Rupa Marya v. Warner Chappell Music Inc

Filing 232

REPLY in Further Support of EX PARTE APPLICATION MOTION for Consideration of Newly Discovered Evidence "Mistakenly" Withheld by Defendants During Discovery EX PARTE APPLICATION for Summary Judgment as to First Claim for Relief 224 filed by Plaintiffs Good Morning to You Productions Corp, Majar Productions LLC, Rupa Marya, Robert Siegel. (Manifold, Betsy)

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1 8 FRANCIS M. GREGOREK (144785) gregorek@whafh.com BETSY C. MANIFOLD (182450) manifold@whafh.com RACHELE R. RICKERT (190634) rickert@whafh.com MARISA C. LIVESAY (223247) livesay@whafh.com WOLF HALDENSTEIN ADLER FREEMAN & HERZ LLP 750 B Street, Suite 2770 San Diego, CA 92101 Telephone: 619/239-4599 Facsimile: 619/234-4599 9 Attorneys for Plaintiffs 2 3 4 5 6 7 10 UNITED STATES DISTRICT COURT 11 CENTRAL DISTRICT OF CALIFORNIA 12 WESTERN DIVISION 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 ) ) ) ) Plaintiffs, ) ) v. ) WARNER/CHAPPELL MUSIC, ) ) INC., et al., ) ) Defendants. ) ) ) ) ) ) ) ) ) ) ) GOOD MORNING TO YOU PRODUCTIONS CORP., et al., Case No. CV 13-04460-GHK (MRWx) REPLY IN FURTHER SUPPORT OF PLAINTIFFS’ EX PARTE APPLICATION TO HAVE THE COURT CONSIDER NEWLY DISCOVERED EVIDENCE “MISTAKENLY” WITHHELD BY DEFENDANTS DURING DISCOVERY AND ENTER SUMMARY JUDGMENT IN PLAINTIFFS’ FAVOR Judge: Courtroom: Fact Discovery Cutoff: MSJ Hearings Pretrial Conference: Trial: Hon. George H. King, Chief Judge 650 July 11, 2014 March 23, 2015 and July 29, 2015 N/A N/A 1 I. INTRODUCTION 2 Defendants’ response to Plaintiffs’ ex parte motion concedes two important 3 points: first, that the 1922 publication of Happy Birthday without a copyright notice 4 extinguished any copyright to the work if the publication was authorized; and 5 second, since whether Summy was authorized to permit the 1922 publication is at 6 most a disputed factual question, they are not entitled to summary judgment in their 7 favor. Dkt. 226 at 2:13-22, 6:16-17. Defendants’ “own dirty hands” argument that 8 Summy may not have been authorized to permit Cable to publish Happy Birthday in 9 1922 and their hypothetical suggestion that Summy may not have done so defy 10 common sense. 11 inconsistent with all the evidence before the Court. They should be rejected without 12 any more delay. Id. at 1-2. More importantly, both arguments are completely 13 Defendants’ desperate attempt to avoid the preclusive effect of the 1922 14 publication rings hollow. Had Summy tried to enforce a copyright to Happy Birthday 15 – something it never did – after permitting Cable to publish the song without a 16 copyright notice in 1922, it never would or could have denied possessing the 17 authority to do so. Summy, which was economically benefiting from the 1922 18 publication (and presumably sharing that economic benefit with Patty and Jessica), 19 was estopped to deny it was authorized by Patty and Jessica to use the song. 20 Defendants, who obtained whatever limited rights they may have to the song when 21 they acquired Summy (as it then existed) in 1988, have no greater rights than Summy 22 had. Defendants cannot credibly make an argument that Summy itself could not have 23 made. 24 All the evidence, including the 1922 smoking gun, overwhelmingly and 25 conclusively proves that Defendants do not own a copyright to the Happy Birthday 26 song, but merely to specific piano arrangements. By no later than 1922, there no 27 longer was any question that the song belonged to the public. The Court should 28 declare Happy Birthday to be in the public domain, just as Patty Hill recognized that -1- 1 her ditty was common property of the nation. 2 II. LEGAL ARGUMENT 3 A. Defendants’ Response Makes Two Important Concessions 4 In opposing Plaintiffs’ ex parte application, Defendants have conceded two 5 critically important points. First, they concede Plaintiffs’ legal argument that the 6 1922 publication of Happy Birthday, which did not include the requisite copyright 7 notice, extinguished the copyright to the song (if Summy was authorized to permit 8 Cable to publish the song in 1922). See Dkt. 226 at 1-2. 