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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1 1 UNITED STATES DISTRICT COURT 2 CENTRAL DISTRICT OF CALIFORNIA - WESTERN DIVISION 3 HONORABLE GEORGE H. KING, CHIEF U.S. DISTRICT JUDGE 4 5 6 7 8 9 10 11 GOOD MORNING TO YOU PRODUCTIONS CORP., ET AL., ) ) ) CASE NO. PLAINTIFFS, ) CV 13-4460 ) VS. ) ) WARNER/CHAPPELL MUSIC, INC., ) ET AL., ) ) DEFENDANTS. ) ________________________________________) 12 13 14 15 16 17 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 18 19 20 21 22 23 ________________________________________________________ KHOWOONSUN CHONG, CSR 12907, CRR, RMR FEDERAL 24 255 EAST LOS 25 OFFICIAL TEMPLE ANGELES, COURT STREET, REPORTER ROOM CALIFORNIA 181-G 90012 UNITED STATES DISTRICT COURT 2 1 APPEARANCES OF COUNSEL: 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 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 21 ALSO PRESENT: 22 Ellen Hochberg, Warner Music Group 23 24 25 UNITED STATES DISTRICT COURT 3 1 I N D E X 2 CASE CV 13-4460 3 PROCEEDINGS: 4 Cross Motions For Summary Judgment and Motion by plaintiff to exclude evidence 5 Monday, March 23, 2015 PAGE 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 UNITED STATES DISTRICT COURT 4 4 1 LOS ANGELES, CALIFORNIA; MONDAY, MARCH 23, 2015 2 9:38 A.M. 3 -oOo- 4 THE CLERK: Please remain seated and come to order, 5 this United States District Court is now in session, the 6 Honorable George H. King, Chief Judge presiding. 7 No. 1 on today's calendar, Civil 13-4460, Good Morning to You 8 versus Warner/Chappell Music, Incorporated. 9 your appearances for the record. 10 11 MR. RIFKIN: Good morning, Your Honor. THE COURT: 13 MR. NEWMAN: Good morning, Your Honor. 16 MR. SCHACHT: All right. Your Honor, Daniel Schacht of Donahue Fitzgerald on behalf of the plaintiffs. 18 THE COURT: 19 MS. MANIFOLD: 21 22 23 Randall S. Newman, Randall S. Newman, P.C., on behalf of plaintiffs. THE COURT: 20 Mark Rifkin Good morning. 15 17 Counsel, state of Wolf Haldenstein on behalf of the plaintiffs. 12 14 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 24 from Munger, Tolles & Olson, joined by my colleagues, Melinda 25 LeMoine and Adam Kaplan, also joined by Ellen Hochberg who is UNITED STATES DISTRICT COURT 5 1 the head of litigation for Warner Music Group. 2 for the defendants. 3 THE COURT: Very good. Thank you very 4 much. 5 your moving papers and the exhibits. 6 some of which may be organizational from the standpoint of what 7 is a good analytical framework by which I can approach this. 8 have questions for both sides, but let me start with the 9 defendants. 10 11 All right. All right. And we are here Counsel, I have had an opportunity to review I do have some questions, I Mr. Klaus, will you be addressing the Court on behalf of the defendants? 12 MR. KLAUS: I will, Your Honor. 13 THE COURT: Would you approach the lectern, please. 14 MR. KLAUS: Yes, of course. 15 THE COURT: Okay. Let me just start out with some 16 preliminary questions. 17 questions, but I just want to make sure that there are no 18 disputes. 19 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 20 Mrs. Forman and Mr. Orem did not author the so-called familiar 21 lyrics of Happy Birthday. Do you agree with that? 22 MR. KLAUS: That's correct, Your Honor. 23 THE COURT: Look, instead of saying familiar lyrics, 24 25 I'm just going to say lyrics. And then, if I refer to the second verse, I'll call it the UNITED STATES DISTRICT COURT 6 1 second verse so we understand each other and we don't have to 2 have additional words when not necessary. 3 4 Do you also now agree that Exhibits 44 and 48 are the certificates of registration for your two claimed copyrights? 5 MR. KLAUS: Yes. 6 THE COURT: And with respect to which of these or 7 both cover the so-called lyrics, is it your argument that 8 E51990 covers the lyrics and E51988 really puts it into proper 9 context as to why E51990 covers the lyrics? 10 MR. KLAUS: It is our position, Your Honor, that 11 E51990 covers -- was intended to cover the lyrics and does 12 cover the lyrics. 13 it on the same day, what we'll call the second verse, refers to 14 it as the revised text. And 51988 covers -- it was intended to cover 15 THE COURT: So you're not claiming E51988 16 independently covers the lyrics? 17 MR. KLAUS: I believe we haven't actually briefed 18 that issue, Your Honor. 19 copy unquestionably -- the 51988 -- included both the lyrics 20 and the second verse, if necessary, we would fall back on it. 21 But our position is, Your Honor, that it's 51990. 