Case 1:16-cv-02725-DLC Document 21 Filed 06/17/16 Page 1 of 37 UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK WE SHALL OVERCOME FOUNDATION and BUTLER FILMS, LLC, on behalf of themselves and all others similarly situated, C.A. No. 16-cv-02725-DLC AMENDED CLASS ACTION COMPLAINT Plaintiffs, v. JURY TRIAL DEMANDED THE RICHMOND ORGANIZATION, INC. (TRO INC.) and LUDLOW MUSIC, INC., Defendants. Plaintiffs, We Shall Overcome Foundation (“WSOF”) and Butler Films, LLC (“Butler”), on behalf of themselves and all others similarly situated, by their undersigned attorneys, as their Complaint against Defendants, The Richmond Organization, Inc. (TRO Inc.) (“TRO”) and Ludlow Music, Inc. (“Ludlow”) for: (1) declaratory judgment pursuant to 28 U.S.C. § 2201; (2) declaratory and injunctive relief and damages under 28 U.S.C. § 2202; (3) violations of New York General Business Law § 349; (4) breach of contract; (5) common law money had and received; and (5) rescission for failure of consideration, hereby allege as follows: JURISDICTION AND VENUE 1. The Court has subject-matter jurisdiction over this action pursuant to 28 U.S.C. § 1331 and 28 U.S.C. § 1338 with respect to claims seeking declaratory and other relief arising under the Copyright Act, 17 U.S.C. §§ 101 et seq.; pursuant to the Declaratory Judgment Act, 28 U.S.C. §§ 2201 et seq.; and supplemental jurisdiction over the entire case or controversy pursuant to 28 U.S.C. § 1367. 2. The Court has personal jurisdiction over Defendants and venue is proper in this Case 1:16-cv-02725-DLC Document 21 Filed 06/17/16 Page 2 of 37 District under 28 U.S.C. §§ 1391(b)-(c) and 28 U.S.C. § 1400(a), in that the claims arise in this Judicial District where Defendants’ principal place of business is located and where they regularly conduct business. INTRODUCTION 3. This is an action to declare that, despite their claim to the contrary, Defendants do not own a valid copyright to the musical composition We Shall Overcome (the “Song”) and that the Song is dedicated to public use and in the public domain; and for return of the unlawful licensing fees collected by Defendants pursuant to their wrongful assertion of copyright ownership of the Song. 4. According to the Library of Congress, We Shall Overcome was “the most powerful song of the 20th century,” largely because it “inspired one of the greatest freedom movements in U.S. history, and went on to topple governments and bring about reform all over the world.” 5. Upon information and belief, We Shall Overcome is an adaptation of an earlier work, an African-American spiritual with exactly the same melody and nearly identical lyrics from the late 19th or early 20th century. We Shall Overcome was first used as an inspirational song by African Americans and as a protest song by the labor movement in the early part of the 20th century. 6. By the 1950s, We Shall Overcome had become the unofficial anthem of the Civil Rights Movement. The Song became an important part of American culture and politics. After years of fighting for voting rights for all Americans, President Lyndon Johnson made a final promise: “We Shall Overcome.” 7. More than 50 years have passed since Defendant Ludlow purportedly copyrighted 2 Case 1:16-cv-02725-DLC Document 21 Filed 06/17/16 Page 3 of 37 the Song, and, claiming the self-appointed role as “guardian” of the Song, Defendants wrongfully and unlawfully insist that they own the copyright to We Shall Overcome, together with the exclusive right to control the Song’s reproduction, distribution, and public performances pursuant to federal copyright law. 8. Defendants either have silenced those wishing to perform We Shall Overcome by refusing to grant them a license or demanding exorbitant fees for a license or have unlawfully demanded and extracted licensing fees from those unwilling or unable to challenge their false ownership claims. 9. Irrefutable documentary evidence shows that Defendants do not own any valid copyright to We Shall Overcome, or if Defendants own any copyright to the Song, that right is, at most, limited to the extremely narrow right to reproduce and distribute a particular arrangement of the Song, or additional verses added to the Song when it was registered with the Copyright Office in 1960 and 1963. 10. Significantly, no court has ever adjudicated either the scope or validity of Defendants’ claimed interest in We Shall Overcome, nor in the Song’s melody or its familiar lyrics, which are independent works. 11. Plaintiffs, on behalf of themselves and all others similarly situated, seek a declaration that Defendants do not own a copyright to the melody, the familiar lyrics, and other verses of We Shall Overcome and that the Song is dedicated to public use and is in the public domain, as well as monetary damages and restitution of all the unlawful licensing fees that Defendants have improperly collected from Plaintiffs and all other Class members. PLAINTIFFS 12. Plaintiff WSOF is a California corporation with its principal place of business 3 Case 1:16-cv-02725-DLC Document 21 Filed 06/17/16 Page 4 of 37 located in Los Angeles County, California. Under a disputed claim of copyright ownership by Defendants, on or about April 14, 2015, pursuant to 17 U.S.C. § 115, Plaintiff WSOF paid the sum of $45.50 to Defendants for a compulsory license (commonly known as a “mechanical license”) to use We Shall Overcome to produce and distribute digital phonorecords, as alleged more fully below. 13. Plaintiff Butler is a limited liability company formed under the laws of the State of Delaware with its principal place of business located in Los Angeles, California. Under a disputed claim of copyright ownership by Defendants, on or about August 15, 2013, Plaintiff Butler, acting through Butler Productions, L.L.C., a Louisiana limited liability company, paid the sum of $15,000 to Defendants for a synchronization license (commonly known as a “sync license”) to use We Shall Overcome in the award-winning 2013 historical Civil Rights movie “Lee Daniels’ The Butler” (“The Butler”), as alleged more fully below DEFENDANTS 14. Defendant TRO is a New York Defendant corporation with its principal place of business located at 266 W. 37th Street, 17th Floor, New York, New York 10018. 15. Defendant Ludlow is a New York corporation with its principal place of business located at 266 W. 37th Street, 17th Floor, New York, New York 10018. Upon information and belief, at all relevant times, Defendant TRO has wholly owned Defendant Ludlow as a subsidiary and imprint. 16. Throughout the Class Period, Defendants have falsely claimed they own the exclusive copyright to We Shall Overcome based upon the new lyrics and arrangement Defendant Ludlow registered in 1960 and 1963. a. Non-party BMI provides non-dramatic public performance licenses to 4 Case 1:16-cv-02725-DLC Document 21 Filed 06/17/16 Page 5 of 37 bars, clubs, websites, and many other venues. According to BMI’s website, its blanket license includes We Shall Overcome. As a BMI member and purported owner of the copyrights in We Shall Overcome, Defendants obtain a share of blanket license revenue that would otherwise be paid to all other BMI members, in proportion to their songs’ survey shares. b. Established in 1927, non-party Harry Fox Agency is the leading provider of rights management, licensing, and royalty services for the music industry in the United States. It licenses, collects, and distributes royalties on behalf of musical copyright owners, and provides a variety of online tools to help music publishers manage their catalogs. According to the Harry Fox Agency’s website, Defendant Ludlow owns the copyright to We Shall Overcome. FACTUAL BACKGROUND Plaintiff WSOF’s Attempted Use of We Shall Overcome in a Documentary Movie 17. Plaintiff WSOF is producing a documentary movie and intends to include a performance of We Shall Overcome in at least one scene in the movie. 