JENNER & BLOCK LLP

3
4
5

Andrew J. Thomas (SBN 159533)

ajthomas@jenner.com
Lisa J. Kohn (SBN 260236)
lkohn@jenner.com
633 West 5th Street, Suite 3600

Los Angeles, CA 90071

Telephone: (213)239-5100
Facsimile: (213)239-5199

JENNER & BLOCK LLP

7

Susan J. Kohlmann (Pro Hac Vice to be filed)

skohlmann@jenner.com
Alison I. Stein (Pro Hac Vice to be fifed)

9
10
11
12

astein@jenner.com

Jacob L. Tracer (Pro Hac Vice to be filed)

jtracer@jenner.com
919 Third Avenue

New York, NY 10022

Telephone: (212)891-1690
Facsimile: (212) 891-1699

13

Attorneysfor Plaintiff Waverly Scott Kaffaga,

14

as Executor ofthe Estate ofElaine Anderson Steinbeck

UNITED STAT IS DISTRICT COURT

CENTRAL DIST RICT OF CALIFORNIA

Cn4-0869 9-W&'
WAVERLY SCOTT KAFFAGA, AS

Case No.

EXECUTOR OF THE ESTATE OF

ELAINE ANDERSON STEINBECK]

Plaintiff,

COMPLAINT FOR:

[1] BREACH OF CONTRACT

v.

[2] DECLARATORY JUDGMENT

22
23

THOMAS STEINBECK, GAIL

KNIGHT STEINBECK, and THE
PALLADIN GROUP INC.,

24

Defendants.
25
26
27

[3] SLANDER OF TITLE

[4] INTENTIONAL
INTERFERENCE WITH
PROSPECTIVE ECONOMIC
ADVANTAGE
DEMAND FOR JURY TRIAL

28

COMPLAINT

JENNER & BLOCK LLP

Andrew J. Thomas (SBN 159533)

2

ajthomas@jenner.com

Lisa J. Kohn (SBN 260236)

lkohn@j enner. com

4
5

633 West 5th Street, Suite 3600

Los Angeles, CA 90071

Telephone: (213)239-5100
Facsimile: (213)239-5199

JENNER & BLOCK LLP

7

Susan J. Kohlmann (Pro Hac Vice to be filed)

skohlmann@jenner.com

Alison I. Stein (Pro Hac Vice to be fi|led)

Jacob L. Tracer (Pro Hac Vice to be lied)

astein@jenner.com
10

jtracer@jenner.com
919 Third Avenue

11

New York, NY 10022

12

Facsimile: (212)891-1699

Telephone: (212)891-1690

13
14

Attorneysfor Plaintiff Waverly Scott Kaffaga,

as Executor ofthe Estate ofElaine Anderson Steinbeck

15

UNITED STATlES DISTRICT COURT

16

CENTRAL DISTRICT OF CALIFORNIA

17

18

WAVERLY SCOTT KAFFAGA, A$

19

Case No.

EXECUTOR OF THE ESTATE OF

ELAINE ANDERSON STEINBECK

COMPLAINT FOR:

20

Plaintiff,
21

[2] DECLARATORY JUDGMENT

22

23

[1] BREACH OF CONTRACT

THOMAS STEINBECK, GAIL

KNIGHT STEINBECK, and THE

[3] SLANDER OF TITLE

PALLADIN GROUP INC.,

24

Defendants.

[4] INTENTIONAL

26

INTERFERENCE WITH
PROSPECTIVE ECONOMIC
ADVANTAGE

27

DEMAND FOR JURY TRIAL

25

28

COMPLAINT

Plaintiff Waverly Scott Kaffag , as executor of the Estate of Elaine

Anderson Steinbeck (the "Estate"), b) and through its undersigned counsel, Jenner

& Block LLP, brings this action agairist defendants Thomas Steinbeck, Gail Knight

Steinbeck, and The Palladin Group

declaratory and injunctive relief and damages. Plaintiff alleges as follows:

6
7

Inc .

(collectively, the "Defendants") for

NATURE OF THE ACTION

1.

Plaintiff brings this action for declaratory and injunctive relief and to

recover damages related to Defendantjs ' knowing breach of a 1983 settlement

agreement that conferred upon Elaine Steinbeck (and later, her daughter Waverly

10

Kaffaga, Executor of her Estate) the c|omplete power and authority to exploit the

11

copyrights in the works of Nobel laureate John Steinbeck (the "Steinbeck Works"),

12

Plaintiff also seeks to recover damagjes related to Defendants'

13

Estate's copyright ownership of and c|ontrol interest in the Steinbeck Works and

14

their intentional interference with the

15

business relationships related to the e? :ploitation of the Steinbeck Works.

16

2.

slander of title to the

state's prospective economic advantage and

Defendants have breacheld the 1983 Settlement Agreement by, inter

17

alia, interfering in and impairing the Estate's exploitation of the Steinbeck Works,

18

improperly and fraudulently claiming that they possess certain rights with respect

19

to the exploitation of the Steinbeck Wlorks that they do not possess, and acting in

20

complete contravention of multiple cdurt

21

Settlement Agreement makes clear that Defendants retain no power or authority to

22

negotiate, authorize, or take action

23

Steinbeck Works.

24

3.

wih

orders that have held that the 1983

respect to the exploitation of rights in the

John Steinbeck ("Steinbelck") was a prolific writer who left behind a

25

wealth of intellectual property. His wlorks are

26

Century American literature. Througljiout his life, though he entered into numerous

27

licensing agreements involving his copyn ghted works, Steinbeck was careful to

considered classics of Twentieth

28

COMPLAINT

renew and to retain ownership over his

hi copyrights to prevent his works from

falling into the public domain.

4.

Steinbeck filed and obtained

copyright registrations for all his works,

When Steinbeck died in 1968, he left a will in which he passed all his copyright

interests and intellectual property rig

not leave any intellectual property rig its to his two sons from a previous marriage,

Thomas ("Thorn") Steinbeck and Johi|i Steinbeck IV. Steinbeck's will provided a

sum total of $50,000 in trust for each jf his two sons.

5.

As a result of Steinbeck'

to his widow, Elaine Steinbeck. He did

will, Elaine Steinbeck owned outright those

10

works with respect to which Steinbecki had renewed the copyrights during his

11

lifetime (the "Early Steinbeck Works' '). But under the federal copyright laws,

12

Thorn Steinbeck and John Steinbeck

13

entitled to royalty payments with resp ^ct to those works for which the copyrights

14

renewed after Steinbeck's death (the ' Late Steinbeck Works").

15

6.

, in addition to Elaine Steinbeck, were

In 1983, in connection w.th litigation brought by Thorn Steinbeck and

16

John Steinbeck IV regarding royalty distributions for the Late Steinbeck Works,

17

Elaine Steinbeck, Thorn Steinbeck, and John Steinbeck IV entered into a

18

settlement agreement (the "1983

19

Agreement, Thorn Steinbeck and Johr Steinbeck IV (on behalf of themselves and

20

their heirs and assigns) ceded "compl ^te power and authority" overthe exploitation

21

of the Late Steinbeck Works to Elaine

22

exchange for an increased share of roj alty payments. The royalty shares of Thorn

23

Steinbeck and John Steinbeck IV increased to one-third each, rather than the 25%

24

share to which each was entitled unde r the

25

then in effect. In exchange for gainin the complete power and authority to exploit

26

the Late Steinbeck Works, Elaine Steinbeck''s share decreased to one-third of the

27

royalties generated by the Late

28

which she was entitled.

