Chain of Title Proves Fatal to “Happy Birthday” Copyright Claim (Guest Blog Post)

Chain of Title Proves Fatal to “Happy Birthday” Copyright Claim (Guest Blog Post)

By Guest Blogger Tyler Ochoa

“Happy Birthday” has been described as “The World’s Most Popular Song.”  It is sung almost every time that people gather to celebrate a birthday.  The “almost” in the previous sentence acknowledges that many restaurants direct their employees to sing a (usually inane) substitute, allegedly in order to avoid paying royalties to Warner/Chappell Music, which claims to own a copyright in the lyrics to “Happy Birthday.” The basis of Warner/Chappell’s claim is a copyright registration (Number E51990) made in 1935 by the Clayton F. Summy Co., a music publisher, and (allegedly) Warner/Chappell’s predecessor-in-interest.

On September 22, 2015, a federal district ruled on a motion for summary judgment that Warner/Chappell does NOT own a valid copyright in “Happy Birthday.”  Marya v. Warner/Chappell Music, Inc., No. CV-13-4460, 2015 WL 5568497 (C.D. Cal. 2015).  Although the court found several triable issues of fact that would have to be resolved by a jury, it found one fatal flaw in Warner/Chappell’s claim: even assuming that the jury found authorship of the lyrics by the person alleged by Warner/Chappell, the judge ruled that there was not enough evidence from which a reasonable jury could find that the author had assigned the lyrics to Summy. While it was widely reported that the judge had ruled that “Happy Birthday” was in the public domain, technically that was not the case.  That may be the practical effect of the ruling, however, as Warner/Chappell is the only known party who claims to own a copyright interest in “Happy Birthday,” and it is extremely unlikely that any other copyright claimant will ever come forward. Thus, if the ruling is upheld on appeal, and Warner/Chappell’s claim is confirmed to be invalid, the song “Happy Birthday” will effectively, if not legally, become a part of the public domain.

History of the Lawsuit

Warner/Chappell’s copyright claim has become a symbol of all that is wrong with copyright term extension and the length of copyright terms under current law. Justice Breyer, for example, specifically mentioned “Happy Birthday” in his dissent in Eldred v. Ashcroft, 537 U.S. 186, 262 (2003), asking whether the rationale for copyright term extension could “justify yet further extension of the copyright on the song Happy Birthday to You (melody first published in 1893, song copyrighted after litigation in 1935), still in effect and currently owned by a subsidiary of AOL Time Warner?”

Intrigued by Justice Breyer’s question, Professor Robert Brauneis of the George Washington University Law School researched the issue and published the definitive account of the history of “Happy Birthday” in 2009. Copyright and the World’s Most Popular Song, 56 J. Copyr. Soc’y USA 335 (2009). He concluded that the song is almost certainly in the public domain, for various reasons that will be discussed below. (See his archive of documentary evidence). His article, in turn, inspired a documentary filmmaker, Jennifer Nelson, to make a documentary film about the history of the song.  She sought a license from Warner/Chappell, and her production company, Good Morning to You Productions, paid a fee of $1,500 for the rights to use the lyrics, a relatively small amount of money compared with what Warner/Chappell reportedly charges Hollywood studios to use the song.  (It is estimated that Warner/Chappell earns about $2 million in royalties per year from “Happy Birthday.”)  GMTY then filed a class-action lawsuit in federal court, challenging the validity of Warner/Chappell’s copyright claim, and seeking a refund for all people who had paid a licensing fee to Warner/Chappell in the four years preceding the filing of the lawsuit. That suit was later re-filed in the Central District of California and consolidated with a similar suit that was already pending there, brought by the named plaintiff Rupa Marya. Marya is the lead singer of a band that paid Warner/Chappell a $455 fee to make a recording of “Happy Birthday.”

Legal Background

Before 1978, under the 1909 Copyright Act, U.S. copyright law had a dual system of copyright protection.  Unpublished works were protected by state law (common-law copyright), which provided a right of first publication.  Once a work was published, with the authorization of the copyright owner, state-law was divested, and one of two things happened.  If the work was published with a proper copyright notice, it received a federal statutory copyright of 28 years, and the copyright could be renewed once for another 28 years.  (The renewal term was extended to 47 years in 1976, and to 67 years in 1998.)  If the work was published with authorization, but without a proper copyright notice, it entered the public domain.

