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We Shall Overcome Foundation v. The Richmond Organization, Inc.

United States District Court, S.D. New York

July 31, 2018


          For the Plaintiffs: Mark C. Rifkin Randall S. Newman Gloria K. Melwani Wolf Haldenstein Adler Freeman & Herz LLP

         For the Defendants: Paul LiCalsi Ofer Reger Robins Kaplan LLC



         The parties have settled this declaratory judgment action addressing the validity of two copyrights in the musical composition "We Shall Overcome" (the "Song"). As part of the settlement, defendants agreed to stop claiming a copyright in the melody or lyrics of any verse of the Song. The plaintiffs now move pursuant to 17 U.S.C. § 505 ("Section 505") for an award of attorneys' fees in the amount of over $1 million and expenses of over $60, 000. For the following reasons, they are awarded $352, 000 in attorneys' fees, plus certain expenses and costs, as described in an Order that accompanies this Opinion.


         The Song is an iconic anthem of the American civil rights movement, although its precise origins are unknown. See We Shall Overcome Foundation v. The Richmond Organization, Inc., 16cv2725(DLC), 2017 WL 3981311, at *1 (S.D.N.Y. Sep. 8, 2017) (“Summary Judgment Opinion”). A version of the Song was used as a protest song by striking tobacco workers in the 1940s. Id. The defendants, The Richmond Organization, Inc. and its subsidiary and imprint Ludlow Music, Inc., obtained copyrights for the Song in 1960 and 1963. The first copyright listed three authors; the second added a fourth author, Pete Seeger. Id. at *3-5. As Seeger has explained, it is “impossible” to know the original authors of the Song. Id. at *4.

         The defendants have described their virtuous motives in obtaining the copyrights for the Song. They wanted to protect, to the extent they could, the Song from being abused commercially. The licensing fees earned from the Song's copyrights have been modest, and the writers' portion of the royalties has been contributed to the Highlander Research and Education Center, a charitable fund that provides scholarships to African-American youth.

         The plaintiffs, We Shall Overcome Foundation ("WSOF") and Butler Films, LLC ("Butler"), brought this action on April 14, 2016, challenging through a putative class action the validity of the defendants' copyrights in the Song. Butler had produced an award-winning American historical drama for which it sought to use the Song in several scenes. It ultimately paid $15, 000 for a license to use the Song for no more than ten seconds. WSOF had requested a quote for a synchronization license to use the Song in a documentary. That request was refused.

         The complaint sought a declaration that the copyrights in the Song are limited to, at most, the arrangements of the Song and some of the more obscure verses of the Song. They asserted as well that the defendants had fraudulently obtained the copyrights and forfeited the copyrights through publication of the Song without the required copyright notices. The complaint also included four state law claims.

         From the initial conference held on June 10, 2016, the parties agreed that their principal dispute was whether the lyrics to the first verse of the Song were in the public domain. On July 14, the defendants moved to dismiss the amended class action complaint, in particular the state law claims and the challenge to their copyright in the lyrics to that first verse. An Opinion of November 21, 2016, granted the motion to dismiss the state law claims, but denied it with respect to the copyright claims. We Shall Overcome Foundation v. The Richmond Organization, Inc., 221 F.Supp.3d. 396 (S.D.N.Y. 2016) ("November 2 016 Opinion").

         There was little likelihood that the copyright claim could be dismissed for its failure to state a claim. The November 2016 Opinion noted that the plaintiffs had plausibly alleged that the first verse of the Song lacked originality. Id. at 407. In bringing their motion to dismiss the copyright claims, the defendants had relied on the presumption of validity inherent in copyrights. But that presumption is rebuttable and the plaintiffs had plausibly alleged that the lyrics were copied from material that was already in the public domain. Id. at 406-07.

         As for that prong of the motion that sought to dismiss the claim of fraud on the copyright office, the complaint plausibly alleged that the copyrights had been obtained through fraud. It asserted that the defendants deliberately omitted from the copyright applications, which were for a copyright in a derivative work, all references to the public domain spiritual and certain prior publications of the Song. The complaint also alleged that there was an insufficient basis for listing as authors those persons identified as authors in the copyright applications. Id. at 407-08.

         Discovery on the copyright claims followed. On June 20, 2017, the plaintiffs filed a motion for summary judgment in which they principally argued that the lyrics and melody in the first verse of the Song, and its identical fifth verse ("Verse 1/5"), were not sufficiently original to qualify for copyright registration as a derivative work. Through the Summary Judgment Opinion, issued on September 8, 2017, this Court ruled on that motion and the accompanying Daubert motions addressed to the defendants' two experts.

         The Summary Judgment Opinion held that the plaintiffs had carried their burden of showing that the two verses lacked the originality required for protection as a derivative work, and that the defendants had failed to offer evidence of originality that could raise a material question of fact requiring a trial. Summary Judgment Opinion, 2017 WL 3981311, at *11-17. The Opinion observed that the gap in proof of originality could not be filled by the defendants' good intentions. Id. at *15.

         As before, the defendants principally relied on the presumption of validity to defend their copyrights. The plaintiffs successfully rebutted that presumption through evidence that the applications for the copyrights in the Song were significantly flawed. As for the challenge to the originality of the Song's Verse 1/5, the defendants emphasized only one word change: they argued that the change of the word will to the word shall was transformative. The Summary Judgment Opinion held that the substitution of that single word was "quintessentially trivial." Id. at *15.

