Marya v. Warner/Chappell Music, Inc. (131 F. Supp. 3d 975, 2015)

MEMORANDUM AND ORDER RE: (1) CROSS-MOTIONS FOR SUMMARY JUDGMENT (Dkt. 179); (2) DEFENDANTS’ MOTION FOR LEAVE TO FILE SUPPLEMENTAL EVIDENCE (Dkt. 223); and (3) PLAINTIFFS’ EX PARTE APPLICATION TO SUPPLEMENT THE RECORD (Dkt. 224)

GEORGE H. KING, Chief United States District Judge

This matter is before us on the Parties’ Cross-Motions for 'Summaiy Judgment (“Cross-Motions”). On March 23, 2015, we héld a hearing on thé Cross-Motions. (Dkt. 207 (minutes); Dkt.‘ 208 (transcript).) On May 18, 2015, we ordered additional briefing, (Dkt. 215), and on- July 29, 2015, we held a further hearing. (Dkt. 229 (minutes); Dkt. 230 (transcript).) As the Parties' are familiar with the facts, we will repeat them- only as necessary. Accordingly, we rule as follows:

I. Background

Plaintiffs Rupa Marya, Robert Siegel, Good Morning to You Productions Corp., and Majar Productions, LLC (collectively, “Plaintiffs”) filed this class action to declare invalid Defendants Warner/Chappell Music, Inc. (“Warner/Chappell”) and Sum-my-Birchard, Inc.’s (“Summy-Birchard”) (collectively, “Defendants”) purported copyright in the famous song Happy Birthday To You (“Happy Birthday”). (Dkt. 95; -Fourth Amended Consolidated Complaint (“FACC”).)

" The classic melody of Happy Birthday is the same as that of another song called Good Morning To All (“Good Morning ”) (hereafter, the “Happy Birthday/Good Morning melody”). ■ (Statement of Uncontroverted Facts (“SUF”) P17.) At some time before 1893, Mildred Hill and Patty Hill wrote Good Morning. (SUF P3, P5.) Mildred composed* the music with Patty’s help, and Patty wrote, the lyrics, (SUF P6.) The lyrics of Good Morning are -similar to those of Happy.Birthday:

In 1893, Mildred and Patty assigned their rights to the manuscript containing Good Morning and other songs to. Clayton F. Summy (“Mr. Summy”). (SUF P7.) A copy of the . assignment is not available, but the Parties do not dispute that the assignment occurred. (SUF P8.) That same year, Mr. Summy published the manuscript in, and filed for copyright registration of, a songbook titled Song Stories for the Kindergarten (“Song Stories ”). (SUF PIO, P13.) After Mildred died, Jessica Hill, a third Hill sister, filed for renewal of the copyright to Song Stories in 1921 as one of Mildred’s heirs. (SUF P44.) Under the Copyright Act of 1909, works could receive copyright protection for two consecutive 28-year terms. See 17 U.S.C. § 24 (1909 Act). Accordingly, copyright protection for Song Stories, including the song Good Morning, expired in 1949.

The. origins of the lyrics to Happy Birthday (the “Happy Birthday lyrics”) are less clear. The Happy Birthday lyrics did, not appear in Song Stories. (SUF P18.) The first reference to them in print appeared in an article from 1901 in the Inland Educator and Indiana School Journal:

A birthday among the little people is always a special occasion. The one who is celebrating is decorated with a bright flower or badge and stands in the center of the circle while the children sing “Happy birthday to you.” .

(Joint Appendix (“J.A.”) 8.). The full Happy Birthday lyrics did not appear in the article. (SUF P27.) In 1909, a prayer songbook similarly made reference to the song but did not include the lyrics. (J.A. 9.) .

Publication of the full Happy Birthday lyrics first occurred in a 1911 book titled The Elementary Worker and His Work. (J.A. 11 at 290; SUF P34.) The book did not credit anyone with authorship of the lyrics, but mentioned that Happy Birthday and Good Morning shared the same tune, and noted that the latter song had been published in Song Stories. (J.A. 11 at 290, 294; SUF P35.) The Elementary Worker and His Work was registered for. a copyright in 1911. (J.Á. 12; SUF P36.) After 1911, Happy Birthday appeared in other publications — Harvest Hymns in 1924 and Children’s Praise and Worship in 1928. (J.A. 18, 21; SUF P49, P54.) These publications similarly did not credit anyone with creating the Happy Birthday lyrics. (J.A. 18, 21.) Children’s Praise and Worship was registered for a copyright at the time of publication. (J.A. 22; SUF P56.) Next, in the early 1930s, Happy Birthday appeared in a series of movies — Girls About Toum, Bosko’s Party, Strange Interlude, Baby Take a Bow, The Old Homestead, and Way Down East. (J.A.- 25-26, 30, 35, 39, 41; SUF P64-65, P69, P71, P78, P94, P102.) Finally, in 1933, Happy Birthday was performed publically in the play As Thousands Cheer. (J.A. 29; SUF P77.)

In 1934, Jessica filed a lawsuit against the producers of As Thousands Cheer for copyright infringement (hereafter, the “As Thousands Cheer lawsuit”). (J.A. 32; SUF P81.) Notably, the basis for her infringement claim was not that the producers had infringed any rights she allegedly held in the Happy Birthday lyrics. Rather, she alleged that the defendants infringed the copyright in Good Morning, which included the common melody for the two songs. (J.A. 32 at 584; SUF P81.) TIME magazine, the New York Times, and the New York Herald Tribune all reported the As Thousands Cheer lawsuit. (J.A. 34, 37, 90.) Patty and Jessica were both deposed in that action. (J.A. 87; SUF P96.) In Patty’s deposition, she claimed that she wrote the lyrics to Happy Birthday around the time Good Morning was created. (J.A. 87 at 1007.) The outcome of the As Thousands Cheer lawsuit is not clear from the record before us, but neither party claims it has any bearing on the instant action.

In 1935, the Clayton F. Summy Company (“Summy Co.”) registered copyrights to two works entitled “Happy Birthday to You” — registration numbers E51988 and E51990. (J.A. 44, 48.) Defendants argue that E51990 is the publication that secured a federal copyright in the Happy Birthday lyrics, and they have staked their claim to the lyrics on that registration.

