In the recent case of We Shall Overcome Foundation, et al. v. Ludlow Music, Inc., et al., the United States District Court for the Southern District of New York was asked to determine the validity of the copyright to “We Shall Overcome,” the seminal tune of the civil rights movement made famous by folk singer Pete Seeger, which had been registered as a “derivative work” with the Copyright Office, twice in the early 1960’s.

A derivative work is one that is substantially copied from a prior work. In order to be copyrightable, the derivative work cannot be a simple facsimile of the prior work, but instead must “contain some substantial, not merely trivial originality.” By way of example, the court noted that copyrightable derivative works include things such as translation of novel into another language, or the adaptation of a novel into a movie or a play. A derivative work is only copyrightable for the “increments of expression beyond” what is contained in the underlying work. Put another way, a copyright on a derivative work should not hijack the copyright or public domain status of the original source material.

The disputed copyrighted version of “We Shall Overcome” was actually based on an earlier version that had entered the public domain in the late 1940’s. Plaintiff argued that the copyrighted version, or, more specifically, one line of the copyrighted version, was essentially the same as the public domain version, save for a minor lyrical discrepancy introduced by the aforementioned Pete Seeger when he sang “we shall overcome” rather than “we will overcome.” Defendant argued that this was no minor discrepancy, and went so far as to retain an expert in ‘musical hermeneutics’ to opine that the change from “will” to “shall” rendered the meaning of the songs different, and thus entitled the derivative work to copyright protection.

In its 66 page order granting summary judgment to plaintiff and invalidating the 1960’s copyrights to ‘We Shall Overcome,” the court laboriously traced the history of the tune, both lyrically and musically. After much explication, however, the court based its decision on a rather simple proposition: that the change in wording from “will” to “shall” did not render the disputed version original enough to make it a copyrightable derivative work.

There are lessons in this case for both artists who produce derivative works, and the attorneys who represent them. First, no matter how often an artist plays an “old standard,” and no matter how closely associated that song may be with the artist, he will need do more than change a few words or notes around, in order to get copyright protection for the derivative work. Next, practitioners must take special care to clearly outline source material and content differences when registering a derivative work with the Copyright Office. As the court pointed out, defendant lost its strong presumption in favor of a valid copyright because the 1960’s applications failed to identify the proper source material, and failed to set forth the lyrical differences between the public domain version and the Seeger version of “We Shall Overcome.” Finally, it is apparent from the opinion that this dispute engendered full throated, i.e. very expensive, litigation. The parties hired numerous expert witnesses, employed extensive written discovery, and filed motions aplenty. For the average artist, this could result in a process that breaks the bank. Artists and their lawyers should anticipate these issues at the inception of the copyright process, to head off the possibility of cost-prohibitive litigation in the future.