Marya v. Warner/Chappell Music, Inc.
| Decision Date | 22 September 2015 |
| Docket Number | CASE NO. CV 13–4460–GHK (MRWx) |
| Citation | 131 F.Supp.3d 975 |
| Parties | Rupa Marya, et al. Plaintiffs, v. Warner/Chappell Music, Inc., et al. Defendants. |
| Court | U.S. District Court — Central District of California |
Andrew Scott Mackay, Daniel J. Schacht, William R. Hill, Donahue Fitzgerald LLP, Oakland, CA, Betsy C. Manifold, Francis M. Gregorek, Marisa C. Livesay, Rachele R. Rickert, Wolf Haldenstein Adler Freeman and Herz LLP, San Diego, CA, Randall Scott Newman, Randall S. Newman PC, Beth A. Landes, Janine L. Pollack, Mark C. Rifkin, Wolf Haldenstein Adler Freeman and Herz LLP, New York, NY, Alison C. Gibbs, Kathlynn Elizabeth Smith, Omel Andres Nieves, Hunt Ortmann Palffy Nieves Lubka Darling & Mah Inc., Pasadena, CA, for Plaintiffs.
Glenn D. Pomerantz, Adam I. Kaplan, Kelly M. Klaus, Melinda E. Lemoine, Munger Tolles and Olson LLP, Los Angeles, CA, for Defendants.
MEMORANDUM AND ORDER RE: (1) CROSS–MOTIONS FOR SUMMARY JUDGMENT (Dkt. 179); (2) DEFENDANTS' MOTION FOR LEAVE TO FILE SUPPLEMENTAL EVIDENCE (Dkt. 223); and (3) PLAINTIFFS' EX PARTE APPLICATION TO SUPPLEMENT THE RECORD (Dkt. 224)
This matter is before us on the Parties' Cross–Motions for Summary Judgment ("Cross–Motions"). On March 23, 2015, we held a hearing on the Cross–Motions. (Dkt. 207 (minutes); Dkt. 208 (transcript).) On May 18, 2015, we ordered additional briefing, (Dkt. 215), and on July 29, 2015, we held a further hearing. (Dkt. 229 (minutes); Dkt. 230 (transcript).) As the Parties are familiar with the facts, we will repeat them only as necessary. Accordingly, we rule as follows:
I. Background
Plaintiffs Rupa Marya, Robert Siegel, Good Morning to You Productions Corp., and Majar Productions, LLC (collectively, "Plaintiffs") filed this class action to declare invalid Defendants Warner/Chappell Music, Inc. ("Warner/Chappell") and Summy–Birchard, Inc.'s ("Summy–Birchard") (collectively, "Defendants") purported copyright in the famous song Happy Birthday To You ("Happy Birthday "). (Dkt. 95, Fourth Amended Consolidated Complaint ("FACC").)
The classic melody of Happy Birthday is the same as that of another song called Good Morning To All ("Good Morning ") (hereafter, the "Happy Birthday/Good Morning melody"). (Statement of Uncontroverted Facts ("SUF") P17.) At some time before 1893, Mildred Hill and Patty Hill1 wrote Good Morning . (SUF P3, P5.) Mildred composed the music with Patty's help, and Patty wrote the lyrics. (SUF P6.) The lyrics of Good Morning are similar to those of Happy Birthday :
Good Morning Happy Birthday
Good morning to you Happy birthday to you
Good morning to you Happy birthday to you
Good morning dear children Happy birthday dear [NAME]
Good morning to all. Happy birthday to you
In 1893, Mildred and Patty assigned their rights to the manuscript containing Good Morning and other songs to Clayton F. Summy ("Mr. Summy"). (SUF P7.) A copy of the assignment is not available, but the Parties do not dispute that the assignment occurred. (SUF P8.) That same year, Mr. Summy published the manuscript in, and filed for copyright registration of, a songbook titled Song Stories for the Kindergarten ("Song Stories "). (SUF P10, P13.) After Mildred died, Jessica Hill, a third Hill sister, filed for renewal of the copyright to Song Stories in 1921 as one of Mildred's heirs. (SUF P44.) Under the Copyright Act of 1909, works could receive copyright protection for two consecutive 28–year terms. See 17 U.S.C. § 24 (1909 Act). Accordingly, copyright protection for Song Stories, including the song Good Morning, expired in 1949.
The origins of the lyrics to Happy Birthday (the "Happy Birthday lyrics") are less clear. The Happy Birthday lyrics did not appear in Song Stories . (SUF P18.) The first reference to them in print appeared in an article from 1901 in the Inland Educator and Indiana School Journal :
A birthday among the little people is always a special occasion. The one who is celebrating is decorated with a bright flower or badge and stands in the center of the circle while the children sing "Happy birthday to you."
The full Happy Birthday lyrics did not appear in the article. (SUF P27.) In 1909, a prayer songbook similarly made reference to the song but did not include the lyrics. (J.A. 9.)