Settl ement

Agreement"). In the 1983 Settlement

Steinbeck (and her heirs and assigns) in

1974 royalty distribution agreement

Steinbeck Works, rather than the 50% share to

COMPLAINT

7.

SteinbeckIV negotiated for and willingly

Thom Steinbeck and Join

undertook their obligations in the

1983

increased royalty distributions for

decades . Nevertheless, Thom Steinbeck and his

wife and attorney-in-fact Gail Knight Steinbeck, both acting through The Palladin

Group Inc., and sometimes purporting to act for John Steinbeck IV and his

beneficiaries, have engaged in a steady campaign since 1983both in and out of

the courtroomto overturn Steinbeck 's

1983 Settlement Agreement.

8.

In direct contravention o

Settlement Agreement and benefitted from

will and ignore their obligations under the

the 1983 Settlement Agreement and

10

multiple orders of various federal coutts , Defendants repeatedly have interfered

11

with Elaine Steinbeck's (and the Estat|e 's) ability to exploit the Steinbeck Works

12

by, inter alia, improperly claiming thet they have rights related to the exploitation

13

of the Steinbeck Works and inserting ihemselves into ongoing negotiations

14

between the Estate and third parties.

15
16
17

THE PARTIES
Plaintiff

9.

Plaintiff, Waverly Scott I^affaga, is the Executrix of the Will of Elaine

18

Steinbeck (the "Will"). The Estate manages the assets of Elaine Steinbeck

19

pursuant to her Will. Before she died in 2003, Elaine Steinbeck was a resident of

20

New York. The Will of Elaine Steinbeck was admitted to Probate in the

21

Surrogate's Court for the County of New York, New York in 2003.

22

Defendants

23

10.

Upon information and be ief, Defendant Thomas Steinbeck is an

24

individual residing at 1482 East Valle i Road, Suite 100, Santa Barbara, California

25

93108.

26

11.

Upon information and be ief, Defendant Gail Knight Steinbeck is an

27

individual residing at 1482 East Valley Road, Suite 100, Santa Barbara, California

28

93108. She is the wife and attorney

in

fact of Thomas Steinbeck.

-4-

COMPLAINT

12.

Upon information and bejlief,

ief, Defendant The Palladin Group, Inc. is a

suspended California corporation wit! its principal place of business at 1482 East

Valley Road, Suite 100, Santa Barbar^,, California

belief, Defendants Thomas Steinbeck and Gail Knight Steinbeck are President and

Managing Partner, respectively, of Thje Palladin Group. Upon information and

belief, California's Franchise Tax Bo rd suspended The Palladin Group for failure

to meet tax requirements.

JURISDICTION AND VENUE

93108. Upon information and

13.

This is a declaratory action pursuant to the Federal Declaratory

10

Judgment Act, 28 U.S.C. 2201-02, and for damages due to breach of contract,

11

slander of title, and intentional interference with prospective economic advantage,

12

This Court has jurisdiction over the sibj ect matter of this action pursuant to 28

13

U.S.C. 1332(a)(1) because the Plain

14

states and the amount in controversy qxceeds seventy-five thousand dollars

15

($75,000), exclusive of interest and cdsts

16

14.

iff and Defendants are citizens of different

This Court has personal j|urisdiction over Defendants Thomas

17

Steinbeck and Gail Knight Steinbeck jecause they both reside in this judicial

18

district.

19

15.

This Court has personal j urisdiction over Defendant The Palladin

20

Group, Inc. because it is a California corporation and because it is headquartered

21

and conducts business operations in tl is judicial district.

22

16.

Venue is proper in this judicial district pursuant to 28 U.S.C.

23

1391(b)(1) because all Defendants

24

Defendant resides in this judicial district Upon information and belief, all

25

Defendants reside or are headquartered in this judicial district.

THE STEINBECK WORKS

26
27
28

residents of California and at least one

17.

Author John Steinbeck

was

born on February 27, 1902 and died on

December 20, 1968. During his lifetime , he authored no fewer than 35 works and
-5COMPLAINT

obtained copyright registrations for al of them. The 1962 recipient of the Nobel

Prize for literature, John Steinbeck is one of America's most significant Twentieth

Century writers whose works are nig

schools and colleges, and enjoyed by millions of readers to this day.

18.

acclaimed, studied academically in high

At the time the Steinbeck

Works were written and first published,

federal law required renewal of a cop) right registration 28 years after the copyright

for a particular work is first obtained, See 17 U.S.C. 304(a). Upon information

and belief, John Steinbeck renewed the copyright registrations for his works

whenever such renewal was due and

available during his lifetime. Upon

10

information and belief, John Steinbec^i filed copyright renewal registrations for the

11

following works, among others: Cup fGold (1929), The Pastures ofHeaven

12

(1932), To a God Unknown (1933) , The Red Pony (1937), Tortilla Flat

13

(1935), In Dubious Battle (1936), OfMice and Men (1937), OfMice and

14

Men (Play) (1937), Murder at Full Ifioon (1938), The Long Valley (1938),

15

The Grapes of Wrath (1939), Forgohen Village (1941), and The Sea ofCortez

16

(1941). These works, renewed by S teinbeck, are referred to herein as the "Early

17

Steinbeck Works."

18

19.

John Steinbeck also

authored the following works that were published

19

in or after 1942 and entered their rene val term after his death: The Moon is Down

20

(1942), The Moon is Down (Play)

21

(1945), The Pearl (1945), The Wayward Bus (1947), A Russian Journal

22

(1948), Burning Bright (1950), Logfn

rom the Sea ofCortez (1951), East of

23

Eden (1952), Sweet Thursday (195,4) , The Short Reign ofPippin JV(\957);

24

Once There Was a War (1958), The Winter ofOur Discontent (1961), Travels

25

with Charley (1962), and America dnd Americans (1966). Copyrights for these

26

works, upon information and belief, Were renewed jointly by Elaine Steinbeck,

27

Thom Steinbeck, and John Steinbeck V as Steinbeck's statutory heirs pursuant to

28

17 U.S.C. 304(a)(1)(C). These works

:s are

(4>1942), Bombs Away (1942), Cannery Row

referred to herein as the "Late

COMPLAINT

Steinbeck Works." Collectively, the Ifarly Steinbeck Works and the Late

Steinbeck Works are referred to hereiih as the "Steinbeck Works."

3
4

OWNERSHIP OF THE COPYR [GHTS IN THE STEINBECK WORKS

20.

Upon his death in 1968, Steinbeck's will bequeathed all his rights in

the copyrights to the Steinbeck Works to his widow, Elaine Steinbeck. There were

no rights in these copyrights given to ^ither Thom Steinbeck or John Steinbeck IV,

Steinbeck's biological children, Nevertheless,, in communications with third

parties regarding the Steinbeck Works , Defendants misleadingly refer to

themselves as the "Steinbeck Family,' while omitting the beneficiaries of the

10

Estate, the family of John Steinbeck's wife to whom he bequeathed all his

11

copyright interests, which they refer to as the "Scott Family."

12

21.

With respect to the Early Steinbeck Works, which Steinbeck renewed

13

himself, Elaine Steinbeck inherited the entire copyright interest because these

14

rights passed through Steinbeck's will

15

22.

With respect to the Late Steinbeck Works, which were not yet subject
c eath, the ownership of the copyrights went

16

to renewal at the time of Steinbeck's

17

to Elaine Steinbeck, Thom Steinbeck, and John Steinbeck IV pursuant to the

18

statutorily created renewal provisions under the Copyright Act of 1976, 17 U.S.C.

