We Shall Overcome Found. v. Richmond Org., Inc.
330 F. Supp. 3d 960
S.D. Ill.2018Background
- "We Shall Overcome" is a historic protest song; defendants (The Richmond Organization and Ludlow Music) held copyrights registered in 1960 and 1963 for the song (including arrangements and selected verses).
- Plaintiffs (We Shall Overcome Foundation and Butler Films) sued seeking declaratory relief that the melody and primary verses (notably Verse 1/5) are in the public domain and challenged copyrights as invalid, alleging lack of originality, fraudulent procurement, and divestment; they also asserted state-law and class claims (later dismissed/withdrawn).
- The Court denied dismissal of the copyright claims (Nov. 2016), and on summary judgment (Sept. 2017) found Verse 1/5 lacked requisite originality and granted plaintiffs summary judgment on that issue, excluding certain defense expert testimony under Daubert.
- Remaining claims (authorship, divestment, fraud) survived summary judgment and were set for trial; defendants attempted mootness maneuvers and covenants not to sue, which the Court rejected as insufficient.
- The parties settled: defendants abandoned appeals and agreed publicly to dedicate melody and lyrics of all verses to the public domain (preserving copyright only in specific deposit copy arrangements); plaintiffs then moved for attorneys’ fees under 17 U.S.C. § 505.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether plaintiffs are a "prevailing party" under § 505 | Plaintiffs obtained meaningful relief: summary judgment on primary originality claim and defendants publicly relinquished copyright and appeal rights | Defendants said plaintiffs only partially prevailed and thus are not prevailing parties | Plaintiffs are prevailing parties: material alteration of legal relationship via summary judgment + public settlement; partial success suffices |
| Whether fee award is appropriate under Fogerty factors | Plaintiffs argued defense weak and litigation promoted public access; compensation and deterrence support fees | Defendants argued motives were benign and defenses not frivolous or unreasonable | Fees warranted: defense weak on originality and procurement issues; defendant motivation mitigates but does not defeat award; deterrence less weighty; overall Fogerty factors favor plaintiffs |
| Proper method and amount for fee calculation (lodestar/presumptively reasonable fee) | Plaintiffs submitted contemporaneous time records and sought market hourly rates producing a large fee request | Defendants challenged hourly rates, some hours as duplicative/vague, and sought reductions | Court applied Arbor Hill/lodestar: reduced requested hourly rates across-the-board by 65% (reasoning pro bono/reputational factors and benchmarks), adjusted paralegal rates, reviewed hours (minor cuts for publicity), and awarded $352,000 |
| Recovery of expert witness fees/consultants as costs | Plaintiffs sought to recover expert musicologist and legal consultant fees as expenses | Defendants opposed; cited limits on shifting expert fees absent statutory authorization | Court denied shifting expert fees: no statutory authority under § 505 to award expert fees beyond statutory witness allowances; expert fees not recoverable |
Key Cases Cited
- CRST Van Expedited, Inc. v. E.E.O.C., 136 S. Ct. 1642 (U.S. 2016) (defines "prevailing party" test and requirement of judicial imprimatur)
- Buckhannon Bd. & Care Home, Inc. v. W. Va. Dep't of Health & Human Res., 532 U.S. 598 (U.S. 2001) (examples of material alteration: relief on merits and consent decrees)
- Perez v. Westchester Cty. Dep't of Corr., 587 F.3d 143 (2d Cir. 2009) (clarifies prevailing-party analysis examples are not exclusive)
- Fogerty v. Fantasy, Inc., 510 U.S. 517 (U.S. 1994) (sets nonexclusive factors for fee shifting in copyright cases)
- Kirtsaeng v. John Wiley & Sons, Inc., 136 S. Ct. 1979 (U.S. 2016) (reaffirms district court discretion and Fogerty principles)
- Hensley v. Eckerhart, 461 U.S. 424 (U.S. 1983) (prevailing on significant issue suffices for fee award)
- Arbor Hill Concerned Citizens Ass'n v. Cty. of Albany, 493 F.3d 110 (2d Cir. 2007) (framework for determining reasonable hourly rates and lodestar inquiry)
- Millea v. Metro-North R.R. Co., 658 F.3d 154 (2d Cir. 2011) (lodestar creates presumptively reasonable fee)
- Perdue v. Kenny A., 559 U.S. 542 (U.S. 2010) (discusses limits on use of Johnson factors and adjustments to lodestar)
- Gortat v. Capala Bros., Inc., 795 F.3d 292 (2d Cir. 2015) (district court cannot shift expert fees absent explicit statutory authorization)