Rupa Marya v. Warner Chappell Music Inc

Filing 208

TRANSCRIPT for proceedings held on MARCH 23, 2015 9:38 A.M. Court Reporter/Electronic Court Recorder: KHOWOONSUN CHONG, CSR 12907, phone number 213-894-3507. Transcript may be viewed at the court public terminal or purchased through the Court Reporter/Electronic Court Recorder before the deadline for Release of Transcript Restriction. After that date it may be obtained through PACER. Notice of Intent to Redact due within 7 days of this date. Redaction Request due 4/15/2015. Redacted Transcript Deadline set for 4/25/2015. Release of Transcript Restriction set for 6/23/2015. (kch)

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UNITED STATES DISTRICT COURT

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CENTRAL DISTRICT OF CALIFORNIA - WESTERN DIVISION

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HONORABLE GEORGE H. KING, CHIEF U.S. DISTRICT JUDGE

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GOOD MORNING TO YOU PRODUCTIONS
CORP., ET AL.,

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) CASE NO.
PLAINTIFFS,
) CV 13-4460
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VS.
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WARNER/CHAPPELL MUSIC, INC.,
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ET AL.,
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DEFENDANTS.
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________________________________________)

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REPORTER'S TRANSCRIPT OF
CROSS MOTIONS FOR SUMMARY JUDGMENT AND
MOTION BY PLAINTIFF TO EXCLUDE EVIDENCE
MONDAY, MARCH 23, 2015
9:38 A.M.
LOS ANGELES, CALIFORNIA

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________________________________________________________
KHOWOONSUN CHONG, CSR 12907, CRR, RMR
FEDERAL

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255

EAST

LOS

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OFFICIAL
TEMPLE

ANGELES,

COURT

STREET,

REPORTER
ROOM

CALIFORNIA

181-G

90012

[e-mail]

UNITED STATES DISTRICT COURT

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APPEARANCES OF COUNSEL:

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FOR THE PLAINTIFFS:
WOLF, HALDENSTEIN, ADLER, FREEMAN & HERZ
BY: MARK C. RIFKIN, Esquire
270 Madison Avenue
New York, New York 10016
WOLF, HALDENSTEIN, ADLER, FREEMAN & HERZ
BY: BETSY C. MANIFOLD, Esquire
750 B Street, Suite 2770
San Diego, California 92101
RANDALL S. NEWMAN PC
BY: RANDALL S. NEWMAN, Esquire
37 Wall Street, Penthouse D
New York, New York 10005
DONAHUE FITZGERALD LLP
BY: DANIEL J. SCHACHT, Esquire
1999 Harrison Street, 25th Floor
Oakland, California 94612
FOR THE DEFENDANTS:
MUNGER, TOLLES & OLSON
BY: KELLY M. KLAUS, Esquire
ADAM I. KAPLAN, Esquire
560 Mission Street, 27th Floor
San Francisco, California 94105
MUNGER, TOLLES & OLSON
BY: MELINDA E. LeMOINE, Esquire
555 South Grand Avenue, 35th Floor
Los Angeles, California 90071

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ALSO PRESENT:

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Ellen Hochberg, Warner Music Group

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UNITED STATES DISTRICT COURT

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I N D E X

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CASE CV 13-4460

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PROCEEDINGS:

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Cross Motions For Summary Judgment and
Motion by plaintiff to exclude evidence

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Monday, March 23, 2015
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UNITED STATES DISTRICT COURT

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LOS ANGELES, CALIFORNIA; MONDAY, MARCH 23, 2015

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9:38 A.M.

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-oOo-

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THE CLERK:

Please remain seated and come to order,

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this United States District Court is now in session, the

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Honorable George H. King, Chief Judge presiding.

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No. 1 on today's calendar, Civil 13-4460, Good Morning to You

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versus Warner/Chappell Music, Incorporated.

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your appearances for the record.

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MR. RIFKIN:

Good morning, Your Honor.

THE COURT:

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MR. NEWMAN:

Good morning, Your Honor.

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MR. SCHACHT:

All right.
Your Honor, Daniel Schacht of Donahue

Fitzgerald on behalf of the plaintiffs.

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THE COURT:

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MS. MANIFOLD:

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Randall S.

Newman, Randall S. Newman, P.C., on behalf of plaintiffs.
THE COURT:

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Mark Rifkin

Good morning.

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Counsel, state

of Wolf Haldenstein on behalf of the plaintiffs.

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Calling Item

Manifold.

Yes, good morning.
Good morning, Your Honor.

I'm Betsy

I'm a partner with Mr. Rifkin at Wolf Haldenstein.
THE COURT:

Good morning.

Now for the defendants.
MR. KLAUS:

Good morning, Your Honor.

Kelly Klaus

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from Munger, Tolles & Olson, joined by my colleagues, Melinda

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LeMoine and Adam Kaplan, also joined by Ellen Hochberg who is

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the head of litigation for Warner Music Group.

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for the defendants.

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THE COURT:

Very good.

Thank you very

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much.

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your moving papers and the exhibits.

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some of which may be organizational from the standpoint of what

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is a good analytical framework by which I can approach this.

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have questions for both sides, but let me start with the

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defendants.

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All right.

All right.

And we are here

Counsel, I have had an opportunity to review
I do have some questions,

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Mr. Klaus, will you be addressing the Court on behalf of
the defendants?

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MR. KLAUS:

I will, Your Honor.

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THE COURT:

Would you approach the lectern, please.

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MR. KLAUS:

Yes, of course.

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THE COURT:

Okay.

Let me just start out with some

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preliminary questions.

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questions, but I just want to make sure that there are no

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disputes.

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I think I know the answer to these

I don't believe there are any disputes.

You, on behalf of the defendants, you admit that

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Mrs. Forman and Mr. Orem did not author the so-called familiar

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lyrics of Happy Birthday.

Do you agree with that?

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MR. KLAUS:

That's correct, Your Honor.

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THE COURT:

Look, instead of saying familiar lyrics,

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I'm just going to say lyrics.
And then, if I refer to the second verse, I'll call it the

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second verse so we understand each other and we don't have to

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have additional words when not necessary.

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Do you also now agree that Exhibits 44 and 48 are the
certificates of registration for your two claimed copyrights?

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MR. KLAUS:

Yes.

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THE COURT:

And with respect to which of these or

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both cover the so-called lyrics, is it your argument that

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E51990 covers the lyrics and E51988 really puts it into proper

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context as to why E51990 covers the lyrics?

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MR. KLAUS:

It is our position, Your Honor, that

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E51990 covers -- was intended to cover the lyrics and does

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cover the lyrics.

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it on the same day, what we'll call the second verse, refers to

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it as the revised text.

And 51988 covers -- it was intended to cover

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THE COURT:

So you're not claiming E51988

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independently covers the lyrics?

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MR. KLAUS:

I believe we haven't actually briefed

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that issue, Your Honor.

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copy unquestionably -- the 51988 -- included both the lyrics

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and the second verse, if necessary, we would fall back on it.

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But our position is, Your Honor, that it's 51990.

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THE COURT:

I do think that, because the deposit

Okay.

My second question is both you

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and the plaintiffs spend a lot of your 50 pages focused on

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talking about the certificates as such.

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initial briefing, there was some dispute as to which are the

And unfortunately the

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certificates.

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rewind it a little bit to now know what your true position is.

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So, you know, having read that, I had to sort of

But my question is do you claim that you hold any kind of

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statutory federal copyright even if the lyrics were not

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covered, let's say for today's purposes, in E51990?

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MR. KLAUS:

I'm not sure.

I believe, Your Honor,

that our position is 51990 does cover the lyrics.

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THE COURT:

I understand.

I understand.

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MR. KLAUS:

And --

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THE COURT:

We can talk about that issue, and we

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will in a moment.

What I'm trying to understand is the

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substantial focus that you folks put in that because,

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obviously, you know that a copyright is not necessarily the

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same as the registration.

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under the 1909 Act, a statutory one, even if you don't

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technically have a registration for it.

You could have a copyright even

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MR. KLAUS:

I believe, Your Honor --

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THE COURT:

There may be consequences.

I'm not

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saying there are no consequences, but I'm just trying to

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understand.

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MR. KLAUS:

I believe, Your Honor, that under the

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1909 Act, that for the initial term of the copyright, which

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would have started in 1935, registration technically was not

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necessary.

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What was necessary was publication with notice -THE COURT:

Right.

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MR. KLAUS:

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-- which we believe has happened here.

The renewal term, I believe there was a requirement that a

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certificate of registration be filed, and we do have in the --

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in the record the renewal of both 51990 and --

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THE COURT:

In 1962.

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MR. KLAUS:

Correct.

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THE COURT:

So what you're telling me -- and make

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sure that my summary is accurate.

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that's the reason why it is important that your position is

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that E51990 includes the lyrics.

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MR. KLAUS:

What you're telling me is

Yes.

Well, the -- one of the -- one of

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the issues that we have debated at length with the other side

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in the papers is what was encompassed within the copyright.

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And it's our position that the registration certificate, which

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we now know to be, I believe, Exhibit 48 for E51990, covers not

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just the easy arrangement with the piano solo but also covers

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text.

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THE COURT:

I understand.

I'll get to that in a

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moment.

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don't have any further claim to copyright protection as to the

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lyrics if the Court were to determine that E51990 does not

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cover the lyrics; is that true?

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I just want to make sure that so in your case you

MR. KLAUS:

I believe, Your Honor, that what we

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would have is we would have the publication in 1935 plus the

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renewal, which also states that it's with text.

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So I don't

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think it's just the underlying certificate.

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the publication with the -- with the lyrics.

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I think that it's

What the -- what the copyright certificate does for us, I

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believe, Your Honor, the 1935 copyright certificate, is it

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gives us the presumption that what was covered was not simply

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the arrangement but also the text.

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THE COURT:

Well, we'll talk about the presumption

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and all of that, but the renewal does no more than what you say

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was copyrighted in 1935 other than to renew it.

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You weren't

renewing anything else.

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MR. KLAUS:

That's correct, Your Honor.

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THE COURT:

Okay.

So if I were to determine that in

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1935 it didn't cover the lyrics, it couldn't have covered the

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lyrics by reason of the renewal.

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if I were to determine that?

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MR. KLAUS:

Wouldn't you agree with that,

If you were to determine that the

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registration and publication in 1935 didn't cover the lyrics,

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then yes I would agree with you that the renewal would not.

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THE COURT:

Okay.

Now, let's talk about the

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question about what does it cover, does it or does it not.

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my initial question to you is -- and I don't believe either

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side has really addressed this; so I want to give you an

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opportunity to weigh in on it -- is that a question of law, or

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is that a question of fact in terms of what those certificates

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actually cover, or that certificate actually covered?

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And

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MR. KLAUS:

I believe, Your Honor, that the

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interpretation of a copyright certificate is traditionally

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treated as a question of law.

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THE COURT:

Even if there might be a need to go

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beyond the four corners of the certificate to accept extrinsic

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evidence?

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MR. KLAUS:

If there were a need to go beyond the

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four corners to accept extrinsic evidence, there might be a

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fact question if there was a fact question that was disputed.

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Our position is it's not, and I'm happy to explain that.

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THE COURT:

We'll get to that too.

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MR. KLAUS:

But one of the --

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THE COURT:

We'll do it one step at a time.

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MR. KLAUS:

Understood.

But I believe, as the

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Supreme Court made clear as recently as last term in the

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Raging Bull case, the Petrella against MGM case, the function

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of the registration certificate is to provide that Congress

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knew that copyrights would last for a very long time.

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would last beyond the point where one could have extrinsic

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evidence from people, as in this case who were alive in 1935.

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THE COURT:

They

There may be extrinsic evidence aside

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from the testimony of the people who were the players.

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Obviously, we're not going to have those.

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MR. KLAUS:

Understood, Your Honor.

So I think the -- I have not seen a case that holds that

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the interpretation of what is covered by a copyright is a

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question of fact.

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disputes and extrinsic evidence that were required to be

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answered, that would probably be a mixed question of law, in

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fact, but I could understand --

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I would think that, if there were factual

THE COURT:

That would be tried by a trier of fact

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as opposed to being determined by the Court in terms of my role

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of deciding what the scope is?

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MR. KLAUS:

It might be.

The only hesitation I

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have, Your Honor -- and we did not brief this question, as I'm

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sure you're familiar with, from the patent context --

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THE COURT:

That's somewhat different now, isn't it?

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MR. KLAUS:

It's different now, but the -- but there

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is the -- there is question of where you have, for example, the

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construction of a claim --

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THE COURT:

Right.

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MR. KLAUS:

-- that that's what the Supreme Court

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said in Markman, that this is an issue for the Court because

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this is a -- it's a document of public consequence.

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THE COURT:

And that really hasn't -- my

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understanding is -- and I'm no patent lawyer, believe me.

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my understanding, that really hasn't changed other than perhaps

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the standard of review as to the underlying factual

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determinations may have -- it did change from what the federal

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circuit thought it was.

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But

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MR. KLAUS:

Yes.

As has happened in a number of

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cases, the way the federal circuit construed the law did not

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turn out to be that case.

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question as to who makes the determination has changed.

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THE COURT:

But I don't think the underlying

From your view then, borrowing from

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patent law, is that if I'm deciding whether or not the

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certificates -- certificate has within its scope the lyrics and

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I feel that there is a need to go outside the four corners of

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the certificate and if that evidence actually is conflicted, I

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can still make that factual determination under my duty to

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decide what the scope of the copyright certificate is.

