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Lassie Rescued Again

By Senior Copyright Counsel, Google Inc.

The Ninth Circuit has saved the copyright in Lassie for its authors' heirs, rejecting a patently frivolous claim by Classic Media, Inc. that a woefully inadequate transfer defeated the heirs' termination rights. The opinion in Classic Media, Inc. v. Winifred Mewborn, available here.

The case is pretty straightforward and involves transfers made by the wife (later deceased) and daughters of Eric Knight, who wrote the 1938 novel "Lassie Come Home." Mr. Knight had made an original transfer, and then died in 1943 before the renewal term, bequeathing his rights to his family. Under the Fred Fisher and Rear Window cases, his heirs obtained all rights free and clear of the transfer of renewal rights when they register the renewal claims. Plaintiff's predecessor in interest had an agreement with Mrs. Knight to use the novel in the later television series, but did not have an agreement with the three daughters. In 1976, before the 1976 Act became effective on January 1, 1978, the daughters made transfers for pitiful sums. Termination rights were thus governed by Section 304(c), not Section 203.

A critical difference between the section 203 and section 304(c) termination rights is the limitation of the section 203 termination right to transfers made by the author(s), 203(a)(1), a limitation not found in Section 304(c). See Section 304(c)(1): ?(1) In the case of a grant executed by a person or persons other than the author ? .? The reason for limiting the section 203 termination right to the author was explained as follows in the Register of Copyrights' 1965 report:

[A]s a direct result of the present renewal provisions, a large number of binding transfers and licenses covering renewal rights have been executed by the author's widow, children, and other statutory beneficiaries, as well as the author himself. We believe that, for example, where the author's widow was the proper renewal claimant but had previously executed a transfer of her renewal rights, she should be able to gain the extended term after the present 28-year renewal period is over.
Supplementary Report of the Register of Copyrights on the General Revision of the U.S. Copyright Law: 1965 Revision Bill 96 (Comm. Print 1965).

Section 304(c)(1) was thus intended for exactly the situation that arose with Lassie. Both Sections bar any effort to contractually give up termination rights. The relevant language in Section 304(c)(5) states that termination "may be effected notwithstanding any agreement to the contrary," so it mattered not at all what the language of the 1976 transfers was. They were pre-1978 transfers, and thus were terminable at will if done in a timely fashion, as they were.

The district court got matters completely fouled up, but the Ninth Circuit straightened them out, also delivering repeated criticisms of Classic's lawyer for what it seems to have perceived as an effort to intimidate an elderly woman. See. e.g., page 8533 where counsel accused Mr. Knight's daughter of extortion, and threatened to hold her and her counsel personally responsible for "enormous and irreparable damages." I don't know the precise procedural posture of the case at this point because of the reversal (there was a Lanham Act claim too), but I hope that Mr. Knights' daughter is able to receive her full attorney's fees and costs for a case that should never have been brought (and it was brought by Classic as a declaratory relief action).

Full post as published by The Patry Copyright Blog on July 14, 2008 (boomark / email).