Our record does not contain any contractual agreement from 1935 or before between the Hill- sisters and Summy Co. concerning the publication and registration of these works. (SUF Plll-12.) What little information we have about the circumstances under which E51990 was published and registered comes from a federal lawsuit filed in 1942 by the Hill Foundation — an entity formed by Jessica and Patty — against Summy Ca in the Southern District of New York (hereafter, the “Hill— Summy lawsuit”). (J.A. 50.) The Amended Complaint, discussed in more detail below, alleged that Summy Co. had granted licenses to movie and play producers without the Hill sisters’ authorization. The Hill Foundation alleged that, in addition to an agreement between Mildred and Patty and Summy Co. concerning the copyright in Song Stories' and Good Morning (the “First Agreement”), there was another agreement from 1934 and 1935 in which Jessica granted Summy Co. “a number of licenses” for “various piano arrangements of the song variously entitled ‘GOOD MORNING TO ALL’ or ‘HAPPY BIRTHDAY TO YOU’” (the' “Second Agreement”). (J.A. 50 at ¶24:) In Summy Co.’s Answer to the Amended Complaint, it admitted that it had entered into the Second Agreement with Jessica, stating, that she “assigned ... various piano arrangements of ... ‘Good Morning To All’ ” to Summy Co. (J.A. 51 at ¶ 18.)

In 1944, the Hill sisters and Summy Co. settled the Hill-Summy lawsuit by entering into a new agreement (the “Third Agreement”). (J.A. 54; SUF P141.) The Hill sisters, via the Hill Foundation, assigned to Summy Co. all -of their rights in eleven different copyrights, including E51990, E51988, and the Song Stories copyright. (J.A. 54 at 702-03.) After the Third Agreement, Summy Co. filed three lawsuits alleging copyright infringement related to Happy Birthday. (J.A. 55-57.) E51990 is not mentioned in the complaints for any of these lawsuits. (Id.) When describing the song Happy Birthday, the complaints each said that “[o]ne of the songs in [Song Stories ], entitled ‘Good Morning To All’, later became popularly known as ‘Happy Birthday to You’, the opening lines of the verses later written by Patty S. Hill for the song.” (J.A. 55 at ¶ 15, 56 at ¶ 15, 57 at ¶ 15.) None of the lawsuits asserted infringement of any purported right that Summy Co. had to the lyrics from its ownership of E51990..

On April 21, 2014, Plaintiffs filed their FACC in this action. (Dkt. 95.) Plaintiffs contend that Defendants do not own a copyright in the Happy Birthday lyrics and that they should be compelled to return the “millions of dollars of unlawful licensing fees” they have collected by wrongfully asserting copyright ownership in the Happy Birthday lyrics. (FÁCC at 114.) We bifurcated this case on October 16, 2013. (Dkt. 71.) We will first determine whether Plaintiffs are entitled to a declaratory judgment invalidating Defendants’ purported claim of copyright in the lyrics. (Id. at 4.)

II. New Evidence

Both Parties recently sought to add new evidence to the summary judgment record after the Cross-Motions had been taken under submission. (Dkts. 223-24.) In particular, Plaintiffs seek to add evidence regarding the 1922 publication of the fourth revised edition of The Everyday Song Book. Good Morning and Happy Birthday are printed as one song called “Good Morning and Birthday Song” in the book. (Dkt. 225, Manifold Deck, Ex. C at 20.) Below the title of the song, a caption reads: “Special permission through courtesy of The Clayton F. Summy Co.” (Id.) Defendants do not oppose the introduction of this evidence into the record, but they dispute its significance. As Plaintiffs’ request to supplement the. record is unopposed, we hereby GRANT that request.

Defendants seek to introduce new evidence regarding the deposit copy of E51990. (Dkt. 223.) The Copyright Office no longer has the deposit copy for E51990, and Plaintiffs have argued that the Happy Birthday lyrics may not have even appeared in the work that was deposited. (See, e.g., Cross-Motions for Summary Judgmént (hereafter, “Joint Brief’) at 25.) Defendants now proffer a copy of a work that was deposited with the British Museum on the same day that E51990 was registered, which they claim to have obtained ■ recently. (Defs.’ Mot. to Supplement the Record, Ex. A.) Plaintiffs argue that the introduction of this evidence is prejudicial because Defendants did not tell Plaintiffs that they were looking for a copy of the work from the British Museum during discovery. We do. not see how Plaintiffs are prejudiced by Defendants’ failure to disclose their efforts to find the British Museum copy. Plaintiffs were well aware of the. dispute surrounding the deposit copy for E51990, and Defendants’ disclosure of their earlier fruitless efforts would have had minimal, if any, impact on how Plaintiffs conducted discovery. Accordingly, we hereby GRANT Defendants’ request to supplement the record.

III. Summary Judgment Standard

We may grant summary judgment only “if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a). “Only disputes over facts that might affect the outcome of the suit under the governing law will properly preclude the entry of summary judgment.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). On a motion for summary judgment, the district court’s “function is. not... to weigh the evidence and determine the truth of the matter but to determine whether there is a genuine issue for trial.” Id. at 249, 106 S.Ct. 2505.

The moving party bears the initial responsibility to point to the absence of any genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265.(1986). “When the party moving for summary judgment would bear the burden of proof at trial, it must come forward with evidence which would entitle it to a directed verdict if the evidence went uncontroverted at trial.” Miller v. Glenn Miller Prods., Inc., 454 F.3d 975, 987 (9th Cir.2006) (citation and quotation marks omitted). If the moving party meets its initial burden of demonstrating that summary judgment is proper, “the nonmoving party must come forward with specific facts showing there is a genuine issue for trial” in order to survive summary judgment. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986) (emphasis in original) (internal quotation 'marks and citations omitted). Where the nonmoving party has the burden of proof at trial, the moving party can carry its initial burden either by submitting affirmative evidence that there is not a triable, factual dispute or by demonstrating that the nonmoving party “fail[ed] to make a showing sufficient to establish the existence of an element essential to that party’s case....” Celotex Corp., 477 U.S. at 322, 106 S.Ct. 2548. The burden then shifts to the nonmoving party “to designate specific facts demonstrating the existence of genuine issues for trial.” In re Oracle Corp. Sec. Litig., 627 F.3d 376, 387 (9th Cir.2010) (citing Celotex Corp., 477 U.S. at 324, 106 S.Ct. 2548).

On cross-motions for summary judgment, we must consider .each motion separately to . determine whether either party has met its burden -with the facts construed in the light most favorable to the nonmoving party. See Fair Hous. Council of Riverside Cty., Inc. v. Riverside Two, 249 F.3d 1132, 1136 (9th Cir.2001).

IV. Burden of Proof in a Declaratory Judgment Action

Defendants contend that the burden of proof lies with Plaintiffs on all issues because the default rule places the burden of proof “on the party seeking relief.” Schaffer ex rel. Schaffer v. Weast, 546 U.S. 49, 51, 126 S.Ct. 528, 163 L.Ed.2d 387 (2005). The Supreme Court held otherwise in Medtronic, Inc. v. Mirowski Family Ventures, LLC, — U.S.-, 134 S.Ct. 843, 187 L.Ed.2d 703 (2014). In Medtronic, the plaintiff sought a declaratory judgment that its products did not infringe the defendant’s patents. Id. at 847. The Court placed the burden of proof on the patentee, even though it was nominally the defendant. Id. at 849. The Court observed that Schaffer articulated the basic rule for where the burden of proof lies, and . it characterized “declaratory judgment suits like the one at issue here” as an “exception to the basic rule.” Id. at 851.

