BLS Library Blog

Earlier this month, a class-action complaint was filed in the US District Court for the Southern District of New York in the case of We Shall Overcome Foundation v. The Richmond Organization, Inc. (TRO Inc.) et al. addressing ownership of “We Shall Overcome,” the unofficial anthem to the civil rights movement and a song the Library of Congress called “the most powerful song of the 20th Century”.  According to the late folk singer Pete Seeger, the song became associated with the Civil Rights Movement in 1959, when Guy Carawan sang it  at Highlander, which was then focused on nonviolent civil rights activism. Seeger and other famous folksingers in the early 1960s, such as Joan Baez, sang the song at rallies.

The copyright dispute against the two music-publishing companies, Ludlow Music and the Richmond Organization, seeks a judgment from the court declaring that the defendants’ copyright claim is invalid and ordering the defendants to disgorge previously collected licensing fees. According to the complaint, defendant TRO filed copyrights for “We Shall Overcome” in 1960 and 1963 and has collected millions of dollars in fees over the decades. The law firm for the plaintiff is Wolf Haldenstein, which was involved in the recent successful challenge to Warner/Chappell Music’s claims that it owned the copyright to “Happy Birthday to You.”

The filing argues that TRO-Ludlow’s copyright claims were invalid for several reasons: because it had not been renewed (as required by United States copyright law at the time), the copyright of the 1948 People’s Songs publication containing “We Will Overcome” had expired in 1976. Additionally, it was argued that the registered copyrights only covered specific arrangements of the tune and “obscure alternate verses”, that the registered works “did not contain original works of authorship, except to the extent of the arrangements themselves”, and that the registered copyrights stated that the works were derivatives of a work entitled “I’ll Overcome” which did not exist in the database of the United States Copyright Office.

The Brooklyn Law School Library has in its collection several items related to copyright and music. See for example All You Need to Know about the Music Business by Donald S. Passman (Call # ML3790 .P35 2015) which is on Course Reserve at the Circulation Desk. For more than twenty years, this book has been universally regarded as the definitive guide to the music industry. Now in its ninth edition, this latest edition leads novices and experts alike through the crucial, up-to-the-minute information on the industry’s major changes in response to today’s rapid technological advances and uncertain economy.

The artist Prince (born Prince Rogers Nelson) leaves behind, not only a legacy of music and pop culture, but also a legal legacy dealing with contract law, copyright litigation, and the law related to name changes. Prince’s famous name change in the 1990s during a contractual fight with Warner Brothers is legendary. He changed his name to a glyph that merged the symbols for man and woman and was also the title of his most recent album. Rolling Stone magazine ranked it as the fourth-boldest career move in rock history. Frustrated because Warner Bros. refused to accommodate his prolific ways, he took to appearing in public with the word slave written on his face. After the name change, he no longer considered himself a slave, and released the album Emancipation that he said was based on his studies “of the Egyptians, the building of the pyramids and how the pyramids were related to the constellations. They were a message from the Egyptians about how civilization really started.” The name change had Warner Brothers scrambling to send out font software so reporters could incorporate the symbol into stories. Many of those writing about the musician just found it easier to speak about him as “the artist formerly known as Prince.” Years later, Prince reclaimed his name and began a series of dealings with various record labels and in 2014 struck a landmark deal with Warner brothers regaining control over his back catalog. The effort was in large part aided by an aspect of copyright law that allows authors to grab back rights from publishers after 35 years.

