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.
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).