         The Summary Judgment Opinion denied plaintiffs' motion addressed to the remainder of the claims, however. Specifically, summary judgment was denied on the issues of authorship, divestment, and fraud. Id. at *17-19. Those claims were set down for trial. Finally, the Summary Judgment Opinion largely granted the plaintiffs' motions to exclude testimony from two defense experts pursuant to Fed.R.Evid. 702 and Daubert v. Merrell Dow Pharms., 509 U.S. 579 (1993). Summary Judgment Opinion at *19-21.

         Defendants then moved to dismiss the plaintiffs' remaining claims on the ground that there was no longer a justiciable controversy in light of the Summary Judgment Opinion. That motion was denied summarily on November 1, 2017. On November 14, a conference was held to organize litigation on the remainder of the case. The Court ruled that any class certification proceedings would take place before the trial. On December 1, plaintiffs withdrew their class action allegations.

         Accordingly, trial was set for February 5, 2018. The defendants attempted to avoid a trial, but to preserve their right to challenge the Summary Judgment Opinion on appeal. They tendered a covenant-not-to-sue to the plaintiffs over the all verses of the song except Verse 1/5, and a revised covenant when the first was challenged as insufficient. They argued that this mooted the claims as to the remaining verses of the Song, and allowed a final judgment to be entered. On January 12, 2018, the Court ruled that the covenant did not moot the alternative grounds for challenging the copyright in Verses 1/5, particularly the theories of fraud and divestment, and ordered that a trial would take place at least as to those theories. We Shall Overcome Foundation v. The Richmond Organization, Inc., No. I6cv2725 (DLC), 2018 WL 400776 (S.D.N.Y. Jan. 12, 2018).

         The parties thereafter entered into a settlement and presented to the Court, for its signature, a Stipulation and Order of dismissal with prejudice ("Stipulation") pursuant to Rule 41(a)(1)(A)(ii), Fed.R.Civ.P. The Stipulation was filed on the public docket on January 26, 2018, and so-ordered by this Court on the signature line provided by the parties. In that detailed document, the defendants abandoned their right to appeal from the Summary Judgment Opinion. They also "agree[d] that hereafter they will not claim copyright in the melody or lyrics of any verse of the song We Shall Overcome ("the Song"), included in" their two copyright registrations. And, "Defendants agree[d] that the melody and lyrics of those verses of the Song are hereafter dedicated to the public domain." The defendants did preserve their claim of copyright in the specific arrangements of the Song embodied in the deposit copies.


         I. Prevailing Party

         Section 505 of the Copyright Act provides that a district court "may . . . award a reasonable attorney's fee to the prevailing party." 17 U.S.C. § 505. "Congress has included the term 'prevailing party' in various fee-shifting statutes, and it has been the Court's approach to interpret the term in a consistent manner.'" CRST Van Expedited, Inc. v. E.E.O.C., 136 S.Ct. 1642, 1646 (2016). "The 'touchstone of the prevailing party inquiry must be the material alteration of the legal relationship of the parties.'" Id. (quoting Texas State Teachers Assn. v. Garland Independent School Dist., 489 U.S. 782, 789 (1989)). "This change must be marked by 'judicial imprimatur.'" Id. (quoting Buckhannon Board & Care Home, Inc. v. West Virginia Dep't of Health and Human Resources, 532 U.S. 598, 602-03 & n.4 (2001)). Buckhannon recognizes two types of material alterations accompanied by judicial imprimatur: "some relief on the merits" and "settlement agreements enforced through a consent decree." Buckhannon, 532 U.S. at 603-604. The Second Circuit, however, has clarified that these are mere "examples" of sufficient outcomes, Perez v. Westchester County Department of Corrections, 587 F.3d 143, 151 (2d Cir. 2009), and that others may be sufficient.

         The plaintiffs are the prevailing party. Although plaintiffs did not obtain a final judgment on the merits following a trial, they obtained a summary judgment decision in their favor on the merits of their primary claim. And, with that Stipulation, the defendants not only surrendered their right to appeal the decision rendered against them in the Summary Judgment Opinion, but also reduced the scope of their copyrights to a fraction of the defendants' originally claimed rights.[1] With that public relinquishment of rights, the defendants materially altered their legal relationship with not only the plaintiffs but also with all potential users of the Song forever. The parties then submitted the terms of the settlement to the Court for its signature and for filing in the public record. As the defendants concede, "plaintiffs are, in part, 'prevailing parties in the litigation.'" Defendants primarily contend that plaintiffs have prevailed only in part, and should therefore not be deemed to be the "prevailing party." Although it is true that plaintiffs have not prevailed on every aspect of their complaint, that is not the standard. See Hensley v. Eckerhart, 461 U.S. 424, 433 (1983) ("plaintiffs may be considered 'prevailing parties' for attorney's fee purposes if they succeed on any significant issue in litigation which achieves some of the benefit the parties sought in bringing suit." (citation omitted)). The plaintiffs were broadly successful here. Any of defendants' "success" in this case was not judicially sanctioned, as in the withdrawal of the class action allegations, or concerned an insignificant matter, such as the state law claims. Plaintiffs' status as a prevailing party is not diminished by the few issues on which defendants "prevailed."

         II. The F ...

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