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MR. KLAUS:

I believe that's correct, Your Honor,

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with the -- with obviously the caveats about a number of points

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in the chain, about if -- and excepting that -- excepting those

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points out, the only other thing I would say is I can't say

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that I have researched the question exhaustively, but I would

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think that would be the way that it would be analyzed.

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THE COURT:

Okay.

Let's talk about burden of proof

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for a moment.

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that the burden is not only not on you because you have the

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benefit of the presumption to go forward, but you assert that

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the burden of persuasion does not rest with you because you

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didn't bring an infringement suit, and you cited Schaffer.

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You have at various parts in your briefing said

But this is a declaratory relief action, and don't we look
to what the underlying coercive claim would have been to

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determine where the burden lies?

That doesn't change any

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presumption, if a presumption is to be applied.

I understand

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that, but the presumption is really rebuttable.

It's the

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burden of going forward.

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by any stretch of the imagination.

It's not an irrebuttable presumption

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So do you still believe that, because this is a

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declaratory relief action, because technically they're the

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plaintiff, you're the defendant, they have the burden to prove

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everything on persuasion?

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MR. KLAUS:

I believe that, at least with respect to

some issues, Your Honor, that they would.
THE COURT:

Well, you're right.

I also think -Some of those are

characterizable as affirmative defenses.

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MR. KLAUS:

Yes.

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THE COURT:

And affirmative defenses, I agree.

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They

have the burden.
MR. KLAUS:

And I would say that -- I would say,

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though, Your Honor, I don't know that a -- I don't know that

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the issue has been explicitly decided with respect to a

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declaratory judgment case for the validity of a copyright as

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opposed to the invalidity of a copyright.

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from the cases one would -- one would conclude that, if you

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were to treat this as a coercive action turned upside down, as

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this case in some respects is, we might have the burden.

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THE COURT:

But I can see why

Well, there's no real conceptual

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difference between our case, just because it's copyright,

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versus Metronic because it was patent.

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Supreme Court decision might -- we may want to allow that to

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inform us as to where the burden lies.

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MR. KLAUS:

Understood.

And it seems to me that

And I would -- I would

agree with that, Your Honor.
THE COURT:

Let's talk about the scope of E51990.

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Do we apply the presumption first, or do we say we're going to

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have to decide what the scope is so we know what presumption to

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apply to it?
MR. KLAUS:

I believe that the cases have always

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looked first to the certificate and the presumption and then

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said what is there to rebut the presumption.

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THE COURT:

Okay.

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MR. KLAUS:

And in this case, Your Honor, of course

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our position is that, notwithstanding the claim by the

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plaintiffs that they have rebutted the presumption, that the

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evidence is undisputed, and it's entirely in our favor that

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what was intended to be registered was not simply a piano

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arrangement but also the text.

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THE COURT:

Let's explore that.

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MR. KLAUS:

Yes.

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THE COURT:

Let's explore, assuming you're right

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about the applicability of the presumption, because, of course,

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even under the 1909 Act, registration certificate presumes the

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validity of whatever it was that was covered and the truth of

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the statements made therein.

Okay?

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MR. KLAUS:

Correct.

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THE COURT:

All right.

You agree with that?

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us.

Okay?

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So let's see where that gets

The certificates or this certificate, which is 48,

I believe -- right? -- Exhibit 48?

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MR. KLAUS:

Exhibit 48.

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THE COURT:

Okay.

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Correct, Your Honor.

So in taking a look at

Exhibit 48, it says who's the author of the new material?

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Because this is for "Republished Musical Composition with New

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Copyright" material.

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Question No. 3, "Author of new copyright matter:

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Ware Orem, employed for hire by Clayton," blah, blah, blah.

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the assertion that we have to presume to be correct, at least

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on the presumption, prima facie, is that Mr. Orem was the

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author of any new copyright matter.

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Preston
So

Number 7, question, "State exactly on what new matter

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copyright is claimed."

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solo, with text."

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Okay.

And it says, "Arrangement as easy piano

That's what is claimed.

And assuming that is

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correct, literally that it is easy piano solo -- arrangement as

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easy piano solo, with text, and that's presumed to be correct,

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prima facie to be true, then you apply that with your admission

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that Mr. Orem did not author the lyrics.

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So if we literally apply the presumption, one -- one,

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maybe not the only -- but one logical deduction or conclusion

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is that the text cannot refer to the lyrics.

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MR. KLAUS:

If there were no other evidence in the

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record, Your Honor, that might be correct.

But the other

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evidence -- and we have to start from couple of propositions.

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One is that the reference to -- and it is not uncommon in

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copyright cases for there to be a mistake on the application as

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to who the author was.

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we've cited, to which I don't think there is a response, is the

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And, in fact, one of the cases that

Emmylou Harris against Emus Records case, Your Honor.

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THE COURT:

That's really not on point.

Let me tell

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you why I don't think so.

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issue.

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whatever the name, was claimed in the copyright.

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questioning whether or not the lyrics were covered in this

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copyright; so I think that's a pretty big difference.

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There, it was not really a scope

There was no question that sixth song, Gliding Bird or

MR. KLAUS:

So we are

Well, except that the case that

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Emmylou Harris relies on -- Emmylou Harris, it stands for the

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proposition that inaccuracies that were not obtained by an

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intent to defraud -- there is no claim by the plaintiffs that

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there was an intent to defraud the copyright office here --

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that cause no prejudice to the defendant, as in this case,

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there's no claim that they have been prejudiced by any of

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the -- in other words, that absent an intent to defraud and

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prejudice, the technical inaccuracy in the registration doesn't

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affect the validity of the copyright.

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THE COURT:

I'm sorry.

and then I'll follow up.

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MR. KLAUS:

And one of the --

I'll let you finish that,

Go ahead.

The point I was going to make,

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Your Honor, is Emmylou Harris is not the only case.

There is

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also the Barron against Leo Feist case.

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closer to what you were describing in terms of the scope

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because the -- the arrangement that was at issue there, the

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calypso arrangement, the underlying copyright registration had

And that case is much

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attributed to the purported author simply the collection of

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calypso lyrics in Jamaica, I think, at the time.

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And the argument on -- the argument on appeal was that

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that -- that that was an indication that the lyrics were not --

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that the melody to what was pla- -- I believe the plaintiff's

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work and then the defendant's work, which I think was Rum and

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Coca-Cola, I think was the name of the song.

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in that case was, because the registration certificate said

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one -- because the registration certificate didn't attempt to

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claim that, that therefore -- or the application, that

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therefore it couldn't be claimed later on.

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And the argument

And what the Second Circuit said in case law that's been

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continued all the way through the Emmylou Harris case is that

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sort of technical defect is not going to upset the -- is not

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going to upset the validity of the copyright if it's challenged

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later on.

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THE COURT:

Well, but my concern with that is nobody

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here -- or at least I don't think -- is suggesting that your

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copyrights are invalid, period, gone, finished.

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a copyright.

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challenging that you have a copyright to the arrangements.

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doesn't blow it up.

There's no fraud here shown.

It doesn't

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blow up the certificate so that you have nothing.

That's not

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the issue.

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The question is again the scope.

You still have
They're not

The issue is really a little bit different.

It

The issue is

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is it included in the claim?

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whether you call it sufficient to defeat and therefore set

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aside any presumptions, or you say, okay, the presumption goes

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so far but there is other evidence.

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presumption technically applies or does not apply is not going

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to have earthshaking consequences, in our case at least, on the

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record.

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And by the very admission,

So ultimately whether the

So my question is, if you admit that there is at least

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error -- and you claim that there's an error.

They claim there

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was no error.

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claim that there was just an error.

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the Hill sisters, whoever authored the lyrics -- and we'll

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discuss that later on -- but one of the Hill sisters, we should

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have put that name as the author of the text.

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been really helpful and clearer, but it didn't.

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a mistake.

But let's just talk about your position.

You

We forgot to put on one of

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That would have
That was just

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Isn't that mistake sufficient to say that maybe we

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shouldn't apply the presumption because what are we going to

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presume?

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because there's nothing on the certificates for which we apply

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the presumption that ever says that.

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we into just receiving evidence as to what's your evidence and

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what's their evidence?

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We can't presume Mildred or Patty wrote the lyrics

MR. KLAUS:

So in any event, aren't

If that was -- if that was the case,

Your Honor -- and I've said I think the Barron against

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Leo Feist case and the Emmylou Harris case would go against

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that.

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on the presumption, the evidence, the undisputed evidence

13

that's in the record is that the Hill sisters wrote Happy

14

Birthday to You, not simply the underlying melody, which was

15

their melody.

16

their words.

17

But even if we are in the world where we are not relying

Undisputed Good Morning to All was their melody,

The undisputed evidence in the record from the deposition

18

of the Hill sisters in the Hill v. Harris case is that it was

19

written -- that the lyrics were written by Patty Hill.

20

THE COURT:

Okay.

21

MR. KLAUS:

Point number one --

22

THE COURT:

Let me ask you, there is deposition

23

testimony by -- I think it was Patty Hill's deposition that

24

says that she wrote the lyrics to -- the lyrics, what we'll

25

call the lyrics.

Is that admissible?

UNITED STATES DISTRICT COURT

20
1

MR. KLAUS:

I don't believe there's been an -- I

2

don't believe there's been an objection.

3

testimony.

4

admissible?

5

It is prior

I don't know why it -- why wouldn't it be

THE COURT:

Prior testimony doesn't solve anything

6

because she's not here to testify.

7

declarant and you have her declaration of something, maybe if

8

it satisfies some other foundational issues, that would be

9

admissible.

10

If she were a witness or a

I don't think prior testimony applies if she's not

going to be here, and I don't think she will be.

11

MR. KLAUS:

Although she is unavailable as a

12

witness, Your Honor, it is deposition testimony.

That's one --

13

that's one, but it's not the only thing, Your Honor, because --

14

THE COURT:

Okay.

15

MR. KLAUS:

We also --

16

THE COURT:

What you're saying is Patty says she did

17

it.

18

Okay.

What else do you have?
MR. KLAUS:

19

What else?

Patty says she did it.

Number 2, which I don't think can be discounted, is the

20

fact that it was the Hill sisters' underlying song.

21

Good Morning to All.

22

like these are -- the sisters were strangers to the underlying

23

work.

24
25

THE COURT:

That is completely undisputed.

They wrote
It's not

If I may, I think we're going down a

different analytical road than I want to go down right now.

UNITED STATES DISTRICT COURT

21
1

We'll come to that at a later point.

2

My question is still we're trying to determine scope.

So

3

how is it that we're going to even determine what other

4

evidence do you have to suggest -- either I say the presumption

5

is gone or I say the presumption is met.

6

have that would convince me that the lyrics were included in

7

the registration?

8
9

MR. KLAUS:

What evidence do you

Well, so the other evidence I would

have, Your Honor -- let me point this to you very specifically.

10

THE COURT:

Okay.

11

MR. KLAUS:

We know that the same day that 51990 was

12

deposited, 51988 was deposited and there was an intention to

13

claim copyright on the -- the arrangement with the revised

14

text.

15

covered by 51988, some text must have been intended to be

16

included with 51990.

17
18
19

So it's the combination of text plus -- revised text is

Point number 1.

THE COURT:

True.

The question is what is that

MR. KLAUS:

I'm happy -- okay.

text?
I'm happy to get

20

into the question of what that text is, Your Honor, and why

21

don't I do that now.

22

other evidence, we also have the Catalog of Copyright Entries

23

from 1935 which was prepared by the copyright office in 1935

24

and which, according to its inside cover, as the certificate

25

from the copyright office says, was -- was at the time

I do want to say, with respect to the

UNITED STATES DISTRICT COURT

22
1

sufficient to establish a prima facie case.

What the copyright

2

office used -- and this is important because the --

3

THE COURT:

You're talking about Exhibit 105.

4

MR. KLAUS:

No.

It's Exhibit C to my declaration --

5

Exhibits C and D to my declaration on the motion to strike were

6

the Catalog of Copyright Entries we received from the copyright

7

office.

8

THE COURT:

Are you talking about the card?

9

MR. KLAUS:

No, Your Honor.

11

THE COURT:

Okay.

12

MR. KLAUS:

C and D --

13

THE COURT:

Right.

14

MR. KLAUS:

-- were the Catalog of --

15

THE COURT:

Oh, the Catalog of the Copyright

10

16

A and B were the cards

that came.

Entries.

Okay.

Right.

And?

17

MR. KLAUS:

And if you look at Exhibit C --

18

THE COURT:

Yes.

19

MR. KLAUS:

-- if you look at page 21 of

20

Exhibit C --

21

THE COURT:

Page 21.

22

MR. KLAUS:

-- the page number from the copyright

23

office in this bound volume was 1260.

24

THE COURT:

Yes.

I have it.

25

MR. KLAUS:

And the column on the right-hand side,

UNITED STATES DISTRICT COURT

23
1

the fourth entry from the top, Happy Birthday to You.

2

THE COURT:

I'm sorry.

3

MR. KLAUS:

Second column on the right.

4

THE COURT:

On the right, yes.

5

MR. KLAUS:

Four entries from the top.

6

THE COURT:

Four entries from the top?

7

MR. KLAUS:

I'm sorry.

8

bottom, Your Honor.

Which column?

Four entries from the

My apologies.

9

THE COURT:

Yes, yes.

I see it.

10

MR. KLAUS:

Happy Birthday to You by Mildred J.

11

Hill, arrangement Preston Ware Orem, PF, which I believe in the

12

day was piano forte or piano solo, with W, and the W means

13

words, as was typed onto the top of what we now know to be the

14

certificate.

15

THE COURT:

Okay.

