Judge Says 'Santa Claus is Coming to Town' Copyright Suit Came to Wrong Town

John Pacenti

Daily Business Review

12-13-2012

For decades, parents have cribbed the lines of "Santa Claus is Coming to Town" to keep children in check during the holidays, telling them they "better not cry, better not pout."

Bruce Springsteen and the E Street Band did a rockin' version of the song replete with a big sax solo by the late Clarence Clemmons.

Make no mistake, "Santa Claus is Coming to Town" is a money maker for the heirs of the songwriters and the EMI Feist Catalogue Inc., the London-based music company that obtained ownership rights to the song in 1981.

A federal judge in West Palm Beach ruled Monday that a lawsuit seeking to break that agreement, though ripe, was filed in the wrong jurisdiction.

"The activities of the affiliated entities that plaintiffs have uncovered are either unrelated to defendant, do not take place in Florida or fall well short of the level of activity required to establish general personal jurisdiction," U.S. District Judge Kenneth Marra wrote in his 10-page decision.

But the fight over one of the most iconic holiday songs in Americana is far from over.

Attorney David P. Milian, a partner at Carey Rodriguez Greenberg & O'Keefe in Miami who represents the heirs, said he plans to refile the complaint in New York to try to break the agreement.

The song was written in 1934 by John Frederick Coots and Haven Gillespie. Their heirs get royalties from EMI every time it's recorded or used in any capacity. The amended complaint filed April 12 asserts the family has a right to break the agreement under the Copyright Act amended in 1976 and 1998.

"They feel they would be in a better position to exploit the work and derive greater economic value," Milian said. "It is one of the top 10 songs of all time. Every major artist recorded it if it's on a Christmas album. It's one of the standards."

The song also is the basis for the much beloved stop-motion 1970s television special of the same name in which the song is sung by none other than Fred Astaire.

The lead plaintiff in the case, Gloria Coots Baldwin, lives in Palm Beach County, Milian said.

Copyright Extensions

The only substantive part of Marra's ruling is that he found the heirs were within their rights to try to break the 1981 agreement. The song's copyright was renewed in 1976 for 47 years and extended again in 1998 to 67 years.

"As a threshold matter, the court finds that the controversy between plaintiffs and defendant is sufficiently ripe," Marra wrote.

Donald S. Zakarin, a partner at Pryor Cashman who represented EMI, said its 1981 agreement with the authors and heirs barred them from terminating EMI's U.S. ownership of the copyright. Plaintiffs claimed the right to terminate in either 2016 or 2021.

"The song makes hundreds of thousands of dollars a year, and it remains copyrighted until at least 2029 under current law," he said. "The composition is incredibly valuable for the plaintiffs, who earn significant royalties from the song, as well as for EMI, which owns copyright."

Both sides, though, couldn't help but wonder about the timeliness of Marra's decision, coming two weeks before Christmas.

Zakarin said people in his office think Marra released the decision on purpose at Christmastime, but the lawyer said, "I think it was purely serendipitous."

Milian added, "I had a bet with all my partners it would be great if we got the ruling by Dec. 25."

But he adds the ruling was anticipated by the end of the year.

John Pacenti can be reached at (305) 347-6638.