We’ve all been to a chain restaurant when the staff comes out, candles blazing, singing their own variation on a birthday song.  For years, chain restaurants have shied away from using the ubiquitous song Happy Birthday to You (“Happy Birthday”) for fear of a copyright claim from Warner Music Group (Warner).  Similarly, movie and television producers have paid hefty fees to use the song in productions.

Over the years, Warner has collected millions of dollars in licensing fees for use of the familiar tune.  But that may all be over soon. In response to Warner’s demand that it pay a $1,500 licensing fee to use the song in its documentary, Good Morning to You Productions Corp. (“GMTY”), a production company working on a documentary about the song, filed a class action lawsuit in the Southern District of New York in June 2013 seeking a judgment that: (1) the song “Happy Birthday To You” is in the public domain; (2) that Warner is not legally entitled to demand licensing fees for the use of the song; and (3) Warner must repay (with interest) all fees that it collected for the use of Happy Birthday since 2009. The NY suit was voluntarily dropped in June 2013 after the same parties filed a complaint in the Central District of California on the same grounds.  The California case is currently pending.

The story of Happy Birthday dates back to the late 19th Century when two sisters, Mildred and Patty Hill, wrote the song Good Morning To All to be sung in kindergarten classrooms.  The melody of that song is the same familiar melody that is used for Happy Birthday to this day.  In 1893, the Hill sisters assigned the copyrights in 70 songs, including Good Morning to All, to Clayton F. Summy  (“Summy”) who published the songs in the songbook “Song Stories for Kindergarten” and secured a copyright registration for the songbook.

Several other versions of songbooks have been published containing versions of Good Morning To All, and, although there is evidence that Happy Birthday was put to the melody of Good Morning To All as early as 1901, there was no clear evidence who wrote those lyrics, or who put them together with the melody.  Also, there were no copyright registrations or publications claiming copyright in Happy Birthday with the lyrics and melody together prior to 1934 when Summy Co. III (a reincarnation of the Summy Co that filed the original copyright registrations and, as such, also referred to herein as “Summy”) filed the first of six copyright applications related to Happy Birthday.  In 1935, Summy, which was later acquired by Warner, filed an application for a particular piano arrangement of the song.  It is based on that 1935 copyright registration, which is valid until 2030, that Warner has asserted its rights ever since.

In its original complaint, GMTY argues that the 1935 copyright registration only protects that particular arrangement of Happy Birthday but that the song and melody fell into the public domain much earlier.  This argument is based on a number of facts laid out in great detail in both the complaint and an article titled “Copyright and the World’s Most Popular Song” by George Washington University Law School professor Robert Brauneis, which was written long before the lawsuit was filed.

In an interesting twist, on July 13, 2015, Warner turned over some 200 pages worth of documents that it “mistakenly” failed to produce during discovery, which closed on July 11, 2014.  Among those documents is a 1927 publication of the song Happy Birthday in “The Everyday Song Book.” The publication includes a note that says “Special permission through courtesy of The Clayton F Summy Co.” but there is no copyright notice on the song (although there were copyright notices to other third parties for other songs included in the song book).  While under the current copyright law, publishing a work without a copyright notice is not a fatal flaw, under Section 18 of the 1909 Copyright Act, which was in force at the time of the publication of “The Everyday Song Book,” failure to include a copyright notice on a publication of a work would interject it irrevocably into the public domain.

Last Monday, July 27th, GMTY submitted an application to the court to have “The Everyday Songbook” containing Happy Birthday, as well as the other documents, added to the record and requested summary judgment. In its application, GMTY notes that the document showing proof of the publication of Happy Birthday in The Everyday Songbook at least as early as 1922[i] is a “proverbial smoking gun” clearly proving that Happy Birthday entered the public domain nearly a century ago and rendering all other arguments in the case moot.  Warner quickly filed a response arguing that in order for a publication to place a work into the public domain, that publication had to be authorized and that the statement “Special permission through courtesy of The Clayton F Summy Co.” is unclear and, at best, does no more than raise a question of fact as to whether the 1922 publication was authorized.  In addition, Warner claims that it was the Hill Sisters, and not Summy, that owned the copyright in 1922 and any statement that Summy authorized the publication would be meaningless.

Each side presented it arguments on Wednesday, July 29th, before U.S. District Judge George H. King, who gave GMTY seven days to submit a reply brief arguing why the additional evidence should be considered, took the summary judgment matter under submission, and indicated he would issue a ruling, likely without any further oral argument.

Given the economics of challenging a copyright claim, cases like this one are rare.  But the class action format, which puts millions of dollars into play, could prove to make such a claim worthwhile and, if successful, may provide a model for challenging copyrights in the future.