United States District Court, S.D. New York
WE SHALL OVERCOME FOUNDATION and BUTLER FILMS, LLC, Plaintiffs,
THE RICHMOND ORGANIZATION, INC. (TRO INC.) and LUDLOW MUSIC, INC., Defendants.
the Plaintiffs: Mark C. Rifkin Randall S. Newman Gloria K.
Melwani Wolf Haldenstein Adler Freeman & Herz LLP
Defendants: Paul LiCalsi Ofer Reger Robins Kaplan LLC
OPINION AND ORDER
COTE, DISTRICT JUDGE.
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
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.
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
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.
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.
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").
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.
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.
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
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.
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.
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
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.
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).
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.
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
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. 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."
The F ...