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Ninth Circuit Allows "Lassie" to Come Back Home to its Author's Family, Rules Against Its Assignee, Classic Media, Inc.
Classic Media, Inc.
Nos. 06-55385, 06-55704, United States Court of Appeals for the Ninth Circuit, 07/11/2008
Companies Mentioned: Classic Media, Inc.
Holding
In a copyright dispute regarding the fictional novel and story "Lassie Come Home" ("Lassie Works"), the U.S. Court of Appeals for the Ninth Circuit ruled in favor of the daughter of its author, defendant Winifred Knight Mewborn ("Mewborn"), in her controversy with Lassie Television, Inc. ("LTI"), the predecessor-in-interest of plaintiff Classic Media, Inc. ("Classic"). Each party had earlier filed for declaratory relief as to their respective copyright interests in the Lassie Works, works that were in their renewal copyright terms in their 1978 assignment of rights from Mewborn to LTI. The lower court, the U.S. District Court for the Central District of California , had sided with Classic, holding that Mewborn had already relinquished her termination right, and the 1996 Notice of Termination was ineffective because Mewborn no longer had any interest in the copyright transferred via the 1976 and 1978 assignments (the "1976 Assignment" and "1978 Assignment", respectively) . On appeal, the Ninth Circuit reversed the grant of summary judgment for Classic, stating that Mewborn did not waive her termination rights in the 1978 assignment. Consequently, the Ninth Circuit found that the 1996 Termination Notice was effective, and that any rights assigned to LTI by the 1976 Assignment reverted to Mewborn as of the effective termination date, May 1, 1998. The Ninth Circuit thus directed the District Court to enter partial summary judgment in favor of Mewborn on her claim for declaratory relief.
Detailed Summary
Mewborn, one of the daughters of Eric Knight, the author of the world-famous Lassie Works, appealed the District Court’s grant of summary judgment in favor of Classic and denial of Mewborn’s partial summary judgment motion.
Knight authored the beloved children’s story, “Lassie Come Home,” about a boy and his dog who, when sold to a rich duke by the boy’s poverty-stricken family, makes an arduous journey to return home to her original owner. Opinion, p. 8530. Inspired by the harsh realities of life during the Great Depression, the story of the fearless collie, Lassie, and the boy who loved her, was first published in the December 17, 1938 issue of The Saturday Evening Post, and was registered in the U.S. Copyright Office that year. Id.
Knight granted the rights to make the popular Lassie television series to Classic’s predecessors-in- interest, but died in 1943, before the renewal rights had vested. Under section 24 of the 1909 Copyright Act, the interest in the renewal term of the copyrights reverted to Knight’s wife, Ruth, and their three daughters, Jennie Knight Moore, Betty Knight Myers and Winifred Knight Mewborn. Each heir filed a renewal of copyright in each of the works between 1965 and 1967.
In a written agreement dated July 14, 1976, Mewborn assigned her 25 percent share of the motion picture, television, and radio rights in the Lassie Works to LTI for $11,000 (“1976 Assignment”). In March 1978, LTI obtain ed similar assignments from Mewborn’s two sisters. To conform the grant of rights among the sisters, on March 16, 1978, Mewborn signed a second agreement, furnished by LTI (“1978 Assignment”).
The 1978 Assignment contained the identical transfer of motion picture, television and radio rights as the 1976 Assignment, but added language assigning ancillary rights to LTI. On April 12, 1996, Mewborn served a notice of termination (“Termination Notice”) within the five-year period required by 1976 Copyright Act, Section 304(c), on Palladium Limited Partnership (“Palladium”), LTI’s then successor-in-interest in the Lassie Works. Mewborn sought to recapture her motion picture, television and radio rights by terminating the 1976 Assignment effective May 1, 1998. This Termination Notice triggered a series of exchanges between the two parties, culminating in the filing of suits between them.
Specifically, Classic filed a declaratory relief action in the Central District of California against Mewborn seeking a declaration that Mewborn has no interest in the Lassie film or in any of the rights she previously assigned to LTI in the 1978 Assignment, and that Mewborn’s Termination Notice was ineffective. Id., p. 8533. On June 29, 2005, Mewborn counterclaimed, seeking a declaration that, in fact, Mewborn had recaptured some of her previously assigned rights, and requesting an accounting of Classic’s profits as of May 1, 1998, the effective termination date under the Termination Notice. Id.
The parties filed cross-motions for summary judgment. On February 9, 2006, the District Court granted Classic’s motion for summary judgment and denied Mewborn’s motion as moot. Interpreting the Section 304(c) termination right to be inalienable but subject to waiver or relinquishment, the District Court found that the parties intended that the 1978 Assignment “give away” all of Mewborn’s additional rights not transferred in 1976, which included her newly acquired Section 304(c) right to terminate the 1976 Assignment.
In this appeal, the Ninth Circuit was faced with the issue of whether the 1976 Copyright Act’s termination of transfer right, 17 U.S.C. § 304(c), can be extinguished by a post-1978 re-grant of the very rights previously assigned before 1978. Id., p. 8529. The Ninth Circuit resolved this issue in the negative, and in favor of Mewborn. According to the Ninth Circuit, a llowing the termination of transfer right to extinguish would circumvent the plain statutory language of the 1976 Copyright Act, as well as the congressional intent to give the benefit of the additional renewal term to the author and his heirs. The Ninth Circuit thus held that the 1978 Assignment did not extinguish Mewborn’s statutory termination rights.
Because Section 304(c) of the 1976 Copyright Act allows an author, if he is living, or his widow and children, if he is not, to recapture, for the Extended Renewal Term, the rights that had previously been transferred to third parties , the rights revert to the author or his statutory heirs.
Here, the termination of transfer right is limited to transfers executed before January 1, 1978. Id., p. 8535, citing Section 304(c). The termination of transfer may be effected only during a five year window beginning at the end of what would have been the copyright’s original and renewal terms (the end of 56years from the date the copyright was originally secured), or beginning on January 1, 1978, whichever is later. Id., p. 8536, citing Section 304(c)(3). The five-year termination window for the Lassie copyrights opened in 1994 for the 1938 story, and 1996 for the 1940 novel.
Therefore, the1976 Assignment transferred all of Mewborn’s motion picture, television, and radio rights to the Lassie Works and, as the District Court concluded, was not substituted or revoked by the 1978 Assignment. Because LTI owned the motion picture, television and radio rights to the Lassie Works in 1978, Mewborn had nothing to transfer by virtue of the 1978 Assignment other than the additional ancillary rights she transferred. Therefore, the language in the 1978 Assignment purporting to assign the motion picture, television and radio rights was a nullity. Id., p. 8542.
Further, the Ninth Circuit did not find any evidence in the record to support a finding that Mewborn or LTI, when entering into the 1978 Agreement, considered Mewborn’s termination rights under § 304(c), or that Mewborn intended to waive or relinquish them. Rather, the evidence suggests that Mewborn did not intend to waive her termination rights via the 1978 Assignment. Accordingly, the Ninth Court concluded that the 1996 Termination Notice was effective, any rights assigned to LTI by the 1976 Assignment reverted to Mewborn as of the effective termination date, May 1, 1998.
On the basis of the foregoing, the Ninth Circuit reversed the District Court’s order granting Classic’s Motion for Summary Judgment and directed the District Court to enter partial summary judgment in favor of Mewborn on her claim for declaratory relief.
View a PDF of the judicial opinion.Service
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