Rupa Marya v. Warner Chappell Music Inc
Filing
194
AMENDED JOINT EVIDENTIARY APPENDIX IN SUPPORT OF NOTICE OF CROSS-MOTIONS AND CROSS-MOTIONS FOR SUMMARY JUDGMENT FILED PURSUANT TO COURTS DEC. 5, 2014 ORDER [Dkt. 185] (VOLUME 8, EXS. 117-126, PAGES 1751-1947) re Cross MOTION for Summary Judgment as to Declaratory Judgment 179 filed by Plaintiffs Good Morning to You Productions Corp, Majar Productions LLC, Rupa Marya, Robert Siegel. (Attachments: # 1 Appendix (Volume 8, Exs. 117-126))(Manifold, Betsy)
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Ex. 120
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1
Plaintiff Rupa Marya d/b/a/ Rupa Marya & The April Fishes (“Marya”), on
2
behalf of herself and all others similarly situated, by her undersigned attorneys, as
3
and for her Class Action Complaint against defendant Warner/Chappell Music, Inc.
4
(“Warner/Chappell”), alleges as follows:
JURISDICTION AND VENUE
5
6
1.
The Court has subject-matter jurisdiction over this action pursuant to
7
28 U.S.C. § 1331 and 28 U.S.C. § 1338 with respect to claims seeking declaratory
8
and other relief arising under the Copyright Act, 17 U.S.C. §§ 101 et seq.; pursuant
9
to the Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq.; pursuant to the Class
10
Action Fairness Act, 28 U.S.C. § 1332(d)(2); and supplemental jurisdiction pursuant
11
to 28 U.S.C. § 1367 over the entire case or controversy.
12
2.
The Court has personal jurisdiction and venue is proper in this District
13
under 28 U.S.C. §§ 1391(b)-(c) and 28 U.S.C. § 1400(a), in that the claims arise in
14
this Judicial District where defendant Warner/Chappell’s principal place of business
15
is located and where Warner/Chappell regularly conducts business and may be
16
found.
17
18
INTRODUCTION
3.
This is an action to declare invalid the copyright that defendant
19
Warner/Chappell claims to own to the world’s most popular song, Happy Birthday
20
to You (the “Song”), to declare that Happy Birthday to You is dedicated to public use
21
and in the public domain; and to return millions of dollars of unlawful licensing fees
22
collected by defendant Warner/Chappell pursuant to its wrongful assertion of
23
copyright ownership of the Song.
24
4.
According to the United States Copyright Office (“Copyright Office”),
25
a “musical composition consists of music, including any accompanying words, and
26
is normally registered as a work of the performing arts.” Copyright Office Circular
27
56A, “Copyright Registration of Musical Compositions and Sound Recordings,” at 1
28
(Feb. 2012) (available at www.copyright.gov/circs/circ.56a.pdf). The author of a
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1
musical composition generally is the composer, and the lyricist (if a different
2
person). Id.
3
5.
More than 120 years after the melody to which the simple lyrics of
4
Happy Birthday to You is set was first published, defendant Warner/Chappell
5
boldly, but wrongfully and unlawfully, insists that it owns the copyright to Happy
6
Birthday to You, and with that copyright the exclusive right to authorize the song’s
7
reproduction, distribution, and public performances pursuant to federal copyright
8
law. Defendant Warner/Chappell either has silenced those wishing to record or
9
perform Happy Birthday to You, or has extracted millions of dollars in unlawful
10
11
licensing fees from those unwilling or unable to challenge its ownership claims.
6.
Irrefutable documentary evidence, some dating back to 1893, shows
12
that the copyright to Happy Birthday to You, if there ever was a valid copyright to
13
any part of the song, expired no later than 1921 and that if defendant
14
Warner/Chappell owns any rights to Happy Birthday to You, those rights are limited
15
to the extremely narrow right to reproduce and distribute specific piano
16
arrangements for the song published in 1935. Significantly, no court has ever
17
adjudicated the validity or scope of the defendant's claimed interest in Happy
18
Birthday to You, nor in the song's melody or lyrics, which are themselves
19
independent works.
20
7.
Plaintiff Marya, on behalf of herself and all others similarly situated,
21
seeks a declaration that Happy Birthday to You is dedicated to public use and is in
22
the public domain as well as monetary damages and restitution of all the unlawful
23
licensing fees that defendant Warner/Chappell improperly collected from Marya and
24
all other Class members.
PARTIES
25
26
8.
Plaintiff Marya is a musician and leader of the band entitled “Rupa &
27
The April Fishes” (“RTAF”), and a member of the American Society of Composers,
28
Authors and Publishers (“ASCAP”). Plaintiff Marya is a resident of San Mateo
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County, California. RTAF recorded Happy Birthday to You at a live show in San
2
Francisco, California, on April 27, 2013. Under a claim of copyright by defendant
3
Warner/Chappell, on or about June 17, 2013, Plaintiff Marya d/b/a RTAF paid to
4
defendant Warner/Chappell the sum of $455 for a compulsory license pursuant to 17
5
U.S.C. § 115 (commonly known as a “mechanical license”) to use Happy Birthday
6
to You, as alleged more fully herein.
7
9.
Defendant Warner/Chappell is a Delaware corporation with its
8
principal place of business located at 10585 Santa Monica Boulevard, Los Angeles,
9
California 90025. Warner/Chappell regularly conducts business within this Judicial
10
District, where it may be found.
FACTUAL BACKGROUND
11
12
13
Good Morning to All and the Popular Adoption of Happy Birthday to You
10.
Sometime prior to 1893, Mildred J. Hill (“Mildred Hill”) and her sister
14
Patty Smith Hill (“Patty Hill”) (Mildred and Patty Hill are collectively referred to as
15
the “Hill Sisters”) authored a written manuscript containing sheet music for 73
16
songs composed or arranged by Mildred Hill, with words written and adapted by
17
Patty Hill.
18
11.
19
20
The manuscript included Good Morning to All, a song written by the
Hill Sisters.
12.
On or about February 1, 1893, the Hill Sisters sold and assigned all
21
their right, title, and interest in the written manuscript to Clayton F. Summy
22
(“Summy”) in exchange for 10 percent of retail sales of the manuscript. The sale
23
included the song Good Morning to All.
24
13.
In or around 1893, Summy published the Hill Sisters’ written
25
manuscript with an introduction by Anna E. Bryan (“Bryan”) in a songbook titled
26
Song Stories for the Kindergarten. Song Stories for the Kindergarten included the
27
song Good Morning to All.
28
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2
3
4
5
6
7
14.
On or about October 16, 1893, Summy filed a copyright application
(Reg. No. 45997) with the Copyright Office for Song Stories for the Kindergarten.
15.
On the October 16, 1893, copyright application, Summy claimed to be
the copyright’s proprietor, but not the author of the copyrighted works.
16.
Song Stories for the Kindergarten bears a copyright notice reading
“Copyright 1893, by Clayton F. Summy.”
17.
As proprietor of the 1893 copyright in Song Stories for the
8
Kindergarten, Summy owned the rights to both the songbook as a compilation and
9
the individual songs published therein, including Good Morning to All.
10
18.
The lyrics to Good Morning to All are:
11
Good morning to you
12
Good morning to you
13
Good morning dear children
14
Good morning to all.
15
16
19.
The lyrics to Happy Birthday to You are set to the melody from the
17
song Good Morning to All. As nearly everyone knows, the lyrics to Happy Birthday
18
to You are:
19
Happy Birthday to You
20
Happy Birthday to You
21
Happy Birthday dear [NAME]
22
Happy Birthday to You.
23
24
25
26
20.
The lyrics to Happy Birthday to You were not published in Song Stories
for the Kindergarten.
21.
On or about January 14, 1895, Summy incorporated the Clayton F.
27
Summy Co. (“Summy Co.”) under the laws of the State of Illinois for a limited term
28
of 25 years.
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22.
In 1896, Summy published a new, revised, illustrated, and enlarged
2
version of Song Stories for the Kindergarten, which contained eight previously
3
unpublished songs written by the Hill Sisters as well as illustrations by Margaret
4
Byers.
5
23.
On or about June 18, 1896, Summy filed a copyright application (Reg.
6
No. 34260) with the Copyright Office for the 1896 publication of Song Stories for
7
the Kindergarten.
8
9
10
11
12
24.
On its June 18, 1896, copyright application, Summy again claimed to
be the copyright’s proprietor, but (again) not the author of the copyrighted works.
25.
The 1896 version of Song Stories for the Kindergarten bears a
copyright notice reading “Copyright 1896, by Clayton F. Summy.”
26.
As proprietor of the 1896 copyright in the revised Song Stories for the
13
Kindergarten, Summy owned the rights to both the songbook as a compilation and
14
the individual songs published therein, including Good Morning to All.
15
16
17
27.
The lyrics to Happy Birthday to You were not published in the 1896
version of Song Stories for the Kindergarten.
28.
In 1899, Summy Co. published 17 songs from the 1893 version of Song
18
Stories for the Kindergarten in a songbook titled Song Stories for the Sunday
19
School. One of those songs included in Song Stories for the Sunday School was
20
Good Morning to All.
21
22
23
24
29.
On or about March 20, 1899, Summy Co. filed a copyright application
(Reg. No. 20441) with the Copyright Office for Song Stories for the Sunday School.
30.
On the 1899 copyright application, Summy Co. claimed to be the
copyright’s proprietor, but not the author of the copyrighted works.
25
31.
The title page to Song Stories for the Sunday School states:
26
This collection of songs has been published in response to earnest
27
requests from various sources. They are taken from the book, Song
28
Stories for the Kindergarten by the MISSES HILL, and are the
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copyright property of the publishers. (Emphasis added).
2
32.
3
4
Song Stories for the Sunday School bears a copyright notice reading
“Copyright 1899 by Clayton F. Summy Co.”
33.
As proprietor of the 1899 copyright in Song Stories for the Sunday
5
School, Summy Co. owned the rights to both the songbook as a compilation and the
6
individual songs published therein, including Good Morning to All.
7
8
9
34.
The lyrics to Happy Birthday to You were not published in Song Stories
for the Sunday School.
35.
Even though the lyrics to Happy Birthday to You and the song Happy
10
Birthday to You had not been fixed in a tangible medium of expression, the public
11
began singing Happy Birthday to You no later than the early 1900s.
12
36.
For example, in the January 1901 edition of Inland Educator and
13
Indiana School Journal, the article entitled “First Grade Opening Exercises”
14
described children singing the words “happy birthday to you,” but did not print the
15
song’s lyrics or melody.
16
17
18
19
20
21
22
23
37.
In or about February, 1907, Summy Co. republished the song Good
Morning to All as an individual musical composition.
38.
On or about February 7, 1907, Summy Co. filed a copyright application
(Reg. No. 142468) with the Copyright Office for the song Good Morning to All.
39.
The lyrics to Happy Birthday to You do not appear in the 1907
publication of Good Morning to All.
40.
In 1907, Fleming H. Revell Co. (“Revell”) published the book Tell Me
a True Story, arranged by Mary Stewart, which instructed readers to:
24
Sing: “Good-bye to you, good-bye to you, good-bye dear children,
25
good-bye to you.” Also: “Good-bye dear teacher.” (From “Song
26
Stories for the Sunday-School,” published by Summy & Co.)
27
28
Sing: “Happy Birthday to You.” (Music same as “Good-bye to
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1
You.”)
2
3
41.
A239690) with the Copyright Office for Tell Me a True Story.
4
5
On or about May 18, 1909, Revell filed an application (Reg. No.
42.
Tell Me a True Story did not include the lyrics to Happy Birthday to
43.
Upon information and belief, the lyrics to Happy Birthday to You
You.
6
7
(without the sheet music for the melody) were first published in 1911 by the Board
8
of Sunday Schools of the Methodist Episcopal Church (“Board of Sunday Schools”)
9
in The Elementary Worker and His Work, by Alice Jacobs and Ermina Chester
10
Lincoln, as follows:
11
Happy birthday to you, Happy birthday to you, Happy birthday,
12
dear John, Happy birthday to you. (Sung to the same tune as the
13
“Good Morning”) [NOTE: The songs and exercises referred to in
14
this program may be found in these books:... “Song Stories for the
15
Sunday School,” by Patty Hill.]
16
17
18
19
20
21
22
23
24
25
26
27
28
44.
On or about January 6, 1912, the Board of Sunday Schools filed a
copyright application (Reg. No. A303752) with the Copyright Office for The
Elementary Worker and His Work.
45.
The Elementary Worker and His Work attributed authorship or
identified the copyrights to many of the works included in the book. Significantly, it
did not attribute authorship or identify any copyright for the song Happy Birthday to
You.
46.
On or about January 14, 1920, Summy Co. was dissolved in accordance
with its limited (not perpetual) 25-year term of incorporation. Summy Co. did not
extend or renew the 1899 (Reg. No. 20441) or 1907 (Reg. No. 142468) copyrights
prior to its dissolution.
47.
Pursuant to Section 24 of the Copyright Act of 1909, the renewal rights
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1
to the original and revised Song Stories for the Kindergarten were vested solely in
2
their proprietor, Summy.
48.
3
Pursuant to Section 24 of the Copyright Act of 1909, the renewal rights
4
to Song Stories for the Sunday School and Good Morning to All were vested solely
5
in their proprietor, Summy Co.
49.
6
The copyright to the original Song Stories for the Kindergarten (Reg.
7
No. 45997) was not extended by Summy, and consequently expired on October 16,
8
1921. Song Stories for the Kindergarten, including the song Good Morning to All,
9
became dedicated to public use and fell into the public domain by no later than that
10
11
date.
50.
The copyright to the revised Song Stories for the Kindergarten (Reg.
12
No. 34260) was not extended by Summy, and consequently expired on June 18,
13
1924. The revised Song Stories for the Kindergarten became dedicated to public
14
use and fell into the public domain by no later than that date.
15
51.
In or around March 1924, the sheet music (with accompanying lyrics)
16
to Happy Birthday to You was in a songbook titled Harvest Hymns, published,
17
compiled, and edited by Robert H. Coleman (“Coleman”). Upon information and
18
belief, Harvest Hymns was the first time the melody and lyrics of Happy Birthday to
19
You were published together.
20
52.
Coleman did not claim authorship of the song entitled Good Morning
21
to You or the lyrics to Happy Birthday to You. Although Harvest Hymns attributed
22
authorship or identified the copyrights to many of the works included in the book, it
23
did not attribute authorship or identify any copyright for Good Morning to You or
24
Happy Birthday to You.
25
53.
On or about March 4, 1924, Coleman filed a copyright application
26
(Reg. No. A777586) with the Copyright Office for Harvest Hymns. On or about
27
February 11, 1952, the copyright was renewed (Reg. No. R90447) by the Sunday
28
School Board of the Southern Baptist Convention.
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1
54.
On or about April 15, 1925, Summy incorporated a new Clayton F.
2
Summy Co. (“Summy Co. II”) under the laws of the State of Illinois.
3
information and belief, Summy Co. II was not a successor to Summy Co.; rather, it
4
was incorporated as a new corporation.
5
55.
Upon
The sheet music (with accompanying lyrics) to Happy Birthday to You
6
was again published in 1928 in the compilation Children’s Praise and Worship,
7
compiled and edited by A.L. Byers, Bessie L. Byrum, and Anna E. Koglin (“Byers,
8
Byrum & Koglin”). Upon information and belief, Children’s Praise and Worship
9
was the first time the song was published under the title Happy Birthday to You.
10
56.
On or about April 7, 1928, Gospel Trumpet Co. (“Gospel”) filed a
11
copyright application (Reg. No. A1068883) with the Copyright Office for
12
Children’s Praise and Worship.
13
57.
Children’s Praise and Worship attributed authorship or identified the
14
copyrights to many of the works included in the book. Significantly, it did not
15
attribute authorship or identify any copyright for the song Happy Birthday to You.
16
58.
Children’s Praise and Worship did not provide any copyright notice for
17
the combination of Good Morning to All with the lyrics to Happy Birthday to You,
18
nor did it include the names of Mildred Hill or Patty Hill and did not attribute any
19
authorship or ownership to the Hill Sisters.
20
59.
Upon information and belief, the Hill Sisters had not fixed the lyrics to
21
Happy Birthday to You or the song Happy Birthday to You in a tangible medium of
22
expression, if ever, at any time before Gospel published Children’s Praise and
23
Worship in 1928.
24
60.
25
26
Upon information and belief, Summy sold Summy Co. II to John F.
Sengstack (“Sengstack”) in or around 1930.
61.
Upon information and belief, on or about August 31, 1931, Sengstack
27
incorporated a third Clayton F. Summy Co. (“Summy Co. III”) under the laws of the
28
State of Delaware.
Upon information and belief, Summy Co. III was not a
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1
successor to Summy Co. or Summy Co. II; rather, it was incorporated as a new
2
corporation.
3
62.
On May 17, 1933, Summy Co. II was dissolved for failure to pay taxes.
4
63.
On July 28, 1933, Happy Birthday to You was used in the world’s first
5
singing telegram.
6
64.
On September 30, 1933, the Broadway show As Thousands Cheer,
7
produced by Sam Harris with music and lyrics written by Irving Berlin, began using
8
the song Happy Birthday to You in public performances.
65.
9
On August 14, 1934, Jessica Hill, a sister of Mildred and Patty Hill,
10
commenced an action against Sam Harris in the Southern District of New York,
11
captioned Hill v. Harris, Eq. No. 78-350, claiming that the performance of Happy to
12
Birthday to You in As Thousands Cheer infringed on the Hill Sisters’ 1893 and 1896
13
copyrights to Good Morning to All. Jessica Hill asserted no claim in that action
14
regarding Happy Birthday to You, alone or in combination with Good Morning to
15
All.
16
66.
On January 21, 1935, Jessica Hill commenced an action against the
17
Federal Broadcasting Corp. in the Southern District of New York, captioned Hill v.
18
Federal Broadcasting Corp., Eq. No. 79-312, claiming infringement on the Hill
19
Sisters’ 1893 and 1896 copyrights to Good Morning to All. Jessica Hill asserted no
20
claim in that action regarding Happy Birthday to You, alone or in combination with
21
Good Morning to All.
22
67.
In 1934 and 1935, Jessica Hill sold and assigned to Summy Co. III
23
certain piano arrangements of Good Morning to All, including publishing, public
24
performance, and mechanical reproduction rights, copyright, and extension of
25
copyright in exchange for a percentage of the retail sales revenue from the sheet
26
music.
27
28
68.
On or about December 29, 1934, Summy Co. III filed an Application
for Copyright for Republished Musical Composition with new Copyright Matter
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1
(Reg. No. E45655) with the Copyright Office for the song Happy Birthday.
69.
2
In that December 1934 Application for Copyright, Summy Co. III
3
claimed to be the proprietor of the copyright as a work for hire by Preston Ware
4
Orem (“Orem”) and claimed the copyrighted new matter as “arrangement by piano
5
solo.”
70.
6
The lyrics to Happy Birthday to You were not included on the work
7
registered with the Copyright Office as Reg. No. E45655. The application did not
8
contain the names of the Hill Sisters and did not claim copyright in the lyrics to
9
Happy Birthday to You alone or in combination with the melody of Good Morning
10
to All.
71.
11
The work registered with the Copyright Office as Reg. No. E45655 was
12
not eligible for federal copyright protection in that it consisted entirely of
13
information that was common property and contained no original authorship, except
14
as to the arrangement itself.
72.
15
On or about February 18, 1935, Summy Co. III filed an Application for
16
Copyright for Republished Musical Composition with new Copyright Matter (Reg.
17
No. E46661) with the Copyright Office for the song Happy Birthday.
73.
18
In that February 1935 Application for Copyright, Summy Co. III
19
claimed to be the proprietor of the copyright as a work for hire by Orem and claimed
20
the copyrighted new matter as “arrangement for four hands at one piano.”
74.
21
The lyrics to Happy Birthday to You were not included on the work
22
registered with the Copyright Office as Reg. No. E46661. The application did not
23
contain the names of the Hill Sisters and did not claim copyright in the lyrics to
24
Happy Birthday to You alone or in combination with the melody of Good Morning
25
to All.
26
75.
The work registered with the Copyright Office as Reg. No. E46661 was
27
not eligible for federal copyright protection in that it consisted entirely of
28
information that was common property and contained no original authorship, except
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as to the arrangement itself.
76.
2
On or about April 5, 1935, Summy Co. III filed an Application for
3
Copyright for Republished Musical Composition with new Copyright Matter (Reg.
4
No. E47439) with the Copyright Office for the song Happy Birthday.
77.
5
In that April 1935 Application for Copyright, Summy Co. III claimed
6
to be the proprietor of the copyright as a work for hire by Orem and claimed the
7
copyrighted new matter as “arrangement of second piano part.”
78.
8
9
The lyrics to Happy Birthday to You were not included on the work
registered with the Copyright Office as Reg. No. E47439.
The application did not
10
contain the names of the Hill Sisters and did not claim copyright in the lyrics to
11
Happy Birthday to You alone or in combination with the melody of Good Morning
12
to All.
79.
13
The work registered with the Copyright Office as Reg. No. E47439 was
14
not eligible for federal copyright protection in that it consisted entirely of
15
information that was common property and contained no original authorship, except
16
as to the arrangement itself.
80.
17
On or about April 5, 1935, Summy Co. III filed an Application for
18
Copyright for Republished Musical Composition with new Copyright Matter (Reg.
19
No. E47440) with the Copyright Office for the song Happy Birthday.
81.
20
In that additional April 1935 Application for Copyright, Summy Co. III
21
claimed to be the proprietor of the copyright as a work for hire by Orem and claimed
22
the copyrighted new matter as “arrangement for six hands at one piano.”
82.
23
The lyrics to Happy Birthday to You were not included on the work
24
registered with the Copyright Office as Reg. No. E47440. The application did not
25
contain the names of the Hill Sisters and did not claim copyright in the lyrics to
26
Happy Birthday to You alone or in combination with the melody of Good Morning
27
to All.
28
83.
The work registered with the Copyright Office as Reg. No. E47440 was
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1
not eligible for federal copyright protection in that it consisted entirely of
2
information that was common property and contained no original authorship, except
3
as to the arrangement itself.
4
84.
On December 9, 1935, Summy Co. III filed an Application for
5
Copyright for Republished Musical Composition with new Copyright Matter (Reg.
6
No. E51988) with the Copyright Office for Happy Birthday to You.
7
85.
In that December 1935 Application for Copyright, Summy Co. III
8
claimed to be the proprietor of the copyright as a work for hire by R.R. Forman
9
(“Forman”) and claimed the copyrighted new matter as “arrangement for Unison
10
Chorus and revised text.” The sheet music deposited with the application credited
11
Forman only for the arrangement, not for any lyrics, and did not credit the Hill
12
Sisters with writing the lyrics to Happy Birthday to You.
13
86.
The lyrics to Happy Birthday to You, including a second verse as the
14
revised text, were included on the work registered with the Copyright Office as Reg.
15
No. E51988. However, the December 1935 Application for Copyright did not
16
attribute authorship of the lyrics to either of the Hill Sisters and did not claim
17
copyright in the lyrics to Happy Birthday to You alone or in combination with the
18
melody of Good Morning to All.
19
87.
The work registered with the Copyright Office as Reg. No. E51988 was
20
not eligible for federal copyright protection in that it consisted entirely of
21
information that was common property and contained no original authorship, except
22
as to the sheet music arrangement itself.
23
88.
The work registered as Reg. No. E51988 was not eligible for federal
24
copyright protection because Summy Co. III did not have authorization from the
25
author to publish that work.
26
89.
On December 9, 1935, Summy Co. III filed an Application for
27
Copyright for Republished Musical Composition with new Copyright Matter (Reg.
28
No. E51990) with the Copyright Office for Happy Birthday to You.
- 13 -
Ex. 120
1778
Case 2:13-cv-04460-GHK-MRW Document 1 Filed 06/20/13 Page 15 of 34 Page ID #:23
1
90.
In that additional December 1935 Application for Copyright, Summy
2
Co. III claimed to be the proprietor of the copyright as a work for hire by Orem and
3
claimed the copyrighted new matter as “arrangement as easy piano solo, with text.”
4
The sheet music deposited with the application credited Orem only for the
5
arrangement, not for any lyrics, and did not credit the Hill Sisters with writing the
6
lyrics to Happy Birthday to You.
7
91.
The lyrics to Happy Birthday to You were included on the work
8
registered with the Copyright Office as Reg. No. E51990. However, the additional
9
December 1935 Application for Copyright did not attribute authorship of the lyrics
10
to either of the Hill Sisters, did not contain the names of either of the Hill Sisters,
11
and did not claim any copyright in the lyrics to Happy Birthday to You alone or in
12
combination with the melody of Good Morning to All.
13
92.
The work registered with the Copyright Office as Reg. No. E51990 was
14
not eligible for federal copyright protection in that it consisted entirely of
15
information that was common property and contained no original authorship, except
16
as to the sheet music arrangement itself.
17
93.
The work registered as Reg. No. E51990 was not eligible for federal
18
copyright protection because Summy Co. III did not have authorization from the
19
author to publish that work.
20
94.
In or about February, 1938, Summy Co. III purported to grant to
21
ASCAP the right to license Happy Birthday to You for public performances and to
22
collect fees for such use on behalf of Summy Co. III. ASCAP thus began working
23
as agent for Summy Co. III in collecting fees for Summy Co. III for licensing Happy
24
Birthday to You.
25
95.
On October 15, 1942, The Hill Foundation commenced an action
26
against Summy Co. III in the Southern District of New York, captioned The Hill
27
Foundation, Inc. v. Clayton F. Summy Co., Case No. 19-377, for an accounting of
28
the royalties received by it for the licensing of Happy Birthday to You. The Hill
- 14 -
Ex. 120
1779
Case 2:13-cv-04460-GHK-MRW Document 1 Filed 06/20/13 Page 16 of 34 Page ID #:24
1
Foundation asserted claims under the 1893, 1896, 1899, and 1907 copyrights for
2
Good Morning to All and did not claim any copyright to the lyrics to Happy
3
Birthday to You, alone or in combination with the melody of Good Morning to All.
96.
4
On March 2, 1943, The Hill Foundation commenced an action against
5
the Postal Telegraph Cable Company in the Southern District of New York,
6
captioned The Hill Foundation, Inc. v. Postal Telegraph-Cable Co., Case No. 20-
7
439, for infringement of the Hill Sisters’ purported 1893, 1896, and 1899 copyrights
8
to Good Morning to All. The Hill Foundation asserted claims only under the 1893,
9
1896, and 1899 copyrights for Good Morning to All and did not claim any copyright
10
to the lyrics to Happy Birthday to You, alone or in combination with the melody of
11
Good Morning to All.
97.
12
Despite the filing of four prior cases in the Southern District of New
13
York asserting copyrights to Good Morning to All, there has been no judicial
14
determination of the validity or scope of any copyright related to Good Morning to
15
All.
16
98.
17
Company.
18
99.
In or about 1957, Summy Co. III changed its name to Summy-Birchard
In 1962, Summy Co. III (renamed as Summy-Birchard Company) filed
19
renewals for each of the six registrations it obtained in 1934 and 1935 (Reg. Nos.
20
E45655, E46661, E47439, E47440, E51988, and E51990), each renewal was
21
specifically and expressly confined to the musical arrangements.
22
100. In particular, on December 6, 1962, Summy Co. III filed a renewal
23
application for Reg. No. E51988, as employer for hire of Forman. Forman did not
24
write the lyrics to Happy Birthday to You or the combination of those lyrics with the
25
melody of Good Morning to All, and neither Summy Co. III nor defendant
26
Warner/Chappell has claimed otherwise.
27
101. Also on December 6, 1962, Summy Co. III filed a renewal application
28
for Reg. No. E51990, as employer for hire of Orem. Orem did not write the lyrics to
- 15 -
Ex. 120
1780
Case 2:13-cv-04460-GHK-MRW Document 1 Filed 06/20/13 Page 17 of 34 Page ID #:25
1
Happy Birthday to You or the combination of those lyrics with the melody of Good
2
Morning to All, and neither Summy Co. III nor defendant Warner/Chappell has
3
claimed otherwise.
4
102. Summy-Birchard Company was renamed Birch Tree Ltd. in the 1970s
5
and was acquired by Warner/Chappell in or about 1998.
6
Happy Birthday to You – 100 Years Later
7
8
9
10
103. According to a 1999 press release by ASCAP, Happy Birthday to You
was the most popular song of the 20th Century.
104. The 1998 edition of the Guinness Book of World Records identified
Happy Birthday to You as the most recognized song in the English language.
11
105. Defendant Warner/Chappell currently claims it owns the exclusive
12
copyright to Happy Birthday to You based on the piano arrangements that Summy
13
Co. III published in 1935.
14
106. ASCAP provides public performance licenses to bars, clubs, websites,
15
and many other venues. ASCAP “blanket licenses” grant the licensee the right to
16
publicly perform any or all of the over 8.5 million songs in ASCAP repertory in
17
exchange for an annual fee. The public performance license royalties are distributed
18
to ASCAP members based on surveys of performances of each ASCAP repertory
19
song across different media. By registering Happy Birthday to You with ASCAP,
20
Defendant Warner/Chappell obtains a share of blanket license revenue that would
21
otherwise be paid to all other ASCAP members, in proportion to their songs’ survey
22
shares.