Internet searches for classic recordings like Purple Rain, Around the World in a Day and Sign o’ the Times yield few results whether on top streaming venues like Spotify and Rhapsody or other outlets like Tidal that boast an extensive catalog. This scarcity is a testament to the fierce and independent nature of this musician. When Napster appeared on the scene and more recently, Prince was so protective of his music copyrights that he wanted to change the law to stop other artists from covering his songs. When another artist who uploaded to YouTube a 29-second clip of her infant dancing to Prince’s “Let’s Go Crazy,” he directed Universal Music, pursuant to the Digital Millennium Copyright Act, to send a takedown notice to YouTube, which led to a lawsuit in 2007. In 2015, the 9th Circuit Court of Appeals ruled that copyright holders must consider fair use when sending takedowns. See Lenz v. Universal Music Corp., 801 F.3d 1126 (9th Cir. 2015). In 2014, his efforts to protect his music copyrights led to his suing 22 Facebook users for linking to bootlegs of his recordings. The lawsuit was withdrawn as he later explained to the BBC, “Nobody sues their fans … I have some bootlegs of Lianne [La Havas] but I wouldn’t sell them. But fans sharing music with each other, that’s cool.”

See the Brooklyn Law Library item Digital Copyright: Protecting Intellectual Property on the Internet by Jessica Litman (Call # KF3030.1 .L58 2001) which tells how copyright lobbyists succeeded in persuading Congress to enact laws greatly expanding copyright owners’ control over individuals’ private uses of their works. The efforts to enforce these new rights have resulted in highly publicized legal battles between established media and new upstarts. The author, a law professor at the University of Michigan Law School, argues that the 1998 copyright law as an incoherent patchwork and that there is a needfor reforms that reflect common sense and the way people actually behave in their daily digital interactions.

A US District Court judge in Los Angeles has issued a 41 page ruling that will hopefully end copyright claims to “Happy Birthday to You” perhaps the most recognized song in the English language. Chief U.S. District Judge George King ruled that the publishers Warner/Chappell Music’s claim to own the copyright to “Happy Birthday” is “implausible and unreasonable.” After an announcement of a documentary about the Happy Birthday song. Warner/Chappell demanded a $1,500 licensing fee, which the company making the film agreed to pay. When Warner/Chappell sent a second letter, warning it could claim a $150,000 statutory penalty for copyright infringement, Good Morning to You Productions, the company making the documentary, filed suit in the US District Court for the Central District of California against Warner/Chappell which has collected millions of dollars in licensing fees for “Happy Birthday to You” although the song has been in the public domain for decades.

The opinion provides a history of the tune from before 1893, when sisters Mildred and Patty Hill wrote words and music for 73 songs, composed or arranged by Mildred, with words by Patty. They sold or assigned their rights to Clayton F. Summy on Feb. 1, 1893, for 10 percent of retail sales. The songs included “Good Morning to All.” It had the same tune but different words from Happy Birthday. Summy published a songbook that year under the title “Song Stories for the Kindergarten,” and filed a copyright application on Oct. 16, 1893, in which he claimed to own the copyright, but not to be the author. His copyright expired in the 1920s and he did not immediately renew it. A reconstituted company, the Hill Foundation, applied for a new copyright on it in 1934, and a number of lawsuits followed. By then, a number of other companies claimed to own the copyright, including the Board of Sunday Schools of the Methodist Episcopal Church (1912), and the Gospel Trumpet Co. (1928). The opinion states:

The Hill sisters gave Summy Co. the rights to the melody, and the rights to piano arrangements based on the melody, but never any rights to the lyrics. Defendants’ speculation that the pleadings in the Hill-Summy lawsuit somehow show that the Second Agreement involved a transfer of rights in the lyrics is implausible and unreasonable.

The summary judgment record shows that there are triable issues of fact as to whether Patty wrote the Happy Birthday lyrics in the late Nineteenth Century and whether Mildred may have shared an interest in them as a co-author. Even assuming this is so, neither Patty nor Mildred nor Jessica ever did anything with their common law rights in the lyrics. For decades, with the possible exception of the publication of The Everyday Song Book in 1922, the Hill sisters did not authorize any publication of the lyrics. They did not try to obtain federal copyright protection. They did not take legal action to prevent the use of the lyrics by others, even as Happy Birthday became very popular and commercially valuable. In 1934, four decades after Patty supposedly wrote the song, they finally asserted their rights to the Happy Birthday/Good Morning melody – but still made no claim to the lyrics.

