Scintilla – a flash, a spark, an iota. Shorthand for creativity and an indicator of inventiveness under Australian law.






Monday, September 28, 2015

A different kind of birthday suit

By Lauren John, Associate

'Happy Birthday, to you'. Although it is the most recognised and most frequently sung song in the world, many would be surprised to learn that this simple ditty, most famously performed by Marilyn Monroe in 1962, is still protected by copyright. That was, until last week.

US District Judge George King has ruled that Warner/Chappell, the purported copyright owner of Happy Birthday, does not in fact own a valid copyright in the lyrics to the song. The decision is significant given that the song may have been afforded copyright protection in the US until 2030.


Background


A purported class action, filed two years ago, was commenced by a film-maker who paid $1500 to licence the song for use in a film about its history. Anyone seeking to publicly perform the song or use it in a commercial enterprise was required to pay a licence fee to Warner/Chappell, which is the music publishing division of the Warner Music Group. Warner/Chappell acquired the song's copyright for $15 million in 1988 and it reportedly generates $2 million in royalties per year for the company. The plaintiffs alleged that the song's copyright expired in the early 1920s and it should be dedicated to public use.

The melody of Happy Birthday is the same as that of another song called Good Morning To All, which was written some time before 1893 by sisters Mildred and Patty Hill, both kindergarten teachers. The lyrics of the two songs are similar. Mildred and Patty Hill assigned their rights to the manuscript containing Good Morning and other songs to Clayton F. Summy in 1893, who that same year published the manuscript in the songbook Song Stories (for which he sought a copyright registration).

The Good Morning/Happy Birthday melody is no longer protected by copyright and the dispute between the parties centred solely on the Happy Birthday lyrics.


'Happy Birthday dear [??]'


Judge King noted that the origins of the lyrics are less clear, and unlike the publication of the Good Morning melody, there is no certainty as to the point at which the combination of that melody and the Happy Birthday lyrics became copyrightable.

Patty Hill, who by all reports was incredibly copyright savvy, had testified in the early 1930s that she wrote the lyrics to Happy Birthday around the time she created Good Morning. The Happy Birthday lyrics were first published in 1911 in a book which did not credit anyone with authorship of the lyrics. The lyrics were subsequently published in various hymn books and Happy Birthday appeared in a series of movies in the 1920s and was performed in a play in 1933.

Summy Co. registered copyrights to a derivative work titled Happy Birthday in 1935 (the Happy Birthday registration). Warner/Chappell relied upon the Happy Birthday registration as the publication which secured a federal copyright to the lyrics, this being the only time that Patty and Mildred permitted the publication of the combination of the Happy Birthday lyrics and Good Morning melody (Judge King found the registration to be flawed in any event because it did not identify precisely what copyrightable material was being registered).

The plaintiffs adduced a songbook published in 1922 containing the sheet music for Good Morning in combination with the Good Morning and Happy Birthday lyrics (reported by various media to be the plaintiffs' 'smoking gun') titled The Everyday Song Book, which was purportedly published with permission of Summy Co. and not registered for a copyright at the time of publication.

For the purposes of deciding whether to grant the plaintiffs' motion for summary judgment, Judge King found that there were genuine issues of material fact for trial as to whether:
  1. Patty Hill wrote the lyrics to Happy Birthday. Judge King said it was possible that Patty Hill wrote the lyrics in 1893 but failed to publicly say so until 40 years later; however, it was also possible that the lyrics were written by someone else and that Patty Hill's claim to authorship was an attempt to take credit for the words 'that had long since become more famous and popular than the ones she wrote for the classic melody'.
  2. Patty Hill lost the rights to the lyrics through divestive publication before 1935. The plaintiffs argued that if the publication of the lyrics in The Everyday Song Book was authorised, it was a general publication without proper copyright notice, divesting the Hill sisters of their common law copyright. Judge King said it was not clear whether Summy Co. gave the publisher permission to publish the lyrics specifically, nor was there any direct evidence that the Hill sisters had authorised Summy Co. to grant permission (although one may ask why, if Summy Co. lacked any rights to the lyrics at the time, the Hill sisters had not taken any action against it?).
  3. Patty Hill abandoned her rights before the publication and registration. The plaintiffs relied on a passage from a TIME magazine article published in the 1930s in which it was said that Patty Hill had no complaint to make on the use of the words because 'she long ago resigned herself to the fact that her ditty had become common property of the nation'. Judge King did not view the article as sufficient evidence because it did not directly quote Patty Hill.


