Obviously, Pianos Do Not Sing: The Happy Birthday Decision

            I have just finished the most complicated mystery story that I have read in a long time.  It involves three sisters, a multi‑national corporation, books published in the 1920s, lost contracts, lawsuits filed in the 1930s and a rarely used exception to the hearsay rule of evidence.  Is this the latest John Grisham thriller?  No, it is the summary judgment ruling in the case Marya, et al. v. Warner Chappell, Music Inc. – the recent decision which held that Warner Chappell did not in fact own a valid  copyright to the song "Happy Birthday to You".

            Lawyers and copyright enthusiasts have speculated for years as to how this ancient song could still be subject to copyright protection. It turns out that the real story is more  interesting than anything we could have imagined.

            The decision is complicated but it basically boils down to the fact that the copyright to the music of the song (actually a song entitled "Good Morning to All") expired in 1949.  The opinion is not entirely clear as to who wrote the lyrics to "Happy Birthday" (Did Patty Hill create the lyrics in 1893 at the same time as she and her sister Mildred created the music?  If so why did she wait until 1935 to come forward with this information in a deposition?) but the court does find that the Hill sisters never assigned the lyrics to Clayton F. Summy, the publisher whose company ultimately sold  the song to Warner Chappell.  Part of the proof in the case comes from a Time Magazine article discussing the 1935 lawsuit filed against the producers of a motion picture entitled As Thousands Cheer who allegedly used "Happy Birthday" without obtaining a synchronization license.  This article was admitted into evidence over a hearsay objection by utilizing the "ancient records” exception.

            Ultimately, the Court found that Warner Chappell had put forth no viable argument that the Hill sisters ever assigned the copyright in the lyrics to the song to Mr. Summy.  The Court's investigation of various assignments between the parties led them to conclude that one particular document, gave Summy the right to create "piano arrangements" of the composition but "…obviou

sly, pianos do not sing."

            I doubt that we have heard the end of this case, especially as the Court has not considered damages.  The plaintiffs are asking that the publisher be compelled to "return millions of dollars of unlawful licensing fees".  Could this happen? Nonetheless, this is a fascinating look at how a contemporary court deals with evaluating facts which date back almost 125 years and how these facts have significant economic consequences to major music publishers today

Firefly and Fan Art

Have you ever seen Firefly?  Yeah, me neither.  In fact, the only way I know about the TV show was through my wife and her super smart friends.  Nevertheless, I was fascinated to read about a legal skirmish that had broken out over a particular orange and yellow ski cap that one of the show's characters wore.

            Apparently, fans of the short-lived show began knitting copies of this cap and selling them on such websites as Etsy and Café Press leading Fox Television to send cease and desist letters to the sellers because sales of the homemade caps were interfering with their own licensed version of the cap. 

            An article in last month's American Bar Journal  by Anna Stolley Persky explored the whole complex  area of fan art – where the desires of obsessive fans to replicate artwork from their favorite movies, books  or television shows runs into copyright infringement claims from the creators of those works.  All of this is a little vague.  For example, can a yellow and orange cap actually be capable of copyright protection?  Even so, is the fan's creation a derivative work or a protected fair use?

            This reminds me of stories I heard when I was younger of the Walt Disney Company going after mom and pop bakeries who innocently put Mickey Mouse on a birthday cake or ASCAP going after the Girl Scouts for singing songs around the campfire without a license. It is an interesting dilemma for all parties.   One thing a copyright owner must consider is that by trying to stop the fans from creating fan art they risk alienating their fan base.  Also, this is a question of degree – I still can't fathom why Fox would have a problem with a guy selling a Firefly inspired cap but I can of course understand by DC Comics would sue to stop the sale of unauthorized Batman costumes. 

            The article ends with two very good pieces of advice for those who want to create and market fan art.  Quoting Attorney Ruth Carter, the author states:

First, don't base your entire business on using somebody else's copyrighted work without permission; and

Second look at the history of the copyright holder: Does he or she have a record of going after people who make fan art?

            This is sound advice (especially the first part!)  because at the end of the day if a copyright holder (or trademark owner) has the will and the resources to stop the distribution of fan art, all of the fair use arguments in the world will be of little practical value.  I remember that years ago I represented a gentleman who was marketing a piece of memorabilia associated with    a recently deceased celebrity.  He had received a very serious cease and desist notice. Because of the facts of the case my client had some strong arguments on his side. When I made these arguments to the estate’s  lawyer, he politely listened and then invited me to review the list of recent litigation targets they had gone after.  It was impressive and needless to say my client ceased and desisted. 