17 U.S.C. § 9.1 Section 18 9 of the 1909 Copyright Act unquestionably required the notice to include the word 10 “Copyright” or its equivalent as well as the year of first publication and the name of 11 the author of the copyrighted work. 17 U.S.C. § 18. The 1922 publication of Happy 12 Birthday unquestionably did not include any of the required information. See Exhibit 13 C, page 20 to the Declaration of Betsy C. Manifold in Support of Plaintiffs’ Ex Parte 14 Application (“Manifold Decl.”) [Dkt. 225-3]. Because the strict notice requirements 15 of the 1909 Copyright Act were not met when the song was published in 1922, as a 16 legal matter it “was interjected irrevocably into the public domain.” Twin Books 17 Corp. v. Walt Disney Co., 83 F.3d 1162, 1165 (9th Cir. 1996) (emphasis added). 18 Defendants do not dispute that legal principle. 19 Second, Defendants now concede that in light of the 1922 publication of 20 Happy Birthday without a copyright notice, the Court cannot enter summary 21 judgment in their favor. 22 publication extinguished any copyright to Happy Birthday if Summy was authorized 23 to permit Cable to publish it. See id. at 1. On that dispositive factual question, 24 Defendants do not offer any evidence to support their speculation that Summy may 25 not have had authority from Patty Hill and Jessica Hill to permit Cable to publish the 26 1 27 28 Dkt. 226 at 6. According to Defendants, the 1922 As Defendants have conceded, a copyright was not obtained unless the work was published with the requisite notice: “What was necessary was publication with notice.” Dkt. 208 at 7:24 (emphasis added). -2- 1 song in 1922. According to Defendants, the record is “at most” inconclusive on the 2 factual question they have tried to raise. See id. at 1. Thus, even if the Court were to 3 accept Defendants’ hypothetical argument, it cannot grant summary judgment in 4 Defendants’ favor. 5 declaration or written evidence”). See L.R. 56-3 (material facts must be controverted “by 6 In light of Defendants’ concession that the 1922 publication without the 7 required copyright notice would have extinguished the copyright if Summy was 8 authorized to license the song to Cable, the one-sided factual record now before the 9 Court entitles Plaintiffs to judgment in their favor. See Supplemental Declaration of 10 Betsy C. Manifold in Further Support of Plaintiffs’ Ex Parte Application (“Supp. 11 Decl.”), ¶¶ 6, 7. 12 B. Summy Was Authorized to Permit Cable to Publish the Good Morning and Birthday Song in 1922 13 Defendants theorize that Summy may not have been authorized to license 14 15 16 17 18 19 20 21 22 Good Morning after Jessica renewed the original 1893 copyright for Song Stories, which included Good Morning, in 1921. Dkt. 226 at 1:23-2:11. To support their argument, Defendants contend that Summy did not own the copyright to Happy Birthday in 1922. Id. But the relevant question is who had the right to publish the song, not who (if anyone) owned the copyright in 1922.2 On that relevant question, the record belies Defendants’ idle speculation: it is abundantly clear that Summy had authority to publish Good Morning – both the melody and the lyrics of that song – after Jessica renewed the copyright. Most importantly, when the Hill Foundation sued Summy on behalf of Patty 23 24 25 26 27 28 2 As Plaintiffs explained in their opening brief, the author of a compilation such as the Everyday Song Book forfeits the copyright of another author’s individual work by including that work in the compilation without a copyright notice. Dkt. 224 at 9 (citing New York Times Co. v. Tasini, 533 U.S. 483, 494-95 (2001), and Milton H. Green Archives, Inc., v. BPI Communs., Inc., 378 F. Supp. 2d 1189, 1195-97 (C.D. Cal. 2005)). Defendants have not cited any contrary authority. -3- 1 and Jessica in 1942, they alleged that Summy continued to publish Song Stories, 2 including Good Morning, with their consent after Jessica renewed the copyright in 3 1921. Ex. 50 at 6653 (Patty and Jessica “acquiesced in the continued publication and 4 sale by said Summy of the books [Song Stories for the Kindergarten and Song 5 Stories for the Sunday School] . . . under the renewals of copyrights”) (emphasis 6 added). Summy – Defendants’ predecessor – admitted as much in its answer; indeed, 7 Summy claimed to own the song both before and after Jessica renewed the copyright. 8 Ex. 51 at 681 (“subsequent to the renewal of the several copyrights” by Jessica Hill, 9 Summy “by agreement with the said Patty S. Hill and Jessica M. Hill, received from 10 said Patty S. Hill and Jessica M. Hill at least all of the right, title and interest in 11 respect of said books or works . . . as had theretofore been granted” in 1893 and 12 1899) (emphasis added). Having admitted that it owned the works both before and 13 after Jessica renewed the copyrights in 1921, Summy could not possibly have denied 14 being authorized to permit Cable to publish Good Morning. 