IP Law Daily Owners of invalid copyright for ‘We Shall Overcome’ derivative song must pay $352 K in attorney fees
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Wednesday, August 1, 2018

Owners of invalid copyright for ‘We Shall Overcome’ derivative song must pay $352 K in attorney fees

By Cheryl Beise, J.D.

Following settlement of a declaratory judgment action addressing the validity of two copyrights for a derivative work based on the musical composition "We Shall Overcome," the unofficial anthem of the civil rights movement, the federal district court in New York City has awarded the plaintiffs $352,000 in attorney fees, plus certain expenses and costs. An award of attorney fees was warranted in view of the plaintiffs’ success on summary judgment—proving defendants’ copyrights were invalid for lack of originality— and "the inestimable benefit" they conferred on the public by bringing the lawsuit and obtaining a settlement that preserved "We Shall Overcome" in the public domain. The court, however, reduced the plaintiffs’ requested hourly fees by 65%, given the unusual circumstances of the case (We Shall Overcome Foundation v. The Richmond Organization, Inc., July 31, 2018, 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 on the grounds of lack of originality and fraud on the copyright office. The complaint also included four state law claims that the court dismissed for failure to state a claim.

In September 2018, following discovery on the copyright claims, the court granted summary judgment to the plaintiffs on their claim that the lyrics and melody of the first and fifth verses of their copyrighted song were not sufficiently original to qualify for registration as a derivative work. The court found that there was no dispute that the allegedly "transformative" changes to the lyrics of the public domain version—from "we will overcome" to "we shall overcome," and from "Oh down in my heart" to "Oh deep in my heart"—were trivial, 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. The court denied summary judgment on the issues of authorship, divestment, and fraud.

Following summary judgment, the court denied the defendants’ motion to dismiss the remaining claims, the plaintiffs withdrew their class action allegation, and case was set for trial. Before trial, the defendants tendered a covenant-not-to-sue to the plaintiffs over verses other than one and five and argued that the remaining claims were moot. The court held that the covenant did not moot the plaintiffs’ alternative grounds (fraud and divestment) for challenging the copyright in verses one and five. The parties subsequently entered into a settlement and stipulated order of dismissal pursuant to Rule 41(a)(1)(A)(ii), which the court signed. The defendants agreed that they would not "claim copyright in the melody or lyrics of any verse of the song "We Shall Overcome" and that the verses of the song were "hereafter dedicated to the public domain." The defendants, however, did preserve their claim of copyright in the specific arrangements of the Song embodied in the deposit copies.

Prevailing party. Section 505 of the Copyright Act provides that a district court "may ... award a reasonable attorney’s fee to the prevailing party." The court held that the plaintiffs were the prevailing party because they obtained a summary judgment decision in their favor on the merits of their primary claim. In the stipulated order, the defendants surrendered their right to appeal the summary judgment decision, reducing the scope of their copyrights to a fraction of their originally claimed rights. The plaintiffs’ success was not diminished by the few issues on which the defendants "prevailed," the court said.

Fogerty factors. In deciding whether to award attorney fees to the plaintiffs as the prevailing party under the Copyright Act, the court considered the Fogerty factors: (1) the frivolousness of the defendants’ proffered defense; (2) the defendants’ motivation in defending their copyrights; (3) the objective reasonableness of the defendants’ litigation position; and (4) considerations of compensation and deterrence.

Under the first factor, the court found that the defendants’ proffered defense, while not frivolous, was "weak." The single word changes made to the song were trivial and unoriginal. Moreover, the listed authors of the derivative work were not available to defend their authorship, and the most famous among them, Pete Seeger, had acknowledged that the authors were unknown. The first factor favored the plaintiffs.

Regarding motivation, the defendants claimed that they obtained the copyrights out of respect for the Civil Rights Movement and to protect the Song from improper exploitation. The second factor favored the defendants.

As for the third factor, the court found that the defendants’ arguments, though very weak in some instances—such as its motion to dismiss and motion to terminate for mootness—were not "objectively unreasonable" on the whole. For example, it was not unreasonable to argue that originality was a question was for a jury. The third factor—the most important of all—only slightly favored the plaintiffs.

The court described the issues of compensation and deterrence in this case as "complex." Thanks to the efforts of the plaintiffs, the Song is now (except for the copyrighted arrangements) in the public domain, which serves the purpose Copyright law, particular given the Song’s status and an American treasure, the court said. The court found that the plaintiffs were entitled to compensation, but it also found that deterrence did not weigh heavily in this case.

On balance, the Fogerty factors favored an award of fees to the plaintiffs in view of their success and "the inestimable benefit they have conferred on the public" by bringing a lawsuit that promotes the purposes of the Copyright Act.

Calculation of reasonable fee. The court next considered amount of attorney fees that would be reasonable to award the plaintiffs. The plaintiffs requested attorney fees in excess of $1 million and expenses of over $60,000.

This was not an ordinary copyright dispute, the court observed. The plaintiffs’ counsel pursued the case on a contingent fee arrangement and originally expected to be paid from a class action recovery fund. In this case, defense counsel reduced their fees by 50% in light of the defendants’ history donating half of the royalties earned from the Song to charity. The court found that a reduction in fees was warranted under the unusual circumstances of the case and ultimately concluded that "a 65% reduction of the requested hourly rates was a reasonable approximation of the fees that a reasonable, hourly-fee paying client could expect to pay to bring a case such as this one." The court found that no further reductions or modifications were justified. The Court calculated the final fee as $352,000.

This 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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