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.