16

MR. KLAUS:

So we have -- we have that from the

17

Catalog of Copyright Entries, and as you see on the -- if you

18

look at page number 20, which is the -- what we got from the

19

copyright office, after the title page, says the act of

20

March 4, 1909, going into effect July 1, 1909, provides the

21

Catalog of Copyright Entries shall be admitted in any court as

22

prima facie evidence of the facts stated therein as regards any

23

copyright registration.

24
25

THE COURT:
You by Mildred J. Hill.

So what this says is Happy Birthday to
It doesn't say it's the lyrics, does

UNITED STATES DISTRICT COURT

24
1

it?

2

MR. KLAUS:

It says, with W.

3

THE COURT:

It says arranged by Preston Ware Orem,

5

MR. KLAUS:

Correct.

6

THE COURT:

So unless we say that your proffered

7

deposit copy, which is exhibit --

8

MR. KLAUS:

105, Your Honor.

9

THE COURT:

105.

10

MR. KLAUS:

106.

I'm sorry.

11

THE COURT:

106.

Unless I accept 106 as, in fact, a

4

Now --

PF, with W.

12

true and correct copy of the deposit copy relating to this

13

copyright, even if I accept this as evidence, what it does say

14

is Mildred J. Hill wrote Happy Birthday to You, and the

15

evidence also seems to show that she wrote the music to it.

16

There's no question she didn't write the words.

17

assert Patty did.

18

In fact, you

You don't even assert that Mildred did.

So if that's true in combination, then Happy Birthday to

19

You by Mildred Hill refers to the music as to which there was

20

an arrangement for piano forte, with text or with words.

21

Question is, again, what words?

22

If we don't know whether 106, in fact, is the deposit

23

copy, then for all we know, it could include text by Mr. Orem

24

relating to nothing about the lyrics.

25

I were to believe it and accept it, then I think you got a

If 106 is admissible and

UNITED STATES DISTRICT COURT

25
1

pretty strong argument that what other text is there other than

2

the lyrics?

3

we're going to have to sort out.

4

MR. KLAUS:

5

But what I'm suggesting is we got a few facts that

May I get -- and I'm happy -- I can get

to those points right now, Your Honor.

6

THE COURT:

Please do.

7

MR. KLAUS:

Yes.

Please do.

So, first of all, we know,

8

Your Honor, that there was sheet music that was deposited with

9

the 51990 application.

10

THE COURT:

Yes.

11

MR. KLAUS:

We know that from Exhibit 105.

12

Exhibit 105 is the record of the filing of the copyright.

13

THE COURT:

Correct.

14

MR. KLAUS:

And right at the top of the page, what

15

it says is Happy Birthday to You, exclamation point, by

16

Mildred J. Hill, Preston Ware Orem, employed for hire by

17

Clayton F. Summy Company of U.S.

18

And then the examiner, the person who opened the envelope

19

that day in the copyright office and wrote this down in this

20

book, which is how it got the 51990 number, wrote in, piano,

21

capital S, solo, with words.

22

And if one -- now, what we know is that the --

23

THE COURT:

24

MR. RIFKIN:

25

MR. KLAUS:

You'll have your opportunity, Counsel.
That's fine, Your Honor.
What we know, Your Honor, is that the

UNITED STATES DISTRICT COURT

26
1

application that we've looked at, which was 48, didn't say

2

Mildred J. Hill.

3

said easy piano arrangement, with text.

4

The person who wrote this down --

5
6

It didn't say piano solo, with words.

THE COURT:

It

But it did say also, copyright is

claimed on an arrangement as easy piano solo, with text.

7

MR. KLAUS:

With text.

8

THE COURT:

Exactly the same language as the

9
10

certificate.
MR. KLAUS:

What seems -- what seems clear, if you

11

look at the -- if you look at Exhibit 105 and you look at that

12

in conjunction with Exhibit 106, which says on the cover, piano

13

solo, both words capitalized, with words, which says Happy

14

Birthday to You with an exclamation point, and Mildred Hill --

15

what I would suggest, Your Honor, is that -- that in

16

combination there's no contradictory evidence that what the

17

person was looking at when they filled in the record of the

18

filing was both the application which had the line that

19

Your Honor quoted and the sheet music that said Mildred Hill,

20

that says piano solo, with words.

That's one point.

21

We also have the fact, Your Honor, that on the same day,

22

same day that 51990 was received, 51988 was received, that has

23

lyrics and the second verse.

24

combination of those two points, Your Honor, I think, leads

25

only to the conclusion that what was submitted with 51990 were

And no evidence -- and the

UNITED STATES DISTRICT COURT

27
1

the lyrics and what was submitted with 51988 was the revised

2

text.

3

I would also say, Your Honor, there is -- notwithstanding

4

a scouring of every piece of sheet music that exists, there is

5

nothing the plaintiffs have come up with that has said --

6

nothing that we have found that says here's something else,

7

here is an alternative arrangement, here is an alternative set

8

of lyrics for Happy Birthday to You.

9

Indeed, the plaintiffs in their first four complaints in

10

this case said that the deposit with 51990 did include the

11

lyrics, and they were challenging the -- they were challenging

12

the validity of whether or not that was eligible to be claimed

13

for copyright protection.

14

no evidence anywhere that the lyrics could have been or that

15

the text could have been anything other than what we are

16

calling as the lyrics here.

But even they said it, and there is

17

So it seems to me the combination of the deposit record,

18

Exhibit 106, other editions of exactly the same lyrics -- and,

19

Your Honor, I would direct you to Mr. Rifkin's declaration in

20

support of the motion to strike, Exhibits C and D, which are

21

later printings of the same sheet music.

22

in a time when the copyright owner was Summy-Birchard Music.

23

Later on Summy-Birchard is a division of Birch Tree Group.

24

only evidence of any record ever having been printed are the

25

sheet music that contains the lyrics.

They were printings

The

There is no evidence of

UNITED STATES DISTRICT COURT

28
1

any other set of text.

2

THE COURT:

Let me ask you this:

The deposit copy

3

of E51988 says Mildred Hill on the top right-hand side, but it

4

also says arrangement by R.R. Forman; right?

5
6

MR. KLAUS:

It says -- just one moment, Your Honor.

It also says --

7

THE COURT:

On the top left-hand side.

8

MR. KLAUS:

Yes.

THE COURT:

But 105 -- is it 105?

9

Arrangement by Mrs. R.R. Forman,

correct.

10
11

106, which you say is a deposit copy for E51990, doesn't

12

mention Mr. Orem at all.

13

significance?

14

MR. KLAUS:

15

say the answer is no.

16

What about that?

number one.

17

THE COURT:

I don't know.

Does that have any

Your Honor, I -- I would

I don't think it has any significance,

Has no significance in terms of the mix

18

of evidence that I would look at to see whether or not

19

Exhibit 106, in fact, is a true and correct copy of the deposit

20

copy?

21

MR. KLAUS:

Your Honor, it's -- first of all,

22

whether Exhibit 106 is an exact duplicate of the deposit copy,

23

I think the evidence suggests very strongly it was, that this

24

was the version that was published in 1935.

25

Exhibit 106 is very close to it, and I don't know what the

But I think

UNITED STATES DISTRICT COURT

29
1

significance would be of Mr. Orem's name being in the left-hand

2

corner or upper left-hand corner as to whether or not what was

3

intended to be claimed would be what we are calling the lyrics

4

to Happy --

5

THE COURT:

Let me ask you something.

6

nothing about music.

7

signs and everything, but I wouldn't be able to tell you what

8

it means whatsoever.

9

Okay?

I know

I can see these -- the musical

Is there anything about that piece of sheet music,

10

Exhibit 106, that shows that this is a piano arrangement?

I

11

don't know the answer to that.

12

music.

13

search for ways of either confirming or refuting your position.

14

I'm just trying to understand it.

15

MR. KLAUS:

I'm confessing ignorance in

So I'm asking you that question because I'm trying to

I believe, Your Honor, that -- and I'm

16

not an expert in music myself, but I don't believe this was

17

disputed by their expert either.

18

THE COURT:

19
20

That this is an expression of the piano

arrangement?
MR. KLAUS:

It is an expression of a -- it is an

21

expression of a piano arrangement.

It is an expression of a

22

piano arrangement.

23

reminded me of that I don't want to forget here, Your Honor --

And by the way, one point that Mr. Kaplan

24

THE COURT:

Yes.

25

MR. KLAUS:

-- is in terms of you asked what is the

UNITED STATES DISTRICT COURT

30
1

evidence that this was the deposit copy.

2

you look, Your Honor, at the lower left-hand corner of the

3

sheet music --

4
5

THE COURT:

If you look at -- if

You know, maybe if you have a better

copy, my copy is pretty -- it's not that great.

6

MR. KLAUS:

May I approach, Your Honor.

7

THE COURT:

Yes.

8

bit -- I guess -- no, no.

9

fine.

10

Let's see if yours is a little

I'm sorry.

I'm sorry.

This one is

It's the other deposit copy that I have a problem with.
All right.

Go ahead.

11

MR. KLAUS:

Yes, Your Honor.

12

THE COURT:

You're referring to the 3075 and 3076

14

MR. KLAUS:

Correct.

15

THE COURT:

Okay.

16

MR. KLAUS:

Correct, correct.

13

17
18

In the --

notation?

I understand.
And in serial -- that

they were published serially with the -- with the same number.
To return to your question, Your Honor, about whether

19

Exhibit No. 106 contains a piano arrangement, I don't believe

20

there's any dispute that the -- the setting of the notes here,

21

the musical notes, is a musical arrangement.

22

THE COURT:

Is a musical arrangement?

23

MR. KLAUS:

Is a --

24

THE COURT:

Piano?

25

MR. KLAUS:

I think it's intended for piano.

UNITED STATES DISTRICT COURT

What I

31
1

do understand, I believe, Your Honor, is that the -- the way

2

that this -- first of all, it says "piano solo, with words" on

3

the cover, and I also think the arrangement of the notes on

4

here is for it to be played -- I think it's a -- it's one hand

5

as opposed to two hands.

6

bars, it would be for what's called a second hand.

I believe that, if there were three

7

THE COURT:

I'll have to take your word for it.

8

MR. KLAUS:

I'm not a pianist, Your Honor, but I do

9

think this would be an arrangement.

And I also do think that

10

the -- what we have in terms of the registration certificate,

11

the record of copyright deposits that we have been discussing,

12

says this is both an arrangement and it includes text.

13

THE COURT:

Let me just move on and ask you some

14

other questions in terms of what your position would be

15

depending upon how I resolve this question, and then I think I

16

should give plaintiffs an opportunity to address the Court as

17

well on these or any other issues.

18

If I were to conclude -- and let's say I go with your

19

tentative position -- and I'm not holding you to it -- your

20

tentative position that this is very much like the Markman

21

situation, that I would make a determination as to the scope

22

even if there are questions of fact to be determined.

Let's

23

assume that's it, and I could decide one of two ways.

Let's

24

say it is within the scope or it is not within the scope.

25

If I say it is within the scope, is that the end of the

UNITED STATES DISTRICT COURT

32
1
2

inquiry as far as you're concerned?
MR. KLAUS:

If the lyrics are within the scope, I

3

believe that it is.

4

regarding chain of title, which I would be happy to get into.

5

The plaintiffs have made an issue

THE COURT:

Put aside the chain of title.

I don't

6

even think that chain of title was sufficiently briefed.

7

was something you folks threw in there at the end.

8

was, I think I need to have you folks really weigh in more on

9

that, but I don't want to talk about that right now.

10

It

Whatever it

What I'm talking about is, even if this was meant to be

11

included, can I apply the presumption of validity when there is

12

an obvious mistake in terms of the author?

13

MR. KLAUS:

Clearly under the Emmylou Harris case,

14

Your Honor, which was a mistake as to the author, clearly the

15

answer is yes.

16

THE COURT:

Wait.

Emmylou Harris says that you

17

don't -- you don't void anything.

18

I'm saying, do we apply still a presumption?

19

do we apply?

I'm not voiding anything.
What presumption

20

MR. KLAUS:

The presumption --

21

THE COURT:

The presumption on -- on the face of it,

22

the certificates don't say any Hill sister.

23

presume it's true that it's a Hill sister?

24
25

MR. KLAUS:

So how could I

The answer in terms of whether -- first

of all, if the -- if the copyright is valid, then the

UNITED STATES DISTRICT COURT

33
1

presumption that follows, Your Honor, is that the lyrics were

2

properly registered, that they were original to the author,

3

meaning they were not copied by someone else.

4

shift to the plaintiffs under the Feist case to establish that

5

there was a copy.

6

The burden would

There is no --

THE COURT:

Let's hold that.

It's original to the

7

author -- in this case, Mr. Orem -- which you have already said

8

it's not true.

9

that's what I'm saying.

It can't be.

The author, it can't -- you know,

If I apply the presumption that's

10

permitted under the law, the only presumption I'm going to

11

apply is that the lyrics, if I say are included -- let's say I

12

conclude that way.

13

cannot presume that they are original to the author because you

14

have admitted it is not.

15

It is included.

MR. KLAUS:

They are included.

I

It's -- no, you can't -- Your Honor,

16

the -- what we say, the evidence that's in the record that is

17

undisputed is that the Hill sisters wrote this work.

18

THE COURT:

Do you claim Mildred wrote the lyrics?

19

MR. KLAUS:

We claim that it was Patty Hill.

She

20

testified who wrote the lyrics.

The two sisters, just as they

21

had with respect to the underlying work Good Morning to All,

22

that Mildred wrote the music, melody music, and that Patty was

23

the lyricist in the combination.

