“Grandma Got Run Over by a Reindeer” never goes away, and at least for now, neither is litigation over the holiday novelty song. Last Wednesday a federal district court judge refused to dismiss a copyright infringement action brought by Elmo Shropshire, who first performed “Grandma” in 1979. The decision leaves Shropshire free to continue his suit against Aubrey Canning, Jr., who uploaded a version of the song to YouTube four years ago. Both sides have high-powered counsel: DLA Piper is representing Shropshire, and The Lanier Law Firm has been advising Canning.
Shropshire co-owns the copyright for “Grandma” with Patsy Trigg. In a motion to dismiss Shropshire’s suit, Canning contended that Shropshire was required to join Trigg in his action. Judge Lucy Koh initially said the same thing when she dismissed Shropshire’s first complaint in a January 2011 ruling. But the following month Shropshire filed a second complaint in which he added Trigg as a defendant. The two then reached a settlement last August in which Shropshire dismissed Trigg from the case.
As a result, “circumstances have changed,” Judge Koh wrote in her Wednesday ruling. “Trigg was given the opportunity, but refused to be joined as a plaintiff and chose not to claim an interest in the litigation,” said Koh, who sits in San Jose.
Jeffrey Mitchell, an associate in DLA Piper’s San Jose office who is part of Shropshire’s legal team, said that the case is set for trial this spring. Mitchell added that the firm’s client is seeking statutory damages as well as damages from lost sales of his version of “Grandma.” DLA partner David Gross and associates Rajiv Dharnidharka and Diana Hall are also working on the suit.
Shropshire is a veterinarian based in the San Francisco Bay Area who performs as “Dr. Elmo.” Though he’s become famous for his rendition of “Grandma,” the song was written by Randy Brooks, who receives 45 percent of the royalties from the hard-to-forget tune.
According to Koh’s ruling, defendant Canning posted a video to YouTube “which combined Christmas-related pictures with audio of a Canadian musical group, ‘The Irish Rovers,’ singing the Grandma Song.” After Shropshire found the video online, Mitchell said that his client contacted Canning and asked him to either pay for use of the song or take down the video. “Canning was at first agreeable, but things quickly went south,” Mitchell added.
Both Shropshire and Manning represented themselves until about a year ago, according to Mitchell. Lanier Law Firm attorneys Christopher Banys and Nick Mancuso, who have previously filed briefs on behalf of Canning, did not respond to a request for comment.
This article originally appeared in The AmLaw Litigation Daily.