'Obviously, pianos do not sing'


The plaintiffs argued that, even if the Hill sisters never lost or abandoned their common law rights to the Happy Birthday lyrics before they were published in the Happy Birthday registration, there was no evidence of a transfer of the lyrics to Warner/Chappell, as Summy Co. never obtained those rights. There was evidence of three agreements, but the contents of two of the agreements was discernible only from the pleadings of a federal law suit filed in 1942 by the Hill Foundation against Summy Co.

Judge King found that one of the agreements was limited to the melody of Good Morning/Happy Birthday, another did not mention the lyrics at all or that any common law copyright was being transferred, whilst the other agreement only transferred the copyright in various piano arrangements to Summy Co., not the lyrics, Judge King noting that ‘Obviously, pianos do not sing’.

The case therefore serves as a useful reminder that a single work can have different copyrightable elements (eg, a musical work has both music and lyrics) and that each element is protected independently. It is important in any transaction dealing with copyrighted works that copyright owners and assignees/licensees understand exactly what rights are being assigned/licenced so as to avoid any subsequent infringing conduct. Similarly, in the case of derivative works, the scope of any rights granted with respect to such works do not extend to exploitation of the pre-existing works upon which those derivative works are based.


Do you hear the people sing?


Despite various reports of the decision declaring that Happy Birthday is in the public domain and free for all to sing without fear of an impending law suit, that is not in fact what was decided. Judge King held that Warner/Chappell had no right to a federal copyright to Happy Birthday as there was no evidence that the Hill sisters in fact transferred their common law rights to the lyrics (if they had any) to Summy Co.

What however does the decision mean in the Australian copyright context?

The Good Morning/Happy Birthday melody was published in 1893. The Copyright Act 1912 (Cth) did not extend copyright protection to US works. The US was not a signatory to the Berne Convention at that time, and there is no evidence of simultaneous publication in the British Empire. It is possible that a bilateral agreement*, which established copyright relations between the US and the British Empire, extended copyright protection to US citizens; however even if it did, copyright in the melody has expired.

The Happy Birthday lyrics pose more of a conundrum. If we assume that Patty Hill is the author of the lyrics, then their publication in 1911 pre-dates her death in 1946. Accordingly, if copyright subsisted in the lyrics under the Copyright Act, then copyright in the lyrics expired almost 20 years ago**.

If we assume that the lyrics were written by someone else, copyright in the lyrics could only subsist in Australia (again assuming that it subsisted under the Copyright Act)) if that person died after 31 December 1954. It is unlikely that another genuine owner will emerge from the woodwork (all this time having let Warner/Chappell collect substantial royalties), and so it seems that Australians can freely sing Happy Birthday. Another possibility is that the work is declared an orphan work. There is currently no specific exception in the Copyright Act 1968 (Cth) for the use of orphan works; they may only be used when a fair dealing exception applies or under statutory licence***.

It ain't over ‘til the fat lady sings

Warner/Chappell has not confirmed whether it intends to appeal the decision. If the decision stands, the second verse of this legal song will consider class certification and determination of the extent of Warner/Chappell’s liability to pay back licence fees.


* Presidential Proclamation No. 3, 27 Stat. 981 (1 July 1891).

** The 2004 amendments to the Copyright Act 1968 (Cth), which came into effect on 1 January 2005 and increased the term of copyright in published works from life plus 50 years to life plus 70 years were not retrospective, such that any work that was published in the lifetime of the author who died before 1 January 1955 was protected until the end of the 50th year after the death of the author.

*** The ALRC has previously recommended that the Copyright Act 1968 (Cth) be amended to provide that remedies available for copyright infringement be limited where the user has conducted a ‘reasonably diligent search’ for the copyright owner and has attributed the work to the author (where possible).

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