24

THE COURT:

That's your position.

25

MR. KLAUS:

Correct.

And those --

UNITED STATES DISTRICT COURT

34
1

THE COURT:

Go ahead.

2

MR. KLAUS:

I'm sorry.

3

THE COURT:

I appreciate you being very, very

And those --

4

polite.

5

impolite when I cut you off.

6

to something, and I don't want to forget it.

7

to forget a lot of things if I don't tend to it right away.

8

you'll forgive me.

9

And I do appreciate that, and I don't mean to be

MR. KLAUS:

It's just that I'm trying to get
At my age, I tend
So

Your Honor, the -- we'd say that the

10

underlying evidence is -- which is the deposition testimony,

11

which are the assignments from the Hill sisters to the

12

foundation --

13

THE COURT:

We still have to get to the evidence.

14

Whether you say there's a presumption, or no, they have

15

presented some evidence.

16

MR. KLAUS:

We still have to get to the evidence.

Okay.

So that -- our position,

17

Your Honor, would be that even if -- first of all, there is a

18

presumption that the copyright is valid, that the copyright

19

covers the text.

20

And it is their burden to discharge that.

Now, one thing I would say that they tried to do -- we

21

also haven't discussed yet, but I'm sure Mr. Rifkin will -- is

22

they claim what was licensed from a third sister, the youngest

23

sister Jessica Hill, to the Clayton Summy Company --

24
25

THE COURT:

I'm glad you brought this up because

that is something I do want to talk about.

Thank you.

UNITED STATES DISTRICT COURT

35
1

MR. KLAUS:

What was licensed, they say, was simply

2

piano arrangements, and they say a consequence of that, a

3

consequence of it being the licensing of piano arrangements, is

4

that Summy, as a licensee, as opposed to having a complete

5

assignment of the copyright, was not permitted to register the

6

work.

7

fell into the public domain.

8
9

And therefore, when the work was published in 1935, it

And that is -- there's the Abend case which we have cited,
Your Honor, which is a Ninth Circuit case which says -- quite

10

clearly adopts the reasoning of the Second Circuit in a case

11

called Goodis.

12

argument, which is called a doctrine of indivisibility rule,

13

that the licensee couldn't register and that the work slipped

14

into the public domain -- the Abend case rejects that

15

proposition, Your Honor, and what it says is that the problem

16

with applying the -- and this is at page 863 F.2d.

17

And the Abend case says that this exact

The case is at 1465, and the key discussion is pages 1469

18

to 1470, that it brings about an unnecessarily harsh result of

19

thrusting the author's product into the public domain where, as

20

here, everyone interested can see the copyright notice, as one

21

does on Exhibit 106, plainly published with notice, and there

22

was no evidence of an intention by the underlying authors,

23

copyright owners in this case, as of 1935 the Hill sisters, to

24

put their work into the public domain, of which there is no

25

evidence in this record that the Hill sisters intended for this

UNITED STATES DISTRICT COURT

36
1
2

work to be placed in the public domain.
Under the -- under Abend and Goodis and under another

3

case, Your Honor, which is the -- which is Sanga Music against

4

EMI, 55 F.3rd 756 -- it's another Second Circuit case, cites

5

Abend, cites the Goodis case -- says this has been applied

6

repeatedly, that what happened over the years is that the

7

courts rejected the doctrine of indivisibility in saying that a

8

licensee was not permitted -- that a licensee's publication, if

9

they were a licensee, injected the work into the public domain.

10

THE COURT:

I think -- I'll let Mr. Rifkin make his

11

own argument, but my understanding of his argument is really a

12

little bit different from that.

13

registrant is just a licensee but also that the license, even

14

the content of the license, was limited to some piano

15

arrangements.

It's not just that the

16

So I think, if you're going to address that issue,

17

maybe -- I understand you've addressed this other issue.

18

That's fine.

19

to what was licensed.

I appreciate it.

But really it's the question as

20

Let's assume for the moment licensees -- you know,

21

registering is not going to affect the disastrous results that

22

Abend tries to avoid.

23

response is, which I assume Mr. Rifkin will argue, is that the

24

allegation -- of course, we don't have that particular license

25

agreement.

All right.

Let me know what your

That's the '34 license agreement which we do not

UNITED STATES DISTRICT COURT

37
1

have; right?

Am I right on that?

2

MR. KLAUS:

That's -- that's correct.

3

THE COURT:

Okay.

4

MR. KLAUS:

What we do, though, have is -- we do

5

have, Your Honor, in Exhibit 50 --

6

THE COURT:

Right.

7

MR. KLAUS:

Correct.

8

THE COURT:

Okay.

9

issue as to its admissibility.

That's the Complaint.

Let's put aside the evidentiary
But assuming it is admissible,

10

we look at that.

11

licensed was piano arrangements, not the lyrics?

12

say anything about lyrics as far as I can see.

13

Doesn't that seem to say that all that was

MR. KLAUS:

It doesn't

It doesn't say lyrics were not included.

14

What it, in fact, says, Your Honor, is it describes in the

15

tenth paragraph on page 3 of the Complaint --

16

THE COURT:

Okay.

Hang on one second.

17

MR. KLAUS:

Of course.

18

THE COURT:

-- review that with you.

19

Tenth paragraph?

20

MR. KLAUS:

Yes.

21

THE COURT:

Okay.

Let me --

The one that says that one of the

22

songs contained in the works mentioned and described at

23

paragraphs 4th to 8th, inclusive hereof, is one entitled

24

Good Morning to All, which, with words, written by the said

25

Patty S. Hill, was later entitled Happy Birthday to You and was

UNITED STATES DISTRICT COURT

38
1
2

included among the song copyrighted, as aforesaid, by Summy.
That one?

3

MR. KLAUS:

That's one of them, Your Honor.

4

THE COURT:

Okay.

5
6

Why don't you tell me your take

on the significance of that.
MR. KLAUS:

Our take on the significance of that is

7

that there's plainly an allegation that it wasn't simply the

8

Good Morning to All song.

9

with those lyrics that was included within the license.

10

It was also Happy Birthday to You

And then if you look, Your Honor, at paragraph 15 --

11

THE COURT:

15, all right.

12

MR. KLAUS:

-- which starts on page 4, continues on

13

to page 5, the nub of the Complaint in this case by the Hill

14

Foundation was that the license that had been granted -- not

15

that Summy had exceeded the license by publishing Happy

16

Birthday to You in sheet music with the lyrics.

17

says, as she had done in her deposition, that Patty was the

18

author of the lyrics.

19

His Complaint

The allegation was that the -- that Summy had gone in

20

excess of the license by licensing people to include Happy

21

Birthday to You in motion pictures, what we now call

22

synchronization licensing.

23

that paragraph is the only rights acquired at any time by --

And what it says at the bottom of

24

THE COURT:

That paragraph meaning paragraph 15?

25

MR. KLAUS:

15.

UNITED STATES DISTRICT COURT

39
1

THE COURT:

Yes.

2

MR. KLAUS:

Yes.

And so at the top of page 5, what

3

it says is the only rights acquired at any time by Summy under

4

the original express license and the oral renewals thereof

5

being those of publication and sale of said songs or works in

6

sheet music form.

7
8

And then if Your Honor -- if you look at the paragraph 24
of the Complaint --

9

THE COURT:

Yes.

10

MR. KLAUS:

What it says, during the calendar years

11

1934 and 1935 the aforesaid Jessica M. Hill, as owner of the

12

copyright of the said book or work Song Stories for the

13

Kindergarten -- and there is this issue here where they are

14

debating what the reincorporation of the claim that Summy

15

Company was.

16

But the allegation is that Jessica Hill, it's undisputed,

17

controlled the -- controlled the interest that devised from

18

both Patty and Mildred, that she granted to this defendant a

19

number of licenses for the publication, sale, and performance

20

of various piano arrangements of the song variously entitled

21

Good Morning to All and Happy Birthday to You.

22

And Happy Birthday to You has already been previously

23

defined in this Complaint within paragraph 10 to say words

24

written by the said Patty Hill.

25

THE COURT:

But that may be in terms of which

UNITED STATES DISTRICT COURT

40
1

Happy Birthday, it's that Happy Birthday.

2

publication, sale, and performance of various piano

3

arrangements of Good Morning to You and Happy Birthday to You.

4

MR. KLAUS:

But this says

What I would submit to you, Your Honor,

5

is that the piano arrangement discussion must refer back to the

6

sheet music form that's in paragraph 15, that that was what

7

the -- the dispute between the parties was whether or not the

8

license that included the lyrics to Happy Birthday to You,

9

sheet music form which we know is the Exhibit 106, as opposed

10

to the question whether that reference to piano arrangements is

11

simply a reference to the musical notes.

12

And I would say this, Your Honor.

This is -- and let

13

me -- let me come to this point, which is that the consequence

14

of the plaintiff's reading -- the consequence of the

15

plaintiff's reading which is presuming against the Hill

16

sisters, that what they licensed was not just notes but, as it

17

says in paragraph 10, the words Happy Birthday to You, to that

18

song, the consequence of their argument is that the publication

19

by Summy Company in 1935 with the copyright registration

20

destroyed the Hill sisters' common-law copyright.

21
22
23

THE COURT:

Because that would have constituted a

general publication.
MR. KLAUS:

It would have constituted a general

24

publication.

Now, that's one thing.

25

abandonment into the public domain.

It would constitute an
I -- which -- and that's

UNITED STATES DISTRICT COURT

41
1

what Abend says, we're going to go against that and not apply

2

this doctrine harshly to work that kind of forfeiture.

3

But the second point, Your Honor -- and this is

4

important -- if we're wrong about that, and their position is

5

it didn't put it into the public domain because it was not an

6

authorized publication -- if that's the case, the copyright

7

never left the Hill sisters and when they assigned it to Summy

8

in 1944 there had been no -- there had been -- there had been

9

no -- there had been no destruction of the copyright in 1935 by

10
11

the publication.
It remained their copyright, and at the point in time

12

where they assigned it to the Summy Company in 1944, Summy

13

Company's existing copyright certificate and the rights they

14

obtained from the Hill sisters would have merged.

15

THE COURT:

I'll take another look at the 1944

16

assignment, but it seems to me the 1944 assignment just

17

assigned whatever rights they may have had in those specific

18

copyright certificates as identified.

19

your argument becomes a little bit circular.

20

MR. KLAUS:

So if that's it, then

Well, I think it was all -- it's a

21

matter of intent as to what was covered by the assignment,

22

Your Honor.

23

Circuit case we cite, South-Western Publishing Company,

24

651 F.2d 653, question of intent as to what would be assigned.

25

That's the -- that's the holding of the Ninth

And given the -- I'll finish up, Your Honor.

UNITED STATES DISTRICT COURT

Given the

42
1

evidence -- we submit it's undisputed -- that the Hill sisters

2

wanted their works to be protected by copyright, given the

3

undisputed evidence that, for continuing on, a third of the

4

royalties from the -- from the licensing of the work continued

5

to go to the Hill Foundation and now to the Association For

6

Early Childhood Development, that the evidence that what the

7

Hill sisters wanted was for the copyright to protect this work

8

and that they intended to transfer that work is unmistakable

9

from the documentation, Your Honor.

10

THE COURT:

Let me just ask you one other question.

11

MR. KLAUS:

Yeah.

12

THE COURT:

To the extent that the publication

13

occurred three days, I think, before -- it was actually the

14

same day as application but three days before the certificates

15

were issued, I think, something like that, and you say that the

16

publications, if you say these are the sheet music, including

17

the purported deposit copy for E51990 all said Mildred Hill on

18

it, why was there any occasion for mistake?

19

MR. KLAUS:

I have no idea, Your Honor.

20

THE COURT:

Does that mean maybe it wasn't a

MR. KLAUS:

Your Honor, what we know is there was no

21
22

mistake?

23

effort to hide Mildred Hill's authorship if the sheet music was

24

submitted with her name on it.

25

THE COURT:

I don't think anybody was trying to hide

UNITED STATES DISTRICT COURT

43
1

it.

2

Mildred Hill wrote the music, great.

3

lyrics, and they're not claiming lyrics.

4
5

Maybe somebody didn't claim it.

Maybe, you know, if
We're talking about the

I'm just saying that's a -- I'm thinking about it in
conjunction with everything else you've said.

6

MR. KLAUS:

I under- -- I hear what Your Honor is

7

saying, but I think, when it is combined with the fact that

8

the -- specifically said, with text, in another application the

9

same day for exactly the same lyrics plus a second verse, was

10
11

intended to claim text.
When one looks at no one has up until the point in this

12

case so far has ever claimed that the "with text" was intended

13

to be something other than the lyrics, and there's no

14

evidence --

15
16
17

THE COURT:

You never sued anybody on those lyrics

MR. KLAUS:

There's no evidence of there being --

either.

18

there's no evidence -- which we're not -- which we have -- we

19

have licensed the work for 70 years.

The people who have --

20

THE COURT:

How much are the licenses?

21

MR. KLAUS:

The licenses vary, Your Honor.

22

THE COURT:

From what to what?

23

MR. KLAUS:

That, I don't -- I don't have.
It depends.

I don't

24

know that information specifically.

25

types of licenses that are at issue here, just so we're clear.

UNITED STATES DISTRICT COURT

There are two

44
1

We're not talking about little kids' birthday parties in the

2

backyard with people singing.

3

THE COURT:

That's not a public performance.

That's good.

So I haven't been

4

infringing anything.

All that time when I'm in a restaurant

5

and somebody brings me a little cupcake, I'm okay on that then?