23
107. Plaintiff Marya d/b/a RTAF recorded the song Happy Birthday to You
24
at a live show in San Francisco, to be released as part of a “live” album. She learned
25
that defendant Warner/Chappell claimed exclusive copyright ownership to Happy
26
Birthday to You, including for purposes of issuing mechanical licenses.
27
108. Accordingly, on June 17, 2013, Plaintiff Marya paid Warner/Chappell
28
$455 for a mechanical license for the reproduction and distribution of 5,000 albums.
- 16 -
Ex. 120
1781
Case 2:13-cv-04460-GHK-MRW Document 1 Filed 06/20/13 Page 18 of 34 Page ID #:26
1
CLASS ALLEGATIONS
2
109. Plaintiff Marya brings this action under Federal Rules of Civil
3
Procedure 23(a) and (b) as a class action on behalf of herself and all others similarly
4
situated for the purpose of asserting the claims alleged in this Complaint on a
5
common basis.
6
110. The proposed Class is comprised of:
7
All persons or entities (excluding Warner/Chappell’s directors,
8
officers, employees, and affiliates) who entered into a license with
9
Warner/Chappell, or paid Warner/Chappell, directly or indirectly
10
through its agents, a licensing fee for the song Happy Birthday to
11
You at any time from June 18, 2009, until Warner/Chappell’s
12
conduct as alleged herein has ceased.
13
14
15
16
17
18
19
20
21
22
23
24
111. Although Plaintiff Marya does not know the exact size of the Class or
the identities of all members of the Class, upon information and belief that
information can be readily obtained from the books and records of defendant
Warner/Chappell. Plaintiff believes that the Class includes thousands of persons or
entities who are widely geographically disbursed. Thus, the proposed Class is so
numerous that joinder of all members is impracticable.
112. The claims of all members of the Class involve common questions of
law and fact including:
a.
to public use;
b.
27
28
whether Warner/Chappell is the exclusive owner of the copyright to
Happy Birthday to You and is thus entitled to all of the rights conferred
25
26
whether Happy Birthday to You is in the public domain and dedicated
in 17 U.S.C. § 102;
c.
whether Warner/Chappell has the right to collect fees for the use of
Happy Birthday to You;
- 17 -
Ex. 120
1782
Case 2:13-cv-04460-GHK-MRW Document 1 Filed 06/20/13 Page 19 of 34 Page ID #:27
1
d.
whether Warner/Chappell has violated the law by demanding and
2
collecting fees for the use of Happy Birthday to You despite not having
3
a valid copyright to the song; and
4
e.
whether Warner/Chappell is required to return unlawfully obtained
5
payments to plaintiff Marya and the other members of the Class and, if
6
so, what amount is to be returned.
7
8
113. With respect to Claim III, the common questions of law and fact
predominate over any potential individual issues.
9
114. Plaintiff Marya’s claims are typical of the claims of all other members
10
of the Class and plaintiff Marya’s interests do not conflict with the interests of any
11
other member of the Class, in that plaintiff and the other members of the Class were
12
subjected to the same unlawful conduct.
13
115. Plaintiff Marya is committed to the vigorous prosecution of this action
14
and has retained competent legal counsel experienced in class action and complex
15
litigation.
16
116. Plaintiff is an adequate representative of the Class and, together with its
17
attorneys, is able to and will fairly and adequately protect the interests of the Class
18
and its members.
19
117. A class action is superior to other available methods for the fair, just,
20
and efficient adjudication of the claims asserted herein. Joinder of all members of
21
the Class is impracticable and, for financial and other reasons, it would be
22
impractical for individual members of the Class to pursue separate claims.
23
118. Moreover, the prosecution of separate actions by individual members
24
of the Class would create the risk of varying and inconsistent adjudications, and
25
would unduly burden the courts.
26
27
119. Plaintiff Marya anticipates no difficulty in the management of this
litigation as a class action.
28
- 18 -
Ex. 120
1783
Case 2:13-cv-04460-GHK-MRW Document 1 Filed 06/20/13 Page 20 of 34 Page ID #:28
1
FIRST CLAIM FOR RELIEF
2
DECLARATORY JUDGMENT PURSUANT TO 28 U.S.C. § 2201
3
(On Behalf Of Plaintiff And The Class)
4
(Against Defendant Warner/Chappell)
5
6
120. Plaintiff Marya repeats and realleges paragraphs 1 through 119 set forth
above as though they were fully set forth herein.
7
121. Plaintiff Marya brings this claim individually on her own behalf and on
8
behalf of the proposed Class pursuant to Rule 23(b)(2) of the Federal Rules of Civil
9
Procedure.
10
122. Plaintiff Marya seeks adjudication of an actual controversy arising
11
under the Copyright Act, 17 U.S.C. §§ 101 et seq., in connection with defendant
12
Warner/Chappell’s purported copyright claim to Happy Birthday to You. Plaintiff
13
seeks the Court’s declaration that the Copyright Act does not bestow upon
14
Warner/Chappell the rights it has asserted and enforced against plaintiff Marya and
15
the other members of the Class.
16
123. Defendant Warner/Chappell asserts that it is entitled to royalties
17
pursuant to 17 U.S.C. § 115 for the creation and distribution of phonorecords and
18
digital downloads of the composition Happy Birthday to You, under threat of a claim
19
of copyright infringement.
20
124. Plaintiff Marya’s claim presents a justiciable controversy because
21
plaintiff Marya’s agreement to pay defendant Warner/Chappell and its actual
22
payment to Warner/Chappell for use of the song Happy Birthday to You in her
23
album, was the involuntary result of Warner/Chappell’s assertion of a copyright and
24
the risk that plaintiff Marya would be exposed to substantial statutory penalties
25
under the Copyright Act had she failed to enter such an agreement and pay
26
Warner/Chappell standard mechanical license royalties it demanded, but then paid
27
for the mechanical license anyway.
28
125. Plaintiff Marya seeks the Court’s determination as to whether
- 19 -
Ex. 120
1784
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1
defendant Warner/Chappell is entitled to assert ownership of the copyright to Happy
2
Birthday to You against Marya pursuant to the Copyright Act as Warner/Chappell
3
claims, or whether Warner/Chappell is wielding a false claim of ownership to inhibit
4
plaintiff Marya’s use and enjoyment (and the public’s use and enjoyment) of
5
intellectual property which is rightfully in the public domain.
6
126. If and to the extent that defendant Warner/Chappell relies upon the
7
1893, 1896, 1899, or 1907 copyrights for the melody for Good Morning to All, those
8
copyrights expired or were forfeited as alleged herein.
9
127. As alleged above, the 1893 and 1896 copyrights to the original and
10
revised versions of Song Stories for the Kindergarten, which contained the song
11
Good Morning to All, were not renewed by Summy and accordingly expired in 1921
12
and 1924, respectively.
13
128. As alleged above, the 1899 copyright to Song Stories for the Sunday
14
School, which contained Good Morning to All, and the 1907 copyright to Good
15
Morning to All were not renewed by Summy Co. before its expiration in 1920 and
16
accordingly expired in 1927 and 1935, respectively.
17
129. The 1893, 1896, 1899, and 1907 copyrights to Good Morning to All
18
were forfeited by the republication of Good Morning to All in 1921 without proper
19
notice of its original 1893 copyright.
20
21
130. The copyright to Good Morning to All expired in 1921 because the
1893 copyright to Song Stories for the Kindergarten was not properly renewed.
22
131. The piano arrangements for Happy Birthday to You published by
23
Summy Co. III in 1935 (Reg. Nos. E51988 and E51990) were not eligible for
24
federal copyright protection because those works did not contain original works of
25
authorship, except to the extent of the piano arrangements themselves.
26
27
28
132. The 1934 and 1935 copyrights pertained only to the piano
arrangements, not to the melody or lyrics of the song Happy Birthday to You.
133. The registration certificates for The Elementary Worker and His Work
- 20 -
Ex. 120
1785
Case 2:13-cv-04460-GHK-MRW Document 1 Filed 06/20/13 Page 22 of 34 Page ID #:30
1
in 1912, Harvest Hymns in 1924, and Children’s Praise and Worship in 1928, which
2
did not attribute authorship of the lyrics to Happy Birthday to You to anyone, are
3
prima facie evidence that the lyrics were not authored by the Hill Sisters.
4
134. If declaratory relief is not granted, defendant Warner/Chappell will
5
continue wrongfully to assert the exclusive copyright to Happy Birthday to You at
6
least until 2030, when the current term of the copyright expires under existing
7
copyright law.
8
135. Plaintiff therefore requests a declaration that:
9
(a)
defendant Warner/Chappell does not own the copyright to, or possess
10
the exclusive right to reproduce, distribute, or publicly perform, Happy
11
Birthday To You;
12
(b)
13
license for use of Happy Birthday To You; and
14
(c)
15
public use.
Warner/Chappell does not own the exclusive right to demand or grant a
Happy Birthday to You is in the public domain and is dedicated to the
16
SECOND CLAIM FOR RELIEF
17
UPON ENTRY OF DECLARATORY JUDGMENT
18
DECLARATORY AND INJUNCTIVE RELIEF
19
PURSUANT TO 28 U.S.C § 2202
20
(On Behalf of Plaintiff and the Class)
21
(Against Defendant Warner/Chappell)
22
23
136. Plaintiff Marya repeats and realleges paragraphs 1 through 135 set forth
above as though they were fully set forth herein.
24
137. Plaintiff Marya brings this claim individually on her own behalf and on
25
behalf of the Class pursuant to Rule 23(b)(2) of the Federal Rules of Civil
26
Procedure.
27
138. Under 28 U.S.C. § 2202 empowers this Court to grant, “necessary or
28
proper relief based on a declaratory judgment or decree . . . after reasonable notice
- 21 -
Ex. 120
1786
Case 2:13-cv-04460-GHK-MRW Document 1 Filed 06/20/13 Page 23 of 34 Page ID #:31
1
and hearing, against any adverse party whose rights have been determined by such
2
judgment.”
3
139. Plaintiff Marya and the other proposed Class members have been
4
harmed, and defendant Warner/Chappell has been unjustly enriched, by
5
Warner/Chappell’s takings.
6
7
140. Plaintiff Marya seeks relief for herself and the other members of the
proposed Class upon the entry of declaratory judgment upon Claim I, as follows:
8
(a)
an injunction to prevent defendant Warner/Chappell from
9
making further representations of ownership of the copyright to
10
Happy Birthday To You;
11
(b)
12
license fees paid to defendant Warner/Chappell, directly or indirectly
13
through its agents, in connection with the purported licenses it granted
14
to Marya and the other Class members;
15
(c)
16
Warner/Chappell, directly or indirectly through its agents, from
17
plaintiff Marya and the other Class members in connection with its
18
claim to ownership of the copyright to Happy Birthday to You; and
19
(d)
restitution to plaintiff Marya and the other Class members of
an accounting for all monetary benefits obtained by defendant
such other further and proper relief as this Court sees fit.
20
THIRD CLAIM FOR RELIEF
21
UNFAIR BUSINESS ACTS AND PRACTICES IN VIOLATION OF
22
CALIFORNIA BUSINESS AND PROFESSIONS CODE §§ 17200 ET SEQ.
23
(On Behalf of Plaintiff and the Class)
24
(Against Defendant Warner/Chappell)
25
26
141. Plaintiff Marya repeats and realleges paragraphs 1 through 119 set forth
above as though they were fully set forth herein.
27
142. Plaintiff Marya brings this claim individually on her own behalf and on
28
behalf of the Class pursuant to Rule 23(b)(3) of the Federal Rules of Civil
- 22 -
Ex. 120
1787
Case 2:13-cv-04460-GHK-MRW Document 1 Filed 06/20/13 Page 24 of 34 Page ID #:32
1
Procedure.
2
143. As alleged herein, plaintiff Marya and the other Class members have
3
paid licensing fees to defendant Warner/Chappell and have therefore suffered injury
4
in fact and have lost money or property as a result of defendant Warner/Chappell’s
5
conduct.
6
7
144. California’s Unfair Competition Law, Business & Professions Code §§
17200 et seq. (“UCL”), prohibits any unlawful or unfair business act or practice.
8
145. UCL § 17200 further prohibits any fraudulent business act or practice.
9
146. Defendant Warner/Chappell’s actions, claims, nondisclosures, and
10
misleading statements, as alleged in this Complaint, were unfair, false, misleading,
11
and likely to deceive the consuming public within the meaning of UCL §§ 17200,
12
17500.
13
147. Defendant Warner/Chappell’s conduct in exerting control over
14
exclusive copyright ownership to Happy Birthday to You to extract licensing fees is
15
deceptive and misleading because Warner/Chappell does not own the rights to
16
Happy Birthday to You.
17
148. Plaintiff Marya and the other members of the Class have, in fact, been
18
deceived as a result of their reasonable reliance upon defendant Warner/Chappell’s
19
materially false and misleading statements and omissions, as alleged above.
20
149. As a result of defendant Warner/Chappell’s unfair and fraudulent acts
21
and practices as alleged above, plaintiff Marya and the other Class members have
22
suffered substantial monetary injuries.
23
150. Plaintiff Marya and the other Class members reserve the right to allege
24
other violations of law which constitute other unfair or deceptive business acts or
25
practices. Such conduct is ongoing and continues to this date.
26
27
28
151. As a result of its deception, defendant Warner/Chappell has been able
to reap unjust revenue and profit.
152. Upon information and belief, defendant Warner/Chappell has collected
- 23 -
Ex. 120
1788
Case 2:13-cv-04460-GHK-MRW Document 1 Filed 06/20/13 Page 25 of 34 Page ID #:33
1
and continues to collect at least $2 million per year in licensing fees for Happy
2
Birthday to You. Therefore, the amount in controversy exceeds $5 million in the
3
aggregate.
4
153. Unless restrained and enjoined, defendant Warner/Chappell will
5
continue to engage in the above-described conduct. Accordingly, injunctive relief is
6
appropriate.
7
154. Plaintiff Marya, individually on its own behalf and on behalf of the
8
other members of the Class, seeks restitution and disgorgement of all money
9
obtained from plaintiff and the other members of the Class, collected as a result of
10
unfair competition, and all other relief this Court deems appropriate, consistent with
11
UCL § 17203.
12
FOURTH CLAIM FOR RELIEF
13
COMMON COUNT FOR MONEY HAD AND RECEIVED
14
(On Behalf of Plaintiff and the Class)
15
(Against Defendant Warner/Chappell)
16
17
155. Plaintiff Marya repeats and realleges paragraphs 1 through 135 set forth
above as though they were fully set forth herein.
18
156. Within the last four years Defendant Warner/Chappell became indebted
19
to all Plaintiff Marya and all class members for money had and received by
20
Defendant Warner/Chappell for the use and benefit of Plaintiff Marya and class
21
members. The money in equity and good conscience belongs to Plaintiff Marya and
22
class members.
23
FIFTH CLAIM FOR RELIEF
24
RECISSION FOR FAILURE OF CONSIDERATION,
25
(On Behalf of Plaintiff and the Class)
26
(Against Defendant Warner/Chappell)
27
28
157. Plaintiff Marya repeats and realleges paragraphs 1 through 135 set forth
above as though they were fully set forth herein.
- 24 -
Ex. 120
1789
Case 2:13-cv-04460-GHK-MRW Document 1 Filed 06/20/13 Page 26 of 34 Page ID #:34
1
2
3
4
158. Defendant’s purported licenses were worthless and ineffective, and do
not constitute a valid consideration.
159. The complete lack of consideration obviates any need for notice to
Defendant.
SIXTH CLAIM FOR RELIEF
5
6
FALSE ADVERTISING, CAL. BUS. & PROF. CODE §§ 17500 ET SEQ.
7
(On Behalf of Plaintiff and the Class)
8
(Against Defendant Warner/Chappell)
9
10
160. Plaintiff Marya repeats and realleges paragraphs 1 through 135 set forth
above as though they were fully set forth herein.
11
161. On information and belief, Defendant Warner/Chappell intended to
12
induce the public to enter into an obligation related to its alleged property, namely
13
the composition Happy Birthday to You.
14
162. Defendant Warner/Chappell publicly disseminated advertising which
15
contained statements which were untrue and misleading and which concerned the
16
composition Happy Birthday to You, for which they improperly sought and received
17
licensing fees. Defendant knew, or in the exercise of reasonable care should have
18
known, that these statements were untrue and misleading.
19
20
163. Plaintiff and class members have suffered injury in fact and have lost
money as a result of such unfair competition.
DEMAND FOR JURY TRIAL
21
22
23
160. Plaintiff Marya hereby demands a trial by jury to the extent that the
allegations herein are triable by jury under Federal Rules of Civil Procedure 38-39.
PRAYER RELIEF
24
25
26
WHEREFORE, plaintiff Marya, on behalf of herself and the other members
of the Class, prays for judgment against defendant Warner/Chappell as follows:
27
A.
certifying the Class as requested herein;
28
B.
declaring that the song Happy Birthday to You is not protected by
- 25 -
Ex. 120
1790
Case 2:13-cv-04460-GHK-MRW Document 1 Filed 06/20/13 Page 27 of 34 Page ID #:35
Ex. 120
1791
Case 2:13-cv-04460-GHK-MRW Document 1 Filed 06/20/13 Page 28 of 34 Page ID #:36
Ex. 120
1792
Case 2:13-cv-04460-GHK-MRW Document 1 Filed 06/20/13 Page 29 of 34 Page ID #:37
5
RANDALL S. NEWMAN PC
RANDALL S. NEWMAN (SBN 190547)
37 Wall Street, Penthouse D
New York, NY 10005
Telephone: 212/797-3737
Facsimile: 212/797-3172
rsn@randallnewman.net
6
Attorneys for Plaintiff Rupa Marya
1
2
3
4
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
WARNER:19984.complaint
- 28 -
Ex. 120
1793
Case 2:13-cv-04460-GHK-MRW Document 1 Filed 06/20/13 Page 30 of 34 Page ID #:38
Ex. 120
1794
Case 2:13-cv-04460-GHK-MRW Document 1 Filed 06/20/13 Page 31 of 34 Page ID #:39
Ex. 120
1795
Case 2:13-cv-04460-GHK-MRW Document 1 Filed 06/20/13 Page 32 of 34 Page ID #:40
Ex. 120
1796
Case 2:13-cv-04460-GHK-MRW Document 1 Filed 06/20/13 Page 33 of 34 Page ID #:41
Ex. 120
1797
Case 2:13-cv-04460-GHK-MRW Document 1 Filed 06/20/13 Page 34 of 34 Page ID #:42
Ex. 120
1798
1799
Ex. 121
1800
Ex. 121
1801
Ex. 121
1802
Ex. 121
1803
Ex. 121
1804
Ex. 121
1805
Ex. 121
1806
Ex. 121
1807
Ex. 121
1808
Ex. 121
1809
Ex. 121
1810
Ex. 121
1811
Ex. 121
1812
Ex. 121
1813
Ex. 121
1814
Ex. 121
1815
Ex. 121
1816
Ex. 121
1817
Ex. 121
1818
Ex. 121
1819
Ex. 121
1820
Ex. 121
1821
Ex. 121
1822
Ex. 121
1823
Ex. 121
1824
Ex. 121
1825
Ex. 121
1826
Ex. 121
1827
Ex. 121
1828
Ex. 121
1829
Ex. 121
1830
Ex. 121
1831
Ex. 121
1832
Ex. 121
1833
EXHIBIT 122
Ex. 122
____
1834
Case 2:13-cv-04460-GHK-MRW Document 59 Filed 09/04/13 Page 1 of 40 Page ID #:366
4
BETSY C. MANIFOLD (182450)
manifold @whafu.com
WOLF HALDENSTEIN ADLER
FREEMAN & HERZ LLP
750 B Street, Suite 2770
San Die§.o, CA 92101
Tel.: 61 /239-4599; Fax: 619/234-4599
5
Counsel for Plaintiffs
6
[Additional Counsel Appear on Signature Page]
1
2
3
7
(J.Jo
-1
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
WESTERN DIVISION
8
9
GOOD MORNING TO YOU
PRODUCTIONS CORP.; ROBERT
11 SIEGEL; RUPAMARYA; and
12 MAJAR PRODUCTIONS, LLC; On
Behalf of Themselves and All Others
13 Similarly Situated,
14
Plaintiffs,
15
10
Nfo
16
17
18
19
20
21
22
23
24
25
26
27
v.
WARNER/CHAPPELL MUSIC,
INC., and SUMMY-BIRCHARD,
INC.,
Defendants.
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Lead Case No. CV 13-04460-GHK
(MRWx)
SECOND AMENDED
CONSOLIDATED COMPLAINT
FOR (1) INVALIDITY OF
COPYRIGHT UNDER THE
COPYRIGHT ACT (17 U.S.C. §§ 101
et seq.); (2) DECLARATORY AND
INJUNCTIVE RELIEF; (3)
VIOLATIONS OF CALIFORNIA
UNFAIR COMPETITION LAWS
(Cal. Bus. & Prof. Code§§ 17200 et
seq.); (4) BREACH OF CONTRACT;
(5) MONEY HAD AND RECEIVED;
(6) RESCISSION FOR FAILURE OF
CONSIDERATION; and (7)
VIOLATIONS OF CALIFORNIA
FALSE ADVERTISING LAWS (Cal.
Bus. & Prof. Code§ 17500 et seq.)
CLASS ACTION
DEMAND FOR JURY TRIAL
Room: 650 (Roybal)
Judge: Hon. George H. King, Chief Judge
28
Ex. 122
1835
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1
Plaintiffs, Good Morning to You Productions Corp. ("GMTY"), Robert
2
Siegel ("Siegel"), Rupa Marya d/b/a/ Rupa Marya & The April Fishes ("Rupa"), and
3
Majar Productions, LLC ("Majar") (collectively herein "Plaintiffs"), on behalf of
4
themselves and all others similarly situated, by their undersigned attorneys, as and
5 for their Consolidated Second Amended Complaint For Declaratory Judgment;
6
Injunctive And Declaratory Relief; And Damages For: (1) Invalidity Of Copyright
7
(Copyright Act, 17 U.S.C. §§ 101 et seq.); (2) Declaratory and Injunctive Relief
8
Upon Entry of Declaratory Judgment; (3) Unfair Competition Laws (Cal. Bus. &
9
Prof. Code§§ 17200 et seq.); (4) Breach of Contract; (5) Common Law Money Had
10
and Received; (6) Recission for Failure of Consideration; and (7) Violations of
11
California False Advertising Laws (Bus. & Prof. Code § 17500, et seq.) against
12
defendant Warner/Chappell Music, Inc. ("Warner/Chappell") and Summy-Birchard,
13
Inc. ("SBI") (collectively "Defendants"), hereby allege as follows:
14
15
JURISDICTION AND VENUE
1.
The Court has subject-matter jurisdiction over this action pursuant to
16
28 U.S.C. § 1331 and 28 U.S.C. § 1338 with respect to claims seeking declaratory
17
and other relief arising under the Copyright Act, 17 U.S.C. §§ 101 et seq.; pursuant
18
to the Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq.; pursuant to the Class
19
Action Fairness Act, 28 U.S.C. § 1332(d)(2); and supplemental jurisdiction pursuant
20
to 28 U.S.C. § 1367 over the entire case or controversy.
21
2.
The Court has personal jurisdiction and venue is proper in this District
22
under 28 U.S.C. §§ 139l(b)-(c) and 28 U.S.C. § 1400(a), in that the claims arise in
23
this Judicial District where both Defendants' principal places of business are located
24
and where they regularly conduct business.
25
3.
Paragraph 8 of the Film and Synchronization and Performance License
26
("Synchronization License") by and between assignee Plaintiff Siegel and defendant
27
Warner/Chappell states:
"this license has been entered into in, and shall be
28
- 1-
Ex. 122
1836
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1 interpreted in accordance with the laws of the state of California, and any action or
2
proceeding concerning the interpretation and/or enforcement of this license shall be
3
heard only in the state or federal courts situated in Los Angeles county .... "
4
Defendant Warner/Chappell requires any action or proceeding related thereto to be
5
brought in this District under the Synchronization License.
6
INTRODUCTION
7
4.
This is an action to declare invalid the copyright that Defendants claim
8
to own to the world's most popular song, Happy Birthday to You (the "Song"), to
9
declare that the Song is dedicated to public use and in the public domain; and to
10 return millions of dollars of unlawful licensing fees collected by defendant
11
Warner/Chappell pursuant to its wrongful assertion of copyright ownership of the
12
Song.
13
5.
According to the United States Copyright Office ("Copyright Office"),
14
a "musical composition consists of music, including any accompanying words, and
15
is normally registered as a work of the performing arts." Copyright Office Circular
16
56A, "Copyright Registration of Musical Compositions and Sound Recordings," at 1
17
(Feb. 2012) (available at www.copyright.gov/circs/circ.56a.pdf). The author of a
18
musical composition generally is the composer, and the lyricist (if a different
19
person). Id.
20
6.
More than 120 years after the melody to which the simple lyrics of
21
Happy Birthday to You is set was first published, defendant Warner/Chappell
22
boldly, but wrongfully and unlawfully, insists that it owns the copyright to Happy
23
Birthday to You, and with that copyright the exclusive right to authorize the Song's
24
reproduction, distribution, and public performances pursuant to federal copyright
25
law. Warner/Chappell declares in the first two sentences on the "About Us" page of
26
its website that "Warner/Chappell Music is [Warner Music Group]'s award-winning
27
global music publishing company. The Warner/Chappell Music catalog includes
28
standards such as 'Happy Birthday To You' .... " Available
-2-
Ex. 122
1837
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1
at: http://www. wamerchappell.com/about.jsp?currenttab=about_us.
2
Defendant W amer/Chappell either has silenced those wishing to record or perform
3
Happy Birthday to You, or has extracted millions of dollars in unlawful licensing
4
fees from those unwilling or unable to challenge its ownership claims.
5
7.
Irrefutable documentary evidence, some dating back to 1893, shows
6
that the copyright to Happy Birthday to You, if there ever was a valid copyright to
7
any part of the Song, expired no later than 1921 and that if defendant
8
Wamer/Chappell owns any rights to Happy Birthday to You, those rights are limited
9
to the extremely narrow right to reproduce and distribute specific piano
10
arrangements for the song published in 1935.
11
adjudicated the validity or scope of the Defendants' claimed interest in Happy
12
Birthday to You, nor in the Song's melody or lyrics, which are themselves
13
independent works.
14
8.
Significantly, no court has ever
Various legal scholars and copyright and music industry experts agree
15
with the foregoing, questioning the validity of Defendants' assertion of copyright in
16
the Song, and supporting the conclusion that Happy Birthday properly exists in the
17
public domain. For example, Professor Robert Brauneis, Professor of Law and Co-
18
Director of the Intellectual Property Law Program at George Washington
19
University, and a leading legal scholar in intellectual property law, has stated that it
20
is "doubtful" that Happy Birthday "is really still under copyright."
21
9.
Plaintiffs GMTY, Siegel, Rupa, and Majar on behalf of themselves and
22
all others similarly situated, seek a declaration that Happy Birthday to You is
23
dedicated to public use and is in the public domain as well as monetary damages and
24
restitution of all the unlawful licensing fees that defendants have improperly
25
collected from Plaintiffs and all other Class members.
PLAINTIFFS
26
27
28
10.
Plaintiff GMTY is a New York corporation with its principal place of
business located in New York County. Under a claim of copyright by defendant
-3-
Ex. 122
1838
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1
Warner/Chappell, on or about March 26, 2013, GMTY paid defendant
2
Warner/Chappell the sum of $1,500 for a synchronization license to use Happy
3
Birthday to You and on or about April 24, 2013, GMTY entered into a
4
synchronization license with Warner/Chappell, as alleged more fully herein.
5
11.
Plaintiff Robert Siegel is the assignee of BIG FAN PRODUCTIONS,
6
INC. ("BIG FAN"), an inactive New York corporation and a resident of New York,
7
New York. Under a claim of copyright by defendant Warner/Chappell, on or about
8
September 1, 2009, BIG FAN paid to defendant Warner/Chappell the sum of $3,000
9
for the Synchronization Licenses to use Happy Birthday to You, as alleged more
10
fully herein. Plaintiff Siegel, the then-President of BIG FAN, was assigned BIG
11
FAN's rights and claims, including those pertaining to the Synchronization License
12
pursuant to Paragraph 7 thereof between defendant Warner/Chappell and BIG FAN,
13
entered into on or about July 20, 2009.
14
12.
Plaintiff Rupa is a musician and leader of the band entitled "Rupa &
15
The April Fishes" ("RTAF"), and a member of the American Society of Composers,
16
Authors and Publishers ("ASCAP").
17
County, California. RTAF recorded Happy Birthday to You at a live show in San
18
Francisco, California, on April 27, 2013. Under a claim of copyright by defendant
19
Warner/Chappell, on or about June 17, 2013, Plaintiff Rupa d/b/a RTAF paid to
20
defendant Warner/Chappell the sum of $455 for a compulsory license pursuant to 17
21
U.S.C. § 115 (commonly known as a "mechanical license") to use Happy Birthday
22
to You, as alleged more fully herein.
23
13.