22 THE COURT: I do think that, because the deposit Okay. My second question is both you 23 and the plaintiffs spend a lot of your 50 pages focused on 24 talking about the certificates as such. 25 initial briefing, there was some dispute as to which are the And unfortunately the UNITED STATES DISTRICT COURT 7 1 certificates. 2 rewind it a little bit to now know what your true position is. 3 So, you know, having read that, I had to sort of But my question is do you claim that you hold any kind of 4 statutory federal copyright even if the lyrics were not 5 covered, let's say for today's purposes, in E51990? 6 7 MR. KLAUS: I'm not sure. I believe, Your Honor, that our position is 51990 does cover the lyrics. 8 THE COURT: I understand. I understand. 9 MR. KLAUS: And -- 10 THE COURT: We can talk about that issue, and we 11 will in a moment. What I'm trying to understand is the 12 substantial focus that you folks put in that because, 13 obviously, you know that a copyright is not necessarily the 14 same as the registration. 15 under the 1909 Act, a statutory one, even if you don't 16 technically have a registration for it. You could have a copyright even 17 MR. KLAUS: I believe, Your Honor -- 18 THE COURT: There may be consequences. I'm not 19 saying there are no consequences, but I'm just trying to 20 understand. 21 MR. KLAUS: I believe, Your Honor, that under the 22 1909 Act, that for the initial term of the copyright, which 23 would have started in 1935, registration technically was not 24 necessary. 25 What was necessary was publication with notice -THE COURT: Right. UNITED STATES DISTRICT COURT 8 1 MR. KLAUS: 2 -- which we believe has happened here. The renewal term, I believe there was a requirement that a 3 certificate of registration be filed, and we do have in the -- 4 in the record the renewal of both 51990 and -- 5 THE COURT: In 1962. 6 MR. KLAUS: Correct. 7 THE COURT: So what you're telling me -- and make 8 sure that my summary is accurate. 9 that's the reason why it is important that your position is 10 that E51990 includes the lyrics. 11 MR. KLAUS: What you're telling me is Yes. Well, the -- one of the -- one of 12 the issues that we have debated at length with the other side 13 in the papers is what was encompassed within the copyright. 14 And it's our position that the registration certificate, which 15 we now know to be, I believe, Exhibit 48 for E51990, covers not 16 just the easy arrangement with the piano solo but also covers 17 text. 18 THE COURT: I understand. I'll get to that in a 19 moment. 20 don't have any further claim to copyright protection as to the 21 lyrics if the Court were to determine that E51990 does not 22 cover the lyrics; is that true? 23 I just want to make sure that so in your case you MR. KLAUS: I believe, Your Honor, that what we 24 would have is we would have the publication in 1935 plus the 25 renewal, which also states that it's with text. UNITED STATES DISTRICT COURT So I don't 9 1 think it's just the underlying certificate. 2 the publication with the -- with the lyrics. 3 I think that it's What the -- what the copyright certificate does for us, I 4 believe, Your Honor, the 1935 copyright certificate, is it 5 gives us the presumption that what was covered was not simply 6 the arrangement but also the text. 7 THE COURT: Well, we'll talk about the presumption 8 and all of that, but the renewal does no more than what you say 9 was copyrighted in 1935 other than to renew it. 10 You weren't renewing anything else. 11 MR. KLAUS: That's correct, Your Honor. 12 THE COURT: Okay. So if I were to determine that in 13 1935 it didn't cover the lyrics, it couldn't have covered the 14 lyrics by reason of the renewal. 15 if I were to determine that? 16 MR. KLAUS: Wouldn't you agree with that, If you were to determine that the 17 registration and publication in 1935 didn't cover the lyrics, 18 then yes I would agree with you that the renewal would not. 19 THE COURT: Okay. Now, let's talk about the 20 question about what does it cover, does it or does it not. 21 my initial question to you is -- and I don't believe either 22 side has really addressed this; so I want to give you an 23 opportunity to weigh in on it -- is that a question of law, or 24 is that a question of fact in terms of what those certificates 25 actually cover, or that certificate actually covered? UNITED STATES DISTRICT COURT And 10 1 MR. KLAUS: I believe, Your Honor, that the 2 interpretation of a copyright certificate is traditionally 3 treated as a question of law. 4 THE COURT: Even if there might be a need to go 5 beyond the four corners of the certificate to accept extrinsic 6 evidence? 7 MR. KLAUS: If there were a need to go beyond the 8 four corners to accept extrinsic evidence, there might be a 9 fact question if there was a fact question that was disputed. 