We Shall Overcome Foundation v. The Richmond Organization, Inc. (TRO Inc.)
1:16-cv-02725
S.D.N.Y.Sep 8, 2017Background
- “We Shall Overcome” has uncertain origins; a 1948 People’s Songs magazine (the “PSI Version”) published lyrics and melody attributed to Highlander/FTA–CIO workers and is now in the public domain.
- Defendants (TRO/Ludlow) registered copyrights in a derivative version of the song in 1960 and 1963 that include Verse 1/5 (the familiar refrain) and additional verses/arrangements.
- Plaintiffs (We Shall Overcome Foundation and Butler Films) sued seeking declaratory relief that the words and melody of Verse 1/5 are public domain and that the defendants’ copyrights are invalid (also raising fraud and divestment theories).
- The disputed differences between the PSI Version and the copyrighted Verse 1/5 are four small changes: “will”→“shall,” “down”→“deep,” a brief added note in measures 1–2, and a small trill/flourish in measure 7.
- The court found (on summary judgment) that those differences are trivial as a matter of law and that Verse 1/5 lacks enough originality to be protected as a derivative work; other claims (authorship, fraud, divestment) and certain evidentiary issues were left for trial or resolved separately (some experts excluded).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Originality/Derivative-protection of Verse 1/5 | Verse 1/5 is essentially identical to the 1948 PSI Version and thus in the public domain; the changes are trivial. | The 1960/1963 registrations added lyrical and melodic changes (esp. “shall”) creating a distinguishable, protectable derivative. | Held: As a matter of law, the four changes are trivial; Verse 1/5 lacks the minimal originality required for copyright protection. |
| Effect of copyright-registration presumption | Plaintiffs argue the presumption is rebutted by evidence of prior public-domain publication and application defects. | Defendants rely on registration certificates to claim presumption of validity. | Held: The presumption was rebutted (flawed registrations and strong antecedent evidence); defendants bear the ultimate burden without the presumption. |
| Authorship of the asserted changes | Plaintiffs say there's insufficient admissible evidence that the listed authors created the four alterations. | Defendants point to contemporaneous statements (e.g., Seeger tapes/books) and registration attributions. | Held: Authenticity/authorship questions present factual issues for trial; summary judgment on authorship denied. |
| Expert evidence / admissibility (Daubert) | Move to exclude defendants’ experts as unreliable or irrelevant to originality issue. | Defendants proffer experts in musicology, hermeneutics, and history to explain significance and context. | Held: Court excluded Garrow and portions of Kramer (hermeneutic opinions); allowed core musicological evidence from plaintiff’s expert; expert evidence did not create material factual dispute on originality. |
Key Cases Cited
- Medtronic, Inc. v. Mirowski Family Ventures, 134 S. Ct. 843 (Sup. Ct. 2014) (burden of proof on owner in declaratory-judgment suits remains with owner)
- Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991) (copyright originality requires independent creation and minimal creativity)
- Woods v. Bourne Co., 60 F.3d 978 (2d Cir. 1995) (certificate of registration creates a rebuttable presumption of validity)
- L. Batlin & Son, Inc. v. Snyder, 536 F.2d 486 (2d Cir. 1976) (author of derivative work must add distinguishable variation; slavish copying not protected)
- Weissmann v. Freeman, 868 F.2d 1313 (2d Cir. 1989) (derivative work requires more than a merely trivial variation)
- Peter F. Gaito Architecture, LLC v. Simone Dev. Corp., 602 F.3d 57 (2d Cir. 2010) (compare works by overall concept and feel rather than dissecting only copyrightable elements)
- Urbont v. Sony Music Entm’t, 831 F.3d 80 (2d Cir. 2016) (evidence can rebut presumption of validity)
- Carol Barnhart, Inc. v. Econ. Cover Corp., 773 F.2d 411 (2d Cir. 1985) (registration presumption allocates burdens of proof)
- Fonar Corp. v. Domenick, 105 F.3d 99 (2d Cir. 1997) (registration presumption may be rebutted by evidence work was copied from public domain)