Intellectual Property Attorney

Update On “Superman” Cases: Copyright Grant To Warner Bros. Not Subject To Termination

In an October 2012 blog post here, we discussed seemingly conflicting decisions in two cases involving efforts to terminate copyright grants in the Superman property. As reported in
The New York Times, a recent appeals court ruling resolves the conflict in favor of Warner Bros., thus removing any remaining cloud over the forthcoming “Man of Steel” movie due out in June.

As discussed previously, the heirs of Jerry Siegel and Joe Shuster, the writer and illustrator of the original Superman comics, respectively, are seeking to reclaim copyrights that had been granted to DC Comics in 1938. Pursuant to Section 304 of the Copyright Act, an author or his/her statutory beneficiaries may terminate grants executed by the author before January 1, 1978, provided that advance notice is given to the grantee in strict accordance with statutory requirements.

Siegel’s heirs served notice on DC Comics that their 50% interest in the copyrights would revert in 1999. When Warner Bros., DC Comics’ parent company, continued to exploit the copyrights beyond that date, Siegel’s heirs sued Warner Bros. for copyright infringement. Warner Bros. argued that the termination notices were defective and, moreover, the parties had come to an agreement in 2001 which superseded the 1938 grant.

In 2008, the court held that the parties’ negotiations did not form a binding and superseding agreement, and that Siegel’s heirs had properly reclaimed copyright in some elements of the Superman property, but not others. Both parties appealed the decision.

Meanwhile, DC Comics had made similar claims of a superseding agreement in its lawsuit against Joe Shuster’s heirs which lawsuit DC Comics had brought after receiving termination notices. In that case, the district court granted DC Comics’ motion for summary judgment, holding that a 1992 agreement between DC Comics and Shuster’s siblings constituted a binding and superseding agreement which voided the heirs’ prior termination notice and effectively waived their right to terminate the prior grant. That decision appeared to conflict with the 2008 decision in the Siegel case.

Unfortunately for Siegel’s heirs, it was merely a foreshadowing of things to come.

In a ruling last month, the United States Court of Appeals for the Ninth Circuit held that the 2001 agreement between Siegel’s heirs and Warner Bros. is indeed binding and governs the amount of compensation the Siegel heirs are entitled to receive from exploitations of the Superman property.

In the end, neither Siegel’s nor Shuster’s heirs may terminate the 1938 grants, and Warner Bros.’s ownership of the copyrights in the Superman franchise appear secure. Although the Shuster heirs may still appeal the 2012 district court decision, any appeal would be heard by the same appellate court that just decided in favor of Warner Bros. on very similar facts. The Siegel heirs’ only recourse at this point is to petition for cert to the U.S. Supreme Court.

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