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October 9, 2015
  Baldwin v. EMI Feist Catalog
Case Name: Baldwin v. EMI Feist Catalog, Inc.

Headline: Rights To "Santa Claus is Comin' to Town" Will Return to Songwriter's Family in 2016

Area of Law: Copyright

Issue(s) Presented: Whether the notice of termination that the statutory heirs of the songwriters served on the defendant validly terminated the defendant's copyright.

Brief Summary: The plaintiffs - the statutory heirs of J. Fred Coots, who co-wrote "Santa Claus is Comin' To Town" - began trying in 2004 to terminate rights in the song held by defendant EMI Feist Catalog, to whom Coots and his co-writer had sold the song and copyright in 1934. In 2007 and again in 2012, they served copyright termination notices on the defendant. They subsequently sought a declaratory judgment that these termination notices were effective and that the defendant's rights in the song would terminate as of 2016. Although the United States District Court for the Southern District of New York ruled against them, the United States Court of Appeals for the Second Circuit reversed that decision and ruled in their favor.

Extended Summary: J. Fred Coots and Haven Gillespie, the authors of "Santa Claus is Comin' to Town," ("the Song") first sold their rights to the Song to EMI Feist Catalog, the defendant, in 1934. In 1951, the authors then granted all renewal rights and extensions of all copyrights to the Song for all renewal periods to EMI. EMI later renewed their copyright in the Song, setting an expiration date of 1990. However, in 1976 Congress enacted a statutory scheme that gave authors and their statutory heirs the right to terminate previously made grants of copyright, and to recapture some of the value associated with the authors' work. The 1976 statutory scheme also extended EMI's renewal term until 2009.

According to the statutory scheme, which created two classes of copyright grants, pre-1978 and post-1978, the 1951 Agreement was subject to termination starting on September 27, 2009 and termination could be served as early as ten years before that date. In 1981, Coots heirs served the first termination notice on EMI, naming October 23, 1990, as the termination date for the 1951 Agreement. Following the 1981 Termination Notice, EMI and the heirs negotiated an Agreement, the 1981 Agreement. The 1981 Agreement recited that Coots had transferred the Song's renewal term to EMI in 1951, that EMI had renewed the copyright, and that Congress extended the renewal term, and that EMI possessed all of the copyright interest for the balance of the period. The 1981 Termination Notice was returned to the heirs, and unrecorded. In 1998 Congress enacted the Sonny Bono Copyright Term and added a new termination right that could be effected at any time during a period of 5 years beginning at the end of 74 years from the date copyright was originally secured. This meant that in the case of the Song, termination could start on September 27, 2009.

In 2004, the author's heirs served EMI a termination notice with an effective date of September 27, 2009. EMI responded that the heirs had already exercised their termination rights. The heirs served EMI again in 2007 and 2011, with similar responses from EMI. EMI continually argued that the heirs already exercised their termination right and that they owned the copyright pursuant to the 1951 Agreement and termination was unavailable. According to the 1978 Statutory Scheme, if EMI owned copyright under the 1951 Agreement, the heirs were powerless to termination, but if EMI owned the copyright under the 1981 Agreement, the heirs could effectively terminate. In 2011 the heirs sued EMI seeking declaration that termination was effective. The district court granted summary judgment to EMI, holding that its rights in the song were pursuant to the 1951 Agreement, and termination was unavailable.

The United States Court of Appeals for the Second Circuit reversed, and entered a declaratory judgment in the Plaintiff's. The Second Circuit found that EMI owned the copyright pursuant to the 1981 Agreement, as it was sufficiently clear the parties intended it to replace the 1951 Agreement. The Second Circuit then found that because EMI owned the copyright pursuant to the 1981 agreement, which was a post-1978 agreement, the heirs were entitled to terminate. Therefore, the 2007 Termination Notice will terminate the 1981 Agreement in 2016 and the Song's copyright will be owned by the author's heirs. To read the full decision please visit: http://www.ca2.uscourts.gov/de...e9cbbea3e97a/1/hilite/

Panel: Circuit Judges Pooler, Livingston, and Droney

Argument Date: December 11, 2014

Argument Location: New York

Date of Issued Opinion: October 8, 2015

Docket Number: No. 14-182-cv

Decided:
Reversed and Remanded

Case Alert Author: Elizabeth Perreca

Counsel: Thomas K. Landry, Carey Rodriquez O'Keefe Milian Gonya, LLP, for Plaintiffs-Appellants.
Donald S. Zakarin (Frank P. Scibilia, Ross M. Bagley, on the brie), Pryor Cashman LLP, for Defendant-Appellee.

Author of Opinion: Judge Debra Ann Livingston

Circuit: 2nd Circuit

Case Alert Circuit Supervisor: Emily Gold Waldman
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    Posted By: Emily Waldman @ 10/09/2015 01:03 PM     2nd Circuit  

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