Publication of the full Happy Birthday lyrics first occurred in a 1911 book titled The Elementary Worker and His Work . (J.A. 11 at 290; SUF P34.) The book did not credit anyone with authorship of the lyrics, but mentioned that Happy Birthday and Good Morning shared the same tune, and noted that the latter song had been published in Song Stories . (J.A. 11 at 290, 294; SUF P35.) The Elementary Worker and His Work was registered for a copyright in 1911. (J.A. 12; SUF P36.) After 1911, Happy Birthday appeared in other publications—Harvest Hymns in 1924 and Children's Praise and Worship in 1928.2 (J.A. 18, 21; SUF P49, P54.) These publications similarly did not credit anyone with creating the Happy Birthday lyrics. (J.A. 18, 21.) Children's Praise and Worship was registered for a copyright at the time of publication. (J.A. 22; SUF P56.) Next, in the early 1930s, Happy Birthday appeared in a series of movies—Girls About Town, Bosko's Party, Strange Interlude, Baby Take a Bow, The Old Homestead, and 'Way Down East. (J.A. 25–26, 30, 35, 39, 41; SUF P64–65, P69, P71, P78, P94, P102.) Finally, in 1933, Happy Birthday was performed publically in the play As Thousands Cheer. (J.A. 29; SUF P77.)
In 1934, Jessica filed a lawsuit against the producers of As Thousands Cheer for copyright infringement (hereafter, the "As Thousands Cheer lawsuit"). (J.A. 32; SUF P81.) Notably, the basis for her infringement claim was not that the producers had infringed any rights she allegedly held in the Happy Birthday lyrics. Rather, she alleged that the defendants infringed the copyright in Good Morning, which included the common melody for the two songs. (J.A. 32 at 584; SUF P81.) TIME magazine, the New York Times, and the New York Herald Tribune all reported the As Thousands Cheer lawsuit. (J.A. 34, 37, 90.) Patty and Jessica were both deposed in that action. (J.A. 87; SUF P96.) In Patty's deposition, she claimed that she wrote the lyrics to Happy Birthday around the time Good Morning was created. (J.A. 87 at 1007.) The outcome of the As Thousands Cheer lawsuit is not clear from the record before us, but neither party claims it has any bearing on the instant action.
In 1935, the Clayton F. Summy Company ("Summy Co.") registered copyrights to two works entitled "Happy Birthday to You"—registration numbers E51988 and E51990. (J.A. 44, 48.) Defendants argue that E51990 is the publication that secured a federal copyright in the Happy Birthday lyrics, and they have staked their claim to the lyrics on that registration.3
Our record does not contain any contractual agreement from 1935 or before between the Hill sisters and Summy Co. concerning the publication and registration of these works. (SUF P111–12.) What little information we have about the circumstances under which E51990 was published and registered comes from a federal lawsuit filed in 1942 by the Hill Foundation—an entity formed by Jessica and Patty4 —against Summy Co. in the Southern District of New York (hereafter, the "Hill–Summy lawsuit"). (J.A. 50.) The Amended Complaint, discussed in more detail below, alleged that Summy Co. had granted licenses to movie and play producers without the Hill sisters' authorization. The Hill Foundation alleged that, in addition to an agreement between Mildred and Patty and Summy Co. concerning the copyright in Song Stories and Good Morning (the "First Agreement"), there was another agreement from 1934 and 1935 in which Jessica granted Summy Co. "a number of licenses" for "various piano arrangements of the song variously entitled 'GOOD MORNING TO ALL' or 'HAPPY BIRTHDAY TO YOU' " (the "Second Agreement"). (J.A. 50 at ¶ 24.) In Summy Co.'s Answer to the Amended Complaint, it admitted that it had entered into the Second Agreement with Jessica, stating that she "assigned ... various piano arrangements of ... 'Good Morning To All' " to Summy Co. (J.A. 51 at ¶ 18.)
In 1944, the Hill sisters and Summy Co. settled the Hill–Summy lawsuit by entering into a new agreement (the "Third Agreement"). (J.A. 54; SUF P141.) The Hill sisters, via the Hill Foundation, assigned to Summy Co. all of their rights in eleven different copyrights, including E51990, E51988, and the Song Stories copyright. (J.A. 54 at 702–03.) After the Third Agreement, Summy Co. filed three lawsuits alleging copyright infringement related to Happy Birthday. (J.A. 55–57.) E51990 is not mentioned in the complaints for any of these lawsuits. (Id. ) When describing the song Happy Birthday, the complaints each said that "[o]ne of the songs in [Song Stories ], entitled 'Good Morning To All', later became popularly known as 'Happy Birthday to You', the opening lines of the verses later written by Patty S. Hill for the song." (J.A. 55 at ¶ 15, 56 at ¶ 15, 57 at ¶ 15.) None of the lawsuits asserted infringement of any purported right that Summy Co. had to the lyrics from its ownership of E51990.
On April 21, 2014, Plaintiffs filed their FACC in this action. (Dkt. 95.) Plaintiffs contend that Defendants do not own a copyright in the Happy Birthday lyrics and that they should be compelled to return the "millions of dollars of unlawful licensing fees" they have collected by wrongfully asserting copyright ownership in the Happy Birthday lyrics. (FACC at ¶ 4.) We bifurcated this case on October 16, 2013. (Dkt. 71.) We will first determine whether Plaintiffs are entitled to a declaratory judgment invalidating Defendants' purported claim of copyright in the lyrics. (Id. at 4.)
II. New Evidence
Both Parties recently sought to add new evidence to the summary judgment record after the Cross–Motions had been taken under submission. (Dkts. 223–24.) In...
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