Introduction

In a recent U.S. judgment of Rupa Marya v. Warner Chappell Music Inc, Case No. 2:13-cv-04460, the copyright in the popular song “Happy Birthday” (“Song”) of Warner Chappell Music Inc. and Summy-Birdchard Inc. (collectively, “Defendants”) was in disputed by a group of artists (“Plaintiffs”).  The Plaintiffs claimed that the copyright in the Song did not belong to the Defendants and the Defendants should be compelled to return the “millions of dollars of unlawful licensing fees” they have collected by wrongfully asserting copyright ownership in the lyrics to the Song.  This article will summarise the key points of the judgment of the U.S. District Court (“Court”).

Background

The melody to the Song was written in 1890s, which is called “Good Morning To All” composed by Midred Hill and Patty Hill (collectively, “Hill sisters”).  The melody of the Song is the same as that of “Good Morning To All” and the origins of the melody was not disputed by the parties.  However, the origins of the lyrics to the Song are less clear and, in 1911, the full lyrics to the Song was first published in a song book in which the author of the lyrics was not identified.  In 1935, Clayton F. Summy Company (“Summy Co.”) registered copyrights to two works entitled “Happy Birthday to You” with registration numbers E51988 and E51990.  In the present action, the Defendants argued that the Hill sisters wrote the lyrics to the Song and then transferred the common law copyrights in the lyrics to the Defendants by way of contract (through Summy Co.) before 1935.  On the contrary, the Plaintiffs argued that the lyrics may have been written by someone else, the common law copyrights in the lyrics were lost due to general publication or abandonment before the lyrics were published, and the rights were never transferred to Summy Co.  The present proceeding was a hearing on the cross-motions for summary judgment.

The Court’s Decision

Presumption of validity

The Court acknowledged that there is a rebuttable presumption that the holder of the copyright registration certificate has met all the requirements for copyright validity and has valid copyright in the subject matter.  Once a claimant shows that he or she has a registration certificate, the burden of proof shifts to the opposing party who must offer some evidence or proof to dispute or deny the claimant’s prima facie case.  The Court further elaborated on this legal proposition that the presumption of validity is rebutted when there is a material mistake in the registration.  The Defendants claimed that Summy Co. registered the lyrics in E51990, but the Court disagreed on the grounds that this registration does not list any of Hill sisters as the author or otherwise make clear that the lyrics were being registered (the copyright registration certificate only stated that as easy piano solo “with text” without setting out the text of the lyrics).  Therefore, the Court was of the view that the presumption was rebutted.

Authorship of the lyrics

As the presumption was rebutted, the Court considered that the Defendants had to show that their interest could be traced back to the true author of the lyrics.  In this regard, the Defendants claimed that Patty Hill was the author; the Plaintiffs claimed that the lyrics might be written by someone else.  The Court was of the view that there was no sufficient evidence to entitle the Defendants to a directed verdict by way of summary judgment on the issue of authorship so that there are genuine issues of material fact for trial.

Divestive publication of the lyrics

The Plaintiffs further claimed that Patty Hill lost the rights to the lyrics through divestive publication before 1935, even if Patty Hill wrote the lyrics.  The Plaintiffs heavily relied as their evidence in support on the publication of the Song in “The Everyday Song Book” which appears to have been authorised by Summy Co. in 1922.  The Court differed with the Plaintiffs about this issue on the grounds that Summy Co. clearly had no right to the lyrics so that there was no direct evidence that the Hill sisters had authorised Summy Co. to grant permission for the publication of the lyrics in 1922.  The Court concluded that there are genuine disputes of material fact for trial.

Transfer of lyrics

The Plaintiffs argued that there is no evidence that Summy Co. ever obtained the copyrights in the lyrics.  The Defendants argued that the rights were transferred to Summy Co. under a contract in 1934 and 1935 (“Contract”).  However, the actual copy of the Contract is not available and its content is not in record.  Only limited evidence is available to the Court.  The Court was of the view that such transfer of the copyrights in the lyrics could not be reasonably inferred from the available evidence.  One of the grounds was that the available evidence showed that the subject matter of the Contract was the copyrights in “piano arrangements” and it was not logical to infer that rights to “piano arrangements” would include rights to any lyrics or words.  The Court considered that the submissions of the Defendants were not consistent with their own case theory and unsupported by available evidence.  Therefore, the Court concluded that there is no sufficient evidence to support the existence of the purported transfer of the copyrights in the lyrics and there is no triable issue of fact.

Conclusion

The Court denied the Defendants’ Motions and concluded that the Hill sisters only gave Summy Co. the rights to the music, and the rights to piano arrangements based on the melody, but not the rights to the lyrics.  As Summy Co. did not acquire the rights to the lyrics, the Defendants, as Summy Co.’s purported successors-in-interest, do not own a valid copyright in the lyrics.  So for now, we could sing the Song without fear of demand for royalty.

It should be noted that this is only a summary judgment, which may be subject to further proceedings or appeal. We shall await further development and update our readers in due course.