In 1893, the Hills assigned their rights to the manuscript containing “Good Morning” and other songs to Clayton F. Summy. That same year, Summy published the manuscript as “Song Stories for the Kindergarten” and copyrighted it. After Mildred died in 1921, Jessica Hill, a third Hill sister, filed to renew the copyright to “Song Stories” as one of Mildred’s heirs.
The origins of the lyrics of “Happy Birthday” are less clear. Publication of the full “Happy Birthday” lyrics first occurred in a 1911 book titled “The Elementary Worker and His Work.” The book did not credit anyone with authorship of the lyrics, but mentioned that “Happy Birthday” and “Good Morning” shared the same melody, and noted that the latter song had been published in “Song Stories.” “The Elementary Worker and His Work” was registered for a copyright in 1911. “Happy Birthday” subsequently appeared in two other publications, a series of movies and a play.
In 1935, the Clayton F. Summy Co. registered copyrights to two works titled “Happy Birthday to You.” In 1942, the Hill Foundation — an entity formed by Jessica and Patty — sued Summy Co., alleging it had granted licenses to the movie and play producers without the Hill sisters’ authorization. The complaint also alleged Jessica in 1934 and 1935 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.’” In 1944, the Hill sisters and Summy Co. settled the lawsuit and the Hill sisters allegedly assigned all of their rights to the relevant copyrights.
The successors-in-interest to Summy Co., Rupa Marya, Robert Siegel, Good Morning to You Productions Corp. and Majar Productions LLC, filed a putative class action in a California federal district court in 2014 to declare invalid defendants Warner/Chappell Music Inc.’s and Summy-Birchard Inc.’s purported copyright in “Happy Birthday to You.” Plaintiffs moved for summary judgment, arguing that the 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.
The parties agreed that the “Happy Birthday” melody was borrowed from “Good Morning” and entered the public domain a long time ago. The parties disagreed only about the status of the “Happy Birthday” lyrics. The defendants argued that the Hill sisters authored the lyrics to “Happy Birthday” and held on to the common law rights for several decades before transferring them to Summy Co., which published and registered them for a federal copyright in 1935. The plaintiffs countered that the lyrics may have been written by someone else and the common law copyrights in the lyrics were lost due to general publication or abandonment before the lyrics were published. The plaintiffs also maintained the rights were never transferred to Summy Co.
Significantly, the 1909 Copyright Act, which governs the registration certificate at issue, did not require that a work be registered to obtain a federal copyright. But registration was still highly desirable, the district court pointed out, not only because it was a precondition to the filing of an infringement suit, but also because, once registered, the certificate of registration “shall be admitted in any court as prima facie evidence of the facts stated therein.”
The district court held that the 1935 copyright registration did not entitle the defendants to a presumption of validity because it is unclear whether those lyrics were being registered, and therefore it is unclear whether the Copyright Office determined the validity of Summy Co.’s alleged interest in the lyrics in 1935.
Next, the defendants argued that since the arrangement was registered “with text,” that meant the “Happy Birthday” lyrics were part of the “new matter” being registered alongside the arrangement. But the registration clearly listed “Preston Ware Orem” as the author of the new matter, a person who was never alleged to have written the “Happy Birthday” lyrics, noted the district court. As a result, the registration was flawed, and the district court said it could not presume the registration reflects the Copyright Office’s determination that Summy Co. had the right to copyright the lyrics.
The district court next turned to the question of who wrote “Happy Birthday.” The plaintiffs pointed to the many publications of the “Happy Birthday” lyrics throughout the 1920s and 1930s that did not credit Patty Hill. Though none of these publications explicitly credited anyone with authoring the “Happy Birthday” lyrics, several of them were copyrighted and the certificates of registration listed other authors who may have authored the lyrics, the district court said. It held that this evidence was sufficient to shift the burden to the defendants to proffer admissible evidence to create a genuine issue for trial. The defendants successfully raised genuine issues of material fact for trial by producing a deposition of Patty Hill from an earlier lawsuit, in which she claimed to have written the lyrics.
The district court then considered whether the lyrics were lost or abandoned at some point after they were written. While the plaintiffs relied heavily on evidence showing that the lyrics were “published, publicly performed, and sung millions of times for more than three decades,” this was insufficient to show divestive publication. “Unless the owner of the work published it personally or authorized someone else to publish it, she would not be divested of her common law copyright,” the district court said.
Further, the district court held that the publication of the lyrics in 1922 with permission from Summy Co. did not entitle the plaintiffs to a directed verdict at trial because there is no direct evidence that the Hill sisters authorized Summy Co. to grant permission for the publication of the lyrics. The district court rejected the plaintiffs’ argument that Patty Hill abandoned her rights to the copyright prior to the registration of the copyright by Summy Co. It cited a Time article in which Patty Hill implied that she had surrendered any claim to the “Happy Birthday” lyrics and noted that it was unclear whether the relevant language was a direct quote.
Also considered was whether a valid transfer of rights occurred between the Hill sisters and Summy Co. The plaintiffs argued that the relevant registration was merely for one of several piano arrangements that Jessica Hill authorized Summy Co. to publish and register. The defendants maintained Jessica Hill transferred rights to the “Happy Birthday” lyrics to Summy Co. by agreement in 1934 and 1935.
The district court said the inference that the 1934-1935 agreement had something to do with the “Happy Birthday” lyrics was not supported by any explicit description of the agreement in either the amended complaint or the answer. The parties merely described the agreement as transferring rights in “piano arrangements.”
The district court also pointed out that an inference that the 1934-1935 agreement covered the lyrics is unreasonable because it would be inconsistent with the underlying legal theory behind the lawsuit, as it would have meant that Jessica Hill granted Summy Co. the right to license lyrics to others for public performance. If that were the case, there would have been no reason for the Hill Foundation to accuse Summy Co. of “secretly” entering into deals behind the Hill sisters’ backs to grant movie and play producers permission to publically perform “Happy Birthday,” which was the basis of the 1942 lawsuit.
In addition, the district court rejected the defendants’ argument that the 1944 settlement transferred the copyright because there was no mention of the “Happy Birthday” lyrics, nor was there any suggestion that the Hill sisters transferred their common law rights to the “Happy Birthday” lyrics to Summy Co. Lastly, the district court rejected the defendants’ argument that the plaintiffs are barred from challenging the transfer of the lyrics where the transferee and transferor do not dispute that the transfer occurred. The defendants had no evidence a transfer occurred, whether by oral statement, by writing or by conduct, it said.