We Shall Overcome Foundation v. The Richmond Organization, Inc. (TRO Inc.) et al
Filing
127
MEMORANDUM OPINION AND ORDER: A September 10, 2017 Opinion and Order granted plaintiffs motion for summary judgment to the extent of holding that the defendants have no valid copyright in the words and melody of the first and fifth verses (Verse 1/5) of We Shall Overcome because they lack originality. Trial is scheduled to be held on February 5, 2018 to resolve remaining issues. Defendants tendered on December 22, 2017 a purported covenant-not-to-sue as to all portions of the copyright other t han Verse 1/5 (the Remaining Verses), and accordingly contend that the suit is now moot, requiring an entry of final judgment as to Verse 1/5. In response to concerns about the breadth of the covenant raised by the plaintiffs, defendants tendered a revised covenant with their reply submission on January 10, 2018.Even if the revised covenant does moot the claims as to the Remaining Verses, the suit as a whole is not moot.... Accordingly, it is hereby ORDERED that the defendants December 22, 201 7 motion to enter final judgment pursuant Rules 54, 58, and 12(b)(1), Fed. R. Civ. P., is denied as to Verse 1/5. IT IS FURTHER ORDERED that plaintiffs shall submit a letter by January 15, 2018 at noon indicating whether they wish to proceed with the trial of their fraud and divestment claims, or would prefer that final judgment be entered on the summary judgment opinion. IT IS FURTHER ORDERED that, if defendants intend to withdraw the covenant in light of this Order and the plaintiffs letter, t hey must do so by January 17, 2018 at noon. IT IS FURTHER ORDERED that in light of the modification to the covenant-not-to-sue tendered with the defendants reply submission, plaintiffs shall have until January 19, 2018 to submit a brief articulating their position on mootness of the case as to the Remaining Verses with respect to the revised covenant. IT IS FURTHER ORDERED that the parties should prepare their pretrial submissions, which remain due on January 19, 2018, on the assumption that the following issues will be tried: fraud on the copyright office, copyright divestment, and authorship as to the Remaining Verses. (Signed by Judge Denise L. Cote on 1/12/2018) (gr)
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
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WE SHALL OVERCOME FOUNDATION and
:
BUTLER FILMS, LLC,
:
:
Plaintiffs,
:
:
-v:
:
THE RICHMOND ORGANIZATION, INC. (TRO
:
INC.) and LUDLOW MUSIC, INC.,
:
:
Defendants.
:
:
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16cv2725(DLC)
MEMORANDUM OPINION
AND ORDER
DENISE COTE, District Judge:
A September 10, 2017 Opinion and Order granted plaintiffs’
motion for summary judgment to the extent of holding that the
defendants have no valid copyright in the words and melody of
the first and fifth verses (“Verse 1/5”) of “We Shall Overcome”
because they lack originality.
Trial is scheduled to be held on
February 5, 2018 to resolve remaining issues.
Defendants tendered on December 22, 2017 a purported
covenant-not-to-sue as to all portions of the copyright other
than Verse 1/5 (the “Remaining Verses”), and accordingly contend
that the suit is now moot, requiring an entry of final judgment
as to Verse 1/5.
In response to concerns about the breadth of
the covenant raised by the plaintiffs, defendants tendered a
revised covenant with their reply submission on January 10,
2018.
Even if the revised covenant does moot the claims as to the
Remaining Verses, the suit as a whole is not moot.
Under
Novella v. Westchester Cty., 661 F.3d 128, 149-150 & nn.23-24
(2d Cir. 2011), and the case cited therein, Air Line Pilots
Ass’n Int’l v. UAL Corp., 897 F.2d 1394, 1397 (7th Cir. 1990)
(Posner, J.), obtaining an order according complete relief on
the basis of one claim or legal theory does not thereby moot a
plaintiff’s standing to pursue other grounds for that same
relief, at least until that relief is memorialized in a final
judgment.
As explained in Already, LLC v. Nike, Inc., 568 U.S.
85 (2013),
[i]n Cardinal Chemical Co. v. Morton Int'l,
Inc., we affirmed the unremarkable proposition
that a court's ‘decision to rely on one of two
possible alternative grounds (noninfringement
rather than invalidity) did not strip it
of power to decide the second question,
particularly when its decree was subject to
review by this Court.’ 508 U.S. 83, 98 (1993).
In essence, when a court has jurisdiction to
review a case, and decides the issue on two
independent grounds, the first half of its
opinion does not moot the second half, or vice
versa.
Id. at 95.
Accordingly, until the entry of a final
judgment affording plaintiffs complete relief, they
remain free to pursue any theory that would result in a
declaration that the defendants have no valid copyright
in Verse 1/5.
2
The summary judgment order was not a decision that
adjudicated all of the claims in the case, and therefore
“does not end the action as to any of the claims or
parties and may be revised at any time before the entry
of a judgment adjudicating all the claims and all the
parties’ rights and liabilities,” unless this Court were
to order otherwise.
Rule 54(b), Fed. R. Civ. P.
Plaintiffs have presented at least three distinct claims
for Rule 54(b) purposes related to Verse 1/5 alone: their
fraud, divestment, and originality theories.
See Hudson
River Sloop Clearwater, Inc. v. Department of the Navy,
891 F.2d 414, 418 (2d Cir. 1989).
The summary judgment
opinion therefore did not end the action, even if the
action is treated as limited solely to Verse 1/5.
Even
outside the contours of Rule 54(b), courts retain an
inherent power to adjudicate alternative grounds prior to
entering a final judgment.
See Already, 568 U.S. at 95;
Novella, 661 F.3d at 149.
Under Rule 54(b) and the Court’s inherent powers, and in
view of the totality of the circumstances, it is appropriate to
proceed with the trial at least to the extent of considering the
plaintiffs’ alternative grounds as to whether the defendants’
claimed copyrights in Verse 1/5 are invalid, to wit, the issues
3
of fraud and divestment.
Accordingly, it is hereby
ORDERED that the defendants’ December 22, 2017 motion to
enter final judgment pursuant Rules 54, 58, and 12(b)(1), Fed.
R. Civ. P., is denied as to Verse 1/5.
IT IS FURTHER ORDERED that plaintiffs shall submit a letter
by January 15, 2018 at noon indicating whether they wish to
proceed with the trial of their fraud and divestment claims, or
would prefer that final judgment be entered on the summary
judgment opinion.
IT IS FURTHER ORDERED that, if defendants intend to
withdraw the covenant in light of this Order and the plaintiffs’
letter, they must do so by January 17, 2018 at noon.
IT IS FURTHER ORDERED that in light of the modification to
the covenant-not-to-sue tendered with the defendants’ reply
submission, plaintiffs shall have until January 19, 2018 to
submit a brief articulating their position on mootness of the
case as to the Remaining Verses with respect to the revised
covenant.
IT IS FURTHER ORDERED that the parties should prepare their
pretrial submissions, which remain due on January 19, 2018, on
the assumption that the following issues will be tried: fraud on
the copyright office, copyright divestment, and authorship as to
4
the Remaining Verses.
SO ORDERED:
Dated:
New York, New York
January 12, 2018
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