Warner/Chappell claims that “Happy Birthday” was written in the 1890s, but was not published with authorization (and registered) until 1935.  That registration was renewed in 1962 (during the 27th year of the copyright), so it received a second term of 28 years, which has since been extended to 67 years, to the end of 2030.  The declaratory-judgment plaintiffs claim, in the alternative, that 1) “Happy Birthday” was published with authorization before 1923; 2) “Happy Birthday” was published with authorization before 1935, but without a proper copyright notice; 3) the copyright in “Happy Birthday” was abandoned before 1935; 4) the registration made by Summy in 1935 covers the piano arrangement only, and not the lyrics; and 5) Warner/ Chappell cannot prove that it acquired the copyright through a proper chain of title.  Any one of the first four defenses, if proved, would put “Happy Birthday” into the public domain in the U.S.; while the fifth would leave Warner/Chappell unable to enforce its purported copyright.

An important factor in the court’s ruling was the burden of proof.  Ordinarily, a timely certificate of copyright registration is entitled to a presumption of validity.  Because Summy registered “Happy Birthday” in 1935, Warner/Chappell argued it was entitled to a presumption of validity.  But the court refused to grant a presumption of validity to the 1935 registration for two reasons.  First, although Warner/Chappell has a copy of the registration certificate, the deposit copy has been lost, so we cannot be certain exactly what was deposited (and therefore presumed to be protected by copyright).  (Warner/Chappell introduced a copy of the song that was deposited in the British Library at the same time, and asked the court to infer that the U.S. deposit copy was the same; but the plaintiff contends a different version was the deposit copy.)  Second, the registration certificate described the “new matter” added as “arrangement as easy piano solo, with text,” and credited “Preston Ware Orem” as the author.  Since Warner/Chappell does not claim that Orem authored the lyrics to “Happy Birthday,” it is unclear whether the registration certificate was intended to cover the lyrics as well as the new piano arrangement. If the “new matter” included the lyrics, then Orem could not have been the author; and if Orem was the author, then the “new matter” could not include the lyrics.

Accordingly, the court placed the burden on Warner/Chappell to show that it owned a valid copyright in “Happy Birthday.”  It placed the burden on the declaratory-judgment plaintiffs to show that the copyright was invalid by reason of authorized publication before 1923, by reason of authorized publication without notice, or by abandonment.  Placing the initial burden on Warner/Chappell turned out to be critical.

History of the Song

c6p88cs7The tune that we know as “Happy Birthday” was composed in the 1890s by Mildred and Patty Hill.  Patty Hill was a kindergarten teacher, and her older sister Mildred was a composer.  Together, they developed several songs for the children to sing, including a greeting song with the lyrics “Good Morning to All.”  That song was assigned to Summy and was first published in a songbook for children (with other songs by the Hills) in 1893.  Another sister, Jessica Hill, renewed the copyright in the songbook (as heir to Mildred) in 1921, and the copyright expired in 1949, putting the melody and lyrics of “Good Morning to All” in the public domain.

Who first put the tune together with the now-familiar lyrics of “Happy Birthday to You” is a disputed question of fact. The first published reference to the song with the “Happy Birthday” lyrics is from 1901. The first published version of the song with the “Happy Birthday” lyrics was in 1911. Other published versions appeared in 1922, 1924, and 1928. While none of these publications gave an express authorship credit, several of the collections in which the song appeared credited other people as the authors (although those credits may simply refer to what today we would call the “compiler,” or the editor of the compilation).

In the 1930s, “Happy Birthday” appeared in several movies and one Broadway play.  In 1934, Jessica Hill filed an infringement lawsuit against the producers of the play for infringing the tune of “Good Morning to All.”  In that lawsuit, Patty Hill testified that she had used the lyrics of “Happy Birthday” together with the tune of “Good Morning to All” back in the 1890s.  In the current case, the trial judge found that there was a genuine issue of material fact as to who wrote the lyrics to “Happy Birthday.”  A jury might believe that Patty Hill wrote the words back in 1893, but did not claim credit until 1934; or it might believe that the words were written by one of the other authors credited in the published versions, or by some unknown person. (When Summy published the song, it initially credited only Mildred Hill, not Patty Hill.)