18. Defendants claim they own a federal copyright to the musical composition We Shall Overcome, including both the Song’s melody and its familiar lyrics. 19. According to the United States Copyright Office (“Copyright Office”), a “musical composition consists of music, including any accompanying words, and is normally registered as a work of the performing arts.” Copyright Office Circular 56A, “Copyright Registration of Musical Compositions and Sound Recordings,” at 1 (Feb. 2012) (available at www.copyright.gov/circs/circ.56a.pdf). The author of a musical composition is the composer, and the lyricist (if a different person). Id. 5 Case 1:16-cv-02725-DLC Document 21 Filed 06/17/16 Page 6 of 37 20. Accordingly, in February, 2015, a representative of Plaintiff WSOF sent an email to Defendants requesting a quote for a synchronization license to use We Shall Overcome in the movie. 21. On or about March 9, 2015, a representative of Defendants responded by email to Plaintiff WSOF’s request stating, in part, that: WE SHALL OVERCOME is a difficult song to clear. I have been advised by our historians that we will need to review the recording that is intended to be used. The song cannot be cleared without reviewing what’s being sung and the quality of the representation of the song. Please provide this information so that we can further process. 22. In response to Defendants’ demand for a sound recording, Plaintiff WSOF hired Nephertiri Lewis to sing and record We Shall Overcome. 23. On or about March 19, 2015, Plaintiff sent to Defendants a WAV file of the sound recording via email. The WAV file consisted of Ms. Lewis singing a cappella just the first verse of We Shall Overcome: We shall overcome We shall overcome We shall overcome some day Oh deep in my heart, I do believe We shall overcome some day 24. Almost a month later, on April 10, 2015, after reviewing the sound recording, a representative of Defendants sent another email to Plaintiff WSOF refusing to permit Plaintiff to use the Song. The email from Defendants stated, in part, as follows: We apologize for the delayed response to you. As previously mentioned WE SHALL OVERCOME is a very difficult song to clear. The song is not available for the proposed use. 25. After Plaintiff WSOF sent several emails to Defendants demanding to know why 6 Case 1:16-cv-02725-DLC Document 21 Filed 06/17/16 Page 7 of 37 it could not use We Shall Overcome in their documentary, on April 23, 2015, Defendants sent another email to Plaintiff that stated, in relevant part: As previously mentioned, permission is not granted for this use. I will continue to follow up with our historians. However, until further notice we do not grant permission for the use of WE SHALL OVERCOME in the documentary. 26. After Plaintiff WSOF sent several more emails to Defendants, on May 12, 2015, Defendants sent an email to Plaintiff that stated, in relevant part: As previously mentioned to you WE SHALL OVERCOME is not available for use. Permission for the use of WE SHALL OVERCOME as described in your request is not granted. No other information is available. TRO-Ludlow Music, Inc. reserves all rights under the United States Copyright law in connection with this usage. 27. Because Defendants claim to own an exclusive copyright for We Shall Overcome and has refused to grant permission for Plaintiff WSOF to use the Song, in particular the lyrical first verse recorded by Ms. Lewis, Plaintiff faces a statutory penalty of up to $150,000 under the Copyright Act if it uses the song in the documentary it is producing if Defendants, in fact, own the copyright that it claims. 28. As a result, Plaintiff WSOF has been unable to complete the documentary movie it is producing because Defendants refuse to grant it a sync license to use the Song. Plaintiff WSOF’s Use of We Shall Overcome in a Soundtrack 29. In addition to the documentary movie, Plaintiff WSOF also intends to release a digital phonorecord to accompany the movie. Plaintiff WSOF intends to use Ms. Lewis’s recording of We Shall Overcome on that phonorecord. 30. Section 115 of the Copyright Act, 17 U.S.C. § 115, provides for a compulsory license for the distribution of phonorecords and digital phonorecord deliveries (i.e., web-based “downloads”) of musical compositions. Failure to obtain such a license prior to distribution of a 7 Case 1:16-cv-02725-DLC Document 21 Filed 06/17/16 Page 8 of 37 cover version of a song constitutes a copyright infringement subject to the full remedies of the Copyright Act. 31. Accordingly, on April 14, 2015, Plaintiff WSOF provided a Notice of Intention to Obtain Compulsory License to Defendants and paid them the sum $45.50 for a mechanical license to produce and distribute 500 copies of the Song as a digital phonorecord. Plaintiff Butler’s Use of We Shall Overcome in an Historical Dramatic Movie 32. In 2013, Plaintiff Butler and several other production companies produced The Butler, an award-winning American historical drama inspired by the real life of Eugene Allen, who served as a White House butler for 34 years. The Butler chronicled many of the most notable political and social events of the 20th century, including most importantly the Civil Rights Movement. The Butler was nominated for and received many awards, including nominations for eight NAACP Image Awards in 2014. 33. Because of the importance of the Song to the Civil Rights Movement, Plaintiff Butler intended to use the Song in several crucial scenes in The Butler. One of the proposed uses included playing the Song as background music accompanying archival footage from the Civil Rights Movement. Other proposed uses included playing the Song as background music during scenes depicting iconic Civil Rights events involving the Freedom Riders, the 1963 riots in Birmingham, Alabama, the 1965 riots in Selma, Alabama, the 1965 Bloody Sunday conflict at Pettus Bridge in Selma, Alabama, and the 1968 riots in Washington following the assassination of Martin Luther King. 34. Because Defendants claimed to own a copyright to We Shall Overcome, Plaintiff Butler could not use the Song and then distribute the movie, or enter into an agreement for distribution of the movie, without first obtaining a sync license for the Song. 8 Case 1:16-cv-02725-DLC Document 21 Filed 06/17/16 Page 9 of 37 35. Therefore, on at least four separate occasions in 2012, Plaintiff Butler sought permission from Defendant to use the Song. On each such occasion, Defendants refused even to acknowledge or respond to Plaintiff Butler’s request for a sync license for the Song. 36. Defendants repeatedly stonewalled and rebuffed Plaintiff Butler’s attempts to license We Shall Overcome for use in The Butler. 37. Because of the importance of the Song to the story of the Civil Rights Movement depicted in the movie, Plaintiff Butler sought other ways to communicate with Defendants to obtain permission to use the Song, all of which were unsuccessful. 38. Eventually, Plaintiff Butler finally made contact with Defendants to request a sync license to use We Shall Overcome in The Butler. 39. In late September, 2012, Plaintiff Butler identified several scenes and described its intended uses of We Shall Overcome in those scenes to Defendants. In requesting permission to use We Shall Overcome, Plaintiff emphasized the importance of the Song to the telling of the story of the Civil Rights Movement from the unique perspective of the butler’s son (who was involved in the Freedom Riders and the civil rights movement). 40. Plaintiff Butler also emphasized the historical significance of The Butler and described the intent of the movie to portray the Civil Rights Movement accurately. Therefore, Plaintiff Butler emphasized the importance of using We Shall Overcome, the Civil Rights Movement’s anthem, in the movie. 41. After a series of communications between Plaintiff Butler and Defendants, eventually, on September 27, 2012, Defendants advised Plaintiff that Defendants should and could charge Plaintiff the staggering sum of $100,000 for Plaintiff Butler’s proposed uses of We Shall Overcome in The Butler. 