## Facts

- Edith Maude Hull authored the novel *The Sons of the Sheik*, which was published in the United States and copyrighted, with the copyright ultimately held by Hull.
- By a December 7, 1925 instrument, Hull granted and assigned worldwide, exclusive motion picture rights, including the exclusive right to make film versions, to secure copyright in such films, and to vend and exhibit them.
- A successor in interest produced the 1926 silent film *The Son of the Sheik* as a derivative work based on Hull’s novel, obtained a motion picture copyright, and later obtained a renewal copyright in the film.
- After Hull’s death and expiration of the initial term, the renewal copyright in the underlying story vested in a statutory successor under 17 U.S.C. § 24, who later executed a new assignment of motion picture and television rights.
- In 1965, Hull’s successor assigned Rohauer whatever motion picture and television rights the successor held in the novel.
- Rohauer and Cecil W. Hull sued Killiam Shows, Inc. and Educational Broadcasting Corporation for infringement, alleging defendants’ authorization and exhibition/telecast of the film infringed the renewed copyright in the story.
- The district court ruled for plaintiffs and held defendants’ exhibition of the film infringed the renewed story copyright.
- Defendants appealed to the Second Circuit.

## Issues

1. Whether exhibition of a lawfully made derivative motion picture, whose copyright (and renewal) is held by the derivative-work owner, infringes the renewal copyright in the underlying story when renewal has vested in a statutory successor who later assigns motion picture rights to someone else.
2. What effect, under the 1909 Act’s renewal scheme, should be given to an original pre-renewal assignment of motion picture rights that evidences an intent to cover the renewal term.

## Decision

- The Second Circuit reversed the district court.
- The court held that continued authorization and exhibition of the derivative film did not infringe the renewed copyright in the underlying story under the circumstances presented.
- The court treated the question as one of first impression under the 1909 Act and concluded a negative answer better fit the statute’s text and purposes.
- Defendants were not liable for infringement based on exhibition of the film.

## Legal Principles

- A derivative work lawfully created under a valid grant of adaptation rights during the original term may retain an enforceable, independently renewed copyright in the derivative work.
- When the original author granted exclusive motion picture rights and the grant’s terms show an intent that the purchaser’s film rights extend through the underlying work’s renewal term, the renewal of the underlying copyright by a statutory successor does not, by itself, give the renewal owner power to bar exhibition of the lawfully made derivative film.
- Under the 1909 Act, renewal policy favoring authors and statutory successors must be read alongside statutory recognition of derivative works and protection of the derivative copyright owner’s investment-backed exploitation rights.

## Conclusion

The Second Circuit held that defendants’ exhibition of a derivative film, lawfully produced under an assignment of motion picture rights and protected by its own renewed copyright, did not infringe the renewed copyright in the underlying story even though the story’s renewal term vested in a statutory successor who later assigned motion picture rights to the plaintiffs.


Rohauer v. Killiam Shows, Inc., 551 F.2d 484 (2d Cir. 1977)