6

MR. KLAUS:

Yes, Your Honor.

7

THE COURT:

I'm relieved.

8

MR. KLAUS:

Just to be clear, Your Honor, just as

9

with any other popular work -- God bless America, which is

10

under copyright, Frosty the Snowman, which is under

11

copyright -- there's no popularity penalty for a work that

12

achieves popularity.

13

And the way that it works, if you sing Happy Birthday to

14

You in your home, in your backyard, it's a private performance

15

to which there is no -- the copyright doesn't apply.

16

something done in a space to which a public performance license

17

is required like a large restaurant or something that meets the

18

size requirements of the Copyright Act, just as with any other

19

work, Your Honor, that is sung in those cases or that is piped

20

in through the music in the background, that establishment has

21

an ASCAP public performance license which blanket --

22
23

THE COURT:

If it's

You don't even have an estimate of the

range of the licensing fees?

24

MR. KLAUS:

Your Honor, I believe --

25

THE COURT:

I don't want you to guess.

UNITED STATES DISTRICT COURT

That's

45
1

worthless.

2
3

MR. KLAUS:

I don't want to -- I don't want to

guess, but I think that sync licenses --

4

PERSON IN AUDIENCE:

5

MR. KLAUS:

500 to a thousand, 1,500.

I'm told by my client from

6

Warner/Chappell that the range is from $500 to $1,500 for sync

7

licensing.

8

THE COURT:

9

PERSON IN AUDIENCE:

10

They add up.
It can be more depending on the

type of the --

11

MR. KLAUS:

Yes.

12

THE COURT:

So if it were a full-length feature

MR. KLAUS:

If something were a full-length feature

13

Depending on the type of --

movie --

14
15

movie produced by a major motion picture studio that has

16

budgets of tens of millions of dollars --

17

THE COURT:

Right.

18

MR. KLAUS:

-- then, yeah, a sync license, as with

19

any other work --

20

THE COURT:

21

PERSON IN AUDIENCE:

22

vague.

How much would that be?

It just depends on the scope of the --

23

THE COURT:

24

PERSON IN AUDIENCE:

25

I'm not trying to be overly

Five figure, six figure?
It could be five figures, six

figures, like any other song.

UNITED STATES DISTRICT COURT

46
1

THE COURT:

Okay.

One final question, and I will

2

give the plaintiffs an opportunity.

I know that they've been

3

waiting patiently for this.

4

even if what you assert is correct -- and I don't know whether

5

Mr. Rifkin agrees with you or not that I will determine it even

6

if there are factual issues on the scope -- but once we go

7

beyond the scope, and if I determine that there is going to be

8

some disputed facts to inform any of those other issues that

9

you and I have talked about, whether they're affirmative

Once I determine the scope issue,

10

defense issues, whether they're initially your burden issues

11

and so forth, those would, I take it, be something that would

12

be tried by a trier of fact.

13

MR. KLAUS:

If there were factual disputes.

14

THE COURT:

If there were factual disputes, of

15

course.

If there are no factual disputes, it would be summary

16

judgment, but if I determine that there are factual disputes,

17

that would be something tried by a trier of fact in a trial.

18

MR. KLAUS:

I believe -- I believe that's correct,

19

Your Honor, with the one caveat, which is that when you say

20

apart from the scope and valid- -- the plaintiffs have thrown

21

everything and the kitchen sink at this copyright, and I want

22

to know specifically where there was the dispute.

23

general --

But in

24

THE COURT:

Of course.

25

MR. KLAUS:

But in general -- in general I do agree

UNITED STATES DISTRICT COURT

47
1

with that, Your Honor.

2

THE COURT:

Okay.

And has there been a request for

3

a jury trial on this issue, and can there be a jury trial on

4

this declaratory relief aspect of it, or are we going to run

5

into some problems with the so-called Dairy Queen cases because

6

of certain other direct claims beyond the declaratory relief?

7

MR. KLAUS:

There is, and there can't be a jury

8

trial right on the declaratory relief claim, Your Honor, I

9

believe.

That said, the plaintiffs have a set of state law

10

claims -- breach of contract and the like -- that they have

11

held in abeyance or that Your Honor stayed pending the

12

determination of the federal copyright claim.

13

discussed this the last time, that there is a potential

14

Beacon Theatres-Dairy Queen issue about whether the Seventh

15

Amendment would require facts that are necessary --

And I believe we

16

THE COURT:

Those --

17

MR. KLAUS:

The facts that are necessary to decision

18

on this -- and, again, we would have to see what those were.

19

THE COURT:

But you're happy with a court trial.

20

MR. KLAUS:

We're fine with a court trial,

21
22
23
24
25

Your Honor, yes.
THE COURT:

Okay.

Thank you.

Mr. Rifkin?
MR. RIFKIN:

Good morning.

And obviously I'm happy

to answer any questions Your Honor may have.

I presume you

UNITED STATES DISTRICT COURT

48
1

want to ask questions rather than have me make some prepared

2

remarks.

3

THE COURT:

Well, I think you have heard my

4

discussion with Mr. Klaus, and to the extent that in light of

5

that discussion you want to make your point, because I

6

certainly don't mean to take your position, because I don't

7

know some of these positions you would take, and my questions

8

are not indicative of anything I decided to do.

9

facilitate a discussion so that I can have the benefit of your

10

They're to

respective position.

11

So if you have something you want to particularly inject

12

in light of my conversation with Mr. Klaus, please do that.

13

And you're right.

14

to work it in at the propitious time.

15

I do have some questions, and I may be able

MR. RIFKIN:

Yes, Your Honor.

And I'll try to be

16

brief in my remarks because I know Your Honor will have

17

questions.

18

this.

19

I know how much time you've spent thinking about

First, I think the parties all agree that at least insofar

20

as the first claim is concerned, the request for declaratory

21

judgment, with respect to the scope of the copyright or its

22

validity -- and you recall there was an issue about whether we

23

challenged the scope or the validity or both, and we tried to

24

explain it.

25

doesn't and can't cover the song, but if for some reason the

What we said was the copyright in question, 51990,

UNITED STATES DISTRICT COURT

49
1

defendants took the position that it did, it would be invalid.

2

And we will address that at the Court's pleasure, but that is

3

the declaratory judgment claim as to which there is no right to

4

a jury trial and as to which no jury demand has been made.

5

So I think, to answer your first question, we agree that

6

if Your Honor believes that the record on summary judgment is

7

sufficient to decide the issues, if there are any disputed

8

issues of fact, Your Honor would decide them as the finder of

9

fact in that case.

10

THE COURT:

As to scope.

11

MR. RIFKIN:

As to the scope and as to the validity

12

of the copyright under Count 1 of the Complaint, the

13

declaratory judgment action.

14

can take that issue -- I think that takes the issue off the

15

table.

16

THE COURT:

That's correct.

So I think we

Well, let me -- scope, okay.

Validity,

17

you're the one who's got these other claims; so you can decide

18

what you want to do.

19

if I decide validity, does that take away one also issue

20

relevant to your state law claims so that under Beacon Theatres

21

and Dairy Queen I can't do that, I have to allow you to

22

maintain your right to jury trial first as opposed to this?

23

And that's the only reason I raised the issue.

24
25

I'm just trying to think whether or not,

MR. RIFKIN:

With respect to validity, if there are

issues that overlap, then, yes, I agree that there are issues

UNITED STATES DISTRICT COURT

50
1

that would require that a jury trial take place first.

2

do believe that the scope issue resolves all of these disputes

3

because I believe -- and I understand the Court hasn't made a

4

decision yet, but Your Honor's question certainly anticipated

5

most, not all, but most of the arguments we wanted to make

6

today.

7

But I

At one point I stood up during --

8

THE COURT:

Yes.

9

MR. RIFKIN:

-- counsel's argument.

I certainly

10

didn't mean to interrupt and be disrespectful.

I did want to

11

raise an evidentiary objection to the exhibit that Mr. Klaus

12

attached to his declaration in response to our motion to

13

strike, Exhibit 106.

14

Exhibit C to Mr. Klaus's declaration --

That exhibit, which I believe is

15

THE COURT:

That's not 106.

16

MR. RIFKIN:

17

THE COURT:

18

MR. RIFKIN:

106 is the --

Correct.
-- purported deposit copy.
Correct.

Your Honor, the prelude to

19

this is the presumption question, and as Your Honor has

20

discussed and as we briefed exhaustively, the presumption is a

21

limited presumption.

22

applies only to certain things.

23

the facts that are stated in the registration certificate.

It's a rebuttable presumption, and it
It applies to, for example,

24

There was a time when the defendants claimed that a

25

registration certificate, or what they said was a registration

UNITED STATES DISTRICT COURT

51
1

certificate which had Mildred Hill's name in it, somehow

2

entitled them to a presumption that she wrote the song.

3

have now admitted that that Exhibit 101 and Exhibit 103, that

4

they are not registration certificates, and we're grateful for

5

that admission.

6

They

And I believe today -- at least I made some notes -- they

7

now admit that Mildred did not write the lyrics to Happy

8

Birthday, that if any Hill sister wrote the lyrics to Happy

9

Birthday, it was Patty.

We've seen that issue in a number of

10

iterations from the defendants, but I think today the record is

11

clear that they contend that Patty, whose name doesn't appear

12

anywhere in any copyright records as the author of Happy

13

Birthday, that Patty wrote the lyrics.

14

But the reason that I stood up is I also said that they

15

are relying on Exhibit C to Mr. Klaus's declaration, which is

16

not the registration certificate.

17

THE COURT:

18

MR. RIFKIN:

19

THE COURT:

20

MR. RIFKIN:

21

THE COURT:

It's --

Before you go -Yes.
-- let me inject one of my questions.
Yes, of course.
Do you have any objection to Patty's

22

deposition testimony in which she says she wrote the lyrics or

23

the words to Happy Birthday to You?

24

MR. RIFKIN:

25

THE COURT:

No, Your Honor.
Okay.

UNITED STATES DISTRICT COURT

52
1

MR. RIFKIN:

We -- we believe that the Exhibit C to

2

which Mr. Klaus referred during his argument is not part of the

3

summary judgment record.

4

agree that it is a copy, an accurate copy of what is called the

5

Catalog of Copyright Entries.

6

And although it's not certified, we

There's two sources for copyright entries.

Before

7

sometime in the mid 1960s, they were published in volumes much

8

like Encyclopedias, and they were distributed to libraries all

9

over the country, and they were the primary source that the

10

public went to to look for a copyright, because most people

11

didn't have access in the early 1920s or '30s to the copyright

12

office's records in Washington.

13

So these books were published by the copyright office and

14

circulated all over the country, and they are entitled to a

15

presumption.

16

presumption that the certificates are entitled to.

17

Mr. Klaus points to that, but it's not -- and I think this is

18

important -- it's not in the summary judgment record.

19

only in his opposition to our motion to strike Exhibit 106,

20

which I will address in turn.

21

That is, they are entitled to the same
And

It's

But were it placed in the record, then we would have

22

provided a comparison, and the comparison would be the -- and

23

that was the Catalog of Copyright Entries for copyright 51990.

24

And I apologize that this is so complicated, but there's two

25

series of copyrights.

There's the 1935 copyright, and that's

UNITED STATES DISTRICT COURT

53
1

51990, and then there's the renewal in 1962.

2

And I think Mr. Klaus said -- and I think he's right, I

3

agree with him -- that the 1935 copyright is expired.

4

only relevance is what did -- what did Summy preserve when it

5

renewed the copyrights in 1962?

6

And its

And significantly, the copyright for the renewal for

7

51990, which is 306186, it's not in the record because 305- --

8

because the Catalog of Copyright Entries for 51990 also isn't

9

in the record.

10

But the renewal says in the copy -- in the Catalog of

11

Copyright Entries that the claim in the renewal, which is the

12

only certificate that matters now, is limited to the

13

arrangement written by Preston Ware Orem.

14

going to consider --

15
16

THE COURT:

MR. RIFKIN:

18

THE COURT:

Yes, Your Honor.
You're not saying that the renewal

certificates say --

20

MR. RIFKIN:

21

THE COURT:

22

MR. RIFKIN:

23

You're saying that the catalog says

that?

17

19

If the Court is

No, Your Honor.
I don't have that document.
You have -- technically you have

neither document in -- in the summary judgment record.

24

THE COURT:

25

MR. RIFKIN:

Right.
You do have before you, in response to

UNITED STATES DISTRICT COURT

54
1

our motion to strike Exhibit 106, you have a reference to the

2

Catalog of Copyright Entries for 1935 for 51990.

3

saying is this:

4

anything other than the motion to strike, then we would ask --

5

first, we would ask that it be excluded from the record on the

6

motion for summary judgment because it wasn't made part of the

7

record on the motion for summary judgment.

And all I'm

If Your Honor is going to consider that for

8

Your Honor knows this record is exhaustive.

The parties

9

went back and forth for days and weeks, completing it.

If

10

defendants had submitted that as part of the record, we would

11

have respond by submitting the catalog entry for 306186, which

12

says expressly and clearly that the claim is limited to an

13

arrangement by Preston Ware Orem.

14

We believe that the Court should allow us the opportunity

15

to supplement the record if it's going to consider the

16

Catalog of Copyright Entries for any purpose at all on the

17

summary judgment motion.

18

Now, I think, in fairness, the plaintiffs ought to be able

19

to complete the record by submitting that one page, the catalog

20

entries for 1962 for 306186, which Your Honor may look at and

21

say really ends the discussion.

22
23
24
25

THE COURT:

Is there also an equivalent to

Exhibit 105?
MR. RIFKIN:

Yes, there is.

