Santa Song Rights are Comin' Back to Composer's Heirs

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By Anandashankar Mazumdar

Oct. 8 — Heirs of the composer of the holiday classic “Santa Claus Is Comin' to Town” can reclaim their rights to the song and seek new terms for its use, the U.S. Court of Appeals for the Second Circuit ruled.

The appeals court Oct. 8 overturned a federal district court ruling that rejected the heirs' attempts to terminate an assignment of rights to the publisher that has controlled the song for decades.

John Frederick Coots (1897-1985), known as J. Fred Coots, was a composer of more than 700 musical works, several of which he wrote with lyricist James Lamont “Haven” Gillespie (1888-1975), including the jazz standard “You Go to My Head.”

In 1934, Coots and Gillespie composed the holiday song “Santa Claus Is Comin' to Town” and assigned its copyright interest to Leo Feist Inc., which registered the work with the Copyright Office. In 1951, Coots also transferred to Leo Feist the renewal and extension rights. When the initial copyright expired in 1961—pursuant to the 1909 Copyright Act—Leo Feist filed for the 28-year renewal term.

In 1981, Coots submitted a notice to Leo Feist's successor, Robbins Music Corp., purporting to terminate as of 1990 the 1951 assignment, which is provided for by Section 304(c) of the 1976 Copyright Act.

The termination provisions of the Copyright Act are intended to allow a copyright holder—or his or her heirs—to renegotiate or seek a better deal for a work whose value might not have been apparent when it was first sold.

Subsequently, Coots reached a deal with EMI Feist Catalog Inc. to grant EMI all rights in the extended renewal period beginning in 1990 in exchange for $100,000 and royalties. Under current law, copyright protection for the work will expire in 2029.

Coots's counsel had forwarded the 1981 termination letter for recordation at the Copyright Office. However, after the deal was reached between Coots and EMI, the Copyright Office returned the notice to him unrecorded.

In 2004, Coots's daughter, Gloria Coots Baldwin, sent a termination notice to EMI, purporting to terminate the assignment as of 2009, pursuant to Section 304(d) of the Copyright Act. She sent another notice in 2007, purporting to terminate the 1981 agreement, pursuant to Section 203 of the Copyright Act. Again, in 2012, she sent a Section 203 notice to EMI regarding the 1981 agreement.

Baldwin and other heirs of Coots then sued EMI, seeking a declaration that the notices had effectively terminated EMI's rights in “Santa Claus Is Comin' to Town.”

EMI moved for summary judgment, arguing that its rights in the song were based on a 1951 assignment that the plaintiffs did not have the right to terminate.

Judge Shira A. Scheindlin of the U.S. District Court for the Southern District of New York granted the motion after finding that the failure of recordation rendered the termination attempt unsuccessful and that the subsequent termination letters were also ineffective.

Baldwin appealed, arguing that EMI's rights were not based on the 1951 assignment but rather on a 1981 assignment that was terminable.

The appeals court reversed the district court's ruling, finding that EMI's rights in the song were based on the 1981 agreement, and not the 1951 assignment. Thus, the court said, the 2007 termination notice effectively terminates the 1981 assignment as of 2016.

Looking at the language of the 1981 contract, the court said that the “parties to the 1981 Agreement ‘clearly … manifested' an intention to replace the 1951 Agreement.”

In that case, Section 203 of the Copyright Act applied and, thus, Baldwin had the right to terminate the 1981 agreement.

Furthermore, the court said that the 2007 notice constituted an effective termination notice under Section 203.

The court, thus, said that Baldwin was entitled to the declaratory judgment she sought.

The court's opinion was issued by Judge Debra Ann Livingston and joined by Judges Rosemary S. Pooler and Christopher F. Droney.

Baldwin was represented by Carey Rodriguez O'Keefe Milian Gonya LLP, Washington, D.C. EMI was represented by Pryor Cashman LLP, New York.

To contact the reporter on this story: Anandashankar Mazumdar in Washington at amazumdar@bna.com

To contact the editor responsible for this story: Mike Wilczek in Washington at mwilczek@bna.com

Text is available at: http://www.bloomberglaw.com/public/document/GLORIA_COOTS_BALDWIN_PATRICIA_BERGDAHL_CHRISTINE_PALMITESSA_Plain.