## Facts

- Clarence E. Mulford authored and copyrighted seventeen “Hopalong Cassidy” books.
- In 1935, Mulford licensed motion-picture rights for adaptations of the books; the agreement specifically reserved to Mulford “all television, broadcasting, and radio rights.”
- Paramount Pictures, Inc. produced and copyrighted motion pictures based on the books as licensed derivative works.
- The copyrights in the books were properly renewed (first by Mulford, later by his executor).
- The copyrights in the films were not renewed and expired in the late 1960s, placing the film copyrights themselves in the public domain.
- In 1973, Filmvideo acquired negatives and other physical materials for the films and began exploiting the films.
- Filmvideo claimed that the films’ lapsed copyrights made the films freely usable “in all media,” including use implicating the underlying books and the reserved broadcast rights.

## Issues

1. Whether the failure to renew copyrights in licensed derivative motion pictures places both the derivative films and the renewed underlying literary works they incorporate into the public domain.
2. Whether the lapse of the film copyrights extinguished Mulford’s reserved television, broadcasting, and radio rights, allowing Filmvideo to exploit the films in those media.
3. Whether the district court properly granted broad injunctive relief and ordered turnover of Filmvideo’s physical copies and materials.

## Decision

- The Second Circuit affirmed the district court’s judgment for Hastings and the Mulford trusts.
- The court held that nonrenewal of the derivative film copyrights did not place the renewed underlying books (or the reserved media rights tied to them) into the public domain.
- The court upheld the nationwide injunction barring Filmvideo from using, selling, or licensing the films in the United States.
- The court upheld the order requiring Filmvideo to transfer prints, tapes, cassettes, and related materials to Hastings and the trustees.
- The court left intact the referral to a magistrate for computation of damages and attorney’s fees.

## Legal Principles

- Copyright in a derivative work is distinct from copyright in the underlying work; expiration or nonrenewal of the derivative copyright does not terminate protection for a properly renewed underlying copyright.
- Upon expiration of a derivative copyright, only the derivative work’s protectable additions may enter the public domain; continued protection remains for expression taken from the underlying work that is still copyrighted.
- A license may reserve specific media rights to the underlying author; a later purchaser of physical copies of a derivative work acquires no greater exploitation rights than the derivative copyright owner possessed, particularly as to reserved rights.
- Exploitation of an unrenewed derivative film that implicates still-protected underlying expression, or contractually reserved media rights, can constitute infringement and support injunctive relief and ancillary equitable remedies.

## Conclusion

The court held that the films’ entry into the public domain through nonrenewal did not carry the renewed “Hopalong Cassidy” books or Mulford’s expressly reserved broadcast rights into the public domain, and it affirmed an injunction and turnover order against Filmvideo for infringing uses tied to the still-protected underlying works and reserved rights.


Filmvideo Releasing Corp. v. Hastings, 668 F.2d 91 (2d Cir. 1981)