19

304(a)(1)(C).

20

23.

In 1974, Elaine Steinbeck:, Thom Steinbeck, and John Steinbeck IV

21

entered into a royalty distribution ag rejement, pursuant to which Thom Steinbeck

22

and John Steinbeck IV each received

23

Late Steinbeck Works and Elaine

Steihbeck received the remaining 50 percent.

THE 1983 SETTLEMENT AGREEMENT

24

25

5 percent of the royalties generated from the

24.

Thirteen years after John Steinbeck's death, Thom Steinbeck and John

contesting the 1974 royalty distribution

26

Steinbeck IV sued Elaine Steinbeck

27

agreement. Thom Steinbeck and Johr Steinbeck IV alleged, among other things,

28

COMPLAINT

that Elaine Steinbeck, along with John Steinbeck's literary agentMcintosh &

Otis ("M&O")had engaged in frauc , deception, and misrepresentation,

25.

In 1982, the district cour: granted summary judgment in favor of

Elaine Steinbeck and dismissed Thon Steinbeck and John Steinbeck IV's

complaint, concluding that the 1974 royalty distribution agreement was "specific

and unambiguous." See John Steinbehk,, IV and Thom Steinbeck v. Elaine

Steinbeck, No. 81 Civ. 6105 (S.D.N.Y Dec. 8, 1982) (order granting summary

judgment). Thom Steinbeck and Johr Steinbeck IV appealed the district court's

decision to the United States Court

of|Appeals for the Second Circuit (the "Second

10

Circuit"). Before the appellate court issued

i
a ruling, Elaine Steinbeck, Thom

11

Steinbeck, and John Steinbeck IV entered into the 1983 Settlement Agreement. A

12

true and correct copy of the Southern District of New York's order granting

13

summary judgment is attached hereto

14

26.

as Exhibit 1.

In exchange for a greater share of royalties, Thom Steinbeck and John

15

Steinbeck IV signed an agreement that surrendered "complete power and

16

authority" to Elaine Steinbeck to

17

works, including the power and autho ity to execute contracts in their name,

18

Specifically, the agreement conferred upon Elaine Steinbeck "the complete power

19

and authority to negotiate, authorize and take action with respect to the

20

exploitation ... ofrights in the work ofJohn Steinbeck in which [John

21

Steinbeck IV] and [Thom Steinbeck] have or will have renewal and termination

22

rights."

23

27.

exercise

In order to effectuate the

their copyright interests in Steinbeck's

1983 Settlement Agreement, Thom

24

Steinbeck and John Steinbeck IV sign d identical powers of attorney appointing

25

Elaine Steinbeck as their "attorney-in- fact" to "negotiate and sign contracts and

26

agreements or otherwise take and authorize action on my behalf. . . with respect to

27

the works of John Steinbeck in which

I now have or will have . . . rights under U.S.

28

COMPLAINT

Copyright Law." True and correct copies of the 1983 Settlement Agreement and

the accompanying powers of attorney

3
4
5

28.

are attached hereto as Exhibit 2.

The 1983 Settlement Agiteement stated that it "shall bind the Parties

and their heirs, successors and assigns

29.

Exhibit 2, f 14.

Upon Elaine Steinbeck's death in 2003, ownership of the Early

Steinbeck Works passed to Plaintiff Waverly Scott Kaffaga and the other

beneficiaries named in Elaine Steinbe :k's

Kaffaga, as executor of the Estate, the "the power and authority to negotiate,

arrange, execute, acknowledge,

contre ct

Will. The Will granted Waverly Scott

and deliver . . . any and all contracts for

10

the sale, leasing, licensing, sub-1licensing or other disposition of any literary or

11

other works owned or controlled" by $laine Steinbeck while she was alive. A true

12

and correct copy of Elaine Steinbeck'

THE

13
14

30.

Will is attached hereto as Exhibit 3.

2004 LITIGATION

In June 2004, Thom Steinbeck and Blake Smyle, the sole surviving

15

child of John Steinbeck IV, sued Plair tiff and other Estate beneficiaries, including

16

Elaine Steinbeck's sister, daughter

17

Defendants"), as well as M&O and se /eral other defendants associated with the

18

Steinbeck legacy, in the United States District Court for the Southern District of

19

New York (the "Southern District"),

20

Blake Smyle v. Mcintosh & Otis, Inc., et al, No. 04 CIV 5497 (the "2004

21

Litigation").

22

31.

grandchildren (collectively the "Estate

and

in

a matter captioned Thomas Steinbeck and

Thom Steinbeck and Bla le

Smyle alleged yet again that the

23

defendants had engaged in a conspiracy to deprive them of their rights in the

24

intellectual property of John Steinbeck Specifically, Thom Steinbeck and Blake

25

Smyle asserted claims against the Est te Defendants for trademark infringement,

26

fraud, breach of fiduciary duty,

27

of a constructive trust, and declaratory relief claiming they had effectively

28

terminated publishing agreements witli the Penguin Group ("Penguin") relating to

promissory

estoppel, unjust enrichment, imposition

-9-

COMPLAINT

the Late Steinbeck Works. Under a series of publishing agreements (the "Penguin

Publishing Agreements"), Penguin has the right to publish all the Steinbeck Works.

32.

The Estate Defendants asserted three counterclaims against Thom

Steinbeck and Blake Smyle, including seeking a declaratory judgment that the

1983 Settlement Agreement is valid.

33.

The 2004 Litigation resolved any outstanding questions regarding

ownership of the interests in and contiol over the exploitation of the Steinbeck

Works in favor of the Estate.

34.

The Early Steinbeck Woiks are owned exclusively by Waverly Scott

10

Kaffaga and the beneficiaries of the Estate. When John Steinbeck died, Elaine

11

Steinbeck inherited his copyrights in t le Early Steinbeck Works under the

12

residuary clause in Steinbeck's will. A true and correct copy of John Steinbeck's

13

will is attached hereto as Exhibit 4. See also Thomas Steinbeck and Blake Smyle v.

14

Mcintosh & Otis, Inc., et al, 433 F. Supp. 2d 395, 399 & n.12 (S.D.N.Y. 2006)

15

(Owen, J.). A true and correct copy o 'the Southern District's Opinion & Order is

16

attached hereto as Exhibit 5.

17

35.

In turn, upon Elaine Steinbeck's death, Waverly Scott Kaffaga and the

18

other beneficiaries inherited her interests in the Early Steinbeck Works. Elaine

19

Steinbeck's Will expressly made "no provision for Thom Steinbeck or Nancy

20

Steinbeck, the successor to John [Steinbeck] IV." Exhibit 3, Will of Elaine

21

Steinbeck, Article Sixth. The Second Circuit agreed with the Southern District

22

that, with respect to the Early Steinbeck Works, Steinbeck "bequeathed his interest

23

in these copyrights to his widow, Elaine [Steinbeck]." Penguin Grp. (USA) Inc. v.

24

Steinbeck, 537 F.3d 193, 196 (2d Cir. 2008). A true and correct copy of the

25

Second Circuit's opinion is attached hereto as Exhibit 6.

26

36.

