<b><i>Looking Forward, Looking Back:</b></i> Supreme Court's <i>Rear Window</i> Ruling 20 Years Later

Woolrich died in 1968, just as the initial 28-year copyright term of his “It Had to Be Murder” story was about to end. Woolrich's executor, Chase Manhattan Bank, renewed the copyright and in 1972 assigned it to literary agent Sheldon Abend, who paid $650 for “Murder” and promised to give the Woolrich estate 10% of monies received from projects involving the Woolrich work. In 1974, Abend sued in U.S. District Court for the Southern District of New York over an ABC-TV network broadcast of Rear Window. He settled with defendants Stewart, Hitchcock and then-film-rights owner MCA for $25,000. But in 1987, Abend sued these parties again (this time including distributor Universal Film Exchanges) in a copyright infringement complaint filed in Los Angeles federal court, over the home-video and theatrical re-release of Rear Window. The federal district court ruled in favor of the defendants, but the U.S. Court of Appeals for the Ninth Circuit decided that, because Woolrich died before the short-story renewal term began, the Rear Window defendants lacked the right to continue to exploit their movie. Abend v. MCA Inc., 863 F.2d 1465 (9th Cir. 1988).

The validity of assignments of copyright-renewal terms was first considered by the U.S. Supreme Court in 1943 in a case over the song “When Irish Eyes Are Smiling.” Justice Felix Frankfurter noted in the court's majority decision, “The question is ' does the [Copyright] Act prevent the author from assigning his interest in the renewal copyright before he has secured it?” ' i.e., before the start of the renewal term. Frankfurter concluded the law didn't. Fred Fisher Music Co. v. M. Witmark & Sons, 318 U.S. 643 (1943).

It was in 1960 that the Supreme Court faced the question of what happens if an author dies before the renewal term begins. In Miller Music Corp. v. Charles N. Daniels Inc., 362 U.S. 373 (1960), Justice William O. Douglas wrote for the majority that “assignees of renewal rights take the risk that the rights acquired may never vest.” Thus, instead of going to a music publisher, renewal rights to the song “Moonlight and Roses” went back to the estate of the composition's co-writer, Ben Black. (Douglas's opinion was relatively brief ' around 1,700 words. In a note archived at the Library of Congress, Supreme Court Justice Hugo L. Black, who praised Douglas's opinion by writing him “how much can be said in a few words when one hits the jugular.”)

Which brings us back to Rear Window. Though the Ninth Circuit had sided with literary agent Abend in its 1988 ruling, the U.S. Court of Appeals for the Second Circuit differed with the view that a film owner's continued exploitation of a derivative work (i.e., the motion picture) would constitute infringement if the author of the underlying story died before the start of the story's renewal term. See, Rohauer v. Killiam Shows Inc., 551 F. 2d 484 (1977) (about the 1926 movie The Son of the Sheik and its underlying story). (Compare the renewal-term issue with the copyright termination provisions of the 1976 Act, ”203 and 304(c) (and their timetables), which allow an assignee ' “under the terms [or authority] of the grant before its termination” ' to continue to use an underlying work to exploit the derivative work the assignee created.)

The conflict between the Second and Ninth Circuits made the renewal issue ripe for the U.S. Supreme Court to decide. The lawyers that represented the parties before the Ninth Circuit also argued the case before the Supreme Court: Louis P. Petrich for the Rear Window defendants (now the “petitioners”) and Peter J. Anderson for Abend (now the “respondent”). During oral arguments, Petrich told the Supreme Court justices that his clients had re-released Rear Window in reliance on the Second Circuit's Rohauer ruling. Petrich also noted that “our film is a revision or an augmentation of [Woolrich's] short story. We've added the Grace Kelly character and the [actress co-star] Thelma Ritter character in the film.”

