# Classic Media v. Mewborn: When a Later Re-Grant Cannot Kill a Termination Right

> The Ninth Circuit held a 1978 re-grant of Lassie rights did not extinguish the heir's Section 304(c) right to terminate her earlier 1976 assignment.

Topic: Copyright  |  Author: Lidiia Levitska  |  Source: Intellectual Property Law (outsideipcounsel.com)
Canonical: https://outsideipcounsel.com/blog/classic-media-v-mewborn-lassie-termination-regrant/


Two federal appeals courts in the summer of 2008 confronted the same hard question about copyright's termination right, and they answered it in ways that have divided practitioners ever since. In *Classic Media, Inc. v. Mewborn*, 532 F.3d 978 (9th Cir. 2008), the United States Court of Appeals for the Ninth Circuit held that an author's heir did not lose her statutory right to terminate a pre-1978 grant merely because she later signed a second assignment of the same rights. The termination notice she served years afterward was valid, and her 25 percent share of the *Lassie* rights she had assigned reverted to her.

The decision is the Ninth Circuit's counterpoint to the Second Circuit's *Penguin Group (USA) Inc. v. Steinbeck*, 537 F.3d 193 (2d Cir. 2008), decided only weeks later. Where *Steinbeck* held that a renegotiation could extinguish a termination right, *Mewborn* held that a re-grant did not. Reading the two together is essential for anyone advising authors, heirs, or acquirers of older intellectual property.

## At a glance

- **Case:** *Classic Media, Inc. v. Mewborn*, 532 F.3d 978 (9th Cir. 2008).
- **Decided:** July 11, 2008; Ninth Circuit; reversed and remanded, directing the district court to enter partial summary judgment for Mewborn on her declaratory relief claim.
- **Holding:** A 1978 re-grant of the same rights did not extinguish the heir's Section 304(c) right to terminate the 1976 grant, so her termination notice was effective and her assigned share reverted.
- **Significance:** The Ninth Circuit's leading statement on when post-1978 re-grants do and do not wipe out termination rights, the doctrinal counterweight to *Steinbeck*.

## The story behind the rights

Eric Knight created one of the most enduring characters in children's literature. He wrote *Lassie Come Home* first as a magazine story in 1938 and then as a novel in 1940, securing copyright in both. During his lifetime he granted the rights to make the Lassie television series to Classic Media's predecessors in interest, but he died in 1943, before the renewal rights vested. Under the 1909 Act, the interest in the renewal term reverted to his widow, Ruth, and their three daughters, one of whom was Winifred Knight Mewborn. Because the studio side had an agreement only with the widow as to the television series, it needed fresh assignments from the daughters covering the motion-picture, television, and radio rights for the renewal term.

In 1976, Mewborn assigned her 25 percent share of the motion-picture, television, and radio rights to Lassie Television, Inc., a Classic Media predecessor, for $11,000. In 1978, she executed a second agreement that added various ancillary rights, such as merchandising, dramatic, recording, and commercial tie-up rights, for a further $3,000. Years later, in April 1996, she served a notice terminating the 1976 assignment, effective May 1, 1998, invoking the termination right that Congress had provided for pre-1978 grants. Classic Media sued, contending that her 1978 re-grant had extinguished any right to terminate.

## The statutory frame: Section 304(c) and the anti-waiver principle

Section 304(c) of the Copyright Act permits an author, or after death the statutory heirs, to terminate a grant of a transfer or license executed before January 1, 1978. The right may be exercised during a five-year window and, crucially, "notwithstanding any agreement to the contrary." Congress built the anti-waiver language into the statute precisely because it feared that publishers and producers would otherwise extract advance waivers, defeating the remedial purpose of returning rights to authors and their families.

The 1976 assignment was a pre-1978 grant and thus terminable. The contested question was the legal effect of the 1978 assignment. Classic Media argued that the 1978 assignment re-granted the same rights on a post-1978 footing and that Mewborn had, in substance, given up her termination right in that bargain. If that were correct, the 1996 notice would have nothing to operate on.

## The court's reasoning: nothing left to give, nothing given up

The Ninth Circuit rejected Classic Media's theory. The court reasoned that Mewborn had already conveyed the motion-picture, television, and radio rights in her 1976 assignment. By 1978, as to those particular rights, she had nothing left to assign. The panel therefore held that "the language in the 1978 Assignment purporting to assign the motion picture, television and radio rights is a nullity." The 1978 agreement effectively added ancillary rights but did not re-convey what had already been conveyed.

That characterization mattered because the district court, while agreeing that the 1976 assignment remained intact and had not been revoked or substituted, had treated the termination right as simply one more of the additional rights Mewborn gave away in 1978 for $3,000. The Ninth Circuit said the lower court had misapprehended the nature of the termination right when it characterized that right as an additional motion picture, television, and radio right newly acquired by Mewborn. The right to terminate is a statutory entitlement attached to the 1976 grant. A later assignment that conveyed nothing new as to those rights could not silently extinguish that entitlement, because doing so would let a re-grant function as the very "agreement to the contrary" that Section 304(c) forbids. The court accordingly held that the 1978 assignment did not extinguish Mewborn's termination right, that her 1996 notice was valid and effective, and that as of May 1, 1998 she had validly terminated the rights she granted in 1976. It reversed and remanded, directing the district court to enter partial summary judgment for Mewborn on her claim for declaratory relief. It separately affirmed the denial of Classic Media's motion for attorneys' fees.