With respect to the Late Steinbeck Works, the Second Circuit rejected

27

Thom Steinbeck's and Blake Smyle's attempt to recapture the rights to these works

28

by terminating the Penguin Publishing; Agreements for the Late Steinbeck Works.
10COMPLAINT

Subsequently, the Southern District dismissed the remainder of the claims and held

that the 1983 Settlement Agreement g ive Elaine Steinbeck complete power and

authority to exploit the Late Steinbeck Works, even if her decisions were "in her

interests and contrary to the sons' interests or objectives." Thomas Steinbeck and

Blake Smyle v. Mcintosh & Otis, Inc., et al, No. 04-5497, 2009 WL 928171, at *2

(S.D.N.Y. Mar. 31, 2009). A true and correct copy of the district court's

Memorandum Decision and Order is alttached hereto as Exhibit 7.

8
9

37.

The Second Circuit affirmed

after oral argument that Elaine

this decision as well, ruling just five days

Steinbeck 's

heirs had complete power and authority

10

to exploit the Late Steinbeck Works. "See Steinbeck v. Steinbeck Heritage

11

Foundation, 400 Fed. App'x 572, 576 (2d Cir. 2010), cert, denied, 131 S. Ct. 2991

12

(2011). With respect to the 1983 Settlement Agreement and the Estate

13

Defendants' ability to exploit the

worl ;s ,

the Second Circuit held unequivocally:

14

15
16
17

18

19
20
21
22
23

The 1983 Agreement

ncreased the

Steinbeck sons'

shares in certain copyright revenue, from one-quarter to

one-third each, and, in return, conferred upon Elaine
Steinbeck "the compl ^te power and authority to
negotiate, authorize and take action with respect to the
exploitation and/or termilnation of rights in the works of
John Steinbeck in which [John Steinbeck IV] and [Thom
Steinbeck] have or wil have renewal or termination
rights."
1983 Agreenient ]f 5.
This language is
unambiguous and forecloses any argument that the
parties intended the Steir beck sons to retain control over
Elaine Steinbeck's exercise of the authority conferred
upon her, as would be necessary to create an agency
relationship.

24
25

Id. (emphasis added). A true and correct copy of the Second Circuit's 2010

26

summary order is attached hereto as Elxhib it

8.

27
28

-nCOMPLAINT

DEFENDANTS' PATTERN OF IMPROPER CONDUCT

1
2

38.

Defendants have refused

to live up to the clear terms of the 1983

Settlement Agreement and the court d scisions interpreting it. Instead, Defendants

have intentionallyand repeatedly-

misrepresented their interests in the Steinbeck Works, and interfered with the

Estate's potential business relationship s and prospective economic advantage with

respect to the exploitation of the

8
9

39.

Notwithstanding the

gnored these decisions and orders,

Steinbeck Works.
Second

Circuit's clear and unambiguous ruling

that Defendants retained "no control" over John Steinbeck's works as a result of

10

the 1983 Settlement Agreement, Defe idants,, individually and through their agents

11

and attorneys-in-fact, have repeatedly asserted that they have so-called "blocking

12

rights" with respect to exploiting the ,ate Steinbeck Works, and in certain

13

instances, even with respect to certain Early Steinbeck Works. These assertions

14

constitute a knowing breach of the

15

contravention of the prior orders of th Southern District of New York and the

16

Second Circuit. Defendants' actions

17

present.

18

40.

19153

Settlement Agreement and are in complete

l|ave been ongoing and continue to the

On April 24, 2009, durin the pendency of the appeal in the 2004

19

Litigation, and despite the fact that Defendants have no control over the

20

exploitation of the Steinbeck Works,

21

filed a letter in The Authors Guild, et al.. v. Google, Inc., No. 05 Civ. 8136 (DC)

22

(S.D.N.Y.), objecting to a global settlement with Google for the publication of

23

John Steinbeck's works and encourag ng other authors in the suit to "stop [the

24

settlement] in its tracks right now."

25

41.

horn Steinbeck and Gail Knight Steinbeck

In September 2009, Defendants sought to derail an agreement with

26

Steinbeck's longtime publisher, PengUin, to publish audio books of the Steinbeck

27

Works. Upon receiving notice from NI&O that the Estate planned to enter into an

28

agreement with Penguin for the audio books, Gail Knight Steinbeck responded that
-12COMPLAINT

she and Thom Steinbeck would not consent to the agreement unless Thom

Steinbeck had "APPROVAL" over the reader and the cover art for audio versions

of all the Steinbeck Works and received an advance in excess of $111,000.

42.

In later correspondence dated November 17, 2009, Defendants,

through Gail Knight Steinbeck, pressured M&O to publish the audio books for all

the Steinbeck Works with their preferred publisher and stated that failing to contact

Defendants' publisher would not be " vorking in the best interests of Thom

[Steinbeck], Blake [Smyle], and Nanc|y [Steinbeck]."

43.

In late November and

eaily December 2009, counsel for the Estate

10

brought this conduct to the attention of.Judge George B. Daniels, United States

11

District Judge for the Southern Districjt of New York.

12

issue at a court conference on December 2,

The Court addressed the

2009, saying:

13
14

I don't want to harshly sjay this, but they can go to their

grave thinking that they deserve more. It doesn't matter.

15

It doesn't matter.

This

issue is decided.

If anybody

decided, you can hand them a

copy of various decisio|ns in this case, including this
stipulation that makes it clear that they have no rights to
assert beyond what the imits are that have been set by
thinks this issue is not

16
17
18

the court. ... I assume

19

a situation, and you

^very time you heard about such

made it clear to them that this has

been in litigation for yeai[s , and to the extent that they are
claiming that they have sbme greater rights than what has
been determined by this court, it should be clear to
everybody and clear to their lawyers who you negotiated

20
21

22

with that there is absolutely no basis for them to do that.

23
24

Conference Transcript, at 8-9. A true and correct copy of the December 2, 2009

25

conference is attached hereto as Exhibit 9.

26
27

44.

Five years later, the Estatp and its beneficiaries are being irreparably

harmed by Defendants' intentional brejach of the 1983 Settlement Agreement,

28

-13-

COMPLAINT

slander of title, tortious interference, i nd total disregard for the court decisions that
2
3

decided the issue of control over the Steinbeck Works.

45.

In 2012, the Executive Dlirector of the National Steinbeck Center in

from Gail Knight Steinbeck purporting to

Salinas, California received several

expressly forbid the National Steinbeck Center from negotiating with the Grammy-

nominated band Mumford & Sons re

Steinbeck, the City of Salinas, Califoifnia, and The National Steinbeck Center.

Gail Knight Steinbeck, on behalfof Tihom Steinbeck and the "Steinbeck Family,"

representedagain in direct contravention of the 1983 Settlement Agreement and

10

the court decisionsthat they controlled the exploitation of the Steinbeck Works

11

with respect to concerts.

46.

12

Cells

arding a concert to help promote John

In 2013, Gail Knight Steinbeck, purportedly on behalf of Thom

13

Steinbeck and the "Steinbeck Family " again interfered with The National

14

Steinbeck Center, this time attempttin? to thwart The National Steinbeck Center's

15

efforts to plan an anniversary celebra ion and create a documentary film

16

concerning The Grapes of Wrath, an Early Steinbeck Work. Gail Knight

17

Steinbeck misrepresented to various l|hird parties that she, on behalf of Thom

18

Steinbeck and the "Steinbeck Family " had control over the exploitation of those

19

rights.

20

47.

Defendants' interference?

with prospective business relationships and

21

economic advantage persists. On Au|gust 14, 2013, Gail Knight Steinbeck signed

22

an email from The Palladin Group to M&O stating that "John Steinbeck's family

23

controls 2/3's of the character rights,

24

parody.

