Classic Media, Inc. v. Mewborn
2008 WL 2697798, 532 F.3d 978 (2008)
Premium Feature
Subscribe to Lexplug to listen to the Case Podcast.
Rule of Law:
An author's heir does not extinguish the statutory termination right for a pre-1978 copyright grant by entering into a new, post-1978 agreement, because treating such a re-grant as a waiver would constitute an 'agreement to the contrary,' which is prohibited by 17 U.S.C. § 304(c)(5).
Facts:
- Eric Knight, author of the 'Lassie Come Home' story (1938) and novel (1940), died in 1943.
- His daughter, Winifred Knight Mewborn, inherited a 25 percent share of the renewal copyright interests in the Lassie Works.
- On July 14, 1976, Mewborn assigned her share of motion picture, television, and radio rights to Lassie Television, Inc. (LTI) for $11,000.
- On March 16, 1978, after the Copyright Act of 1976 took effect, Mewborn signed a second agreement with LTI for $3,000.
- The 1978 agreement granted LTI additional ancillary rights (such as merchandising) and stated that the rights granted were 'in addition to' those granted in the 1976 assignment.
- On April 12, 1996, Mewborn served a notice on LTI's successor-in-interest to terminate the 1976 assignment and recapture her rights, effective May 1, 1998.
Procedural Posture:
- Classic Media, Inc. filed a declaratory relief action against Mewborn in the U.S. District Court for the Central District of California.
- Classic sought a declaration that Mewborn's termination notice was ineffective and that she had no interest in the rights previously assigned.
- Mewborn counterclaimed, seeking a declaration that her termination was valid and requesting an accounting of profits.
- The parties filed cross-motions for summary judgment.
- The district court, a court of first instance, granted summary judgment in favor of Classic, holding that Mewborn had relinquished her termination right via the 1978 Assignment.
- Mewborn, as appellant, appealed the district court's judgment to the U.S. Court of Appeals for the Ninth Circuit, with Classic as the appellee.
Premium Content
Subscribe to Lexplug to view the complete brief
You're viewing a preview with Rule of Law, Facts, and Procedural Posture
Issue:
Does an author's heir extinguish their statutory right under 17 U.S.C. § 304(c) to terminate a pre-1978 copyright grant by entering into a post-1978 agreement that mentions the same rights?
Opinions:
Majority - Wardlaw, Circuit Judge
No. A post-1978 assignment of copyright interests does not extinguish an author's heir's statutory termination right for a pre-1978 grant. The court reasoned that the plain language of 17 U.S.C. § 304(c)(5) provides that termination may be effected 'notwithstanding any agreement to the contrary.' Congress's clear intent in creating this inalienable right was to protect authors and their heirs from unequal bargaining power and to allow them to benefit from the extended copyright term. To interpret the 1978 Assignment as a waiver or relinquishment of the termination right would circumvent this statutory purpose and render the provision a 'nullity.' The court distinguished this case from Milne v. Stephen Slesinger, Inc., where the heir had an immediately exercisable termination right and used that leverage to negotiate a highly remunerative new deal that superseded the old one. In contrast, Mewborn's right was not yet exercisable in 1978, she had no bargaining leverage, the 1978 agreement expressly supplemented (rather than replaced) the 1976 agreement, and she received minimal additional compensation. Therefore, the 1978 Assignment could not extinguish her right to terminate the 1976 Assignment.
Analysis:
This decision strongly reinforces the inalienable nature of the termination right under § 304(c) of the Copyright Act. It clarifies that subsequent agreements, especially those made before the termination right is exercisable, cannot be used to implicitly waive this right. The court narrows the potential exception created by Milne, limiting it to situations where an heir with a present, exercisable termination right leverages it to revoke a prior grant and negotiate a substantially more beneficial new one. This holding protects the statutory 'second chance' for authors and their heirs, making it much more difficult for grantees to contract around the termination provisions.
