children with xmas presents

Santa Claus is Comin’ to Town

December 18, 2018 / Blog, Case Comment

Composed by co-authors John Frederick Coots and Haven Gillespie in 1934, the rights to the song ‘Santa Claus is Comin’ to Town’ were assigned to Leo Feist’s music publishing company, one of the largest publishers of popular music at that time.

Pursuant to the Copyright Act of 1909, the song had an initial 28 year copyright term, plus a 28 year ‘renewal’ term. By an agreement dated December 3, 1951, Coots granted Feist “all renewals and extensions of all copyrights in the song throughout the world.”

At the end of the initial 28 year term in 1961, Feist renewed its copyright and continued its ownership.

On September 24, 1981, J. Fred Coots sent Feist a notice to terminate the 1951 agreement. The notice selected October 23, 1990 as the effective date of termination.

On December 15, 1981, Coots and his heirs entered into an agreement with EMI.

EMI Music Publishing acquired Feist’s publishing catalogue – including the Christmas song.

Under US Copyright law, songwriters or their right holders may terminate publishing contracts after 35 years. J. Fred Coots’ heirs sought to terminate the agreement first in 2004 and again in 2007 in order to retrieve the rights to the Christmas classic.

The dispute concerned events that unfolded over nearly eighty years. During this period, copyright law has changed several times. The 1909 Copyright Act was the law in force when Coots co-authored the song, conveyed copyright ownership to Feist, and entered the 1951 agreement. In 1976, Congress significantly amended the 1909 Act. The 1976 Copyright Act contains extensive retroactive provisions governing works executed prior to the Act’s effective date of January 1, 1978. In 1998, Congress amended the Act with the Sonny Bono Copyright Term Extension Act.

Central in the dispute is the duration of the copyrights and the right of certain parties to terminate the assignment of a copyright (a ‘termination right’).

To complicate the case, the publishing agreements have been renegotiated.

The key question addressed was whether EMI owned the rights to the song under the 1951 agreement or instead under the 1981 agreement.

In 2013, the District Court ruled in favour of EMI determining that the parties’ rights were still governed by the 1951 agreement and therefore the grant to EMI would last the full 95 years: from the year of publication of the song until 2029.

However, on appeal, the Second Circuit reversed holding that the 1981 agreement was the operative document, meaning that the copyright in ‘Santa Claus is Comin’ to Town’ goes back to the heirs.

The family of J. Fred Coots reclaimed his part of the song rights and successfully exercised the termination right.

Gloria Coots Baldwin e.a. v. EMI Feist Catalog, Inc.: can be found under Darts-IP internal reference:

– S.D.N.Y._1-12-cv-09360_20131216_72

– us-ca-2014-00182_20151008 (appeal)

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