25

48.

and [would] not agree to" a Steinbeck-related

On September 27, 2013; Gail Knight Steinbeck and The Palladin

26

Group, purportedly on behalf of "the family of John Steinbeck," emailed to M&O

27

a "formal demand for a copy of whatever contract you have negotiated for film

28

-14-

COMPLAINT

rights to 'East of Eden,'" threatening ihat M&O must "do what is

interests of the family of John Steinbe|ck

49.

in the best

Starting in June 2013 anc. still continuing as of the filing of this

Complaint, Defendants have interfere 1 with the Estate's ongoing negotiations with

two major motion picture studios for potential projects concerning the making of

(1) a new film version of The Grapes of Wrath, an Early Steinbeck Work, by

DreamWorks Studios ("DreamWorks '); and (2) the making of a new film version

of East ofEden by Universal Studios, Inc. ("Universal") and Imagine

Entertainment ("Imagine").

10

50.

Upon information and belief, Defendants have contacted

11

DreamWorks employees directly and have repeatedly misrepresented their

12

ownership rights and control over the Steinbeck Works. Upon information and

13

belief, Defendants have threatened DJeamWorks

14

continues to work with the Estate on

15

hired outside counsel to address Gail

16

agreed to go forward with negotiator s subject to insisting on indemnification

17

language to address Defendants' claiihs The project is still being negotiated,

18

51.

with litigation ifDreamWorks

ihe Grapes of Wrath project. DreamWorks

Knight Steinbeck's allegations and ultimately

Upon information and belief, beginning in or around March 2014 and

Kni ght

Steinbeck contacted Universal in

19

for several months thereafter, Gail

20

connection with a potential transactic n concerning the making of a new film

21

version of East ofEden. In that conversation, Gail Knight Steinbeck claimed to

22

have blocking rights and insisted that Thom Steinbeck be made a producer on the

23

project.

24

52.

Finally, in October of 2014, the Estate learned that one year earlier

25

(on October 11, 2013), The Palladin Group, Thom Steinbeck, and Nancy

26

Steinbeck, with Gail Knight Steinbeck acting as their "attorney-in-fact," filed a

27

petition with the State Labor Commissioner of the State of California under

28

Section 1700.44 of the California Labor Code (the "Talent Agencies Act"). The
-15COMPLAINT

petition alleges that RWSG Literary gency, a sub-agent of M&O negotiating

the Talent Agencies Act by operating

various deals for the Estate, had violated
vi

without the proper license. A true an(p correct copy of Defendants' Petition to

Determine Controversy (the "Petition '), No. TAC-33186, is attached hereto as

Exhibit 10.

53.

The Petition is the latest salvo in Defendants' campaign of

business relationships. The Petition, a

interference with the Estate's prospective

public filing, is replete with miisrepresentat ions concerning the Steinbeck Works,

Specifically, the Petition asserts that ibefendants "either own[] or control[] 2/3" of

10

the Steinbeck intellectual property at ssue; that "[a]ll literary contracts for the right

11

and title to John Steinbeck's works list Petitioners as Author"; and that there is not

12

a "clean chain of title" to the Steinbectk Works at issue. Each of these statements is

13

utterly false. See Exhibit 10 at 2-3.

14

served the Petition on the sub-agent a year after it was filed, on September 29,

15

2014, and directed the sub-agent to fi e and serve an answer. The Estate was made

16

aware of the Petition on October 1, 20 14 by M&O.

17

54.

he California State Labor Commissioner

On October 10, 2014, an article about Defendants' Petition appeared

18

in the Hollywood Reporter. In the article, Gail Knight Steinbeck falsely states that

19

"RSWG has no right to make any

20

getting their agreement, and they do i|iot have that consent." Gail Knight

21

Steinbeck's statement represents a blatant interference with the Estate's

22

prospective economic advantage, is a breach of the 1983 Settlement Agreement,

23

and is made in contravention of the jjudicial

24

York and the Second Circuit. Those court decisions and the 1983 Settlement

25

Agreement make clear that Defendants do not in fact

26

consulted before the Estate exploits

27

article, titled Steinbeck's Family FilSs Complaint Against L.A. Agent, is available

ded

without consulting with the family and

cny

orders ofthe Southern District ofNew

have any right to be

Steinbeck Work. The Hollywood Reporter

28

-16-

COMPLAINT

at: http://www.hollywoodreporter.com/thr-esq/john-steinbeck-s-family-files-

739992.

55.

laintiff has demanded that Defendants cease

To no avail, counsel for

their interference in breach of their otl igations under the 1983 Settlement

Agreement. On September 16, 2013, counsel for Plaintiff notified Defendants in a

letter that their interference with the

obstruct and likely will devalue the transaction not only for the Estate and its

beneficiaries but for Thom [Steinbeck] and Blake [Smyle] as well." The letter

requested confirmation that Defendarts would agree "to cease and desist from

10

interfering with the Estate's 'complet authority' to negotiate and enter into a

11

transaction with DreamWorks on behalf of the Estate, its beneficiaries and Thom

12

[Steinbeck] and Blake [Smyle]."

13

56.

potential DreamWorks transaction "may well

Defendants responded through Gail Knight Steinbeck, stating (falsely)

14

that "legitimate assertions of legal rig'hts do not impermissibly interfere with the

15

[Estate's] right to negotiate with anyone

16

57.

Most recently, on September 4, 2014, counsel for Plaintiff notified

17

Defendants that it had come to Plaintiff s attention that Defendants had been in

18

direct contact with Universal and Imd;gine employees in connection with the

19

potential making of a new East ofEdzn motion picture, and had falsely claimed to

20

have "blocking rights" over any r

21

their interference "is destructive, threjatens the success of the project and

22

jeopardizes the Estate's ability to exploitit the Steinbeck Works and properly protect

23

them." Counsel received no responses

24

58.

deal. Counsel notified Defendants that

In view of Gail Knight Steinbeck's interferenceand unaware that

25

Gail Knight Steinbeck had filed a clalim with the California Department of

26

LaborRWSG Literary Agency advised that it would no longer work with M&O.

27

Other sub-agents working with M&(|) have come forward seeking indemnity from

28

the Estate to shield themselves from :he Defendants.

-17-

COMPLAINT

IRREPRABLE HARM TO PLAINTIFF

1
2

59.

Unless permanently e njo ned by this Court, Defendants will continue

to engage in the foregoing conduct, including their continued breach ofthe 1983

Settlement Agreement, slander of title, and their intentional interference with

potential business relationships and prospective economic advantage by

misrepresenting their authority with respect to the exploitation of the Steinbeck

Works. Defendants have made, and, unless enjoined, will continue to make

statements that are false, misleading, and contrary to the prior court orders of the

Southern District of New York and the Second Circuit,

10

60.

Defendants' conduct has

sparked a series of news articles that have

11

cast doubt over the Estate's complete authority to exploit the Steinbeck Works.

12

For example, on October 23, 2014, th13 Associated Press published an article about

13

the California Petition. The article,

14

ations read by millions of people, parrots the

service to more than 1,000 publicati

15

Petition's false allegation that"'Thomas Steinbeck 'either owns or controls' 66.6

d stributed through the Associated Press's wire

17

percent of domestic rights" to the Ste nbeck Works. Multiple news outlets
reprinted the Associated Press article. including ABC News, Salon, and the United

18

Kingdom's Daily Mail. In addition,

19

Service published a similar article on the Petition. The Associated Press article (as

16

on

October 14, 2014, the Courthouse News

21

published by ABC News), titled Steifbeck Heirs Fight Over Control ofMovie
Rights, is available at: http://abcnews go.com/Entertainment/wireStory/steinbeck-

22

heirs-fight-control-movie-rights-264 0093. The Courthouse News Service article,

23

titled Fight Over Rights to John Steir beck Novels,, is available at:

24

http://www.courthousenews. com/2014/10/14/72408. htm.

