Stewart v. Abend
495 U.S. 207 (1999)

  • Woolrich wrote some murder mysteries. He sold (aka assigned) the rights to make a movie based on his story (aka a derivative work). The movie studio made a movie.
    • Under the Copyright Act of 1909, Woolrich had a copyright on his work for 28 years. At that time he could apply for a renewal for another 28 years.
    • Because Woolrich could only sell what he currently owned, technically he only assigned the rights to the movie for 28 years, with a promise that when he renewed his copyright he would assign the rights for an additional 28 years.
  • Woolrich died before the 28 years were up, and Abend bought the rights from Woolrich's estate. When the 28 year mark came up, Abend renewed the copyright, but refused to assign it to the movie studio. When the studio licensed the movie to be shown on tv, Abend sued.
    • Abend eventually settled.
  • A few years later, the movie studio again licensed the movie to be shown (and released on video). Abend sued again.
    • The movie studio was relying on the case of Rohauer v. Killiam Shows, Inc. (551 F.2d 484 (1977)), which found that the owner of a copyright in a derivative work may continue using the existing derivative work according to the original grant even if the grant of rights in the pre-existing work lapsed.
  • The Trial Court found for the movie studio. Abend appealed.
  • The Appellate Court reversed. The movie studio appealed.
  • The US Supreme Court reversed and found for Abend.
    • The US Supreme Court found that a copyright owner's right to permit the creation of a derivative work passes to the heirs of the author of the work, who are not bound by the original author's agreement to permit such use.
      • The Court noted that one of the reasons for the renewal clause was to allow an author of a work, who sold the rights very cheaply when the work was first published, to have a chance to renegotiate the assignment of rights in the future, when they might be worth a lot more.
    • Basically, Woolrich's promise was an unfulfilled contingency, which is not binding under the principles of contract law.
  • Note that under modern copyright law, a copyright is valid for 70 years plus the life the author as does not need to be renewed. Therefore the holding in this case is moot (except for works produced prior to 1976).