Plaintiff Rupa is a resident of San Mateo
Plaintiff Majar is a Los Angeles-based film production company that
24
produced the award winning documentary film "No Subtitles Necessary: Laszlo &
25
Vilmos" (hereafter, "No Subtitles Necessary" or the "Film"). The Film follows the
26
lives of renowned cinematographers Laszlo Kovacs ("Kovacs") and Vilmos
27
Zsigmond ("Zsigmond") from escaping the 1956 Soviet invasion of Hungary to the
28
present day. As film students in Hungary, Kovacs and Zsigmond shot footage of the
-4-
Ex. 122
1839
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1 Russian invasion of Budapest and subsequently risked their lives to smuggle it out
2
of the country. They fled to America and settled in Hollywood, eventually saving
3
enough money to buy their own 16mm camera to begin shooting movies. Both rose
4
to prominence in the late 1960's and 1970's having shot films such as "Easy Rider,"
5
"Five Easy Pieces," "McCabe and Mrs. Miller," "Deliverance," "Paper Moon," and
6
"Close Encounters of the Third Kind." No Subtitles Necessary tells the story of
7
their lives and careers.
8
9
DEFENDANTS
14.
Defendant Warner/Chappell is a Delaware corporation with its
10
principal place of business located at 10585 Santa Monica Boulevard, Los Angeles,
11
California 90025 and regularly conducts business within this Judicial District.
12
15.
Defendant SBI is a Wyoming corporation with its principal place of
13
business located at 10585 Santa Monica Boulevard, Los Angeles, California 90025.
14
SBI regularly conducts business within this Judicial District, where it may be found.
15
On information and belief, SBI is a subsidiary of Warner/Chappell, having been
16
acquired by Warner/Chappell in or around 1998.
17
18
19
FACTUALBACKGROUND
Good Morning to All and the Popular Adoption of Happy Birthday to You
16.
Sometime prior to 1893, Mildred J. Hill ("Mildred Hill") and her sister
20
Patty Smith Hill ("Patty Hill") (Mildred and Patty Hill are collectively referred to as
21
the "Hill Sisters") authored a written manuscript containing sheet music for 73
22
songs composed or arranged by Mildred Hill, with words written and adapted by
23
Patty Hill.
24
17.
25
26
The manuscript included Good Morning to All, a song written by the
Hill Sisters.
18.
On or about February 1, 1893, the Hill Sisters sold and assigned all
27
their right, title, and interest in the written manuscript to Clayton F. Summy
28
("Summy") in exchange for 10 percent of retail sales of the manuscript. The sale
-5-
Ex. 122
1840
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1 included the song Good Morning to All.
2
19.
In or around 1893, Summy published the Hill Sisters' written
3
manuscript with an introduction by Anna E. Bryan ("Bryan") in a songbook titled
4
Song Stories for the Kindergarten. Song Stories for the Kindergarten included the
5
song Good Morning to All.
6
7
8
9
10
11
12
20.
On or about October 16, 1893, Summy filed a copyright application
(Reg. No. 45997) with the Copyright Office for Song Stories for the Kindergarten.
21.
On the October 16, 1893, copyright application, Summy claimed to be
the copyright's proprietor, but not the author of the copyrighted works.
22.
Song Stories for the Kindergarten bears a copyright notice reading
"Copyright 1893, by Clayton F. Summy."
23.
As proprietor of the 1893 copyright in Song Stories for the
13
Kindergarten, Summy asserted copyright ownership in the compilation of songs, as
14
well as, the individual songs published therein, including Good Morning to All.
15
24.
The lyrics to Good Morning to All are:
16
Good morning to you
17
Good morning to you
18
Good morning dear children
19
Good morning to all.
20
21
25.
The lyrics to Happy Birthday to You are set to the melody from the
22
song Good Morning to All. As nearly everyone knows, the lyrics to Happy Birthday
23
to You are:
24
Happy Birthday to You
25
Happy Birthday to You
26
27
28
Happy Birthday dear [NAME]
Happy Birthday to You.
-6-
Ex. 122
1841
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1
26.
The lyrics to Happy Birthday to You were not published in Song Stories
2 for the Kindergarten.
3
27.
On or about January 14, 1895, Summy incorporated the Clayton F.
4
Summy Company ("Summy Co.") under the laws of the State of lllinois for a
5
limited term of 25 years. On that same date, Summy purported to assign all his
6
right, title, and interest in Song Stories for the Kindergarten to Summy Co.
7
28.
In 1896, Summy published a new, revised, illustrated, and enlarged
8
version of Song Stories for the Kindergarten, which contained eight previously
9
unpublished songs written by the Hill Sisters as well as illustrations by Margaret
10
11
Byers.
29.
On or about June 18, 1896, Summy filed a copyright application (Reg.
12
No. 34260) with the Copyright Office for the 1896 publication of Song Stories for
13
the Kindergarten.
14
15
16
17
18
30.
On its June 18, 1896, copyright application, Summy again claimed to
be the copyright's proprietor, but (again) not the author of the copyrighted works.
31.
The 1896 version of Song Stories for the Kindergarten bears a
copyright notice reading "Copyright 1896, by Clayton F. Summy."
32.
As proprietor of the 1896 copyright in the revised Song Stories for the
19
Kindergarten, Summy owned the rights to both the songbook as a compilation and
20
the individual songs published therein, including Good Morning to All.
21
22
23
33.
The lyrics to Happy Birthday to You were not published in the 1896
version of Song Stories for the Kindergarten.
34.
In 1899, Summy Co. published 17 songs from the 1893 version of Song
24
Stories for the Kindergarten in a songbook titled Song Stories for the Sunday
25
School. One of those songs included in Song Stories for the Sunday School was
26
Good Morning to All. And yet again, neither the song Happy Birthday nor the lyrics
27
to Happy Birthday were published in "Song Stories for the Sunday School."
28
35.
On or about March 20, 1899, Summy Co. filed a copyright application
-7-
Ex. 122
1842
Case 2:13-cv-04460-GHK-MRW Document 59 Filed 09/04/13 Page 9 of 40 Page ID #:374
1 (Reg. No. 20441) with the Copyright Office for Song Stories for the Sunday School.
2
3
36.
On the 1899 copyright application, Summy Co. claimed to be the
copyright's proprietor, but not the author of the copyrighted works.
4
37.
5
This collection of songs has been published in response to earnest requests
6
from various sources. They are taken from the book, Song Stories for the
7
Kindergarten by the MISSES HILL, and are the copyright property of the
8
publishers. (Emphasis added).
9
38.
10
11
The title page to Song Stories for the Sunday School states:
Song Stories for the Sunday School bears a copyright notice reading
"Copyright 1899 by Clayton F. Summy Co."
39.
As proprietor of the 1899 copyright in Song Stories for the Sunday
12
School, Summy Co. owned the rights to both the songbook as a compilation and the
13
individual songs published therein, including Good Morning to All.
14
40.
The lyrics to Happy Birthday to You were not published in Song Stories
15 for the Sunday School.
16
41.
Even though the lyrics to Happy Birthday to You and the song Happy
17
Birthday to You had not been fixed in a tangible medium of expression, the public
18
began singing Happy Birthday to You no later than the early 1900s.
19
42.
For example, in the January 1901 edition of Inland Educator and
20
Indiana School Journal, the article entitled "First Grade Opening Exercises"
21
described children singing the words "happy birthday to you," but did not print the
22
Song's lyrics or melody.
23
24
25
26
27
28
43.
In or about February, 1907, Summy Co. republished the song Good
Morning to All as an individual musical composition.
44.
On or about February 7, 1907, Summy Co. filed a copyright application
(Reg. No. 142468) with the Copyright Office for the song Good Morning to All.
45.
The lyrics to Happy Birthday to You do not appear in the 1907
publication of Good Morning to All.
- 8-
Ex. 122
1843
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1
2
46.
In 1907, Fleming H. Revell Co. ("Revell") published the book Tell Me
a True Story, arranged by Mary Stewart, which instructed readers to:
3
Sing: "Good-bye to you, good-bye to you, good-bye dear children, good-
4
bye to you." Also: "Good-bye dear teacher." (From "Song Stories for the
5
Sunday-School," published by Summy & Co.)
6
Sing: "Happy Birthday to You." (Music same as "Good-bye to You.")
7
8
47.
A239690) with the Copyright Office for Tell Me a True Story.
48.
Tell Me a True Story did not include the lyrics to Happy Birthday to
49.
9
10
On or about May 18, 1909, Revell filed an application (Reg. No.
Upon information and belief, the lyrics to Happy Birthday to You
You.
11
12
(without the sheet music for the melody) were first published in 1911 by the Board
13
of Sunday Schools of the Methodist Episcopal Church ("Board of Sunday Schools")
14
in The Elementary Worker and His Work, by Alice Jacobs and Ermina Chester
15
Lincoln, as follows:
16
Happy birthday to you, Happy birthday to you, Happy birthday, dear John,
17
Happy birthday to you. (Sung to the same tune as the "Good Morning")
18
[NOTE: The songs and exercises referred to in this program may be found in
19
these books: ... "Song Stories for the Sunday School," by Patty Hill.]
20
50.
On or about January 6, 1912, the Board of Sunday Schools filed a
21
copyright application (Reg. No. A303752) with the Copyright Office for The
22
Elementary Worker and His Work.
23
24
25
26
27
28
51.
The Elementary Worker and His Work attributed authorship or
identified the copyrights to many of the works included in the book. Significantly, it
did not attribute authorship or identify any copyright for the song Happy Birthday to
You.
52.
On or about January 14, 1920, Summy Co. was dissolved in accordance
with its limited (not perpetual) 25-year term of incorporation. Summy Co. did not
-9-
Ex. 122
1844
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1 extend or renew the 1893 (Reg. No. 45997) or 1907 (Reg. No. 142468) copyrights
2
3
prior to its dissolution.
53.
Upon information and belief, by 1912, various companies (such as
4
Cable Company Chicago) had begun producing unauthorized printings of sheet
5
music which included the song known today as Happy Birthday (i.e., the melody of
6
Good Morning to You with the lyrics changed to those of Happy Birthday). On
7
information and belief, Cable Company Chicago never asserted copyright ownership
8
in Happy Birthday.
9
Copyright History of Good Morning to All
10
54.
Pursuant to Section 24 of the Copyright Act of 1909, the renewal rights
11
to the original Song Stories for the Kindergarten, Song Stories for the Sunday
12
School, and Good Morning to All were vested solely in their proprietor, Summy Co.
13
55.
Pursuant to Section 24 of the Copyright Act of 1909, the renewal rights
14
to the revised Song Stories for the Kindergarten were vested solely in their
15
16
proprietor, Summy Co.
17
No. 45997) was not extended by Summy Co., and consequently expired on October
18
16, 1921. The original Song Stories for the Kindergarten, including the song Good
19
Morning to All, became dedicated to public use and fell into the public domain by
20
21
no later than that date.
22
No. 34260) was not extended by Summy, and consequently expired on June 18,
23
1924. The revised Song Stories for the Kindergarten became dedicated to public
24
use and fell into the public domain by no later than that date.
25
56.
57.
58.
The copyright to the original Song Stories for the Kindergarten (Reg.
The copyright to the revised Song Stories for the Kindergarten (Reg.
In or around March 1924, the sheet music (with accompanying lyrics)
26
to Happy Birthday to You was in a songbook titled Harvest Hymns, published,
27
compiled, and edited by Robert H. Coleman ("Coleman"). Upon information and
28
belief, Harvest Hymns was the first time the melody and lyrics of Happy Birthday to
- 10-
Ex. 122
1845
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1
2
You were published together.
59.
Coleman did not claim authorship of the song entitled Good Morning
3
to You or the lyrics to Happy Birthday to You. Although Harvest Hymns attributed
4
authorship or identified the copyrights to many of the works included in the book, it
5
did not attribute authorship or identify any copyright for Good Morning to You or
6
Happy Birthday to You.
7
60.
On or about March 4, 1924, Coleman filed a copyright application
8
(Reg. No. A777586) with the Copyright Office for Harvest Hymns. On or about
9
February 11, 1952, the copyright was renewed (Reg. No. R90447) by the Sunday
10
11
School Board of the Southern Baptist Convention.
61.
On or about April 15, 1925, Summy incorporated a new Clayton F.
12
Summy Co. ("Summy Co. II") under the laws of the State of Illinois.
13
information and belief, Summy Co. II was not a successor to Summy Co.; rather, it
14
was incorporated as a new corporation.
15
62.
Upon
The sheet music (with accompanying lyrics) to Happy Birthday to You
16
was again published in 1928 in the compilation Children's Praise and Worship,
17
compiled and edited by A.L. Byers, Bessie L. Byrum, and Anna E. Koglin ("Byers,
18
Byrum & Koglin"). Upon information and belief, Children's Praise and Worship
19
was the first time the song was published under the title Happy Birthday to You.
20
63.
On or about April 7, 1928, Gospel Trumpet Co. ("Gospel") filed a
21
copyright application (Reg. No. A1068883) with the Copyright Office for
22
Children's Praise and Worship.
23
64.
Children's Praise and Worship attributed authorship or identified the
24
copyrights to many of the works included in the book. Significantly, it did not
25
attribute authorship or identify any copyright for the song Happy Birthday to You.
26
65.
Children's Praise and Worship did not provide any copyright notice for
27
the combination of Good Morning to All with the lyrics to Happy Birthday to You,
28
nor did it include the names of Mildred Hill or Patty Hill and did not attribute any
- 11-
Ex. 122
1846
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1
2
authorship or ownership to the Hill Sisters.
66.
Upon information and belief, the Hill Sisters had not fixed the lyrics to
3
Happy Birthday to You or the song Happy Birthday to You in a tangible medium of
4
expression, if ever, at any time before Gospel published Children's Praise and
5
Worship in 1928.
6
67.
7
8
9
Upon information and belief, Summy sold Summy Co. II to John F.
Sengstack ("Sengstack") in or around 1930.
68.
Upon information and belief, on or about August 31, 1931, Sengstack
incorporated a third Clayton F. Summy Co. ("Summy Co. III") under the laws of the
10
State of Delaware.
Upon information and belief, Summy Co. III was not a
11
successor to Summy Co. or Summy Co. II; rather, it was incorporated as a new
12
corporation.
13
69.
On May 17, 1933, Summy Co. II was dissolved for failure to pay taxes.
14
70.
On July 28, 1933, Happy Birthday to You was used in the world's first
15
singing telegram.
16
71.
On September 30, 1933, the Broadway show As Thousands Cheer,
17
produced by Sam Harris with music and lyrics written by Irving Berlin, began using
18
the song Happy Birthday to You in public performances.
19
72.
On August 14, 1934, Jessica Hill, a sister of Mildred Hill and Patty
20
Hill, commenced an action against Sam Harris in the Southern District of New
21
York, captioned Hill v. Harris, Eq. No. 78-350, claiming that the performance of
22
Happy to Birthday to You in As Thousands Cheer infringed on the Hill Sisters' 1893
23
and 1896 copyrights to Good Morning to All. Jessica Hill asserted no claim in that
24
action regarding Happy Birthday to You, alone or in combination with Good
25
Morning to All.
26
73.
On January 21, 1935, Jessica Hill commenced an action against the
27
Federal Broadcasting Corp. in the Southern District of New York, captioned Hill v.
28
Federal Broadcasting Corp., Eq. No. 79-312, claiming infringement on the Hill
- 12-
Ex. 122
1847
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1 Sisters' 1893 and 1896 copyrights to Good Morning to All. Jessica Hill asserted no
2
claim in that action regarding Happy Birthday to You, alone or in combination with
3
Good Morning to All.
4
74.
In 1934 and 1935, Jessica Hill sold and assigned to Summy Co. ill
5
certain piano arrangements of Good Morning to All, including publishing, public
6
performance, and mechanical reproduction rights, copyright, and extension of
7
copyright in exchange for a percentage of the retail sales revenue from the sheet
8
mUSIC.
9 Applications for Copyright for New Musical Arrangement
10
75.
On or about December 29, 1934, Summy Co. III filed an Application
11
for Copyright for Republished Musical Composition with new Copyright Matter
12
(Reg. No. E45655) with the Copyright Office for the song Happy Birthday.
13
76.
In that December 1934 Application for Copyright, Summy Co. III
14
claimed to be the proprietor of the copyright as a work for hire by Preston Ware
15
Orem ("Orem") and claimed the copyrighted new matter as "arrangement by piano
16
solo."
17
77.
The lyrics to Happy Birthday to You were not included on the work
18
registered with the Copyright Office as Reg. No. E45655. The application did not
19
contain the names of the Hill Sisters and did not claim copyright in the lyrics to
20
Happy Birthday to You alone or in combination with the melody of Good Morning
21
toAll.
22
78.
The work registered with the Copyright Office as Reg. No. E45655 was
23
not eligible for federal copyright protection in that it consisted entirely of
24
information that was common property and contained no original authorship, except
25
as to the arrangement itself.
26
79.
On or about February 18, 1935, Summy Co. Ill filed an Application for
27
Copyright for Republished Musical Composition with new Copyright Matter (Reg.
28
No. E46661) with the Copyright Office for the song Happy Birthday.
- 13-
Ex. 122
1848
Case 2:13-cv-04460-GHK-MRW Document 59 Filed 09/04/13 Page 15 of 40 Page ID #:380
1
80.
In that February 1935 Application for Copyright, Summy Co. III
2
claimed to be the proprietor of the copyright as a work for hire by Orem and claimed
3
the copyrighted new matter as "arrangement for four hands at one piano."
4
81.
The lyrics to Happy Birthday to You were not included on the work
5
registered with the Copyright Office as Reg. No. E46661. The application did not
6
contain the names of the Hill Sisters and did not claim copyright in the lyrics to
7
Happy Birthday to You alone or in combination with the melody of Good Morning
8
toAll.
9
82.
The work registered with the Copyright Office as Reg. No. E46661 was
10
not eligible for federal copyright protection in that it consisted entirely of
11
information that was common property and contained no original authorship, except
12
as to the arrangement itself.
13
83.
On or about April 5, 1935, Summy Co. III filed an Application for
14
Copyright for Republished Musical Composition with new Copyright Matter (Reg.
15
No. E47439) with the Copyright Office for the song Happy Birthday.
16
84.
In that April 1935 Application for Copyright, Summy Co. III claimed
17
to be the proprietor of the copyright as a work for hire by Orem and claimed the
18
copyrighted new matter as "arrangement of second piano part."
19
85.
The lyrics to Happy Birthday to You were not included on the work
20
registered with the Copyright Office as Reg. No. E47439.
21
contain the names of the Hill Sisters and did not claim copyright in the lyrics to
22
Happy Birthday to You alone or in combination with the melody of Good Morning
23
toAll.
24
86.
The application did not
The work registered with the Copyright Office as Reg. No. E47439 was
25
not eligible for federal copyright protection in that it consisted entirely of
26
information that was common property and contained no original authorship, except
27
as to the arrangement itself.
28
87.
On or about April 5, 1935, Summy Co. Ill filed an Application for
- 14-
Ex. 122
1849
Case 2:13-cv-04460-GHK-MRW Document 59 Filed 09/04/13 Page 16 of 40 Page ID #:381
1 Copyright for Republished Musical Composition with new Copyright Matter (Reg.
2
No. E47440) with the Copyright Office for the song Happy Birthday.
3
88.
In that additional April1935 Application for Copyright, Summy Co. III
4
claimed to be the proprietor of the copyright as a work for hire by Orem and claimed
5
the copyrighted new matter as "arrangement for six hands at one piano."
6
89.
The lyrics to Happy Birthday to You were not included on the work
7
registered with the Copyright Office as Reg. No. E47440. The application did not
8
contain the names of the Hill Sisters and did not claim copyright in the lyrics to
9
Happy Birthday to You alone or in combination with the melody of Good Morning
10
11
toAll.
90.
The work registered with the Copyright Office as Reg. No. E47440 was
12
not eligible for federal copyright protection in that it consisted entirely of
13
information that was common property and contained no original authorship, except
14
as to the arrangement itself.
15
91.
On December 9, 1935, Summy Co. III filed an Application for
16
Copyright for Republished Musical Composition with new Copyright Matter (Reg.
17
No. E51988) with the Copyright Office for Happy Birthday to You.
18
92.
In that December 1935 Application for Copyright, Summy Co. III
19
claimed to be the proprietor of the copyright as a work for hire by R.R. Forman
20
("Forman") and claimed the copyrighted new matter as "arrangement for Unison
21
Chorus and revised text." The sheet music deposited with the application credited
22
Forman only for the arrangement, not for any lyrics, and did not credit the Hill
23
Sisters with writing the lyrics to Happy Birthday to You.
24
93.
For the first time, the lyrics to Happy Birthday to You, including a
25
second verse as the revised text, were included on the work registered with the
26
Copyright Office as Reg. No. E51988. However, the December 1935 Application
27
for Copyright did not attribute authorship of the lyrics to either of the Hill Sisters
28
and did not claim copyright in the lyrics to Happy Birthday to You alone or in
- 15-
Ex. 122
1850
Case 2:13-cv-04460-GHK-MRW Document 59 Filed 09/04/13 Page 17 of 40 Page ID #:382
1 combination with the melody of Good Morning to All.
2
94.
The work registered with the Copyright Office as Reg. No. E51988 was
3
not eligible for federal copyright protection in that it consisted entirely of
4
information that was common property and contained no original authorship, except
5
as to the sheet music arrangement itself.
6
95.
The work registered as Reg. No. E51988 was not eligible for federal
7
copyright protection because Summy Co. III did not have authorization from the
8
author to publish that work.
9
96.
On December 9, 1935, Summy Co. III filed an Application for
10
Copyright for Republished Musical Composition with new Copyright Matter (Reg.
11
No. E51990) with the Copyright Office for Happy Birthday to You.
12
97.
In that additional December 1935 Application for Copyright, Summy
13
Co. III claimed to be the proprietor of the copyright as a work for hire by Orem and
14
claimed the copyrighted new matter as "arrangement as easy piano solo, with text."
15
The sheet music deposited with the application credited Orem only for the
16
arrangement, not for any lyrics, and did not credit the Hill Sisters with writing the
17
lyrics to Happy Birthday to You.
18
98.
The lyrics to Happy Birthday to You were included on the work
19
registered with the Copyright Office as Reg. No. E51990. However, the additional
20
December 1935 Application for Copyright did not attribute authorship of the lyrics
21
to either of the Hill Sisters, did not contain the names of either of the Hill Sisters,
22
and did not claim any copyright in the lyrics to Happy Birthday to You alone or in
23
combination with the melody of Good Morning to All.
24
99.
The work registered with the Copyright Office as Reg. No. E51990 was
25
not eligible for federal copyright protection in that it consisted entirely of
26
information that was common property and contained no original authorship, except
27
as to the sheet music arrangement itself.
28
- 16-
Ex. 122
1851
Case 2:13-cv-04460-GHK-MRW Document 59 Filed 09/04/13 Page 18 of 40 Page ID #:383
1
100. The work registered as Reg. No. E51990 was not eligible for federal
2
copyright protection because Summy Co. III did not have authorization from the
3
author to publish that work.
4
101. Based upon information and belief, in or about February, 1938, Summy
5
Co. III purported to grant to ASCAP the right to license Happy Birthday to You for
6
public performances and to collect fees for such use on behalf of Summy Co. III.
7
ASCAP thus began working as agent for Summy Co. III in collecting fees for
8
Summy Co. III for licensing Happy Birthday to You.
9
10
102. On or about June 8, 1942, Patty Hill and Jessica Hill assigned all of
their interest in the 1893, 1896, 1899 and 1907 copyrights to The Hill Foundation.
11
103. On October 15, 1942, The Hill Foundation commenced an action
12
against Summy Co. III in the Southern District of New York, captioned The Hill
13
Foundation, Inc. v. Clayton F. Summy Co., Case No. 19-377, for an accounting of
14
the royalties received by Summy Co. III for the licensing of Happy Birthday to You.
15
The Hill Foundation asserted claims under the 1893, 1896, 1899, and 1907
16
copyrights for Good Morning to All and did not claim any copyright to the lyrics to
17
Happy Birthday to You, alone or in combination with the melody of Good Morning
18
to All.
19
104. On March 2, 1943, The Hill Foundation commenced an action against
20
the Postal Telegraph Cable Company in the Southern District of New York,
21
captioned The Hill Foundation, Inc. v. Postal Telegraph-Cable Co., Case No. 20-
22
439, for infringement of the Hill Sisters' purported 1893, 1896, and 1899 copyrights
23
to Good Morning to All. The Hill Foundation asserted claims only under the 1893,
24
1896, and 1899 copyrights for Good Morning to All and did not claim any copyright
25
to the lyrics to Happy Birthday to You, alone or in combination with the melody of
26
Good Morning to All.
27
105. Despite the filing of at least four prior cases in the Southern District of
28
New York asserting copyrights to Good Morning to All, there has been no judicial
- 17-
Ex. 122
1852
Case 2:13-cv-04460-GHK-MRW Document 59 Filed 09/04/13 Page 19 of 40 Page ID #:384
1
determination of the validity or scope of any copyright related to Good Morning to
2
All.
3
4
106. In or about 1957, Summy Co. III changed its name to Summy-Birchard
Company.
5
107. In 1962, Summy Co. III (renamed as Summy-Birchard Company) filed
6
renewals for each of the six registrations it obtained in 1934 and 1935 (Reg. Nos.
7
E45655, E46661, E47439, E47440, E51988, and E51990), each renewal was
8
specifically and expressly confined to the musical arrangements.
9
108. In particular, on December 6, 1962, Summy Co. III filed a renewal
10
application for Reg. No. E51988, as employer for hire of Forman. Forman did not
11
write the lyrics to Happy Birthday to You or the combination of those lyrics with the
12
melody of Good Morning to All, and neither Summy Co. III nor Defendants have
13
claimed otherwise.
14
109. Also on December 6, 1962, Summy Co. III filed a renewal application
15
for Reg. No. E51990, as employer for hire of Orem. Orem did not write the lyrics to
16
Happy Birthday to You or the combination of those lyrics with the melody of Good
17
Morning to All, and neither Summy Co. III nor Defendants have claimed otherwise.
18
110. Summy-Birchard Company was renamed Birch Tree Ltd. in the 1970s
19
and was acquired by Warner/Chappell in or about 1998. On information and belief,
20
this entity now operates as "Summy Birchard, Inc." - currently a subsidiary of
21
Warner/Chappell and Warner/Chappell's co-Defendant herein.
22
Happy Birthday to You -100 Years Later
23
24
25
26
111. According to a 1999 press release by ASCAP, Happy Birthday to You
was the most popular song of the 20th Century.
112. The 1998 edition of the Guinness Book of World Records identified
Happy Birthday to You as the most recognized song in the English language.
27
28
113. Defendant Warner/Chappell currently claims it owns the exclusive
- 18-
Ex. 122
1853
Case 2:13-cv-04460-GHK-MRW Document 59 Filed 09/04/13 Page 20 of 40 Page ID #:385
1 copyright to Happy Birthday to You based on the piano arrangements that Summy
2
Co. III published in 1935.
3
114. ASCAP provides non-dramatic public performance licenses to bars,
4
dubs, websites, and many other venues.
ASCAP "blanket licenses" grant the
5
licensee the right to publicly perform any or all of the over 8.5 million songs in
6
AS CAP's repertory in exchange for an annual fee. The non-dramatic public
7
performance license royalties are distributed to ASCAP members based on surveys
8
of performances of each ASCAP repertory song across different media. As an
9
ASCAP member and assignee of the copyrights in Happy Birthday to You,
10
Defendant Warner/Chappell obtains a share of blanket license revenue that would
11
otherwise be paid to all other AS CAP members, in proportion to their songs' survey
12 shares.
13 PlaintiffGMTY's Use of Happy Birthday to You
14
15
115. Plaintiff GMTY is producing a documentary movie, tentatively titled
Happy Birthday, about the song Happy Birthday to You.
16
17
116. In one of the proposed scenes to be included in Happy Birthday, the
song Happy Birthday to You is to be sung.
18
19
117. During the production process, plaintiff GMTY learned that defendant
Warner/Chappell claimed exclusive copyright ownership to Happy Birthday to You.
20
118. Accordingly, in September 2012, plaintiff requested a quote from
21
Warner/Chappell for a synchronization license to use Happy Birthday to You from
22
Warner/Chappell's website.
23
119. On or about September 18, 2012, defendant Warner/Chappell
24
responded to plaintiff GMTY' s inquiry by demanding that GMTY pay it the sum of
25
$1 ,500 and enter into a synchronization license agreement to use Happy Birthday to
26
You.
27
120. On or about March 12, 2013, defendant Warner/Chappell agam
28
contacted plaintiff GMTY and insisted that GMTY was not authorized to use Happy
- 19-
Ex. 122
1854
Case 2:13-cv-04460-GHK-MRW Document 59 Filed 09/04/13 Page 21 of 40 Page ID #:386
1 Birthday to You unless it paid the licensing fee of $1 ,500 and entered into the
2
synchronization license that Warner/Chappell demanded.
3
121. Because defendant Warner/Chappell notified plaintiff GMTY that it
4
claimed exclusive copyright ownership of Happy Birthday to You, GMTY faced a
5
statutory penalty of up to $150,000 under the Copyright Act if it used the song
6
without Warner/Chappell's permission if Warner/Chappell, in fact, owned the
7
copyright that it claimed.