Petrich insisted “there's a great danger we think here that undermines copyright policy because if someone in the position of a short-story owner has too much leverage, he is using the monopoly power Congress gave him in the ' for his short story ' not to just reap the benefits of his short story. ' He's coming to us and saying: I want what you make on your movie and on the new matter that you have put into your movie. That's what he wants to do. That's the game.” Referring to “speculators” who buy short-story rights for “a comparatively low investment,” Petrich added that when Abend “negotiates with somebody who has spent $2 million [a large sum when Rear Window was originally produced] to make and to release a motion picture, he has considerable leverage in deciding how long he's willing to negotiate.”

But Peter Anderson countered for Abend that “Rohauer involved the showing of a preexisting print that was made ' they made one videotape copy and then showed that preexisting print over a public television station. What the petitioners have done here is made several thousand new 35-millimeter print versions of the film and made several hundred thousand new videotape copies.” Copyright policy offers authors and their heirs a second chance to benefit from a copyright that may have been assigned before a work's true value was known. Anderson continued that the Rear Window petitioners were “confusing the use of the film with [their rights in] the new matter. What they're really asking for is a second chance to impose the bad bargain that the author made on his statutory successors. Here is Mr. Abend; in another case it's going to be the next of kin of the woman who wrote Gone With the Wind or The Sound of Music or Dr. Zhivago.”

The Supreme Court's Decision

When the Supreme Court issued its decision, the majority ruled in favor of Abend. Justice Sandra Day O'Connor wrote the majority opinion, in which she was joined by five of the court's other eight justices. Stewart v. Abend, 495 U.S. 207 (1990).

But there had been uncertainty behind the scenes. Justice John Paul Stevens wrote to O'Connor of her first written draft: “Although your opinion is persuasive, I still think Judge Henry J. Friendly [author of the Second Circuit's Rohauer ruling] has the better of the argument. I shall therefore prepare a short dissent.” (Justice Antonin Scalia and Chief Justice William H. Rehnquist signed on to Stevens' dissent.) Justice Byron R. White, who later wrote a one-paragraph opinion concurring with O'Connor, initially corresponded to her: “For now, I await John's [dissent] writing.” And Justice Anthony M. Kennedy, a member of the O'Connor majority, had earlier written her: “I have enough difficulty that I would like to see Byron's views before voting.”

In the Rear Window majority decision, O'Connor stated: “After Miller Music, if the author dies before the commencement of the renewal period, the assignee holds nothing. If the assignee of all of the renewal rights holds nothing upon the death of the assignor before arrival of the renewal period, then, a fortiori, the assignee of a portion of the renewal rights, e.g., the right to produce a derivative work, must also hold nothing. ' Woolrich died before the commencement of the renewal period in the story, and, therefore, petitioners hold only an unfulfilled expectancy.”

O'Connor emphasized: “It is irrelevant whether the pre-existing work is inseparably intertwined with the derivative work. ' At heart, petitioners' true complaint is that they will have to pay more for the use of works they have employed in creating their own works. But such a result was contemplated by Congress and is consistent with the goals of the Copyright Act.”

The case went back to the district court for a determination of how much money Abend should receive from the Rear Window re-release. In a 1991 settlement, Abend gave the Rear Window defendants a non-exclusive license to continue to use the Woolrich story elements in their film.

But that wasn't the last Woolrich/Rear Window dispute. In 2008, the Sheldon Abend Revocable Trust sued the production company Dreamworks, co-owner Steven Spielberg and NBC Universal alleging that the defendants' 2007 motion picture Disturbia infringed the Woolrich story copyright. The Sheldon Abend Revocable Trust v. Spielberg, 08-7810. The complaint in the U.S. District Court for the Southern District of New York states that, in 1986, Abend engaged in unsuccessful discussions for a Rear Window remake containing the Woolrich elements, to be developed for the Spielberg-produced TV series Amazing Tales. Then around 1996, Abend (who died in 2003) allegedly approached Spielberg unsuccessfully again for a Rear Window film remake.