9 Case 1:16-cv-02725-DLC Document 21 Filed 06/17/16 Page 10 of 37 42. Later that same day, Plaintiff Butler informed Defendants that its budget did not allow it to pay the sum of $100,000 for a license for We Shall Overcome. Plaintiff Butler requested that Defendants reconsider their position, and offered as a compromise to contribute a portion of the proceeds from the premiere of The Butler to the Highlander Research and Education Center, which receives a portion of the royalties from the Song. Plaintiff Butler again emphasized the importance of the Song to the story of the Civil Rights Movement depicted in the movie. 43. Thereafter, Defendants offered to grant Plaintiff Butler a sync license for just two uses of the Song for a payment of $50,000, still a staggering $25,000 charge per use. Plaintiff Butler informed Defendants that the cost for the sync license was still not within the movie’s budget. 44. Demonstrating the overt commercial purpose for Defendants’ copyright claim, on September 28, 2012, Larry Richmond, President of Defendant TRO, pointedly told Plaintiff Butler that “[t]here are many other songs associated with the Civil Rights Movement which you could use in place of We Shall Overcome if circumstances are such that you cannot afford to pay the appropriate licensing fees.” 45. Ultimately, on August 15, 2013, after Defendants refused to negotiate reasonable terms to grant Plaintiff Butler a sync license for We Shall Overcome, Plaintiff Butler, acting through Butler Productions, L.L.C., licensed the right to use the Song one time, for no more than ten seconds, for the sum of $15,000, which Plaintiff Butler paid to Defendants. 46. Pursuant to the sync license from Defendants, Plaintiff Butler included a fleeting, three-second, use of the Song in The Butler. In fact, it is very difficult to even hear the use of the Song when watching the movie knowing exactly where the Song is played in the movie. 10 Case 1:16-cv-02725-DLC Document 21 Filed 06/17/16 Page 11 of 37 The Origin of the Song 47. The musical composition We Shall Overcome is an adaptation of an earlier public work, an African-American spiritual with exactly the same melody and nearly identical lyrics. 48. The well-known lyrics of We Shall Overcome are as follows: We shall overcome We shall overcome We shall overcome some day Oh deep in my heart, I do believe We shall overcome some day 49. Upon information and belief, the nearly-identical lyrics of the African-American spiritual, sung to the exact same melody as We Shall Overcome, are: We (or I) will overcome We (or I) will overcome We (or I) will overcome some day Oh deep (or down) in my heart, I do believe We (or I) will overcome some day 50. The first known printed reference to “We Will Overcome,” in the February 1909 edition of the United Mine Workers Journal, refers to performances of that song in 1908 and much earlier. The front page of the February 1909 United Mine Workers Journal states: “Last year at a strike [in Alabama], we opened every meeting with a prayer, and singing that good old song, ‘We Will Overcome.’” 51. At that time, no copyright was registered or claimed, and no copyright existed, for the musical composition “We Will Overcome.” 52. In the 1940s, We Shall Overcome was used as a protest song by striking tobacco workers in Charleston, South Carolina. 53. In 1945, American folk singer Pete Seeger (“Seeger”) and others founded 11 Case 1:16-cv-02725-DLC Document 21 Filed 06/17/16 Page 12 of 37 People’s Songs, Inc. (“PSI”), to “create, promote, and distribute songs of labor and the American people.” PSI was incorporated in the State of New York in February 1946, with Seeger as its first Chairman and Irwin Silber (Silber”), an American political activist, as its first Executive Director. Zilphia Horton, an American composer and wife of Myles Horton, the founder of the Highlander Folk School in Monteagle, Tennessee, was a member of PSI’s Advisory Committee. 54. In 1946, PSI began publishing a periodical entitled People’s Songs. 55. The entire musical composition “We Will Overcome,” including the melody and lyrics, was published by PSI in September, 1948 in Vol. 3, No. 8 of People’s Songs, as follows: 56. As shown above, next to the title for “We Will Overcome,” PSI identified the author of the musical composition as follows: “By FTA-CIO Workers Highlander Students,” a reference to the affiliated Food, Tobacco, Agricultural, and Allied Workers (FTA) and Congress of Industrial Organizations (CIO) and to the Highlander Folk School. 57. Significantly, neither Seeger nor Zilphia Horton was identified as the author of 12 Case 1:16-cv-02725-DLC Document 21 Filed 06/17/16 Page 13 of 37 any part of “We Will Overcome.” To the contrary, below the title for “We Will Overcome,” PSI stated as follows: This simple and moving hymn tune becomes especially thrilling when you consider where the song was first sung. It was learned by Zilphia Horton of the Higlander Folk School, in Tennessee, from members of the CIO Food and Tobacco Workers Union. Many a visitor to the south has never forgotten hearing the rich harmonies of some little band, and the determination in these words, even though surrounded on all sides by hate, Jim Crow and all the forces of power and money. Zilphia writes: “It was first sung in Charleston, S.C., and one of the stanzas of the original hymn was “we will overcome.” At school here they naturally added other verses. . . . Its strong emotional appeal and simple dignity never fails to hit people. It sort of stops them cold silent.” [Emphasis added.] 58. The September 1948 edition of People’s Songs was registered with the Copyright Office under Reg. No. B184728. That copyright was never renewed, and it expired 28 years later, in 1976, by which point (if not sooner) “We Will Overcome” entered the public domain. 59. PSI went out of business a few months after publication of the September 1948 edition of People’s Songs. Thereafter, Seeger and Silber then published a magazine entitled Sing Out! The Folk Song Magazine, beginning in May 1950. 60. An article in the November 1952 edition of New York Guild Lawyer described We Shall Overcome as “a Negro spiritual, sung by the entire ensemble and joined in by large segments of the audience.” Neither Seeger nor Zilphia Horton was identified as the author of either the words or melody of We Shall Overcome. 61. Mrs. Horton died on April 11, 1956. 62. In 1959, Vanguard Records released a phonograph record narrated by Charlton Heston entitled Out of Egypt: The Story of Moses. The Robert DeCormier chorale performed We Shall Overcome on that phonograph record. 63. In the 1950s, Vanguard Records, a record producer, frequently collaborated with 13 Case 1:16-cv-02725-DLC Document 21 Filed 06/17/16 Page 14 of 37 Cherry Lane Music, Inc. (“Cherry Lane”), a music publisher, whereby Cherry Lane would register or publish sheet music for musical compositions and Vanguard Records would produce sound recordings of artists performing the musical compositions. 64. As part of that collaboration, in 1959, Cherry Lane registered a copyright for Music for 1st 5 Books of Moses as an unpublished work. Upon information and belief, Music for 1st 5 Books of Moses included sheet music for We Shall Overcome. That work corresponded with the phonograph record entitled Out of Egypt: The Story of Moses. 