Abend v. MCA, Inc.
863 F.2d 1465, 1988 WL 137279 (1988)
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Rule of Law:
The owner of a renewal copyright in an underlying work can prevent the continued use of a derivative work created during the original copyright term if the original author dies before the renewal rights vest. An author's agreement to assign renewal rights is an unenforceable expectancy against their statutory successor if the author dies before the renewal period begins.
Facts:
- In 1942, Cornell Woolrich's short story 'It Had to be Murder' was first published.
- In 1945, Woolrich assigned the motion picture rights for the story to the defendants' predecessor and agreed to assign the same rights for the copyright renewal term.
- In 1954, Paramount Pictures produced and released the film 'Rear Window,' which was based on Woolrich's story and created with his consent.
- Woolrich died in 1968, before the commencement of the 28-year renewal period for his story's copyright.
- In 1969, the executor of Woolrich's estate renewed the copyright in 'It Had to be Murder.'
- In 1972, the executor assigned the renewal copyright to Sheldon Abend.
- Following these events, defendants MCA and others re-released the 'Rear Window' film in theaters, on television, and on videocassette, generating substantial revenue.
Procedural Posture:
- Sheldon Abend sued MCA, Inc., and the executors of Alfred Hitchcock's estate in U.S. District Court, alleging copyright infringement.
- Both parties filed cross-motions for summary judgment.
- The district court granted summary judgment for the defendants, basing its decision on the Second Circuit case Rohauer v. Killiam Shows, Inc. and the fair use defense.
- The district court denied Abend's motion for summary judgment.
- Abend, the plaintiff, appealed the grant of summary judgment against him to the U.S. Court of Appeals for the Ninth Circuit.
- The defendants cross-appealed the district court's denial of their separate motion for summary judgment which was based on alleged defects in the story's original copyright.
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Issue:
Does the re-release and continued exploitation of a derivative work (a movie) created under a grant from the original author infringe the copyright of the successor who acquired the renewal rights to the underlying work (a story), when the original author died before the renewal term commenced?
Opinions:
Majority - Pregerson, J.
Yes, the re-release of the movie infringes the renewal copyright of the underlying story. The Supreme Court's decision in Miller Music Corp. v. Charles N. Daniels, Inc. controls, establishing that an author's assignment of renewal rights made before the renewal period is merely an expectancy. If the author dies before the renewal period begins, the statutory successor takes the renewal copyright free and clear of any such prior agreements. The court explicitly rejects the Second Circuit's contrary holding in Rohauer v. Killiam Shows, Inc., finding that a derivative work's copyright protects only the new material added, not the right to continue using the underlying work without the renewal copyright holder's permission. The defendants' use of the story was also not a 'fair use' because it was commercial, involved a creative work, used a substantial portion of the story, and directly harmed the market for Abend's adaptation rights.
Dissenting - Thompson, J.
No, the re-release of the movie does not infringe the renewal copyright. The dissent would follow the Second Circuit's decision in Rohauer, arguing that this case involves two separately copyrighted works: the underlying story and the derivative film. Because the film was created with the author's consent, Section 7 of the 1909 Copyright Act gives it the status of a 'new work' with its own copyright protection. The dissent distinguishes Miller Music as applying only to disputes over a single copyright, not a conflict between the copyrights of an underlying work and a derivative work. It is unjust to allow the story's new copyright owner, who contributed nothing to the film, to prevent its exhibition or demand a share of its profits.
Analysis:
This decision created a circuit split with the Second Circuit's holding in Rohauer, directly leading to Supreme Court review (which ultimately affirmed this Ninth Circuit opinion in Stewart v. Abend). It significantly strengthened the power of an author's statutory successors by confirming that a copyright renewal creates a 'new estate' unencumbered by the author's prior, unvested agreements. The ruling has a major impact on the film and entertainment industries, confirming that owners of derivative works must re-negotiate licenses with an author's heirs if the author dies before the renewal term, thereby prioritizing the 'second chance' policy of copyright law for authors over the economic interests of derivative work creators.
