It’s the most popular Christmas song of all time, certified Diamond by the Record Industry Association of America with over 10 million copies sold—the only Christmas tune ever to achieve that milestone. It might be the most danceable, poppy, upbeat song ever to convey the message that a loved one is missed and wanted at home for Christmas. And it’s been a perennial favorite on the pop charts and “Best Of” holiday playlists since it debuted in 1994, becoming nearly as ubiquitous as the Grinch and Jolly Old Saint Nick himself and earning an annual estimated $3.9 million in personal royalties for the artist who recorded it.
I’m talking, of course, about Mariah Carey’s smash hit, “All I Want for Christmas is You.”
But all is not well in Whoville…
Recently, a New Orleans-based country music songwriter named Andy Stone, who performs under the stage name Vince Vance, filed suit against Mariah Carey asserting “copyright infringement and unjust enrichment” because his 1989 holiday-themed tearjerker shares a title with the relentlessly happy pop Christmas carol. In part, Stone’s $20 million lawsuit alleges that Carey and her representatives “never sought or obtained permission” to use that title. This is a very curious case for several reasons, not the least of which is the extended period between when the song was released and Stone coming forward to challenge it. As a patent and IP attorney, I’ve gotten a few questions about this, and I’m going to run them down here.
Isn’t there a statute of limitations on suits like this?
Technically, yes, there is. The US Copyright Act only allows a plaintiff to recover damages from the most recent three years of infringement. However, the law designates that it’s a “rolling” period, meaning each time the infringing work is accessed, streamed, sold, or otherwise published, the clock starts again and the plaintiff can file to recoup their losses. But in this case, $3.9 million times 3 would only be $11.7 million, not $20 million.
So why the discrepancy, and why wait so long to sue?
The answer to the question of “Why wait?” lies in a 2014 Supreme Court ruling, Petrella v. MGM Inc., concerning the movie Raging Bull, which solidified Robert de Niro’s place at the top of the Hollywood heap for his rendition of boxer Jake La Motta. In 1963, La Motta and Frank Petrella collaborated on a book and a pair of screenplays for the film. Frank Petrella passed away in 1981, and the copyrights to the works he and La Motta had created passed to his daughter, Paula, as Petrella’s heiress.
However, Petrella’s case was rejected by lower courts because they held Paula Petrella’s attempt to sue MGM for damages in 2009 violated the legal doctrine of “laches,” which in its shortest form states that belated lawsuits are fundamentally unfair to the defendant. The 9th Circuit Court of Appeals held that Petrella should have been aware of the alleged infringement by 1991, meaning that the 2009 filing came too late. Petrella appealed to the Supreme Court, who cleared the suit to proceed. Justice Ginsburg, writing for the majority, said in part that laches doesn’t apply to copyright cases because it makes sense for plaintiffs damaged by copyright infringement to wait until they can determine whether the cost of litigation is worth the damages they stand to recoup, and that as Raging Bull continued to be broadcast and sold, the three-year rolling window was still well open for Petrella to pursue her case.
In Stone’s case, he appears to be relying on the Petrella precedent and its dismissal of laches to make his case for him. As to the discrepancy, it is likely that Stone decided submitting a round monetary value for consideration in his suit was easier than doing the forensic accounting that would properly determine exactly how much, if anything, he might be entitled to. This is a fairly commonplace tactic when the actual damages are not known or cannot be confirmed for some reason.
But what’s the basis of the suit?
Here’s where things get interesting. Stone is not alleging that Carey’s version of “All I Want for Christmas is You” infringes upon his own version in any way other than the title.
The problem is that titles are not copyrightable in themselves.
U.S. copyright law says that “names, titles, and short phrases” have what they call “insufficient amount of authorship or creativity.” In other words, titles are just too short to be protected by copyright. They are used as a sort of shorthand that describes the contents of the actual work, that is, the brush strokes, notes, or exact arrangement of words and punctuation comprising a work. Thus, The White Album, while universally associated with The Beatles, could be used as the title of another album by, say, a rap artist, as long as the artist in question didn’t use The Beatles’ signature cover for their own album. You can have two paintings called Abstract #2 by totally different people, and as long as the images are sufficiently different, the titles are irrelevant. The United States Copyright Office lists 177 songs by that name on its website. The first dates to November 1963, and was registered by an A.C. Williams. If that surprises you, consider there are nearly registered 5,000 works, including songs and books, with the title “My Baby.” If titles were copyrightable, people would quickly run out of names for anything at all! Congress recognized this when they passed the Copyright Act, making titles by themselves largely irrelevant.
In addition, the two works are sufficiently different both musically and lyrically that, aside from the title, which is included in both works, it would be incredibly difficult for Stone to prove infringement by Carey, which is going to be a pivotal consideration. Unlike trademarks, where brand dilution or consumer confusion is a valid concern, art and music lovers and readers are generally held to be sufficiently discerning consumers to be able to tell the difference between works with the same title.
So then how can Stone sue Carey?
In America, you can sue anyone for any reason at all.
Thus, even if you have a lawsuit that seems nonsensical on its face, the American legal system guarantees the right for you to file on the somewhat ungrammatical basis of “Ya pays yer money and ya takes yer chances.”
Because of this, Stone can sue Carey. The case is unlikely to go anywhere if it remains based only the similarities in the titles in question since short titles aren’t copyrightable.
But what is he thinking?
Since I’m not on his legal team, I honestly couldn’t say what he hopes to achieve here. One could argue that this suit appears to be a cynical publicity ploy, making the success or failure of the suit largely irrelevant.
One could also argue that perhaps Stone, or his legal counsel, actually think there is room for an argument that this particular title should be copyrightable and therefore the suit would be valid. $20 million is a nice payday if you can get it, but if the media coverage of the suit brings in five times that, Stone wins regardless. (Although Carey is still likely to do even better, when interested listeners play the tracks side by side to compare them.)
But my gut insists that Stone’s lawsuit is, as they say down south, “a dog that ain’t gonna hunt.”
About John Rizvi, Esq.
John Rizvi is a Registered and Board Certified Patent Attorney, Adjunct Professor of Intellectual Property Law, best-selling author, and featured speaker on topics of interest to inventors and entrepreneurs (including TEDx).
His books include “Escaping the Gray” and “Think and Grow Rich for Inventors” and have won critical acclaim including an endorsement from Kevin Harrington, one of the original sharks on the hit TV show – Shark Tank, responsible for the successful launch of over 500 products resulting in more than $5 billion in sales worldwide. You can learn more about Professor Rizvi and his patent law practice at www.ThePatentProfessor.com
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