10 Our position is it's not, and I'm happy to explain that. 11 THE COURT: We'll get to that too. 12 MR. KLAUS: But one of the -- 13 THE COURT: We'll do it one step at a time. 14 MR. KLAUS: Understood. But I believe, as the 15 Supreme Court made clear as recently as last term in the 16 Raging Bull case, the Petrella against MGM case, the function 17 of the registration certificate is to provide that Congress 18 knew that copyrights would last for a very long time. 19 would last beyond the point where one could have extrinsic 20 evidence from people, as in this case who were alive in 1935. 21 THE COURT: They There may be extrinsic evidence aside 22 from the testimony of the people who were the players. 23 Obviously, we're not going to have those. 24 25 MR. KLAUS: Understood, Your Honor. So I think the -- I have not seen a case that holds that UNITED STATES DISTRICT COURT 11 1 the interpretation of what is covered by a copyright is a 2 question of fact. 3 disputes and extrinsic evidence that were required to be 4 answered, that would probably be a mixed question of law, in 5 fact, but I could understand -- 6 I would think that, if there were factual THE COURT: That would be tried by a trier of fact 7 as opposed to being determined by the Court in terms of my role 8 of deciding what the scope is? 9 MR. KLAUS: It might be. The only hesitation I 10 have, Your Honor -- and we did not brief this question, as I'm 11 sure you're familiar with, from the patent context -- 12 THE COURT: That's somewhat different now, isn't it? 13 MR. KLAUS: It's different now, but the -- but there 14 is the -- there is question of where you have, for example, the 15 construction of a claim -- 16 THE COURT: Right. 17 MR. KLAUS: -- that that's what the Supreme Court 18 said in Markman, that this is an issue for the Court because 19 this is a -- it's a document of public consequence. 20 THE COURT: And that really hasn't -- my 21 understanding is -- and I'm no patent lawyer, believe me. 22 my understanding, that really hasn't changed other than perhaps 23 the standard of review as to the underlying factual 24 determinations may have -- it did change from what the federal 25 circuit thought it was. UNITED STATES DISTRICT COURT But 12 1 MR. KLAUS: Yes. As has happened in a number of 2 cases, the way the federal circuit construed the law did not 3 turn out to be that case. 4 question as to who makes the determination has changed. 5 THE COURT: But I don't think the underlying From your view then, borrowing from 6 patent law, is that if I'm deciding whether or not the 7 certificates -- certificate has within its scope the lyrics and 8 I feel that there is a need to go outside the four corners of 9 the certificate and if that evidence actually is conflicted, I 10 can still make that factual determination under my duty to 11 decide what the scope of the copyright certificate is. 12 MR. KLAUS: I believe that's correct, Your Honor, 13 with the -- with obviously the caveats about a number of points 14 in the chain, about if -- and excepting that -- excepting those 15 points out, the only other thing I would say is I can't say 16 that I have researched the question exhaustively, but I would 17 think that would be the way that it would be analyzed. 18 THE COURT: Okay. Let's talk about burden of proof 19 for a moment. 20 that the burden is not only not on you because you have the 21 benefit of the presumption to go forward, but you assert that 22 the burden of persuasion does not rest with you because you 23 didn't bring an infringement suit, and you cited Schaffer. 24 25 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 UNITED STATES DISTRICT COURT 13 1 determine where the burden lies? That doesn't change any 2 presumption, if a presumption is to be applied. I understand 3 that, but the presumption is really rebuttable. It's the 4 burden of going forward. 5 by any stretch of the imagination. It's not an irrebuttable presumption 6 So do you still believe that, because this is a 7 declaratory relief action, because technically they're the 8 plaintiff, you're the defendant, they have the burden to prove 9 everything on persuasion? 10 11 12 13 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. 14 MR. KLAUS: Yes. 15 THE COURT: And affirmative defenses, I agree. 16 17 They have the burden. MR. KLAUS: And I would say that -- I would say, 18 though, Your Honor, I don't know that a -- I don't know that 19 the issue has been explicitly decided with respect to a 20 declaratory judgment case for the validity of a copyright as 21 opposed to the invalidity of a copyright. 22 from the cases one would -- one would conclude that, if you 23 were to treat this as a coercive action turned upside down, as 24 this case in some respects is, we might have the burden. 