Another issue is whether the copyright was lost by authorized publication without proper copyright notice (or authorized publication before 1923).  Plaintiff’s “smoking gun” on this issue was a newly-discovered 1922 publication of a songbook containing the song “Happy Birthday,” with the legend “Special permission through courtesy of The Clayton F. Summy Co.”  If Summy held the rights to the song at this time, this would be an authorized publication without proper notice, which would place the work in the public domain.  The court, however, held that there was a genuine issue of material fact as to whether Summy held the rights to the lyrics at this time, or whether the publication had been authorized by the (uncertain) author of the lyrics.

A third issue is the issue of abandonment.  If Patty Hill wrote the lyrics to “Happy Birthday” in 1893, why didn’t she sue any of the publishers who published the lyrics with her tune in the ensuing four decades?  The court ruled that mere inaction, such as a failure to pursue infringers, was not, by itself, sufficient evidence of abandonment.  The plaintiffs also presented an article in TIME Magazine, which claimed that Hill “long ago resigned herself to the fact that her ditty had become common property of the nation.” The court ruled that the evidence was admissible (under hearsay exceptions for ancient documents and statements against interest), and that if a jury believed that Hill herself made such a statement, it could constitute sufficient evidence of abandonment.  But the court again ruled that whether Hill had made such a statement (and if so, what she meant by it) was a triable issue of fact for the jury.

In 1934, Jessica and Patty Hill executed a second agreement assigning some works to Summy.  Warner/Chappell contends that this assignment included “Happy Birthday” with lyrics, and that the assignment was the basis for the copyright registration.  Defendants claim that the 1934 assignment covered “various piano arrangements” only.  Here, the burden of proof issue proved to be critical, because no copy of the 1934 agreement survives.  We only know that such an agreement existed because of a subsequent lawsuit, filed in 1942, between the Hill Foundation (created by Patty and Jessica Hill) and the Summy Company for breach of contract.  That lawsuit alleged that the 1893 assignment did not allow Summy to authorize the use of the melody in motion pictures, and that as a result of the breach, the Hill Foundation sought to terminate the 1934 agreement.  Because the judge placed the burden of proof on Warner/Chappell, it had to prove that the 1934 agreement transferred the copyright to “Happy Birthday” (including the lyrics) to Summy.  The trial court ruled that no reasonable jury could find that the 1934 agreement did so.  All references to the 1934 agreement in the pleadings and testimony in the 1942 lawsuit refer to “piano arrangements” only.  Moreover, the entire theory of the 1942 lawsuit was that Summy was granting public performance rights to “Happy Birthday” in motion pictures without authorization; but the Hills admitted that the 1934 agreement included public performance rights (whereas the 1893 agreement did not).  Therefore, if the 1934 agreement had included the lyrics to “Happy Birthday” combined with the melody, Summy would have had a complete defense that was never raised.

The 1942 lawsuit was settled with a third agreement, dated 1944, in which the Hills granted to Summy all of their rights in eleven different registered copyrighted works, including E51990 and four other piano versions of the song (presumably, the “various piano arrangements” of the 1934 agreement). The 1944 agreement does not mention any lyrics; it refers only to the previously registered versions.  Thus, the court concluded, the argument that the 1944 agreement covers the lyrics is “circular”; it could only cover the lyrics if the lyrics had previously been granted by the 1934 agreement.  Moreover, the court noted that the Hills had never filed any infringement lawsuits based on the lyrics to “Happy Birthday,” but only had sued based on the melody; and they never tried to register “Happy Birthday” separately, even though Patty claimed to have written the lyrics in 1893.  Thus, it concluded that Warner/Chappell could not meet its burden of proving that its predecessor Summy had ever received an assignment to the lyrics of “Happy Birthday” from the author of those lyrics.  Since the melody has long since entered the public domain, the lack of proof concerning transfer of the lyrics was fatal to Warner/Chappell’s claim of copyright in the song.

What Happens Next?

The district court still has to resolve the second issue in the litigation, namely, whether Warner/Chappell must refund any royalties it has collected for “Happy Birthday” in the four years before the lawsuit was filed.  It is not entirely clear what the basis for this relief is; there is nothing in the Copyright Act that specifically allows a cause of action for negligent or fraudulent claims of copyright infringement based on an invalid copyright.  (17 U.S.C. § 506(c) is a criminal provision that allows the Justice Department to prosecute someone for fraudulent use of a copyright notice, with a maximum fine of $2,500, but it is rarely, if ever, used.)  Plaintiff’s counsel might want to take a look at Paul Heald’s article, Payment Demands for Spurious Copyrights: Four Causes of Action, 1 J. Intell. Prop. L. 259 (1994), for some suggestions (breach of warranty, unjust enrichment, fraud, and false advertising).

