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CLL Obtains Victory in Second Steinbeck Publishing Rights Case

03.11.2010

We successfully persuaded the Federal Court in the Southern District of New York to affirm the right of our client Penguin Group to continue to publish John Steinbeck’s book  “The Pearl” for the entire term of copyright. 

This case was the second court action Penguin filed to invalidate termination notices filed by Steinbeck’s heirs.  The first case involved termination notices to recover the rights in 'The Grapes of Wrath,' 'Of Mice and Men,' and other works, that culminated in our victory in the Second Circuit in 2008 and the United States Supreme Court’s denial of the petition of Steinbeck’s son and granddaughter for a writ of certiorari, in 2009.

More details on the cases:

When the current Copyright Act took effect on January 1, 1978, the duration of copyright for any work that was in its renewal term was extended by 19 years, to a term of 75 years from the date copyright was originally secured.  In 1998 this was extended by another 20 years, to a term of 95 years from the date copyright was originally secured.  Under the “termination” provisions of the Copyright Act, authors or their specified heirs (spouse, children and grandchildren) have an opportunity to terminate any grants, such as publishing agreements, that were “executed before January 1, 1978,” and to take back the earlier-granted rights for the extended copyright terms.

In Penguin Group (USA) Inc. v. Steinbeck, 537 F.3d 193 (2d Cir. 2008), cert. denied, 129 S.Ct. 2383 (2009), we vindicated Penguin’s right to continue to publish John Steinbeck’s “early' works—those published before 1940 (including 'Of Mice and Men' and 'The Grapes of Wrath')—for the entire term of copyright.  When the Nobel Prize winning John Steinbeck died in 1968, he left his copyrights in the “early works’ to his widow Elaine.  When Elaine Steinbeck died in 2003, she left her copyright interests to her daughter from a previous marriage.

The Second Circuit held that a 1994 publishing agreement between John Steinbeck’s widow Elaine and Penguin had validly terminated -- by contract -- all prior grants of rights in the “early works;” thus, there was no longer any pre-1978 grant of rights in the “early works” left to be terminated under the Copyright Act by John Steinbeck’s son, Thomas Steinbeck, and granddaughter. The Second Circuit therefore invalidated their notice of termination.  On May 18, 2009, the United States Supreme Court denied the petition of Steinbeck’s son and granddaughter for a writ of certiorari, thus leaving the Second Circuit’s opinion subject to no further challenge.

In 1994 Elaine Steinbeck, Thomas Steinbeck and Penguin entered into a second publishing agreement that covered John Steinbeck’s “later” (post-1940) works, including 'The Pearl'—and contained a contractual termination provision identical to the one in the “early' works agreement, canceling and superseding all previous agreements for the works covered.  When John Steinbeck’s son and granddaughter served a notice of termination purporting to terminate pre-1978 copyright grants in 'The Pearl,' we brought an action on Penguin’s behalf, seeking declaratory judgment that the notice was invalid under the Second Circuit precedent. 

The district court agreed.  The court applied New York contract law, under which the parties to an agreement are free to mutually terminate it, while simultaneously entering into a new agreement dealing with the same subject matter.  That is exactly what happened in both of the 1994 Steinbeck publishing agreements, which expressly canceled and superseded all previous agreements for the Steinbeck works, and made new grants of rights on new terms considerably more favorable to the Steinbeck heirs.  And as the Second Circuit held, the Copyright Act does not require a canceled agreement to be revived simply to be terminated.

For further information, contact:
Richard Dannay
(212) 790-9256

Thomas Kjellberg
(212) 790-9202

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