IP Law Daily Copyright in derivative version of ‘We Shall Overcome’ invalid; work lacked sufficient originality
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Monday, September 11, 2017

Copyright in derivative version of ‘We Shall Overcome’ invalid; work lacked sufficient originality

By Mark Engstrom, J.D.

Defendants Ludlow Music and The Richmond Organization did not possess a valid copyright in the words and melody of the first and fifth verses of "We Shall Overcome," the unofficial anthem of the civil rights movement, because the changes in their derivative work lacked the originality that was required to protect derivative works, the federal district court in New York City has ruled. The allegedly "transformative" changes to the lyrics—from "we will overcome" to "we shall overcome," and from "Oh down in my heart" to "Oh deep in my heart"—were trivial, the court explained, as were two small changes to the melody: the addition of ornamentation to a sustained note and the displacement of a descending phrase by a single beat. A motion for partial summary judgment by Butler Films and the We Shall Overcome Foundation was granted with respect to originality, but denied with respect to authorship and invalidity based on fraud (We Shall Overcome Foundation v. The Richmond Organization, Inc., September 8, 2017, Cote, D.).

In 1948, People’s Songs Inc. (PSI) published "We Will Overcome" in People’s Songs magazine (hereinafter, the "PSI Version" of the song). In 1960 and 1963, defendants The Richmond Organization (TRO) and Ludlow Music (a subsidiary and imprint of TRO) received two copyrights to a derivative version of "We Shall Overcome" (the "Song"). In 2016, plaintiffs Butler Films and We Shall Overcome Foundation (WSOF) filed a putative class action to challenge the validity of the defendants’ copyrights.

The plaintiffs sought partial summary judgment on their declaratory judgment claim on the ground that the changed lyrics and melody were insufficiently original to qualify for registration as a derivative work. Their argument—that the asserted modifications to verses one and five (which were identical) were in the public domain—rested largely on a comparison of the PSI Version of the Song with the defendants’ copyrighted version.

According to the court, the defendants had recently retained an expert musicologist to rebut the assertions of copyright infringement by the heirs of African American composer Louise Shropshire. Shropshire composed the hymn "If My Jesus Wills," and the expert concluded that the defendants’ derivative Song was not copied from the Shropshire hymn. Significantly, however, the expert also noted that the Song and its PSI Version were "virtually the same."

Burden of proof. In their opposition to summary judgment, the defendants relied on their copyright registration certificates to defend the validity of their copyrights. The court noted, however, that the existence of a registration certificate was not dispositive, and that the presumption of validity could be rebutted if other evidence—such as "evidence that the work had been copied from the public domain"—cast doubt on the registration’s validity.

In this case, the plaintiffs offered "more than sufficient evidence" to rebut the presumption of validity that the defendants had secured with their copyright registrations. In the court’s view, the plaintiffs had showed that the defendants’ copyright applications were "significantly flawed."

Originality. The parties agreed that the PSI Version of the Song, which was published in a magazine in 1948, predated the Song. The court noted that the PSI Version was now in the public domain, and further noted that, in the context of a work in the public domain, a copyright in a derivative work provided protection "only for the increments of expression beyond" what was contained in the public domain work. According to the court, the work had to contain a substantial originality.

In this case, the court concluded that the defendants’ alterations to the PSI Version were "too trivial" to merit protection. More specifically, the changes in lyrics—from "we will overcome" to "we shall overcome," and from "Oh down in my heart" to "Oh deep in my heart"—did not create a "distinguishable variation." Nor did the introduction of a few "melodic differences." In the court’s view, the differences represented variations that were "standard fare in the music trade by any competent musician."

The defendants argued that their change of the word "will" to "shall" was transformative because the two words had different meanings. "In the context of the first person … ‘shall’ is used to form the simple future tense, while ‘will’ is used to express a strong determination to do something," the defendants observed, and "shall" carried a sense of solemnity that was absent from "will." "Shall" was thus a better fit for the peaceful, non-violent Civil Rights Movement, which adopted the Song.

The court disagreed. The substitution of "shall" for "will" was "quintessentially trivial." Both were common words, the court explained, and both performed similar grammatical functions in the Song’s lyrics. Any finding to the contrary would "substantially expand" the scope of protection for derivative works.

The defendants also argued that, even if "shall" and "deep" were common words and their addition lacked originality, they nevertheless created a non-trivial distinguishable variation from the PSI Version of the Song when those changes were considered with the changes to the music.

Again, the court disagreed. Comparing the PSI Version to the defendants’ version, the court found that the "overall melody" was essentially unchanged. Just two "utterly trivial" differences appeared, and in each instance, the change occurred during a melodic descent that began with the same note and ended with the same note. In the first instance, the descent began a beat later and an eighth note was added; in the second instance, an ornamental embellishment was added.

Finally, the defendants argued that the popularity and widespread adoption of their copyrighted Song was proof that the four changes at issue were "more than merely trivial." As they had stated it, the copyrighted Song, not the PSI Version, served as the anthem of the Civil Rights Movement. The court dismissed that argument as a post hoc fallacy.

Authorship. The plaintiffs argued that insufficient evidence supported the assertion that the four authors that were identified in the defendants’ copyright application had contributed the four asserted changes. With respect to the changes to the lyrics, they further argued that the record was devoid of any evidence to indicate that one of those authors—folk singer Pete Seeger—had made them.

The court found that the defendants had proffered sufficient evidence to raise an issue of material fact regarding the authorship of the asserted changes. According to the court, several documents indicated that: (1) Seeger might have changed "will" to "shall" and "down" to "deep" and (2) musicians Guy Carawan and Frank Hamilton may have been responsible for the melodic differences. Summary judgment on the issue of authorship of the asserted changes was thus not warranted.

Fraud on the Copyright Office. The plaintiffs sought to invalidate the defendants’ copyrights based on allegations that the defendants had committed fraud on the Copyright Office. As with the issue of authorship, the court found that the existence of fraud could not be resolved on summary judgment. Because the defendants had proffered valid arguments in opposition to the plaintiffs’ fraud claim, the resolution of that claim would require a trial.

Disposition. The plaintiffs’ motion for partial summary judgment was granted to the extent that the plaintiffs showed, as a matter of law, that the defendants lacked a valid copyright in the words and melody of the first and fifth verses of "We Shall Overcome." Ultimately, the asserted changes in the derivative work were trivial, and thus lacked the requisite "originality" that was required to protect derivative works.

The case is No. 1:16-cv-02725-DLC.

Attorneys: Mark C. Rifkin, Randall S. Newman, and Gloria K. Melwani (Wolf, Haldenstein, Adler, Freeman & Herz, LLP) for We Shall Overcome Foundation and Butler Films, LLC. Paul LiCalsi and Ofer Reger (Robins Kaplan LLC) for The Richmond Organization, Inc. and Ludlow Music, Inc.

Companies: We Shall Overcome Foundation; Butler Films, LLC; The Richmond Organization, Inc.; Ludlow Music, Inc.

MainStory: TopStory Copyright NewYorkNews

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