Defendants ask us to find that the Hill sisters eventually gave Summy Co. the rights in the lyrics to exploit and protect, but this assertion has no support in the record. The Hill sisters gave Summy Co. the rights to the melody, and the rights to piano arrangements based on the melody, but never any rights to the lyrics. Defendants’ speculation that the pleadings in the Hill-Summy lawsuit somehow show that the Second Agreement involved a transfer of rights in the lyrics is implausible and unreasonable. Defendants’ suggestion that the Third Agreement effected such a transfer is circular and fares no better. As far as the record is concerned, even if the Hill sisters still held common law rights by the time of the Second or Third Agreement, they did not give those rights to Summy Co.

In light of the foregoing, Defendants’ Motion is DENIED and Plaintiffs’ Motion is GRANTED as set forth above. Because Summy Co. never acquired the rights to the Happy Birthday lyrics, Defendants, as Summy Co.’s purported successors-in-interest, do not own a valid copyright in the Happy Birthday lyrics.

The Brooklyn Law School Library has a wealth of material on the subject of copyright often called a “limited monopoly.” When copyrights grow old and die, the works they protect fall into the public domain. Subject to certain exceptions, public domain works may be freely copied or used in the creation of derivative works without permission, or authorization, of the former copyright owners. One book in the BLS Library collection on copyright and the public domain is  Without Copyrights: Piracy, Publishing, and the Public Domain by Robert Spoo (Call #KF2994 .S656 2013). The book tells the story of  Samuel Roth who made a name–and a profit–for himself by publishing selections from foreign writings–especially the risqué parts–without permission. When he reprinted segments of James Joyce’s novel Ulysses, the author took him to court. The story shows that clashes between authors, publishers, and literary “pirates” influenced both American copyright law and literature itself. From its inception in 1790, American copyright law offered no or less-than-perfect protection for works published abroad–to the fury of Charles Dickens, among others, who sometimes received no money from vast sales in the United States. American publishers avoided ruinous competition with each other through “courtesy of the trade,” a code of etiquette that gave informal, exclusive rights to the first house to announce plans to issue an uncopyrighted foreign work. The climate of trade courtesy, lawful piracy, and the burdensome rules of American copyright law profoundly affected transatlantic writers in the twentieth century. Drawing on previously unknown legal archives, Robert Spoo recounts efforts by James Joyce, Ezra Pound, Bennett Cerf–the founder of Random House–and others to crush piracy, reform U.S. copyright law, and define the public domain.

The Court of Justice of the European Union (CJEU), Europe’s highest court, ruled that website owners can hyperlink to “freely accessible” copyrighted material without seeking rights holders’ permission. The decision in Svensson and Others v Retriever Sverige AB arises out of a case from Sweden’s Court of Appeal that is of interest to Internet users as it deals with the mechanism holding the web together. The dispute involved Retriever Sverige AB, an Internet-based subscription service that indexes links to articles found elsewhere online for free. It posted links to articles published on a newspaper’s website. The articles were written by Swedish journalists. Retriever took the position that it did not have to compensate the journalists for linking to their articles and that embedding the links within its site did not constitute to copyright infringement. The journalists, on the other hand, felt that Retriever, by linking to their articles, had “communicated” their works to the public without permission. The journalists took their case to the Stockholm District Court where they lost their case in 2010 and decided to take the case to appeal. From there the Svea Court of Appeal sought advice from the EU Court.

The CJEU wrote: “In the circumstances of this case, it must be observed that making available the works concerned by means of a clickable link, such as that in the main proceedings, does not lead to the works in question being communicated to a new public. The public targeted by the initial communication consisted of all potential visitors to the site concerned, since, given that access to the works on that site was not subject to any restrictive measures, all Internet users could therefore have free access to them. Therefore, since there is no new public, the authorization of the copyright holders is not required for a communication to the public such as that in the main proceedings.”