20

26

Defendants' conduct ha^ caused and will continue to cause Plaintiff to

suffer irreparable harm for which there is no adequate remedy at law. Defendants'

27

conduct has interfered with and will continue to interfere with the Estate's ability

28

to negotiate with third parties to exploit the Steinbeck Works. As a direct result of

25

61.

-18-

COMPLAINT

Defendants' interference, parties have been reluctant to enter into business

relationships with the Estate, have asked for indemnification from the Estate

against claims by Defendants, and ha^ e caused third parties to reject opportunities

to exploit the Steinbeck Works.

62.

Defendants' false and

misleading claims that Defendants have rights

with respect to the exploitation of the Steinbeck Works has caused and will

continue to cause irreparable harm to Plaintiff in that such misconduct (1) deceives

third parties who are interested in partnering with the Estate in the exploitation of

the Steinbeck Works; (2) damages the Estate's reputation and ability to negotiate

(3) damages the Estate's goodwill with third

10

favorable terms for such transactions

11

parties; and (4) undermines the Estate 's ability to engage in future projects for

12

exploitation of the Steinbeck Works

13

FIRST CLAIM FOR RELIEF

14

BREACH! OF CONTRACT

15

16
17

63.

Plaintiff incorporates herein by reference all of the allegations and

averments contained in Paragraphs 1 through 62 of this Complaint,

64.

Elaine Steinbeck was a

party to the 1983 Settlement Agreement,

18

which granted her certain rights such as the "complete power and authority to

19

ith respect to the exploitation" of the Late

negotiate, authorize and take action with

20

Steinbeck Works and the power to

21

her "sole discretion." Plaintiff and the Estate's other beneficiaries now hold all of

22

Elaine Steinbeck's interests in and ri hts deriving from the 1983 Settlement

23

Agreement.

24

65.

mike

Plaintiff has performed

decisions concerning their management in

jill ofthe Estate's obligations under the 1983

25

Settlement Agreement, and Defendants have received increased royalties pursuant

26

to the 1983 Settlement Agreement fop- more than 30 years.

27

28

-19-

COMPLAINT

66.

The 1983 Settlement Agreement is binding upon the executors,

administrators, successors, represental ives, heirs, and assigns, of Elaine Steinbeck,

Thom Steinbeck, and John Steinbeck

67.

V.

Defendants have breached the 1983 Settlement Agreement by, inter

alia, interfering in and impairing the ^state's exploitation ofthe Steinbeck Works,

improperly claiming Defendants have control over the exploitation of the

Steinbeck Works, and ignoring orders of the Southern District of New York and

the Second Circuit, which have interp eted the 1983 Settlement Agreement and

clarified that Defendants retained no

a[uthority or control over the exploitation of

10

the Steinbeck Works. By their conduct , Defendants also have breached the

11

implied covenant of good faith and fa r dealing with respect to the 1983 Settlement

12

Agreement.

13

68.

As a result of Defendants ' material breaches of the 1983 Settlement

14

Agreement, Plaintiff has incurred and continues to suffer damages. So long as

15

Defendants continue to breach the 19$3 Settlement Agreement, the Estate's ability

16

to exploit the Steinbeck Works is sevenely impaired and the goodwill and value of

17

the Works is irreparably harmed.

SECOND CLAIM FOR RELIEF

18

DECLARATORY

19
20
21

22

69.

Plaintiff incorporates

RELIEF - 28 U.S.C. 2201(a)

here in by

reference all of the allegations and

averments contained in Paragraphs 1 ;hrough 62 of this Complaint,

70.

An actual controversy exists with respect to Defendants' assertions of

23

rights and interference in Plaintiffs ekercise of its complete power and authority

24

over the Steinbeck Works.

25

71.

Defendants relentlessly have contended, on their own and through

26

their agents and attorneys-in-fact, tha t they have the power and authority to control

27

the Steinbeck Works, which they do not have. Defendants have thereby interfered

28
-20-

COMPLAINT

with and impaired Plaintiffs ability successfully to exploit the Steinbeck Works to

the detriment of Plaintiff and the Estate

72.

s other beneficiaries,

Defendants have already had a full and fair opportunity to litigate the

scope of their rights relating to the Stdinbeck Works in both the Southern District

of New York and the Second Circuit

73.

In the Southern District and Second Circuit, Defendants already

litigated whether they retain any control over the Steinbeck Works and whether

they retain ownership interests in the arly Steinbeck Works,

74.

The Second Circuit held

that "[t]he 1983 Agreement increased the

10

Steinbeck sons' shares in certain cop> right revenue, from one-quarter to one-third

11

each, and, in return, conferred upon Elaine Steinbeck 'the complete power and

12

authority to negotiate, authorize and tike action with respect to the exploitation

13

and/or termination of rights in the

14

Steinbeck IV] and [Thom Steinbeck] lave or will have renewal or termination

15

rights' .... This language is unam bi: ?uous andforecloses any argument that the

16

parties intended the Steinbeck sons to retain control over Elaine Steinbeck's

17

exercise ofthe authority conferred upon her, as would be necessary to create an

18

agency relationship." Steinbeck v.

19

572, 576 (2d Cir. 2010), cert, denied 131 S. Ct. 2991 (2011). The Second Circuit's

20

decision was a final judgment on the

21

75.

wo*ks

of John Steinbeck in which [John

Steinbeck Heritage

Foundation, 400 Fed. App'x

merits.

Defendant Thom Steinbeck

was a party to all relevant litigation in the

Upon information and belief, Defendants

22

Southern District and Second Circuit

23

in Group are in privity with DefendantThom

Gail Knight Steinbeck and The Palladin

24

Steinbeck.

25

76.

Accordingly, by this act on, Plaintiff seeks a judgment pursuant to 28

26

U.S.C. 2201 declaring that, under tie doctrine of collateral estoppel, the

27

decisions issued by the Southern District of New York and the Second Circuit

28

Court of Appeals interpreting the 19*13 Settlement Agreement bar any claim of
-21-

COMPLAINT

right that Defendants might assert with respect to (1) control over the Steinbeck

Works and/or (2) the ownership of the Early Steinbeck Works.

THIRD CLAIM FOR RELIEF

SLANDER OF TITLE

6
7

77.

Plaintiff incorporates herein by reference all of the allegations and

averments contained in Paragraphs 1 through 62 of this Complaint,

78.

The Estate is the sole and

exclusive owner of all copyrights in the

Early Steinbeck Works and has the so e and exclusive power to control the Late

Steinbeck Works.

10

79.

Defendants have slandered the Estate's title to the Early Steinbeck

11

Works and rights in the Late Steinbec Works and damaged the Estate's ability to

12

exploit the Steinbeck Works. Defendants have made false claims of ownership and

13

repeatedly have represented both to the public in general and directly to various

14

entertainment entities with which the

15

some authority to exploit the Steinbecjk Works.

16

80.

state is negotiating that Defendants have

Defendants' representations regarding their ownership of the Early

17

Steinbeck Works and ability to contro|l the Late Steinbeck Works are false, and

18

Defendants have made such representjati ons intentionally, maliciously, and with

19

utter disregard for the truthfulness thereof.

