Jonathan Pink — Entertainment, Internet and New Media Partner at Lewis Brisbois, LLP Rotating Header Image

Something to Sing About?

Imagine receiving licensing payments for your interest in a copyrighted musical work. Imagine that those payments are substantial. I’m talking hundreds of thousands, or even millions of dollars a year. Not bad, you say. Now imagine that, although you’ve been collecting these royalties for years and years, you don’t actually have a defensible claim to the copyright! It’s almost like “pennies from heaven.”.

This may sound great when you’re on the receiving end of this boondoggle, but imagine you’re on the other side. Paying a bundle to a putative copyright owner who doesn’t deserve a dime should cause you to whistle another tune. Shhhhh. Don’t tell, but this may happen more often than you think. Certainly, it has come up in the last few years with regards to several songs: “This Land is Your Land,” “Happy Birthday” and “Guantanamera.”

During the 2004 presidential contest, web animation studio JibJab Media Inc. distributed an animated parody of President George W. Bush and Senator John Kerry that lifted a few lines from the classic Woody Guthrie song, “This Land is Your Land.” Guthrie’s publisher, Ludlow Music, Inc. (which presumably makes a bundle off of the publishing and mechanical licenses to the song) threatened JibJab with a copyright infringement action. While JibJab’s initial defense was founded on the “fair use” doctrine (makes sense), its counsel discovered facts to suggest that “This Land is Your Land” entered the public domain in the 1970s. Specifically, they found that Woody Guthrie wrote “This Land is Your Land” in 1940 and first sold versions of it as sheet music in 1945. Under the 1909 Copyright Act (which was applicable in 1940), a copyright owner was granted an initial copyright term of 28 years, and the opportunity for a one-time 28 year renewable.

According to JibJab, the song’s initial copyright term was triggered when Guthrie sold it as sheet music in 1945. This would mean that the original copyright term expired 28 years later, in 1973. While the copyright could have been renewed that year, it was not. This appears to have been because Ludlow Music believed that the copyright term began to run in 1956, and thus renewed the copyright twenty-eight years later, in 1984. When JibJab’s attorneys brought this issue to Ludlow’s attention, Ludlow’s thirst for litigation subsided. Without conceding that it had no legitimate right to further royalty payments, Ludlow agreed to quietly put this issue to bed by allowing JibJab to continue distributing the “This Land” short . . . without any payment to Ludlow.

“Happy Birthday” is another excellent example of an owner collecting a bundle for a song that may be firmly ensconced in the public domain. While I never pay a dime for singing this song around my dinner table, somebody is shelling out some shekels for it. “Happy Birthday” is reported to generate $2 million in profits per year. I won’t spend a lot of time talking about this song because Professor Robert Brauneis of The George Washington University Law School just wrote an excellent piece about it entitled “Copyright and the World’s Most Popular Song.” (If I knew how to link to that article, “Copyright and the World’s Most Popular Song,” you would find it here. Alas, being the Luddite that I am, I’m unable to create that link. If you Google Professor Brauneis and the work’s title, you’ll easily find it.)

In a nutshell, Professor Brauneis dissects the song’s genesis, and analyzes its current copyright legitimacy. He demonstrates that “Happy Birthday to You” almost certainly is not currently entitled to copyright protection due to a variety of defects. Among them: there is no evidence as to who wrote the words to that famous song, there is no evidence that the copyright holder ever provided adequate copyright notice of the work as would have been required under the 1909 Act, and – perhaps most significantly – there appears to have been a failure to file a proper renewal of the copyright. Simply put, if you follow Professor Brauneis’s analysis, the work is in the public domain, and the $2 million paid annually for the right to license might as well be paid to Professor Brauneis – given that the current recipient of that largess has no greater claim on those proceeds does he.

Finally, not long ago, a Mexican-themed, national fast food chain was sued for having allegedly used the song “Guajira Guantanamera” (or its more famous American derivative, “Guantanamera”) in its television commercials. My firm represented that chain, and although that case ultimately settled, our defense was poised to turn on a challenge to the copyrights. Specifically, with respect to the underlying work, “Guajira Guantanamera,” we took the position was that even if that work was currently covered by U.S. copyright law (an debatable issue), the copyright was not enforceable by the song’s purported “owner,” Spanish music publishers, Ediciones Quiroga, S.L. We based our argument on two statutes: (1) Section 104A of the Copyright Act (recognizing the principle of restoration of copyrights in certain qualifying foreign works); and (2) the Cuban Embargo, as codified in 31 C.F.R. § 515.201 (b) and (d).

