Copyright Challenge to 'We Shall Overcome' Proceeds

History

In denying the motion to dismiss, the U.S. District Court for the Southern District of New York opinion explores the long and complicated history of We Shall Overcome. While primarily known for its role in the American civil disobedience movement, the song was originally an African-American spiritual. In 1909, the first known printed reference to that spiritual was published under the title We Will Overcome. In the 1940s, the song achieved prominence again when tobacco workers in Charleston, SC, went on strike. Zilphia Horton of the Highlander Folk School in Tennessee heard the song on these picket lines, noting that one of the workers changed the song from “I will overcome” to “we will overcome.” Horton added some verses, and then Pete Seeger added more. In 1948, Pete Seeger published the lyrics and music in his magazine People's Songs with the authors listed as the “FTA-CIO Workers Highlander Students.” The most famous first verse in Seeger's publication read:

We will overcome We will overcome We will overcome some day. Oh down in my heart, I do believe We will overcome some day.

In 1959, Cherry Lane Music, Inc. registered a copyright for sheet music to the song with slightly changed lyrics. The word “will” became “shall” and “down” became “deep.” The last line in this version was, “We'll overcome some day.” Then, in 1960, Pete Seeger's Sing Out! magazine published the lyrics in the form known today:

We shall overcome, We shall overcome, We shall overcome some day. Oh, deep in my heart, I do believe, We shall overcome some day.

That 1960 publication had no separate copyright notice on the lyrics, although there was a notice on the collective work of the magazine. In the accompanying article, folk singer Guy Carawan referred to the song as “easily the most popular song of the integration struggle.”

Defendants' Copyright Registrations

The court record also spells out the history of defendants' copyright registrations. On Oct. 27, 1960, Defendant Ludlow filed a copyright application for a previously unpublished derivative musical work entitled We Shall Overcome. The authors were Zilphia Horton, deceased, Frank Hamilton, and Guy Carawan. The application was for “new words and music arrangement” based on a previous work I'll Overcome. The authors cited their contributions as a new melody, original harmonization, and several new verses. The first and fifth verses of this version of the song both matched the modern day lyrics.

Three years later, Defendant Ludlow filed for a second registration, this time with Pete Seeger listed as an additional author. The new contributions to this derivative work were a voice/piano/guitar arrangement with new words in several additional verses. Defendant renewed this registration in 1991. In a 1993 interview, Seeger explained that he and his fellow authors sought registrations to protect the song from manipulation and exploitation by those who might co-opt it for commercial purposes or for parodies that were contrary to the song's spirit.

The Current Lawsuit

The plaintiffs seek a declaratory judgment that the copyright registrations are limited in scope and do not cover the melody or famous first verse of lyrics. They also allege that the defendants' copyrights had been obtained fraudulently and have, in any event, been forfeited. The complaint also seeks an injunction, damages, and relief under four counts of New York's General Business Law.

The defendants sought dismissal of all the state law claims and the federal law claims regarding their ownership of the first verse lyrics. The court dismissed the state law claims as preempted, but it refused to dismiss the federal copyright claims.

In denying defendant's motion to dismiss, the court noted that plaintiffs “have plausibly alleged that the first verse … lacks originality” because the copyrighted work differs from the public domain version only due to a few words. In addition, the plaintiffs' allegation that the authors in the 1960 registration did not personally make the word changes means the “defendants cannot claim copyright protection.” This issue of fact, according to the court, would need to be addressed at trial. While the defendants argued that the certificate of registration is prima facie evidence of a copyright's validity, the court pointed out that this “presumption may be rebutted where other evidence casts doubt on the question, such as 'evidence that the work was copied from the public domain'” (citing to Fonar Corp. v Domenick, 105 F.3d 99, 104 (2d Cir. 1997).

The court further noted that others have been successful in motions to dismiss copyright infringement claims when two works are “unquestionably dissimilar.” In contrast, in the instant case, the “[p]laintiffs have adequately pleaded a lack of originality and of ownership rights in the lyrics to the [song's] first verse.” Consequently, the court refused to dismiss the case, noting that “a more developed record” could be considered on summary judgment or at trial.

With regard to the motion to dismiss plaintiff's claim of fraud in obtaining the copyright registrations, and divestment of copyright claims, the court noted factual allegations sufficiently specific to survive a motion to dismiss. The court deemed defendants' arguments to the contrary as “premature.”

Nonetheless, they give a road map of what defendants may argue in motion practice or at trial. On the issue of fraudulent misrepresentations, the defendants have factual contentions that they will use to try to rebut the fraud claim, and they also argue that the copyright registration “would have issued even if the omitted references [to the public domain] had been incorporated in the application.” Plaintiffs also allege that defendants have divested any copyright rights in the lyrics because they published without the requisite copyright notice required by the 1909 Copyright Act. In response, defendants will probably argue that they did not authorize the publications, that the publication was a fair use, and that any notice on a phonorecord should also apply to the liner notes.

State Law Claims

Defendants were successful in their quest to dismiss the state law claims, on the basis of preemption. Plaintiffs had stated claims for “money had and received, violation of New York General Business Law §349, breach of contract, and rescission for failure of consideration.” Applying a classic two-prong test for preemption analysis, the court concluded that the We Shall Overcome song comes within the subject matter of copyright and that the rights being asserted are equivalent to the exclusive rights granted by the Copyright Act. Forest Park Pictures v. Universal Television Network, Inc., 683 F3d 424, 429 (2d Cir. 2012). Accordingly, the court dismissed all four state law claims.

Conclusion

As this case moves toward trial, copyright attorneys and their clients will be watching. The case could prove useful in further defining the originality needed for copyright protection. With the dismissal of the state law claims, it will be harder for plaintiffs to receive any financial compensation, but presumably, their main intent is to place this song into the public domain.

***** Kyle-Beth Hilfer, Esq., specializes in advertising, marketing, promotions, intellectual property and new media law. A member of this newsletter's Board of Editors, she advises clients regularly on protecting their copyrights. For more information about her law practice, please visit www.kbhilferlaw.com.