No. 16-cv-2725 (S.D.N.Y., Nov. 21, 2016)
“We Shall Overcome”
Sound Recording (Hooteneers, 1963)
Sound Recording (Pete Seeger, 1964)
Sound Recording (Anonymous, 1964)
Comments by Charles Cronin and Niall Fordyce
Like many works that were created and handed down orally there is no definitive version of “We Shall Overcome”. Much of the song’s melody was likely derived from a Sicilian folk tune, which had been reworked in the eighteenth century as “O Sanctissima”, a Catholic hymn. The work that we know today as “We Shall Overcome” was initially performed as an African-American spiritual in the late 19th century. In the 1950s it became closely associated with the Civil Rights Movement. For over a century many other justice-seeking groups have adopted the song and, accordingly, it is now very well known in the United States, and evokes struggles of oppressed populations.
This widespread recognition, of course, makes the song culturally valuable. It also has the potential to make it economically valuable if there is a valid existing copyright associated with the work. Given the murky origins of the song, however, no one can reasonably claim authorship or ownership of the simple melody and repetitive text of the song. These elements are no more protectable than are the words and melody to public domain songs like “Yankee Doodle” whose origins can be traced back centuries. Accordingly, only more than de minimis original music or words, added to create a derivative work of the public domain song “We Shall Overcome,” would constitute protectable expression.
The complaint persuasively argues that the defendants, music publishers Richmond Organization and Ludlow Music, have improperly capitalized on “We Shall Overcome” by long representing that their copyright with this song title provides them exclusive rights over not only minor textual changes and additions in their versions, but also the music and words of the underlying public domain song that they copied in creating their derivative work. The defendants attempted to have the court dismiss the plaintiff’s challenge to the copyrightability of the minor differences between the words of the first verses of the original “We Shall Overcome” and the defendants’ versions. In its opinion and order of Nov. 21, 2016 (linked below) the District Court denied this request, indicating the question of the scope of protection to be afforded the defendants’ derivative versions of “We Shall Overcome” requires “discovery and a more developed record.”
This challenge to a long-standing assertion of copyright over what may be demonstrated to be a public domain musical work is the third in a series of recent claims made on behalf of documentary filmmakers. In the first, a federal court in Los Angeles determined that the “world’s most popular song,” “Happy Birthday to You”, was a public domain work. The claim was based on research into the origins of this song by George Washington University law professor Robert Brauneis, who published his findings in an article “Copyright and the World’s Most Popular Song” in volume 25 of the Journal of the Copyright Society of the U.S.A. (2009).
On 26 Jan. 2018 the parties reached a settlement (below) in which the defendant relinquished its claim to copyright in “We Shall Overcome.” The defendant agreed to refund the licensing fees it had charged plaintiff for use of the song. The settlement also acknowledged that the defendant would seek an award of attorney’s fees and costs it incurred in litigating this matter. Indeed, defendant subsequently petitioned the court for an attorney fee and costs award of $1,060,000. After a painstaking balancing of many factors, including the historical significance of the song, and the reasonableness of the litigation tactics of the plaintiff and defendant, District Judge Denise Cote awarded plaintiffs $352,000.
Of all the musical works to fight over, one would have hoped that the iconic Civil Rights movement classic “We Shall Overcome” could have avoided such a fate. It was not to be. On April 14, 2016, in the Southern District of New York, plaintiffs We Shall Overcome Foundation (“WSOF”) and Butler Films, LLC, (“Butler”) (collectively “plaintiffs”) as the named plaintiffs in a class action suit, sued The Richmond Organization, Inc. and Ludlow Music, Inc. (collectively “defendants”) over rights to “We Shall Overcome.”
The complaint itself provides an interesting and quite detailed history of “We Shall Overcome,” including the role played by folk music and activist legend Pete Seeger, but cut to the chase. At a pretrial conference on June 10, 2016, plaintiffs and defendants agreed that their principal dispute is whether the lyrics to the first verse of “We Shall Overcome” are in the public domain. Plaintiffs claim they are, while defendants claim that their changes to the first verse introduce sufficient originality for copyright protection. If the lyrics are in the public domain, defendants are not entitled to collect licensing fees for use of the lyrics, and cannot control whether or how plaintiffs, or anyone else, use them.
Of course, plaintiffs’ claims are more nuanced, including that the song’s melody and “familiar lyrics” are not covered by any copyright defendants may have, only defendants’ arrangements and additional obscure lyrics would be subject to protection; that defendants fraudulently obtained their copyrights; and that defendants’ copyrights have been forfeited for failure to comply with copyright notice requirements. Plaintiffs’ complaint also includes several state law claims, discussed infra.