65. On December 14, 1959, Cherry Lane registered the copyright (Reg. No. EU606164) for Music for 1st 5 Books of Moses with the Copyright Office. The copyright covered the following work: “arr. & adapted w & m Bob Corman, pseud. of Robert De Cormier. NM: arr. & adapted w&m.” 66. Vol. 10, No. 2 of Sing Out!, published in 1960, included an article by Silber, entitled “He Sings for Integration,” about American folk singer Guy Carawan. The article included the song’s historical lyrics, without a sufficient copyright notice identifying the copyright owner and the year of first publication of the lyrics, as follows: We shall overcome, We shall overcome, We shall overcome some day; Oh, deep in my heart, I do believe, We shall overcome some day. 67. The lyrics included in Vol. 10, No. 2 of Sing Out! are the well-known lyrics of We Shall Overcome. Silber also identified purported “new words” for the song, again without a proper copyright notice identifying the copyright owner and the year of first publication, as follows: 14 Case 1:16-cv-02725-DLC Document 21 Filed 06/17/16 Page 15 of 37 We are not afraid, We are not afraid, We are not afraid today, etc. 68. On June 1, 1960, Vol. 10, No. 2 of Sing Out! was registered by Sing Out, Inc., with the Copyright Office under Reg. No. B845820. Defendant’s Purported 1960 Copyright to We Shall Overcome 69. On October 27, 1960, Defendant Ludlow filed a copyright Registration Application (Reg. No. EU645288) for We Shall Overcome as an unpublished derivative work. We Shall Overcome was published after Reg. No. EU606164 was registered by Cherry Lane. 70. Paragraph 3 of the Registration Application required the copyright claimant to list the authors of the musical composition as well as the new matter they contributed to the derivative work. Defendant Ludlow completed paragraph 3 by listing Zilphia Horton (deceased) as the author of “New words & music Arrangement,” Frank Hamilton as the author of “New words & music Arrangement,” and Guy Carawan as the author of “New words & music Arrangement.” Defendant Ludlow did not identify Seeger as the author of any part of the work covered by the application. 71. Paragraph 5(b) of the Registration Application required “a brief, general statement of the nature of any substantial new matter in this version. New matter may consist of musical arrangement, compilation, editorial revisions, and the like, as well as additional words and music.” Defendant Ludlow completed paragraph 5(b) of the Registration Application by stating as follows: “Original registration under title “I’LL OVERCOME.” Melody has been changed. Harmonization wholly original. Verses 2, 3, 4 of lead sheet attached all original.” 72. Contrary to the statement in the application for Reg. No. EU645288, the melody was not changed in the new work covered by that copyright, and a harmonization was not 15 Case 1:16-cv-02725-DLC Document 21 Filed 06/17/16 Page 16 of 37 included in the “lead sheet” deposited with the application for the copyright. 73. In the renewal application for that copyright (Reg. No. RE386757), filed with the Copyright Office on June 27, 1988, the renewal claimants, Myles Horton, Frank Hamilton, and Guy Carawan, identified the renewable copyright matter as “New Words & Music Arrangement.” The renewal copyright (Reg. No. RE386757) explicitly does not cover any purported change to the Song’s melody. 74. The official Catalog of Copyright Entries for 1960 lists the Song as follows: WE SHALL OVERCOME; w & arr. m Zilphia Horton, Frank Hamilton & Guy Carawan. Appl. states prev. reg. as I’ll overcome. NM: arr., changed m & added w. © Ludlow Music, Inc.; 27Oct60; EU645288. 75. At most, Defendant Ludlow claimed as new matter under the Registration Application for Reg. No. EU645288 only the unspecified change to the melody, the harmonization (i.e., arrangement), and Verses 2, 3, and 4 of the musical composition. Defendant did not claim a copyright for Verse 1 (or the identical Verse 5) of the musical composition, which are the Song’s most familiar lyrics. 76. Despite Defendant Ludlow’s claim in the Registration Application for Reg. No. EU645288, upon information and belief, no musical composition entitled “I’ll Overcome” had been registered with the copyright office at any time prior to 1960. Based upon information and belief, Defendant Ludlow completed the Registration Application in 1960 listing “I’ll Overcome” as the original work to create ambiguity as to what song the Registration Application referred. Moreover, based upon information and belief, Defendant Ludlow did not have permission from the authors of any such original work to publish a derivative work therefrom. 77. The deposit copy for the work covered under Reg. No. EU645288 contains the following five lyrical verses: 16 Case 1:16-cv-02725-DLC Document 21 Filed 06/17/16 Page 17 of 37 VERSE 1 We shall overcome We shall overcome We shall overcome some day Oh deep in my heart, I do believe We shall overcome some day VERSE 2 We’ll walk hand in hand We’ll walk hand in hand We’ll walk hand in hand some day Oh, deep in my heart, I do believe We’ll walk hand in hand some day VERSE 3 The truth will make us free The truth will make us free The truth will make us free some day Oh deep in my heart I do believe We’ll walk hand in hand some day The truth will make us free some day VERSE 4 The Lord will see us through The Lord will see us through The Lord will see us through someday Oh deep in my heart I do believe The Lord will see us through someday VERSE 5 (identical to Verse 1) We shall overcome We shall overcome We shall overcome some day Oh deep in my heart, I do believe We shall overcome some day 78. The melody and lyrics repeated in Verses 1 and 5 of We Shall Overcome are the same melody and lyrics as “We Will Overcome” published in People’s Songs in 1948, the same melody and lyrics published in Music for 1st 5 Books of Moses in 1959, and the same lyrics published in Sing Out! in 1960. 79. Defendant Ludlow failed to identify those prior publications of the words and 17 Case 1:16-cv-02725-DLC Document 21 Filed 06/17/16 Page 18 of 37 music for We Shall Overcome in the application for Reg. No. No. EU645288. 80. Vol. 11, No. 2 of Sing Out!, published in April-May 1961, included sheet music for the entire musical composition of We Shall Overcome with no copyright notice. The sheet music from Vol. 11, No. 2 of Sing Out! is reproduced in full below: 81. Under the sheet music, Vol. 11, No. 2 of Sing Out! also stated: Additional verses added from time to time: We shall all be free, etc. We will live in peace, etc. We will end Jim Crow, etc. The Lord will see us through, etc. 82. Vol. 11, No. 2 of Sing Out! was published after registration of Reg. Nos. EU606164 and EU645288. However, the musical composition We Shall Overcome was included in Vol. 11, No. 2 of Sing Out! without a sufficient copyright notice identifying the copyright owner and the year of first publication of the words and music. 83. If and to the extent that Reg. No. EU645288 was valid and covered any part of the 18 Case 1:16-cv-02725-DLC Document 21 Filed 06/17/16 Page 19 of 37 musical composition, that copyright was divested by the publication of Vol. 11, No. 2 of Sing Out! in April-May 1961 without a proper notice identifying the prior copyright. 84. In the 1960s, Defendant Ludlow, a music publisher, frequently collaborated with Folkway Records, a record company founded by Moses Asch and Marian Distler to produce “people’s music,” whereby Defendant Ludlow would register or publish sheet music for musical compositions and Folkway Records would produce sound recordings of artists performing the musical compositions. 85. In 1961, Folkways Records released a phonograph record entitled The Folk Music of the Newport Folk Festival 1959-60, Vol 2, which included a recording of We Shall Overcome sung by Guy Carawan and authorized liner notes. The lyrics to Verses 1, 2, and 3 of We Shall Overcome covered under Reg. No. EU645288 are printed on the liner notes for the 1961 phonograph record without a sufficient copyright notice identifying the copyright owner and the year of first publication of the Song’s words and music. Thus, to whatever extent Reg. No. EU645288 was valid and covered any part of the musical composition, the copyright to Verses 1, 2, and 3 was again divested in 1961. 