The Abend Trust's suit claims that “the Disturbia Film came from the desire by Spielberg to re-make the Rear Window Film for a younger audience.” The complaint notes: “The United States Supreme Court stated that the Rear Window Film expressly uses the Rear Window Story's [i.e., "It Had to Be Murder"] 'unique setting, characters, plot, and sequence of events.'” The complaint quotes Stewart/Hitchcock screenplay writer John Michael Hayes as saying: “I used everything I could from the [Woolrich] story. After all, that's what we had bought and paid for, and I picked the bones of it as clean as I could.” With the renewal-term/derivative-rights issues decided in Stewart v. Abend, the Disturbia suit alleges breach by NBC Universal (a successor-in-interest to MCA) of the 1991 derivative-rights license in which the Abend Trust claims a reservation of derivative rights outside the actual Stewart/Hitchcock movie.

[Editor's Note: Immediately after this issue went to press, the Southern District of New York dismissed the suit against Spielberg and Dreamworks, finding no substantial similarity.]

As judicial precedent, Stewart v. Abend has often been cited by subsequent courts more for the Supreme Court's refusal to accept the Stewart/Hitchcock production parties' claim that their movie was a copyright fair use of the Woolrich story elements. (Justice O'Connor wrote: “Petitioners argue that the story constituted only 20% of the motion picture's story line, ' but that does not mean that a substantial portion of the story was not used in the motion picture.”)

Still, movie and TV production companies that focus today on remaking branded properties will want to consider Stewart v. Abend's derivative-use restriction. The last of the initial 28-year terms for pre-Jan. 1, 1978 protected works ended in 2005, but depending on from whom remake rights are obtained, heirs of authors of underlying works may still raise renewal-term claims.

The Copyright Act of 1976 provided for a single copyright term. This is today measured ' for works created, or published, on or after Jan. 1, 1978 ' from the death of the author, or last living co-author, plus 70 years. For pre-Jan. 1, 1978 works, however, the 1909 Act set forth two copyright terms: an initial 28-year term followed by a 28-year renewal term. Congress has since extended the renewal term to a total of 67-years. The extent of assigned rights under the renewal term has become increasingly important as, for example, the film and television industries rely more heavily on remakes of earlier, popular movie and TV properties to hopefully attract larger audiences.

2010 is the 20th anniversary of a landmark U.S. Supreme Court decision that dealt with the renewal-rights dilemma. The case centered on whether actor James Stewart and director Alfred Hitchcock could continue to exploit their classic-thriller movie Rear Window, which was based on the short story “It Had to Be Murder” by Cornell Woolrich. Though relatively unknown today, the prolific Woolrich was an originator of the noir school of mystery writing. Woolrich's novels and short stories formed the basis of more than two-dozen movies and 100 TV programs. “It Had to Be Murder” was first published in 1942, in Dime Detective magazine. In 1945, for $9,250, Woolrich assigned the rights to this and five other of his stories to a movie production company from which Stewart and Hitchcock's production outfit, Patron Inc., later bought the “Murder” movie rights for $10,000. The resulting film, Rear Window, starring Stewart and actress Grace Kelly, was released by Paramount Pictures in 1954.

Circuit Courts Differ

Woolrich died in 1968, just as the initial 28-year copyright term of his “It Had to Be Murder” story was about to end. Woolrich's executor, Chase Manhattan Bank, renewed the copyright and in 1972 assigned it to literary agent Sheldon Abend, who paid $650 for “Murder” and promised to give the Woolrich estate 10% of monies received from projects involving the Woolrich work. In 1974, Abend sued in U.S. District Court for the Southern District of New York over an ABC-TV network broadcast of Rear Window. He settled with defendants Stewart, Hitchcock and then-film-rights owner MCA for $25,000. But in 1987, Abend sued these parties again (this time including distributor Universal Film Exchanges) in a copyright infringement complaint filed in Los Angeles federal court, over the home-video and theatrical re-release of Rear Window. The federal district court ruled in favor of the defendants, but the U.S. Court of Appeals for the Ninth Circuit decided that, because Woolrich died before the short-story renewal term began, the Rear Window defendants lacked the right to continue to exploit their movie. Abend v. MCA Inc. , 863 F.2d 1465 (9th Cir. 1988).