We see no basis for distinguishing Medtronic from the instant action. Here, too, Plaintiffs have sought a declaratory judgment in the shadow of a threatened infringement suit. (See, e.g., FACC at ¶ 122 (“Faced with a threat of substantial penalties for copyright infringement, on or about March 26, 2013, plaintiff GMTY was forced to and did pay defendant "Warner/Chappell -the sum of $1,500 for a synchronization license.... ”).), Accordingly, just as in Medtronic, there is no reason to relieve the alleged owners of the intellectual property of the usual burden of proof just because they are nominally the defendants in this declaratory judgment action. See also Williams v. Bridgeport Music, Inc., No. CV-13-6004-JAK (AGRx), 2014 WL 7877773, at *10 (C.D.Cal. Oct. 30, 2014) (applying Medtronic to a declaratory judgment copyright case and concluding that the defendants have the burden of proof).

V. Validity of Defendants’ Copyright

Defendants claim to have a copyright in the Happy Birthday lyrics. As a musical work, Happy Birthday has at least two copyrightable elements, the music and the lyrics, and each element is protected against infringement independently. See 1-2 Nimmer on Copyright § 2.05 (“Suppose the plaintiffs work includes both music and ‘accompanying’ words, but the defendant copies only the plaintiffs words, unaccompanied by his music, or only his music, unaccompanied by the words. It was clear under the 1909 Act, and remains clear under the present Act, that ... the copyright ... will protect against unauthorized use of the music alone or of the words alone, or of a combination of music and words.”). The distinction between the music and the lyrics as copyrightable elements is critical in this case because both Parties agree that the Happy Birthday melody was borrowed from Good Morning and entered the public domain a long time ago. The Parties disagree only , about the status of the Happy Birthday lyrics. Defendants contend, in brief, that the Hill sisters authored the lyrics to Happy Birthday around the turn of the last, century, held onto the common law rights for several decades, and then transferred them to Summy Co., which .published and registered them for a federal copyright in 1935. Plaintiffs challenge nearly every aspect of this narrative. They argue that the lyrics may have been written by someone else, the common law copyrights in the lyrics were lost due to general publication or abandonment before the lyrics were published, and the rights were never transferred to Summy Co.

A. Presumption of Validity

Before we address the merits of the Parties’ respective arguments, we must consider what evidentiary weight should be afforded to the registration certificate for E51990. The 1909 Copyright Act, which 'governs E51990, did not require that a work be registered to obtain a federal copyright. See 2-7 Nimmer § 7.16. But registration was nonetheless highly desirable, not only because it was a precondition to the filing of an infringement suit, but also because, once registered, the certificate of registration" “shall be' admitted in any court as prima facie evidence of the facts stated therein.” 17 U.S.C. § 209 (1909 Act); see also 17 U.S.C. § 410(c) (1976 Act) (providing for the presumption of validity in the modern Copyright Act). Furthermore, “[although the ‘facts’ stated in a certificate of registration are limited to the date, name and description of the work, and name of the registration holder, a majority of courts have held that § 209 [of the 1909 Copyright Act] creates a rebuttable presumption that the certificate holder has met all the requirements for copyright validity.” Acad. of Motion Picture Arts & Scis. v. Creative House Promotions, Inc., 944 F.2d 1446, 1451 (9th Cir.1991). Once a claimant shows that she has a certificate of registration, the burden of proof shifts to the opposing party who must “offer some evidence or proof to dispute or deny the [claimant’s] prima facie case.” United Fabrics Int’l, Inc. v. C & J Wear, Inc., 630 F.3d 1255, 1257 (9th Cir.2011).

“The presumption ■... is not an insurmountable one, and merely shifts to the [challengers] the burden to prove the invalidity of the [ ] copyrights.” Masquerade Novelty, Inc. v. Unique Indus., Inc., 912 F.2d 663, 668 (3d Cir.1990). The underlying rationale for the presumption of validity is that the Copyright Office implicitly determines whether a work is copyrightable whenever it issues a registration, and courts should defer to the Office’s finding. See, e.g., Russ Berrie & Co. v. Jerry Eisner Co., 482 F.Supp. 980, 988 (S.D.N.Y.1980) (“The presumption of validity attaching to copyright registration is of course a function of judicial deference to the agency’s expertise.”). But when there is a material mistake in the registration, the presumption of validity is rebutted, if not voided altogether. See Data Gen. Corp. v. Grumman Sys. Support Corp., 36 F.3d 1147, 1163 (1st Cir.1994) (“We assume for argument’s sake that a material error in a copyright deposit, even if unintentional, may destroy the presumption of validity.”); Masquerade Novelty, 912 F.2d at 668 n. 5 (stating that if the registration contains “a material, but inadvertent omission,” it may be the correct approach “to deprive the plaintiff of the benefits of [the presumption of validity] and to require him to establish the copyrightability of the articles he claims are being infringed”); Wilson v. Brennan, 666 F.Supp.2d 1242, 1251-52 (D.N.M.2009) (following the approach suggested in Masquerade Novelty and Ddta General in denying a copyright claimant any presumption of validity as a result of errors in a registration); see also Rouse v. Walter & Assocs., L.L.C., 513 F.Supp.2d 1041, 1065 (S.D.Iowa 2007) (concluding that posséssion of a “belatedly filed [c]ertifieate” with no listed publication date did not, under the circumstances of the case, constitute “prima facie evidence of the validity of the copyright”); Gibson Tex, Inc. v. Sears Roebuck & Co., 11 F.Supp.2d 439, 442 (S.D.N.Y.1998) (“[T]he failure to alert the Copyright Office to relationships between the work for which registration is sought and prior works of others endangers the presumption of validity____ [T]he Court finds that Gibson’s failure to register the design as a derivative work rebuts the presumption of the copyright’s validity.”).

Defendants claim that Summy Co. registered the Happy Birthday lyrics in E51990. In 1935, a certificate of copyright registration was a very simple ‘ document consisting of nothing more than a copy of the claimant’s registration application and a certification statement from the Copyright Office. See United States Copyright Office, Compendium of U.S. Copyright Of fice Practices, Third Edition (2014), § 2408 (“A[ ] ... certificate for a claim registered or renewed on or before December 31, 1977 consists of a photocopy of the original application together with a preprinted certification statement containing the registration or renewal number and the date of the certification,”). The registration application for E51990 stated that it was an “Application for Copyright for Republished Musical Composition with New Copyright Matter.” (J.A. 48.) In other words, E51990 was a derivative work. See 17 U.S.C. § 101 (1976 Act) (“A 'derivative work’ is .a work based upon one or more preexisting works, such as a'... musical arrangement....”)., The title of the musical composition was listed as “Happy Birthday to You.” (J.A. 48.) The author of the new copyright material was “Preston Ware Orem, employed for hire by Clayton F. Summy Co.” (Id.) In one blank space, the application prompted the claimant to “[s]tate exactly on what new matter copyright is claimed....” (Id.) For E51990, the response read: “Arrangement as easy piano solo, with text.” (Id.)