25 THE COURT: But I can see why Well, there's no real conceptual UNITED STATES DISTRICT COURT 14 1 difference between our case, just because it's copyright, 2 versus Metronic because it was patent. 3 Supreme Court decision might -- we may want to allow that to 4 inform us as to where the burden lies. 5 6 7 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. 8 Do we apply the presumption first, or do we say we're going to 9 have to decide what the scope is so we know what presumption to 10 11 apply to it? MR. KLAUS: I believe that the cases have always 12 looked first to the certificate and the presumption and then 13 said what is there to rebut the presumption. 14 THE COURT: Okay. 15 MR. KLAUS: And in this case, Your Honor, of course 16 our position is that, notwithstanding the claim by the 17 plaintiffs that they have rebutted the presumption, that the 18 evidence is undisputed, and it's entirely in our favor that 19 what was intended to be registered was not simply a piano 20 arrangement but also the text. 21 THE COURT: Let's explore that. 22 MR. KLAUS: Yes. 23 THE COURT: Let's explore, assuming you're right 24 about the applicability of the presumption, because, of course, 25 even under the 1909 Act, registration certificate presumes the UNITED STATES DISTRICT COURT 15 1 validity of whatever it was that was covered and the truth of 2 the statements made therein. Okay? 3 MR. KLAUS: Correct. 4 THE COURT: All right. You agree with that? 5 us. Okay? 6 So let's see where that gets The certificates or this certificate, which is 48, I believe -- right? -- Exhibit 48? 7 MR. KLAUS: Exhibit 48. 8 THE COURT: Okay. 9 Correct, Your Honor. So in taking a look at Exhibit 48, it says who's the author of the new material? 10 Because this is for "Republished Musical Composition with New 11 Copyright" material. 12 Question No. 3, "Author of new copyright matter: 13 Ware Orem, employed for hire by Clayton," blah, blah, blah. 14 the assertion that we have to presume to be correct, at least 15 on the presumption, prima facie, is that Mr. Orem was the 16 author of any new copyright matter. 17 Preston So Number 7, question, "State exactly on what new matter 18 copyright is claimed." 19 solo, with text." 20 Okay. And it says, "Arrangement as easy piano That's what is claimed. And assuming that is 21 correct, literally that it is easy piano solo -- arrangement as 22 easy piano solo, with text, and that's presumed to be correct, 23 prima facie to be true, then you apply that with your admission 24 that Mr. Orem did not author the lyrics. 25 So if we literally apply the presumption, one -- one, UNITED STATES DISTRICT COURT 16 1 maybe not the only -- but one logical deduction or conclusion 2 is that the text cannot refer to the lyrics. 3 MR. KLAUS: If there were no other evidence in the 4 record, Your Honor, that might be correct. But the other 5 evidence -- and we have to start from couple of propositions. 6 One is that the reference to -- and it is not uncommon in 7 copyright cases for there to be a mistake on the application as 8 to who the author was. 9 we've cited, to which I don't think there is a response, is the 10 And, in fact, one of the cases that Emmylou Harris against Emus Records case, Your Honor. 11 THE COURT: That's really not on point. Let me tell 12 you why I don't think so. 13 issue. 14 whatever the name, was claimed in the copyright. 15 questioning whether or not the lyrics were covered in this 16 copyright; so I think that's a pretty big difference. 17 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 18 Emmylou Harris relies on -- Emmylou Harris, it stands for the 19 proposition that inaccuracies that were not obtained by an 20 intent to defraud -- there is no claim by the plaintiffs that 21 there was an intent to defraud the copyright office here -- 22 that cause no prejudice to the defendant, as in this case, 23 there's no claim that they have been prejudiced by any of 24 the -- in other words, that absent an intent to defraud and 25 prejudice, the technical inaccuracy in the registration doesn't UNITED STATES DISTRICT COURT 17 1 affect the validity of the copyright. 