May 18, 2009

Ending a decades-long dispute over the rights to John Steinbeck’s classic literary works such as Of Mice and Men and The Grapes of Wrath, the U.S. Supreme Court today declined to hear an appeal by the son and granddaughter of renowned novelist John Steinbeck, thereby affirming that the rights to the author’s best-known early works lawfully belong to the Estate of John Steinbeck’s widow, Elaine Steinbeck. 

“John Steinbeck’s wishes related to ownership of his literary works have been validated by the nation’s highest court,” said Jenner & Block Partner Susan J. Kohlmann, who represents the Estate of Elaine Steinbeck in the dispute. “Today's announcement upholds the lower court's correct application of the Copyright Act to ownership of the works at issue, and the Estate of Elaine Steinbeck and its heirs are delighted with the Court's action.”

The U.S. Court of Appeals for the Second Circuit last Summer ruled unanimously that a 1994 copyright agreement entered into by Elaine Steinbeck, who had received the rights by will, could not be terminated by John Steinbeck’s biological heirs. Elaine Steinbeck died in 2003. 

John Steinbeck’s surviving son, Thomas Steinbeck, and his granddaughter, Blake Smyle, contended that in 2004, they served a “notice of termination” that had the effect of ending Elaine Steinbeck’s rights and extinguishing the 1994 Penguin Agreement for the early works of John Steinbeck. Those works included, among others, Cup of Gold, The Pastures of Heaven, To A God Unknown, The Red Pony, Tortilla Flat, In Dubious Battle, Of Mice and Men, The Long Valley, The Grapes of Wrath, The Forgotten Village, Viva Zapata and The Sea of Cortez.  Such notices of termination are permitted under a 1976 copyright law, but only for agreements entered into before 1978. John Steinbeck’s original agreement with Penguin dated back to 1938.

However, Elaine Steinbeck’s heirs argued that the notice of termination had no effect because the 1994 Agreement negotiated by Elaine Steinbeck terminated and superseded the 1938 Agreement. The appeals court agreed, holding that there were “no pre-1978 grants to which the termination rights … could be applied.” The court ordered that judgment be entered against the son and granddaughter.  The son and granddaughter then petitioned the Supreme Court to hear their case. 

Ms. Kohlmann, in court filings in response to Thomas Steinbeck and Blake Smyle’s petition to the Supreme Court, had argued that the case did not require the Justices’ intervention.  “Thom and Blake’s efforts to use the termination provisions to override Steinbeck’s will and seize copyright ownership from other members of the Steinbeck family are far afield from the central goals Congress had in mind when it created the statutory termination provisions,” she told the court in response to the son and granddaughter’s appeal. 

The Jenner & Block brief also told the Court that there is no disagreement between multiple federal appeals courts on the legal issue at the heart of this case, nor is there any question of interpretation of the federal law at play.  “There is no circuit split for this court to resolve—just different cases reaching different outcomes by applying the same legal rule to different underlying contracts.” 

In addition, the Estate of Elaine Steinbeck told the Supreme Court that it ultimately did not need to wade into this factual dispute regarding a particular intra-family contract.  “This is fundamentally a fact-bound question concerning a particular contract, not a broad question of statutory interpretation warranting this Court’s review,” the Estate told the Court. 

The Firm’s 2nd Circuit victory in this case was widely covered in major news publications including the Wall Street Journal, New York Times, New York Law Journal, AmLaw Daily, BBC News, Forbes, L.A. Times, Bloomberg, IP Law 360, Intellectual Property Today, MSNBC, Reuters and USA Today.

In addition to Ms. Kohlmann, Jenner & Block Partner William M. Hohengarten and Associate Joshua A. Block worked on this matter.

In a related decision this year, the U.S. District Court for the Southern District of New York dismissed on March 31 all remaining claims in the longstanding dispute between the Estate of Elaine Steinbeck and the author’s biological heirs.  In addition to the claims before the U.S. Supreme Court, the son and granddaughter had sued the Estate of Ms. Steinbeck, The Steinbeck Heritage Foundation and several other beneficiaries asserting a variety of different claims related not only to Steinbeck’s Early Works, but also to his Late Works, which include among others, The Moon Is Down, Bombs Away, Cannery Row, The Pearl, The Wayward Bus, East of Eden, Sweet Thursday, Once There Was A War, The Winter of Our Discontent, and Travels With Charley. John Steinbeck’s biological heirs claimed that the Defendants had breached their fiduciary duties purportedly owed to Mr. Steinbeck’s son and granddaughter, engaged in tortious conduct and committed fraud.  On March 31, 2009, the court dismissed the case in its entirety.  While the son and granddaughter have filed notice that they will appeal this decision, the copyrights to John Steinbeck’s literary works are not affected by the outcome of any appeal.