15 Defendants also theorize that Summy may not have been authorized to license 16 the Happy Birthday lyrics in 1922. Dkt. 226 at 3:5-7. The record belies that 17 speculation as well. As Plaintiffs have demonstrated many times already, there was 18 no copyright to the Happy Birthday lyrics in 1922, since Patty had given those lyrics 19 to the public by teaching them to her students and fellow teachers many years earlier. 20 There never has been a claim – not by Patty, not by Jessica, not by Summy, and not 21 by Summy’s successors – that any use or performance of Happy Birthday infringed 22 any copyright to those lyrics. That is equally true for actions commenced before the 23 copyrights in question were registered in 1935 and for actions commenced after 24 those copyrights were registered.4 Since the lyrics – Patty’s derivative work that she 25 3 26 All numeric exhibit references are to the Joint Appendix filed by the parties in support of the cross-motions for summary judgment. See Dkts. 187-194. 27 4 28 The 1935 action over unauthorized use of Happy Birthday was Jessica M. Hill v. Sam H. Harris, Equity No. 78-350 (S.D.N.Y. 1935) (Exs. 32 & 36). Jessica did (continued…) -4- 1 later created using the Good Morning melody – was in the public domain, Summy 2 did not need authorization from Patty or Jessica to permit Cable to include those 3 lyrics in the Good Morning and Birthday Song.5 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 As the song’s publisher (or, if Summy is to be believed, its owner), Summy ________________________ (…continued) not allege that singing the Happy Birthday lyrics infringed any copyright, only that playing the Good Morning melody infringed the 1893 copyright. The post-1935 actions include The Hill Foundation, Inc. v. Clayton F. Summy Co., Civil No.19-377 (S.D.N.Y. 1942) (Ex. 50); The Hill Foundation, Inc. v. Postal Telegraph-Cable Co., Civil No. 20-439 (S.D.N.Y. 1943) (Ex. 52); Clayton F. Summy Co. v. McLoughlin Brothers, Inc., Civil No. 30-284 (S.D.N.Y. 1945) (Ex. 55); Clayton F. Summy Co. v. Louis Marx & Company, Inc., Civil No. 30-285 (S.D.N.Y. 1945) (Ex. 56); and Clayton F. Summy Co. v. Paul Feigay and Oliver Smith, Civil No. 34-481 (S.D.N.Y. 1946) (Ex. 57). See Dkt. 190. In all those later actions, claims were asserted only under the 1893 copyright to the Good Morning melody. None of the later actions asserted any claim under the 1935 copyrights or that any other copyright was infringed by performing or using the Happy Birthday lyrics. If, as Defendants insist, the 1935 copyrights covered the Happy Birthday lyrics, it defies logic that no infringement claim was asserted after those copyrights were registered when Happy Birthday was used or performed without permission. 5 Even if the Court were to accept Defendants’ theoretical argument that Summy was not authorized to use the Happy Birthday lyrics in 1922, it still must grant summary judgment in Plaintiffs’ favor. There is no evidence in the record that Summy later obtained any rights to those lyrics from Patty or Jessica. To the contrary, the rights conferred by Jessica in 1934 and 1935 were limited only to piano arrangements of the common melody shared by Good Morning and Happy Birthday – the musical composition variously known by either of those titles – and did not include the Happy Birthday lyrics that distinguished the two songs. See Ex. 50 at 668 (“granted to [Summy] a number of licenses for the publication, sale, and performance of various piano arrangements of the song variously entitled ‘GOOD MORNING TO ALL’ or ‘HAPPY BIRTHDAY TO YOU’); and Ex. 51 at 684 (“Jessica . . . sold, assigned and transferred to [Summy] various piano arrangements of the said musical composition “Good Morning to All’”). Jessica’s limited transfers – covering only piano arrangements of the common melody – did not give Summy any rights to Patty’s lyrics. -5- 1 was fully authorized to permit Cable to publish the Good Morning melody in 2 combination with the Happy Birthday lyrics – which were already in the public 3 domain – in the Everyday Song Book in 1922. Summy certainly claimed the right to 4 do so, and Defendants have no reason to deny their predecessor’s own claim. 