2 3 THE COURT: I'm sorry. and then I'll follow up. 4 MR. KLAUS: And one of the -- I'll let you finish that, Go ahead. The point I was going to make, 5 Your Honor, is Emmylou Harris is not the only case. There is 6 also the Barron against Leo Feist case. 7 closer to what you were describing in terms of the scope 8 because the -- the arrangement that was at issue there, the 9 calypso arrangement, the underlying copyright registration had And that case is much 10 attributed to the purported author simply the collection of 11 calypso lyrics in Jamaica, I think, at the time. 12 And the argument on -- the argument on appeal was that 13 that -- that that was an indication that the lyrics were not -- 14 that the melody to what was pla- -- I believe the plaintiff's 15 work and then the defendant's work, which I think was Rum and 16 Coca-Cola, I think was the name of the song. 17 in that case was, because the registration certificate said 18 one -- because the registration certificate didn't attempt to 19 claim that, that therefore -- or the application, that 20 therefore it couldn't be claimed later on. 21 And the argument And what the Second Circuit said in case law that's been 22 continued all the way through the Emmylou Harris case is that 23 sort of technical defect is not going to upset the -- is not 24 going to upset the validity of the copyright if it's challenged 25 later on. UNITED STATES DISTRICT COURT 18 1 THE COURT: Well, but my concern with that is nobody 2 here -- or at least I don't think -- is suggesting that your 3 copyrights are invalid, period, gone, finished. 4 a copyright. 5 challenging that you have a copyright to the arrangements. 6 doesn't blow it up. There's no fraud here shown. It doesn't 7 blow up the certificate so that you have nothing. That's not 8 the issue. 9 The question is again the scope. You still have They're not The issue is really a little bit different. It The issue is 10 is it included in the claim? 11 whether you call it sufficient to defeat and therefore set 12 aside any presumptions, or you say, okay, the presumption goes 13 so far but there is other evidence. 14 presumption technically applies or does not apply is not going 15 to have earthshaking consequences, in our case at least, on the 16 record. 17 And by the very admission, So ultimately whether the So my question is, if you admit that there is at least 18 error -- and you claim that there's an error. They claim there 19 was no error. 20 claim that there was just an error. 21 the Hill sisters, whoever authored the lyrics -- and we'll 22 discuss that later on -- but one of the Hill sisters, we should 23 have put that name as the author of the text. 24 been really helpful and clearer, but it didn't. 25 a mistake. But let's just talk about your position. You We forgot to put on one of UNITED STATES DISTRICT COURT That would have That was just 19 1 Isn't that mistake sufficient to say that maybe we 2 shouldn't apply the presumption because what are we going to 3 presume? 4 because there's nothing on the certificates for which we apply 5 the presumption that ever says that. 6 we into just receiving evidence as to what's your evidence and 7 what's their evidence? 8 9 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 10 Leo Feist case and the Emmylou Harris case would go against 11 that. 12 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 UNITED STATES DISTRICT COURT 74 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 UNITED STATES DISTRICT COURT 75 1 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 UNITED STATES DISTRICT COURT 76 1 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 77 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 UNITED STATES DISTRICT COURT 78 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. UNITED STATES DISTRICT COURT 79 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 UNITED STATES DISTRICT COURT 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 UNITED STATES DISTRICT COURT 81 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 UNITED STATES DISTRICT COURT 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 UNITED STATES DISTRICT COURT 83 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 84 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.) 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 UNITED STATES DISTRICT COURT I'll 86 1 CERTIFICATE OF OFFICIAL REPORTER 2 3 4 5 I, KHOWOONSUN CHONG, FEDERAL OFFICIAL REALTIME 6 COURT REPORTER, IN AND FOR THE UNITED STATES DISTRICT COURT FOR 7 THE CENTRAL DISTRICT OF CALIFORNIA, DO HEREBY CERTIFY THAT 8 PURSUANT TO SECTION 753, TITLE 28, UNITED STATES CODE THAT THE 9 FOREGOING IS A TRUE AND CORRECT TRANSCRIPT OF THE 10 STENOGRAPHICALLY REPORTED PROCEEDINGS HELD IN THE 11 ABOVE-ENTITLED MATTER AND THAT THE TRANSCRIPT PAGE FORMAT IS IN 12 CONFORMANCE WITH THE REGULATIONS OF THE JUDICIAL CONFERENCE OF 13 THE UNITED STATES. 14 15 DATED THIS 25TH DAY OF MARCH, 2015. 16 17 18 19 20 /S/ KHOWOONSUN CHONG ______ KHOWOONSUN CHONG, CSR NO. 12907, CRR FEDERAL OFFICIAL COURT REPORTER 21 22 23 24 25 UNITED STATES DISTRICT COURT

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