Defendants contend that this registration entitles them to a presumption of validity. We disagree. Even assuming that the lyrics were printed in the deposit copy for E51990, it is unclear whether those lyrics were being registered, and therefore it is unclear whether the Copyright Office .determined the validity of Summy Co.’s alleged interest in the lyrics in 1935. The “new matter” that the registration purported to cover was a piano arrangement — a derivative version of another melody. Defendants argue that since the arrangement was registered “with text,” that meant that the Happy Birthday lyrics were part of the new matter being registered alongside the arrangement. But the registration clearly listed “Preston Ware Orem” as the author of the new matter. To our knowledge, no one has ever contended that Orem wrote the Happy Birthday lyrics. Defendants even admit in their pleadings that Orem did not do so. (Compare Dkt. 99, Answer to FACC at ¶ 97 (“[Defendants] admit[ ] the allegations in the second sentence of Paragraph 97.”), with Dkt. 95, FACC at .¶ 97 (“Upon information and belief, Plaintiffs allege that Orem did not write the familiar lyrics to Happy Birthday .... ”).) Therefore, the registration is flawed in any event. If, as Defendants assert, the new matter being registered included the lyrics, then, contrary to the registration certificate, Mr. Orem could not have been the author of the new matter. Conversely, if Mr. Orem were the author of the new matter, then the lyrics could not have been a part of the registration. ■

Defendants argue that we should overlook this “mistake” and afford the registration a presumption of validity anyway because “[a]bsent intent to defraud and prejudice, inaccuracies in copyright registrations do not bar actions for infringement.” Harris v. Emus Records Corp., 734 F.2d 1329, 1335 (9th Cir.1984); see also Baron v. Leo Feist, Inc., 173 F.2d 288, 290 (2d Cir.1949) (finding registration adequate for plaintiff to assert a copyright infringement suit, even though the certificate was “defective in form in not making clearer that copyright was claimed for the melodies as well as arrangements”); Urantia Found. v. Burton, 210 U.S.P.Q. 217, 1980 WL 1176, at *3 (W.D. Mich. Aug. 27, 1980) (“Under 17 U.S.C. former section 209 the identity of the author of a work does not have to be disclosed in registering a copyright. It follows that a misstatement as to authorship, unless made for some fraudulent purpose will not invalidate an otherwise valid copyright. That is, the copyright remains valid as long as the claimant has a legitimate claim of copyright, regardless of who is the actual author.”) (internal citation omitted). This legal authority is inapposite because it has no bearing on the question of what evidentiary presumption can be drawn from the ownership of a copyright registration. Because this registration does not list any Hill sister as the author or otherwise make clear that the Happy Birthday lyrics were being registered, we cannot presume this registration reflects the Copyright Office’s determination that Summy Co. had the rights to the lyrics to copyright them.

Given this facial and material mistake in the registration certificate; we cannot presume (1) that Patty authored the lyrics or (2) that Summy Co. had any rights to the lyrics at the time of the E51990 registration. Accordingly, Defendants must present other evidence to prove their case.

Normally, at this point, we would proceed with our analysis of the Parties’ Cross-Motions by first examining the elements that Defendants must prove to establish the validity of their interest in the Happy Birthday lyrics, and then, if Defendants carry their burden, we would turn to Plaintiffs’ affirmative defenses. However, the factual and legal issues of this case are deeply interwoven and do not lend themselves to a traditional analytical approach. The nature of this lawsuit is a dispute over the provenance of Defendants’ purported interest in the lyrics. Accordingly, a chronological examination of the issues, tracing the history of the lyrics up to the point when Summy Co. supposedly acquired the rights to them, is more logical. Thus, we will begin with the question of who wrote 'Happy Birthday, an issue for which Defendants have the burden of proof because they must show that their interest can be traced back to the true author of the lyrics. See Epoch Producing Corp. v. Killiam Shows, Inc., 522 F.2d 737, 743 (2d Cir.1975) (“As one would expect, the person claiming [a copyright in the work] must either himself be the author of the copyrightable work ... or he must have succeeded to the rights of the author through an assignment or other device.”); cf. Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991) (noting that, to prove copyright infringement, a copyright owner must be able to establish “ownership of a valid copyright”). Then we will consider whether the lyrics were lost or abandoned at some point after they were written, both of which are defenses for which Plaintiffs, who would normally be defendants in a traditional infringement suit, have the burden of piroof. See Monge v. Maya Magazines, Inc., 688 F.3d 1164, 1170 (9th Cir.2012) (noting that the defendant in a copyright suit has the burden of proving fair use as well as “all affirmative defenses”); Model Civ. Jury Instr. 9th Cir. 17.19 (2007) (“In order to show abandonment, the defendant has the burden of proving each of the following by a preponderance of the evidence____”); Penguin Books U.S.A., Inc. v. New Christian Church of Full Endeavor, Ltd., 288 F.Supp.2d 544, 555 (S.D.N.Y.2003) (“To establish their defense to infringement, defendants must demonstrate 'that the work was ‘published,’ as that term is used and defined in the copyright context, without copyright notice.”). Finally, we will turn to • the- question of whether a valid transfer of rights- occurred between the Hill sisters and Summy Co., an issue for which Defendants again have the burden of proof because it is essential to their claim that Summy Co. is the owner of a valid copyright.

;B. Who Wrote the Happy Birthday Lyrics?

Defendants claim that Patty wrote the lyrics to Happy. Birthday, Plaintiffs claim someone else may have.

Since Plaintiffs do not have the burden of proof on this issue, they may discharge their initial burden on their Motion by pointing to affirmative evidence negating Defendants’ authorship claim. Plaintiffs point to the many publications of the Happy Birthday lyrics throughout the 1920s and 1930s that did not credit Patty. References to the lyrics (without full publication) appeared in 1901 and 1909. The words were fully published in 1911, 1912, 1915, 1922, 1924; and 1928. The song was performed in several movies in the early to mid-1930s. Furthermore, though none of these publications explicitly credited anyone with authoring the Happy Birthday lyrics, several 'of them were copyrighted, and the certificates of registration listed other authors. For instance, The Elementary Worker and His Work, which was published in 1911 and contained the full Happy Birthday lyrics, listed Alice Jacobs and Ermina Chester Lincoln as its authors in the copyright certificate. (J.A. 12.) Given that copyright certificates are normally afforded a presumption of validity, as discussed, this is at least some evidence that these two individuals may have authored the Happy Birthday lyrics. Similarly, the publication and registration of the Happy Birthday lyrics in Harvest Hymns in 1924 demonstrate that its author may have written the lyrics. (J.A. 19 (listing “Robert Henry Coleman” as author of Harvest Hymns).) This evidence is sufficient to shift the burden to Defendants to proffer admissible evidence to create a genuine issue for trial. Celotex Corp., 477 U.S. at 324, 106 S.Ct. 2548.