The plaintiffs did include a claim under California’s Unfair Competition Law (Bus. & Prof. Code § 17200), but one could question whether that claim is preempted, and whether it can be used to provide relief to plaintiffs who do not reside in California. Moreover, even if there is a cause of action for negligent or fraudulent claims of copyright, it is not clear that Warner/Chappell’s claim was either negligent or fraudulent.  It does have a registration, after all, and it has a non-frivolous argument that the registration covers the lyrics to “Happy Birthday.”  Whether Warner/Chappell should be required to refund royalties based on a copyright claim that appeared to be valid, but turned out not to be, is still an open question.  The district court also has to decide whether to certify the case as a class action or not.

After a final judgment, Warner/Chappell will undoubtedly appeal the ruling to the Ninth Circuit.  The potential revenue stream (about $2 million a year for the next 15 years) is simply too great.  It may even seek to have the district court certify an interlocutory appeal, which might make sense, because a reversal could end up mooting the refund and class certification issues.  Warner/Chappell has two potential issues for appeal: first, whether the district court properly refused to grant a presumption of validity to its registration certificate; and second, whether the district court properly held that no reasonable jury could find that the 1934 agreement included the lyrics to “Happy Birthday.”

But even if Warner/Chappell succeeds in getting the Ninth Circuit to overturn the ruling on the chain of title, it still has to go to trial on the issues of whether Patty Hill wrote the lyrics; whether there was an authorized publication without notice (or one before 1923); and whether there was an abandonment.  The Ninth Circuit could also hold that whether the 1934 agreement transferred the lyrics to Warner/Chappell was a triable issue of fact.  Any one of those issues could prove fatal to its copyright claim. In other words, Warner/Chappell has a very big hill to climb in order to get its copyright back.  (In the meantime, non-mutual collateral estoppel will likely prevent it from enforcing its copyright against any party willing to file a lawsuit.)

Further Implications

Regardless of how the case is ultimately resolved, this case demonstrates three things.  First it shows that even well-funded copyright owners are often unable to produce records demonstrating their ownership of a valid copyright.  This is hardly the first case where a large corporation has been unable to locate documents critical to its chain of title.  Fleischer Studios, for example, was unable to document its ownership of the copyright to “Betty Boop.” Fleischer Studios, Inc. v. A.V.E.L.A., Inc., 654 F.3d 958 (9th Cir. 2011).  (To be fair, we are used to a world where there are numerous digital copies; and the previous generation was used to a world in which photocopiers were readily available to make multiple copies.  Back in the 1930s, if you wanted an extra copy of a document, you had to pay someone to type it by hand.)

Second, this case demonstrates some of the problems that copyright term extension causes for litigants who are attempting to prove who did what decades earlier.  Under the 1909 Copyright Act, a copyright registered in 1935 would have expired in 56 years later, in 1991.  Even that would have presented problems of proof with regard to events that happened decades earlier.  By extending copyrights for another 39 years beyond that, Congress has made it nearly impossible for us to really know what happened more than a century earlier.  Such uncertainty, and uncertainties regarding chain of title, has created thousands of orphan works (works for whom the copyright owner or status is unknown, or cannot be located).

Third, these problems make the burden of proof issue critical, because wherever it is placed, it is likely that the proponent will be unable to satisfy it.  Had the trial judge placed the burden of proof on the declaratory-judgment plaintiffs to prove that Warner/Chappell did not own the copyright to “Happy Birthday,” the case easily (although not inevitably) could have come out the other way.

While we await the ultimate outcome, we can celebrate two anniversaries. October 13, 2015, marks the 122nd anniversary of the publication of the original songbook containing “Good Morning to All,” the melody of which was later combined with the words “Happy Birthday to You.”  And December 6, 2015, marks the 80th anniversary of the registration that forms the basis of Warner/Chappell’s copyright claim to the lyrics of “Happy Birthday.”  Thanks to the district court’s ruling, we can all sing “Happy Birthday” to the song itself on both occasions, without fear of liability to Warner/Chappell for unauthorized public performance.