August 14, 2008

In a much-anticipated decision, the U.S. Court of Appeals for the Second Circuit held that the rights of the heirs of novelist John Steinbeck’s widow, Elaine Steinbeck, to many of the author’s best-known early works, including Of Mice and Men, The Grapes of Wrath, and Tortilla Flat, could not be terminated.

The court made its ruling in a dispute that pitted Elaine Steinbeck’s heirs—represented by Jenner & Block—and the Penguin Group, John Steinbeck’s publisher, against John Steinbeck’s son and granddaughter from a previous marriage.

The appeals court, reversing a federal district judge, held 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.

“The Estate of Elaine Steinbeck and its heirs are delighted with the Court's ruling,” said Jenner & Block Partner Susan J. Kohlmann, who argued the case. “The Court's ruling is one of the few decisions interpreting termination rights under the Copyright Law and, by its decision, the wishes of John Steinbeck related to ownership of his literary works have been validated.”

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. 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that the notice of termination had no effect because the 1994 Agreement negotiated by Elaine Steinbeck terminated and superseded the 1938 Agreement.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 Firm’s 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, Partner William M. Hohengarten and Associate Joshua A. Block worked on this matter.