86. In 1962 Folkways Records released a phonograph record titled Call of Freedom, which included a recording of We Shall Overcome and authorized liner notes. The lyrics to Verses 1, 2, and 3 of the work covered under Reg. No. EU645288 are printed on the liner notes for Call of Freedom without a sufficient copyright notice identifying the copyright owner and the year of first publication of the words and music. Thus, to whatever extent Reg. No. EU645288 was valid and covered any part of the musical composition, the copyright to verses 1, 2, and 3 was divested yet again in 1962. 19 Case 1:16-cv-02725-DLC Document 21 Filed 06/17/16 Page 20 of 37 Defendant’s Purported 1963 Copyright to We Shall Overcome 87. On October 8, 1963, Ludlow filed another Registration Application for We Shall Overcome (Reg. No. EP179877) as a derivative work. 88. In Paragraph 3 of the 1963 Registration Application, Defendant Ludlow identified Ms. Horton (deceased) as author of “New words and music adaptation”; Frank Hamilton as author of “New words and music adaptation”; Guy Carawan as author of “New words and music adaptation”; and Pete Seeger as author of “New words and music adaptation.” 89. In Paragraph 5(b) of the 1963 Registration Application, Defendant Ludlow identified the new matter by stating: “Arr. for voice and piano with guitar chords plus completely new words in verses 6, 7, and 8. The addition of Pete Seeger’s name to writer credits is new.” 90. Upon information and belief, the melody and the lyrics for Verses 1 through 5 on the deposit copy for the work covered under Reg. No. EP179877 are exactly identical to the melody and the lyrics for the five verses on the deposit copy for the work covered under Reg. No. EU645288. 91. The new lyrics for Verses 6, 7, and 8 on the deposit copy for the work covered under Reg. No. EP179877 are as follows: VERSE 6 We shall live in peace, we shall live in peace, We shall live in peace some day, Oh, deep in my heart I do believe We shall overcome some day. VERSE 7 We are not afraid, we are not afraid, We are not afraid today, Oh, deep in my heart I do believe We shall overcome some day. 20 Case 1:16-cv-02725-DLC Document 21 Filed 06/17/16 Page 21 of 37 VERSE 8 The whole wide world around, the whole wide world around, The whole wide world around some day. Oh, deep in my heart I do believe We shall overcome some day. 92. Consistent with the limited description of the new matter provided by Defendant Ludlow in Paragraph 5(b) of the 1963 Registration Application for Reg. No. EP179877, in the renewal application for that copyright, filed with the Copyright Office on February 20, 1991, the renewal claimants, Myles Horton, Frank Hamilton, and Guy Carawan, identified the renewable copyright matter as “Arr. for voice and piano with guitar chords plus completely new words in verses 6, 7, and 8.” Thus, the renewal copyright (Reg. No. RE523130) does not cover any part of the Song’s melody. 93. The melody and lyrics repeated in Verses 1 and 5 of We Shall Overcome in Reg. No. EP179877 are the same melody and lyrics as “We Will Overcome” published in People’s Songs in 1948, the same melody and lyrics published in Music for 1st 5 Books of Moses in 1959, and the same lyrics published in Sing Out! in 1960. 94. Defendant Ludlow failed to identify those prior publications of the words and music for We Shall Overcome in the application for Reg. No. EP179877. 95. In 1963, Folkways Records released a phonograph record entitled Sing Out! Hootenanny with Pete Seeger and the Hooteneers, which included a recording of We Shall Overcome and authorized liner notes. The lyrics to Verse 1 of the work covered under Reg. No. EU645288 and the lyrics to Verse 6 of the work covered under Reg. No. EP179877 are printed on the liner notes without a sufficient copyright notice identifying the copyright owner and the year of first publication of the words and music. Thus, to whatever extent Reg. No. EU645288 or Reg. No. EP179877 was valid and covered any part of the musical composition, the 21 Case 1:16-cv-02725-DLC Document 21 Filed 06/17/16 Page 22 of 37 copyrights to Verses 1 and 6 were divested in 1963. 96. In 1964, Folkways Records released a phonograph record entitled We Shall Overcome; Songs of the “Freedom Riders” and the “Sit-Ins” in 1964, which included a recording of We Shall Overcome and authorized liner notes. The lyrics to verses 1, 2 and 3 of the work covered under Reg. No. EU645288 and the lyrics to Verse 7 of the work covered under Reg. No. EP179877 are printed on the liner notes without a sufficient copyright notice identifying the copyright owner and the year of first publication of the combination of the words and music. Thus, to whatever extent Reg. No. EU645288 or Reg. No. EP179877 was valid and covered any part of the musical composition, the copyrights to Verses 1, 2, 3, and 7 were divested in 1964. 97. In 1964, Folkways Records also released a phonograph record entitled Broadsides Songs and Ballads Sung by Pete Seeger, which included a recording of We Shall Overcome and authorized liner notes. The melody and the lyrics to Verses 1 and 5 of the work covered under Reg. Nos. EU645288 and EP179877 for We Shall Overcome were printed in full on the liner notes for Broadsides Songs and Ballads Sung by Pete Seeger, which identified the author or copyright owner for eight other songs but lacked a sufficient copyright notice identifying the author or copyright owner and the year of first publication of the combination of the words and music for We Shall Overcome. Thus, to whatever extent Reg. No. EU645288 or Reg. No. EP179877 was valid and covered any part of that musical composition, the copyrights to the melody and Verses 1 and 5 were divested yet again in 1964. Pete Seeger and the Defendant Admitted the Copyrights to We Shall Overcome are Invalid 98. In the 1960 and 1963 Registration Applications for Reg. Nos. EU645288 and EP179877, Defendant Ludlow did not even claim a copyright to the well-known lyrics to We 22 Case 1:16-cv-02725-DLC Document 21 Filed 06/17/16 Page 23 of 37 Shall Overcome, reprinted as Verses 1 and 5 of both musical compositions. 99. Similarly, in the Renewal Applications for Reg. Nos. RE386757 and RE523130, no copyright claim was made to those familiar lyrics of We Shall Overcome. Therefore, Defendants cannot possibly claim they own a copyright to those lyrics. 100. In addition, in the Renewal Applications for Reg. Nos. RE386757 and RE523130, no copyright claim was made to the Song’s melody. Therefore, Defendants cannot possibly claim they own a copyright to the melody. 101. At the request of Defendants, on May 14, 2013, Lawrence Ferrara, Ph.D., a professor of music at New York University, prepared a musicological report regarding We Shall Overcome (the “Ferrara Report”). Defendants have relied upon the Ferrara Report to substantiate their claim that they own a copyright to the Song. 102. According to the Ferrara Report, the “music and lyrics” of the musical composition We Will Overcome published in People’s Songs in 1948 “is virtually the same as” the music and lyrics of We Shall Overcome. Because the copyright to the 1948 publication of People’s Songs, Reg. No. B184728, was never renewed, and thus expired in September 1976, in accordance with the Ferrara Report, We Shall Overcome entered the public domain no later than that date (if not sooner). 103. In 1993, Seeger wrote and published a book entitled Where Have all the Flowers Gone: A Singer’s Stories, Songs, Seeds, Robberies. In it, Seeger refuted even the possibility that he was responsible for any purported lyrical change from “We Will Overcome” to We Shall Overcome: No one is certain who changed “will” to “shall.” It could have been me with my Harvard education. But Septima Clarke, a Charleston schoolteacher (who was director of education at Highlander and after the Civil Rights Movement was elected year after year to the Charleston, S.C. Board of Education) always 23 Case 1:16-cv-02725-DLC Document 21 Filed 06/17/16 Page 24 of 37 preferred “shall.” It sings better. 