Stewart v. Abend
495 U.S. 207 (1990)
Premium Feature
Subscribe to Lexplug to listen to the Case Podcast.
Rule of Law:
If an author of a pre-existing work agrees to assign the rights in the renewal copyright term but dies before the renewal period commences, that assignment is void. The statutory successor who obtains the renewal copyright takes it free and clear of any prior assignments, and the owner of a derivative work created during the original term infringes the copyright by continuing to use the pre-existing work without a new grant from the renewal copyright holder.
Facts:
- In 1942, Cornell Woolrich authored the short story “It Had to Be Murder.”
- In 1945, Woolrich assigned the motion picture rights for the story's initial copyright term to a production company and also agreed to assign the motion picture rights for the 28-year renewal term.
- In 1954, a production company formed by Jimmy Stewart and Alfred Hitchcock, having acquired the rights, produced and distributed the motion picture “Rear Window,” a derivative work based on Woolrich's story.
- In 1968, Woolrich died without a surviving spouse or child before the copyright renewal period for his story began.
- In 1969, Woolrich's executor, Chase Manhattan Bank, renewed the copyright in the story as the statutory successor.
- Chase Manhattan Bank then assigned the renewal rights in the story to Sheldon Abend.
- After Abend acquired the rights, the producers and distributors of “Rear Window” re-released the motion picture in various media formats, including theatrical exhibitions, videocassettes, and cable television.
Procedural Posture:
- Sheldon Abend filed suit against Hitchcock, Stewart, MCA Inc., and Universal Film Exchanges in the United States District Court for the Central District of California, alleging copyright infringement.
- The District Court granted summary judgment in favor of the petitioners (Hitchcock, et al.), based on the Second Circuit's precedent in Rohauer v. Killiam Shows, Inc. and on a fair use defense.
- Abend, as appellant, appealed the decision to the United States Court of Appeals for the Ninth Circuit, with Hitchcock, et al. as appellees.
- The Court of Appeals for the Ninth Circuit reversed the District Court's judgment, holding that continued distribution of the film infringed Abend's copyright.
- The petitioners, Hitchcock, et al., successfully petitioned the United States Supreme Court for a writ of certiorari to resolve a conflict between the Circuits.
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 the owner of a derivative work infringe the copyright of the underlying work's successor-in-interest by continuing to distribute the derivative work during the underlying work's renewal term, when the original author had agreed to assign the renewal rights but died before the renewal period commenced?
Opinions:
Majority - Justice O’Connor
Yes, the continued distribution infringes the copyright of the underlying work. An assignment of renewal rights by an author is merely an expectancy that is contingent on the author surviving to the start of the renewal period. Citing Miller Music Corp. v. Charles N. Daniels, Inc., the Court reasoned that if the author dies before the renewal period arrives, the author's interest terminates and the renewal rights vest in the statutory successors designated by the Copyright Act of 1909. This successor takes the renewal copyright as a 'new estate,' free of any assignments made by the deceased author. This principle applies to assignments of partial rights, such as motion picture rights, just as it does to assignments of all rights. The creation of a derivative work does not extinguish the rights of the owner of the underlying work; the copyright in the derivative work protects only the new material added by the derivative author, not the pre-existing material.
Dissenting - Justice Stevens
No, the continued distribution of the derivative work does not infringe the successor's copyright. Section 7 of the 1909 Act designates derivative works created with the author's consent as 'new works' subject to their own copyright. This provision was intended to give the derivative work an independent existence once it was created and copyrighted. The original author's consent to the creation of the derivative work is the key event; once given, the proprietor of the derivative work should be able to exploit that work for its full copyright term, irrespective of the renewal status of the underlying work. The majority's holding elevates the renewal provision of § 24 over the 'new work' provision of § 7, frustrating the ability of authors to profit from derivative rights and unfairly divesting derivative creators of the value of their contributions.
Concurring - Justice White
Yes, the distribution infringes the copyright. While not personally convinced that the precedent of Miller Music Corp. v. Charles N. Daniels, Inc. was correctly decided, it remains the controlling interpretation of the statute. Because the holding in Miller Music requires the result reached by the majority in this case, the judgment of the Court of Appeals must be affirmed.
Analysis:
This decision solidified the power of the author's statutory successors under the 1909 Copyright Act's renewal scheme, resolving a significant circuit split. It confirmed that the renewal term creates a 'new estate' that is unencumbered by prior licenses granted by an author who dies before the renewal period vests. The ruling placed the financial risk of an author's premature death squarely on producers of derivative works, who could no longer rely on an author's promise to assign renewal rights. This holding has significantly impacted contract negotiations for derivative works, often leading to more complex agreements to mitigate the risk identified in this case.