The validity of assignments of copyright-renewal terms was first considered by the U.S. Supreme Court in 1943 in a case over the song “When Irish Eyes Are Smiling.” Justice Felix Frankfurter noted in the court's majority decision, “The question is ' does the [Copyright] Act prevent the author from assigning his interest in the renewal copyright before he has secured it?” ' i.e., before the start of the renewal term. Frankfurter concluded the law didn't. Fred Fisher Music Co. v. M. Witmark & Sons , 318 U.S. 643 (1943).

It was in 1960 that the Supreme Court faced the question of what happens if an author dies before the renewal term begins. In Miller Music Corp. v. Charles N. Daniels Inc. , 362 U.S. 373 (1960), Justice William O. Douglas wrote for the majority that “assignees of renewal rights take the risk that the rights acquired may never vest.” Thus, instead of going to a music publisher, renewal rights to the song “Moonlight and Roses” went back to the estate of the composition's co-writer, Ben Black. (Douglas's opinion was relatively brief ' around 1,700 words. In a note archived at the Library of Congress, Supreme Court Justice Hugo L. Black, who praised Douglas's opinion by writing him “how much can be said in a few words when one hits the jugular.”)

Which brings us back to Rear Window. Though the Ninth Circuit had sided with literary agent Abend in its 1988 ruling, the U.S. Court of Appeals for the Second Circuit differed with the view that a film owner's continued exploitation of a derivative work (i.e., the motion picture) would constitute infringement if the author of the underlying story died before the start of the story's renewal term. See , Rohauer v. Killiam Shows Inc. , 551 F. 2d 484 (1977) (about the 1926 movie The Son of the Sheik and its underlying story). (Compare the renewal-term issue with the copyright termination provisions of the 1976 Act, ”203 and 304(c) (and their timetables), which allow an assignee ' “under the terms [or authority] of the grant before its termination” ' to continue to use an underlying work to exploit the derivative work the assignee created.)

The conflict between the Second and Ninth Circuits made the renewal issue ripe for the U.S. Supreme Court to decide. The lawyers that represented the parties before the Ninth Circuit also argued the case before the Supreme Court: Louis P. Petrich for the Rear Window defendants (now the “petitioners”) and Peter J. Anderson for Abend (now the “respondent”). During oral arguments, Petrich told the Supreme Court justices that his clients had re-released Rear Window in reliance on the Second Circuit's Rohauer ruling. Petrich also noted that “our film is a revision or an augmentation of [Woolrich's] short story. We've added the Grace Kelly character and the [actress co-star] Thelma Ritter character in the film.”

Petrich insisted “there's a great danger we think here that undermines copyright policy because if someone in the position of a short-story owner has too much leverage, he is using the monopoly power Congress gave him in the ' for his short story ' not to just reap the benefits of his short story. ' He's coming to us and saying: I want what you make on your movie and on the new matter that you have put into your movie. That's what he wants to do. That's the game.” Referring to “speculators” who buy short-story rights for “a comparatively low investment,” Petrich added that when Abend “negotiates with somebody who has spent $2 million [a large sum when Rear Window was originally produced] to make and to release a motion picture, he has considerable leverage in deciding how long he's willing to negotiate.”

But Peter Anderson countered for Abend that “Rohauer involved the showing of a preexisting print that was made ' they made one videotape copy and then showed that preexisting print over a public television station. What the petitioners have done here is made several thousand new 35-millimeter print versions of the film and made several hundred thousand new videotape copies.” Copyright policy offers authors and their heirs a second chance to benefit from a copyright that may have been assigned before a work's true value was known. Anderson continued that the Rear Window petitioners were “confusing the use of the film with [their rights in] the new matter. What they're really asking for is a second chance to impose the bad bargain that the author made on his statutory successors. Here is Mr. Abend; in another case it's going to be the next of kin of the woman who wrote Gone With the Wind or The Sound of Music or Dr. Zhivago.”

The Supreme Court's Decision

When the Supreme Court issued its decision, the majority ruled in favor of Abend. Justice Sandra Day O'Connor wrote the majority opinion, in which she was joined by five of the court's other eight justices. Stewart v. Abend , 495 U.S. 207 (1990).