Defendants’ primary evidence is Patty’s 1935 deposition for the As Thousands Cheer lawsuit. (J.A. 87.) While explaining that she and her sister Mildred created Good Morning some time around 1893, Patty claimed to have also written the Happy Birthday lyrics as one of a number of lyrical variations to be sung with the familiar melody:

Q. How long would you say that you and Miss Mildred Hill worked on the particular song “Good Morning To AH” before it was completed.

A. It was one of the earliest of the group and for that reason took longer to work out with the children. It would be written and I would take it into the school the next morning and test it with the little children. If the register was beyond the children we went back home at night and altered it and I would go back the next morning and try it again and again until we secured a song that even the youngest children could learn with perfect ease and while only the words “Good Morning To A11” were put in the book we used it for “Good-bye to you”, “Happy Journey to You”, “Happy Christmas to You” and “Happy New Year to You”, “Happy Vacation to You” and so forth and so on.

Q. Did you also use the words “Happy Birthday to You”?

A. We certainly did with every birthday celebration in the school.

Q. Did you write the words for this particular tune of “Good Morning To All”, Miss HiU? ’

A, I did.

(J.A. 87 at 1007.)

Defendants have raised genuine issues of material fact for trial. A reasonable fact finder may choose to believe that Patty wrote the lyrics in 1893 but, for whatever, reason, failed to publicaUy say so until some forty years later. But a reasonable fact finder could also find that the Happy Birthday lyrics were written by someone else, such as the authors of The Elementary Worker' and His Work or Harvest Hymns or some unknown person who never took credit for them, and that Patty’s 1935 claim to authorship was a post hoe attempt to take credit for the words that had long since become more famous and popular than the ones she wrote for the classic melody.

For the same reasons, Patty’s deposition testimony would not be sufficient to entitle Defendants to a directed verdict on the issue of authorship because it is contradicted by the evidence of multiple publications of the lyrics before'1935, some of which were registered for copyrights. We conclude there are genuine issues of material fact for trial. The Parties’ Cross-Motions are DENIED on this issue.

C. Divestive Publication of the Happy Birthday Lyrics

Plaintiffs claim that, even if Patty wrote the Happy Birthday lyrics, she lost the rights to the lyrics through divestive publication before 1935.

Under the Copyright Act of 1909, one secured á federal copyright by publishing a work with proper notice. Before such publication, the work was protected by common law copyright. See Estate of Martin Luther King, Jr., Inc. v. CBS, Inc., 194 F.3d 1211, 1214 (11th Cir.1999) (“Under the regime created by the 1909 Act, an author received state common law protection automatically at the time of creation of a work. This state common law protection persisted until the moment of a general publication.”) (internal citation omitted). If the work was published without notice, two things happened: the author (1) failed to obtain a federal copyright and (2) lost the common law copyright as well. See Twin Books Corp. v. Walt Disney Co., 83 F.3d 1162, 1165 (9th Cir.1996) (“When a work was published for the first time, it lost state common law protection. The owner could, however, obtain federal protection for the published work by complying with the requirements of the 1909 Copyright Act. If the owner failed to satisfy the Act’s requirements, the published work was interjected irrevocably into the public domain precluding any subsequent protection of the work under the 1909 Copyright Act.”).

General, publication, which would cause a forfeiture, occurs “when, by consent of the copyright owner, the original or tangible copies of a work are sold, leased, loaned, given away, or otherwise made available to the general public, or when an authorized offer is made to dispose of the woi'k in any such manner, even if a sale or other such disposition does not in fact occur.” 1 Nimmer § 4.03. By contrast, a limited publication, which does not cause a forfeiture, is when “tangible copies of the work are distributed both- (1) to a ‘definitely selected group,’ and (2) for a limited purpose, without the right of further reproduction, distribution or sale.” Acad. of Motion Picture Arts & Scis., 944 F.2d at 1452. Moreover, “mere performance or exhibition of a work does not constitute a [general] publication of that work.” Am. Vitagraph, Inc. v. Levy, 659 F.2d 1023, 1027 (9th Cir.1981).

On this affirmative defense of divestive publication, Plaintiffs have the burden of proof and must point to evidence that would entitle them to a directed verdict at trial * if it were uncontroverted. While Plaintiffs emphasize heavily the evidence in the record showing that the lyrics were “published, publicly performed, and sung millions of times for more than three decades,” that is insufficient to show divestive publication in this case. (Jt. Br. at 7.) Unless the owner of the work published it personally or authorized someone else to publish it, she would not be divested of her common law copyright. See 2-7 Nimmer § 7.03 (“[A] public distribution of copies or phonorecords will not trigger the legal consequences of a publication without notice unless it is shown that such public distribution occurred by or under the authority of the copyright owner.”); see also Holmes v. Hurst, 174 U.S. 82, 19 S.Ct. 606, 43 L.Ed. 904 (1899) (author forfeited his work after consenting to its publication); Egner v. E.C. Schirmer Music Co., 48 F.Supp. 187 (D.Mass.1942) (author lost his rights after giving others permission to publish his song); Blanc v. Lantz, 83 U.S.P.Q. 137, 1949 WL 4766 (Cal.Super.1949) (author lost his rights after permitting the distribution and exhibition of his work in movie theaters throughout the world).

Plaintiffs’ strongest evidence in support of their divestive publication defense is the publication of Happy Birthday in The Everyday Song Book in 1922. Unlike the other publications in the record, the publisher of The Everyday Song Book appears to have had the permission of at least Summy Co. to print Good Morning and Happy Birthday. A fact finder could reasonably infer from this that the Hill sisters authorized Summy Co. to grant the publisher permission. After all, Summy Co. and the Hill sisters were hardly strangers at the time; they had been associated with each other through the publication and distribution of Song Stories for decades. If the publication was authorized, that could make it a general publication (without proper copyright notice), divesting the Hill sisters of their common law copyright.

The publication of The Everyday Song Book, however, is not sufficient to entitle Plaintiffs to a directed verdict at trial. As Defendants point out, there is no direct evidence that the Hill sisters had authorized Summy Co. to grant permission for the publication of the lyrics in The Everyday Song Book, It is undisputed that, in 1922, Summy Co. did not have any rights to the Happy Birthday lyrics; Defendants claim that the rights to 'the lyrics were given to Summy Co., at the earliest, in 1934 and 1935. It is also not clear if Summy Co. gave the publisher of The Everyday Song Book permission to publish the Happy Birthday lyrics specifically or just permission to publish Good Morning, of which Summy Co. had been printing and selling copies on the Hill sisters’ behalf at that time. Since the publication of The Everyday Song Book would not be sufficient to entitle Plaintiffs to a directed verdict, Plaintiffs cannot satisfy their initial burden under Rule 56. Accordingly, Plaintiffs’ Motion is DENIED as to this issue.