8
122. Faced with a threat of substantial penalties for copyright infringement,
9
on or about March 26, 2013, plaintiff GMTY was forced to and did pay defendant
10
Warner/Chappell the sum of $1,500 for a synchronization license and, on or about
11
April 24, 2013, GMTY was forced to and did enter into the synchronization license
12
agreement to use Happy Birthday to You.
13
Plaintiff Siegel's Use of Happy Birthday to You
14
123. BIG FAN produced a movie titled Big Fan.
15
124. In one of the scenes in Big Fan, the song Happy Birthday to You was
16
sung.
17
18
125. During the production process, Plaintiff Siegel learned that defendant
Warner/Chappell claimed exclusive copyright ownership to Happy Birthday to You.
19
126. Accordingly, in July 2009, Plaintiff Siegel requested a quote from
20
Warner/Chappell for a Synchronization License to use Happy Birthday to You in Big
21
Fan.
22
127. On or about July 20, 2009, defendant Warner/Chappell responded to
23
plaintiff Siegel's inquiry by demanding that BIG FAN pay it the sum of $3,000 and
24
enter into a Synchronization License for use of Happy Birthday to You.
25
128. Because Defendant Warner/Chappell notified BIG FAN that it claimed
26
exclusive copyright ownership of Happy Birthday to You, BIG FAN faced a
27
statutory penalty of $150,000 under the Copyright Act, 17 U.S.C. § 101 et seq. if
28
-20-
Ex. 122
1855
Case 2:13-cv-04460-GHK-MRW Document 59 Filed 09/04/13 Page 22 of 40 Page ID #:387
1 BIG
2
FAN
used
the
Song
without
Warner/Chappell's
permission
and
Warner/Chappell, in fact, owned the copyright that it claimed.
3
129. On July 20, 2009, Plaintiff Siegel as President of BIG FAN executed
4
the Synchronization License with Warner/Chappell and agreed to pay $3,000 based
5
upon Big Fan's theatrical release.
6
130. Faced with a threat of substantial penalties for copyright infringement,
7
on or about September 1, 2009, BIG FAN was forced to, and did, pay defendant
8
Warner/Chappell the sum of $3,000 pursuant to the Synchronization License.
9
Rupa's Performance of Happy Birthday to You
10
131. PlaintiffRupa d/b/a RTAF recorded the song Happy Birthday to You at
11
a live show in San Francisco, to be released as part of a "live" album. She learned
12
that defendant Warner/Chappell claimed exclusive copyright ownership to Happy
13
Birthday to You, including the right to issue mechanical licenses.
14
132. Section 115 of the Copyright Act provides for compulsory licenses for
15
the distribution of phonorecords and digital phonorecord deliveries (i.e., Web-based
16
"downloads") of musical compositions. Failure to obtain such a license prior to
17
distribution of a cover version of a song constitutes a copyright infringement subject
18
to the full remedies of the Copyright Act.
19
133. Accordingly, on June 17, 2013, Plaintiff Rupa provided a Notice of
20
Intention
to
Obtain Compulsory License
to
Warner/Chappell
and paid
21
Warner/Chappell $455 for a mechanical license for the reproduction and distribution
22
of 5,000 copies of the Song.
23
Plaintiff Majar Use of Happy Birthday to You
24
134. Plaintiff Majar wished to use the Happy Birthday in the opening scene
25
of the Film, wherein Zsigmond and others sang the Happy Birthday to You to
26
Kovacs in a celebration of Kovacs' life and the friendship of the two, thereby setting
27
the tone for the Film.
28
claimed exclusive copyright ownership to Happy Birthday, including for purposes
Plaintiff Majar learned that defendant Warner/Chappell
- 21-
Ex. 122
1856
Case 2:13-cv-04460-GHK-MRW Document 59 Filed 09/04/13 Page 23 of 40 Page ID #:388
1 of issuing synchronization licenses. Accordingly, on or about October 29, 2009,
2
Plaintiff Majar paid to defendant Warner/Chappell the sum of $5000 for a
3
synchronization license to use Happy Birthday in the Film.
4
CLASS ALLEGATIONS
5
135. Plaintiffs GMTY, Siegel, Rupa and Majar bring this action under
6
Federal Rules of Civil Procedure 23(a) and (b) as a class action on behalf of
7
themselves and all others similarly situated for the purpose of asserting the claims
8
alleged in this Consolidated First Amended Complaint on a common basis.
9
136. The proposed Class is comprised of:
10
AU persons or entities (excluding Defendants' directors, officers,
11
employees,
12
Warner/Chappell, or paid Warner/Chappell or SBI, directly or indirectly
13
through its agents, a licensing fee for the song Happy Birthday to You at
14
any time from June 18,2009, until Defendants' conduct as alleged herein
15
has ceased.
16
137. Although Plaintiffs GMTY, Siegel, Rupa, and Majar do not know the
17
exact size of the Class or the identities of all members of the Class, upon
18
information and belief that information can be readily obtained from the books and
19
records of defendant Wamer/Chappell. Plaintiffs believe that the Class includes
20
thousands of persons or entities who are widely geographically disbursed. Thus, the
21
proposed Class is so numerous that joinder of all members is impracticable.
22
23
24
affiliates)
who
entered
into
a
license
with
138. The claims of all members of the Class involve common questions of
law and fact including:
a.
25
26
and
whether Happy Birthday to You is in the public domain and dedicated
to public use;
b.
whether Wamer/Chappell is the exclusive owner of the copyright to
27
Happy Birthday to You and is thus entitled to all of the rights conferred
28
in 17 U.S.C. § 102;
-22Ex. 122
1857
Case 2:13-cv-04460-GHK-MRW Document 59 Filed 09/04/13 Page 24 of 40 Page ID #:389
1
c.
2
3
whether Warner/Chappell has the right to collect fees for the use of
Happy Birthday to You;
d.
whether Warner/Chappell has violated the law by demanding and
4
collecting fees for the use of Happy Birthday to You despite not having
5
a valid copyright to the song; and
6
e.
whether Warner/Chappell is required to return unlawfully obtained
7
payments to plaintiffs GMTY, Siegel, Rupa and Majar and the other
8
members of the Class and, if so, what amount is to be returned.
9
10
139. With respect to Claims III and VII, the common questions of law and
fact predominate over any potential individual issues.
11
140. Plaintiffs GMTY, Siegel, Rupa and Majar's claims are typical of the
12
claims of all other members of the Class and plaintiffs GMTY, Siegel, Rupa and
13
Majar' s interests do not conflict with the interests of any other member of the Class,
14
in that plaintiffs and the other members of the Class were subjected to the same
15
unlawful conduct.
16
141. Plaintiffs GMTY, Siegel, Rupa and Majar are committed to the
17
vigorous prosecution of this action and have retained competent legal counsel
18
experienced in class action and complex litigation.
19
142. Plaintiffs are adequate representatives of the Class and, together with
20
their attorneys, are able to and will fairly and adequately protect the interests of the
21
Class and its members.
22
143. A class action is superior to other available methods for the fair, just,
23
and efficient adjudication of the claims asserted herein. Joinder of all members of
24
the Class is impracticable and, for financial and other reasons, it would be
25
impractical for individual members of the Class to pursue separate claims.
26
144. Moreover, the prosecution of separate actions by individual members
27
of the Class would create the risk of varying and inconsistent adjudications, and
28
would unduly burden the courts.
-23-
Ex. 122
1858
Case 2:13-cv-04460-GHK-MRW Document 59 Filed 09/04/13 Page 25 of 40 Page ID #:390
1
2
145. Plaintiffs GMTY, Siegel, Rupa and Majar anticipate no difficulty in the
management of this litigation as a class action.
3
FIRST CLAIM FOR RELIEF
4
DECLARATORY JUDGMENT PURSUANT TO 28 U.S.C. § 2201
5
(On Behalf Of Plaintiffs And The Class)
6
(Against Defendants)
7
8
146. Plaintiffs repeat and reallege paragraphs 1 through 145 set forth above
as though they were fully set forth herein.
9
147. Plaintiffs bring these claims individually on behalf of themselves and
10
on behalf of the proposed Class pursuant to Rule 23(b)(2) of the Federal Rules of
11
Civil Procedure.
12
148. Plaintiffs seek adjudication of an actual controversy arising under the
13
Copyright Act, 17 U.S.C. §§ 101 et seq., in connection with Defendants' purported
14
copyright claim to Happy Birthday to You. Plaintiffs seek the Court's declaration
15
that the Copyright Act does not bestow upon Warner/Chappell and/or SBI the rights
16
it has asserted and enforced against plaintiffs and the other members of the Class.
17
149. Defendants assert that they are entitled to mechanical and performance
18
royalties pursuant to 17 U.S.C. § 115 for the creation and distribution of
19
phonorecords and digital downloads of the composition Happy Birthday to You,
20
under threat of a claim of copyright infringement
21
150. Defendant Warner/Chappell demanded that plaintiff GMTY enter into
22
a synchronization license agreement to use Happy Birthday to You and pay
23
Warner/Chappell the sum of $1,500 for that synchronization license based upon its
24
claim of copyright ownership. Warner/Chappell's demand was coercive in nature,
25
and GMTY' s entering into the license agreement and payment of $1 ,500 was
26
involuntary.
27
151. Plaintiff GMTY's claim presents a justiciable controversy because
28
plaintiff GMTY' s agreement to pay defendant Warner/Chappell and its actual
-24-
Ex. 122
1859
Case 2:13-cv-04460-GHK-MRW Document 59 Filed 09/04/13 Page 26 of 40 Page ID #:391
1 payment to Warner/Chappell for use of the song Happy Birthday to You in its film
2
was the involuntary result of Warner/Chappell's assertion of a copyright and the risk
3
that plaintiff GMTY would be exposed to substantial statutory penalties under the
4
Copyright Act had it failed to enter such an agreement and pay Warner/Chappell the
5
price it demanded.
6
152. Defendant Warner/Chappell demanded that BIG FAN as assignor of
7
plaintiff Siegel enter into the Synchronization License agreement to use Happy
8
Birthday to You and pay Warner/Chappell the sum of $3,000 for that
9
Synchronization License based upon its claim of copyright ownership.
10
Warner/Chappell's demand was coercive in nature, and BIG FAN'S entering into
11
the Synchronization License and payment of $3,000 was involuntary.
12
153. Plaintiff Siegel's claim presents a justiciable controversy because
13
plaintiff Siegel's agreement to pay defendant Warner/Chappell and its actual
14 payment to Warner/Chappell for use of the song Happy Birthday to You in its film
15
Big Fan, was the involuntary result of Warner/Chappell's assertion of a copyright
16
and the risk that plaintiff Siegel would be exposed to substantial statutory penalties
17
under the Copyright Act had it failed to enter such an agreement and pay
18
Warner/Chappell the price it demanded, but then used Happy Birthday to You in its
19
film anyway.
20
154. Plaintiff Rupa's claim presents a justiciable controversy because
21
plaintiff Rupa's agreement to pay defendant Warner/Chappell and its actual
22 payment to Warner/Chappell for use of the song Happy Birthday to You in her
23
album, was the involuntary result of Warner/Chappell's assertion of a copyright and
24
the risk that plaintiff Rupa would be exposed to substantial statutory penalties under
25
the Copyright Act had she failed to enter such an agreement and pay
26
Warner/Chappell standard mechanical license royalties it demanded, but then paid
27
for the mechanical license anyway.
28
-25-
Ex. 122
1860
Case 2:13-cv-04460-GHK-MRW Document 59 Filed 09/04/13 Page 27 of 40 Page ID #:392
1
155. Defendants demanded that Plaintiff Majar pay to Defendants a
2
licensing fee in the sum of $5000 pursuant to Defendants' claim of copyright
3
ownership, in order for Plaintiff Majar to use Happy Birthday in the Film.
4
5
Defendants' demand was coercive in nature and Majar's agreement to pay the fee
was involuntary.
6
156. Plaintiff Majar's claim presents a justiciable controversy because its
7
actual payment of Defendants' demanded fee to use Happy Birthday in the Film was
8
the involuntary result of Defendants' assertion of a copyright and the risk that
9
Plaintiff Majar would be exposed to substantial statutory penalties under the
10
11
Copyright Act had it failed to seek Defendants' approval to use the Song and/or
failed to pay Defendants' demanded fee.
12
157. Plaintiffs seek the Court's determination as to whether Defendants are
13
entitled to assert ownership of the copyright to Happy Birthday to You against
14
Plaintiffs pursuant to the Copyright Act as Defendants claim, or whether Defendants
15
are wielding a false claim of ownership to inhibit Plaintiffs' use and enjoyment (and
16
17
the public's use and enjoyment) of intellectual property which is rightfully in the
18
19
158. If and to the extent that Defendants relies upon the 1893, 1896, 1899,
or 1907 copyrights for the melody for Good Morning to All, those copyrights
20
expired or were forfeited as alleged herein.
public domain.
21
159. As alleged above, the 1893 and 1896 copyrights to the original and
22
revised versions of Song Stories for the Kindergarten, which contained the song
23
Good Morning to All, were not renewed by Summy Co. or Summy and accordingly
24
expired in 1921 and 1924, respectively.
25
160. As alleged above, the 1893 copyright to Song Stories for the
26
Kindergarten and the 1899 copyright to Song Stories for the Sunday School, which
27
contained Good Morning to All, and the 1907 copyright to Good Morning to All
28
were not renewed by Summy Co. before Summy Co. was dissolved in 1920 and
-26-
Ex. 122
1861
Case 2:13-cv-04460-GHK-MRW Document 59 Filed 09/04/13 Page 28 of 40 Page ID #:393
1
accordingly, those copyrights expired in 1927 and 1935, respectively.
2
161. The 1893, 1896, 1899, and 1907 copyrights to Good Morning to All
3
were forfeited by the republication of Good Morning to All in 1921 without proper
4
notice of its original 1893 copyright
5
6
162. The copyright to Good Morning to All expired in 1921 because the
1893 copyright to Song Stories for the Kindergarten was not properly renewed.
7
163. The piano arrangements for Happy Birthday to You published by
8
Summy Co. III in 1935 (Reg. Nos. E51988 and E51990) were not eligible for
9
federal copyright protection because those works did not contain original works of
10
11
12
authorship, except to the extent of the piano arrangements themselves.
164. The 1934 and 1935 copyrights pertained only to the p1ano
arrangements, not to the melody or lyrics of the song Happy Birthday to You.
13
165. The registration certificates for The Elementary Worker and His Work
14
in 1912, Harvest Hymns in 1924, and Children's Praise and Worship in 1928, which
15
did not attribute authorship of the lyrics to Happy Birthday to You to anyone, are
16 prima facie evidence that the lyrics were not authored by the Hill Sisters.
17
166. If declaratory relief is not granted, defendant Warner/Chappell will
18
continue wrongfully to assert the exclusive copyright to Happy Birthday to You at
19
least until 2030, when the current term of the copyright expires under existing
20
copyright law.
21
167. Plaintiffs therefore request a declaration that:
22
(a)
23
copyright to, or possess the exclusive right to reproduce, distribute, or
24
publicly perform, Happy Birthday To You;
25
(b)
26
exclusive right to demand or grant a license for use of Happy Birthday To
27
You;and
defendant Warner/Chappell and defendant SBI do not own the
defendant Warner/Chappell and defendant SBI do not own the
28
-27-
Ex. 122
1862
Case 2:13-cv-04460-GHK-MRW Document 59 Filed 09/04/13 Page 29 of 40 Page ID #:394
Happy Birthday to You is in the public domain and is dedicated to the
1
(c)
2
public use.
3
SECOND CLAIM FOR RELIEF
4
UPON ENTRY OF DECLARATORY JUDGMENT
5
DECLARATORY AND INJUNCTIVE RELIEF
6
PURSUANT TO 28 U.S.C § 2202
7
(On Behalf of Plaintiffs and the Class)
8
(Against Defendant Warner/Chappell)
9
10
168. Plaintiffs repeat and reallege paragraphs 1 through 167 set forth above
as though they were fully set forth herein.
11
169. Plaintiffs bring these claims individually on their own behalf and on
12
behalf of the Class pursuant to Rule 23(b)(2) of the Federal Rules of Civil
13
Procedure.
14
170. Under 28 U.S.C. § 2202 empowers this Court to grant, "necessary or
15
proper relief based on a declaratory judgment or decree . . . after reasonable notice
16
and hearing, against any adverse party whose rights have been determined by such
17 judgment."
18
171. Plaintiffs and the other proposed Class members have been harmed,
19
and Defendants have been unjustly enriched, by Defendant Warner/Chappell's
20
takings.
21
22
172. Plaintiffs seek relief for themselves and the other members of the
proposed Class upon the entry of declaratory judgment upon Claim I, as follows:
23
(a)
an injunction to prevent Defendants Warner/Chappell and SBI from
24
making further representations of ownership of the copyright to Happy
25
Birthday To You;
26
(b)
27
to Defendants, directly or indirectly through its agents, in connection with the
28
purported licenses it granted to Plaintiffs GMTY, Siegel, Rupa and Majar and
restitution to Plaintiffs and the other Class members of license fees paid
-28-
Ex. 122
1863
Case 2:13-cv-04460-GHK-MRW Document 59 Filed 09/04/13 Page 30 of 40 Page ID #:395
1
the other Class members;
2
(c)
3
directly or indirectly through its agents, from plaintiffs and the other Class
4
members in connection with its claim to ownership of the copyright to Happy
5
Birthday to You; and
6
(d)
an accounting for all monetary benefits obtained by Defendants,
such other further and proper relief as this Court sees fit.
7
THIRD CLAIM FOR RELIEF
8
UNFAIR BUSINESS ACTS AND PRACTICES IN VIOLATION OF
9
CALIFORNIA BUSINESS AND PROFESSIONS CODE §§ 17200 ET SEQ.
10
(On Behalf of Plaintiffs and the Class)
11
(Against Defendants)
12
13
173. Plaintiffs repeat and reallege paragraphs 1 through 172 set forth above
as though they were fully set forth herein.
14
174. Plaintiffs GMTY, Siegel, Rupa, and Majar bring these claims
15
individually on their own behalf, and also on behalf of the Class pursuant to Rule
16
23(b)(3) of the Federal Rules of Civil Procedure.
17
175. As alleged herein, Plaintiffs GMTY, Siegel, Rupa and Majar and the
18
other Class members have paid licensing fees to defendants Warner/Chappell and/or
19
SBI and have therefore suffered injury in fact and have lost money or property as a
20
result of Defendants' conduct.
21
176. California's Unfair Competition Laws, Business & Professions Code
22
§§ 17200 et seq. ("UCL"), prohibit any unlawful or unfair business act or practice.
23
177. UCL § 17200 further prohibits any fraudulent business act or practice.
24
178. Defendants'
actions,
claims,
nondisclosures,
and
misleading
25
statements, as alleged in this Complaint, were unfair, false, misleading, and likely to
26
deceive the consuming public within the meaning of UCL §§ 17200, 17500.
27
179. The conduct of Defendants in exerting control over exclusive copyright
28
ownership to Happy Birthday to You to extract licensing fees is deceptive and
-29-
Ex. 122
1864
Case 2:13-cv-04460-GHK-MRW Document 59 Filed 09/04/13 Page 31 of 40 Page ID #:396
1
misleading because neither Warner/Chappell nor SBI own the rights to Happy
2
Birthday to You.
3
180. Plaintiffs and the other members of the Class have, in fact, been
4
deceived as a result of their reasonable reliance upon Defendants' materially false
5
and misleading statements and omissions, as alleged above.
6
181. As a result of Defendants' unfair and fraudulent acts and practices as
7
alleged above, Plaintiffs and the other Class members have suffered substantial
8
monetary injuries.
9
182. Plaintiffs and the other Class members reserve the right to allege other
10
violations of law which constitute other unfair or deceptive business acts or
11
practices. Such conduct is ongoing and continues to this date.
12
13
183. As a result of its deception, Defendants Warner/Chappell and SBI have
been able to reap unjust revenue and profit.
14
184. Upon information and belief, Defendants have collected and continue
15
to collect at least $2 million per year in licensing fees for Happy Birthday to You.
16
Therefore, the amount in controversy exceeds $5 million in the aggregate.
17
18
185. Unless restrained and enjoined, Defendants will continue to engage in
the above-described conduct. Accordingly, injunctive relief is appropriate.
19
186. Plaintiffs, individually on their own behalf and on behalf of the other
20
members of the Class, seek restitution and disgorgement of all money obtained from
21
Plaintiffs and the other members of the Class, collected as a result of unfair
22
competition, and all other relief this Court deems appropriate, consistent with UCL
23
§ 17203.
24
FOURTH CLAIM FOR RELIEF
25
BREACH OF CONTRACT
26
(On Behalf of Plaintiffs and the Class Against All Defendants)
27
28
187. Plaintiffs repeat and reallege each and every foregoing allegation as
though fully set forth herein.
-30-
Ex. 122
1865
Case 2:13-cv-04460-GHK-MRW Document 59 Filed 09/04/13 Page 32 of 40 Page ID #:397
1
188. Plaintiffs
entered
into
license
agreements
with
Defendant
2
Warner/Chappell wherein Warner/Chappell represented and warranted that it and/or
3
4
its co-Defendant SBI owned the rights to Happy Birthday as licensed therein.
5
6
agreements are the same or substantially similar as to all Class members,
particularly with respect to Defendants' claim of ownership of the copyright to
7
Happy Birthday.
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
189. Plaintiffs are informed and believe that Defendants' licensing
190. Plaintiffs and the Class have satisfied their obligations under each such
licensing agreement with Warner/Chappell.
191. As alleged herein, Defendants do not own the copyright interests
claimed in Happy Birthday and, as a result of its unlawful and false assertions of the
same, Defendants have violated the representations and warranties made in the
licensing agreements, thereby materially breaching the licensing agreements.
192. Byreason of the foregoing, Plaintiffs and the Class have been damaged
in an amount to be determined at trial.
FIFTH CLAIM FOR RELIEF
COMMON COUNT FOR MONEY HAD AND RECEIVED
(On Behalf of Plaintiffs and the Class)
(Against Defendants)
193. Plaintiffs repeat and reallege paragraphs 1 through 192 set forth above
as though they were fully set forth herein.
194. Within the last four years, Defendants Warner/Chappell and/or SBI
became indebted to Plaintiffs and all class members for money had and received by
Defendants for the use and benefit of Plaintiffs and class members. The money in
equity and good conscience belongs to Plaintiffs and class members.
27
28
- 31-
Ex. 122
1866
Case 2:13-cv-04460-GHK-MRW Document 59 Filed 09/04/13 Page 33 of 40 Page ID #:398
1
SIXTH CLAIM FOR RELIEF
2
RESCISSION FOR FAILURE OF CONSIDERATION
3
(On Behalf of Plaintiffs and the Class)
4
(Against Defendants)
5
6
7
8
9
10
195. Plaintiffs repeat and reallege paragraphs 1 through 194 set forth above
as though they were fully set forth herein.
196. Defendants' purported licenses were worthless and ineffective, and do
not constitute a valid consideration.
197. The complete lack of consideration obviates any need for notice to
Defendants.
SEVENTH CLAIM FOR RELIEF
11
12 FALSE ADVERTISING, CAL. BUS. & PROF. CODE§§ 17500 ET SEQ.
13
(On Behalf of Plaintiffs and the Class)
14
(Against Defendants)
15
16
198. Plaintiffs repeat and reallege paragraphs 1 through 197 set forth above
as though they were fully set forth herein.
17
199. On information and belief, Defendants Warner/Chappell and SBI
18
intended to induce the public to enter into an obligation related to its alleged
19
property, namely the composition Happy Birthday to You.
20
200. Defendants Warner/Chappell and/or SBI publicly disseminated
21
advertising which contained statements which were untrue and misleading and
22
which concerned the composition Happy Birthday to You, for which they
23
improperly sought and received licensing fees. Defendants knew, or in the exercise
24
of reasonable care should have known, that these statements were untrue and
25
misleading.
26
27
201. Plaintiffs and class members have suffered injury in fact and have lost
money as a result of such unfair competition.
28
-32-
Ex. 122
1867
Case 2:13-cv-04460-GHK-MRW Document 59 Filed 09/04/13 Page 34 of 40 Page ID #:399
1
DEMAND FOR .JURY TRIAL
2
Plaintiffs GMTY, Siegel, Rupa and Majar hereby demand a trial by jury to the
3
extent that the allegations contained herein are triable by jury under Federal Rules of
4
Civil Procedure 38-39.
5
PRAYER RELIEF
6
WHEREFORE, Plaintiffs GMTY, Siegel, Rupa and Majar on behalf of
7
themselves and the other members of the Class, pray for judgment against
8
Defendants as follows:
9
A.
certifying the Class as requested herein;
10
B.
declaring that the song Happy Birthday to You is not protected
11
by federal copyright law, is dedicated to public use, and is in the public
12
domain;
13
C.
14
from asserting any copyright to the song Happy Birthday to You;
15
D.
16
from charging or collecting any licensing or other fees for use of the
17
song Happy Birthday to You;
18
E.
19
Warner/Chappell and SBI unlawfully collected from plaintiffs, the
20
other members of the Class, and ASCAP for use of the song Happy
21
Birthday to You;
22
F.
23
Plaintiffs and the other members of the Class all the licensing or other
24
fees they have collected from them, directly or indirectly through its
25
agents, for use of the song Happy Birthday to You, together with
26
interest thereon;
27
G.
28
restitution for defendant Warner/Chappell and SBI' s prior acts and
permanently enJommg Defendants Warner/Chappell and SBI
permanently enjoining Defendants Warner/Chappell and SBI
imposing a constructive trust upon the money Defendants
ordering Defendants Warner/Chappell and SBI to return to
awarding Plaintiffs and the other members of the Class
-33-
Ex. 122
1868
Case 2:13-cv-04460-GHK-MRW Document 59 Filed 09/04/13 Page 35 of 40 Page ID #:400
1
practices;
2
H.
3
costs; and
4
I.
5
proper.
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
awarding Plaintiffs and the Class reasonable attorneys' fees and
granting such other and further relief as the Court deems just and
Dated: August 21, 2013
WOLF HALDENSTEIN ADLER
FREEMAN & HERZ LLP
By:rD~~SYC.MA OLD
c~~M
B
FRANCIS M. GREGOREK (144785)
BETSY C. MANIFOLD (182450)
RACHELE R. RICKERT (190634)
MARISA C. LIVESAY (223247)
750 B Street, Suite 2770
San Diego, CA 92101
Telephone: 619/239-4599
Facsimile: 619/234-4599
gregorek@whafh.com
manifold @whafh.com
rickert@whafh.com
Hvesay@whafh.com
WOLF HALDENSTEIN ADLER
FREEMAN & HERZ LLP
MARK C. RIFKIN (Pro Hac Vice)
JANINE POLLACK (Pro Hac Vice)
BETH A. LANDES (Pro Hac Vice)
GITI BAGHBAN
270 Madison Avenue
New York, NY 10016
Telephone: 212/545-4600
Facsimile: 212-545-4753
rifkin @whafh.com
pollack@whafh.com
-34-
Ex. 122
1869
Case 2:13-cv-04460-GHK-MRW Document 59 Filed 09/04/13 Page 36 of 40 Page ID #:401
Iandes @whafh.com
baghban @whafh.com
1
2
3
RANDALL S. NEWMAN PC
RANDALL S. NEWMAN (190547)
37 Wall Street, Penthouse D
New York, NY 10005
Telephone: 212/797-3737
Facsimile: 212/797-3172
rsn@ randallnewman.net
4
5
6
7
8
DONAHUE GALLAGHER WOODS LLP
WILLIAM R. HILL (114954)
ANDREWS. MACKAY (197074)
DANIEL J. SCHACHT (259717)
1999 Harrison Street, 25t11 Floor
Oakland, CA 94612-3520
Telephone: 510/451-0544
Facsimile: 510/832-1486
rock @donahue.com
andrew@donahue.com
daniel @donahue. com
9
10
11
12
13
14
15
16
17
18
19
20
Dated: August 21,2013
By:
21
22
23
24
LIONEL Z. GLANCY (134180)
MARC L. GODINO (182689)
KA1lAM. WOLKE(24152}) ···.·
1925 Century ,Par~ ];!~, Su1te 2100
CA90007
lOY ~01~?150
25
e: ( J0)20l"'9l~O
26
27
28
-35Ex. 122
1870
Case 2:13-cv-04460-GHK-MRW Document 59 Filed 09/04/13 Page 37 of 40 Page ID #:402
" '
HUNT ORTMANN PALFFY NIEVES
DARLING & MAH, INC.
KATHERINE J. ODENBREIT (184619)
TINA B. NIEVES (134384)
301 North Lake Avenue, 7th Floor
Pasadena, CA 91101
Telephone: 949-335-3500
Facsimile: 949-251-5111
odenbreit@ huntortmann.com
tina@ nieves-law .com
1
2
3
4
5
6
7
8
Attorneys for Plaintiffs
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
WARNER:20137 .amd.cons.comp
26
27
28
-36-
Ex. 122
1871
Case 2:13-cv-04460-GHK-MRW Document 59 Filed 09/04/13 Page 38 of 40 Page ID #:403
'
'
'
1
'
I
DECLARATION OF SERVICE
2
I, LaDonna Cothran, the undersigned, declare:
3
1.