20
21
22

81.

As a consequence of Defendants' conduct as alleged herein, the Estate

has incurred actual and special damai.<es in an amount to be proven at trial.

82.

The Estate has also incurred significant attorneys' fees and costs in its

23

attempt to remove the cloud Defendants have placed on the Estate's ownership of

24

the Early Steinbeck Works and control over the Late Steinbeck Works, including

25

but not limited to attorneys' fees incurred

26

83.

in this action.

Defendants' conduct is Willful and malicious.

27
28

-22-

COMPLAINT

FOURTH CLAIM FOR RELIEF

INTENTIONAL INTERFERENCE WITH

PROSPECTIVE ECONOMIC ADVANTAGE

5
6

84.

Plaintiff incorporates herelin

in by reference all of the allegations and

averments contained in Paragraphs 1 through 62 of this Complaint.

85.

The Estate has an economic relationship with several entertainment

entities in an effort to exploit and pron ote the Steinbeck Works, including but not

limited to M&O, Penguin, DreamWorks

:s, Universal, and Imagine.

86.

Defendants have knowledge of each of these relationships, as

of those entities concerning the Steinbeck

10

Defendants have made contact with all

11

Works and the relationship between those

12

87.

Defendants' intentional acts

entities and the Estate,

of interference are designed to disrupt

13

these relationships between the Estate ind various entertainment entities, as

14

Defendants have asserted falsely to

15

Defendants have "blocking" rights or' approval" rights with respect to certain

16

content, that they control two-thirds of the "character rights," and that M&O does

17

not have authority to enter into a moticjn picture deal for East ofEden. Defendants

18

have further asserted falsely in a publlie filing that there is not a "clean chain of

19

title" to certain Steinbeck Works, and tlhey have asserted falsely in at least one

20

news article that they have the right to be consulted. Finally, Defendants have

21

threatened one of the Estate's potentia business partners, DreamWorks, with

22

litigation if DreamWorks worked with the Estate on a film project involving The

23

Grapes of Wrath.

24

88.

one

or more of the entertainment entities that

The Estate's relationships have been disrupted, and Defendants'

25

actions have proximately caused the Estate economic harm. Defendants' conduct

26

has delayed realization of potential transactions with film studios and has

27

significantly increased the risk and cos|t to the Estate of engaging in negotiations

28

with DreamWorks, Universal/Imagine and other third parties.

-23COMPLAINT

1
2
3

89.

Defendants' intentional

atts are independently wrongful as they are

misrepresentations in breach of the 19 33 Settlement Agreement.

90.

Defendants' conduct is wHllful and malicious.

PRAYEIL FOR RELIEF

WHEREFORE, Plaintiff prays br judgment against Defendants as follows:

A.

For a declaration that, under the doctrine of collateral estoppel, the

decisions issued by the Southern District of New York and the

Court of Appeals interpreting the 198 Settlement Agreement bar any claim of

10

right that Defendants might assert witlh respect to (1) control over the Steinbeck

11

Works and/or (2) the ownership of the Early Steinbeck Works;

12

B.

Second Circuit

For a permanent injunction (1) preventing Defendants and their

13

agents, servants, employees, successoi's , assigns, and all those acting under their

14

control, from representing in any forum that they have any ownership interest

15

whatsoever in the Early Steinbeck Wdrks and/or any control over the Steinbeck

16

Works; and (2) requiring Defendants 1o retract or withdraw all representations they

17

have made regarding their purported cjwnership interest inthe Early Steinbeck

18

Works and/or control over the Steinbeck Works;

19
20
21

22
23

C.

For judgment and damag es against Defendants for breach of contract

in an amount to be determined by the Court;

D.

For judgment and damag es against Defendants for slander of title in

an amount to be determined by the Cqurt

E.

For judgment and damag es against Defendants for intentional

24

interference with prospective econom c advantage in an amount to be determined

25

by the Court;

26
27

F.

For punitive and exemplary damages in an amount to be determined

by the Court;

28

-24COMPLAINT

G.

For attorneys' fees, costs. pre- and post-judgment interest; and

H.

For such other and furthe r relief as

the Court deems just and proper.

3
4

Dated: November 10, 2014

JENNER & BLOCK LLP

5
6

/s Andrew J. Thomas

By:

Andrew J. Thomas

Attorneysfor Plaintiff Waverly Scott

Kaffaga, as Executor ofthe Estate of

Elaine Anderson Steinbeck

10
11
12

13
14
15
16
17
18
19
20
21

22
23
24
25
26
27

28

-25-

COMPLAINT

JURY DEMAND

3
4

Plaintiff Waverly Scott Kaffaga as Executor of The Estate of Elaine

Anderson Steinbeck, respectfully requ 3sts a jury trial on all issues so triable.

5
6

JENNER & BLOCK LLP

Dated: November 10, 2014

/s Andrew J. Thomas

By:

Andrew J. Thomas

Attorneysfor Plaintiff Waverly Scott

Kaffaga, as Executor ofthe Estate of

10

Elaine Anderson Steinbeck

11

12
13
14

15
16
17
18
19
20
21

22
23
24
25

26
27
28

-26-

COMPLAINT

EXHIBIT 1

102

STEINBECK V. STEINBECK

o*

DEC

198?
81 Civ. 6105

ENDORSED

memoMandum
/O

p;

OWEN, District Judge

Plaintiffs are the two sons

in

,,/o/m

:i
ecorc

/rt /\\

of the author John Steinbeck. Defendant is

By letter dated January 21, 1974, the

Elaine Steinbeck the author's second V fe.
plaintiffs
authorized Mcintosh &Otis, Inc.
entirety of which is reproduced below to distribute
royalties which had accumu("M&O"), John Steinbeck's literary agentv paying 50% to
defendant and 25% to each
lated on certain of the author's works t-y
b;es have been distributed
to the parties as

plaintiff. Since that time, such royalty

provided in the agreement.

Plaintiffs have brought this action to contest the royalties distribution

to receive a one-third share of the

plan. They now contend that they are entitled
that
the
21,1974 agreement is void
royalties each. Moreover, they contenp, mentations,January
overreached]
and possibly
because defendant made "misrepr
itiffs1
signing
of
the
agreement.
Defendant
[committed] fraud" at the time of plai
e
agreement.
itt
now moves for summary judgment on*v
As set forth in full below,

- agreement is specific and unambiguous in

the

to defeat defendant's motion for summary

its division of certain royalties. In order s must do more than allege fraud or
judgment on the agreement, plaintiffs

bolster their allegations of

misrepresentation in conclusory terms, Plaintiffsmust
In
their
affidavits,
plaintiffs say no more
malfeasance with competent evidence

about the circumstances leading to their signing of the agreement than the
following:

Based on discussions with my step-mother I was led to

believe that the divi :ion contained in my letter was

what I was entitled tip

At no time was I informed by

her or Mcintosh <5c Ot|is that there was any question as

to the legalty [sic] of that split of royalties.

Absent a more particularized affidavit contesting the particulars of the

to summary judgment on the contract.

contract-making, defendant is entitledomplaint
is dismissed. E., Saratoga Vichy
Defendant's motion is granted and the com

Spring Co., Inc. v. Lehman, 491 F.Supp. 141, (N.D.N.Y. 1979), affd, 615 F.2d 1037 tad
Cir. 1980).

Submit order on notice.

Dated:

Li.

o
txl
o

December o , 1982
New York, New York

United States District Judge

'..

