We Shall Overcome Found. v. Richmond Org., Inc.

330 F. Supp. 3d 960
CourtDistrict Court, S.D. Illinois
DecidedJuly 31, 2018
Docket16cv2725(DLC)
StatusPublished
Cited by4 cases

This text of 330 F. Supp. 3d 960 (We Shall Overcome Found. v. Richmond Org., Inc.) is published on Counsel Stack Legal Research, covering District Court, S.D. Illinois primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
We Shall Overcome Found. v. Richmond Org., Inc., 330 F. Supp. 3d 960 (S.D. Ill. 2018).

Opinion

DENISE COTE, United States District Judge

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.

BACKGROUND

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 *965is "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 2016 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 *966Daubert 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.

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Bluebook (online)
330 F. Supp. 3d 960, Counsel Stack Legal Research, https://law.counselstack.com/opinion/we-shall-overcome-found-v-richmond-org-inc-ilsd-2018.