That declarant is and was, at all times herein mentioned, a citizen of
4
the United States and a resident of the County of San Diego, over the age of 18
5
years, and not a party to or interested in the within action; that declarant's business
6
address is 750 B Street, Suite 2770, San Diego, California 92101.
7
2.
That on September 4, 2013 declarant served the following:
8
9
10
11
12
13
14
15
SECOND AMENDED CONSOLIDATED COMPLAINT FOR (1)
INVALIDITY OF COPYRIGHT UNDER THE COPYRIGHT ACT
(17 U.S.C. §§ 101 et seq.); (2) DECLARATORY AND
INJUNCTIVE RELIEF; (3) VIOLATIONS OF CALIFORNIA
UNFAIR COMPETITION LAWS (Cal. Bus. & Prof. Code§§ 17200
et seq.); (4) BREACH OF CONTRACT; (5) MONEY HAD AND
FOR
FAILURE
OF
RECEIVED;
(6)
RESCISSION
CONSIDERATION; and (7) VIOLATIONS OF CALIFORNIA
FALSE ADVERTISING LAWS (Cal. Bus. & Prof. Code § 17500 et
seq.);
16
17
via U.S. Mail and E-mail to all parties as designated on the attached service list.
18
3.
19
I declare under penalty of perjury that the foregoing is true and correct.
20
That there is regular communication between the parties.
Executed this 4th day of September 2013, at San Diego, California.
21
22
23
24
LADONNA COTHRAN
WARNER:20094.POS
25
26
27
28
- 1-
Ex. 122
1872
Case 2:13-cv-04460-GHK-MRW Document 59 Filed 09/04/13 Page 39 of 40 Page ID #:404
WARNER/CHAPPELL MUSIC, INC.
Service List- Aug. 5, 2013
Page 1
COUNSEL FOR PLAINTIFFS:
Francis M. Gregorek
Betsy C. Manifold
Rachele R. Rickert
Marisa C. Livesay
WOLF HALDENSTEIN ADLER
FREEMAN & HERZ LLP
750 B Street, Suite 2770
San Diego, CA 92101
619/239-4599
619/234-4599 (fax)
gregorek@whath.com
manifold @whath.com
rickert @whath.com
livesay@whath.com
Mark C. Rifkin
Janine Pollack
Beth A. Landes
Giti Baghban (SBN 284037)
WOLF HALDENSTEIN ADLER
FREEMAN & HERZ LLP
270 Madison Avenue
New York, NY 10016
212/545-4600
212/545-4753 (fax)
rifkin @whath.com
pollack@whath.com
landes@whath.com
baghban @whath.com
William R. Hill
Andrew S. MacKay
Daniel J. Schacht
DONAHUE GALLAGHER
WOODSLLP
1999 Harrison St., 25th Floor
Oakland, CA 94612-3520
510/451-0544
510/832-1486 (fax)
rock@donahue.com
andrew@donahue.com
daniel@ donahue.com
Randall S. Newman (SBN 190547)
RANDALL S. NEWMAN PC
3 7 Wall Street, Penthouse D
New York, NY 10005
212/797-3737
212/797-3172 (fax)
rsn @randallnewman.net
Katherine J. Odenbreit (184619)
Tina B. Nieves (134384)
HUNT ORTMANN PALFFY NIEVES
DARLING & MAH, INC.
301 North Lake Avenue, 7th Floor
Pasadena, CA 91101
626/440-5200
626/796-0107 (fax)
odenbreit@ huntortmann.com
tina@nieves-law.com
Attorneys for Plaintiffs Good Morning
To You Productions Corp., Robert
Siegel and Rupa Marya
20095
Ex. 122
1873
Case 2:13-cv-04460-GHK-MRW Document 59 Filed 09/04/13 Page 40 of 40 Page ID #:405
COUNSEL FOR DEFENDANTS:
*Glen Pomerantz
MUNGER TOLLES & OLSON LLP
355 South Grand Ave., 35th Floor
Los Angeles, CA 90071
213/683-9100
213/687-3702 (fax)
glenn.pomerantz@mto.com
Attorneys for Defendant
Warner/Chappell Music, Inc. and
Summy-Birchard, Inc.
*DENOTES SERVICE BY U.S. MAIL
20095
Ex. 122
1874
(;+,%,7
([
BBBB
1875
Case 2:13-cv-04460-GHK-MRW Document 72 Filed 11/05/13 Page 1 of 43 Page ID #:613
1
2
3
4
5
6
BETSY C. MANIFOLD (182450)
manifold@whafh.com
WOLF HALDENSTEIN ADLER
FREEMAN & HERZ LLP
750 B Street, Suite 2770
San Diego, CA 92101
Telephone: 619/239-4599
Facsimile: 619/234-4599
Interim Lead Class Counsel for Plaintiffs
[Additional Counsel on Signature Page]
7
8
UNITED STATES DISTRICT COURT
9
CENTRAL DISTRICT OF CALIFORNIA-WESTERN DIVISION
10
11
12
13
14
15
GOOD MORNING TO YOU
PRODUCTIONS CORP.;
ROBERT SIEGEL;
RUPA MARYA; and
MAJAR PRODUCTIONS, LLC;
On Behalf of Themselves and All
Others Similarly Situated,
16
Plaintiffs,
17
18
19
20
v.
WARNER/CHAPPELL MUSIC,
INC.; and SUMMY-BIRCHARD,
INC.,
21
22
23
24
25
Defendants.
)
)
)
)
)
)
)
)
)
)
)
)
)
)
)
)
)
)
Lead Case No. CV 13-04460-GHK (MRWx)
THIRD AMENDED CONSOLIDATED
COMPLAINT FOR:
(1) DECLARATORY JUDGMENT
(28 U.S.C. § 2201);
(2) DECLARATORY AND
INJUNCTIVE RELIEF AND
DAMAGES (28 U.S.C. § 2202);
(3) VIOLATIONS OF CALIFORNIA’S
UNFAIR COMPETITION LAWS
(Bus. & Prof. Code §§ 17200 et seq.);
(4) BREACH OF CONTRACT;
(5) COMMON LAW MONEY HAD
AND RECEIVED;
(6) RESCISSION FOR FAILURE OF
CONSIDERATION; and
(7) VIOLATIONS OF CALIFORNIA’S
FALSE ADVERTISING LAWS
(Bus. & Prof. Code §§ 17500 et seq.)
CLASS ACTION
DEMAND FOR JURY TRIAL
26
27
28
Ex. 123
1876
Case 2:13-cv-04460-GHK-MRW Document 72 Filed 11/05/13 Page 2 of 43 Page ID #:614
1
Plaintiffs, Good Morning to You Productions Corp. (“GMTY”), Robert
2
Siegel (“Siegel”), Rupa Marya d/b/a/ Rupa Marya & The April Fishes (“Rupa”), and
3
Majar Productions, LLC (“Majar”) (collectively herein “Plaintiffs”), on behalf of
4
themselves and all others similarly situated, by their undersigned attorneys, as and
5
for their Third Amended Consolidated Complaint For: (1) Declaratory Judgment (28
6
U.S.C. § 2201); (2) Declaratory and Injunctive Relief and Damages (28 U.S.C. §
7
2202); (3) Violations of California’s Unfair Competition Laws (Bus. & Prof. Code
8
§§ 17200
9
Received; (6) Rescission for Failure of Consideration; and (7) Violations of
et seq.); (4) Breach of Contract; (5) Common Law Money Had and
et seq.) against
10
California’s False Advertising Laws (Bus. & Prof. Code §§ 17500
11
defendants Warner/Chappell Music, Inc. (“Warner/Chappell”) and Summy-
12
Birchard, Inc. (“SBI”) (collectively “Defendants”), hereby allege as follows:
13
14
JURISDICTION AND VENUE
1.
The Court has subject-matter jurisdiction over this action pursuant to
15
28 U.S.C. § 1331 and 28 U.S.C. § 1338 with respect to claims seeking declaratory
16
and other relief arising under the Copyright Act, 17 U.S.C. §§ 101 et seq.; pursuant
17
to the Declaratory Judgment Act, 28 U.S.C. §§ 2201
18
Action Fairness Act, 28 U.S.C. § 1332(d)(2); and supplemental jurisdiction pursuant
19
to 28 U.S.C. § 1367 over the entire case or controversy.
20
2.
et seq.; pursuant to the Class
The Court has personal jurisdiction and venue is proper in this District
21
under 28 U.S.C. §§ 1391(b)-(c) and 28 U.S.C. § 1400(a), in that the claims arise in
22
this Judicial District where both Defendants’ principal places of business are located
23
and where they regularly conduct business.
24
3.
Paragraph 8 of the Film and Synchronization and Performance License
25
(“Synchronization License”) by and between assignee Plaintiff Siegel and defendant
26
Warner/Chappell states: “this license has been entered into in, and shall be
27
interpreted in accordance with the laws of the state of California, and any action or
28
-1-
Ex. 123
1877
Case 2:13-cv-04460-GHK-MRW Document 72 Filed 11/05/13 Page 3 of 43 Page ID #:615
1
proceeding concerning the interpretation and/or enforcement of this license shall be
2
heard only in the state or federal courts situated in Los Angeles county. . . .”
3
Defendant Warner/Chappell requires any action or proceeding related thereto to be
4
brought in this District under the Synchronization License.
5
6
INTRODUCTION
4.
This is an action to declare that Defendants do not own a copyright to
Happy Birthday to You (the “Song”), that if
7
the world’s most popular song,
8
Defendants own any copyright to the Song, it is limited to four specific piano
9
arrangements or an obscure second verse that has no commercial value, that any
10
other copyright to the Song that Defendants may own or ever owned are invalid or
11
have expired, and that the Song is dedicated to public use and in the public domain;
12
and in turn to declare that Defendants must return millions of dollars of unlawful
13
licensing fees collected by defendant Warner/Chappell pursuant to its wrongful
14
assertion of copyright ownership of the Song.
15
5.
According to the United States Copyright Office (“Copyright Office”),
16
a “musical
composition consists of music, including any accompanying words, and
17
is normally registered as a work of the performing arts.” Copyright Office Circular
18
56A, “Copyright Registration of Musical Compositions and Sound Recordings,” at 1
19
(Feb. 2012) (available at www.copyright.gov/circs/circ.56a.pdf). The author of a
20
musical composition generally is the composer, and the lyricist (if a different
21
person).
22
6.
Id.
More than 120 years after the melody to which the simple lyrics of
Happy Birthday to You is set was first published, defendant Warner/Chappell
24 boldly, but wrongfully and unlawfully, insists that it owns the copyright to Happy
25 Birthday to You, and with that copyright the exclusive right to authorize the Song’s
23
26
reproduction, distribution, and public performances pursuant to federal copyright
27
law. At all relevant times, Warner/Chappell declared in the first two sentences on
28
the “About Us” page of its website that “Warner/Chappell Music is [Warner Music
-2-
Ex. 123
1878
Case 2:13-cv-04460-GHK-MRW Document 72 Filed 11/05/13 Page 4 of 43 Page ID #:616
1
Group]’s award-winning global music publishing company. The Warner/Chappell
2
Music catalog includes standards such as ‘Happy Birthday To You’. . .” (available
3
at www.warnerchappell.com/about.jsp?currenttab=about_us as of June 18, 2013).
4
Defendant Warner/Chappell either has silenced those wishing to record or perform
5
Happy Birthday to You, or has extracted millions of dollars in unlawful licensing
6
fees from those unwilling or unable to challenge its ownership claims.
7
7.
Irrefutable documentary evidence, some dating back to 1893, shows
8
that if defendant Warner/Chappell owned or owns any copyrights to Happy Birthday
9
to You, those rights were and are limited to the extremely narrow right to reproduce
10
and distribute specific piano arrangements for the Song, or an obscure second verse
11
that has no commercial value, which were published in 1935. That same evidence
12
also shows that if Warner/Chappell ever owned a copyright to any other part of the
13
Song, it was invalid or expired no later than 1921. Significantly, no court has ever
14
adjudicated either the scope or validity of the Defendants’ claimed interest in Happy
15
Birthday to You, nor in the Song’s melody or its familiar lyrics, which are,
16
themselves, independent works.
17
8.
Various legal scholars and copyright and music industry experts agree
18
with the foregoing, questioning the validity of Defendants’ assertion of copyright in
19
the Song, and supporting the conclusion that
20
public domain. For example, Professor Robert Brauneis, Professor of Law and Co-
21
Director of the Intellectual Property Law Program at George Washington
22
University, and a leading legal scholar in intellectual property law, has stated that it
23
is “doubtful” that Happy Birthday “is really still under copyright.”
24
9.
Happy Birthday properly exists in the
Plaintiffs GMTY, Siegel, Rupa, and Majar on behalf of themselves and
Happy Birthday to You is
25
all others similarly situated, seek a declaration that
26
dedicated to public use and is in the public domain as well as monetary damages and
27
restitution of all the unlawful licensing fees that defendants have improperly
28
collected from Plaintiffs and all other Class members.
-3-
Ex. 123
1879
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1
2
PLAINTIFFS
10.
Plaintiff GMTY is a New York corporation with its principal place of
3
business located in New York County. Under a claim of copyright by defendant
4
Warner/Chappell, on or about March 26, 2013, GMTY paid defendant
5
Warner/Chappell the sum of $1,500 for a synchronization license to use
6
Birthday to You and on or about April 24, 2013, GMTY entered into a
7
synchronization license with Warner/Chappell, as alleged more fully herein.
8
11.
Happy
Plaintiff Robert Siegel is the assignee of BIG FAN PRODUCTIONS,
9
INC. (“BIG FAN”), an inactive New York corporation and a resident of New York,
10
New York. Under a claim of copyright by defendant Warner/Chappell, on or about
11
September 1, 2009, BIG FAN paid to defendant Warner/Chappell the sum of $3,000
12
for the Synchronization Licenses to use
13
fully herein. Plaintiff Siegel, the then-President of BIG FAN, was assigned BIG
14
FAN’s rights and claims, including those pertaining to the Synchronization License
15
pursuant to Paragraph 7 thereof between defendant Warner/Chappell and BIG FAN,
16
entered into on or about July 20, 2009.
17
12.
Happy Birthday to You, as alleged more
Plaintiff Rupa is a musician and leader of the band entitled “Rupa &
18
The April Fishes” (“RTAF”), and a member of the American Society of Composers,
19
Authors and Publishers (“ASCAP”). Plaintiff Rupa is a resident of San Mateo
20
County, California. RTAF recorded
21
Francisco, California, on April 27, 2013. Under a claim of copyright by defendant
22
Warner/Chappell, on or about June 17, 2013, Plaintiff Rupa d/b/a RTAF paid to
23
defendant Warner/Chappell the sum of $455 for a compulsory license pursuant to 17
24
U.S.C. § 115 (commonly known as a “mechanical license”) to use Happy
25
to You, as alleged more fully herein.
26
13.
Happy Birthday to You at a live show in San
Birthday
Plaintiff Majar is a Los Angeles-based film production company that
27
produced the award winning documentary film “No
28
Vilmos” (hereafter, “No Subtitles Necessary” or the “Film”). The Film follows the
-4-
Subtitles Necessary: László &
Ex. 123
1880
Case 2:13-cv-04460-GHK-MRW Document 72 Filed 11/05/13 Page 6 of 43 Page ID #:618
1
lives of renowned cinematographers László Kovacs (“Kovacs”) and Vilmos
2
Zsigmond (“Zsigmond”) from escaping the 1956 Soviet invasion of Hungary to the
3
present day. As film students in Hungary, Kovacs and Zsigmond shot footage of the
4
Russian invasion of Budapest and subsequently risked their lives to smuggle it out
5
of the country. They fled to America and settled in Hollywood, eventually saving
6
enough money to buy their own 16mm camera to begin shooting movies. Both rose
7
to prominence in the late 1960’s and 1970’s having shot films such as “Easy Rider,”
8
“Five Easy Pieces,” “McCabe and Mrs. Miller,” “Deliverance,” “Paper Moon,” and
9
“Close Encounters of the Third Kind.”
10
their lives and careers.
11
12
No Subtitles Necessary tells the story of
DEFENDANTS
14.
Defendant Warner/Chappell is a Delaware corporation with its
13
principal place of business located at 10585 Santa Monica Boulevard, Los Angeles,
14
California 90025 and regularly conducts business within this Judicial District.
15
15.
Defendant SBI is a Wyoming corporation with its principal place of
16
business located at 10585 Santa Monica Boulevard, Los Angeles, California 90025.
17
SBI regularly conducts business within this Judicial District, where it may be found.
18
On information and belief, SBI is a subsidiary of Warner/Chappell, having been
19
acquired by Warner/Chappell in or around 1998.
20
21
22
FACTUAL BACKGROUND
Good Morning to All and the Popular Adoption of Happy Birthday to You
16.
Sometime prior to 1893, Mildred J. Hill (“Mildred Hill”) and her sister
23
Patty Smith Hill (“Patty Hill”) (Mildred and Patty Hill are collectively referred to as
24
the “Hill Sisters”) authored a written manuscript containing sheet music for 73
25
songs composed or arranged by Mildred Hill, with words written and adapted by
26
Patty Hill.
27
17.
28
The manuscript included
Good Morning to All, a song written by the
Hill Sisters.
-5-
Ex. 123
1881
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1
18.
On or about February 1, 1893, the Hill Sisters sold and assigned all
2
their right, title, and interest in the written manuscript to Clayton F. Summy
3
(“Summy”) in exchange for 10 percent of retail sales of the manuscript. The sale
4
included the song Good Morning to All.
5
6
19.
In or around 1893, Summy published the Hill Sisters’ written
manuscript with an introduction by Anna E. Bryan (“Bryan”) in a songbook titled
Song Stories for the Kindergarten. Song Stories for the Kindergarten included the
8 song Good Morning to All.
7
9
10
11
12
13
14
15
20.
On or about October 16, 1893, Summy filed a copyright application
(Reg. No. 45997) with the Copyright Office for Song Stories for the Kindergarten.
21.
On the October 16, 1893, copyright application, Summy claimed to be
the copyright’s proprietor, but not the author of the copyrighted works.
22.
Song Stories for the Kindergarten bears a copyright notice reading
“Copyright 1893, by Clayton F. Summy.”
23.
As proprietor of the 1893 copyright in
Song Stories for the
Kindergarten, Summy asserted copyright ownership in the compilation of songs, as
17 well as, the individual songs published therein, including Good Morning to All.
24. The lyrics to Good Morning to All are:
18
16
19
Good morning to you
20
Good morning to you
21
Good morning dear children
22
Good morning to all.
23
Happy Birthday to You are set to the melody from the
25 song Good Morning to All. As nearly everyone knows, the lyrics to Happy Birthday
26 to You are:
24
27
28
25.
The lyrics to
Happy Birthday to You
Happy Birthday to You
-6-
Ex. 123
1882
Case 2:13-cv-04460-GHK-MRW Document 72 Filed 11/05/13 Page 8 of 43 Page ID #:620
1
Happy Birthday dear [NAME]
2
Happy Birthday to You.
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
26.
The lyrics to Happy Birthday to You were not published in Song Stories
for the Kindergarten.
27.
On or about January 14, 1895, Summy incorporated the Clayton F.
Summy Company (“Summy Co.”) under the laws of the State of Illinois for a
limited term of 25 years. On that same date, Summy purported to assign all his
right, title, and interest in Song Stories for the Kindergarten to Summy Co.
28.
version of
In 1896, Summy published a new, revised, illustrated, and enlarged
Song Stories for the Kindergarten, which contained eight previously
unpublished songs written by the Hill Sisters as well as illustrations by Margaret
Byers.
29.
On or about June 18, 1896, Summy filed a copyright application (Reg.
No. 34260) with the Copyright Office for the 1896 publication of
Song Stories for
the Kindergarten.
30.
On its June 18, 1896, copyright application, Summy again claimed to
be the copyright’s proprietor, but (again) not the author of the copyrighted works.
31.
The 1896 version of
Song Stories for the Kindergarten bears a
copyright notice reading “Copyright 1896, by Clayton F. Summy.”
32.
As proprietor of the 1896 copyright in the revised
Song Stories for the
Kindergarten, Summy owned the rights to both the songbook as a compilation and
the individual songs published therein, including Good Morning to All.
33. The lyrics to Happy Birthday to You were not published in the 1896
version of Song Stories for the Kindergarten.
34. In 1899, Summy Co. published 17 songs from the 1893 version of Song
Stories for the Kindergarten in a songbook titled Song Stories for the Sunday
School. One of those songs included in Song Stories for the Sunday School was
-7-
Ex. 123
1883
Case 2:13-cv-04460-GHK-MRW Document 72 Filed 11/05/13 Page 9 of 43 Page ID #:621
Good Morning to All. And yet again, neither the song Happy Birthday nor the lyrics
2 to Happy Birthday were published in “Song Stories for the Sunday School.”
1
3
4
35.
(Reg. No. 20441) with the Copyright Office for Song Stories for the Sunday School.
5
6
On or about March 20, 1899, Summy Co. filed a copyright application
36.
On the 1899 copyright application, Summy Co. claimed to be the
copyright’s proprietor, but not the author of the copyrighted works.
The title page to Song Stories for the Sunday School states:
7
37.
8
This collection of songs has been published in response to earnest requests
9
from various sources. They are taken from the book,
Kindergarten by the MISSES HILL, and are the copyright property of the
10
11
publishers.
12
38.
13
Song Stories for the
(Emphasis added).
Song Stories for the Sunday School bears a copyright notice reading
“Copyright 1899 by Clayton F. Summy Co.”
14
39.
As proprietor of the 1899 copyright in
Song Stories for the Sunday
23
School, Summy Co. owned the rights to both the songbook as a compilation and the
individual songs published therein, including Good Morning to All.
40. The lyrics to Happy Birthday to You were not published in Song Stories
for the Sunday School.
41. Even though the lyrics to Happy Birthday to You and the song Happy
Birthday to You had not been fixed in a tangible medium of expression, the public
began singing Happy Birthday to You no later than the early 1900s.
42. For example, in the January 1901 edition of Inland Educator and
Indiana School Journal, the article entitled “First Grade Opening Exercises”
24
described children singing the words “happy birthday to you,” but did not print the
25
Song’s lyrics or melody.
15
16
17
18
19
20
21
22
26
43.
In or about February, 1907, Summy Co. republished the song
27
Morning to All as an individual musical composition.
28
Good
///
-8-
Ex. 123
1884
Case 2:13-cv-04460-GHK-MRW Document 72 Filed 11/05/13 Page 10 of 43 Page ID #:622
1
2
44.
On or about February 7, 1907, Summy Co. filed a copyright application
(Reg. No. 142468) with the Copyright Office for the song Good Morning to All.
Happy Birthday to You do not appear in the 1907
4 publication of Good Morning to All.
5
46. In 1907, Fleming H. Revell Co. (“Revell”) published the book Tell Me
6 a True Story, arranged by Mary Stewart, which instructed readers to:
3
45.
The lyrics to
7
Sing: “Good-bye to you, good-bye to you, good-bye dear children, good-
8
bye to you.” Also: “Good-bye dear teacher.” (From “Song Stories for the
9
Sunday-School,” published by Summy & Co.)
10
Sing: “Happy Birthday to You.” (Music same as “Good-bye to You.”)
11
12
47.
A239690) with the Copyright Office for Tell Me a True Story.
48.
Tell Me a True Story did not include the lyrics to Happy Birthday to
49.
13
14
On or about May 18, 1909, Revell filed an application (Reg. No.
Upon information and belief, the lyrics to
You.
15
Happy Birthday to You
16
(without the sheet music for the melody) were first published in 1911 by the Board
17
of Sunday Schools of the Methodist Episcopal Church (“Board of Sunday Schools”)
18
in
19
Lincoln, as follows:
The Elementary Worker and His Work, by Alice Jacobs and Ermina Chester
20
Happy birthday to you, Happy birthday to you, Happy birthday, dear John,
21
Happy birthday to you. (Sung to the same tune as the “Good Morning”)
22
[NOTE: The songs and exercises referred to in this program may be found in
23
these books:... “Song Stories for the Sunday School,” by Patty Hill.]
24
50.
25
On or about January 6, 1912, the Board of Sunday Schools filed a
copyright application (Reg. No. A303752) with the Copyright Office for
The
Elementary Worker and His Work.
27
51. The Elementary Worker and His Work attributed authorship or
26
28
identified the copyrights to many of the works included in the book. Significantly, it
-9-
Ex. 123
1885
Case 2:13-cv-04460-GHK-MRW Document 72 Filed 11/05/13 Page 11 of 43 Page ID #:623
1
did not attribute authorship or identify any copyright for the song Happy Birthday to
2
You.
3
52.
On or about January 14, 1920, Summy Co. was dissolved in accordance
4
with its limited (not perpetual) 25-year term of incorporation. Summy Co. did not
5
extend or renew the 1893 (Reg. No. 45997) or 1907 (Reg. No. 142468) copyrights
6
prior to its dissolution.
7
53.
Upon information and belief, by 1912, various companies (such as
8
Cable Company Chicago) had begun producing unauthorized printings of sheet
9
music which included the song known today as Happy Birthday (i.e., the melody of
Happy Birthday). On
10
Good Morning to You with the lyrics changed to those of
11
information and belief, Cable Company Chicago never asserted copyright ownership
12
in Happy Birthday.
13
14
Copyright History of Good Morning to All
54.
Pursuant to Section 24 of the Copyright Act of 1909, the renewal rights
Song Stories for the Kindergarten, Song Stories for the Sunday
16 School, and Good Morning to All were vested solely in their proprietor, Summy Co.
15
to the original
17
55.
18
to the revised
19
proprietor, Summy Co.
20
56.
Pursuant to Section 24 of the Copyright Act of 1909, the renewal rights
Song Stories for the Kindergarten were vested solely in their
Song Stories for the Kindergarten (Reg.
The copyright to the original
21
No. 45997) was not extended by Summy Co., and consequently expired on October
22
16, 1921. The original Song Stories for the
23
Morning to All, became dedicated to public use and fell into the public domain by
24
no later than that date.
25
57.
The copyright to the revised
Kindergarten, including the song Good
Song Stories for the Kindergarten (Reg.
26
No. 34260) was not extended by Summy, and consequently expired on June 18,
27
1924. The revised
28
use and fell into the public domain by no later than that date.
Song Stories for the Kindergarten became dedicated to public
- 10 -
Ex. 123
1886
Case 2:13-cv-04460-GHK-MRW Document 72 Filed 11/05/13 Page 12 of 43 Page ID #:624
1
58.
In or around March 1924, the sheet music (with accompanying lyrics)
Happy Birthday to You was in a songbook titled Harvest Hymns, published,
2
to
3
compiled, and edited by Robert H. Coleman (“Coleman”). Upon information and
4
belief, Harvest Hymns was the first time the melody and lyrics of Happy Birthday to
5
You were published together.
Good Morning
7 to You or the lyrics to Happy Birthday to You. Although Harvest Hymns attributed
59.
6
Coleman did not claim authorship of the song entitled
8
authorship or identified the copyrights to many of the works included in the book, it
9
did
10
11
not attribute authorship or identify any copyright for Good Morning to You or
Happy Birthday to You.
60.
On or about March 4, 1924, Coleman filed a copyright application
Harvest Hymns. On or about
12
(Reg. No. A777586) with the Copyright Office for
13
February 11, 1952, the copyright was renewed (Reg. No. R90447) by the Sunday
14
School Board of the Southern Baptist Convention.
15
61.
On or about April 15, 1925, Summy incorporated a new Clayton F.
16
Summy Co. (“Summy Co. II”) under the laws of the State of Illinois.
17
information and belief, Summy Co. II was not a successor to Summy Co.; rather, it
18
was incorporated as a new corporation.
Upon
Happy Birthday to You
20 was again published in 1928 in the compilation Children’s Praise and Worship,
19
21
62.
The sheet music (with accompanying lyrics) to
compiled and edited by A.L. Byers, Bessie L. Byrum, and Anna E. Koglin (“Byers,
Children’s Praise and Worship
23 was the first time the song was published under the title Happy Birthday to You.
22
24
25
Byrum & Koglin”). Upon information and belief,
63.
On or about April 7, 1928, Gospel Trumpet Co. (“Gospel”) filed a
copyright application (Reg. No. A1068883) with the Copyright Office for
Children’s Praise and Worship.
27
64. Children’s Praise and Worship attributed authorship or identified the
26
28
copyrights to many of the works included in the book. Significantly, it did
- 11 -
not
Ex. 123
1887
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1
attribute authorship or identify any copyright for the song Happy Birthday to You.
Children’s Praise and Worship did not provide any copyright notice for
3 the combination of Good Morning to All with the lyrics to Happy Birthday to You,
2
65.
4
nor did it include the names of Mildred Hill or Patty Hill and did not attribute any
5
authorship or ownership to the Hill Sisters.
6
66.
Upon information and belief, the Hill Sisters had not fixed the lyrics to
Happy Birthday to You or the song Happy Birthday to You in a tangible medium of
8 expression, if ever, at any time before Gospel published Children’s Praise and
9 Worship in 1928.
7
10
11
12
67.
Upon information and belief, Summy sold Summy Co. II to John F.
