The Happy Birthday Song Fight Continues

A month and a half ago, the “Happy Birthday Song” fight looked over.  A federal judge ruled that Warner/Chappell did not hold a valid copyright in the Happy Birthday Song’s lyrics, and could no longer collect royalties.  The judge held this because of issues with the original registration, and whether this registration included the lyrics to the song.  The court held that the original registration did not include the lyrics, and only applied to the melody (which is indisputably in the public domain).  This appeared to place Happy Birthday in the public domain.  In truth, Happy Birthday became an orphan work and that’s causing a new (if sadly predictable) twist in the case.

Orphan works are one of the oddest legal issues in copyright law.  Basically, an orphan work is a piece of art still covered under copyright with no clear owner.  It is not in the public domain, but no one has claimed it.  How does this happen?  Usually there’s a break in the chain of title.  Copyright terms are currently very long, running for 70 years after the death of the author.  After all, a lot could happen in 70 years.  The original artist could fail to be unclear as to who gets the copyrighted item in their will or the recipient could die without any clear heirs.  As Happy Birthday illustrates, there could also be a lack of clarity regarding who sold what.  When this happens, it’s usually a smart idea to simply avoid using the orphan work.  You can’t easily ask for permission, and may run into infringement issues later.  This has some effects on library digitization efforts, causing them to not digitize works with no clear owner.

In Happy Birthday’s case, that’s precisely what happened.  The Association for Childhood Education (ACE), a charity  co-founded by Happy Birthday’s original co-writer Patty Hill, and the Hill Foundation stepped forward recently to claim ownership of Happy Birthday.  The basis of the Hill children’s claim?  If Warner/Chappell’s ownership of Happy Birthday isn’t valid, then they must own the song instead.

ACE’s argument isn’t entirely laughable either.  According to Glenn Fleishman at Fast Company, ACE received about a third of the royalties from the song (Fleishman provides an excellent account of Happy Birthday’s tangled legal history, by the way).  That at least indicates some claim, or belief that ACE has a claim, to the original copyright.  This would be a difficult argument though.  First of all, the Hill sisters said that they transferred the rights in 1935 to what would become Warner/Chappell , which is the transfer ruled invalid in the original case.  Fleishman also points out the possibility that Patty Hill wrote down the lyrics, and never published them (which would put the expiration of rights in 2017).  ACE could potentially have a valid claim if they found an unpublished manuscript, since that would restore something resembling a chain of title (no easy task there).  There is an obvious problem with this argument: ACE would need to find some manuscript that proves Patty Hill wrote down the lyrics.  Without that, their only other real option is to argue that the court got their ruling on the 1935 registration wrong.

There are two lessons to take away from this case.  First, the Happy Birthday Song’s copyright will seemingly never, ever die (or at least, the case will never end).  Second, always tread very carefully with orphan works.  There is always the possibility that someone will claim it.  When the work is as valuable as Happy Birthday, then someone will almost certainly emerge to claim it.  Unless you have a good argument for Fair Use, it might be best to hold off until the court system makes its decision.

Have any questions about your own work? Make sure to shoot me at email on Nicotera Legal’s contacts page.

Washington’s Trademark Hail Mary

Hello everyone,

Before I get to the task at hand, I would like to make an announcement.  I’m going to start my own law firm, Nicotera Legal, LLC.  My firm will provide a variety of different intellectual property and contracting services to clients in the DC Metro area, so please check out my site.

Now that my shameless plug is out of the way, let’s turn to the major trademark news of the day.  My hometown football team, the Washington Redskins (referred to here on out as Washington, due to the offensive nature of the mascot name) continues its long lawsuit against the United States Patent and Trademark Office (USPTO) to preserve its ownership of the trademark in the team’s name.   Yesterday, Washington’s legal team submitted its opening brief for the appeal of the USPTO’s earlier decision to invalidate the team’s trademark.  This complaint contained a new legal strategy: argue that Washington’s team name is hardly the only potentially offensive trademark currently registered by the USPTO.  What followed was a litany of hilarious tasteless marks (mostly, as the Post points out, registered by porn, beer, and clothing companies) cited in an attempt to argue that the USPTO unfairly singled out Washington’s mascot name.  Furthermore, Washington argued that having refusing to register “disparaging or offensive” marks infringes on a company’s First Amendment Free Speech rights.

Even though the meat of Washington’s arguments lie with the First Amendment, let’s focus on the “arbitrary and capricious” aspect of the brief.  While reading the marks cited makes for solid entertainment during lunch (there aren’t many circumstances where a legal blog can cite marks such as “Slutseeker Dating Service” or “Yid Dish” after all), there is a larger question regarding whether Washington’s central legal argument, claiming that the Trademark Trial and Appeals Board’s (TTAB) was arbitrary, has any merit.  In truth, Washington has a leg to stand on in this regard.  Administrative agencies such as the USPTO have the authority to conduct their own hearings and trials on matters related to their congressional mandate (such as trademark law in the case of the USPTO).  While the court system generally defers to these decisions, a party can appeal these administrative law decisions based on a couple of grounds (as laid out in the Administrative Procedure Act, or APA).  One of the most common grounds for seeking an appeal of an administrative law decision to a federal court is claiming that the agency’s decision was arbitrary and capricious, where the party claims that the agency provided no reason for a decision or failed undergo a serious inquiry when approving a regulation.

The court will have to evaluate whether they agree with this argument.  One issue Washington has is that the TTAB does not consider their rulings on individual trademarks to represent precedent.  In other words, the USPTO considers trademarks individually and does not cite to other trademarks as a way of justifying a decision.  This complicates Washington’s legal argument, since the USPTO’s attorneys can easily state that their decisions are not arbitrary in that they only take each mark in its individualized context.  This will make it much harder for Washington to prevail with their argument that their rejection was arbitrary and capricious.

The First Amendment argument is an interesting one.  Washington’s argument, in short, is that a trademark does not represent a government enforcement and that rejecting a trademark for offensiveness reasons restricts otherwise valid speech.  In my opinion, the court’s decision here will depend on how they view the purpose of a trademark.  Will the court see a trademark as a form of expression or a specialized monopoly granted only to promote business interests?  Trademarks represent a kind of government created monopoly, allowing a particular party to restrict the use of particular words in commerce.  This analysis is complicated by the fact that Washington could continue using the name to promote the team even without a valid trademark but they could not stop other parties from doing the same.  Indeed, as Eugene Volokh points out, the government generally cannot deny a broadly available benefit to private actors based on their viewpoints.  Whether the use of a potentially offensive mascot name is really a “viewpoint” is debatable, but there is a potentially valid argument that the government cannot deny a trademark based on perceived offensiveness under this First Amendment requirement to remain content neutral in the allocation of government provided benefits like trademarks.  Whether the court chooses to go down this path remains to be seen.

Have a great day everyone and, again, check out Nicotera Legal, LLC.