104. Seeger admitted on many occasions that he was not the author of We Shall Overcome. For example, in 1998, Smithsonian Folkways Recordings released a phonograph record titled If I Had A Hammer Songs of Hope & Struggle: Pete Seeger and authorized liner notes. Page 12 of the liner notes that accompanied the recording stated: The Song was probably adapted from the 19th century hymn, “I’ll Be All Right,” although Rev. Charles Tindley’s 1903 composition, “I’ll Overcome Some Day,” is also a possible source. The Tindley song may itself have been adapted from the older hymn. In any case, Zilphia Horton of the Highlander Folk School in Tennessee heard Black tobacco workers singing it on a picket line in 1946. According to Pete, one of those workers, Lucille Simmons, changed the “I” to “we.” Pete considers this the most important word in the song. He is less sure about who changed “will” to “shall” but acknowledges that “it could have been me with my Harvard education” (Seeger 1993). Zilphia Horton added some verses and taught it to Pete in 1947 and Pete added other, less union-specific verses. In April, 1960, folksinger Guy Carawan sang it to the founding convention of the Student Nonviolent Coordinating Committee (SNCC) in Raleigh, NC, and it quickly spread throughout the developing Civil Rights Movement. According to Pete, “This song undoubtedly has many meaning to many people. . . . The very best verse was made up in Montgomery, Alabama, the city of the 1956 bus boycott: ‘We are not afraid – today!’. . . .Without this verse none of the other verses could come true” (Seeger 1972). Pete also acknowledges that, despite its status as an anthem, the song has been criticized for the passivity implied by “someday.” In the early 60s, Pete, Guy Carawan and Frank Hamilton copyrighted the song to protect it from being turned into an insipid pop song (as happened to “Wimoweh”). 105. In his 1993 book, Seeger also wrote as follows: In the early ‘60s our publishers said to us, “If you don’t copyright this now, some Hollywood types will have a version out next year like “Come on Baby, We shall overcome tonight.” So, Guy, Frank, and I signed a “songwriter’s contract.” At that time we didn’t know Lucille Simmons’ name. 24 Case 1:16-cv-02725-DLC Document 21 Filed 06/17/16 Page 25 of 37 CLASS ALLEGATIONS 106. Plaintiffs bring this action under Federal Rules of Civil Procedure 23(a) and (b) as a class action on behalf of itself and all others similarly situated for the purpose of asserting the claims alleged in this Complaint on a common basis. 107. The proposed Class is comprised of all persons or entities, excluding Defendants and their directors, officers, employees, and affiliates, who entered into a license with Defendants (or either of them), or paid Defendants (or either of them), directly or indirectly, a royalty or licensing fee for the song We Shall Overcome at any time since 2010, and until Defendants’ unlawful conduct as alleged herein has ceased. 108. Although Plaintiffs do not know the exact size of the Class or the identities of all members of the Class, upon information and belief that information can be readily obtained from the books and records of Defendants. Plaintiffs believe that the Class includes hundreds if not thousands of persons or entities who are widely geographically disbursed. Thus, the proposed Class is so numerous that joinder of all members is impracticable. 109. The claims of all members of the Class involve common questions of law and fact including: a. whether the copyrights Defendants registered in 1960 and 1963 are invalid because they were procured fraudulently; b. whether the 1960 and 1963 copyrights cover the melody or the familiar lyrics in verses 1 and 5 of We Shall Overcome; c. whether the copyright claimed by Defendants over the melody is valid because the melody was not original to the purported author; d. whether Defendants obtained any rights from the original author(s) of the 25 Case 1:16-cv-02725-DLC Document 21 Filed 06/17/16 Page 26 of 37 prior work(s) from which We Shall Overcome is derived and, if so, what rights were obtained; e. whether those copyrights claimed by Defendants over the melody, the familiar lyrics in verses 1 and 5, and the lesser-known verses 2, 3, 6, and 7 of We Shall Overcome were subsequently forfeited because they were published with permission on numerous occasions without a proper copyright notice; f. whether We Shall Overcome is in the public domain and dedicated to public use; g. whether Defendants are the exclusive owners of copyrights to We Shall Overcome and are thus entitled to all of the rights conferred in 17 U.S.C. § 102; h. whether Defendants have the right to collect fees for the use of We Shall Overcome; i. whether Defendants have violated the law by demanding and collecting fees for the use of We Shall Overcome despite not having a valid copyright to the song; and j. whether Defendants are required to return unlawfully obtained payments to Plaintiff and the other members of the Class and, if so, what amount is to be returned. 110. With respect to Counts Three through Six, the common questions of law and fact predominate over any potential individual issues. 111. Plaintiffs’ claims are typical of the claims of all other members of the Class. Plaintiffs’ interests do not conflict with the interests of any other member of the Class, in that Plaintiffs and the other members of the Class were subjected to the same unlawful conduct. 112. Plaintiffs are committed to the vigorous prosecution of this action and have 26 Case 1:16-cv-02725-DLC Document 21 Filed 06/17/16 Page 27 of 37 retained competent legal counsel experienced in class action and complex litigation. 113. Plaintiffs are adequate representatives of the Class and, together with their attorneys, are able to and will fairly and adequately protect the interests of the Class and its members. 114. A class action is superior to other available methods for the fair, just, and efficient adjudication of the claims asserted herein. Joinder of all members of the Class is impracticable and, for financial and other reasons, it would be impractical for individual members of the Class to pursue separate claims. 115. Moreover, the prosecution of separate actions by individual members of the Class would create the risk of varying and inconsistent adjudications, and would unduly burden the courts. 116. Plaintiffs anticipate no difficulty in the management of this litigation as a class action. COUNT ONE DECLARATORY JUDGMENT PURSUANT TO 28 U.S.C. § 2201 117. Plaintiffs repeat and reallege paragraphs 1 through 116 above as though they were fully set forth herein. 118. Plaintiffs brings this claim individually on behalf of themselves and on behalf of the Class pursuant to Federal Rule of Civil Procedure 23(b)(2). 119. Plaintiffs seek adjudication of an actual controversy arising under the Copyright Act, 17 U.S.C. §§ 101 et seq., in connection with Defendants’ purported copyright claim to We Shall Overcome. Plaintiffs seek the Court’s declaration that the Copyright Act does not bestow upon Defendants the rights they have asserted and have enforced against Plaintiff and the other 27 Case 1:16-cv-02725-DLC Document 21 Filed 06/17/16 Page 28 of 37 members of the Class. This is because either: (a) the 1960 and 1963 registrations under which Defendants claim those copyrights, and the resulting copyrights, do not purport to cover and do not cover the melody or the familiar lyrics to We Shall Overcome, but instead are limited just to arrangements and obscure additional verses which have little or no commercial value; (b) Defendants fraudulently obtained the copyrights in 1960 and 1963, and therefore those copyrights are invalid; (c) because those copyrights have been forfeited; or (d) if and to the extent those copyrights purport to or do cover the melody and familiar lyrics to We Shall Overcome, the copyrights are invalid. 