Sengstack (“Sengstack”) in or around 1930.
68.
Upon information and belief, on or about August 31, 1931, Sengstack
13
incorporated a third Clayton F. Summy Co. (“Summy Co. III”) under the laws of the
14
State of Delaware.
15
successor to Summy Co. or Summy Co. II; rather, it was incorporated as a new
16
corporation.
Upon information and belief, Summy Co. III was not a
17
69.
On May 17, 1933, Summy Co. II was dissolved for failure to pay taxes.
18
70.
On July 28, 1933, Happy Birthday to You was used in the world’s first
19
singing telegram.
20
71.
On September 30, 1933, the Broadway show
As Thousands Cheer,
21
produced by Sam Harris with music and lyrics written by Irving Berlin, began using
22
the song Happy Birthday to You in public performances.
23
24
72.
On August 14, 1934, Jessica Hill, a sister of Mildred Hill and Patty
Hill, commenced an action against Sam Harris in the Southern District of New
Hill v. Harris, Eq. No. 78-350, claiming that the performance of
26 Happy to Birthday to You in As Thousands Cheer infringed on the Hill Sisters’ 1893
27 and 1896 copyrights to Good Morning to All. Jessica Hill asserted no claim in that
28 action regarding Happy Birthday to You, alone or in combination with Good
25
York, captioned
- 12 -
Ex. 123
1888
Case 2:13-cv-04460-GHK-MRW Document 72 Filed 11/05/13 Page 14 of 43 Page ID #:626
1
Morning to All.
2
73.
3
On January 21, 1935, Jessica Hill commenced an action against the
Federal Broadcasting Corp. in the Southern District of New York, captioned
Hill v.
Federal Broadcasting Corp., Eq. No. 79-312, claiming infringement on the Hill
5 Sisters’ 1893 and 1896 copyrights to Good Morning to All. Jessica Hill asserted no
6 claim in that action regarding Happy Birthday to You, alone or in combination with
7 Good Morning to All.
4
8
9
74.
In 1934 and 1935, Jessica Hill sold and assigned to Summy Co. III
certain piano arrangements of
Good Morning to All, including publishing, public
10
performance, and mechanical reproduction rights, copyright, and extension of
11
copyright in exchange for a percentage of the retail sales revenue from the sheet
12
music.
13
Applications for Copyright for New Musical Arrangement
14
75.
On or about December 29, 1934, Summy Co. III filed an Application
15
for Copyright for Republished Musical Composition with new Copyright Matter
16
(Reg. No. E45655) with the Copyright Office for the song Happy Birthday.
17
76.
In that December 1934 Application for Copyright, Summy Co. III
18
claimed to be the proprietor of the copyright as a work for hire by Preston Ware
19
Orem (“Orem”) and claimed the copyrighted new matter as “arrangement by piano
20
solo.”
21
77.
The lyrics to
Happy Birthday to You were not included on the work
22
registered with the Copyright Office as Reg. No. E45655. The application did not
23
contain the names of the Hill Sisters and did not claim copyright in the lyrics to
Happy Birthday to You alone or in combination with the melody of Good Morning
25 to All.
24
26
78.
The work registered with the Copyright Office as Reg. No. E45655 was
27
not eligible for federal copyright protection in that it consisted entirely of
28
information that was common property and contained no original authorship, except
- 13 -
Ex. 123
1889
Case 2:13-cv-04460-GHK-MRW Document 72 Filed 11/05/13 Page 15 of 43 Page ID #:627
1
as to the arrangement itself.
2
79.
On or about February 18, 1935, Summy Co. III filed an Application for
3
Copyright for Republished Musical Composition with new Copyright Matter (Reg.
4
No. E46661) with the Copyright Office for the song Happy Birthday.
5
80.
In that February 1935 Application for Copyright, Summy Co. III
6
claimed to be the proprietor of the copyright as a work for hire by Orem and claimed
7
the copyrighted new matter as “arrangement for four hands at one piano.”
8
81.
The lyrics to
Happy Birthday to You were not included on the work
9
registered with the Copyright Office as Reg. No. E46661. The application did not
10
contain the names of the Hill Sisters and did not claim copyright in the lyrics to
Happy Birthday to You alone or in combination with the melody of Good Morning
12 to All.
11
13
82.
The work registered with the Copyright Office as Reg. No. E46661 was
14
not eligible for federal copyright protection in that it consisted entirely of
15
information that was common property and contained no original authorship, except
16
as to the arrangement itself.
17
83.
On or about April 5, 1935, Summy Co. III filed an Application for
18
Copyright for Republished Musical Composition with new Copyright Matter (Reg.
19
No. E47439) with the Copyright Office for the song Happy Birthday.
20
84.
In that April 1935 Application for Copyright, Summy Co. III claimed
21
to be the proprietor of the copyright as a work for hire by Orem and claimed the
22
copyrighted new matter as “arrangement of second piano part.”
23
85.
The lyrics to
Happy Birthday to You were not included on the work
24
registered with the Copyright Office as Reg. No. E47439.
25
contain the names of the Hill Sisters and did not claim copyright in the lyrics to
The application did not
Happy Birthday to You alone or in combination with the melody of Good Morning
27 to All.
26
28
///
- 14 -
Ex. 123
1890
Case 2:13-cv-04460-GHK-MRW Document 72 Filed 11/05/13 Page 16 of 43 Page ID #:628
1
86.
The work registered with the Copyright Office as Reg. No. E47439 was
2
not eligible for federal copyright protection in that it consisted entirely of
3
information that was common property and contained no original authorship, except
4
as to the arrangement itself.
5
87.
On or about April 5, 1935, Summy Co. III filed an Application for
6
Copyright for Republished Musical Composition with new Copyright Matter (Reg.
7
No. E47440) with the Copyright Office for the song Happy Birthday.
8
9
10
11
88.
In that additional April 1935 Application for Copyright, Summy Co. III
claimed to be the proprietor of the copyright as a work for hire by Orem and claimed
the copyrighted new matter as “arrangement for six hands at one piano.”
89.
The lyrics to
Happy Birthday to You were not included on the work
12
registered with the Copyright Office as Reg. No. E47440. The application did not
13
contain the names of the Hill Sisters and did not claim copyright in the lyrics to
Happy Birthday to You alone or in combination with the melody of Good Morning
15 to All.
14
16
90.
The work registered with the Copyright Office as Reg. No. E47440 was
17
not eligible for federal copyright protection in that it consisted entirely of
18
information that was common property and contained no original authorship, except
19
as to the arrangement itself.
20
91.
On December 9, 1935, Summy Co. III filed an Application for
21
Copyright for Republished Musical Composition with new Copyright Matter (Reg.
22
No. E51988) with the Copyright Office for Happy Birthday to You.
23
92.
In that December 1935 Application for Copyright, Summy Co. III
24
claimed to be the proprietor of the copyright as a work for hire by R.R. Forman
25
(“Forman”) and claimed the copyrighted new matter as “arrangement for Unison
26
Chorus and revised text.”
27
Forman did not write the familiar first verse lyrics to
28
sheet music deposited with the application credited Forman only for the
Upon information and belief, Plaintiffs allege that
- 15 -
Happy Birthday to You. The
Ex. 123
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1
arrangement and for the obscure second verse lyrics that lack commercial value, not
2
for the familiar first verse lyrics, and did not credit the Hill Sisters with writing the
3
lyrics to Happy Birthday to You.
4
93.
For the first time, the lyrics to
Happy Birthday to You, including an
5
obscure second verse that lacks commercial value as the revised text, were included
6
on the work registered with the Copyright Office as Reg. No. E51988. However,
7
the December 1935 Application for Copyright did not attribute authorship of the
8
lyrics to either of the Hill Sisters and did not claim copyright in the familiar first
Happy Birthday to You alone or in combination with the melody of
10 Good Morning to All.
9
11
verse lyrics to
94.
The work registered with the Copyright Office as Reg. No. E51988 was
12
expressly limited in scope and neither claimed nor provided copyright protection to
13
the familiar lyrics to Happy Birthday to You. If and to the extent the work registered
14
with the Copyright Office as Reg. No. E51988 had claimed copyright protection to
15
those familiar lyrics, that work was not eligible for federal copyright protection in
16
that it consisted entirely of work that was common property and contained no
17
original authorship, except as to the sheet music arrangement itself.
18
95.
Based upon information and belief, the work registered as Reg. No.
19
E51988 was not eligible for federal copyright protection because Summy Co. III did
20
not have authorization from the author to publish any part of that work except as to
21
the arrangement and the obscure second verse.
22
96.
On December 9, 1935, Summy Co. III filed an Application for
23
Copyright for Republished Musical Composition with new Copyright Matter (Reg.
24
No. E51990) with the Copyright Office for Happy Birthday to You.
25
97.
In that additional December 1935 Application for Copyright, Summy
26
Co. III claimed to be the proprietor of the copyright as a work for hire by Orem and
27
claimed the copyrighted new matter as “arrangement as easy piano solo, with text.”
28
Upon information and belief, Plaintiffs allege that Orem did not write the familiar
- 16 -
Ex. 123
1892
Case 2:13-cv-04460-GHK-MRW Document 72 Filed 11/05/13 Page 18 of 43 Page ID #:630
1
lyrics to Happy Birthday to You. Upon information and belief, Plaintiffs also allege
2
that the sheet music deposited with the application did not credit either Orem or the
3
Hill Sisters for writing the lyrics to Happy Birthday to You.
4
98.
The lyrics to
Happy Birthday to You were included on the work
5
registered with the Copyright Office as Reg. No. E51990. However, the additional
6
December 1935 Application for Copyright did not attribute authorship of the lyrics
7
to either of the Hill Sisters, did not contain the names of either of the Hill Sisters,
Happy Birthday to You alone or in
9 combination with the melody of Good Morning to All.
8
and did not claim any copyright in the lyrics to
10
99.
The work registered with the Copyright Office as Reg. No. E51990 was
11
expressly limited in scope and neither claimed nor provided copyright protection to
12
the familiar lyrics to Happy Birthday to You. If and to the extent the work registered
13
with the Copyright Office as Reg. No. E51990 had claimed copyright protection to
14
those familiar lyrics, that work was not eligible for federal copyright protection in
15
that it consisted entirely of information that was common property and contained no
16
original authorship, except as to the sheet music arrangement itself.
17
100. Based upon information and belief, the work registered as Reg. No.
18
E51990 was not eligible for federal copyright protection because Summy Co. III did
19
not have authorization from the author to publish any part of that work except as to
20
the arrangement.
21
101. Based upon information and belief, in or about February, 1938, Summy
22
Co. III purported to grant to ASCAP the right to license Happy
23
public performances and to collect fees for such use on behalf of Summy Co. III.
24
ASCAP thus began working as agent for Summy Co. III in collecting fees for
25
Summy Co. III for licensing Happy Birthday to You.
26
Birthday to You for
102. On or about June 8, 1942, Patty Hill and Jessica Hill assigned all of
27
their interest in the 1893, 1896, 1899 and 1907 copyrights to The Hill Foundation.
28
///
- 17 -
Ex. 123
1893
Case 2:13-cv-04460-GHK-MRW Document 72 Filed 11/05/13 Page 19 of 43 Page ID #:631
1
2
103. On October 15, 1942, The Hill Foundation commenced an action
against Summy Co. III in the Southern District of New York, captioned
The Hill
Foundation, Inc. v. Clayton F. Summy Co., Case No. 19-377, for an accounting of
4 the royalties received by Summy Co. III for the licensing of Happy Birthday to You.
3
5
The Hill Foundation asserted claims under the 1893, 1896, 1899, and 1907
6
copyrights for Good Morning to All and did not claim any copyright to the lyrics to
Happy Birthday to You, alone or in combination with the melody of Good Morning
8 to All.
7
9
104. On March 2, 1943, The Hill Foundation commenced an action against
10
the Postal Telegraph Cable Company in the Southern District of New York,
11
captioned
12
439, for infringement of the Hill Sisters’ purported 1893, 1896, and 1899 copyrights
The Hill Foundation, Inc. v. Postal Telegraph-Cable Co., Case No. 20-
Good Morning to All. The Hill Foundation asserted claims only under the 1893,
14 1896, and 1899 copyrights for Good Morning to All and did not claim any copyright
15 to the lyrics to Happy Birthday to You, alone or in combination with the melody of
16 Good Morning to All.
13
17
to
105. Despite the filing of at least four prior cases in the Southern District of
Good Morning to All, there has been no judicial
19 determination of the validity or scope of any copyright related to Good Morning to
20 All.
18
21
22
New York asserting copyrights to
106. In or about 1957, Summy Co. III changed its name to Summy-Birchard
Company.
23
107. In 1962, Summy Co. III (renamed as Summy-Birchard Company) filed
24
renewals for each of the six registrations it obtained in 1934 and 1935 (Reg. Nos.
25
E45655, E46661, E47439, E47440, E51988, and E51990), each renewal was
26
specifically and expressly confined to the musical arrangements.
27
108. In particular, on December 6, 1962, Summy Co. III filed a renewal
28
application for Reg. No. E51988, as employer for hire of Forman. Forman did not
- 18 -
Ex. 123
1894
Case 2:13-cv-04460-GHK-MRW Document 72 Filed 11/05/13 Page 20 of 43 Page ID #:632
Happy Birthday to You or the combination of
2 those lyrics with the melody of Good Morning to All, and neither Summy Co. III nor
1
write the familiar first verse lyrics to
3
Defendants have claimed otherwise.
4
109. Also on December 6, 1962, Summy Co. III filed a renewal application
5
for Reg. No. E51990, as employer for hire of Orem. Orem did not write the lyrics to
Happy Birthday to You or the combination of those lyrics with the melody of Good
7 Morning to All, and neither Summy Co. III nor Defendants have claimed otherwise.
6
8
110. Summy-Birchard Company was renamed Birch Tree Ltd. in the 1970s
9
and was acquired by Warner/Chappell in or about 1998. On information and belief,
10
this entity now operates as “Summy Birchard, Inc.” – currently a subsidiary of
11
Warner/Chappell and Warner/Chappell’s co-defendant herein.
12
Happy Birthday to You – 100 Years Later
13
14
15
16
17
111. According to a 1999 press release by ASCAP,
Happy Birthday to You
was the most popular song of the 20th Century.
112. The 1998 edition of the
Guinness Book of World Records identified
Happy Birthday to You as the most recognized song in the English language.
113. Defendant Warner/Chappell currently claims it owns the exclusive
Happy Birthday to You based on the piano arrangements that Summy
18
copyright to
19
Co. III published in 1935.
20
114. ASCAP provides non-dramatic public performance licenses to bars,
21
clubs, websites, and many other venues.
22
licensee the right to publicly perform any or all of the over 8.5 million songs in
23
ASCAP’s repertory in exchange for an annual fee. The non-dramatic public
24
performance license royalties are distributed to ASCAP members based on surveys
25
of performances of each ASCAP repertory song across different media. As an
26
ASCAP member and assignee of the copyrights in
27
Defendant Warner/Chappell obtains a share of blanket license revenue that would
ASCAP “blanket licenses” grant the
Happy Birthday to You,
28
- 19 -
Ex. 123
1895
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1
otherwise be paid to all other ASCAP members, in proportion to their songs’ survey
2
shares.
3
Plaintiff GMTY’s Use of Happy Birthday to You
4
5
115. Plaintiff GMTY is producing a documentary movie, tentatively titled
Happy Birthday, about the song Happy Birthday to You.
6
7
116. In one of the proposed scenes to be included in
song Happy Birthday to You is to be sung.
8
9
Happy Birthday, the
117. During the production process, plaintiff GMTY learned that defendant
Warner/Chappell claimed exclusive copyright ownership to Happy Birthday to You.
10
118. Accordingly, in September 2012, plaintiff requested a quote from
11
Warner/Chappell for a synchronization license to use
12
Happy Birthday to You from
Warner/Chappell’s website.
13
119. On or about September 18, 2012, defendant Warner/Chappell
14
responded to plaintiff GMTY’s inquiry by demanding that GMTY pay it the sum of
15
$1,500 and enter into a synchronization license agreement to use Happy Birthday to
16
You.
17
120. On or about March 12, 2013, defendant Warner/Chappell again
18
contacted plaintiff GMTY and insisted that GMTY was not authorized to use Happy
19
Birthday to You unless it paid the licensing fee of $1,500 and entered into the
20
synchronization license that Warner/Chappell demanded.
21
121. Because defendant Warner/Chappell notified plaintiff GMTY that it
Happy Birthday to You, GMTY faced a
22
claimed exclusive copyright ownership of
23
statutory penalty of up to $150,000 under the Copyright Act if it used the song
24
without Warner/Chappell’s permission if Warner/Chappell, in fact, owned the
25
copyright that it claimed.
26
122. Faced with a threat of substantial penalties for copyright infringement,
27
on or about March 26, 2013, plaintiff GMTY was forced to and did pay defendant
28
Warner/Chappell the sum of $1,500 for a synchronization license and, on or about
- 20 -
Ex. 123
1896
Case 2:13-cv-04460-GHK-MRW Document 72 Filed 11/05/13 Page 22 of 43 Page ID #:634
1
April 24, 2013, GMTY was forced to and did enter into the synchronization license
2
agreement to use Happy Birthday to You.
3
Plaintiff Siegel’s Use of Happy Birthday to You
4
123. BIG FAN produced a movie titled Big Fan.
5
124. In one of the scenes in
6
Big Fan, the familiar lyrics of the song Happy
Birthday to You was sung by the actors.
7
125. (a)
8
before
9
supervisor to secure the rights to all the music that was used in the movie.
10
In the early summer of 2009, after filming was complete but
Big Fan was released, BIG FAN retained the services of a music
(b)
The
music
supervisor
identified
which
music
was
11
copyrighted, and advised BIG FAN that it would have to obtain a license
12
from Warner/Chappell and pay a fee to Warner/Chappell to perform
13
Happy
14
claimed to own the
15
(c)
Birthday to You in the movie because Warner/Chappell
exclusive copyright to the Song.
Reasonably relying upon the information provided by the
16
music producer regarding the copyright claim by Warner/Chappell, BIG
17
FAN reasonably believed that Warner/Chappell owned the copyright to
18
Happy Birthday to You, and would have to obtain a synchronization
19
license from and pay a fee to Warner/Chappell to use the Song in the
20
movie.
21
126. Accordingly, in July 2009, BIG FAN requested that the music
22
supervisor obtain a quote from Warner/Chappell for a Synchronization License to
23
use Happy Birthday to You in Big Fan.
24
127. On or about July 20, 2009, defendant Warner/Chappell responded to
25
the music supervisor by demanding that BIG FAN pay it the sum of $3,000 and
26
enter into a synchronization license for use of Happy Birthday to You.
27
28
128. Because Defendant Warner/Chappell notified BIG FAN through the
music supervisor that it claimed exclusive copyright ownership of
- 21 -
Happy Birthday
Ex. 123
1897
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1
to You, BIG FAN faced a statutory penalty of $150,000 under the Copyright Act if
2
BIG
3
Warner/Chappell, in fact, owned the copyright that it claimed.
FAN
used
the
Song
without
Warner/Chappell’s
permission
and
4
129. On July 20, 2009, Plaintiff Siegel as President of BIG FAN executed
5
the synchronization license with Warner/Chappell and agreed to pay $3,000 based
6
upon Big Fan’s theatrical release.
7
130. (a)
8
infringement, on or about September 1, 2009, BIG FAN was forced to, and
9
did, pay defendant Warner/Chappell the sum of $3,000 pursuant to the
10
11
Faced with a threat of substantial penalties for copyright
synchronization license.
(b)
BIG FAN, the music producer it hired, and Plaintiff Siegel
12
did not know, and had no reason to know, that Warner/Chappell did not
13
own any copyright to
14
Warner/Chappell could claim were limited just to the piano arrangements
15
or the obscure second verse of the Song (which was not performed in
16
Fan), or that any copyright other than that was invalid or expired.
17
(c)
Happy Birthday to You, that the rights
Big
BIG FAN, the music producer it hired, and Plaintiff Siegel
18
had no reason to question Warner/Chappell’s claim to own the copyright
19
to the Song.
20
(d)
Warner/Chappell did not specify which registration(s) or
Happy Birthday
21
renewal(s) thereof under which it claimed a copyright to
22
to You, and thus BIG FAN, the music producer it hired, and Plaintiff
23
Siegel could not investigate Warner/Chappell’s claim to determine
24
whether Warner Chappell owned the copyright it claimed or whether that
25
copyright was valid.
26
(e)
The commencement of this action on or about June 13, 2013,
27
was widely reported in the press. Prior to the date when the press first
28
reported the claims asserted herein, no one in the position of BIG FAN, the
- 22 -
Ex. 123
1898
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1
music producer hired by BIG FAN, or Plaintiff Siegel would know, or
2
have any reason to know, that Warner/Chappell’s copyright claim for
3
Happy Birthday to You was in doubt.
4
(f)
Plaintiff Siegel learned of the commencement of this action
5
on or about June 14, 2013, from the press reports. Before then, BIG FAN,
6
the music producer it hired, and Plaintiff Siegel did not know, and had no
7
reason to know, that Warner/Chappell’s copyright claim for
8
Birthday to You had been disputed by anyone or was in doubt.
9
(g)
Happy
Shortly thereafter, on or about June 19, 2013, and
10
significantly less than three years after he knew or reasonably could or
11
should have known that Warner/Chappell does not own a copyright to the
12
Song, or that its copyright is not valid, plaintiff Siegel commenced a
13
separate class action in Los Angeles County pursuant to the terms of the
14
Synchronization License.
15
Rupa’s Performance of Happy Birthday to You
16
131. Plaintiff Rupa d/b/a RTAF recorded the song Happy Birthday to You at
17
a live show in San Francisco, to be released as part of a “live” album. She learned
18
that defendant Warner/Chappell claimed exclusive copyright ownership to
19
Birthday to You, including the right to issue mechanical licenses.
Happy
20
132. Section 115 of the Copyright Act provides for compulsory licenses for
21
the distribution of phonorecords and digital phonorecord deliveries (i.e., Web-based
22
“downloads”) of musical compositions. Failure to obtain such a license prior to
23
distribution of a cover version of a song constitutes a copyright infringement subject
24
to the full remedies of the Copyright Act.
25
133. Accordingly, on June 17, 2013, Plaintiff Rupa provided a Notice of
26
Intention to Obtain Compulsory License to Warner/Chappell and paid
27
Warner/Chappell $455 for a mechanical license for the reproduction and distribution
28
of 5,000 copies of the Song.
- 23 -
Ex. 123
1899
Case 2:13-cv-04460-GHK-MRW Document 72 Filed 11/05/13 Page 25 of 43 Page ID #:637
1
Plaintiff Majar Use of Happy Birthday to You
2
134. (a) Plaintiff Majar produced the Film entitled “No
3
Necessary: László & Vilmos.” The Film follows the lives of renowned
4
cinematographers László Kovacs (“Kovacs”) and Vilmos Zsigmond
5
(“Zsigmond”) from escaping the 1956 Soviet invasion of Hungary to the
6
present day.
7
(b)
Plaintiff Majar wished to use the
Subtitles
Happy Birthday to You in
8
the opening scene of the Film, wherein Zsigmond and others sang the
9
Song to Kovacs in a celebration of Kovacs’ life and the friendship of the
10
11
two, thereby setting the tone for the Film.
(c)
In or around the fall of 2008, during production of the Film,
12
Plaintiff Majar learned from the music clearance supervisor working on
13
the Film that defendant Warner/Chappell claimed exclusive copyright
14
ownership to
15
synchronization licenses, and that if Majar wished to include the Song in
16
the Film, a license would have to be procured and a fee be paid to
17
Warner/Chappell. The director of the Film, James Chressanthis, spoke to
18
experienced producers in the industry, who confirmed that it was common
19
knowledge within the entertainment industry that Warner/Chappell widely
20
claimed exclusive copyright ownership of the Song.
21
(d)
Happy Birthday to You, including for purposes of issuing
Accordingly, upon making the final determination to include
22
use of the Song in the Film, Plaintiff Majar proceeded to obtain a license
23
for the Song from Warner/Chappell. Indeed, Warner/Chappell held itself
24
out to Plaintiff Majar as the exclusive owner of the copyright in the Song
25
(although it did not specify which registration number(s) or renewal
26
number(s) under which it claimed to own a copyright). Thus, on or about
27
October 29, 2009, Plaintiff Majar paid to defendant Warner/Chappell the
28
sum of $5,000 for a synchronization license to use
- 24 -
Happy Birthday in the
Ex. 123
1900
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1
Film. At the time, Plaintiff Majar did not question and had no reason to
2
question Warner/Chappell’s claim of copyright ownership.
3
Plaintiff Majar is informed and believes that Warner/Chappell continued to
4
hold itself out as the exclusive copyright owner of the Song for years after
5
Majar licensed it.
(e)
6
Moreover,
Because Defendant Warner/Chappell claimed exclusive
Happy Birthday to You, Plaintiff Majar faced a
statutory penalty of $150,000 under the Copyright Act, 17 U.S.C. § 101 et
seq., if it used the Song without Warner/Chappell’s permission and
7
copyright ownership of
8
9
10
Warner/Chappell, in fact, owned the copyright that it claimed.
11
(f)
12
question,
13
Warner/Chappell’s claim to own the copyright to the Song. Moreover,
14
Plaintiff Majar did not know, and had no reason to know, on October 29,
15
2009 (and continuing thereafter), that Warner/Chappell’s copyright claim
16
for Happy Birthday to You had been disputed by anyone.
17
(g)
Plaintiff Majar did not question, and had no reason to
on
October
29,
2009
(and
continuing
thereafter),
Plaintiff Majar only first learned that Warner/Chappell’s
18
claim of exclusive copyright ownership in the Song was subject to dispute
19
when news of the same was published in a New York Times article on June
20
13, 2013. Plaintiff Majar contacted counsel and joined as a plaintiff in this
21
action promptly thereafter.
22
CLASS ALLEGATIONS
23
135. Plaintiffs GMTY, Siegel, Rupa, and Majar bring this action pursuant to
24
Rule 23(a)-(b) of the Federal Rules of Civil Procedure as a class action on behalf of
25
themselves and all others similarly situated for the purpose of asserting the claims
26
alleged in this Consolidated Third Amended Complaint on a common basis.
27
///
28
///
- 25 -
Ex. 123
1901
Case 2:13-cv-04460-GHK-MRW Document 72 Filed 11/05/13 Page 27 of 43 Page ID #:639
1
136. The proposed Class is comprised of:
2
All persons or entities (excluding Defendants’ directors, officers,
3
employees, and affiliates) who entered into a license with
4
Warner/Chappell, or paid Warner/Chappell or SBI, directly or
5
indirectly through its agents, a licensing fee for the song
6
Birthday to You at any time from June 18, 2009, until Defendants’
7
conduct as alleged herein has ceased.
8
137. Although Plaintiffs GMTY, Siegel, Rupa, and Majar do not know the
9
exact size of the Class or the identities of all members of the Class, upon
10
information and belief that information can be readily obtained from the books and
11
records of defendant Warner/Chappell. Plaintiffs believe that the Class includes
12
thousands of persons or entities who are widely geographically disbursed. Thus, the
13
proposed Class is so numerous that joinder of all members is impracticable.
14
15
16
138. The claims of all members of the Class involve common questions of
law and fact including:
a.
17
18
Happy
whether
Happy Birthday to You is in the public domain and dedicated
to public use;
b.
whether the 1935 copyrights claimed by Warner/Chappell cover the
popular lyrics to Happy Birthday to You;
19
20
c.
whether the 1935 copyrights claimed by Warner/Chappell are valid;
21
d.
whether Warner/Chappell is the exclusive owner of the copyright to
22
Happy Birthday to You and is thus entitled to all of the rights conferred
23
in 17 U.S.C. § 102;
24
e.
Happy Birthday to You;
25
26
whether Warner/Chappell has the right to collect fees for the use of
f.
whether Warner/Chappell has violated the law by demanding and
27
collecting fees for the use of Happy Birthday to You despite not having
28
a valid copyright to the song; and
- 26 -
Ex. 123
1902
Case 2:13-cv-04460-GHK-MRW Document 72 Filed 11/05/13 Page 28 of 43 Page ID #:640
1
g.
whether Warner/Chappell is required to return unlawfully obtained
2
payments to plaintiffs GMTY, Siegel, Rupa and Majar and the other
3
members of the Class and, if so, what amount is to be returned.
4
5
139. With respect to Claims III and VII, the common questions of law and
fact predominate over any potential individual issues.
6
140. Plaintiffs GMTY, Siegel, Rupa and Majar’s claims are typical of the
7
claims of all other members of the Class and plaintiffs GMTY, Siegel, Rupa and
8
Majar’s interests do not conflict with the interests of any other member of the Class,
9
in that plaintiffs and the other members of the Class were subjected to the same
10
unlawful conduct.
11
141. Plaintiffs GMTY, Siegel, Rupa and Majar are committed to the
12
vigorous prosecution of this action and have retained competent legal counsel
13
experienced in class action and complex litigation.
14
142. Plaintiffs are adequate representatives of the Class and, together with
15
their attorneys, are able to and will fairly and adequately protect the interests of the
16
Class and its members.