5 C. 6 Other Evidence Confirms That Summy Did Permit Cable to Publish the Song 7 Finally, Defendants observe that Summy may or may not have given Cable 8 permission to publish the song in 1922. Their equivocal speculation on this point 9 consists of these six words: “whether with Summy’s authorization or not.” Dkt. 226 10 at 3:25-4:1. Defendants also theorize that Cable’s copyright applications or the 11 deposit copies for The Everyday Song Book might shed additional light on the 12 question. Id. at 4:15-17.6 All of that speculation is easily swept aside by even more 13 evidence that Plaintiffs have collected in the short time since they first learned of the 14 1927 publication. 15 To begin, Cable’s copyright applications include no relevant information. True 16 and correct copies of the applications for Cable’s two copyrights are attached as 17 Exhibits I and J to the Supplemental Declaration of Betsy C. Manifold filed 18 concurrently herewith. The Good Morning and Birthday Song is not mentioned or 19 described in either of them. They do not provide any basis for Defendants to deny or 20 refute what the 1922 publication says: that Summy permitted Cable to publish the 21 song in 1922.7 22 In addition, Plaintiffs recently obtained copies of the second, fifth, and sixth 23 editions of The Everyday Songbook. Those editions are convincing evidence that 24 Summy authorized Cable to publish the Good Morning and Birthday Song in 1922. 25 6 26 7 27 28 Defendants offer no relevant evidence on this question. Id at 4. It is unknown why Defendants did not obtain these copyright records for themselves in the two years they have had the 1927 publication of The Everyday Song Book. -6- 1 As Plaintiffs noted in their opening brief, the first edition of The Everyday Song 2 Book, published in 1916, did not include the Good Morning and Birthday Song. 3 Plaintiffs now know that the song appeared for the first time in the second edition of 4 the songbook, which was published in 1921. See Supp. Decl., Ex. K.8 Cable included 5 the song in the 1921 second edition without Summy’s permission to do so. Id. 6 Thereafter, Summy granted Cable permission to use the Good Morning and Birthday 7 Song, and therefore it appeared in the fourth edition, published in 1922, with the 8 legend “Special permission through courtesy of The Clayton F. Summy Co.” See 9 Manifold Decl., Ex. C. The song was included in the fifth and sixth editions of The 10 Everyday Song Book, published in 1922 and 1927, with the same legend. See Supp. 11 Decl., Exs. G, H. And it also appeared in the fifteenth edition of The Everyday Song 12 Book, again with the same legend. None of these editions of The Everyday Song 13 Book included a copyright notice for the Good Morning and Birthday Song. Id. 14 That the Good Morning and Birthday Song appeared in the second edition of 15 The Everyday Song Book without the legend but later appeared in the fourth and 16 subsequent editions with the legend is convincing proof that Summy authorized 17 Cable to publish Good Morning and Birthday Song (and to do so without a copyright 18 notice) in 1922 and thereafter. As publisher of Song Stories, Summy apparently 19 20 21 22 23 24 25 26 27 28 8 As identified in the Manifold Supp. Decl., Ex. K is the deposit copy of the 1921 edition of The Everyday Song Book, the work covered by Reg. No. A624750. The copyright stamp for A624750 appears on the third page of Ex. K. The deposit copy is the second edition of that work, published in 1921 but without the “special permission” legend. In their response to Plaintiffs’ ex parte application, Defendants speculated that the deposit copy might be informative on whether Summy permitted Cable to publish the song. They were correct, but not in the way they thought. The change from the second edition (without permission) in 1921 in the deposit copy to the fourth edition (with permission) in 1922 cuts off Defendants’ speculative argument. -7- 1 learned of Cable’s original inclusion of Good Morning in 1921.9 Shortly thereafter, 2 Summy permitted Cable to publish the song, presumably for a licensing fee, which 3 Summy would have shared with Patty and Jessica as their publisher. Summy, Patty, 4 and Jessica had a strong incentive to permit Good Morning to be published together 5 with the Happy Birthday lyrics, as sheet music with the immensely popular Happy 6 Birthday lyrics (which already were in the public domain) would be far more 7 valuable than sheet music with only the Good Morning lyrics. 