $1,500.00 to include a performance of the song “Happy Birthday” in her upcoming documentary about the song.
Shortly after we picked up the story, the District Court issued a devastating opinion gutting Warner Music’s copyright claims. Shortly thereafter, the parties reportedly reached a settlement agreement which only became public last Monday. It is unsurprising that a settlement was reached in light of the Court’s well-reasoned, 43 page decision and growing public outrage in being “nickeled and dimed” every time the song was sung as a birthday candle was being blown out.
A critical part of the District Court’s ruling was the distinction between copyrights in a song’s lyrics and a song’s melody. A single work—whether a song, a book, a painting or a sculpture—can have multiple layers of copyright protection—a fact which diligent intellectual property lawyers not only recognize but harness in protecting clients. For songs, a natural bifurcation occurs between a song’s lyrics and a song’s melody.
Under the current copyright laws, any work registered or first published in the United States prior to 1923 is part of the public domain. As discussed in our August article, “Happy Birthday” has an identical melody to an earlier song, “Good Morning to You,” written by the Hill Sisters sometime in the late 1800’s, and first published in 1893. The copyright in “Good Morning to You” was renewed in 1921 and expired in 1949.
Based on this pre-1923 publication, both sides in Marya recognized that the
melody to “Happy Birthday” was borrowed from the Hill Sister’s earlier song “Good Morning to You” and was part of the public domain. In other words, the millions of dollars which Warner Music collected in royalties were not based on an asserted copyright in the melody to “Happy Birthday;” they were based solely on the lyrics.
As also discussed in our last article, the Clayton F. Summy Company (the Hill Sister’s publisher) filed a copyright registration application in 1935 for “Happy Birthday to You“. Under 17 U.S.C. § 209, a copyright registration is ordinarily prima facie evidence of the facts stated in the registration. In other words, a copyright registration creates a rebuttable presumption that the copyright holder has met all the requirements for a valid copyright. This is one of the many benefits of copyright registration and why good Intellectual Property attorneys always consider whether clients may be eligible for copyright protection.
Warner Music argued that the 1935 copyright should be prima facie evidence of the validity in their copyright over the “Happy Birthday” lyrics. Unfortunately for Warner Music, the 1935 registration had several major defects.
The first problem with the 1935 registration was that the registration was so old that there was no longer a deposit copy of the registered work on file in the Library of Congress—leading to doubts whether the registered work even contained the lyrics to “Happy Birthday.” (Ordinarily, a copy of anything registered for copyright is filed with the Library of Congress to avoid exactly this type of ambiguity). While the Court did not heavily focus on this area, Warner Music had a compelling response: in an example of excellent lawyering, attorneys for Warner Music were able to track down a copy of sheet music deposited with the British Museum on the same day as the 1935 registration (likely part of a simultaneous copyright filing in Great Britain)—sheet music which contained the crucial lyrics.
The second problem with the 1935 registration was one of authorship. Oddly, the 1935 registration did not list any of the Hill Sisters as the author of the copyrighted work. Rather, the copyright registration listed “Preston Ware Orem, employed for hire by Clayton F. Summy Co.” as the author. This problem was compounded by the fact that the copyright registration stated that it was an “Application for Copyright for Republished Musical Composition with New Copyright Matter”. The Court properly interpreted this as meaning that the 1935 registration was for a derivative work.
In general, derivative works are those which are based upon one or more preexisting works. Importantly, copyrights in a derivative work are “isolated” from any copyright in the underlying work. This means that the copyright “clock” “starts ticking” for “parent” works independently of any subsequent “child” derivative works which may follow. For example, if a modern artist—inspired by Michelangelo’s “David”—creates a stunning tribute statute, the copyright in the new, derivative statute would belong to the artist, while the copyright in the “David,” the parent work by Michelangelo, would remain a longstanding part of the public domain.
In evaluating what part of the 1935 registration was “new” and what part was “old”, the Court observed that the 1935 registration form had a blank space requiring applicants to “[s]tate exactly on what new matter copyright is claimed” and that the Summy Company had written “Arrangement as easy piano solo, with text”.
Since both parties admitted that Orem did not write the lyrics, the Court reasoned that if the “new matter” included the lyrics, the registration certificate was flawed since it incorrectly listed Orem as the author. Looked at another way, since the parties agreed that Orem did not write the lyrics, the Court reasoned that if the registration certificate was proper (i.e., if Orem was the author of the “new matter”) then, as a derivative work, the lyrics would not have been covered by the registration—only the “new matter” which Orem added would have been protected under the registration.
For these reasons, the Court held that, despite having a copyright registration, there was no presumption that: (i) the Hill Sisters wrote the lyrics to “Happy Birthday;” or (ii) that the Summy Company had any rights to the “Happy Birthday” lyrics at the time of the 1935 registration.
Without the presumption of ownership, the Court examined the various contracts between the Hill Sisters and the Summy Company. Unfortunately for Warner Music (and fortunately for the birthday-singing public) the Hill Sisters had entered into a confusing web of contracts, lawsuits and settlement agreements with the Summy Company over a period of more than 30 years.
In none of these records, however, was there any indication that the Hill Sisters ever assigned their alleged rights in the lyrics to “Happy Birthday.” Rather, all of the documents mentioned things like rights to “various piano arrangements” or to “the publication, sale and performance” of the song. Ultimately, the Court found that there was simply no evidence to show that the Summy Company ever acquired any rights in the lyrics to “Happy Birthday” from the Hill Sisters. Here again is a classic example of the importance of proper contract drafting. A skilled copyright practitioner should never go into any intellectual property sale without knowing: (i) exactly what rights are owned by the other party; and (ii) which of those rights the client wishes to obtain. Without such knowledge, an intellectual property attorney can easily find themselves, like Warner Music, with egg (dare we say birthday cake?) on their face.
