DC Comics v Pacific Pictures Corp et al, the recent decision of a Central District of California court to deny termination rights to the heirs of Superman co-creator Joe Shuster, may be legally based in American copyright law. However, the case has its roots, loosely speaking, in Canada.
Unfortunately for the estate of Toronto born Joe Shuster, it appears Superman’s kryptonite, at least in regards to termination rights under §304(c) of the American Copyright Act, 1976, is subsequent agreements which have the effect of eliminating a termination right.
Superman’s journey from his 1930s birth to his modern inception is enough to fill a book. Of relevance to Superman’s termination right is that Jerry Siegel and Joe Shuster were the co-creators of the character. The duo owned the copyright in the character Superman. In 1938, Siegel and Shuster licensed DC Comics the “exclusive right to the use of the [Superman] characters and story”. Once the copyright was assigned to DC Comics, Siegel and Shuster continued to work on Superman’s character development pursuant to a work-for-hire agreement. In 1992, Shuster passed away and his sister, Jean Peavy, was named sole beneficiary of his estate.
The above discussion brings us to our first copyright issue – a slight distinction of relevance to the case. At issue in DC Comics is the termination of copyright in the character granted under the 1938 agreement (similar to this one from June 1938), since that is the work created and licensed by Siegel and Shuster. Any other derivative additions to the Superman character which has led to his modern physical appearance are owned by DC Comics under the work made for hire doctrine. Prior to the Copyright Act, 1976, it was generally understood that copyright would belong to the employer if the work was created at the employer’s “instance and expense”. Thus, Siegel and Shuster’s contribution post-licence, and any derivative additions to Superman, are not at issue in DC Comics since works created under work made for hire agreements cannot be terminated. What is at issue is the termination of the original Superman character’s copyright – not the totality of his modern appearance.
Under the Copyright Act, 1976, the United States Congress provides authors and their statutory successors with the opportunity to regain rights that were granted away via agreements and licences. This “second bite of the apple” allows authors and their heirs to regain their copyrights in order to re-bargain for beneficial agreements with licensees. For copyrighted works which were licensed prior to January 1, 1978, §304 termination rights may be claimed at the end of the 56th or 75th year from the date copyright was originally secured. For the estate of Shuster, they are wishing to terminate the copyright in Superman after the end of the 75th year, in October of 2013.
In order to terminate under §304, notice must be filed within a five-year window and must meet the requirements of the United States’ Copyright Office. Shuster’s estate does not encounter issues with meeting the time frame nor the requirements; the biggest stumbling block is a 1992 agreement between Shuster’s estate and DC Comics. In 1992, Shuster’s sister (and brother, Frank Shuster) signed an agreement with DC which stated DC would pay Peavy $25,000 per year for life as well as pay off Shuster’s debts in exchange to settle “all claims to any payments or other rights or remedies which [Peavy] may have under any other agreement or otherwise, whether now or hereafter existing regarding any copyrights […] in any and all work created in whole or in part by […] , Joseph Shuster, or any works based thereon.”
The 1992 agreement has surfaced as Superman’s (or at least Shuster’s estates) kryptonite. Despite the language of §304(c)(5) which states, “termination may be effected notwithstanding any agreement to the contrary”, American courts in the Ninth and Second circuit have interpreted §304(c)(5) otherwise. Courts have permitted subsequent agreements to revoke and replace the original agreement, thus eliminating the statutory termination right. Based on the American jurisprudence, the key for the subsequent agreement is that it must be substantially more beneficial to the authors or their heirs in order to eliminate the statutory termination right.
In Milne v Stephen Slesinger Inc, the Ninth Circuit held that a 1983 re-grant agreement, which superseded 1930 and 1961 licences of Winnie the Pooh, eliminated the statutory termination right. The 1983 agreement, which was described as an adjustment of royalties, increased the royalties of the heirs in question by 400% in exchange to not exercise their statutory termination right. The new grant, which was a more lucrative deal for the author’s heirs, was upheld by the Ninth Circuit as not being an “agreement to the contrary” under §304(c)(5). The Milnes were denied their statutory termination right since they “were able to obtain considerably more money as a result of the bargaining power wielded by the author’s son”.
Following suit, the Second Circuit court in Penguin Group (USA) Inc v Steinbeck discussed a 1994 agreement by Elaine Steinbeck which re-licensed her late-husband John Steinbeck’s copyrighted literary works. Several of John Steinbeck’s works were governed by a 1938 agreement with Penguin Group. In 1994, Elaine Steinbeck, the owner of John’s copyrights, entered into a “new agreement for continued publication” with Penguin. The agreement included prior licensed works and additional literary works and “changed the economic terms of the 1938 agreement, mostly to Elaine Steinbeck’s benefit…”. Under the 1994 agreement, Penguin was required to provide larger annual guaranteed advanced and royalties. The language of the 1994 agreement stated it would “cancel and supersede the previous agreements”.
The court in Steinbeck held the 1994 agreement eliminated Elaine Steinbeck’s statutory termination right. In reaching their conclusion, the court emphasized Elaine Steinbeck’s substantial benefits under the new agreement. Since Steinbeck had the ability in 1994 to renegotiate the terms of her previous agreement “to her benefit…”, the court found that “by taking advantage of this opportunity, she exhausted the single opportunity provided by statute to Steinbeck’s statutory heirs to revisit the terms of her late husband’s original grants of licences to his copyrights”.
Despite the above cases, Classic Media Inc v Mewborn illustrates subsequent agreements will not supersede previous agreements if the benefit to the authors or authors’ heirs is insubstantial. In Classic Media, various copyrights were assigned for Lassie by the defendant Mewborn (one of three heirs of the original author Eric Knight) in 1976 for $11,000. In March of 1978, another agreement was signed which granted nearly-identical copyrights in exchange for $3,000. The plaintiff-licensee objected to Mewborn’s notice of termination in 1996, and pointed to the 1978 subsequent agreement. Here, the Ninth Circuit distinguished Steinbeck and Milne and held that the 1978 agreement did not eliminate Mewborn’s termination rights since the 1978 agreement was only a transfer of ancillary rights for $3,000; it did not revoke and supersede the previous assignment of rights.
The above cases were cited in DC Comics, but U.S. District Court Judge Otis Wright did not mention whether or not the substantiality of the benefit obtained by the author or author’s heirs is relevant in subsequent agreements. As Eriq Gardner of The Hollywood Reporter points out, Judge Wright’s reasoning in DC Comics is likely to “trigger an appeal”. Whether or not the substantiality of the benefit received by Shuster’s heirs will be a major issue on appeal remains to be seen. It is clear that a spectrum exists between the benefits received in Milne/Steinbeck and Mewborn, and the $25,000 per year and additional debt clearing provided by DC Comics lays somewhere in the middle… perhaps, in my opinion, leaning a bit closer to Milne/Steinbeck‘s substantiality.
Adam Jacobs is a JD Candidate at Western University, Faculty of Law and is currently on exchange at Southwestern Law School in Los Angeles, California.