            With the proliferation of media outlets and the endless growth of the internet, the rise of fan art culture will continue to grow and thrive, from caps to fan fiction and beyond.  I think this is an area to keep an eye on.

Bad Vibrations

I had the good fortune to see Brian Wilson perform live this summer with both Al Jardine and Blondie Chaplin.  The show reinforced the brilliance in all eras of the Beach Boys' career.  However, you can't ignore the fact that there are essentially two factions of this band touring at the moment, the Brian Wilson Gang and the Mike Love-Bruce Johnston Gang.  Between this odd occurrence and seeing the intense Brian Wilson biopic, Love and Mercy, I began to think that one could write an entire scholarly book on the various legal and business disputes that the Beach Boys have been involved in over the past half century. 

            I don't think I will ever have the time to go down that rabbit hole but I did come across an interesting case while doing some research for a client involving the aforementioned Al Jardine. 

            A decade ago the internet was abuzz with the news that Mike Love had supposedly sued Al Jardine to keep him from using the name "The Beach Boys" to promote a solo tour.  The case, Brother Records, Inc. v. Al Jardine, turns out to be a bit more complicated than that.  Each founding member of The Beach Boys (or, in the case of Dennis and Carl, their estates) is a shareholder in Brother Records, Inc.  Recognizing that The Beach Boys' trademark was a valuable asset but also that some of the surviving members did not want to tour (or tour together), the corporation decided in 1998 that each member could have a non-exclusive license to tour using the "Beach Boys" name if certain terms and conditions were met – Mike Love took a band on the road under those terms. 

            Apparently, Al Jardine decided that if he used a variation of the name, "Beach Boys Family and Friends" he could tour either without a license or upon a different royalty arrangement with the corporation. 

            Jardine's group played several cities where Love's group also performed and there was actual confusion in the marketplace. After some negotiation, Brother Records, Inc. sued Jardine for trademark infringement to stop using the “Beach Boys” trademark.   It is important to note that during this time Jardine was (and presumably still is) a shareholder in Brother Records, Inc. 

            Jardine's defense as one would expect it to be, was fair use (both traditional fair use and the variation – nomative fair use).  As any law student can tell you "fair use" was not a truly viable defense in this case because the trademark was not being used in its descriptive sense; what the court so eloquently described as "boys who frequent a stretch of sand beside the sea" but rather "in its secondary trademark sense which denotes the music band – and its members that popularized California surfing culture."

            Thus, Jardine tried to use the more complex "nominative fair use" defense. As the court states," the nominative fair use defense acknowledges that it is often virtually impossible to refer to a particular product for purposes of comparison, criticism, point of reference or any other such purpose without using the (underlying) mark".  As the case law suggests, Jardine would not necessarily have a problem referring to the historical fact of his membership in The Beach Boys but the court found that his use of the mark in this particular manner "capitalizes on consumer confusion" and suggests some kind of "sponsorship or endorsement" by the trademark holder. 

            I think the Court was right.

            As easy as it can be to often cast Mike Love in the role of the bad guy in Beach Boys' mythology, it seems that in this case the corporation (whether controlled by Love or not) took a very important step in protecting its trademark rights to avoid dilution of the mark.  As such, this case adds to the growing body of law that practitioners often have to turn to in order to deal with band members and their trademark issues.  Despite all this, one must also remember that Al Jardine performed with Mike Love, Brian Wilson, Bruce Johnston etc.on The Beach Boys' 50^th Anniversary Tour a couple of years ago.   The California saga continues. 

Conservatorships

            The recent news that Joni Mitchell's close friend had been appointed her conservator after she suffered an aneurysm as well as the disturbing news that there is a conservatorship battle being waged over former Eagles member Randy Meisner made me realize that the public might not be completely aware of this legal concept.  You can also see an extreme example of this a conservatorship in the Brian Wilson biopic "Love and Mercy". Conservatorships are court ordered arrangements where one individual is appointed to oversee the financial affairs and some time day to day responsibilities of another person who can no longer take care of himself or herself. Although we tend to associate conservatorships with elderly people, that is not always the case.

