A superhero and a dog:
Rights to these American icons
are worth fighting over. At left,
George Reeves as Superman
and Phyllis Coates as Lois Lane
in a 1952 still from the TV series.
At right, a publicity photo from
one of the many children’s films
inspired by Eric Knight’s novel
Lassie Come Home.
HULTON ARCHIVE/GETTY IMAGES
the troublesome genie of rights assignment termination
out of the bottle during its bitter fight with the estate of
Stephen Schlesinger that began in the early 1980s. That
estate claimed that Disney owed it unpaid royalties from
the Winnie the Pooh franchise. (In 1930 Schlesinger had
bought the rights to Winnie the Pooh from its creator, A.A.
Milne, and in 1961 his widow, Shirley, had licensed Pooh’s
rights to Disney.)
According to Greenberg Glusker’s Bonnie Eskenazi, one
of the lawyers representing Disney at the time, the company
decided they never wanted to deal with the Schlesinger
family again. So they devised an innovative legal strategy
based on section 304: They tracked down Milne’s heirs and
got them to terminate their copyright grant to Schlesinger
and reassign the rights to Disney.
The plan backfired in 2005, when the Ninth Circuit ruled
that a 1983 contract between Disney and the Schlesinger
and Milne families superseded the Milne heirs’ right to
terminate.
To most in the copyright field, the Milne decision underscored two things: First, contracts signed on or after January 1, 1978 (the day the 1976 law went into effect) can
preempt an exercising of termination. And second, creators
or their heirs face heavy procedural burdens if they wish to
terminate a copyright grant. In fact, in his 2007 treatise on
copyright, William Patry calls the chance of success, including taking advantage of time windows and sending out
specific notices, an “against all odds” achievement.
Perhaps largely for this reason, for many years few have
pursued termination. Any legal team of a creator or heir
must be tenacious and prepared for a long seige. Studios and
publishers have an array of defenses: they may challenge
whether a work was properly copyrighted or whether the
work was “made for hire,” among other factors that could
disqualify termination. What’s needed is an entrepreneurial
spirit and a high threshold for risk.
The most recent high-profile case was the failed attempt
of the estate of author John Steinbeck, which sent a ter-
mination notice to publisher Penguin Group in 2004. In
August, the Second Circuit overturned a district court
decision and declared that a 1994 agreement between the
parties superceded the termination.
That’s why Toberoff’s win for the heirs of Superman co-creator Jerome Siegel this March was like leaping over a tall
building in a single bound. Siegel, the writer, and Joe Shuster, the illustrator, sold the rights to Superman in the late
1930s to Detective Comics for $130, one of the most notorious examples of creators not being able to properly judge
the value of their work until after its commercialization.
After some bad publicity, Warner Bros., DC’s successor-in-interest, agreed to make modest “voluntary” payments to
the creators that would cease if they ever sued.
Heirs Joanne Siegel and Laura Siegel Larson, Siegel’s
widow and daughter, acted to terminate the rights in 1997,
and entered negotiations with Warner. In 2001 they were
close to settlement. But Joanne felt insulted by the final
draft agreement. The two women fired their lawyers, and
hired Toberoff, who launched a lawsuit.
In reaching his decision, federal district court judge
Stephen Larson went through an elaborate history of the
Superman creation and copyright assignment—required
reading for anybody interested in copyright or the history
of comic books—and concluded that the Siegel estate had
succeeded in recapturing the copyright. “No small feat
indeed,” the court writes. “It requires traversing the many
impediments.” This fall, the two sides will reconvene in
court to argue over how many millions of dollars are now
owed to the Siegel estate as its share of Superman profits
since 1999—in 2006 Warner released Superman Returns,
which grossed a total of $550 million, and the studio’s TV
arm produces the series Smallville, which spins the tale of
Superman growing up and is entering its seventh season.
Warner could still eventually file an appeal.
But its troubles don’t end with the Siegel case. In 2013
the estate of illustrator Shuster will be able to effectively
terminate its side of the copyright grant, according to Tober-
