## Facts

- Eric Knight authored “Lassie Come Home” (1938 short story; later a 1940 novel) and granted motion picture and television rights to entities that ultimately transferred interests to Lassie Television, Inc. (LTI) and, later, Classic Media.
- Knight died in 1943 before renewal rights vested; renewal interests passed to his widow and three daughters, including Winifred Knight Mewborn, who held a 25% renewal share and timely renewed in the 1960s.
- In 1976, Mewborn executed an assignment to LTI conveying her 25% share of “motion picture, television, and radio rights” for the full copyright term “and all extensions and renewals thereof” (a pre-1978 grant).
- In 1978, Mewborn signed a second agreement with LTI that incorporated the 1976 assignment and granted additional ancillary rights (including merchandising and commercial tie-ins) but did not expressly address statutory termination rights.
- In 1996, Mewborn served a notice of termination under 17 U.S.C. § 304(c) to LTI’s successor, purporting to terminate the 1976 grant effective in 1998.
- Classic sought declaratory relief that the termination was ineffective; Mewborn counterclaimed for a declaration that termination was valid and sought an accounting.
- The district court granted summary judgment for Classic, reasoning the 1978 agreement superseded/supplemented the 1976 grant and relinquished Mewborn’s termination rights, and denied Classic’s request for attorneys’ fees.
- Mewborn appealed; Classic cross-appealed the denial of fees.

## Issues

1. Whether a post-1978 agreement can extinguish the 17 U.S.C. § 304(c) termination right applicable to a pre-1978 grant by re-granting the same rights before termination is exercised.
2. Whether the 1978 agreement, as interpreted under contract principles, actually conveyed or waived Mewborn’s § 304(c) termination interest in the 1976 grant.
3. Whether Classic was entitled to attorneys’ fees under the Copyright Act or Lanham Act.

## Decision

- The Ninth Circuit reversed the district court’s summary judgment for Classic.
- The court held that § 304(c) termination rights for pre-1978 grants cannot be eliminated by a post-1978 agreement because the statute permits termination “notwithstanding any agreement to the contrary.”
- The court further held that the 1978 agreement did not, by its terms, waive or re-grant Mewborn’s § 304(c) termination interest in the 1976 assignment.
- Mewborn’s 1996 termination notice was valid and effective as to her 25% interest, effective in 1998.
- Classic’s cross-appeal for attorneys’ fees was denied, including because Classic did not prevail on the merits and the case presented close questions in an unsettled area of law.

## Legal Principles

- Under 17 U.S.C. § 304(c), specified authors and heirs may terminate pre-1978 grants of renewal-term rights “notwithstanding any agreement to the contrary,” reflecting an anti-waiver rule as to pre-termination contractual attempts to defeat termination.
- The statutory termination right is distinct from underlying copyright interests and is designed to be inalienable in advance of its exercise; parties may negotiate new grants after rights revert through effective termination, but not contract around termination beforehand.
- A later agreement that adds ancillary rights and incorporates an earlier pre-1978 grant does not waive § 304(c) termination rights absent clear contractual language, and courts will not infer a waiver that conflicts with the statutory scheme.
- Attorneys’ fees are properly denied where the dispute involves close, unsettled legal questions and the non-prevailing party’s position is not frivolous or objectively unreasonable.

## Conclusion

The Ninth Circuit held that an heir’s § 304(c) termination right for a pre-1978 copyright grant cannot be defeated by a post-1978 agreement purporting to re-grant the same rights before termination, and it enforced Mewborn’s termination notice as to her 25% share while affirming the denial of attorneys’ fees.


Classic Media, Inc. v. Mewborn, 532 F.3d 978 (9th Cir. 2008)