Baldwin v. EMI Feist Catalog, Inc.

Addressing issues of copyright ownership and the effectiveness of copyright termination notices, the U.S. Court of Appeals for the Second Circuit reversed the district court’s summary judgment decision, terminating effective next year, the rights of the current copyright holder to the classic Christmas song, “Santa Claus is Comin’ to Town.” Tracing the history of rights to the song through decades that also included significant changes in copyright law, the Court held that the heirs of one of the songwriters, J. Fred Coots (the Coots Heirs), will own the rights to the song starting December 2016. Baldwin v. EMI Feist Catalog, Inc., Case No. 14-182-cv (2nd Cir., Oct. 8, 2015) (Livingston, J.).

In reaching its decision, the 2nd Circuit confronted two issues: identifying the agreement that was the source of EMI’s current rights in the song, and whether any of the termination notices served by the Coots Heirs terminated those rights.

The songwriters had sold the song and copyright to EMI in 1934. EMI and Coots later entered into an agreement in 1951 (1951 Agreement), where Coots assigned EMI rights to the song, as well as “all renewals and extensions” of the song’s copyright. Subsequently, Coots and EMI’s successor-in-interest entered into another agreement (the 1981 Agreement), wherein Coots assigned EMI’s successor-in-interest all of his rights and interests “whatsoever now or hereafter known or existing.”

The Court concluded that the 1981 Agreement was the source of EMI’s rights, because it granted EMI the same rights it had under the 1951 Agreement, and in addition, renewal rights. The Court found that the parties intended for the 1981 Agreement to replace and supersede the 1951 Agreement. Because the 1981 Agreement was the source of EMI’s rights, the Court concluded that Coots Heirs had the right, under 17 U.S.C. § 203, to terminate that agreement. Section 203 permits authors and their heirs to terminate grants executed on or after January 1, 1978 “beginning at the end of thirty-five years from the date of execution of the grant”—in this case, as of December 15, 2016.

The 2nd Circuit next addressed whether the 1981 Agreement had in fact been terminated and, if so, when that termination becomes effective. After negotiations with EMI failed, the Coots Heirs served EMI a termination notice in 2007. That notice stated that the 1981 Agreement would terminate on December 15, 2016. EMI argued that the 2007 termination notice could not be effective as of that date because the 1981 Agreement covered the right to publication, thus meaning that EMI’s rights could not be terminated until 2021. The Court rejected EMI’s argument, concluding that the 1981 Agreement did not cover the right to publication because publication happens when the work is first sold, in this instance well before the 1981 Agreement. Thus, the Court found that the termination notice was valid and its December 2016 termination date effective.