So why did this lawsuit come to be? In February 2015, WSOF requested a quote from defendants for a synchronization license (a negotiated license required for WSOF to use defendants’ musical composition in an audio-visual work) to use “We Shall Overcome” in a documentary movie. After a series of communications back and forth, defendants refused to grant the license. Plaintiffs accuse defendants of either silencing “those wishing to perform We Shall Overcome by refusing to grant them a license,” or unlawfully demanding and extracting licensing fees “from those unwilling or unable to challenge their false ownership claims.” Butler falls into the latter category. Butler produced an award-winning American historical drama, “The Butler,” for which he sought to use “We Shall Overcome.” When defendants finally responded to Butler, they sought $100,000 for the synchronization license. After negotiations, Butler paid $15,000 for a license to use the work for no more than ten seconds.
WSOF now alleges that defendants’ refusal to grant a synchronization license for “We Shall Overcome” is the reason they have not been able to complete the documentary movie they are producing. Cue the lawyers, powerhouse firms for both plaintiffs and defendants, and let battle commence.
As an aside, clearance issues for music in audio-visual works are not unusual, although disputes over licensing costs are more typical. For example, both the great Civil Rights movement documentary “Eyes On The Prize” and “The Wrecking Crew” (about the Los Angeles session musicians of the ‘60s and ‘70s) were both held up over music clearance costs. However, in this case, as to WSOF, it appears that there was simply a comprehensive refusal to license “We Shall Overcome” by defendants.
Moving forward to the matter at hand, on July 15, 2016, defendants moved to dismiss all of plaintiffs’ state law claims, and only that portion of plaintiffs’ federal law claims that challenge defendants’ rights under the Copyright Act to the lyrics in the first verse of “We Shall Overcome.”
Defendants’ motion under Federal Rules of Civil Procedure, Rule 12(b)(6), asserts that as a matter of law, their changes to the lyrics in first verse of song are sufficiently original to warrant copyright protection; that plaintiffs have failed to plead with sufficiency fraud on Copyright Office to invalidate copyright; that plaintiffs have failed to plead that the publications of the first verse of “We Shall Overcome” after registration have divested defendants of any rights defendants would have had to first verse; and that all of plaintiffs’ state law claims are preempted by plaintiffs’ federal claims.
In its ruling, the court first addressed the originality issue. “[W]hile a copy of something in the public domain will not, if it be merely a copy, support a copyright, a distinguishable variation will.” L. Batlin & Son, Inc. v. Snyder, 536 F.2d 486, 490 (2d Cir. 1976) (citation omitted). The added material must demonstrate “more than a modicum of originality. This has been interpreted to require a distinguishable variation that is more than merely trivial.” Waldman Pub. Corp., 43 F.3d at 782. To extend copyrightabilty to miniscule variation would simply put a weapon for harassment in the hands of mischievous copier intent on appropriation and monopolizing public domain work. L. Batlin & Son, 536 F.2d 492.” The court further pointed out that it is “well established” that common phrases lack originality and are not eligible for copyright protection, citing Acuff-Rose Music v. Jostens, Inc., 155 F.3d 140 (2d Cir. 1998).
The court explained that plaintiffs have pleaded that defendants’ copyrighted work differs in only three words in their first verse (“we’ll for “I’ll”; “shall” for “will”; and “deep” for “down”) from an earlier version, and that a later copyrighted version only added a contraction of “we shall.” Further, plaintiffs have alleged that the author of the underlying work is unknown, that it is unclear who changed “will” to “shall” and that a Black tobacco worker named Lucille Simmons changed “I” to “We.” Simmons is not listed as an author in defendants’ application to register “We Shall Overcome.”
Based on the foregoing, the court concluded that plaintiffs have “plausibly alleged that the lyrics in the first verse of the Song were copied from material in the public domain.” Here, the court points out that dismissal, as sought by defendants, is not uncommon where two works are “unquestionably dissimilar,” but in this case, plaintiffs “have adequately pleaded a lack of originality and of ownership rights in the lyrics to the first verse of the copyrighted Song.” Fair enough. The changes are pretty minimal, and even Pete Seeger himself is on record as saying he does not know who actually made the changes to the lyrics. According to Seeger, it could have been him…
The court then addressed plaintiffs’ fraud on the Copyright Office allegation. Keeping in mind that this is only at the pleadings stage, and the findings by the court are not dispositive as to either parties’ allegations, the court agreed that plaintiffs have “plausibly alleged” fraud on the Copyright Office on the part of the defendants by “omitting from their application for copyright in a derivative work all reference to the public domain spiritual or the publications of ‘I Shall Overcome’ and ‘We Shall Overcome’ as antecedents to the Song, opting instead to list the previously registered song ‘I’ll Overcome’ as the work from which the Song was derived.”