As to Defendants’ Cross-Motion, while the publication of The Everyday Song Book is not sufficient to entitle Plaintiffs to a directed verdict, it is at least sufficient to show that there are genuine disputes of material fact. Accordingly, Defendants’ Cross-Motion is also . DENIED as to this issue.

D. Abandonment of the Happy Birthday Lyrics

Plaintiffs argue that, evén if no divestive publication occurred, Patty abandoned her rights, if any, before the publicátion and registration of E51990. “[Abandonment of copyright occurs only if there is an intent by the copyright proprietor to surrender rights in his work.” A & M Records, Inc. v. Napster, Inc., 239 F.3d 1004, 1026 (9th Cir.2001) (internal quotation marks omitted). Under Ninth Circuit law, abandonment “must be manifested by some overt act indicative of a purpose to surrender the rights and allow the public to copy.” Hampton v. Paramount Pic tures Corp., 279 F.2d 100, 104 (9th Cir. 1960). Compared to divestive publication, “[abandonment ... turns on the copyright owner’s intent, while forfeiture results by operation of law regardless of intent.” , 2 Patry, Copyright § 5:155.

In their supplemental briefing on abandonment, both Parties have cited numerous cases’-in. support of their respective positions' regarding abandonment. Unfortunately, we can discern no clear rule for what does or does not constitute abandonment. Cases from the early to mid-Twentieth - Century -fail to make a clear distinction between divestive publication and abandonment. See, e.g., White v. Kimmell, 193 F.2d 744, 745 (9th Cir.1952) (describing the plaintiffs complaint as alleging that the work was “abandoned by White to the general public by his reproducing and distributing copies ... without notice of claim of copyright”); Nutt v. Nat’l Inst. Inc. for the Improvement of Memory, 31 F.2d 236, 238 (2d Cir.1929) (“Only a publication of the manuscript, amounting to an abandonment of the rights of the author, will transfer it to public domain.”); Egner, 48 F.Supp. at 189 (describing author’s conduct as showing “such a tender of -the song to the public generally as -to imply an abandonment”). It is difficult to draw any firm conclusions about abandonment from these cases. As for the more recent cases, m.ost involve factual circumstances that bear little resemblance to this case. See, e.g., Hadady Corp. v. Dean Witter Reynolds, Inc., 739 F.Supp. 1392, 1395 n. 2, 1398-99 (C.D.Cal. 1990) (abandonment found where newsletter stated it was protected by copyright only for a certain amount of time); Pac. & S. Co. v. Duncan, 572 F.Supp. 1186, 1196 (N.D.Ga.1983) (abandonment found where copyright owner destroyed the only copy of the work). As far as a general rule, we think the most that can be said about abandonment is that evidence of mere inaction or “lack of action” is insufficient. Hampton, 279 F.2d at 104. Beyond this, what does or does not constitute abandonment appears to be. a highly fact-specific inquiry..

1. Overt Acts of Abandonment by Patty

Plaintiffs bear the burden of proof-at trial on this affirmative defense. To prevail on.their Motion, Plaintiffs must present evidence entitling them to a directed verdict if uncontradicted. They present a passage irom a TIME magazine article reporting on the As Thousands Cheer lawsuit, which said:

Because the tune of “Happy Birthday to You” sounds precisely like the tune of “Good Morning to All,” Sam H. Harris, producer of As Thousands Cheer, last week found himself the defendant in a Federal plagiarism suit asking payment of $250 for each and every performance of the song— Lyricist Patty Hill, who will share in the damages, if any, had no complaint to make on the use of the words because she long ago resigned herself to the fact that her ditty had become common property of the nation.

(J.A. 90 at 1047 (emphasis added).) The clear implication from the article is that Patty told the TIME journalist that she had surrendered any claim she may have had to the Happy Birthday lyrics. A public statement like this, if believed, is an overt act on which a reasonable fact finder could base a finding that Patty abandoned her copyright interest in the lyrics. See Melchizedek v. Holt, 792 F.Supp.2d 1042, 1048, 1061 (D.Ariz.2011) (finding triable issue of fact where author made public statements indicating that he was not interested in protecting his work). However, we cannot say that this evidence is sufficient to entitle Plaintiffs to a directed verdict at trial inasmuch as it is not a direct quote from Patty. The journalist could have been paraphrasing something she said or relying on a secondary source to characterize her intentions. Accordingly, Plaintiffs’ Motion on their affirmative defense of abandonment is DENIED. To the extent Defendants cross-move for summary judgment on abandonment, we conclude that this article is at least sufficient to raise triable issues of fact as to whether Patty abandoned her rights.

I

2. Joint Authorship

In the alternative, Defendants argue they are entitled to summary judgment on abandonment because Mildred and Patty were joint authors of the Happy Birthday lyrics so that Plaintiffs must at least raise triable issues of fact as to both Mildred’s (or Jessica’s as heir to Mildred’s rights) and Patty’s abandonment to survive summary judgment against them. They argue that even if there are triable issues as to Patty’s abandonment, Plaintiffs have no evidence of any overt acts of abandonment by either Mildred or Jessica.

A joint work is defined as “a work prepared by two or more authors with’ the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole.” 17 U.S.C. § 101 (1976 Act); Richlin v. Metro-Goldwyn-Mayer Pictures, Inc., 531 F.3d 962, 968 (9th Cir.2008) (stating that the 1976 Act’s definition of joint work “incorporated the. well-established case law interpreting the definition, of ‘joint work’ under the 1909 Act”). The. Ninth Circuit has articulated three factors to consider in determining joint authorship: (1) whether the “putative coauthors ma[de] objective, manifestations of a shared intent to be coauthors”; (2) whether the alleged authors superintended the work; by exercising control; and (3) whether “the audience appeal of the work” can be attributed to both authors, and whether “the share of each in its success cannot be appraised.’’ Aalmuhammed v. Lee, 202 F.3d 1227, 1234 (9th Cir.2000) (internal quotation marks omitted).

Defendants point to Patty’s deposition testimony in the As Thousands Cheer litigation in which she described working with Mildred in a collaborative, iterative process to create Good Morning and the other songs in Song Stories. (See J.A. 87 at 1007 (“It would be written and I would take it into the school the next morning and test it with the little children. If the register was beyond the children we went back home at night and altered it and I would gó back the next morning and try it again and again until we secured a song that even the youngest children could learn with perfect ease ...see also id. at 1004 (“We were writing songs from 1889 to 1893.”); id. at 1006 (“When my sister Mildred and I began the writing of these songs...”).)’ If Mildred and Patty created the Happy Birthday lyrics as a part of this process, that would be evidence that Mildred and Patty intended to be co-authors and that both exercised control over the work.