But there had been uncertainty behind the scenes. Justice John Paul Stevens wrote to O'Connor of her first written draft: “Although your opinion is persuasive, I still think Judge Henry J. Friendly [author of the Second Circuit's Rohauer ruling] has the better of the argument. I shall therefore prepare a short dissent.” (Justice Antonin Scalia and Chief Justice William H. Rehnquist signed on to Stevens' dissent.) Justice Byron R. White, who later wrote a one-paragraph opinion concurring with O'Connor, initially corresponded to her: “For now, I await John's [dissent] writing.” And Justice Anthony M. Kennedy, a member of the O'Connor majority, had earlier written her: “I have enough difficulty that I would like to see Byron's views before voting.”

In the Rear Window majority decision, O'Connor stated: “After Miller Music, if the author dies before the commencement of the renewal period, the assignee holds nothing. If the assignee of all of the renewal rights holds nothing upon the death of the assignor before arrival of the renewal period, then, a fortiori, the assignee of a portion of the renewal rights, e.g., the right to produce a derivative work, must also hold nothing. ' Woolrich died before the commencement of the renewal period in the story, and, therefore, petitioners hold only an unfulfilled expectancy.”

O'Connor emphasized: “It is irrelevant whether the pre-existing work is inseparably intertwined with the derivative work. ' At heart, petitioners' true complaint is that they will have to pay more for the use of works they have employed in creating their own works. But such a result was contemplated by Congress and is consistent with the goals of the Copyright Act.”

The case went back to the district court for a determination of how much money Abend should receive from the Rear Window re-release. In a 1991 settlement, Abend gave the Rear Window defendants a non-exclusive license to continue to use the Woolrich story elements in their film.

But that wasn't the last Woolrich/Rear Window dispute. In 2008, the Sheldon Abend Revocable Trust sued the production company Dreamworks, co-owner Steven Spielberg and NBC Universal alleging that the defendants' 2007 motion picture Disturbia infringed the Woolrich story copyright. The Sheldon Abend Revocable Trust v. Spielberg, 08-7810. The complaint in the U.S. District Court for the Southern District of New York states that, in 1986, Abend engaged in unsuccessful discussions for a Rear Window remake containing the Woolrich elements, to be developed for the Spielberg-produced TV series Amazing Tales. Then around 1996, Abend (who died in 2003) allegedly approached Spielberg unsuccessfully again for a Rear Window film remake.

The Abend Trust's suit claims that “the Disturbia Film came from the desire by Spielberg to re-make the Rear Window Film for a younger audience.” The complaint notes: “The United States Supreme Court stated that the Rear Window Film expressly uses the Rear Window Story's [i.e., "It Had to Be Murder"] 'unique setting, characters, plot, and sequence of events.'” The complaint quotes Stewart/Hitchcock screenplay writer John Michael Hayes as saying: “I used everything I could from the [Woolrich] story. After all, that's what we had bought and paid for, and I picked the bones of it as clean as I could.” With the renewal-term/derivative-rights issues decided in Stewart v. Abend, the Disturbia suit alleges breach by NBC Universal (a successor-in-interest to MCA) of the 1991 derivative-rights license in which the Abend Trust claims a reservation of derivative rights outside the actual Stewart/Hitchcock movie.

[Editor's Note: Immediately after this issue went to press, the Southern District of New York dismissed the suit against Spielberg and Dreamworks, finding no substantial similarity.]

As judicial precedent, Stewart v. Abend has often been cited by subsequent courts more for the Supreme Court's refusal to accept the Stewart/Hitchcock production parties' claim that their movie was a copyright fair use of the Woolrich story elements. (Justice O'Connor wrote: “Petitioners argue that the story constituted only 20% of the motion picture's story line, ' but that does not mean that a substantial portion of the story was not used in the motion picture.”)

Still, movie and TV production companies that focus today on remaking branded properties will want to consider Stewart v. Abend's derivative-use restriction. The last of the initial 28-year terms for pre-Jan. 1, 1978 protected works ended in 2005, but depending on from whom remake rights are obtained, heirs of authors of underlying works may still raise renewal-term claims.