Section 104of the Copyright Act was important if — as appears — “Guajira Guantanamera” fell into the public domain in the mid-1990s due to a failure to timely file a renewal. Specifically, 17 U.S.C. §104A(h)(3), (6) would have allowed the work to regain U.S. copyright protection provided certain conditions were met, but the restoration of such rights would have vested “in the author or initial rights holder of the work as determined by the law of the source country.” 17 U.S.C. §104A(b) (emphasis added). As Ediciones Quiroga was neither (it had obtained its interest from the work’s creator, Jose Fernandez Diaz, in 1942 and 1943), those rights would have gone to Diaz’s heirs. Why not then have Diaz’s heirs enforce the copyright? First, assuming those heirs reside in Cuba, they may not even know that they have a claim. Secondly, if they do know, and want to enforce their rights, any damages awarded or rights declared by them would likely be confiscated by the Cuban Government. (It is doubtful that any U.S. court would permit this to happen.)

The Cuban Embargo would come into play if Diaz’s heirs then decided to simply assign their rights to, e.g. Ediciones Quiroga. That embargo prohibits transactions, including transfers of ownership in real and personal property with the Cuban government or Cuban nationals, with certain limited exceptions. 31 C.F.R. § 515.201 (b) and (d); see also Havana Club Holding, S.A. v. Galleon S.A., 203 F.3d 116, 53 USPQ2d 1609 (2d Cir. 2000). Thus, the defense was prepared to show that, although Ediciones Quiroga continued to assert an ownership interest in”Guajira Guantanamera” (and collect significant royalties in connection therewith), its right to do so was less than certain.

With respect to the more widely known derivative work, “Guantanamera,” the defense was poised to dismantle its copyright as well. “Guantanamera” was originally recorded in the early 1960s by music legend Pete Seeger, and remains controlled – to this day – by Seeger’s music publisher, Fall River Music, Inc. Had the lawsuit not settled, the defense intended to focus considerable scrutiny on the copyright certificates filed by Fall River (including the amendments thereto). While many cases have held that unintentional mistakes on a copyright certificate are of no legal significance, intentional misrepresentations made in an effort to secure a copyright are typically treated differently. Material misrepresentations that are designed to secure a copyright certificate will typically render the copyright unenforceable. Whimsicality, Inc. v. Rubie’s Costume Co., Inc., 891 F.2d 452, (2d Cir. 1989); Eckes v. Card Prices Update, 736 F.2d 859, 861-62 (2d Cir. 1984) (“knowing failure to advise the Copyright Office of facts which might have occasioned a rejection of the application constitute[s] reason for holding the registration invalid and thus incapable of supporting an infringement action.” (quoting Russ Berrie & Co., Inc. v. Jerry Elsner Co., Inc., 482 F. Supp. 980, 988, (S.D. N.Y. 1980)).

The 9th Circuit has held that when it comes to invalidating a copyright based on intentional misrepresentations on the copyright certificate, one must also establish prejudice. Harris v. Emus Records Corp., 734 F.2d 1329, 1335, (9th Cir. 1984) (“Absent intent to defraud and prejudice, inaccuracies in copyright registration do not bar actions of infringement.”) It seems fair to say that prejudice exists where one pays to license a work which is, in fact, in the public domain. This is especially so where the licensee acts due to the false representations the licensor made on the copyright certificate themselves.

One thing each of these cases have in common is the none made it to a jury: each settled long before this could happen. I suspect that the purported rights holders prefer it this way because they would stand to loose much more than they might gain. While these examples are illustrative, but they are by no means exclusive. There are very likely a large number of songs generating income for individuals and entities that have no right to such funds.

So what is the solution? I propose creating a database to expose such works. “This Song is Your Song . . . This Song is My Song.” If you know of others, sing it out, bring them to light! After all, while “Pennies from Heaven” may be great . . . pennies from my pocket is another tune altogether.

Jonathan Pink is a business lawyer with a specialty in copyright, patent and trademark litigation. His clients include many of the biggest names in the automotive and motorcycle aftermarket parts industries, and one of world's largest media companies. He has extensive experience in a wide range of intellectual property and commercial disputes including breach of contract, fraud, and the misappropriation of trade secrets. He can be reached at 949.223.7173, or at jonathan.pink@bryancave.com, and his full profile can be viewed at www.bryancave.com.

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