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Santa Claus is Comin’ to Town and Back to its Original Author

The Second U.S. Circuit Court of Appeals panel ruled that the rights to the familiar Christmas tune “Santa Claus is Comin’ to Town,” will revert to the original artist’s heirs in 2016. The original composers, John Frederick Coots and Haven Gillespie, licensed the rights to the song in 1934 to Leo Feist, Inc., presently known as EMI Feist Catalog, Inc.

In 1976, the copyright law in the U.S. was updated significantly (the “1976 Act”), Pub. L. No. 94-553, 90 Stat. 2541.  The 1976 Act included a statutory right that allowed authors and their statutory heirs the ability to terminate grants of copyright licenses under certain conditions. The Coots Family (the “Grantor”) had pursued their termination rights in 1981 and attempted to file a termination notice with the Copyright Office, but the filing was ultimately returned unfiled by the Copyright Office.   The filing prompted negotiations among the Grantor and the then current licensee, Robbins Music Corporation.  The Grantor and Robbins entered into a new agreement whereby the Grantor was to receive $100,000 and a royalty payment for the period of 1981 through 1995 and for the “period of the Extended Renewal Term of Copyright” (which was left undefined in the agreement) in return for their rights in the copyright (the “1981 Agreement”).  The parties expected the copyright to expire on December 31, 2009, however, the copyright laws were once again updated in 1998 following the enactment of the Sonny Bono Copyright Term Extension Act (the “1998 Act”), Pub. L. No. 105-298, 112 Stat. 2827

The 1998 Act afforded original copyright holders the right to extend the renewal term of their copyrights until 95 years from the original copyright registration date.  “Santa Claus is Comin’ to Town” was registered in 1934 and following the 1998 Act, the copyright would expire on December 31, 2029.   The 1998 Act also provided copyright holders with a new termination right, similar to the right afforded in the 1976 Act.  Under the 1998 Act, grantors are permitted to terminate their grants or licenses at any time during the “period of 5 years beginning at the end of the 75 years from the date copyright was originally secured.” For the Coots family, this right would be ripe in 2009 and accordingly, they served a termination notice on EMI Feist Catalog, Inc.  (the current grantee) to cancel the 1981 Agreement and filed it with the Copyright Office.

EMI responded with a $2.75 million offer for ownership of the song. The family refused the offer and filed suit against EMI in 2012. This case was decided by U.S. District Judge Shira Scheindlin of Manhattan, who ruled in favor of EMI in 2013. According to this judgment, the rights to the song would stay with the music company until the copyright’s expiration date in 2029.

The Coots family appealed and the Second U.S. Circuit Court of Appeals reversed the decision, determining that EMI owned the rights under the 1981 agreement, which was subsequent to the 1976 statute allowing heirs to terminate grants. Therefore, the Coots’ 2007 Termination Notice will effectively terminate the 1981 Agreement and they will regain rights to the song on December 15, 2016, just in time for Christmas.

Court Decision

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About this Author

Kurt E. Anderson, Intellectual Property Attorney,  Giordano Law Firm
Shareholder

In the area of intellectual property and technology law, Mr. Anderson guides clients through the complexities of trademark development, registration, licensing, infringement and policing. He also counsels clients regarding copyright registration, licensing and infringement. Mr. Anderson prepares, reviews and negotiates licensing and development agreements, supply and distribution agreements, independent contractor agreements and intellectual property related professional service agreements.

In the area of business and banking law, Mr. Anderson counsels closely held small to medium...

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Melissa V. Skrocki, Giordano Law Firm, Business Attorney
Associate

Ms. Skrocki dedicates her time to counseling business clients through various transactions with an eye towards trademark, licensing, copyright and other related intellectual property issues. Ms. Skrocki's business law practice includes the representation of clients in contract negotiations, confidentiality agreements, organization and formation of business entities, mergers and acquisitions, shareholder agreements and licensing agreements. In addition, Ms. Skrocki also represents clients in commercial banking transactions and bank regulatory matters.

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Christopher J. Marino, Giordano Law Firm, Litigation Attorney
Associate

Mr. Marino has a bi-coastal litigation practice focusing on general commercial and business disputes, trademark law, copyright law, trade secret law and unfair business practices, and entertainment and media law. He has extensive experience litigating and resolving general commercial and intellectual property disputes, and also provides transactional and business counseling in the areas of copyright, trademark, trade secret, unfair competition and business practices, and general commercial law. Mr. Marino also has experience serving as outside general counsel, advising clients in the area...

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