120. Defendants falsely assert that they are entitled to control the use of the musical composition We Shall Overcome and are entitled to mechanical and performance royalties pursuant to 17 U.S.C. § 115 for the creation and distribution of phonorecords and digital downloads of the Song, under threat of a claim of copyright infringement. 121. Plaintiffs’ agreement to pay Defendants and their actual payment to them for use of the Song was the involuntary result of Defendants’ assertion of a copyright and the risk that Plaintiffs might be exposed to substantial statutory penalties under the Copyright Act if they failed to pay Defendants the statutory fee for the compulsory license. 122. By virtue of Defendants’ claim to own a copyright to We Shall Overcome, Plaintiff Butler was unable to release The Butler without obtaining a sync license for the Song. 123. In addition, Defendants have prohibited Plaintiff WSOF from including We Shall Overcome in its documentary film. In addition, Plaintiff was obligated to pay Defendants the sum of $45.50 for a mechanical license based upon their claim of copyright ownership. Defendants’ claims and demands were coercive in nature, and Plaintiff’s entering into the mechanical license agreement and payment of $45.50 was involuntary. 28 Case 1:16-cv-02725-DLC Document 21 Filed 06/17/16 Page 29 of 37 124. Plaintiffs’ agreement to pay and their actual payment to Defendants for use of the Song presents a justiciable controversy because the agreements and payments were under compulsion as the result of Defendants’ assertion of a copyright and the risk that Plaintiffs might be exposed to substantial statutory penalties under the Copyright Act if they failed to pay Defendants the statutory fee for the compulsory license. 125. Plaintiff WSOF also presents a justiciable controversy because Plaintiff WSOF is unable to use We Shall Overcome in its documentary movie as a result of Defendants’ claim of copyright ownership and the resulting risk that Plaintiff WSOF might be exposed to substantial statutory penalties under the Copyright Act if it uses the Song in the movie without a synchronization license permitting it to do so. 126. Plaintiffs seek the Court’s determination as to whether Defendants are entitled to assert ownership of the copyright to We Shall Overcome against Plaintiff and the other members of the Class as Defendants claim, or whether Defendants are wielding a false claim of ownership to inhibit Plaintiffs’ (and the public’s) use and enjoyment of intellectual property which is rightfully in the public domain. 127. If and to the extent that Defendants rely upon the 1960 or 1963 copyrights for the melody of We Shall Overcome, those copyrights were invalid, expired, were forfeited, or ended as alleged herein. 128. As alleged above, the 1948 copyright for People’s Songs, Reg. No. B184728, which included the entire musical composition of “We Will Overcome,” was not renewed and accordingly expired in September 1976. 129. The arrangement and new lyrics for We Shall Overcome registered by Defendant Ludlow in 1960 and 1963 (Reg. Nos. EU645288 and EP179877 respectively): (a) do not give 29 Case 1:16-cv-02725-DLC Document 21 Filed 06/17/16 Page 30 of 37 Defendants any copyrights to the well-known lyrics to We Shall Overcome, but instead are limited just to a particular arrangement and obscure alternate verses which have little or no commercial value; and (b) were not eligible for federal copyright protection because those works did not contain original works of authorship, except to the extent of the arrangement and the new lyrics. 130. The 1960 and 1963 copyrights pertained only to an arrangement or the obscure alternate verses, not to the melody or familiar lyrics of the Song. 131. If declaratory relief is not granted, Defendants will continue wrongfully to assert the exclusive copyright to We Shall Overcome at least until the current term of the copyrights expire under existing copyright law. 132. Plaintiffs therefore request a declaration that: a. Defendants do not own the copyright to, or possess the exclusive right to reproduce, distribute, or publicly perform, the melody or lyrics of the musical composition We Shall Overcome; b. Defendants do not have the right to prohibit the use, reproduction, distribution, or public performance of the melody or lyrics of the musical composition We Shall Overcome; c. Defendants do not own the exclusive right to demand or grant a license for use of We Shall Overcome; and d. the musical composition We Shall Overcome is in the public domain and is dedicated to the public use. 30 Case 1:16-cv-02725-DLC Document 21 Filed 06/17/16 Page 31 of 37 COUNT TWO UPON ENTRY OF DECLARATORY JUDGMENT DECLARATORY AND INJUNCTIVE RELIEF PURSUANT TO 28 U.S.C § 2202 133. Plaintiffs repeat and reallege paragraphs 1 through 132 above as though they were fully set forth herein. 134. Plaintiffs bring these claims individually on their own behalf and on behalf of the Class pursuant to Federal Rules of Civil Procedure 23(b)(2). 135. Under 28 U.S.C. § 2202, this Court is authorized to grant, “necessary or proper relief based on a declaratory judgment or decree . . . after reasonable notice and hearing, against any adverse party whose rights have been determined by such judgment.” 136. Plaintiffs and the other Class members have been harmed, and Defendant Ludlow has been unjustly enriched, by Defendants’ wrongful takings as alleged herein. 137. Plaintiffs seek relief for themselves and the other members of the Class upon the entry of declaratory judgment upon Count One, as follows: a. an injunction to prevent Defendants from making further representations of ownership of the copyright to We Shall Overcome; b. restitution to Plaintiffs and the other Class members of all fees paid to Defendants, directly or indirectly through their agents, to use the Song; c. an accounting for all monetary benefits obtained by Defendants, directly or indirectly through their agents, from Plaintiffs and the other Class members in connection with its claim to ownership of the copyright to We Shall Overcome; and d. such other further and proper relief as this Court sees fit. 31 Case 1:16-cv-02725-DLC Document 21 Filed 06/17/16 Page 32 of 37 COUNT THREE DECEPTIVE ACTS AND PRACTICES IN VIOLATION OF NEW YORK GENERAL BUSINESS LAW § 349 138. Plaintiffs repeat and reallege paragraphs 1 through 116 above as though they were fully set forth herein. 139. Plaintiffs bring this claim individually on their own behalf and on behalf of the Class pursuant to Federal Rule of Civil Procedure 23(b)(3). 140. As alleged herein, Plaintiffs and the other Class members have agreed to pay and have paid licensing fees to Defendants by reason of Defendants’ claim of copyright ownership, and have therefore suffered injury in fact and have lost money or property as a result of Defendants’ conduct. 141. New York General Business Law (“GBL”) § 349 prohibits “deceptive acts or practices in the conduct of any business, trade or commerce or in the furnishing of any service.” 142. In the conduct of its business, Defendants have engaged and continue to engage in deceptive acts and practices by, inter alia, claiming to own a copyright to the melody and wellknown lyrics of We Shall Overcome despite the fact that the 1960 and 1963 copyrights cover only a specific arrangement and new lyrics (as opposed to the well-known lyrics), despite the fact that the melody and the familiar lyrics entered the public domain no later than 1961, and despite the fact that any copyright to the melody and lyrics was forfeited in 1948 143. Defendants’ actions, claims, nondisclosures, and misleading statements, as alleged herein, were unfair, false, misleading, and likely to deceive the consuming public within the meaning of GBL § 349. 