Trio Of Copyright Cases Reject High-Profile Ownership Claims

In recent months, three separate cases scaled back copyright protection for works well known in popular culture.

In the first case, Marya v. Warner/Chappell Music, Inc. et al., a longstanding copyright dispute over the “Happy Birthday to You” song ended when the United States District Court for the Southern District of California held the music publisher who claimed rights to the song since it allegedly acquired them in 1988 never actually held a valid copyright to the underlying song lyrics.

Until the suit was filed, many people did not realize  “Happy Birthday to You” was (purportedly) not in the public domain and, thus, any public performance of the song was a copyright violation.  Plaintiffs, a group of artists who disputed publisher Warner/Chappell Music’s copyright claim to the song upon investigating the song’s history, filed a class action suit for declaratory relief seeking a declaration that Warner/Chappell Music’s copyright was invalid.  According to Plaintiffs’ moving papers, Warner/Chappell Music allegedly made millions of dollars per year in licensing rights to the “Happy Birthday Song.”  In ruling on the parties’ cross-motions for summary judgment, the judge held Warner/Chappell Music never actually obtained copyright to the lyrics of “Happy Birthday to You” but, rather, only a piano arrangement of “Happy Birthday to You.”

A musical arrangement is a specific version of a piece of music.  Under copyright law, copyright ownership automatically vests in the author of a work upon creation of the work, regardless of whether the author actually registers the work with the U.S. Copyright Office. Often, an author will grant permission to other artists, through a licensing agreement, to allow the other artists to make their own arrangements (versions) of the original work.  The resulting arrangement is known as a derivative work.  Any artist who creates a derivative work, however, may only claim copyright to the new elements of the derivative work, and not to the underlying melody or lyrics from the original work.

Upon review of the evidence submitted, the District Court determined the copyright that Warner/Chappell Music acquired in 1988 was limited to a specific piano arrangement of “Happy Birthday to You” that was registered with the U.S. Copyright Office in 1935.  The underlying lyrics to the original song, however, were never registered with the U.S. Copyright Office and never transferred from the original author to any music publisher, according the Court.  As a result, the copyright protection for the “Happy Birthday to You” lyrics that copyright law automatically afforded to the original author of the song eventually expired and, subsequently, the lyrics reverted to the public domain, no longer subject to licensing  or ownership rights.

In the second case, Bikram’s Yoga College of India, L.P. v. Evolation Yoga, LLC et al., the Ninth Circuit held the specific sequence of yoga poses (“Bikram Yoga”) popularized by Bikram Choudhury and practiced at yoga studios all over the world, was not entitled to copyright protection.  In the 1970s, Choudhury developed a system of stretching poses and breathing exercises, arranged in a particular order and performed over the course of 90 minutes in a room heated to 105 degrees Fahrenheit.   Bikram Yoga became popular over the years and Choudhury eventually developed a teacher training course for people desiring to teach Bikram Yoga to others.  Defendant Evolation Yoga, LLC is a yoga studio founded by two people who completed the Bikram Yoga teacher training course and subsequently taught Bikram Yoga to their own clients despite not having any association or permission to do so from Plaintiff Bikram Choudhury.

Although copyright law generally protects the expression of ideas, and specifically protects choreography, the Ninth Circuit affirmed the District Court’s grant of partial summary judgment, holding Bikram Yoga was merely an idea and therefore not protectable.  In doing so, the Ninth Circuit offered the example of a book that describes how to perform a complicated surgery as a way to explain the distinction between non-protectable ideas as compared to protectable expressions.   Although the copyright holder of the book can prevent others from republishing the specific words that describe the surgery, the copyright holder cannot prevent others from performing the surgery.  As a result, the Ninth Circuit granted summary judgment against Choudhury in his copyright infringement claim against the Defendant.

In the third case, on the same day the Bikram decision came out, the Second Circuit held in Baldwin v. EMI Feist Catalog, Inc. that music publisher EMI’s copyright ownership claim to the song “Santa Claus is Comin’ to Town” will no longer be valid as of 2016.  Plaintiffs, heirs of the original author of the song, brought suit against the publisher when a dispute arose in the course of renegotiating licensing terms with EMI.

In the time since “Santa Claus is Comin’ to Town” was first written in the 1930s, copyright law in the U.S. underwent several revisions that provided varying rights to the original authors of works.  Once such right was the ability of the original author to terminate, and effectively recoup, copyright ownership to a song even after the original author assigned his or her copyright ownership in the song to a music publisher.  The rationale for this scheme was to provide authors the opportunity to renegotiate the terms of their license agreements with publishers given that the value of the work would only truly be understood after it was sold in the open market for several years.

Over the course of the life of “Santa Claus is Comin’ to Town,” its author and its author’s heirs began the statutory process to terminate EMI’s rights to the song on several occasions.  This was a normal part of the process in renegotiating licensing rights and, usually, the author or his heirs would ultimately withdraw the termination request once a new licensing deal was executed.  One such termination request from 2007 was never withdrawn (because negotiations fell apart) which, based on an older copyright law no longer applicable to new songs, meant EMI’s rights to the song would expire in 2016, according to Plaintiffs.  EMI disputed this and claimed the terms of the prior licensing agreements were such that the termination provisions of the older copyright law were no longer available to Plaintiffs and, thus, Plaintiffs’ recent termination notice was null and void.

The Second Circuit disagreed and held Plaintiff’s termination notice was valid and ruled EMI’s interest in the copyright will expire in 2016.