The equivalent for

Exhibit 105, which if I'm remembering all this correctly in my

UNITED STATES DISTRICT COURT

55
1

head now, Exhibit 105 is 306185; is that right?

2

that's -- am I remembering that, or is that what you intended?

3

Because I don't know that that's correct now.

4

I think

306185 and 306186 are plaintiff's Exhibits 67 and 68, and

5

I prefer we use those because we've moved to strike the

6

defendant's exhibits because they're not certified.

7
8

THE COURT:

MR. RIFKIN:

10

12

105 is the, you know, the one that

assigned it 51990.

9

11

105 --

THE COURT:

Yes.
It's more like a spreadsheet looking

document.
MR. RIFKIN:

Yes, yes.

And there is -- if

13

Your Honor is asking the question, is there a -- is there

14

something like this for the 1962 --

15

THE COURT:

16

MR. RIFKIN:

Yes.

That's my --

I don't believe so.

What we have is we

17

have a copy of the catalog entries which we were able to obtain

18

from the copyright office.

19
20
21
22

THE COURT:

1962 but not a separate document of the kind embodied in 105.
MR. RIFKIN:

The handwritten record, no, not like

this for 306185 or 306186, the two renewals.

23

THE COURT:

24

MR. RIFKIN:

25

So there's a separate catalog entry for

Okay.
Forgive me.

question, and I apologize.

I misunderstood your

So if -- if Your Honor would like

UNITED STATES DISTRICT COURT

56
1

to hear some of my thoughts on some of the questions you asked

2

of Mr. Klaus, or if Your Honor has any questions --

3
4

THE COURT:

any evidentiary objection to the use of the Amended Complaint.

5
6

MR. RIFKIN:

Of -- of our Amended Complaint,

Your Honor?

7
8

Let me ask you whether or not you have

THE COURT:

No, no, no, no.

No, no, no.

Of the

Amended Complaint in Hill Foundation v. Summy.

9

MR. RIFKIN:

10

THE COURT:

11

MR. RIFKIN:

Exhibit 50?
Yes.
We think Exhibit 50 is admissible, but

12

we think it needs to be read in conjunction with Exhibit 51,

13

which is, frankly, the more important of the two.

14

is -- if anything, it's a statement by the plaintiff in that

15

case.

16

it's -- it's allegations in a Complaint, which the defendant is

17

free to deny.

18

Exhibit 50

It's not -- it's not evidence, and as Your Honor knows,

And here the Hill Foundation made the allegations that

19

Mr. Klaus discussed with Your Honor, and frankly I think it's

20

clear from the Complaint that what they were selling was the

21

right to various piano arrangements.

22
23

THE COURT:

And hence you're not going to object

to --

24

MR. RIFKIN:

25

THE COURT:

No.
-- its consideration.

UNITED STATES DISTRICT COURT

57
1

MR. RIFKIN:

No.

I will note here very briefly,

2

because I think Your Honor understands our argument, Mr. Klaus

3

seemed to think that we were basing our argument on the

4

distinction between a license and sale.

5

Whether it's a license or sale, or anything else for that

6

matter, the -- the transfers from Jessica to Summy in 1934 and

7

1935 -- and by the way, let me correct one statement.

8
9
10
11

Patty Hill died in 1950.

It's immaterial.

She was alive in 1934 and 1935

when Jessica made those assignments, and she was alive as well
in 1942 when the Hill Foundation sued Summy in Exhibit 50.
Mildred died many years before.

She died in 1916; so she

12

was no longer alive.

13

or executrix, it would be as Mildred -- I'm sorry.

14

was acting on anybody's behalf, it would be on behalf of

15

Mildred.

16

So if Mildred was acting as anyone's heir
If Jessica

But what I think is even more pertinent is the answer

17

filed by Summy, the defendant's predecessor.

18

answer, referring to the paragraph --

19

THE COURT:

20

MR. RIFKIN:

21

And in the

That's 51?
This is Exhibit 51, yes, Your Honor.

This is a binding judicial admission, unlike -- unlike an

22

allegation in a Complaint by a plaintiff who is not here

23

anymore, and answered by a defendant whose successor is

24

claiming to own the copyright.

25

acquired -- hence, the difference between a license and an

In it Summy says that it

UNITED STATES DISTRICT COURT

58
1

acquisition -- but it says it acquired the rights to -- now I'm

2

quoting from paragraph 18 on page 684 of Exhibit 51 -- various

3

piano arrangements of the said musical composition,

4

Good Morning to All.

5

And we think it could not be any clearer that what they

6

bought was what we've said all along, which was the rights to

7

various piano arrangements but not to the lyrics themselves.

8

The lyrics to the song are not mentioned anywhere in the

9

Complaint.

They are not mentioned anywhere in the Answer

10

except where Summy denies that Patty Hill wrote the Happy

11

Birthday lyrics.

12

THE COURT:

Let me ask you this.

So this evidence

13

would be, in your mind, relevant not only to the question as to

14

whether or not any rights to the lyrics had ever been -- had

15

been transferred to Summy as of the time of the registration,

16

but it also may be circumstantial evidence tending to show that

17

the registration did not include the lyrics.

18

on that?

19

MR. RIFKIN:

Exactly.

Is that your take

And I listened very carefully

20

to Your Honor's questions in the very beginning of Mr. Klaus's

21

presentation, and I thought they were particularly cogent when

22

Your Honor asked him about paragraph 3 of exhibit -- of the

23

registration certificate --

24

THE COURT:

25

MR. RIFKIN:

Question Number 3.
Question Number 3 from the registration

UNITED STATES DISTRICT COURT

59
1

certificate where it identifies the author, and then Number 7

2

where it identifies the scope of the work that's claimed.

3

Your Honor quite correctly said they now admit -- and they've

4

admitted in their brief, and now they've admitted again

5

today -- they now admit that Preston Ware Orem didn't write the

6

words and that Mrs. R.R. Forman didn't write the words.

7

now seem to think that Patty wrote the words.

8
9

And

They

Patty's name -- even if Your Honor admits Exhibit 106,
Patty's name isn't on Exhibit 106.

It's not on Exhibit 44,

10

which is 51988.

11

for that matter, it's not on the renewals which are Exhibits 67

12

and 68.

13

that Your Honor has been asked to draw a presumption from.

14

It's not on Exhibit 48, which is 51990.

And

Patty's name doesn't appear anywhere in any record

And so I think, when you look at the -- at the Answer that

15

Summy filed, it is abundantly clear that the transfer from

16

Jessica was limited to the various piano arrangements which is,

17

of course, the series of copyrights that they began to register

18

in late 1934 and registered until the end of 1935.

19

And it does also inform the question whether Summy claimed

20

a copyright in the lyrics that were written by someone other

21

than the author that's identified.

22

I think the answer is no.

And the suggestion that there was a mistake, I think,

23

frankly, when you look at Exhibit 51 and you put it into the

24

context of what happened after that, which as Your Honor knows

25

includes a series of lawsuits that were filed by not just the

UNITED STATES DISTRICT COURT

60
1

Hill sisters but also by Summy, none of which ever asserted any

2

claim under either of the two copyrights that now

3

Warner/Chappell says were mistaken, and there was no attempt to

4

correct it in 1962 when it was renewed.

5

THE COURT:

What about the assertion by Mr. Klaus

6

that in your previous versions of your Complaint that you have

7

admitted that E51990 includes the lyrics?

8
9

MR. RIFKIN:

I disagree that we admitted it.

I

think there was some confusion regarding what we alleged.

I

10

think -- I think we tried to perhaps cover the possibility that

11

the lyrics may have been included in the song.

12

We really don't.

13

plaintiffs, not the defendants, and respectfully I don't think

14

Your Honor yet has the ability to decide what was the deposit

15

copy for 51990.

We don't know.

And by "we" I mean none of us here.

16

THE COURT:

17

MR. RIFKIN:

Not the

Of course, you underestimate my powers.
I may well and perhaps at my peril,

18

Your Honor; so I won't suggest that.

19

this:

20

may not contain the familiar lyrics to the song Happy Birthday

21

to You.

22

that, without the deposit copy, the defendant can't prove the

23

scope of the copyright.

24
25

But we -- we do know

We know that the deposit copy is missing.

It may or it

We think that there's a strong line of cases that says

THE COURT:

But as a matter of evidence law, if the

original is unavailable through no fault of the party

UNITED STATES DISTRICT COURT

61
1

proffering it in this case, the defendants, then we can receive

2

evidence on the issue as to what that deposit copy might have

3

been.

4

MR. RIFKIN:

I agree, and that's with a couple of

5

provisos.

6

authenticated and properly identified with a witness who has

7

some relevant knowledge, that it is otherwise admissible, and

8

that it is supported by testimony that it is a replica of the

9

work that's deposited.

10

The first proviso is that the evidence is properly

Mr. Klaus said -- and I took careful notes, but he also

11

says it in a brief.

12

Exhibit 106 is an exact copy of what was deposited with the

13

copyright office.

14

with the copyright office.

15

correct, but at least we now know --

16

He says they are no longer claiming that

He says it's close to what was deposited

THE COURT:

There's no testimony that that's

In all fairness to Mr. Klaus, I don't

17

believe that he meant that in a way that you're interpreting

18

it.

19

no material difference between the two and that he certainly is

20

not conceding that, gee, maybe the lyrics were there or not

21

there.

22

argument.

23

I think he meant it in a way that there certainly would be

I don't think it would be a fair interpretation of his
I didn't take it that way.
MR. RIFKIN:

If he intends to mean that this is a

24

representation of what was deposited, it would still be

25

inadmissible for a couple of reasons, as we briefed in our

UNITED STATES DISTRICT COURT

62
1

motion to exclude the evidence, the principal reason of which

2

is it can't be authenticated under any of the rules.

3

The defendants claim that the photocopy is an ancient

4

document, but there's no attempt whatsoever to satisfy the

5

requirements for admissibility of an ancient document.

6

admissible as an ancient document, someone has to identify what

7

condition it was in when it was found, where it was found, that

8

it would be found where it's expected.

9

To be

For example, we purchased a number of fairly old editions

10

of some of the books that were published in the early part of

11

the 20th century.

12

1921 printing of the book Song Stories for the Kindergarten,

13

and it is obvious from its condition that it is an ancient

14

document.

15

know it's more than 20 years old.

16

in dating documents certainly could.

17

This happens to be a unique one.

This is a

I couldn't date it, but I know -- with certainty I
But someone who is an expert

The only thing we have for Exhibit 106 is a photocopy

18

which could have been made last year, a decade ago, or

19

yesterday.

20

where it was found, or anything about it.

We simply don't know.

21

THE COURT:

22

MR. RIFKIN:

23

THE COURT:

We don't know who found it,

According to Rule 803.16 -Yes, Your Honor.
-- which talks about statements in

24

ancient documents, a statement in a document that is at least

25

20 years old and whose authenticity is established, those are

UNITED STATES DISTRICT COURT

63
1

the only requirements of the rule.

2

not?

3

So is it 20 years old or

And the authenticity, you don't need somebody, I would

4

think, to say I was there in 1935 and I saw this thing print up

5

and that's what it was.

6

indicia tending to show that it may, in fact, be that document

7

and was generated back in 1935, among other things, the

8

testimony regarding the publication numbers.

9

MR. RIFKIN:

You could have other circumstantial

And I want to come to that in a moment,

10

but before we get to Exhibit 803, there's a predicate for that,

11

which is to establish the authenticity of the document as an

12

ancient document.

13

have to be met.

14

we discuss in our motion to strike, which says that an ancient

15

document is not a self-authenticating document.

16

simply say here it is, it looks like it is old, and you can

17

accept it for that.

18

901(b)(8), and we cite Columbia First Bank v. United States.

19

It's a federal claims court decision from 2003.

20

In other words, there's two criteria that
There's the criteria of Rule 901(b)(8), which

You can't

It must be authenticated under Rule

Independent of that, once the document is authenticated by

21

a witness who can describe its condition when it was found,

22

where it was found, and that it's at least 20 years old -- all

23

three of those conditions have to be met by a witness with

24

knowledge, not self-authenticated.

25

provided by a witness with knowledge under Rule 901(b)(8).

The evidence must be

UNITED STATES DISTRICT COURT

64
1

Then we look at whether the hearsay exception of Rule 803.13

2

applies.

3

And respectfully, Your Honor, we don't get past Rule

4

901(b) for Exhibit 106 at all.

So I just want to make sure we

5

put the cart behind the horse.

I think, before we look at the

6

hearsay exception, the ancient document itself has to be

7

authenticated by a witness with knowledge.

8
9

And even after we moved to exclude it, no one came forward
and said this was the condition I found it in.

This is where I

10

found it.

I found it where I would expect to find it if it was

11

an authentic document, and it's at least 20 years old.

12

we're asked to do is assume from the fact that it has a

13

copyright date on it, that it must be at least 20 years old.

14

But as we explained, Your Honor, the copyright date is

All

15

neither the date of printing nor the date of publication.

16

It's -- by law, it must be the date on which the earliest

17

copyright in the work is claimed.

18

And so if this particular sheet music was printed in 1993,

19

for example -- and I'm not suggesting that it was.

20

know.

21

was 1935, the copyright date would have to be 1935.

22

I don't

But if it was printed in 1993, if the earliest copyright

THE COURT:

You're arguing in terms of admissibility

23

as to the weight issue.

That's different.

Admissibility is

24

only whether or not there's some evidence upon which one could

25

infer the satisfaction of the foundational facts.

