by Kevin Frazier (J.D. 2022)
Saint-Amour v. Richmond Org., Inc.
2020 U.S. Dist. LEXIS 34693 (S.D.N.Y. Feb. 28, 2020)
Few songs possess the patriotic power of Woody Guthrie’s “iconic” This Land is Your Land (“the Song”).[1] But a federal court judge recently ruled that this Song is not your Song; legally, it will not become part of the public domain.[2] Satorii, a band, brought a suit in 2016 to move the Song into the public domain; it was the latest in a string of cases aimed at wresting popular songs, such as Happy Birthday to You and We Shall Overcome, from copyright control.[3] The U.S. District Court for the Southern District of New York recently ruled that this case was moot due to a promise from the Song owner, Ludlow Music Inc., to refrain from suing the plaintiffs.[4]
Wolf Haldenstein Adler Freeman & Herz LLP has championed suits to bring songs with significant public meaning into the public domain.[5] In 2018, the firm received a partial victory against The Richmond Organization, which claimed ownership of We Shall Overcome.[6] In this case, the firm represented plaintiffs, members of Satorii, who made two assertions: first, that the defendants did not own valid copyrights, and second, that the defendants were obligated to return licensing fees that were unlawfully collected.[7] According to the plaintiff, the original copyright over the Song expired in 1973, if not earlier.[8] Plaintiffs further alleged that Guthrie published the Song in a songbook in 1945, but never registered this copyright.[9] The plaintiffs also challenged the validity of a copyright registration that took place in 1956.[10] This challenged Guthrie’s claims of having authored the Song’s music.[11] Despite the contested copyright, plaintiffs paid the defendants for a compulsory license to distribute copies of the song.[12] But plaintiffs feared that their plans to produce a music video of the Song could result in defendants enforcing their purported copyrights.[13] Therefore, the plaintiffs sought “a declaratory judgment that defendants have no rights to the Song enforceable under the Copyright Act.”[14]
Defendants sought to dismiss the complaint in the absence of a live case or controversy.[15] Defendants contested the need for litigation because of the “sweeping” covenant not to sue they issued to plaintiffs in 2019.[16] The defendants delivered the covenant to the plaintiffs following a denial of the defendants’ motion to dismiss.[17] The covenant covered a litany of successors in interest of the copyright, such as “any related or affiliated entity, licensee, or assign, and any person or entity claiming to be in privity of contract with [defendants].”[18] Moreover, the covenant applies to any “past, current, or future conduct” by the plaintiffs related to the “use, incorporation, distribution and performance” of the Song.[19]
Judge Castel cited the Supreme Court’s decision in Already, LLC v. Nike, Inc. to support the argument that a covenant not to sue renders moot a competitor’s action to have a copyright declared invalid.[20] The Already decision, which covered an analogous trademark infringement case, hinged on the trademark owner meeting its burden “to show that it could not reasonably be expected to resume its enforcement efforts” of the trademark.[21] Judge Alison Nathan, also of the Southern District of New York, applied a similar test to covenants issued by copyright owners in a related case, concluding that a “broadly-worded covenant . . . extinguished any live case or controversy for copyright infringement.”[22]
Here, the court regarded the defendant’s covenant as sufficiently broad so as to meet its burden of “showing that they could not reasonably be expected to resume their efforts to enforce” possible copyrights.[23] Though the plaintiffs correctly pointed out that the covenant did not cover state law claims, the court made clear that those claims had previously been dismissed with prejudice.[24]
Regardless of the plaintiff being a class representative, the court determined that the underlying copyright claims should still be dismissed.[25] The court reasoned that “[t]he invocation of Rule 23 [for formation of a class action] in the text of a complaint cannot insulate the putative class representatives from a claim that the controversy has become moot.”[26] Accordingly, given the mootness of the copyright claims, the court granted the defendant’s motion to dismiss and dismissed without prejudice the plaintiff’s Copyright Act claims.[27]
The cases brought by Wolf Haldenstein illustrate that courts may regard covenants not to sue as adequate challenges to lawsuits about songs that have attained broad, lengthy use by the public, despite concerns about the incentives underlying the law.
[1] See Saint-Amour v. Richmond Org., Inc., 2020 U.S. Dist. LEXIS 34693, at *1–2 (S.D.N.Y. Feb. 28, 2020).
[2] See id.
[3] Bill Donahue, ‘This Land Is Your Land’ Copyright Fight Dismissed, Law360 (Feb. 28, 2020), https://www.law360.com/articles/1248685 [https://perma.cc/G5RN-7QFU].
[4] See Saint-Amour, 2020 U.S. Dist. LEXIS 34693, at *2.
[5]See Donahue, supra note 3; Christopher Mele, ‘We Shall Overcome’ Is Put in Public Domain in a Copyright Settlement, N.Y. Times (Jan. 26, 2018), https://www.nytimes.com/2018/01/26/business/media/we-shall-overcome-copyright.html [https://perma.cc/W72W-GZ5U].
[6] Mele, supra note 5.
[7] Saint-Amour, 2020 U.S. Dist. LEXIS 34693, at *1–3.
[8] Id. at *2.
[9] Id.
[10] Id. at *2–3.
[11] Id.
[12] Id. at *3.
[13] Id.
[14] Id. at *4.
[15] Id. at *5–6.
[16] Id. at *4.
[17] Id. at *1, *4.
[18] Id. at *4–5.
[19] Id. at *5.
[20] Id. at *6; see Already, LLC v. Nike, Inc., 568 U.S. 85, 88 (2013).
[21] See Already, LLC, 568 U.S. at 88; Saint-Amour, 2020 U.S. Dist. LEXIS 34693, at *6 (quoting Already, LLC, 568 U.S. at 92 (internal quotations omitted)).
[22] Saint-Amour, 2020 U.S. Dist. LEXIS 34693, at *6–7; Velvet Underground v. Andy Warhol Found. for the Visual Arts, Inc., 890 F. Supp. 2d 398, 401 (S.D.N.Y. 2012) (holding that a “covenant not to sue eliminated any justiciable controversy between [the Velvet Underground and the Andy Warhol Foundation for the Visual Arts, Inc.] over copyright in the Banana Design [created by Andy Warhol]”).
[23] Saint-Amour, 2020 U.S. Dist. LEXIS 34693, at *7.
[24] Id.
[25] Id. at *8–9.
[26] Id. at *9.
[27] Id. at *9–10.