The ruling makes clear that while publishing a link to freely available content does not amount to infringement, there are circumstances where that would not be the case. “Where a clickable link makes it possible for users of the site on which that link appears to circumvent restrictions put in place by the site on which the protected work appears in order to restrict public access to that work to the latter site’s subscribers only, and the link accordingly constitutes an intervention without which those users would not be able to access the works transmitted, all those users must be deemed to be a new public,” the Court wrote. The decision is good news for those who want to embed a YouTube video in a blog or Facebook page, and bad news for those who feel that embedding should result in the payment of a licensing fee.

The Brooklyn Law School Library has in its collection Peer-to-Peer File Sharing and Secondary Liability in Copyright Law by Alain Strowel (Call #K1420.5 .P44 2009). Chapter 3, titled Secondary Liability for Copyright Infringement with Regard to Hyperlinks,  states:

“Without hyperlinks, the World Wide Web would not be so compelling. Hyperlinks are, in a way, the threads with which the Web is spun. Instead of users getting tangled in information overload, they find what they are looking for by following links for further reference. Without these links, and without the search engines based on hyperlinking, the information posted online would lose much of its value as it would not be easy to find.

Despite their clear utility, hyperlinks can raise legal liability issues in certain circumstances.”

The US Supreme Court issued its decision in Kirtsaeng v. John Wiley & Sons that the first sale doctrine applies to copyrighted works, such as textbooks, made and sold abroad and re-sold online and in discount stores. In a 6-3 opinion, Justice Stephen Breyer reversed a judgment entered in the Southern District of New York in favor of the publisher against the plaintiff graduate student which the Second Circuit Court of Appeals affirmed in John Wiley & Sons, Inc. v. Kirtsaeng, 654 F. 3d 210 (2011). The student had subsidized the cost of his education by using eBay to resell copies of the publisher’s copyrighted books that his relatives first bought abroad at cut-rate prices. Citing the brief of the American Library Association, Justice Breyer wrote that to rule otherwise would create financial chaos, citing public libraries as an example and asking are “libraries to obtain permission to distribute these millions of books? How can they find, say, the copyright owner of a foreign book, perhaps written decades ago? . . . . Are the libraries to stop circulating or distributing or displaying the millions of books in their collections that were printed abroad?”

The decision discusses 17 U. S. C. §106(3) and the limitations set out in §§107 through 122, including §109(a)’s “first sale” doctrine which dates back over a century. See Bobbs-Merrill Co. v. Straus, 210 U. S. 339 (1908) which dealt with the sale of a copyrighted novel. The doctrine, which limits copyright holders to profits only from the original sale thereby allowing a person to sell the copyrighted work in the United States without punishment and without having to compensate the original copyright holder, ensures a distribution chain of retail items, library lending, gift giving and rentals for a range of intellectual property. The ruling is the first time the Court ruled on whether that first sale doctrine applies to material both manufactured and first purchased outside the United States. Breyer said it does: “The upshot is that copyright-related consequences, along with language, context, and interpretative canons, argue strongly against a geographical interpretation.”

The Brooklyn Law School Library has a number of items in its collection on copyright and the first sale doctrine. See the third edition of Examples & Explanations: Copyright (Call # KF2995 .M35 2012) by Stephen M. McJohn which is on reserve at the circulation desk. Chapter 12 deals with the First Sale (including the Distribution Right and Importation). The remaining content is: An overview of copyright — Works of authorship — Originality — Fixation — Ideas are not subject to copyright — More excluded subject matter : functional aspects, infringing material, government works — Initial ownership of copyright — Formalities : copyright notice, registration, and deposit — Duration of copyright – Copyright transactions — The Section 106 exclusive rights — First sale — Some other limits on the exclusive rights — Fair use — Moral rights in works of visual art — Protections for technological measures and copyright management information — Jurisdiction, standing, and the elements of an infringement action — Contributory infringement and vicarious liability — Remedies — State law theories and federal preemption.