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CLL Obtains Important Appellate Court Reversal in Steinbeck Publishing Rights Case


We successfully vindicated the right of our client, Penguin Group, to continue to publish the early works of the Nobel Prize winning John Steinbeck for the entire term of copyright.  In 1938 John Steinbeck entered into a publishing agreement with Penguin’s predecessor The Viking Press covering many of his early works, including the iconic Of Mice and Men and The Grapes of Wrath. When Steinbeck died in 1968, he left his copyrights in the early works to his widow Elaine. In 1994, Elaine Steinbeck and Penguin entered into a new publishing agreement for the early works, which by its terms 'canceled and superseded' all prior agreements, and provided Elaine with substantially improved economic benefits and additional control over the use of the works.

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 two of the three 'termination' provisions of the Copyright Act, authors or their specified heirs (spouse, children and grandchildren) are afforded the opportunity to terminate any grants, such as publishing agreements, that were 'executed before January 1, 1978,' and to take back, for the extended copyright terms, the rights that were granted before 1978.

When Elaine Steinbeck died in 2003, she left her copyright and royalty interests to her children and grandchildren from a previous marriage. In 2004 John Steinbeck’s son and granddaughter served Penguin with a termination notice seeking to terminate Steinbeck’s grants to Viking under the 1938 publishing agreement. Penguin sued for declaratory judgment that the termination notice was invalid-chiefly because there was no grant 'executed before January 1, 1978' to terminate, the 1994 agreement between Penguin and Elaine Steinbeck having explicitly canceled and superseded any such prior agreements.The district court found otherwise, however, and granted the son and granddaughter’s motion for summary judgment.

In the district court’s view, even if the 1994 agreement was a valid contract (as it unquestionably was), it could be retroactively invalidated because of the Copyright Act’s provision that termination may be effected 'notwithstanding any agreement to the contrary.' The district court found that 'any interpretation of the 1994 Agreement having the effect of disinheriting the statutory heirs to the termination interest ... must be set aside as contrary to the very purpose of the termination statute.' That, we argued, was wrong, and the Second Circuit agreed. To interpret the phrase 'agreement to the contrary' so broadly that it would include any valid agreement or arrangement that has the 'effect' of eliminating a termination right was not what Congress intended; in fact, as we argued, it would be a recipe for chaos.

As the Second Circuit found, Elaine Steinbeck’s cancellation and renegotiation of the old agreement 'while wielding the threat of termination ... appears to be exactly what was intended by Congress.' Penguin Group (USA) Inc. v. Steinbeck, 537 F.3d 193 (2d Cir. 2008). 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.

For further information, contact:

Richard Dannay
(212) 790-9256

Thomas Kjellberg
(212) 790-9202


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