## Reconciling Mewborn and Steinbeck

The apparent conflict with *Steinbeck* is the reason practitioners cite these cases in tandem. Both involved a later agreement touching a pre-1978 grant, yet the heirs won in the Ninth Circuit and lost in the Second. The distinction the courts and commentators draw is structural. In *Steinbeck*, the 1994 agreement expressly canceled and superseded the 1938 grant and gave the widow materially better terms while she held termination leverage, so the court treated the old grant as gone and the new one as an unterminable post-1978 contract. In *Mewborn*, the 1978 assignment did not cancel and replace the 1976 grant; as to the disputed rights it conveyed nothing, so the original terminable grant survived intact.

The practical upshot is that drafting and timing decide these disputes. A renegotiation that clearly extinguishes and replaces the pre-1978 grant, given in exchange for real new consideration, may foreclose termination. A later assignment that merely layers additional rights atop an existing grant, or purports to re-convey rights already gone, will not. The line is fact-intensive, and until the Supreme Court or Congress speaks, advisors must analyze each transaction against both decisions.

## Open questions

- **Where exactly is the line?** *Mewborn* and *Steinbeck* can be reconciled on their facts, but the precise boundary between a surviving grant and a replaced one remains contested and can turn on contract language alone.
- **Does new consideration always matter?** *Steinbeck* stressed the improved terms the widow received. *Mewborn* did not treat added ancillary rights as decisive. How much new consideration converts a re-grant into a fresh, unterminable grant is unsettled.
- **How do multiple heirs interact?** Termination rights are shared among statutory successors on fixed rules, and the decisions leave open how one heir's re-grant affects the others' ability to terminate.

## Implications for creators and businesses

- **Heirs should think twice before re-granting.** A later assignment may not, by itself, surrender a termination right, but heirs should not assume protection. The safest course is to preserve the original grant and rely on the statutory window rather than sign new paper.
- **Acquirers must diligence the grant history.** Buyers of older franchises need to trace every assignment and re-grant, because whether a termination right survives can depend on the sequence and wording of decades-old documents.
- **Drafting is dispositive.** If a rights holder wants to foreclose termination, *Steinbeck* suggests an express cancel-and-supersede structure with new consideration. *Mewborn* warns that a mere re-grant of already-conveyed rights will not do the job.
- **Brief both circuits.** Because the Second and Ninth Circuits diverge, any termination dispute with a national footprint should be analyzed under both, and forum considerations may influence strategy.

## Frequently asked questions

**What did Classic Media v. Mewborn decide?**
The Ninth Circuit held that Winifred Knight Mewborn's 1978 re-grant of Lassie rights did not extinguish her statutory right under Section 304(c) to terminate her earlier 1976 assignment. Her later termination notice was valid, and her 25 percent share of the movie, television, and radio rights reverted to her as of May 1, 1998.

**How is Mewborn different from the Steinbeck case?**
In Steinbeck the Second Circuit found a renegotiation that expressly canceled and superseded the pre-1978 grant, leaving nothing to terminate. In Mewborn the Ninth Circuit found that a later assignment did not replace the original grant in a way that gave up the termination right, so the right survived. The cases mark a doctrinal tension.

**Why did the court call the 1978 assignment a "nullity" as to certain rights?**
Because Mewborn had already assigned the motion picture, television, and radio rights in 1976. The court reasoned she had nothing left to convey again in 1978 as to those rights, so that part of the 1978 assignment transferred nothing and could not be treated as a new grant that waived her termination right.

## Authorities and sources

- [Classic Media, Inc. v. Mewborn, 532 F.3d 978 (9th Cir. 2008) (slip opinion, U.S. Court of Appeals for the Ninth Circuit)](https://cdn.ca9.uscourts.gov/datastore/opinions/2008/07/11/0655385.pdf)
- [Classic Media, Inc. v. Mewborn, 532 F.3d 978 (9th Cir. 2008) (FindLaw)](https://caselaw.findlaw.com/us-9th-circuit/1140019.html)
- [17 U.S.C. § 304(c), termination of pre-1978 transfers (Cornell LII)](https://www.law.cornell.edu/uscode/text/17/304)
- [Loeb & Loeb, "Classic Media, Inc. v. Mewborn"](https://www.loeb.com/en/insights/publications/2008/07/classic-media-inc-v-mewborn)
- [Quimbee case brief, Classic Media v. Mewborn, 532 F.3d 978](https://www.quimbee.com/cases/classic-media-v-mewborn)
- [Deadline, "Lassie Comes Home! 9th Circuit Upholds Dog Story Rightsholder"](https://deadline.com/2008/07/lassie-comes-home-9th-circuit-upholds-dog-story-rightsholder-against-big-media-6294/)
- [Penguin Group (USA) Inc. v. Steinbeck, 537 F.3d 193 (2d Cir. 2008) (FindLaw), the contrasting decision](https://caselaw.findlaw.com/us-2nd-circuit/1715080.html)