17
143. A class action is superior to other available methods for the fair, just,
18
and efficient adjudication of the claims asserted herein. Joinder of all members of
19
the Class is impracticable and, for financial and other reasons, it would be
20
impractical for individual members of the Class to pursue separate claims.
21
144. Moreover, the prosecution of separate actions by individual members
22
of the Class would create the risk of varying and inconsistent adjudications, and
23
would unduly burden the courts.
24
25
145. Plaintiffs GMTY, Siegel, Rupa and Majar anticipate no difficulty in the
management of this litigation as a class action.
26
27
28
- 27 -
Ex. 123
1903
Case 2:13-cv-04460-GHK-MRW Document 72 Filed 11/05/13 Page 29 of 43 Page ID #:641
1
FIRST CLAIM FOR RELIEF
2
DECLARATORY JUDGMENT PURSUANT TO 28 U.S.C. § 2201
3
(On Behalf Of Plaintiffs And The Class)
4
(Against All Defendants)
5
6
146. Plaintiffs repeat and reallege paragraphs 1 through 145 set forth above
as though they were fully set forth herein.
7
147. Plaintiffs bring these claims individually on behalf of themselves and
8
on behalf of the proposed Class pursuant to Rule 23(b)(2) of the Federal Rules of
9
Civil Procedure.
10
148. Plaintiffs seek adjudication of an actual controversy arising under the
et seq., in connection with Defendants’ purported
12 copyright claim to Happy Birthday to You. Plaintiffs seek the Court’s declaration
11
Copyright Act, 17 U.S.C. §§ 101
13
that the Copyright Act does not bestow upon Warner/Chappell and/or SBI the rights
14
it has asserted and enforced against plaintiffs and the other members of the Class.
15
This is because
16
Warner/Chappell claims those copyrights, and the resulting copyrights do not
17
purport to cover and do not cover the familiar lyrics to
18
instead are limited just to the particular arrangements written by Forman or Orem
19
(and, in the case of E51988, the obscure second verse which has no commercial
20
value); or (b) if and to the extent that those copyrights purport to cover the familiar
21
lyrics to Happy Birthday to You, the copyrights are invalid or have expired.
either: (a) the 1935 registrations E51988 and E51990, under which
Happy Birthday to You, but
22
149. Defendants assert that they are entitled to mechanical and performance
23
royalties pursuant to 17 U.S.C. § 115 for the creation and distribution of
24
phonorecords and digital downloads of the composition
25
under threat of a claim of copyright infringement.
26
Happy Birthday to You,
150. Defendant Warner/Chappell demanded that plaintiff GMTY enter into
Happy Birthday to You and pay
27
a synchronization license agreement to use
28
Warner/Chappell the sum of $1,500 for that synchronization license based upon its
- 28 -
Ex. 123
1904
Case 2:13-cv-04460-GHK-MRW Document 72 Filed 11/05/13 Page 30 of 43 Page ID #:642
1
claim of copyright ownership. Warner/Chappell’s demand was coercive in nature,
2
and GMTY’s entering into the license agreement and payment of $1,500 was
3
involuntary.
4
151. Plaintiff GMTY’s claim presents a justiciable controversy because
5
plaintiff GMTY’s agreement to pay defendant Warner/Chappell and its actual
6
payment to Warner/Chappell for use of the song Happy Birthday to You in its film
7
was the involuntary result of Warner/Chappell’s assertion of a copyright and the risk
8
that plaintiff GMTY would be exposed to substantial statutory penalties under the
9
Copyright Act had it failed to enter such an agreement and pay Warner/Chappell the
10
11
price it demanded.
152. Defendant Warner/Chappell demanded that BIG FAN as assignor of
Happy
12
plaintiff Siegel enter into the Synchronization License agreement to use
13
Birthday to You and pay Warner/Chappell the sum of $3,000 for that
14
Synchronization License based upon its claim of copyright ownership.
15
Warner/Chappell’s demand was coercive in nature, and BIG FAN’S entering into
16
the Synchronization License and payment of $3,000 was involuntary.
17
153. Plaintiff Siegel’s claim presents a justiciable controversy because
18
plaintiff Siegel’s agreement to pay defendant Warner/Chappell and its actual
19
payment to Warner/Chappell for use of the song Happy Birthday to You in its film
20
Big Fan, was the involuntary result of Warner/Chappell’s assertion of a copyright
21
and the risk that plaintiff Siegel would be exposed to substantial statutory penalties
22
under the Copyright Act had it failed to enter such an agreement and pay
23
Warner/Chappell the price it demanded, but then used
24
film anyway.
Happy Birthday to You in its
25
154. Plaintiff Rupa’s claim presents a justiciable controversy because
26
plaintiff Rupa’s agreement to pay defendant Warner/Chappell and its actual
27
payment
28
album, was the involuntary result of Warner/Chappell’s assertion of a copyright and
to Warner/Chappell for use of the song
- 29 -
Happy Birthday to You in her
Ex. 123
1905
Case 2:13-cv-04460-GHK-MRW Document 72 Filed 11/05/13 Page 31 of 43 Page ID #:643
1
the risk that plaintiff Rupa would be exposed to substantial statutory penalties under
2
the Copyright Act had she failed to enter such an agreement and pay
3
Warner/Chappell standard mechanical license royalties it demanded, but then paid
4
for the mechanical license anyway.
5
155. Defendants demanded that Plaintiff Majar pay to Defendants a
6
licensing fee in the sum of $5,000 pursuant to Defendants’ claim of copyright
7
ownership, in order for Plaintiff Majar to use
8
Defendants’ demand was coercive in nature and Majar’s agreement to pay the fee
9
was involuntary.
Happy Birthday in the Film.
10
156. Plaintiff Majar's claim presents a justiciable controversy because its
11
actual payment of Defendants’ demanded fee to use Happy Birthday in the Film was
12
the involuntary result of Defendants’ assertion of a copyright and the risk that
13
Plaintiff Majar would be exposed to substantial statutory penalties under the
14
Copyright Act had it failed to seek Defendants’ approval to use the Song and/or
15
failed to pay Defendants’ demanded fee.
16
157. Plaintiffs seek the Court’s determination as to whether Defendants are
Happy Birthday to You against
17
entitled to assert ownership of the copyright to
18
Plaintiffs pursuant to the Copyright Act as Defendants claim, or whether Defendants
19
are wielding a false claim of ownership to inhibit Plaintiffs’ use and enjoyment (and
20
the public’s use and enjoyment) of intellectual property which is rightfully in the
21
public domain.
22
158. If and to the extent that Defendants rely upon the 1893, 1896, 1899, or
23
1907 copyrights for the melody for
24
Good Morning to All, those copyrights expired
or were forfeited as alleged herein.
25
159. As alleged above, the 1893 and 1896 copyrights to the original and
Song Stories for the Kindergarten, which contained the song
27 Good Morning to All, were not renewed by Summy Co. or Summy and accordingly
26
revised versions of
28
expired in 1921 and 1924, respectively.
- 30 -
Ex. 123
1906
Case 2:13-cv-04460-GHK-MRW Document 72 Filed 11/05/13 Page 32 of 43 Page ID #:644
Song Stories for the
2 Kindergarten and the 1899 copyright to Song Stories for the Sunday School, which
3 contained Good Morning to All, and the 1907 copyright to Good Morning to All
1
160. As alleged above, the 1893 copyright to
4
were not renewed by Summy Co. before Summy Co. was dissolved in 1920 and
5
accordingly, those copyrights expired in 1927 and 1935, respectively.
6
161. The 1893, 1896, 1899, and 1907 copyrights to
7
were forfeited by the republication of
8
Good Morning to All
Good Morning to All in 1921 without proper
notice of its original 1893 copyright.
Good Morning to All expired in 1921 because the
10 1893 copyright to Song Stories for the Kindergarten was not properly renewed.
11
163. The piano arrangements for Happy Birthday to You published by
9
162. The copyright to
12
Summy Co. III in 1935 (Reg. Nos. E51988 and E51990): (a) do not give
13
Warner/Chappell copyrights to the familiar lyrics to
14
instead are limited just to the particular arrangements written by Forman or Orem
15
(and, in the case of E51988, the obscure second verse which has no commercial
16
value); and (b) were not eligible for federal copyright protection because those
17
works did not contain original works of authorship, except to the extent of the piano
18
arrangements themselves.
Happy Birthday to You, but
19
164. The 1934 and 1935 copyrights pertained only to the piano
20
arrangements or the obscure second verse, not to the melody or familiar first verse
21
lyrics of the song Happy Birthday to You.
The Elementary Worker and His Work
23 in 1912, Harvest Hymns in 1924, and Children’s Praise and Worship in 1928, which
24 did not attribute authorship of the lyrics to Happy Birthday to You to anyone, are
25 prima facie evidence that the lyrics were not authored by the Hill Sisters.
22
165. The registration certificates for
26
166. If declaratory relief is not granted, defendant Warner/Chappell will
Happy Birthday to You at
27
continue wrongfully to assert the exclusive copyright to
28
least until 2030, when the current term of the copyright expires under existing
- 31 -
Ex. 123
1907
Case 2:13-cv-04460-GHK-MRW Document 72 Filed 11/05/13 Page 33 of 43 Page ID #:645
1
copyright law.
2
167. Plaintiffs therefore request a declaration that:
3
(a)
4
copyright to, or possess the exclusive right to reproduce, distribute, or
5
publicly perform, Happy Birthday To You;
6
(b)
7
copyright to Happy Birthday to You, it is limited to four specific piano
8
arrangements or an obscure second verse that has no commercial value,
9
(c)
defendant Warner/Chappell and defendant SBI do not own the
if defendant Warner/Chappell and defendant SBI own any
any other copyright to
Happy Birthday to You that defendant
10
Warner/Chappell and defendant SBI may own or ever owned are
11
invalid or have expired;
12
(d)
13
exclusive right to demand or grant a license for use of Happy Birthday
14
15
To You; and
(e) Happy Birthday to You is in the public domain and is dedicated
16
to the public use.
defendant Warner/Chappell and defendant SBI do not own the
17
SECOND CLAIM FOR RELIEF
18
UPON ENTRY OF DECLARATORY JUDGMENT
19
DECLARATORY AND INJUNCTIVE RELIEF
20
PURSUANT TO 28 U.S.C § 2202
21
(On Behalf of Plaintiffs and the Class)
22
(Against All Defendants)
23
24
168. Plaintiffs repeat and reallege paragraphs 1 through 167 set forth above
as though they were fully set forth herein.
25
169. Plaintiffs bring these claims individually on their own behalf and on
26
behalf of the Class pursuant to Rule 23(b)(2) of the Federal Rules of Civil
27
Procedure.
28
///
- 32 -
Ex. 123
1908
Case 2:13-cv-04460-GHK-MRW Document 72 Filed 11/05/13 Page 34 of 43 Page ID #:646
1
170. Under 28 U.S.C. § 2202 empowers this Court to grant, “necessary or
2
proper relief based on a declaratory judgment or decree . . . after reasonable notice
3
and hearing, against any adverse party whose rights have been determined by such
4
judgment.”
5
171. Plaintiffs and the other proposed Class members have been harmed,
6
and Defendants have been unjustly enriched, by Defendant Warner/Chappell’s
7
takings.
8
9
172. Plaintiffs seek relief for themselves and the other members of the
proposed Class upon the entry of declaratory judgment upon Claim I, as follows:
10
(a)
11
from making further representations of ownership of the copyright to
12
Happy Birthday To You;
13
(b)
14
fees paid to Defendants, directly or indirectly through its agents, in
15
connection with the purported licenses it granted to Plaintiffs GMTY,
16
Siegel, Rupa and Majar and the other Class members;
17
(c)
18
directly or indirectly through its agents, from plaintiffs and the other
19
Class members in connection with its claim to ownership of the
20
copyright to Happy Birthday to You; and
21
(d)
an injunction to prevent Defendants Warner/Chappell and SBI
restitution to Plaintiffs and the other Class members of license
an accounting for all monetary benefits obtained by Defendants,
such other further and proper relief as this Court sees fit.
22
THIRD CLAIM FOR RELIEF
23
UNFAIR BUSINESS ACTS AND PRACTICES IN VIOLATION OF
24
CALIFORNIA BUSINESS AND PROFESSIONS CODE §§ 17200, ET SEQ.
25
(On Behalf of Plaintiffs and the Class)
26
(Against All Defendants)
27
28
173. Plaintiffs repeat and reallege paragraphs 1 through 172 set forth above
as though they were fully set forth herein.
- 33 -
Ex. 123
1909
Case 2:13-cv-04460-GHK-MRW Document 72 Filed 11/05/13 Page 35 of 43 Page ID #:647
1
174. Plaintiffs GMTY, Siegel, Rupa, and Majar bring these claims
2
individually on their own behalf, and also on behalf of the Class pursuant to Rule
3
23(b)(3) of the Federal Rules of Civil Procedure.
4
175. As alleged herein, Plaintiffs GMTY, Siegel, Rupa and Majar and the
5
other Class members have paid licensing fees to defendants Warner/Chappell and/or
6
SBI and have therefore suffered injury in fact and have lost money or property as a
7
result of Defendants’ conduct.
8
176. California’s Unfair Competition Laws, Business & Professions Code
9
§§ 17200 et seq. (“UCL”), prohibit any unlawful or unfair business act or practice.
10
177. UCL § 17200 further prohibits any fraudulent business act or practice.
11
178. Defendants’
actions,
claims,
nondisclosures,
and
misleading
12
statements, as alleged in this Complaint, were unfair, false, misleading, and likely to
13
deceive the consuming public within the meaning of UCL §§ 17200, 17500.
14
179. The conduct of Defendants in exerting control over exclusive copyright
Happy Birthday to You to extract licensing fees is deceptive and
16 misleading because neither Warner/Chappell nor SBI own the rights to Happy
17 Birthday to You.
15
ownership to
18
180. Plaintiffs and the other members of the Class have, in fact, been
19
deceived as a result of their reasonable reliance upon Defendants’ materially false
20
and misleading statements and omissions, as alleged above.
21
181. As a result of Defendants’ unfair and fraudulent acts and practices as
22
alleged above, Plaintiffs and the other Class members have suffered substantial
23
monetary injuries.
24
182. Plaintiffs and the other Class members reserve the right to allege other
25
violations of law which constitute other unfair or deceptive business acts or
26
practices. Such conduct is ongoing and continues to this date.
27
28
183. As a result of its deception, Defendants Warner/Chappell and SBI have
been able to reap unjust revenue and profit.
- 34 -
Ex. 123
1910
Case 2:13-cv-04460-GHK-MRW Document 72 Filed 11/05/13 Page 36 of 43 Page ID #:648
1
184. Upon information and belief, Defendants have collected and continue
Happy Birthday to You.
2
to collect at least $2 million per year in licensing fees for
3
Therefore, the amount in controversy exceeds $5 million in the aggregate.
4
5
185. Unless restrained and enjoined, Defendants will continue to engage in
the above-described conduct. Accordingly, injunctive relief is appropriate.
6
186. Plaintiffs, individually on their own behalf and on behalf of the other
7
members of the Class, seek restitution and disgorgement of all money obtained from
8
Plaintiffs and the other members of the Class, collected as a result of unfair
9
competition, and all other relief this Court deems appropriate, consistent with UCL
10
§ 17203.
11
FOURTH CLAIM FOR RELIEF
12
BREACH OF CONTRACT
13
(On Behalf of Plaintiffs and the Class)
14
(Against All Defendants)
15
187. Plaintiffs repeat and reallege each and every foregoing allegation as
16
though fully set forth herein.
17
188. Plaintiffs
18
19
20
21
22
23
24
25
26
27
28
entered
into
license
agreements
with
Defendant
Warner/Chappell wherein Warner/Chappell represented and warranted that it and/or
its co-Defendant SBI owned the rights to Happy Birthday as licensed therein.
189. Plaintiffs are informed and believe that Defendants’ licensing
agreements are the same or substantially similar as to all Class members,
particularly with respect to Defendants’ claim of ownership of the copyright to
Happy Birthday.
190. Plaintiffs and the Class have satisfied their obligations under each such
licensing agreement with Warner/Chappell.
191. As alleged herein, Defendants do not own the copyright interests
claimed in Happy Birthday and, as a result of its unlawful and false assertions of the
- 35 -
Ex. 123
1911
Case 2:13-cv-04460-GHK-MRW Document 72 Filed 11/05/13 Page 37 of 43 Page ID #:649
1
same, Defendants have violated the representations and warranties made in the
2
licensing agreements, thereby materially breaching the licensing agreements.
3
4
192. By reason of the foregoing, Plaintiffs and the Class have been damaged
in an amount to be determined at trial.
5
FIFTH CLAIM FOR RELIEF
6
COMMON LAW FOR MONEY HAD AND RECEIVED
7
(On Behalf of Plaintiffs and the Class)
8
(Against All Defendants)
9
10
193. Plaintiffs repeat and reallege paragraphs 1 through 192 set forth above
as though they were fully set forth herein.
11
194. Within the last four years, Defendants Warner/Chappell and/or SBI
12
became indebted to Plaintiffs and all class members for money had and received by
13
Defendants for the use and benefit of Plaintiffs and class members. The money in
14
equity and good conscience belongs to Plaintiffs and class members.
15
SIXTH CLAIM FOR RELIEF
16
RESCISSION FOR FAILURE OF CONSIDERATION
17
(On Behalf of Plaintiffs and the Class)
18
(Against All Defendants)
19
20
195. Plaintiffs repeat and reallege paragraphs 1 through 194 set forth above
as though they were fully set forth herein.
21
22
196. Defendants’ purported licenses were worthless and ineffective, and do
not constitute valid consideration.
23
197. The complete lack of consideration obviates any need for notice to
24
Defendants.
25
///
26
////
27
///
28
///
- 36 -
Ex. 123
1912
Case 2:13-cv-04460-GHK-MRW Document 72 Filed 11/05/13 Page 38 of 43 Page ID #:650
1
SEVENTH CLAIM FOR RELIEF
2
FALSE ADVERTISING LAWS IN VIOLATION OF
3
CALIFORNIA BUSINESS & PROFESSIONS CODE §§ 17500, ET SEQ.
4
(On Behalf of Plaintiffs and the Class)
5
(Against All Defendants)
6
7
198. Plaintiffs repeat and reallege paragraphs 1 through 197 set forth above
as though they were fully set forth herein.
8
199. On information and belief, Defendants Warner/Chappell and SBI
9
intended to induce the public to enter into an obligation related to its alleged
10
property, namely the composition Happy Birthday to You.
11
200. Defendants Warner/Chappell and/or SBI publicly disseminated
12
advertising which contained statements which were untrue and misleading and
13
which concerned the composition
14
improperly sought and received licensing fees. Defendants knew, or in the exercise
15
of reasonable care should have known, that these statements were untrue and
16
misleading.
17
18
Happy Birthday to You, for which they
201. Plaintiffs and class members have suffered injury in fact and have lost
money as a result of such unfair competition.
19
PRAYER FOR RELIEF
20
WHEREFORE, Plaintiffs GMTY, Siegel, Rupa and Majar on behalf of
21
themselves and the other members of the Class, pray for judgment against
22
Defendants as follows:
23
A.
certifying the Class as requested herein;
24
B.
declaring that the song
25
by federal copyright law, is dedicated to public use, and is in the public
26
domain;
27
C.
28
from asserting any copyright to the song Happy Birthday to You;
Happy Birthday to You is not protected
permanently enjoining Defendants Warner/Chappell and SBI
- 37 -
Ex. 123
1913
Case 2:13-cv-04460-GHK-MRW Document 72 Filed 11/05/13 Page 39 of 43 Page ID #:651
1
D.
2
from charging or collecting any licensing or other fees for use of the
3
song Happy Birthday to You;
4
E.
5
Warner/Chappell and SBI unlawfully collected from Plaintiffs, the
6
other members of the Class, and ASCAP for use of the song
7
Birthday to You;
8
F.
9
Plaintiffs and the other members of the Class all the licensing or other
10
fees they have collected from them, directly or indirectly through its
11
agents, for use of the song
12
interest thereon;
13
G.
14
restitution for defendant Warner/Chappell and SBI’s prior acts and
15
practices;
16
H.
17
costs; and
18
I.
19
proper.
20
21
22
23
24
25
26
27
28
permanently enjoining Defendants Warner/Chappell and SBI
imposing a constructive trust upon the money Defendants
Happy
ordering Defendants Warner/Chappell and SBI to return to
Happy Birthday to You, together with
awarding Plaintiffs and the other members of the Class
awarding Plaintiffs and the Class reasonable attorneys’ fees and
granting such other and further relief as the Court deems just and
Dated: November 5, 2013
WOLF HALDENSTEIN ADLER
FREEMAN & HERZ LLP
s/Betsy C. Manifold
BETSY C. MANIFOLD
FRANCIS M. GREGOREK (144785)
gregorek@whafh.com
BETSY C. MANIFOLD (182450)
manifold@whafh.com
RACHELE R. RICKERT (190634)
rickert@whafh.com
MARISA C. LIVESAY (223247)
livesay@whafh.com
750 B Street, Suite 2770
San Diego, CA 92101
By:
- 38 -
Ex. 123
1914
Case 2:13-cv-04460-GHK-MRW Document 72 Filed 11/05/13 Page 40 of 43 Page ID #:652
1
2
Telephone: 619/239-4599
Facsimile: 619/234-4599
10
WOLF HALDENSTEIN ADLER
FREEMAN & HERZ LLP
MARK C. RIFKIN (pro hac vice)
rifkin@whafh.com
JANINE POLLACK (pro hac vice)
pollack@whafh.com
BETH A. LANDES (pro hac vice)
landes@whafh.com
GITI BAGHBAN (284037)
baghban@whafh.com
270 Madison Avenue
New York, NY 10016
Telephone: 212/545-4600
Facsimile: 212-545-4753
11
Interim Lead Class Counsel for Plaintiffs
12
RANDALL S. NEWMAN PC
RANDALL S. NEWMAN (190547)
rsn@randallnewman.net
37 Wall Street, Penthouse D
New York, NY 10005
Telephone: 212/797-3737
Facsimile: 212/797-3172
3
4
5
6
7
8
9
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
DONAHUE GALLAGHER WOODS LLP
WILLIAM R. HILL (114954)
ANDREW S. MACKAY (197074)
DANIEL J. SCHACHT (259717)
1999 Harrison Street, 25th Floor
Oakland, CA 94612-3520
Telephone: 510/451-0544
Facsimile: 510/832-1486
rock@donahue.com
andrew@donahue.com
daniel@donahue.com
GLANCY BINKOW & GOLDBERG, LLP
LIONEL Z. GLANCY (134180)
lglancy@glancylaw.com
MARC L. GODINO (182689)
mgodino@glancylaw.com
KARA M. WOLKE (241521)
kwolke@glancylaw.com
1925 Century Park East, Suite 2100
- 39 -
Ex. 123
1915
Case 2:13-cv-04460-GHK-MRW Document 72 Filed 11/05/13 Page 41 of 43 Page ID #:653
Los Angeles, CA 90067
Telephone: (310) 201-9150
Facsimile: (310) 201-9160
1
2
3
HUNT ORTMANN PALFFY NIEVES
DARLING & MAH, INC.
KATHERINE J. ODENBREIT (184619)
odenbreit@huntortmann.com
TINA B. NIEVES (134384)
tina@nieves-law.com
301 North Lake Avenue, 7th Floor
Pasadena, CA 91101
Telephone: 949-335-3500
Facsimile: 949-251-5111
4
5
6
7
8
9
Counsel for Plaintiffs
10
11
DEMAND FOR JURY TRIAL
12
Plaintiffs GMTY, Siegel, Rupa and Majar hereby demand a trial by jury to the
13
extent that the allegations contained herein are triable by jury under Rules 38-39 of
14
the Federal Rules of Civil Procedure 38-39 and Civil L.R. 38-1.
15
16
Dated: November 5, 2013
WOLF HALDENSTEIN ADLER
FREEMAN & HERZ LLP
17
18
19
20
21
22
23
24
25
26
By:
s/Betsy C. Manifold
BETSY C. MANIFOLD
FRANCIS M. GREGOREK (144785)
gregorek@whafh.com
BETSY C. MANIFOLD (182450)
manifold@whafh.com
RACHELE R. RICKERT (190634)
rickert@whafh.com
MARISA C. LIVESAY (223247)
livesay@whafh.com
750 B Street, Suite 2770
San Diego, CA 92101
Telephone: 619/239-4599
Facsimile: 619/234-4599
27
28
- 40 -
Ex. 123
1916
(;+,%,7
([
BBBB
1917
Case 2:13-cv-04460-GHK-MRW Document 89 Filed 02/10/14 Page 1 of 18 Page ID #:760
1 FRANCIS M. GREGOREK (144785)
gregorek@whafh.com
2 BETSY C. MANIFOLD (182450)
manifold@whafh.com
3 RACHELE R. RICKERT (190634)
rickert@whafh.com
4 MARISA C. LIVESAY (223247)
livesay@whafh.com
5 WOLF HALDENSTEIN ADLER
FREEMAN & HERZ LLP
6 750 B Street, Suite 2770
San Diego, CA 92101
7 Telephone: 619/239-4599
Facsimile: 619/234-4599
8
9 Interim Lead Counsel for Plaintiffs and the [Proposed] Class
10
UNITED STATES DISTRICT COURT
11
CENTRAL DISTRICT OF CALIFORNIA -
12
WESTERN DIVISION
13
14 GOOD MORNING TO YOU
15 PRODUCTIONS CORP., et al.,
16
Plaintiffs,
17
18
v.
19 WARNER/CHAPPELL MUSIC,
20 INC., et al.
21
Defendant.
22
23
)
)
)
)
)
)
)
)
)
)
)
)
)
Lead Case No. CV 13-04460-GHK (MRWx)
JOINT REPORT ON PARTIES’
PLANNING MEETING
Date:
Time:
Room:
Judge:
February 24, 2014
1:30 p.m.
650
Hon. George H. King, Chief Judge
24
25
26
27
28
Ex. 124
22807218.1
1918
19 8
Case 2:13-cv-04460-GHK-MRW Document 89 Filed 02/10/14 Page 2 of 18 Page ID #:761
1
Pursuant to Rule 26(f) of the Federal Rules of Civil Procedure (“FRCP”), Civil
2 Local Rule 26-1, and the Court’s Orders entered October 21, 2013 and December 13,
3 2013 (Dkts. 71, 80, respectively), plaintiffs Good Morning To You Productions
4 Corp. (“GMTY”), Robert Siegel (“Siegel”), Rupa Marya (“Marya”), and Majar
5 Productions, LLC (“Majar”) (collectively the “Plaintiffs”) and defendants
6 Warner/Chappell
Music,
Inc.
and
Summy-Birchard,
Inc.
(together
7 “Warner/Chappell” or “Defendants”) (Plaintiffs and Defendants are jointly referred
8 to herein as the “Parties”) submit this Joint Report on Parties’ Planning Meeting,
9 through their respective counsel of record, which was jointly prepared subsequent to
10 the in-person meeting of counsel conducted on January 16, 2014 (hereafter the
11 “Parties’ Planning Meeting”).
12
LIMITATION OF JOINT REPORT AS TO MERITS ISSUES WITH
13
RESPECT TO CLAIM ONE
14
By Order entered October 21, 2013 (Dkt. 71), Claim One of Plaintiffs’
15 Operative Complaint was BIFURCATED from all other claims through summary
16 judgment, and all other claims, including any discovery specific to such claims, are
17 STAYED until further order by the Court. October 21, 2013 Order (Dkt. 71 at 4).
18 Defendants’ pending motion to dismiss with respect to the stayed claims was
19 DENIED without prejudice as premature with leave to refile such motions after the
20 stay is lifted. Id. The Court further dismissed the Operative Complaint on behalf of
21 Plaintiffs Siegel and Majar with leave to amend to plead delayed accrual or tolling of
22 the Copyright Act’s three-year statute of limitations.
23
On November 6, 2013, Plaintiffs filed their Third Amended Consolidated
24 Complaint (“TAC”). The TAC includes, among other things, amended claims on
25 behalf of Plaintiffs Siegel and Majar relating to their theories of delayed accrual or
26 tolling of the Copyright Act’s three-year statute of limitations. On December 11,
27 2013, Defendants’ answered Claim One of Plaintiffs’ TAC and did not respond to
28
-1-
Ex. 124
1919
19 9
Case 2:13-cv-04460-GHK-MRW Document 89 Filed 02/10/14 Page 3 of 18 Page ID #:762
1
Plaintiffs’ other claims for relief absent further order by this Court. See October 21,
2
2013 Order (Dkt. 71 at 4); Defs. Ans. to Pls. TAC (Dkt. 79) at 1 n.1.
3
Based on the Court’s October 21, 2013 Order bifurcating Claim One from the
4
other claims in the TAC, the Parties’ Planning Meeting was limited to Plaintiffs’
5
Claim One. In addition, to further the purposes of the bifurcation and to defer
6
potentially unnecessary discovery unless and until the action proceeds past a motion
7
for summary judgment, Warner/Chappell proposed, and Plaintiffs agreed, that the
8
Parties recommend that the first phase of the bifurcated action be limited to the
9
merits issues involved in Claim One, and need not include discovery or motion
10
practice directed to the allegations of Plaintiffs Siegel and Majar relating to their
11
theories of delayed accrual or tolling of the Copyright Act’s three-year statute of
12
limitations. If Claim One proceeds past summary judgment on the merits issues,
13
Warner/Chappell would be permitted to take discovery and file motions relating to
14
such theories of delayed discovery or tolling, whether on behalf of Plaintiffs Siegel
15
and Majar or any other members of the putative class.