It is not clear from Patty’s deposition that the Happy Birthday lyrics were created as a part of the described collaborative process. The deposition took place in the context of a lawsuit in which Jessica was asserting infringement of the copyright to Good Morning, not Happy Birthday. Accordingly, .virtually the entire deposition centered on how Song Stones and Good Morning were created. There are very few points in the transcript where one can discern any clear reference to Happy Birthday. A reasonable fact finder could find that Patty’s discussions of her collaboration with Mildred are not relevant because she was not talking about how the Happy Birthday lyrics were created. If Mildred had developed the Happy Birthday/Good Morning melody specifically for use with the Good Morning lyrics but Patty decided, on her own initiative, to use other lyrics in combination with the melody, then a faet finder could find that the Happy Birthday lyrics belonged to Patty alone as a derivative work. In that event, Mildred would not have had the requisite intent, to combine her work (the Happy Birthday/Song Stories melody) with the Happy Birthday lyrics in order to make Happy Birthday a “work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole.” 17 U.S.C. § 101 (1976 Act); see also 1-6 Nimmer § 6.05 (“The requisite distinction must lie instead in the intent of each contributing author at the time her contribution is composed. If his work is written with the intention that [his] contribution ... be merged into inseparable or interdependent parts of a unitary whole, then the merger of his contribution with that of others creates a joint work. If that intention occurs only after the work has been written, then the merger results in a derivative or collective work.”) (internal quotation marks and footnotes omitted).

Both Parties also try to use the pleadings to the Hill-Summy lawsuit from 1942 to reinforce their arguments about joint or sole authorship. Defendants emphasize the fact that the Hill Foundation described Happy Birthday as “written and composed” by Patty and Mildred. (J.A. 50 at ¶ 11.) Plaintiffs emphasize the fact that Good Morning was described as being “later” entitled Happy Birthday by both the Hill Foundation and Summy Co. (Id. at ¶ 10; J.A. 51 at ¶ 6.) Both of these arguments are inadequate to resolve, as a matter of law, the factual questions surrounding the creation of the Happy Birthday lyrics. '

Because neither Party is entitled to summary judgment, we need not also consider whether there are triable issues as to Mildred’s or Jessica’s abandonment inasmuch as that issue is dependent on the joint authorship inquiry which cannot be resolved due to triable issues of fact.

The Parties’ Cross-Motions for summary judgment on the issue of abandonment are DENIED.

E. Transfer of the Happy Birthday Lyrics

Plaintiffs argue that, even if the Hill sisters never lost or abandoned their common law rights to the Happy Birthday lyrics before the publication in E51990, Defendants have no evidence that Summy Co. ever obtained those rights. They contend that the evidence shows that E51990 was merely for one of several piano arrangements that Jessica authorized Sum-my Co, to publish and register. This showing is sufficient to discharge Plaintiffs’ initial burden under Rule 56 as the party without the burden of proof at trial. Defendants- argue that one or more of the agreements between the Hill sisters/the Hill Foundation and Summy Co. raise at least a triable issue that the former had transferred rights to the Happy Birthday lyrics to the latter.

1. The Hill-Summy Agreements

On the record before us, there is evidence of three agreements between the Hill sisters/the Hill Foundation and Sum-my Co. — the First, Second, and Third Agreements. Defendants’ primary argument is that Jessica transferred rights in the Happy Birthday lyrics to Summy Co. under the Second Agreement in. 1934 and 1935. (See, e.g., Jt. Br. at 35, 37; Jt. Supp. Br. at 16.) What little we know of the Second Agreement is entirely based on the pleadings filed in the Hill-Summy lawsuit in 1942. The actual agreement is not in the record; nor is there any other description of the agreement. To determine the content of Second Agreement, then, we must examine the Hill-Summy pleadings closely, and in context.

The Amended Complaint contained two relevant causes of action. In the first cause of action, the Hill Foundation alleged that Mildred and Patty entered into the First Agreement in the 1890s, granting Mr. Summy and Summy Co. the rights to publish and register various versions of Song Stories in return for royalties on every copy sold. (J.A. 50 at ¶¶ 4-10.) The Amended Complaint noted that “one of the songs contained in the works mentioned and described in paragraphs ‘FOURTH’ to ‘EIGHTH’ [the paragraphs describing the various published versions of Song Stories] is one entitled ‘GOOD MORNING TO ALL’ which; with words written by the said PATTY S. HILL, was later entitled ‘HAPPY BIRTHDAY TO YOU’ and was included among the songs copyrighted as aforesaid[] by the said SUMMY.” (Id. at ¶ 10.) The Hill Foundation alleged that “said song, ‘HAPPY BIRTHDAY TO YOU’,’? later acquired a “nation-wide popularity” and was widely performed both musically and dramatically. (Id. at ¶ 11.)

The Amended Complaint then alleged that, at the time of the First Agreement, “sound motion' pictures were unknown commercially.” (Id. at ¶ 15.) Therefore, the First Agreement did not “contemplate the use of the aforementioned songs in sound motion pictures or dramatic performances or in any other wise or manner except in sheet music form.” ' (Id.) Accordingly, the First Agreement did not give Summy Co. “the right to grant licenses or sub-licenses to the producers of sound motion pictures or dramatic performances in respect to the use of any of said songs therein and in particular the aforesaid song ‘HAPPY BIRTHDAY TO YOU.’” (Id.) And yet, according to the Amended Complaint, that was precisely what Summy Co. had been doing: “secretly entering] into various agreements with the producers of sound motion pictures and of stage or dramatic performances ... for the sound and dialogue rights for the use of the song ‘HAPPY BIRTHDAY TO YOU’ and purporting] to hold itself out'as having the right to grant licenses or sub-licenses in respect to the use of the aforesaid song.” (Id. at ¶ 18.) This conduct, the Hill Foundation alleged, was “in violation of the rights conferred upon” the Hill sisters and the Hill Foundation “by the copyright laws of the United States of America.” (Id. at ¶ 20.)

