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Ninth Circuit: Termination of rights allows Lassie to come home to author's heir
July 17, 2008

In a decision last week, the Ninth Circuit reversed a district court's denial of summary judgment in a copyright case. The district court held the heir of an author had, by agreement, "given away" the termination right granted by 17 U.S.C. § 304(c).The Ninth Circuit reversed, stating that the district court had gone against the express language of § 304(c)(5), Congress's intent of protecting authors, and the lack of any language transferring the right of termination in the agreement. The court specifically stated that the language of § 304(c) and Congress's clear intent in the passage of § 304(c) was to allow authors the opportunity to renegotiate previously-granted rights in copyright after the 1976 Copyright Act extended the term of protection in existing works. The court said that Congress wanted to reward authors, and it would not make sense for the Act to benefit the assignee rather than the author's heir. As a result, the court reversed the grant of summary judgment in favor of the assignee and remanded with instructions to enter judgment for the heir.More on Classic Media, Inc. v. Mewborn after the jump.Eric Knight created the famed fictional dog Lassie, first in "Lassie Come Home," a short story in The Saturday Evening Post later converted into a full-length novel (the two were registered in the U.S. Copyright Office in 1938 and 1940, respectively). Knight granted the rights to develop the television show to the predecessor in interest to Classic Media, Inc., but Knight died in 1943 before his copyright renewal rights were vested. Thus, under the 1909 Copyright Act, the renewal rights vested in his heirs, which were his wife and three daughters. Winifred Knight Mewborn, the defendant in this litigation, is one of those daughters. In order to continue with the television series, it became necessary for Classic to obtain the renewal rights from Knight's heirs. Mewborn was the first to assign her rights in 1976, but her sisters did not assign their rights until 1978. In order to keep all of the rights consistent, Mewborn signed a new assignment in 1978, with similar language as that in the 1976 assignment, but also including ancillary rights such as merchandising rights.In 1996, Mewborn, pursuant to 17 U.S.C. § 304(c), filed a notice of termination, attempting to terminate her earlier transfers of rights to Classic. Classic put up a fight (which apparently involved some fiercely-worded letters between the parties) and took the position that the Termination Notice was not valid. In 2004, Mewborn discovered that a new Lassie motion picture was being made and her counsel sent out a letter demanding accounting of profits and a cease in all exploitations of Lassie. In 2005, Classic filed suit, seeking a declaratory judgment that the termination was ineffective and Mewborn had no remaining interest in the upcoming Lassie film. Motions for summary judgment were eventually made by both parties, and the district court held that Mewborn had "given away" her § 304(c) termination right in the 1978 assignment. Mewborn appealed.The Ninth Circuit reversed. The court observed that the 1976 Copyright Act extended copyright protection from 56 years to 75 years, and as part of that legislation, Congress gave the authors of copyrighted material (or their heirs) the opportunity to terminate any transfer of rights under such copyrighted material beginning at the end of the previous 56 year copyright term, "notwithstanding any agreement to the contrary." The issue in this case was whether the 1978 agreement between Mewborn and Classic validly transferred the right of termination to Classic, or whether it was an "agreement to the contrary" as outlined by § 304(c)(5). To make this determination, the court looked to the Supreme Court in Stewart v. Abend, which stated that "the 1976 Copyright Act provides a single, fixed term, but provides an inalienable termination right." Following this logic, the court opined that the extension of the protected term of years was "intended, once again, to benefit authors and their heirs, and not to serve as a windfall for grantees."Classic had argued that the 1978 agreement had assigned all rights, including the termination right, to Classic, but the court disagreed. It his were true, the document would be classified as an "agreement to the contrary" and would thus be void under § 304(c)(5). As a result, the court held the 1978 agreement could not have transferred any more rights than the 1976 agreement, because all of Mewborn's rights were already transferred by that agreement. This was further evidenced by the fact that there was no language in the 1978 agreement transferring her termination rights. Finally, because Mewborn had filed her notice of termination in the correct time period (between 1994 and 1999 for the short story rights and 1996 and 2001 for the novel rights), her termination request was valid. Thus the court reversed the district court's grant of summary judgment in favor of Classic and remanded with instructions to enter judgment in favor of Mewborn.For the full decision of Classic Media, Inc. v. Mewborn, click here.

Rebecca Tushnet offers these thoughts on her 43(B)log.

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