UNITED STATES DISTRICT COURT

65
1

And in this case, among other things -- I'm sure Mr. Klaus

2

would point to that publication number, the -- I forget the

3

numbers now, 3075 and 3076, and using that as circumstantial

4

evidence for purposes of admissibility, which is not the same

5

as whether or not it must be given the weight that is asserted

6

it ought to be given.

7

there.

8
9

MR. RIFKIN:
briefed this.

So I think we need to make a distinction

And I will -- well, Your Honor, we

I don't want to take up any more of the Court's

10

time on the question of the need for an authenticating witness

11

to provide authenticating facts.

12

about the engraving number, 3075 --

13

THE COURT:

14

MR. RIFKIN:

But I will make one comment

Yes.
-- which precedes the engraving number

15

for 51988, 3076.

16

The problem is there's no one who's able to say at all that a

17

print was made from that engraving plate, 3075, in the case of

18

Exhibit 106, much less when it was made.

19

was printed.

20

No doubt they were sequentially engraved.

We don't know when it

Even if we knew when it was printed, publication is a very

21

specific term under the copyright law, and it requires a

22

demonstration of dissemination, widespread dissemination, which

23

again is completely absent from 30- -- from Exhibit 106.

24

simply isn't any evidence of -- of where that work was

25

published, to whom it was published, how many copies of it were

UNITED STATES DISTRICT COURT

There

66
1

published, or anything.

2

exists quite frankly in a vacuum.

3

THE COURT:

4

Even if it were included in a deposit

copy, that would satisfy the requirement for -THE COURT:

I'm not saying that that's what it is,

but if it were, you admit that that would be sufficient?

9
10

What if it were included as a deposit

MR. RIFKIN:

7
8

But now --

copy?

5
6

It is -- it is simply a document that

MR. RIFKIN:

That would certainly satisfy the

requirement for publication, yes, it would, Your Honor.

11

THE COURT:

12

All right.

MR. RIFKIN:

But now turning to the substance of

13

Exhibit 106, which I think is a more pertinent question and one

14

I think Your Honor wanted to address, it seems to me that

15

Exhibit 106 is not really all that significant because -- and

16

let's assume again -- let's assume that 106 is a copy of what

17

was deposited with 51990 or a copy of what was published.

18

It includes the lyrics.

Okay.

Fine.

We know a few

19

things about the lyrics.

Now, we know that Orem didn't write

20

them.

21

We know that Orem is the author of whatever the copyrighted

22

work was under 51990.

23

106, we know that Mildred didn't write the lyrics.

24

that Patty -- the defendants claim that Patty wrote the lyrics,

25

but Patty's name isn't on 106.

We know that Orem's name isn't anywhere on the document.

We know that Mildred, whose name is on
We know

So 106 doesn't prove --

UNITED STATES DISTRICT COURT

67
1

THE COURT:

You're willing to -- you're willing to

2

admit that Patty wrote the lyrics?

3

MR. RIFKIN:

4

No.

I think there is evidence that

Patty wrote the lyrics.

5

THE COURT:

6

MR. RIFKIN:

Okay.
I suspect that the lyrics were written

7

by lots of folks.

There is -- as Your Honor notes from reading

8

the briefs, there is a statement that was attributed to Jessica

9

in a magazine, in a 1950 edition of American Family, in which

10

she tells the story of sitting around the hearth one evening at

11

the family home.

12

And Jessica says to her sister, Mildred, play that slowly.

13

going to sing a new song.

14

the very first time in the family's living room right in --

15

Mildred was at the piano, playing the piano.

THE COURT:

I'm

And she says she performed it for

It doesn't say she created it.

She says

16

she sang it for the first time.

17

briefing said she created it, and I tried to look for that

18

practically until my eyeballs fell out because the printing was

19

so bad I had trouble reading it, but I didn't see anything

20

about creating it.

21

MR. RIFKIN:

I know at some point the

She's the first -- she said she told

22

Mildred to play it slowly because apparently she was creating

23

it then and there.

But Mildred --

24

THE COURT:

25

MR. RIFKIN:

You are reading into that.
I am reading into that, but I do also

UNITED STATES DISTRICT COURT

68
1

want to say one other thing about Jessica.

2

Exhibit 87, which is the transcript of the deposition that was

3

given by Patty and Jessica in Jessica's lawsuit against

4

Sam Harris over the song As Thousands Cheer, which for the

5

longest time I thought was Thousand Cheers, but now I know is

6

As Thousands Cheer, which I think is being remade on Broadway

7

as we speak, I understand Jessica testifies in that

8

deposition -- and now I'm referring to pages 35 and 36 of the

9

deposition transcript -- that Patty wrote the words and Mildred

10
11

In -- in

wrote the music to the song Good Morning to All.
I think that that's consistent with Patty's testimony

12

elsewhere in the deposition that generally Mildred was the

13

composer and Patty was -- the word she used was the poetess.

14

Patty says that she wrote the words to Happy Birthday to You;

15

so I think that there is at least conflicting evidence there.

16

The strongest evidence there is appears to us to be that Patty

17

claimed to write the words "Happy Birthday to You, Happy

18

Birthday to You."

19
20

THE COURT:
off your point.

21

MR. RIFKIN:

22

THE COURT:

23
24
25

I don't mean to have sort of knocked you

No, no, no.
I understand that now.

You can go back

and finish up your point.
MR. RIFKIN:

But -- but there's no evidence

anywhere -- none, zero, none -- of an assignment by Patty, or

UNITED STATES DISTRICT COURT

69
1

for that matter Mildred, of the song Happy Birthday to Summy,

2

ever.

3

There is a statement in the brief on page 38, and I was

4

looking for it.

I thought I brought the brief with me because

5

I wanted to read it.

6

THE COURT:

7

MR. RIFKIN:

Page 38?
On page 38 of the brief, this is in the

8

defendant's section of one of the arguments.

9

the defendants say a few things.

And on page 38

They say that -- this is

10

where in the brief they say that Forman and Orem did not write

11

the words.

12

for hire.

13

paragraph which begins on line 7 of page 38.

14

They say that Forman and Orem were their employees
And I'm reading in the -- in the first full

They say that the -- Mildred and Patty were not employees

15

for hire.

16

they say this.

17

Patty's rights in the work.

18

referring to the song Happy Birthday.

19

They say it's undisputed that neither was.

And then

They say Summy was entitled to Mildred and/or
And by "the work," they're

As a result of the license he had received from them, them

20

being Mildred and Patty, not because they were employees for

21

hire.

22

citation to anything at all.

23

plaintiff's argument that Summy was entitled only to the text

24

that Orem performed and wrote fails.

25

There's no citation to any evidence.

THE COURT:

There's no

It simply goes on to say that

Slow down.

Slow down.

UNITED STATES DISTRICT COURT

You're reading.

70
1

I'm reading with you.

2

all of this.

3
4

But my reporter has to actually write

MR. RIFKIN:

I apologize.

In line 14 they just simply go on to dispute the

5

plaintiff's argument that Summy was entitled only to the text

6

that Orem or Forman wrote.

7

But they say that Summy was entitled to Mildred or Patty's

8

rights in Happy Birthday as a result of the license it received

9

from Mildred and Patty.

Your Honor, I know of no evidence in

10

the record anywhere of any license from Mildred or Patty,

11

period.

12

We have never disputed that sometime before 1893 Mildred

13

and Patty together transferred their rights to a collection of

14

songs they wrote called Song Stories for the Kindergarten, so

15

Summy could publish in connection with the 1893 Chicago World's

16

Fair in response to popular demand from elementary

17

schoolteachers for this apparently very, very well-known work.

18

And Summy, of course, published it, and that work includes Good

19

Morning to All, which as everybody knows has the melody but not

20

the words for Happy Birthday.

21

Everyone also knows there's no dispute that the melody

22

itself, the copyright to the melody expired in 1949.

23

there's no dispute that, if somebody played on a stage for all

24

the money in the world, the melody that Mildred wrote in Good

25

Morning to All, it would not be protected by any copyright.

UNITED STATES DISTRICT COURT

So

71
1

We -- we know that that work was republished in 1896

2

presumably pursuant to some rights that Summy had, although

3

there's no evidence of it, but it's not disputed.

4

And then it was published again in 1899 in another group

5

of songs called Song Stories for the Sunday School.

6

again Good Morning to All, Mildred's melody, Patty's words.

7

"Happy Birthday" isn't in any of them.

8
9

This time

None of it.

The next assignment of rights that we know of is the
assignment in 1934 and 1935 as to which we have no evidence

10

except what Patty says in the Complaint -- I'm sorry.

11

Jessica says in the Complaint and more importantly what Summy

12

says in the Answer, that the transfer of rights -- whether it

13

was a license or a sale, is immaterial -- that the transfer of

14

rights was limited to various piano arrangements of the said

15

musical composition Good Morning to All.

16

What

The dispute in that case was not over the song Happy

17

Birthday to You.

The dispute in that case was over the use of

18

that transfer, whether it could be used, as the plaintiff

19

understood, for sheet music to be sold, or it could be used for

20

public performances.

21

nineteen -- in the lawsuit that was filed in 1942, in that

22

lawsuit, which is Exhibit 50, and the Answer is Exhibit 51.

That was the essence of the dispute in

23

We know of no other assignment until 1944 when the

24

Hill Foundation assigned to Summy whatever rights it acquired

25

from Mildred and -- I'm sorry -- from Patty and Jessica.

UNITED STATES DISTRICT COURT

72
1

There's one too many Hill sisters to remember.

2

Your Honor, I'm getting older, and my memory isn't as good as

3

it used to be.

4

Like you,

But I believe Your Honor asked the question or made a

5

comment about how the assignments appeared to be, and we agree.

6

The assignments appear to be an assignment of whatever interest

7

Patty and Jessica had in certain enumerated copyrights which

8

they then assigned to the Hill Foundation.

9

then assigned those interests to -- to Summy.

10

The Hill Foundation

But it doesn't fix the problem with the 1935 copyrights

11

because it doesn't claim that they had any interests in the

12

copyrights.

13

the Ninth Circuit case which talks about the need for a writing

14

in order to transfer a copyright.

15

But more importantly we cite the Konigsberg case,

And what the Court says there is that, in order to protect

16

not only the author but also the public, which would obviously

17

include the plaintiffs, transfer of copyrights have to be in

18

writing.

19

writing which purported to confirm a prior oral agreement that

20

was made three and a half years earlier was too late in time to

21

be valid.

22

And the Ninth Circuit also said in that case that a

So we know two things from the Ninth Circuit's decision in

23

Konigsberg.

We know that an assignment has to be in writing,

24

and there's no evidence, other than the '44 assignments, of any

25

assignments that are in writing.

And we know that an

UNITED STATES DISTRICT COURT

73
1

assignment can't relate back more than three and a half years.

2

In fact, if it were only three and a half years, it would

3

already be untimely.

4

There is nine years after the fact.

There is no evidence in any of the briefings which

5

suggests that a written assignment can be given some

6

retroactive effect.

7

more than three and a half years old and it purports to confirm

8

a prior oral assignment, which the '44 assignments did not do,

9

it's already too late and invalid.

The Ninth Circuit says, if the writing is

10

So when we put all of that together, there is no

11

assignment of any rights from Patty or Jessica to the lyrics

12

that, if you accept Patty's testimony as proof of her

13

authorship of the lyrics, transferred her rights, whatever

14

rights she may have had in this song, to Summy, ever.

15

And, in fact, that's consistent not only with what Summy

16

said in the copyrights it registered in 1935, and I believe the

17

question Your Honor asked suggested in my mind the right

18

approach.

19

anything from what they say, knowing what we now know about

20

Preston Ware Orem not writing the lyrics, that they did not

21

claim a copyright in the lyrics that the author identified

22

their employee for hire, Orem, did not write.

23

It certainly seems to me that you can't infer

It is also consistent with what happened after 1935 when

24

both the Hill sisters and Summy filed a series of lawsuits over

25

unauthorized performances of the song Happy Birthday to You in

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1

which they only ever asserted the copyright to the melody from

2

Good Morning to All, the 1893 copyright and its renewal which

3

expired in 1949.

4

and by Summy, after the copyrights were registered, there was

5

never a claim that performing Happy Birthday to You or

6

publishing it in a song book without Summy's permission or

7

without the Hill sisters' permission violated 51988 or 51990.

8

And, finally, when the copyright to Good Morning to All

9
10

In those lawsuits by both the Hill sisters

expired in 1949, there hasn't been another lawsuit filed.
So when we look at that entire trail of facts that are now

11

undisputed, we know that Summy says it acquired rights to

12

various piano arrangements to a musical composition.

13

that it published -- it copyrighted works that were done by two

14

employees for hire who they admit -- that is, the defendants

15

admit -- did not write the lyrics to Happy Birthday.

16

know that they've never, ever, ever sued anybody for violating

17

the copyright to Happy Birthday to You even when the song Happy

18

Birthday to You was used without permission.

19

back to Good Morning to All.

20

We know

And we

It all relates

And finally on that point, not to belabor it, but the

21

testimony that Patty gives in the Hill v. Harris case is

22

particularly instructive there.

23

identify the -- the work, she only talks about Good Morning to

24

All and a series of arrangements -- a series of adaptations

25

until she's reminded by her lawyer, "What about Happy Birthday

She says, when asked to

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to You?"

2

afterthought.

3

she regarded as her own.

4

And she says, "Oh, yes, that one too."

It was an

Happy Birthday to You simply was not a work that

And as she said in the two exhibits that we've also

5

provided to the Court, the 1950 publication which I apologize

6

for, the American Family publication.