In the second cause of action, the Hill Foundation alleged that Jessica had entered into another agreement in 1934 and 1935 — the Second Agreement — granting Summy Co. “a number of licenses for the publication, sale and performance of various piano arrangements of the Song variously entitled ‘GOOD MORNING TO ALL’ or ‘HAPPY BIRTHDAY TO YOU’ ” in return for further royalties. (Id at ¶ 24.) In contrast to the First Agreement, the Second Agreement apparently contemplated the use of these piano arrangements in motion pictures and plays, because Jessica was entitled to 50% of any payment Summy Co. received for the “performance [of the works] in any country.” (Id. at ¶ 26 (emphasis added); see also id. at ¶ 24 (licenses granted “for the publication, sale and performance of various piano arrangements”) (emphasis added).) The Hill Foundation then went on to say that “by reason of [Summy Co.’s] breach of duty and wrongful conduct as alleged in the paragraphs ... ‘EIGHTEENTH’ to ‘TWENTIETH’ [the paragraphs in the first cause of action describing the secret licensing agreements granted by Summy Co. to movie and play producers],” it was electing to terminate the Second Agreement. (Id. at ¶ 29.)

In its Answer, Summy Co. took issue with some of the Hill Foundation’s allegations, but it agreed with most of the important points. As to .the First Agreement, Summy Co. denied that the Hill sisters had granted it only limited rights in the sheet music of Song Stories, but admitted that it had granted licenses to movie and play producers for Happy Birthday. (J.A. 51 at ¶¶ 9, 12.) As to the Second Agreement, Summy Co. described it as “several so-called royalty contracts wherein and whereby it was provided that the said Jessica M. Hill sold, assigned, and transferred to [Summy Co.] various piano arrangements of the said musical composition ‘Good Morning To All’ and all world rights (including publishing, public performance and mechanical reproduction rights) ... of said work” in return for royalties. (Id. at ¶ 18.) Summy Co. confirmed that Jessica was to receive 50% of any payment made to Summy Co. for the “performance of said work.” (Id.)

Defendants argue that a fact finder could reasonably infer from these pleadings that Jessica transferred rights to the Happy Birthday lyrics to Summy Co. under the Second Agreement, thus raising an issue of fact for trial. We disagree. Such an inference is so implausible that no reasonable fact finder could so find. See Matsushita, 475 U.S. at 586, 106 S.Ct. 1348 (“When the moving party has carried its burden under Rule 56(c), its opponent must do more than simply show that there is some metaphysical doubt as to the material facts.”).

First, and most importantly, an inference that the Second Agreement had something to do with the Happy Birthday lyrics is not supported by any explicit description of the agreement in either the Amended Complaint or the Answer. Both the Hill Foundation and Summy Co. described the agreement as transferring rights in “piano arrangements.” (J.A. 50 at ¶ 24; J.A. 51 at ¶ 18.) Obviously, pianos do not sing. ' Thus, it is not logical to infer that rights tó “piano arrangements” would include rights to any lyrics or words as well. ' '

Defendants argue that the lyrics must have been part of the Second Agreement because the Amended Complaint described the arrangements as based on the “song variously entitled ‘GOOD MORNING TO ALL’ or ‘HAPPY BIRTHDAY TO YOU.’ ” (J.A. 50 at ¶ 24 (emphasis added).) But this quoted statement says nothing about the transfer of any lyrics. The Happy Birthday lyrics could not have been “variously entitled” “Good Morning To All.” If anything, it is a reference to the fact that Good Morning and Happy Birthday have the same melody and therefore are, in that sense, the same song that formed the basis of the piano arrangements. Notably, only a few sentences later, the Hill Foundation described the content of works 'involved in the Second Agreement again, but this time it called them “various piano arrangements of said song ‘GOOD MORNING TO ALL’ ” with no reference to Happy Birthday at all. (Id. at ¶29.) In its Answer, Summy Co. similarly described the works as “various piano arrangements of the said musical composition ‘Good Morning To All’” without mentioning Happy Birthday. (J.A. 51 at ¶ 18.)

Second, an inference that the Second Agreement covered the lyrics is unreasonable because it would be inconsistent with the underlying legal theory behind the lawsuit. " If the Second Agreement had covered the Happy Éirthday lyrics, that would have meant that in 1934 and 1935 Jessica explicitly granted Summy Co. the right to licensé the lyrics to others for public performance. (J.A. 50 at ¶ 24 (Second Agreement granted Summy Co. rights to “the publication, sale and performance ”) (emphasis added)'; id. at ¶ 26 (Second Agreement gave Jessica right to 50% of any payment Summy Co. received for the “performance [of the works] in any country.”); J.A. 51 at ¶ 18. (Second Agreement gave Summy Co. “all world rights (including publishing, public performance and mechanical reproduction rights) ... of said work”) (emphasis added); id. (Second Agreement gave Jessica rights to 50% of any payment Summy Co. received “for the mechanical reproduction or performance ” of the work “in any country”) (emphasis added).)1 If that were the case, there would have been no reason for the Hill Foundation to‘ accuse Summy Co. of “secretly” entering into déals behind the Hill sisters’ backs with movie and play producers, granting them permission to publically perform Happy Birthday. Moreover, there would have been no reason for Summy Co. not to point out in its Answer that it had acquired the public performance rights to the lyrics from Jessica under the Second Agreement, since that fact would have given the company a strong defense to the accusation that what they were doing was somehow a “secret” or was otherwise unlawful.

Third, Defendants posit that the allegations in the .Amended Complaint can be read to indirectly imply that the Second Agreement covered--the Happy Birthday lyrics. But this theory is based on a misunderstanding of what the Amended Complaint actually said. Defendants’ theory appears to be that the Hill Foundation sued Summy Co. because Jessica had granted Summy Co. permission to publish and distribute copies of the Happy Birthday lyrics in sheet music form under the Second Agreement, but Summy Co. had exceeded the scope of that agreement by granting movie and play producers the rights to publically perform the lyrics. (See Jt. Supp. Br. at 16 (“In 1934 and 1935, Jessica granted Summy the rights to publish, copyright, and sell Happy Birthday to You [including the lyrics] as sheet music, in exchange for a percentage of the list price for, sales____ Patty and Jessica’s foundation, the Hill Foundation, sued Sum-my in 1942. The Foundation asserted that Summy had exceeded the scope of its license to publish Happy Birthday to You sheet music by sublicensing the ‘sound and dialogue rights for the use of the song*— ie., the melody and lyrics — in movies and plays.”) (emphasis in original); see also Hr’g Tr. of July 29, 2015 at 52:6-62:6 (colloquy with Defendants’ counsel discussing transfer theory based bn the Amended Complaint); Hr’g Tr. of March 23, 2015 at 37:8-40:11 (same).)'

Defendants’ theory is not consistent with the allegations in the Amended Complaint. As discussed, the Second Agreement was not limited to sheet music. That "was the First Agreement. Moreover, the Hill Foundation did not accuse Summy Co. of exceeding the scope of the Second Agreement. That was, again,- the First Agreement. In fact, the Hill Foundation did not accuse Summy Co. of doing anything unlawful with respect to. the Second Agreement. Rather, it sought termination of the Second. Agreement in light of Summy Co.’s alleged unlawful conduct with respect, to the First Agreement. Finally, the Hill Foundation’s accusation that Summy Co. e