8 Beginning in 1922, the Good Morning and Birthday Song was included in The 9 Everyday Songbook with the legend indicating Summy’s permission. The change 10 from the second edition to the fourth edition by the inclusion of the “special 11 permission” legend eliminate all doubt whether Summy, in fact, gave permission to 12 Cable to publish the Good Morning and Birthday Song, in the fourth edition of The 13 Everyday Song Book in 1922. Significantly, Summy never objected to publication of 14 the song without a copyright notice, and it was included that way in multiple 15 editions of The Everyday Song Book published over many years. 16 Indeed, The Everday Song Book was not the first time Summy permitted 17 another publisher to use Good Morning. In 1923, Summy authorized Hall & 18 McCreary Co. (“H & M”) to include Good Morning in The Golden Book of Favorite 19 Songs (rev. ed.) with the legend “Used by permission. Copyright by Clayton F. 20 21 22 23 24 25 26 27 28 9 Patty relied upon Summy not just to publish Good Morning, but also to monitor for unauthorized publication of the song. When Patty was asked in the Hill v. Harris litigation if she was aware of any other publication of Good Morning, she deferred to Summy to the answer the question: With my permission, no – I should think you would have to refer that to the publishers [Summy] because they kept a very close track on it personally so that I can’t tell you that. Ex. 87 at 1018. As they have done other times, Defendants paraphrased only the first part of Patty’s answer out of context. See Dkt. 226 at 4:9. -8- 1 Summy Co.”10 Supp Decl., Ex. L. Summy was profiting from other publishers’ used 2 of the work. 3 publishers. It is simply implausible that two different Chicago music publishers 4 would falsely claim to have Summy’s permission to publish Good Morning. The 5 obvious conclusion to draw is that both had Summy’s permission to do so. 6 III. Notably, Summy, Cable, and H & M were all Chicago music CONCLUSION 7 For the reasons stated above, Plaintiffs respectfully submit that this Ex Parte 8 Application should be granted. The Court should: (i) enter an Order permitting 9 Plaintiffs to supplement the record with the newly-discovered evidence that 10 Defendants “misktakenly” withheld during discovery; (ii) consider the newly- 11 discovered evidence in ruling on the pending cross-motions for summary judgment; 12 and (iii) enter summary judgment in Plaintiffs’ favor on the basis of the newly- 13 discovered evidence that proves conclusively that Happy Birthday has been in the 14 public domain since no later than 1922. 15 Dated: August 5, 2015 WOLF HALDENSTEIN ADLER FREEMAN & HERZ LLP 16 17 By: 18 19 /s/ Betsy C. Manifold BETSY C. MANIFOLD FRANCIS M. GREGOREK gregorek@whafh.com BETSY C. MANIFOLD manifold@whafh.com RACHELE R. RICKERT rickert@whafh.com MARISA C. LIVESAY livesay@whafh.com 20 21 22 23 24 25 10 26 27 28 The copyright “notice” in The Golden Book of Favorite Songs did not include the date of first publication, and therefore would not have protected any copyright to that work. See 17 U.S.C. § 18 (required notice must include, inter alia, year of first publication of the copyrighted work). -9- 1 2 3 4 5 6 7 8 9 10 11 750 B Street, Suite 2770 San Diego, CA 92101 Telephone: 619/239-4599 Facsimile: 619/234-4599 WOLF HALDENSTEIN ADLER FREEMAN & HERZ LLP MARK C. RIFKIN (pro hac vice) rifkin@whafh.com JANINE POLLACK (pro hac vice) pollack@whafh.com 270 Madison Avenue New York, NY 10016 Telephone: 212/545-4600 Facsimile: 212-545-4753 12 Interim Lead Counsel for Plaintiffs 13 RANDALL S. NEWMAN PC RANDALL S. NEWMAN (190547) rsn@randallnewman.net 37 Wall Street, Penthouse D New York, NY 10005 Telephone: 212/797-3737 14 15 16 17 18 19 20 21 22 23 24 25 26 27 HUNT ORTMANN PALFFY NIEVES DARLING & MAH, INC. ALISON C. GIBBS (257526) gibbs@huntortmann.com OMEL A. NIEVES (134444) nieves@huntortmann.com KATHLYNN E. SMITH (234541) smith@ huntortmann.com 301 North Lake Avenue, 7th Floor Pasadena, CA 91101 Telephone 626/440-5200 Facsimile 626/796-0107 Facsimile: 212/797-3172 28 - 10 - DONAHUE FITZGERALD LLP WILLIAM R. HILL (114954) rock@donahue.com ANDREW S. MACKAY (197074) andrew@donahue.com DANIEL J. SCHACHT (259717) daniel@donahue.com 1999 Harrison Street, 25th Floor Oakland, CA 94612-3520 Telephone: 510/451-0544 Facsimile: 510/832-1486 1 2 3 4 5 6 7 8 9 GLANCY BINKOW & GOLDBERG LLP LIONEL Z. GLANCY (134180) lglancy@glancylaw.com MARC L. GODINO (188669) mgodino@glancylaw.com 1925 Century Park East, Suite 2100 Los Angeles, CA 90067 Telephone: 310/201-9150 Facsimile: 310/201-9160 10 11 12 13 14 15 16 Attorneys for Plaintiffs 17 18 19 20 21 22 23 24 25 26 27 WARNER/CHAPPELL:22002.reply.exparte 28 - 11 -

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