7

terrible print.

8

there and then she says again in an article that appeared in

9

Time Magazine in 1935, she said the song Happy Birthday

Admittedly, it's

It's the best we could find.

But she says

10

belonged to the world.

11

which we now know is admitted -- or at least there's no

12

objection to its admission -- she said I taught this song to

13

the kids to be used at every birthday celebration in the

14

school.

15

way.

16

sing it outside the school and outside her classroom.

17

And what she said in her deposition,

There's no indication that she limited that in any

There's no indication that she told the children not to

In fact, to the contrary, we can -- we can say that she

18

knew that the kids sang it all the time.

19

without fear or any trepidation that the kids went home and

20

sang it at their own birthday parties outside the school and

21

long after they graduated from that elementary school.

22

THE COURT:

And we can say

Are you now getting into the issue of

23

divestive publication?

24

MR. RIFKIN:

25

answer any other questions first.

I am, Your Honor.

And I'm happy to

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THE COURT:

I don't think you need to get into that.

2

I don't really need your explanation on that, and I have a

3

clear view of that.

4

we have to wrap this up.

5

Let me just ask you one last question, and

MR. RIFKIN:

Your Honor, before -- before then,

6

there is one case that I'd like to just mention.

It's

7

discussed in the -- in the American -- in the Academy of Music

8

case.

9

mention it only by name to refer to it, if Your Honor has any

We frankly didn't have room to brief it, but I will

10

interest in this at all.

There's a case called Brown v. Tubb,

11

T-u-b-b, an Eleventh Circuit case that's cited in the Academy

12

of Motion Pictures case, which is fully consistent with the

13

position I've taken.

14

been here long enough trying your patience.

I won't elaborate more.

15

THE COURT:

16

MR. RIFKIN:

17

THE COURT:

We've already

Let me ask this one question -Yes.
-- which was the same question I asked

18

to Mr. Klaus.

19

without further briefing, that you believe that the question of

20

the scope is going to be a question of law for the Court to

21

decide regardless of whether it may involve extrinsic factual

22

record?

23

You folks are in agreement, at least right now

My next question to you is, beyond that, to the extent if

24

needed for -- and if it is needed that we go beyond the scope

25

and go into inquiries of issues of divestive publication,

UNITED STATES DISTRICT COURT

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1

abandonment, authorship, transfers, and so forth, that would

2

also be raised within the context of the declaratory relief

3

claim but -- and I haven't thought this totally through -- may

4

or may not have some connection to your other coercive claims.

5

Are you willing to have that -- and if I determine there

6

is a factual dispute so that we need a trial, are you willing

7

to allow a court trial of that to precede that of whatever jury

8

trial on the remaining coercive claims?

9
10

MR. RIFKIN:

Your Honor, I would -- I would ask for

a moment to confer with my colleagues.

11

THE COURT:

12

MR. RIFKIN:

Of course.
And while I do, before I just take a

13

very brief moment to confer with them, I was asked to remind

14

the Court of one other thing which bears on the presumption.

15

We mention it in the brief, but there was a prior copyright --

16

actually, two prior copyrights -- of the song Happy Birthday to

17

You, both the music and the words.

18

There was a publication in 1911 which does not attribute

19

authorship to Mildred or Patty or anybody associated with Summy

20

at all.

21

sheet music with the song, the words, again which didn't

22

attribute authorship to Mildred or Patty or anyone associated

23

with Summy at all.

24

copyrights, 1911 and 1924, would be superseding presumptions of

25

authorship.

And there was a subsequent publication in 1924 of the

Both of those publications, by obtaining

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1

But we frankly don't think the Court needs to resolve that

2

question to resolve the question of the scope of 51990 because

3

I think it's clear.

4

THE COURT:

By preceding presumption, are you

5

suggesting that, if there was a copyright to which there is a

6

presumption of validity as to the lyrics back in 1911, that

7

therefore ergo there cannot be a valid copyright claim to the

8

lyrics in 1935?

9

MR. RIFKIN:

10

THE COURT:

11

MR. RIFKIN:

12

No, no, no.
That would not be the case.
I know.

There's a difference between

originality and --

13

THE COURT:

14

MR. RIFKIN:

And novelty.
And uniqueness.

I recognize that.

15

That wasn't what I was saying.

16

Court were inclined to draw a presumption from either 51988 or

17

51990 that Mildred, whose name is mentioned in the catalog of

18

copyrights but not in 51988 or 51990, at least the evidence we

19

have so far in the record, except for Exhibit 106 which is in

20

dispute, there are two prior copyrights which claimed

21

authorship somewhere else.

22

presumption that Mildred wrote the words.

23

All I'm saying is this:

If the

So it would undermine the

But again, as I said, Your Honor, I don't think we need to

24

go there because I think we've addressed the fact that the

25

presumption is so overwhelmingly rebutted by our evidence.

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1

THE COURT:

2

MR. RIFKIN:

3

THE COURT:

4
5

Why don't you confer with your -I will.
-- colleagues.

(Counsel confer sotto voce.)
MR. RIFKIN:

Your Honor, we are prepared to accept

6

that as well, that Your Honor would decide these issues before

7

a jury would be asked to hear the other parts of the case.

8

THE COURT:

9

MR. RIFKIN:

10
11
12
13

Okay.

All right.

Very good.

And thank you for letting me confer

with my colleagues.
THE COURT:

Thank you very much, Counsel.

I do

appreciate your very fine argument.
You know, I've always said it's always a pleasure to have

14

good lawyers argue before you rather than less good lawyers.

15

So I really appreciate it, and I think you have helped me, both

16

sides, in crystallizing the issue.

17
18
19

Mr. Klaus wants to say something else.
MR. KLAUS:

I can feel it.

Your Honor, may I just -- thank you.

With the Court's indulgence, may I make just a few brief --

20

THE COURT:

Of course.

21

MR. KLAUS:

-- just a few brief --

22

THE COURT:

Yes, of course.

23

MR. KLAUS:

Thank you, Your Honor.

24
25

Couple of points with respect to -- I'm working backwards
from my notes.

With respect to the 1911 and 1924

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80
1

registrations, I don't think there's any dispute.

2

heard counsel agree with this.

3

system where the first person to register the patent gets the

4

copyright.

5

I think I

This is not like a patent

Also, the fact that those were published in 1911 and 1924,

6

to the extent they claim that that creates some sort of issue

7

of fact about whether the Hill sisters copied the lyrics to

8

Happy Birthday to You from someone else, I point out that the

9

evidence from Patty's deposition testimony, which they have no

10

objection to, says that she created the lyrics while she was

11

teaching at the school in Louisville, Kentucky.

12

And if Your Honor looks at Exhibit 87, which is the

13

deposition, pages 3 through 4 make it clear that Patty's time

14

at that school was from 1887 until either 1905 or 1906 when she

15

moved to New York City to teach at the Columbia University

16

Teachers College.

17

The second point, there was a lot of discussion by

18

Mr. Rifkin about there being some confusion about what was

19

transferred, what was not transferred, where is the assignment

20

in 1934 and '35.

21

which is, as always, an entertaining opinion by Judge Kozinski.

22

I think that's the one that said lawyers deal with contracts,

23

not lunch, something along those lines.

24
25

There was a discussion of the Konigsberg case

But what I'd ask Your Honor to look at is the Magnuson v.
Video Yesteryear case, the Lenny Bruce case, which in

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1

conjunction with the Second Circuit's decision in Eden Toys, a

2

long line of authority, stands for the proposition that where

3

there is no disagreement between the assignor, the assignee,

4

the licensor, licensee, that a -- that it would be anomalous to

5

allow a third party, as in the -- in the position of the

6

plaintiffs, to object.

7

And, in fact, footnote number 1 of the Magnuson decision

8

specifically distinguishes Konigsberg on that basis on the

9

ground that in that case there was a dispute between Anne Rice

10

and the producers she had met with over lunch to discuss the

11

movie project in question.

12

the Court says in the Magnuson case is there no dispute between

13

the transferor and the transferee whether --

And what Judge Nelson's opinion for

14

THE REPORTER:

Your Honor, he's reading too fast.

15

THE COURT:

Slow down.

16

MR. KLAUS:

-- whether the transfer actually

17

occurred or the terms on which it occurred.

18

dispute in this case between my client, any of my client's

19

predecessors, and anyone representing the Hill sisters as to

20

whether or not Summy had -- Summy was entitled to make the

21

registration in 1935 or not.

22

There is no

And I think under the logic of Eden Toys and the Magnuson

23

case, that would plainly -- that would plainly say that they

24

have no standing to -- to object on that ground.

25

Mr. Rifkin suggested that Your Honor look not just at the

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82
1

Complaint in the Hill Foundation against Summy case but also

2

the Answer which was Exhibit 51.

3

should look at the Answer.

4

We agree that Your Honor

I'd just point out that I believe Mr. Rifkin said there

5

was no mention of Happy Birthday to You or lyrics of Happy

6

Birthday to You.

7

said, referring to the allegations in paragraph 10th, that was

8

one of the ones I talked about during my presentation, Summy

9

admitted and averred that one of the songs that was contained

10

within the licensed works was Good Morning to All, which with

11

different words later became entitled Happy Birthday to You.

In fact, paragraph 6, which is of Exhibit 51,

12

So I don't think that there is -- I think that, when

13

counsel said that there was an admission by Summy in the Answer

14

that somehow the only thing that was covered were the -- were

15

musical notes in arrangements, simply is not borne out.

16

On a couple of evidentiary points, Your Honor, Mr. Rifkin

17

said that he'd like the opportunity to submit the Catalog of

18

Copyright Entries from 1962 because he says it doesn't say

19

anything about the text.

20

happy to submit it if the Court would like, with supplemental

21

briefing, the 1962 Catalog of Copyright Entries, which the

22

plaintiffs have -- they have both the 1935 and 1962 because

23

they produced them to us in discovery.

24
25

In fact, the copy, which we'd be

The 1962 one says it's an arrangement with text, which
matches precisely, Your Honor, Exhibit No. 68, which is the

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1

application.

2

THE COURT:

I'm at a disadvantage because I don't

3

have that document.

I will ask counsel to submit that

4

document, and I will look at it myself.

5

MR. KLAUS:

6

MR. RIFKIN:

7

THE COURT:

That's fine.

8

MR. KLAUS:

If Your Honor had any questions about

9

Okay.
We will, Your Honor.

the ancient document Exhibit 106 with respect to the

10

authenticity argument, we'd point out in addition to the fact

11

that the document is self-authenticating and it matches the

12

deposit copy records, that you have the -- the sequential

13

numbering, which has nothing to do with engraving plates,

14

Your Honor.

15

expert admitted in his deposition.

16

It's not a matter of simple engraving plates.

17

It's the publication number which is what their
It's a publication number.

I would also point Your Honor to their expert,

18

Professor Sachs's report, which is Exhibit 111 in the record,

19

paragraph number 28 where Professor Sachs relied on what is now

20

Exhibit 106, and he didn't question its -- its authenticity.

21

And in light of all the other evidence showing the

22

publication of sheet music, including Exhibits C and D to

23

Mr. Rifkin's declaration on the motion to strike which are

24

simply later publications of the same sheet music with the same

25

lyrics from later years, we'd submit there can't be any dispute

UNITED STATES DISTRICT COURT

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1

as to the authenticity of the document.

2

THE COURT:

Do you still want to have an opportunity

3

to further brief the Court on the issue as to whether or not

4

the question of scope is to be decided by the Court even if

5

there are factual issues?

6

beginning when we talked about it, and I didn't know whether

7

you had intended to reserve that point.

8
9

Because you sort of said that at the

I think Mr. Rifkin -- I don't think Mr. Rifkin necessarily
wants to brief any further.

He's willing to say that that's

10

what ought to happen.

11

If you want to brief it, I'll give you an opportunity to do

12

that.

13

But I want to give you that opportunity.

MR. KLAUS:

I don't believe we need to brief it,

15

THE COURT:

Okay.

16

MR. RIFKIN:

17

THE COURT:

14

18
19

Your Honor.
All right.

Very good.

Your Honor, I'll be very brief.
I hope you will, because otherwise we

will be here with no end.
MR. RIFKIN:

With respect to Magnuson, Your Honor,

20

this was a case that had to do with a transfer from John

21

Magnuson, who was president of one company, to himself as

22

president of another company.

23

The John Magnuson plaintiff sued over the copyright in

24

question, and the Court found not that the defendant didn't

25

have standing to challenge the validity of the assignment but

They sued over the copyright.

UNITED STATES DISTRICT COURT

85
1

rather that the assignment confirmed -- even though it was a

2

later writing, it confirmed the prior oral assignment, and it

3

doesn't inform any of the issues here.

4

THE COURT:

All right, counsel.

5

much.

6

take the matter under submission.

7

THE CLERK:

8

Thank you very

I appreciate your time, appreciate your arguments.
Thank you.

This Honorable Court is in recess.

(Matter adjourned at 11:48 P.M.)

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UNITED STATES DISTRICT COURT

I'll

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CERTIFICATE OF OFFICIAL REPORTER

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I, KHOWOONSUN CHONG, FEDERAL OFFICIAL REALTIME

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COURT REPORTER, IN AND FOR THE UNITED STATES DISTRICT COURT FOR

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THE CENTRAL DISTRICT OF CALIFORNIA, DO HEREBY CERTIFY THAT

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PURSUANT TO SECTION 753, TITLE 28, UNITED STATES CODE THAT THE

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DATED THIS 25TH DAY OF MARCH, 2015.

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UNITED STATES DISTRICT COURT