Happy Birthday to You

Now the Oakland-based firm Donahue Fitzgerald is involved in what The New York Times calls “a lawsuit for the ages” to prove that “Happy Birthday to You” is no longer under copyright and belongs to the public.

The story of “Happy Birthday to You” started in 1893, when Mildred and Patty Hill published Song Stories for the Kindergarten, a collection of songs that included “Good Morning to All” – the melody of “Happy Birthday to You” with different lyrics. Mildred composed the music, while her sister, Patty, wrote the lyrics. Patty would bring songs into her kindergarten classes to make sure the songs were easy for young children to sing. “Good Morning to All” was adapted by teachers and schoolchildren for all kinds of occasions, including birthdays. Sometime in the first decade or so after “Good Morning to All” appeared, children were singing “Happy Birthday to You” and the lyrics started to appear in print. Despite the Hill sisters never claiming any rights to the lyrics of “Happy Birthday to You”, subsequent publishers have claimed a copyright in the lyrics to continue to collect royalties on the song.

Rupa Marya leads the band Rupa & the April Fishes and has been a long-time client of Donahue Fitzgerald. She recorded a live album at the San Francisco venue, The Independent, in April 2013. The show coincided with her birthday, and her band and the audience broke into a spontaneous rendition of “Happy Birthday to You”. When she wanted to release that recording as a bonus track on her Live at the Independent CD, she discovered Warner/Chappell claim to own the song. Rather than incur the threat of copyright infringement, she paid $455 for a mechanical license to reproduce the song on her CDs.

Rupa, however, decided to fight back. With the help of her attorneys at Donahue Fitzgerald and together with three filmmakers, who paid for a license for “Happy Birthday to You”, Rupa filed a class-action lawsuit in June 2013. They are asking the court to declare “Happy Birthday to You” in the public domain and force Warner/Chappell to pay back all the musicians, filmmakers and other artists who have wrongly paid licensing fees for “Happy Birthday to You”. The evidence has now been submitted to the court. The judge is expected to issue a ruling in the next several weeks on whether “Happy Birthday to You” is in the public domain.

Donahue Fitzgerald’s story started in 1883, ten years before the story of “Happy Birthday to You” began. The Brooklyn Bridge opened that year, setting a new record for the world’s longest suspension bridge, and Robert M. Fitzgerald opened a legal practice that still serves the Bay Area and still bears his name: Donahue Fitzgerald. Along the way, Donahue Fitzgerald attorneys represented the pioneers and innovators of their time. Before there was a Port of Oakland, Donahue Fitzgerald helped Oakland develop its waterfront. Before BART, Donahue Fitzgerald represented the Key System Transit Lines. The firm’s representation of Pacific Telephone & Telegraph tells you all you need to know about the technology of that time.

Donahue Fitzgerald pioneered the enforcement of software copyrights back when software was still distributed by floppy disk and has recouped almost $250 million dollars for their clients. Since then the firm’s copyright enforcement program has evolved with the emergence of new software distribution channels and new threats to copyrights and trademarks. Mr. Fitzgerald may not have had an inkling that his firm would one day represent the number one app or serve as co-counsel in “a lawsuit for the ages”, but he would have understood the commitment needed to serve such clients.

The “Happy Birthday to You” lawsuit is one of several prominent intellectual property lawsuits in which Donahue Fitzgerald has been involved. Donahue Fitzgerald served as lead counsel in the pioneering, and oft-cited, case of PhoneDog v. Kravitz, No. 11-03474 (N.D. Cal. Nov. 8, 2011), establishing that Twitter accounts can be a protectable trade secret. They helped establish in Vernor v. Autodesk, Inc., 621 F.3d 1102 (9th Cir. 2010), that their client’s software is licensed, not sold. Serving as lead counsel in Autodesk, Inc. v. RK Mace Engineering, Inc., 2004 WL 603382 (N.D. Cal. March 11, 2004), Donahue Fitzgerald established that willful copyright infringement establishes jurisdiction in the copyright owner’s place of business, further protecting the rights of content creators.

What “tech” means has changed a lot in the last 132 years. Neither Robert Fitzgerald nor the Hill sisters could have imagined the technological revolutions that brought us here today or that we’d still be fighting over the rights to a song whose melody first appeared over a century ago. But staying abreast of technological changes, providing sophisticated and practical legal advice, and helping content creators protect their rights is timeless.

This article was published in the September 2015 issue of the Oakland Business Review.