3:08pm PT by Eriq Gardner
Here's Warner/Chappell's Plan to Save the "Happy Birthday" Copyright
No, the "Happy Birthday to You" song copyright case is not over. Far from it. And the stakes are getting larger.
On Sept. 22, U.S. District Judge George H. King made headlines everywhere with a ruling determining that Warner/Chappell Music never acquired a valid copyright to the lyrics of the English language's most popular song. The federal judge stopped short of declaring the song to be in the public domain, but the opinion was celebrated by many who believe the copyright term is too long, that a work that traces back to a 19th century schoolteacher named Patty Smith Hill and her sister Mildred Hill shouldn't be under protection. If the ruling stands, filmmakers will no longer have to pay to feature "Happy Birthday" in motion pictures and television shows.
But again, the case isn't over. The plaintiffs including director Jennifer Nelson — who is making a documentary about "Happy Birthday" and was asked to pay a six-figure license fee — still want a court to go that extra step by having the song declared in the public domain. Insofar as there are triable issues like whether copyright was abandoned, both sides are targeting a trial around May 2017. And before then, the judge will have to address other issues like whether to certify a class action and whether Warner/Chappell should also stand trial for all the money it has raked in from licensing the song without a valid copyright.
Even a trial 18 months hence could be an optimistic timeline given a dispute that could hold some U.S. Supreme Court potential.
On Thursday, Warner/Chappell began an effort to save the "Happy Birthday" copyright by asking for a second and maybe a third opinion. The music publisher is seeking Judge King's reconsideration of his September ruling and, as an alternative, has requested permission to file an immediate appeal.
In his opinion last month, King ruled that it was "unclear" whether the 1935 copyright registration that the publisher is relying upon included lyrics to the song in addition to a piano arrangement. Further, the judge noted that the registration deposited with the U.S. Copyright Office listed "Preston Ware Orem" as the author even though nobody believes Orem wrote the "Happy Birthday" lyrics. The judge decided that the registration was "flawed," which is important because a registration typically entitles its owner to a presumption of copyright validity.
In new court papers, Warner/Chappell argues, "Courts uniformly apply the presumption of validity where errors in registration are non-fraudulent and immaterial. That rule applies where the registration omits or misstates an author, because that is an immaterial error."
Judge King previously shrugged off legal authority for the position that mistakes in registration records have no bearing on evidentiary presumption, but Warner/Chappell is now coming forward with some case law citations including the famous Napster case to argue that a flawed registration isn't necessarily damning. King might continue to regard the argument as irrelevant or lacking, but if or when Warner/Chappell brings this issue to the 9th Circuit Court of Appeals, it will trigger a meaningful review for other copyright owners including Hollywood film studios who rely on registrations made decades ago when record-keeping wasn't quite as careful as it is today.
Warner/Chappell believes that the judge should have afforded more presumption to the validity of the copyright, but it is also pushing for review into how the judge came to the conclusion that rights to lyrics never transferred from Hill to the song publishers. Specifically, on the chain-of-title issue, Warner/Chappell argues that King failed to consider the complete language of a 1944 settlement between Hill and Warner/Chappell's predecessor. There, the judge decided that nothing about the agreement concerned lyrics, but Warner/Chappell points out that in the '44 agreement, the Hill sisters transferred all of their "right, title and interest ... in and to" a list of specifically enumerated "books and musical compositions" published, including " 'Happy Birthday to You,' Piano Solo with Words."
The defendant emphasizes that last part. Should a jury decide what's meant by "words"?
"There’s no basis for the motion," responds an attorney for the plaintiffs, given a chance to comment on Warner/Chappell's new motion. "This case isn’t about the validity of the copyrights, it’s about the narrow scope of them. Judge King carefully sifted through a mountain of evidence and found no factual dispute that the copyrights covered only two old piano arrangements composed by [music publisher] Summy’s employees, who defendants now admit did not write the "Happy Birthday" lyrics. They simply refuse to accept those basic facts, which Judge King found were not even in dispute."
Judge King is surely aware of the attention this case has received and went through a lot of effort to construct a detailed 43-page opinion, so it would be quite shocking if he changed his mind. To do so, would basically be admitting to the entire world he made errors after spending six months reviewing the record after the summary judgment hearing. Instead, the really hard decision for the judge might be whether to certify an appeal now or let the case proceed to trial, where it could be determined that "Happy Birthday" belongs to the public domain on other grounds such as copyright abandonment or divestive publication (see the plaintiff's "smoking gun"). Then again, if Warner/Chappell won on appeal, that might save the judge from having to go to trial. If the judge doesn't certify an interlocutory appeal, Warner/Chappell would still have the right to seek appellate review once the trial is complete.
One school of thought might posit that since the class-action attorneys who are bringing this lawsuit presumably aim to win money on top of the accolades that have come for pushing to free "Happy Birthday," the case could be settled. Through this lens, Warner/Chappell's bid to seek appeal could be viewed as a way to maximize its negotiating leverage by scaring the other side with the prospect of several more years of expensive litigation until they see their theoretical payday. (It's theoretical because even if "Happy Birthday" is ruled to be in the public domain, Warner/Chappell could potentially defeat allegations of unfair practices as an honest mistake or limit their damages exposure to just the most recent few years.)
But the problem with such a view is that Warner/Chappell expected to have "Happy Birthday" under copyright until 2030, and if revenue estimates are to be believed, that adds up to about $30 million in licensing income the publisher would be walking away from. Moreover, the issue of copyright validity presumption through registration is a minefield that the "Happy Birthday" case might have stumbled into. For many, the case has been about the evils of the long copyright term — and after last month's decision, about the problem of "orphan works" — but as the "Happy Birthday" case moves forward, it could touch an industry's nervous spot by inviting larger scrutiny to skeletons in the copyright closet. Happy birthday, Dear Hollywood.