144. The conduct of Defendants in exerting control over exclusive copyright ownership to the Song to stifle the useful arts or to extract licensing fees is deceptive and 32 Case 1:16-cv-02725-DLC Document 21 Filed 06/17/16 Page 33 of 37 misleading because Defendants do not own any copyrights to the Song. 145. Plaintiffs and the other members of the Class have, in fact, been deceived as a result of their reasonable reliance upon Defendant’s materially false and misleading statements and omissions, as alleged above. 146. As a result of Defendants’ unfair and fraudulent acts and practices as alleged above, Plaintiffs and the other Class members have suffered substantial monetary injuries. 147. Plaintiffs and the other Class members reserve the right to allege other violations of law which constitute other unfair or deceptive business acts or practices. Such conduct is ongoing and continues to this date. 148. As a result of its deception, Defendants have been able to reap unjust revenue and 149. Defendants’ unfair or deceptive acts or practices, including its concealments, profit. omissions, and misstatements of material facts alleged above, had a tendency or capacity to mislead, tended to create a false impression in consumers, and were likely to (and did in fact) deceive reasonable consumers, including Plaintiffs and the other members of the Class, about the limited scope and validity of Defendants’ copyright to the Song. 150. Defendants’ unfair and deceptive practices, including its concealments, omissions, and misstatements of material facts alleged above, had a tendency or capacity to mislead, tended to create a false impression in consumers, and were likely to (and did in fact) deceive reasonable consumers, including Plaintiffs and the other members of the Class, about whether Defendants in fact owned a copyright to the Song’s melody or lyrics. 151. Plaintiffs and the other members of the Class suffered ascertainable losses, caused by Defendants’ misrepresentations and failure to disclose material information. Had Plaintiff 33 Case 1:16-cv-02725-DLC Document 21 Filed 06/17/16 Page 34 of 37 and the other members of the Class been aware of the true facts about the limited scope of the copyrights and their forfeiture, they would not have paid Defendants to use the Song and would have used the Song despite Defendants’ insistence that they not do so. Thus, Plaintiffs and the other members of the Class were harmed as a result of Defendants’ misconduct. 152. Plaintiffs and the other members of the Class suffered ascertainable losses, caused by Defendants’ misrepresentations and failure to disclose material information. 153. As a direct and proximate result of Defendant’s violations of GBL §349, Plaintiffs and the other members of the Class have suffered injury-in-fact or actual damage. 154. Because Defendant’s willful and knowing conduct caused injury to Plaintiffs and the other members of the Class, they seek recovery of actual damages or $50, whichever is greater and discretionary treble damages up to $1,000 per violation, punitive damages, reasonable attorneys’ fees and costs, an order enjoining Defendants’ deceptive conduct, and any other just and proper relief available under GBL § 349. 155. Upon information and belief, since 1960 Defendants have collected millions of dollars from its false claims of copyright ownership for the Song. 156. Unless restrained and enjoined, Defendants will continue to engage in the above- described conduct. Accordingly, injunctive relief is appropriate. 157. Plaintiffs, individually on their own behalf and on behalf of the other members of the Class, seeks restitution and disgorgement of all money obtained from Plaintiffs and the other members of the Class, collected as a result of unfair competition, and all other relief this Court deems appropriate, consistent with GBL § 349. 34 Case 1:16-cv-02725-DLC Document 21 Filed 06/17/16 Page 35 of 37 COUNT FOUR BREACH OF CONTRACT 158. Plaintiffs repeat and reallege paragraphs 1 through 116 above as though they were fully set forth herein. 159. Plaintiff WSOF entered into a compulsory license for the Song, pursuant to which Defendants implicitly represented and warranted that they own the copyrights to the Song as licensed therein. All other members of the Class who entered into licenses for the Song did likewise. 160. Plaintiff Butler entered into a sync license for the Song, pursuant to which Defendants represented and warranted that they own the copyrights to the Song as licensed therein. Upon information and belief, all other members of the Class who entered into sync licenses for the Song did likewise. 161. Plaintiffs and the Class have satisfied their obligations under each such licensing agreement with Defendants. 162. As alleged herein, Defendants do not own the copyright interests claimed in the Song and, as a result of its unlawful and false assertions of the same, Defendants have violated the representations and warranties made in the licensing agreements, thereby materially breaching the licensing agreements. 163. By reason of the foregoing, Plaintiffs and the Class have been damaged in an amount to be determined at trial. COUNT FIVE COMMON COUNT FOR MONEY HAD AND RECEIVED 164. Plaintiffs repeat and reallege paragraphs 1 through 116 above as though they were 35 Case 1:16-cv-02725-DLC Document 21 Filed 06/17/16 Page 36 of 37 fully set forth herein. 165. Within the last four years, Defendants became indebted to Plaintiff WSOF and all Class members for money had and received by Defendants for the use and benefit of Plaintiffs and the other Class members. The money in equity and good conscience belongs to Plaintiff and the other Class members. COUNT SIX RESCISSION FOR FAILURE OF CONSIDERATION 166. Plaintiffs repeat and reallege paragraphs 1 through 116 above as though they were fully set forth herein. 167. Defendants’ purported licenses were worthless and ineffective, and do not constitute valid consideration. 168. Plaintiffs and the other members of the Class are entitled to rescind their license agreements with Defendants and obtain a return of all the money previously paid thereunder. DEMAND FOR JURY TRIAL Plaintiffs hereby demand a trial by jury to the extent that the allegations contained herein are triable by jury under Federal Rules of Civil Procedure 38 and 39. PRAYER RELIEF WHEREFORE, Plaintiffs, on behalf of themselves and the other members of the Class, demands judgment against Defendants TRO and Ludlow, jointly or individually in the alternative, as follows: A. certifying the Class as requested herein; B. declaring that the musical composition We Shall Overcome is not protected by federal copyright law, is dedicated to public use, and is in the public domain; 36 Case 1:16-cv-02725-DLC Document 21 Filed 06/17/16 Page 37 of 37 C. permanently enjoining Defendant Ludlow from asserting any copyright to the musical composition We Shall Overcome; D. permanently enjoining Defendants from charging or collecting any licensing or other fees for use of the musical composition We Shall Overcome; E. imposing a constructive trust upon the money Defendants unlawfully collected from Plaintiff WSOF, the other members of the Class, BMI, or Harry Fox Agency for use of the musical composition We Shall Overcome; F. ordering Defendants to return to Plaintiffs and the other members of the Class all the licensing or other fees it has collected from them, directly or indirectly through its agents, for use of the musical composition We Shall Overcome, together with interest thereon; G. awarding Plaintiffs and the other members of the Class restitution for Defendants’ prior acts and practices; H. awarding Plaintiffs and the Class reasonable attorneys’ fees and costs; and I. granting such other and further relief as the Court deems just and proper. Dated: June 17, 2016 WOLF HALDENSTEIN ADLER FREEMAN & HERZ LLP By: /s Randall S. Newman Mark C. Rifkin rifkin@whafh.com Randall S. Newman newman@whafh.com Gloria K. Melwani melwani@whafh.com 270 Madison Ave. 10th Floor New York, NY 10016 (212) 545-4600 Attorneys for Plaintiff and the Class 37