A key part of plaintiffs’ claims in this lawsuit is that even if defendants had any rights in the first verse of the song, which plaintiffs deny, defendants relinquished any rights they may have had when the lyrics in question were later published without the requisite copyright notice. As part of their motion to dismiss, defendants sought to have plaintiffs’ claims of copyright divestment dismissed. The court disagreed, and refused to dismiss this part of plaintiffs’ claims.
The court explained that under the 1909 Copyright Act, the controlling law in this case, generally, every reproduction of a copyrighted work must bear the statutory copyright notice, Louis Dejonge & Co. v. Breuker & Kessler Co., 235 U.S. 33, 36, 35 S. Ct. 6, 59 L. Ed. 113, 1915 Dec. Comm’r Pat. 314 (1914), including (1) either the word “Copyright”, the abbreviation “Copr.”, or the symbol ©; (2) the name of the copyrighted proprietor; and (3) in the case of printed musical work, the year in which the copyright was secured by publication. Puddu v. Bounamici Statuary, Inc., 450 F.2d 401, 403 (2d Cir. 1971); 17 U.S.C. § 19 (1909 Act).
The court then outlined the exception to these rules: “where a magazine has purchased the right of first publication under circumstances which show that the author has no intention to donate his work to the public,” Sanga Music, Inc. v. EMI Blackwood Music, Inc., 55 F.3d 756, 760 (2d Cir. 1995), “copyright notice in the magazine’s name is sufficient to obtain a valid copyright on behalf of the beneficial owner, the author or proprietor.” Goodis v. United Artists Television, Inc., 425 F.2d 397, 399 (2d Cir. 1970). Interestingly, the song at issue in the Sanga case was contributed by Pete Seeger, and the Sanga court found that the Goodis exception did not apply.
The court went on to explain that while the defendants have a number of arguments against divestment of copyright, including the defendants having had no intention to place the song into the public domain, that plaintiffs’ complaint does not plausibly plead that post-1960 publications of the song were authorized by defendants, and accordingly these arguments are premature at the pleading stage. The court properly ruled that at this point, the complaint “plausibly alleges that several works published after a copyright in the Song was obtained in 1960 did not include the copyright notice required by the 1909 Act.”
Again, the court is not weighing in on the merits of either side’s claims. The court’s role at this point is to determine whether on its face, the complaint adequately states claims on which relief can be granted. Fed. Rules of Civ. Proc. Rule 12(b)(6).
The court then moved to plaintiffs’ state law claims, and defendants’ request to dismiss based on preemption. Where “(i) the work at issue comes within the subject matter of copyright and (ii) the right being asserted is equivalent to any of the exclusive rights within the general scope of copyright,” section 301 of the Copyright Act will preempt a state law claim. Forest Park Pictures v. Universal Television Network, Inc., 683 F.3d 424, 429 (2d Cir. 2012) (citations omitted).
Plaintiffs’ complaint included four state law claims: money had and received; violation of New York General Business Law § 349; breach of contract; and rescission, all of which the court ruled are preempted by the Copyright Act. Essentially, each of plaintiffs’ state law claims has at its heart defendants not possessing a valid copyright – defendants receiving money is unjust only if defendants do not own the relevant portions of a copyright; defendants allegedly misleading the public by claiming a copyright in the song is not qualitatively different than plaintiffs’ request for a declaration that defendants have no valid copyright; plaintiffs’ claims of breach of contract – that there was a failure of consideration and a breach of promise – both rely on the alleged misrepresentation that defendants have a copyright; and finally, plaintiffs’ claim for rescission is “based entirely on the allegation that there was a failure of consideration because the Defendants have no valid copyright in the Song.” Thus, all of plaintiffs’ state claims are preempted.
In sum, defendants’ motion was granted in part as to the preemption issue, but denied as to the issue of defendants’ rights under the Copyright Act to the lyrics in the first verse of “We Shall Overcome.” Once again, the court’s ruling does not speak to the merits of the case – it does not mean that plaintiffs’ case is stronger or defendants’ case is weaker post-ruling. The court’s ruling serves to narrow down and clarify the pleadings.
Although these parties are fully entitled to protect and assert their rights and positions through litigation, it does seem at the least unfortunate that the musical work over which they have come to blows is an iconic work that stands for struggle, strength, determination, triumph, overcoming adversity, and is so immediately identified with the Civil Rights movement in the United States. Unless the parties find a way to settle the matter relatively early, this will be a long, heavy, trying, and likely very expensive litigation. What a shame.
Opinion & Order (Nov. 21, 2016) PDF
Opinion & Order (Sept., 8, 2017) PDF
Settlement Agreement (Jan. 26, 2017) PDF
Opinion and Order on Attorney’s Fees (July 31, 2018) PDF