            In Tennessee the law governing conservatorships, T.C.A. Sec. 34‑3‑101 provides that a petition to appoint a conservator may be filed by any person having knowledge of the circumstances necessitating the appointment of a conservator.  This is important because it allows for the process to be instituted even when a "disabled person" might not be aware that they need a conservator (or might actively rebel against the idea) or, when a family member might be somehow endangering the person.

            The statute requires very detailed pleading and requirements including examination by a physician or psychologist and a requirement that a guardian ad litem be appointed to represent the rights of the "disabled person".  If the court determines that a conservator is necessary it follows a prioritized list to determine who to appoint as conservator.

            Some  rights, but not necessarily all rights, might be removed by the conservatorship including the right to dispose of property, execute contracts, make purchases or consent to medical treatment.  Also, as is apparently the case in the Joni Mitchell conservatorship the court can make one person conservator of the disabled person's "person" and another individual the conservator of his or her property and finances.  I have seen this type of conservatorship firsthand and can attest that it does a lot to diffuse concerns and suspicions that family members may have over the appointment of a conservator.

            There has been a lot of controversy over conservatorships. We have all heard horror stories of how the system has been abused but we seldom hear of conservatorships that worked well.  Having been involved in several conservatorships, I can tell you that this is a system that is set up to try to handle a difficult situation with care and compassion.  I  served as the court-appointed conservator for a well-known songwriter (and later his spouse) for nearly 14 years and it was a difficult but ultimately rewarding experience.  I had to overcome mistrust and suspicion and the  general awfulness of seeming to invade another family's privacy in the worst possible moment.  The experience gave me a great deal of respect for the people who are called upon to undertake this role and the judges who oversee the process.

The Legal Perils of Co-Writing

Recently I seem to be inundated with legal questions about co-writing.  I am not sure why this has not really come up before.  I suspect that it is because the concepts or “rules” of co‑writing are ingrained and institutionalized within the Nashville music publishing community but I can tell you that this is not the case elsewhere. There is a great deal of misunderstanding and miscommunication out there.

 Let’s start at the beginning  – what is a co-written composition?  Under the Copyright Act a co‑written composition is a “joint work” and the definition is important:  A “joint work” is a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole.

 The key concept here is that the authors must have an intention to create a unitary work.  However, once that work has been created one of the co‑writers cannot unilaterally decide to remove their contribution.  The work exists and each collaborator is an owner.  This also means that each author has an equal right to exploit the work, subject only to a duty to account to his or her collaborators.

 I can only think of one occurrence in the past three decades where I was asked to help a writer “unwrite” a song – where we literally created an agreement between two co‑writers which removed one writer’s creative contribution from a finished work.  I can also tell you it was messy.

 Also, if two or more persons are joint authors of a musical composition then this means that one of the writers cannot decide to add a co-writer without the other’s permission. This seems like common sense but it is amazing how this can become convoluted and confusing during the creative process. I know that this is a huge issue in the urban/hip hop world,

 In another odd issue that came up recently, I had to explain that one co-writer cannot force a collaborator to continue to work on a song.  One writer may decide that the work is finished where their collaborator may want to continue to re-write the song. From the legal perspective, does this mean that the song is not a true joint work because one of the writers lacked intent?  I don’t think there are any real rules on this.  I have asked a number of Nashville writers about this and the consensus seems to be that if all parties believe that the song is good then it is worthwhile to keep putting time and effort into it; if not, you just move on and don’t worry about it.  Not every song can be “Yesterday”.

 Another potentially contentious area is expenses.  What if one writer wants to create a demonstration recording of the song and the other does not?  Again in the Nashville publishing world there seems to be a fairly clear-cut system that details how and when demos get made and how publishers divide expenses for demo costs; but even this system is subject to misunderstanding.  Outside of “professional” circles it is clear that there are no rules – written or otherwise that obligate authors of a musical composition to have to split the cost of demonstration recordings or any other costs for that matter and this seems to be an area of confusion.  I have had writers ask me if they can “force” their co-writers to pay demo expenses or other expenses and the answer (in the absence of an agreement) is no.

  I would suggest that anybody contemplating a co-writing situation, outside of the traditional Music Row system, sit down with your prospective collaborator first and have a serious discussion about these types of issues.  It will save a great deal of time, expense and angst in the end.