16
I.
ITEMS LISTED IN THE DECEMBER 13, 2013 ORDER
17
A.
18
The Court has subject-matter jurisdiction over Claim One of the action
19
pursuant to 28 U.S.C. § 1331 and 28 U.S.C. § 1338 with respect to relief arising
20
under the Copyright Act, 17 U.S.C. §§ 101 et seq.; and pursuant to the Declaratory
21
Judgment Act, 28 U.S.C. §§ 2201 et seq. Plaintiffs also have alleged jurisdiction
22
pursuant to the Class Action Fairness Act, 28 U.S.C. § 1332(d)(2); and supplemental
23
jurisdiction pursuant to 28 U.S.C. § 1367 over the non-federal claims in the TAC.
24
Warner/Chappell does not admit the latter bases for subject matter jurisdiction, but
25
that issue is irrelevant for purposes of Claim One, as to which the Court has
26
jurisdiction.
Basis For Subject Matter Jurisdiction
27
28
-2-
Ex. 124
1920
1920
Case 2:13-cv-04460-GHK-MRW Document 89 Filed 02/10/14 Page 4 of 18 Page ID #:763
1
B.
2
Statement of Factual and Legal Bases of Claims and Defenses
1.
3
Plaintiffs’ Statement
a.
Plaintiffs’ Statement Regarding Factual Basis
4
This is an action to declare that Defendants do not own a copyright to the
5
world’s most popular song, Happy Birthday to You (the “Song”), that if Defendants
6
own any copyright to the Song, it is limited to two specific piano arrangements or an
7
obscure second verse that has no commercial value, that any other copyright to the
8
Song that Defendants may own or ever owned are invalid or have expired, and that
9
the Song is dedicated to public use and in the public domain; and in turn to declare
10
that Defendants must return the substantial and allegedly unlawful licensing fees
11
collected by defendant Warner/Chappell pursuant to its allegedly wrongful assertion
12
of copyright ownership of the Song.
13
According to the United States Copyright Office (“Copyright Office”), a
14
“musical composition consists of music, including any accompanying words, and is
15
normally registered as a work of the performing arts.” Copyright Office Circular
16
56A, “Copyright Registration of Musical Compositions and Sound Recordings,” at 1
17
(Feb. 2012) (available at www.copyright.gov/circs/circ.56a.pdf). The author of a
18
musical composition generally is the composer, and the lyricist (if a different
19
person). Id.
20
More than 120 years after the melody to which the simple lyrics of Happy
21
Birthday to You is set was first published, defendant Warner/Chappell, based on
22
Plaintiffs’ allegations, wrongfully and unlawfully claims that it owns the copyright to
23
the Song, and with that copyright the exclusive right to authorize the Song’s
24
reproduction, distribution, and public performances pursuant to federal copyright
25
law. Plaintiffs allege that Defendants have collected millions of dollars in unlawful
26
licensing fees from Plaintiffs as well as others unwilling or unable to challenge its
27
ownership claims.
28
-3-
Ex. 124
1921
1921
Case 2:13-cv-04460-GHK-MRW Document 89 Filed 02/10/14 Page 5 of 18 Page ID #:764
1
Plaintiffs allege that if Defendants owned or owns any copyrights to the Song,
2
those rights were and are limited to the extremely narrow right to reproduce and
3
distribute specific piano arrangements for the Song, or an obscure second verse that
4
has no commercial value, which were published in 1935, and that if the Defendants
5
ever owned a copyright to any other part of the Song itself, that copyright was invalid
6
or expired no later than 1921. No court has ever adjudicated either the scope or
7
validity of the Defendants’ claimed interest in the Song, nor in the Song’s melody or
8
its familiar lyrics, which are, themselves, independent works.
9
Plaintiffs GMTY, Siegel, Marya, and Majar on behalf of themselves and all
10
others similarly situated, seek a declaration that the Song is dedicated to public use
11
and is in the public domain as well as monetary damages and restitution of all the
12
unlawful licensing fees that Defendants have improperly collected from Plaintiffs
13
and all other Class members.
14
b.
Plaintiffs’ Legal Basis for Claim One
15
Plaintiffs’ TAC alleges claims for: (1) Declaratory Judgment (28 U.S.C. §
16
2201); (2) Declaratory and Injunctive Relief and Damages (28 U.S.C. § 2202); (3)
17
Violations of California’s Unfair Competition Laws (Bus. & Prof. Code §§ 17200 et
18
seq.); (4) Breach of Contract; (5) Common Law Money Had and Received; (6)
19
Rescission for Failure of Consideration; and (7) Violations of California’s False
20
Advertising Laws (Bus. & Prof. Code §§ 17500 et seq.) against Defendants.
21
At the October 7, 2013, hearing on Defendants’ Motion to Dismiss (Dkt. 52),
22
the Parties agreed that the most efficient way to proceed in this case would be to
23
bifurcate Claim One from the six other claims for the purposes of discovery and
24
summary judgment.
25
BIFURCATED these proceedings as follows: (1) Claim One is bifurcated from all
26
other claims through judgment; and (2) all other claims, including discovery specific
27
to such claims, are STAYED until further order by the Court. Id. In compliance
See October 21, 2013 Order (Dkt. 71).
The Court
28
-4-
Ex. 124
1922
1922
Case 2:13-cv-04460-GHK-MRW Document 89 Filed 02/10/14 Page 6 of 18 Page ID #:765
1
with the stay set forth in the October 21, 2013 Order, Plaintiffs limit their legal
2
analysis herein to Claim One pending further order of the Court.
3
(a)
Claim One – Declaratory Judgment Pursuant to 28 U.S.C. § 2201
4
Plaintiff brings Claim One individually on behalf of themselves and on behalf
5
of the proposed Class pursuant to Rule 23(b)(2) of the Federal Rules of Civil
6
Procedure. Plaintiffs seek adjudication of an actual controversy arising under the
7
Copyright Act, 17 U.S.C. §§ 101 et seq., in connection with Defendants’ purported
8
copyright claim to the Song.
9
Copyright Act does not bestow upon the Defendants the rights they have asserted and
10
enforced against Plaintiffs and the other members of the Class. This is because
11
either: (a) the 1935 registrations E51988 and E51990, under which the Defendants
12
claim those copyrights, and the resulting copyrights, do not purport to cover and do
13
not cover the familiar lyrics to the Song, but instead are limited just to the particular
14
arrangements written by Forman or Orem (and, in the case of E51988, the obscure
15
second verse which has no commercial value); or (b) if and to the extent that those
16
copyrights purport to cover the familiar lyrics to the Song, the copyrights are invalid
17
or have expired.
Plaintiffs seek the Court’s declaration that the
18
Defendants assert that they are entitled to mechanical and performance
19
royalties pursuant to 17 U.S.C. § 115 for the creation and distribution of
20
phonorecords and digital downloads of the Song, under threat of a claim of copyright
21
infringement.
22
Plaintiff GMTY entered into a Synchronization License agreement to use the
23
Song and paid Warner/Chappell the sum of $1,500 for that Synchronization License
24
based upon its claim of copyright ownership. BIG FAN, assignor of plaintiff Siegel,
25
entered into the Synchronization License agreement to use the Song and paid
26
Warner/Chappell the sum of $3,000 for that Synchronization License based upon its
27
claim of copyright ownership. Plaintiff Marya paid defendant Warner/Chappell the
28
sum of $455 as a compulsory mechanical license royalty to use the Song in her
-5-
Ex. 124
1923
1923
Case 2:13-cv-04460-GHK-MRW Document 89 Filed 02/10/14 Page 7 of 18 Page ID #:766
1
album based upon Warner/Chappell’s claim of copyright ownership. Plaintiff Majar
2
paid Warner/Chappell a licensing fee in the sum of $5,000 pursuant to its claim of
3
copyright ownership, in order for Plaintiff Majar to use the Song in an award
4
winning documentary film: No Subtitles Necessary:
5
Warner/Chappell’s demand to each plaintiff was coercive in nature, and each
6
individual plaintiff involuntarily entered into the respective license agreement.
Lázló & Vilmos.
7
Plaintiffs’ claim presents a justiciable controversy because each plaintiff’s
8
agreement to pay defendant Warner/Chappell and the actual payment to
9
Warner/Chappell
for
use
of
the
Song
was
the
involuntary
result
of
10
Warner/Chappell’s assertion of a copyright and the risk that each individual plaintiff
11
would be exposed to substantial statutory penalties under the Copyright Act had it
12
failed to enter such an agreement and pay Warner/Chappell the price it demanded.
13
Plaintiffs seek the Court’s determination as to whether Defendants are entitled
14
to assert ownership of the copyright to Happy Birthday to You against Plaintiffs
15
pursuant to the Copyright Act as Defendants claim, or whether Defendants are
16
wielding a false claim of ownership to inhibit Plaintiffs’ use and enjoyment (and the
17
public’s use and enjoyment) of the Song, which is rightfully in the public domain.
18
More specifically, the 1893 and 1896 copyrights to the original and revised
19
versions of Song Stories for the Kindergarten, which contained the song Good
20
Morning to All, were not renewed by Summy or Summy Co. and accordingly expired
21
in 1921 and 1924, respectively. Likewise, the 1893 copyright to Song Stories for the
22
Kindergarten and the 1899 copyright to Song Stories for the Sunday School, which
23
contained Good Morning to All, and the 1907 copyright to Good Morning to All were
24
not renewed by Summy Co. before Summy Co. was dissolved in 1920 and
25
accordingly, those copyrights expired in 1921, 1924, 1927 and 1935, respectively. In
26
addition, the 1893, 1896, 1899, and 1907 copyrights to Good Morning to All were
27
forfeited by the republication of Good Morning to All in 1921 without proper notice
28
of its original 1893 copyright.
-6-
Ex. 124
1924
1924
Case 2:13-cv-04460-GHK-MRW Document 89 Filed 02/10/14 Page 8 of 18 Page ID #:767
1
The registration certificates for The Elementary Worker and His Work in 1912,
2
Harvest Hymns in 1924, and Children’s Praise and Worship in 1928, which did not
3
attribute authorship of the lyrics to Happy Birthday to You to anyone, are prima facie
4
evidence that the lyrics were not authored by either Patty or Mildred Hill.
5
The piano arrangements for Happy Birthday to You published by Summy Co.
6
in 1935 (Reg. Nos. E51988 and E51990): (a) do not give Warner/Chappell
7
copyrights to the familiar lyrics to the Song, but instead are limited just to the
8
particular musical arrangements written by Forman or Orem (and, in the case of
9
E51988, the obscure second verse which has no commercial value), who did not
10
write the popular lyrics to the Song; and (b) were not eligible for federal copyright
11
protection because those works did not contain original works of authorship, except
12
to the extent of the piano arrangements themselves.
13
The 1935 copyrights pertained only to the piano arrangements or the obscure
14
second verse, not to the melody or familiar first verse lyrics of the Song, which lyrics
15
were not written by Forman or Orem.
16
If declaratory relief is not granted, the Defendants will continue to wrongfully
17
assert the exclusive copyright to the Song at least until 2030, when the current term
18
of the copyright expires under existing copyright law.
19
Plaintiffs therefore request a declaration that:
20
(a)
21
exclusive right to reproduce, distribute, or publicly perform the Song;
22
(b)
23
two specific piano arrangements or an obscure second verse that has no
24
commercial value,
25
(c)
26
ever owned are invalid or have expired;
27
(d)
28
a license for use of the Song; and
the Defendants do not own the copyright to, or possess the
if the Defendants own any copyright to the Song, it is limited to
any other copyright to the Song that the Defendants may own or
the Defendants do not own the exclusive right to demand or grant
-7-
Ex. 124
1925
1925
Case 2:13-cv-04460-GHK-MRW Document 89 Filed 02/10/14 Page 9 of 18 Page ID #:768
1
(e)
2
use.
3
the Song is in the public domain and is dedicated to the public
2.
Warner/Chappell’s Statement Regarding Plaintiffs’ Claim One
4
Warner/Chappell and its predecessors-in-interest own and have owned the
5
copyright to the lyrics to the musical composition entitled Happy Birthday to You.
6
The United States Copyright Office registered the copyright in December 1935.
7
Under the Copyright Act, Warner/Chappell’s copyright expires in December 2030.
8
17 U.S.C. § 304(b). While the Plaintiffs have each requested and obtained licenses
9
from Warner/Chappell for their respective commercial uses of the lyrics to Happy
10
Birthday to You, Plaintiffs now come to the Court challenging Warner/Chappell’s
11
longstanding and uninterrupted exercise of its copyright interests in this musical
12
composition.
13
Warner/Chappell is the owner of copyright registration certificate E51990,
14
“Happy Birthday to You,” issued in December 1935, to Warner/Chappell’s
15
predecessor-in-interest, Clayton F. Summy Co.
16
familiar lyrics to Happy Birthday to You.
17
presumption of ownership by Warner/Chappell. Contrary to how Plaintiffs would
18
like to proceed, the burden is on them to disprove the validity of Warner/Chappell’s
19
copyright and the facts stated in the registration certificate. This is not an issue of
20
Warner/Chappell’s affirmative defense, but rather a failure of proof that will be fatal
21
to Plaintiffs’ claim for declaratory relief (and, along with it, all other claims in
22
Plaintiffs’ Complaint).
Certificate E51990 covers the
The copyright registration raises a
23
Under the Copyright Act and Ninth Circuit precedent, Warner/Chappell’s
24
certificate E51990 “constitute[s] prima facie evidence of the validity of the copyright
25
and of the facts stated in the certificate.” 17 U.S.C. § 410(c). Warner/Chappell does
26
“not have to produce any evidence” to substantiate either the validity of the copyright
27
or the facts stated in the registration certificate. Warner/Chappell “is presumed to
28
own a valid copyright, 17 U.S.C. § 410(c), and the facts stated therein, including the
-8-
Ex. 124
1926
1926
Case 2:13-cv-04460-GHK-MRW Document 89 Filed 02/10/14 Page 10 of 18 Page ID #:769
1
chain of title … are entitled to the presumption of truth.” United Fabrics Int’l, Inc. v.
2
C&J Wear Inc., 630 F.3d 1255, 1258 (9th Cir. 2011).
3
Certificate E51990 applies on its face to a “published musical composition”
4
entitled “Happy Birthday to You,” and the listing under the byline is as follows: “By
5
Mildred J. Hill, arr. by Preston Ware Orem;* pf., with words.” (Emphasis added.)
6
The certificate further states: “(© is claimed on arrangement as easy piano solo with
7
text).” (Emphasis added.) The registration certificate lists the date of publication as
8
December 6, 1935, and states that copies were received and registered in the
9
Copyright Office on December 9, 1935. All of this, as well as the validity of the
10
copyright, is prima facie presumed true in this litigation.
11
In response to the Court’s Order that Plaintiffs replead the bases for their
12
declaratory judgment claim, Plaintiffs have alleged that (1) certificate E51990 is
13
limited to a particular piano arrangement and does not cover the “popular” lyrics to
14
Happy Birthday to You, and (2) the work published under this copyright was not
15
original, except with respect to the piano arrangement. Plaintiffs have been, and
16
continue to be, less than clear about what evidence they believe they have that will
17
rebut the presumptions afforded by certificate E51990. Warner/Chappell believes
18
that Plaintiffs will not be able to rebut the presumptions.
19
First, Plaintiffs cannot show that the registration certificate was not intended to
20
cover the lyrics to Happy Birthday to You. As noted above, certificate E51990
21
expressly states that copyright is claimed on “arrangement as easy piano solo with
22
text” (emphasis added). The certificate also describes the copyrighted material as
23
“pf. [“pianoforte,” or piano], with words” (emphasis added). The references to “text”
24
and “words” can only mean the lyrics to Happy Birthday to You. There is no text or
25
words on which copyright could have been intended to be claimed other than those
26
lyrics.
27
28
Second, Plaintiffs cannot rebut the presumption that the lyrics are validly
copyrighted. To support their claim, Plaintiffs allege that these lyrics were published
-9-
Ex. 124
1927
1927
Case 2:13-cv-04460-GHK-MRW Document 89 Filed 02/10/14 Page 11 of 18 Page ID #:770
1
on various occasions prior to the December 1935 registration. Even if true, this
2
would not show that the author of the lyrics copyrighted under certificate E51990
3
copied those lyrics from somewhere else. Copyright law requires originality, not
4
novelty. Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345 (1991).
5
Accordingly, Plaintiffs will not be able to satisfy their burden of overcoming
6
Warner/Chappell’s ownership of a valid copyright to the lyrics to Happy Birthday to
7
You. Warner/Chappell will move for summary judgment on Claim One of Plaintiffs’
8
Third Amended Consolidated Complaint.
9
Warner/Chappell has a statute of limitations defense to the claims of any
10
Plaintiff who licensed Happy Birthday to You more than three years before their
11
complaint was filed. The Copyright Act’s three-year statute of limitations, 17 U.S.C.
12
§ 507(b), governs the declaratory relief claim. In the interest of minimizing the
13
needless expense of litigating Plaintiff Majar’s and Plaintiff Siegel’s allegations of
14
delayed accrual or tolling, Warner/Chappell proposes to reserve its challenges to
15
those allegations unless and until the litigation reaches a second phase.
16
C.
17
The Parties met and conferred and believe that the discovery and briefing
18
related to class certification should be deferred until after the Court decides the
19
Parties’ joint summary judgment motion on Claim One of the TAC. The Parties are
20
prepared to discuss their position with the Court at the Scheduling Conference.
Motion for Class Certification Deadlines
21
D.
22
As to the merits issues with respect to Claim One only, and excluding
23
discovery and motion practice with respect to any theory of delayed accrual or tolling
24
(see Statement Re Limitation, pages 1-2, supra), the Parties have agreed to the
25
following pre-trial discovery plan:
26
Discovery Completion
1.
27
28
Initial Rule 26(f) Disclosures: Completed on January 30, 2014, as
required.
2.
Discovery on Claim One Cut-Off: June 27, 2014.
- 10 -
Ex. 124
1928
1928
Case 2:13-cv-04460-GHK-MRW Document 89 Filed 02/10/14 Page 12 of 18 Page ID #:771
1
3.
Discovery Motions Deadline: May 30, 2014.
2
As to the merits issues on Claim One only, reports and/or disclosures from expert
3
witnesses as provided under Rule 26(a)(2) of the Federal Rules of Civil Procedure
4
should be as follows:
5
1.
Initial Expert Disclosures: July 25, 2014.
6
2.
Rebuttal Expert Disclosures: August 25, 2014
7
3.
Expert Discovery Cut-Off: September 26, 2014.
8
4.
Expert Discovery Motions Deadline: September 15, 2014.
9
Electronically stored information will be produced in accordance with Rule 34 of the
10
Federal Rules of Civil Procedure. Plaintiffs reserve the right to request that all
11
electronically stored information be produced in native form, if available, and
12
searchable pdf, if not. Plaintiffs further request that all meta-data in electronically
13
stored information be preserved.
14
Procedures for asserting claims of privilege or work product protection, including
15
any claims made after production, shall be in accordance with Rule 26(b)(5) of the
16
Federal Rules of Civil Procedure.:
17
The Parties are discussing and will present for the Court’s review a proposed
18
protective order.
19
E.
Pre-Trial and Trial Dates
20
1.
21
2014.
22
2.
23
during first phase of Bifurcated proceeding.
24
3.
25
first phase of Bifurcated proceeding.
Motion Cut-Off as to Merits Issues on Claim One: November 7,
Final Pre-Trial Conference: Not applicable as to proceedings
Trial as to Claim One: Not applicable as to proceedings during
26
F.
27
This action involves historical information and documents and the Parties will
28
Major Procedural Or Evidentiary Problems
work cooperatively to resolve any authentication or admissibility issues.
- 11 -
Ex. 124
1929
1929
Case 2:13-cv-04460-GHK-MRW Document 89 Filed 02/10/14 Page 13 of 18 Page ID #:772
1
G.
2
Counsel believes that a settlement conference is premature at this time. After
3
the Court rules on the motion for summary judgment as to the merits issues on Claim
4
One, if the action proceeds past summary judgment, counsel will meet and confer to
5
select a settlement procedure pursuant to Civil Local Rules 16-15 and 16-15.9.
Settlement Procedures
6
H.
Length of Trial
7
1.
Plaintiffs’ Case-in-Chief: Not applicable as to proceedings during first
8
phase of Bifurcated proceeding.
9
2.
Defendants’ Case-in-Chief: Not applicable as to proceedings during
10
first phase of Bifurcated proceeding.
11
3.
12
during first phase of Bifurcated proceeding.
13
4.
14
during first phase of Bifurcated proceeding.
15
I.
The estimated time required for trial: Not applicable as to proceedings
The case should be ready for trial: Not applicable as to proceedings
Trial By Jury or Court
16
Not applicable as to proceedings during first phase of Bifurcated
17
proceeding. Plaintiffs reserve their jury demand if the action proceeds past
18
summary judgment at the end of the first phase of the Bifurcated proceeding.
19
J.
Name of Trial Attorneys
20
Plaintiffs:
21
Mark C. Rifkin, Wolf Haldenstein Adler Freeman & Herz LLP
22
Betsy C. Manifold, Wolf Haldenstein Adler Freeman & Herz LLP
23
Randall S. Newman, Randall S. Newman P.C.
24
Defendants:
25
Glenn D. Pomerantz, Munger, Tolles & Olson LLP
26
Kelly M. Klaus, Munger, Tolles & Olson LLP
27
Adam I. Kaplan, Munger, Tolles & Olson LLP
28
- 12 -
Ex. 124
1930
1930
Case 2:13-cv-04460-GHK-MRW Document 89 Filed 02/10/14 Page 14 of 18 Page ID #:773
1
K.
2
The Parties do not consent to a Magistrate Judge for all purposes.
3
II.
4
ITEMS LISTED IN FRCP 26(f)
A.
5
6
Consent to Magistrate Judge for All Purposes
Initial Disclosures:
Initial disclosures as to the merits issues in Claim One were exchanged
on January 30, 2014, which was 14 days after the Parties’ Planning Meeting.
7
B.
8
The Parties will proceed to serve discovery in accordance with the Federal
9
Discovery:
Rules related to the merits issues concerning Claim One.
10
C.
11
The Parties do not contemplate any changes to the discovery limitations set
12
forth by Federal Rules of Civil Procedure at this time, but instead reserve the right to
13
request an appropriate extension by either stipulation or motion.
Changes to Limitations on Discovery:
14
D.
15
The parties do not seek any additional orders at this time but reserve the right
Other Orders:
16
to do so as the need arises.
17
III.
ITEMS LISTED IN CivL.R. 26-1
18
To the extent that these elements are not addressed above:
19
A.
20
The complexity of this matter, including Plaintiffs’ motion for class
21
22
23
Complex Case:
certification, are not issues for the first phase of the Bifurcated proceeding.
B.
Motion Schedule:
The Parties expect to file summary judgment papers as to merits issues
24
on Claim One by November 7, 2014.
25
anticipate other merits-related motions prior to that motion.
26
27
At the current time, the Parties do not
C.-D. Trial and Final Pre-Trial Conference:
Not applicable to the first phase of the Bifurcated proceeding.
28
- 13 -
Ex. 124
1931
1931
Case 2:13-cv-04460-GHK-MRW Document 89 Filed 02/10/14 Page 15 of 18 Page ID #:774
1
E.
2
The Parties jointly requested the following briefing schedule for the motion for
3
Dispositive Motion Hearing Cut-Off:
summary judgment as to merits issues relating to Claim One:
4
Joint Motion for Summary Judgment filed by: November 7, 2014.
5
F.-G. Discovery Cutoff and Initial Expert Disclosures:
6
These issues are addressed in Section I.D., above.
7
H.
8
This issue is addressed in Section I.G., above.
9
I.
Settlement:
Trial Estimate:
10
Not applicable to the first phase of the Bifurcated proceeding.
11
J.
12
No additional parties are contemplated by either party at this time.
13
K.
14
The Parties contemplate retaining experts. The schedule for disclosure of
15
Additional Parties:
Expert Witnesses:
experts and expert reports is set forth in Section I.D., above.
16
17
Respectfully Submitted,
Dated: February 10, 2014
WOLF HALDENSTEIN ADLER
FREEMAN & HERZ LLP
18
19
20
21
22
23
24
25
26
By:
/s/Betsy C. Manifold
BETSY C. MANIFOLD
FRANCIS M. GREGOREK
gregorek@whafh.com
BETSY C. MANIFOLD
manifold@whafh.com
RACHELE R. RICKERT
rickert@whafh.com
MARISA C. LIVESAY
livesay@whafh.com
27
28
- 14 -
Ex. 124
1932
1932
Case 2:13-cv-04460-GHK-MRW Document 89 Filed 02/10/14 Page 16 of 18 Page ID #:775
1
2
3
4
5
6
7
8
9
10
11
12
13
14
750 B Street, Suite 2770
San Diego, CA 92101
Telephone: 619/239-4599
Facsimile: 619/234-4599
WOLF HALDENSTEIN ADLER
FREEMAN & HERZ LLP
MARK C. RIFKIN (pro hac vice)
rifkin@whafh.com
JANINE POLLACK (pro hac vice)
pollack@whafh.com
BETH A. LANDES (pro hac vice)
landes@whafh.com
GITI BAGHBAN (284037)
baghban@whafh.com
270 Madison Avenue
New York, NY 10016
Telephone: 212/545-4600
Facsimile: 212-545-4753
15
Interim Lead Counsel for Plaintiffs
16
RANDALL S. NEWMAN PC
RANDALL S. NEWMAN (190547)
rsn@randallnewman.net
37 Wall Street, Penthouse D
New York, NY 10005
Telephone: 212/797-3737
17
18
19
20
21
22
23
24
25
26
27
28
HUNT ORTMANN PALFFY NIEVES
DARLING & MAH, INC.
ALISON C. GIBBS (257526)
gibbs@huntortmann.com
OMEL A. NIEVES (134444)
nieves@huntortmann.com
KATHLYNN E. SMITH (234541)
smith@ huntortmann.com
301 North Lake Avenue, 7th Floor
Pasadena, CA 91101
Telephone 626/440-5200
- 15 -
Ex. 124
1933
1933
Case 2:13-cv-04460-GHK-MRW Document 89 Filed 02/10/14 Page 17 of 18 Page ID #:776
Facsimile 626/796-0107
Facsimile: 212/797-3172
1
2
3
DONAHUE GALLAGHER WOODS LLP
WILLIAM R. HILL (114954)
rock@donahue.com
ANDREW S. MACKAY (197074)
andrew@donahue.com
DANIEL J. SCHACHT (259717)
daniel@donahue.com
1999 Harrison Street, 25th Floor
Oakland, CA 94612-3520
Telephone: 510/451-0544
Facsimile: 510/832-1486
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GLANCY BINKOW & GOLDBERG LLP
LIONEL Z. GLANCY (134180)
lglancy@glancylaw.com
MARC L. GODINO (188669)
mgodino@glancylaw.com
1925 Century Park East, Suite 2100
Los Angeles, CA 90067
Telephone: 310/201-9150
Facsimile: 310/201-9160
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Attorneys for Plaintiffs
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Dated: February 10, 2014
MUNGER TOLLES & OLSON LLP
By:
/s/Kelly M. Klaus
KELLY M.KLAUS
KELLY M. KLAUS (161091)
kelly.klaus@mto.com
ADAM I. KAPLAN (268182)
adam.kaplan@mto.com
560 Mission St., 27th Floor
San Francisco, CA 94105
Telephone: 415/512-4000
- 16 -
Ex. 124
1934
1934
Case 2:13-cv-04460-GHK-MRW Document 89 Filed 02/10/14 Page 18 of 18 Page ID #:777
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MUNGER TOLLES & OLSON LLP
GLENN D. POMERANTZ (112503)
glenn.pomerantz@mto.com
355 South Grand Ave., 35th Floor
Los Angeles, CA 90071
Telephone: 213/683-9100
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Attorneys for Defendants
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DECLARATION REGARDING CONCURRENCE
I, BETSY C. MANIFOLD, am the ECF/CM User whose identification login
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and password are being used to file this JOINT REPORT ON PARTIES’
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PLANNING MEETING. In compliance with L.R. 5-4.3.4(2)(i), I hereby attest that
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Kelly M. Klaus has concurred in this filing’s content and has authorized its filing.
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DATED: February 10, 2014
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By:
/s/ Betsy C. Manifold
BETSY C. MANIFOLD
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WARNER/CHAPPELL:20396v.3.jsr
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- 17 -
Ex. 124
1935
1935
(;+,%,7
([
BBBB
Ex. 125
1937
EXHIBIT 126
Ex. 126
1938
Ex. 126
1939
Ex. 126
1940
Ex. 126
1941
Ex. 126
1942
Ex. 126
1943
Ex. 126
1944
Ex. 126
1945
Ex. 126
1946
Ex. 126
1947
Ex. 126
1948
Ex. 126
1949
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