EXHIBIT 2

SETTLEMENT AGREEMENT

Whereas, John Steinieck ZV and Thom Steinbeck

commenced an action in the United States District Court for
the Southern District of New York entitled John Steinbeck IV

and Thom Steinbeck v. Elaine Steinbeck, 81 Civ.

6105 ("the

Action"); and

whereas, Elaine Steihbeck filed an answer in the

Action denying the material allegations of the complaint as '&

amended and liability therefor^ and asserting various affir

mative defenses;

and

whereas, Elaine Steinbeck moved for summary judgmeat, which motion was granted on December S, IS82; and

Whereas, the Action "as dismissed with prejudice on

December 28, 1982, and judgment, in favor of Elaine Steinbeck
was entered on January 3, 1983

and

Whereas, John Steinbeck IV and Thom Steinbeck filed

a Notice of Appeal to the United States Court of Appeals for

the Second Circuit; and

whereas, John Steinbebk IV and Thom Steinbeck have

stated their intention to file an action against Elaine

Steinbeck for copyright infringement in connection with the

foreign exploitation of the worjcs of John Steinbeck, and

against Mcintosh and Otis, Inc. ("M * 0") for breach of

fiduciary duty, and have indicated that they may seek to

challenge the will of John Steinbeck

(hereinafter collect

ively referred to as the "Unasser ed

Claims "); 'and

Whereas, John Steinbeck IV and Thom Steinbeck and

Elaine Steinbeck (hereinafter the "Parties") are desirous of

settling the Action and the

Unasserted Claims in order to

avoid .the burdens and expenses of further litigation,

It is hereby agreed tha
1.

Elaine Steinbeck

shall pay to John Steinbeck IV^

and to Thom Steinbeck $66,876.30 each, which amount represents the difference between one- half and one-third of the

net royalties received through

December 31,

1982 from the

domestic exploitation during ..their copyright renewal terms of

entered their copyright

those works of John Steinbeck

renewal terms after his death (the "renewed works") and"their

derivatives which were .initially
terms of the renewed works.

As

l)icensed during the renewal

use

phrase "renewal term" shall mean

d in this Agreement, the

the

47* year term granted

pursuant to the U.S. Copyright Law , 17 U.S.C. 304(a), irrespective of whether there has

4m

been

a. termination of grants *

and/or renegotiation of rights pursuant to 17 U.S.C. 304.

2.

The Parties shall ea:h be entitled from Decem-

ber 31, 1982 forward to receive

-third of the net royal-

on*

ties received from the domestic

iloitation during their

copyright renewal terms (a) of the

renewed works and their

derivatives which were initial .y licensed during the renewal

terms of the renewed works and maybe licensed in the future;

and (b) so long as all the

Parties

of John Steinbeck which will

terms in the future and their

enter

are alive, of those works

their copyright renewal

derivatives which may be

initially licensed during such renewal terms.

Upon the death

ies payable under this

of any of the Parties, all ro yaltiei
Paragraph shall be paid to the deceased party's executors,
administrators,

successors,

representatives, heirs and

assigns.
3.
trators,

Elaine Steinbeck or her executors, adminis-

successors,

representa tives , heirs and assigns are

the sole owners of all foreign copyrights in the works of

John Steinbeck and all rights

deriving therefrom and shall be

the sole recipients of all roya ties earned from the foreign

exploitation of the works, of Jo]hn Steinbeck and their derivatives, including but not limi ed to: (a) all works which
entered their renewal terms afttsr John Steinbeck's death; and

(b) all works which will enter iheir renewal terms in the
future; and John Steinbeck IV

ar d

Thom Steinbeck hereby re

linguish all present and future claims thereto; provided,

however, that royalties earned

from sales outside the United

States of the United States publishers ' editions of the

Renewed works shall be shared ^n accordance with the terms of

paragraphs 1 and 2 above.
4.

All sums due and

owing to John Steinbeck IV and

to Thom Steinbeck under paragraphs 1 and 2 of this Agreement

shall be paid to them through their attorneys, Lowe, Bressler
l Kaufman, 2700 Que Street, N.W , Washington, D.C.

5.

The Parties hereby appoint M * 0 as their

literary agent to administer in the future, as it has in the

past", all copyrights and rights deriving- therefrom in the

works of John Steinbeck.

Said Appointment shall be termi

nable solely af the discretion of Elaine Steinbeck.

Elaine

SteinbecJc and/or her agent shall have the complete power and
authority to negotiate, authorize and take action with

respect to the exploitation and/Dr termination of rights in

the works of John Steinbeck in wpich John Steinbeck IV and
Thom Steinbeck have or will have

rights.

In order to effectuate i.e terms of this Paragraph,

John Steinbeck IV and Thom Steinbeck shall each execute,

simultaneously with the execution of this Agreement, an
irrevocable power of attorney in favor of Elaine Steinbeck in

the form attached hereto as Exhibit A.

6.

Elaine Steinbeck ani/or the literary agent

shall maintain an accurate set of .books and records reflec

ting royalties earned from the donestic exploitation of the

Hbrks of John Steinbeck in whitfch John Steinbeck IV and Thom

^Steinbeck have or will have renewal rights and shall, without
notice or demand, provide them with semi-annual accounting
statements.

7.

This Agreement si All supersede the letters

dated January 21, 1974 from

beck IV and Thom Steinbeck,

Elizabeth R. Otis to John SteinWith

the. exception of said let-

and confirm all existing con*

ters, the Parties hereby ratify

tracts and agreements previous ay executed by them or by M ft 0

on their behalf with respect tc those works of John Steinbeck?

in which they have rights under the U.S. Copyright Law.

8.

Simultaneously with the execution of this

Thom Steinbeck shall execute

Agreement, John Steinbeck IV

and

a release in favor1 of Elaine

Steinbeck in the form' attached

"

hereto as Exhibit B.

9.

Simultaneously wi th the execution of this

Agreement, John Steinbeck IV

and Thom Steinbeck shall execute

a release in'favor of M i 0 in

the form attached hereto as

Exhibit C.

10.

Within five days

Agreement, John Steinbeck IV

anl

after the execution of this -p

Thom Steinbeck, through

their attorneys, Lowe, Bressler s Kaufman, shall withdraw the

Notice of Appeal referred to he ein and hereby agree never to

assert the Unasserted Claims.

11.

settlement shall be kept

The terms of thi

confidential and shall not be communicated in any way to any-

one other than the Parties and iheir heirs, successors and
ountants, and M&O and its

2ssigns, their attorneys and ac

attorneys, except to the extent that disclosure may be required by law.

12.

This Agreement represents a compromise of the

of the Unasserted Claims

claims asserted in the Action

and "is not and shall not be con strued, represented or trgue
to be an acknowledgment of the merits of the claims asserted

in the Action or the Unasserted Claims, or an admission of-

liability on the part of Elaine

13.

Steinbeck or M s O.

This Agreement shall not be modified in any

way except by a written aigreement signed by the Parties,

14.
This Agreement sjhall bind the Parties and
their heirs, successors'and ass igns".

Jtes**

Ilaine Steinbeck

j&-^^

rthr. S-.embecx IV

'.-.ZZ. SCir.OC;

Power of Attorney

I, Jchn Steinbeck IV, hereby irrevocably appoint

Elaine Steinbeck my attorney-in*: act to act in my place,, to

the extent I am permitted by law to act through an agent or

attorney-in-fact, as follows: to exercise toy rights of

grants to third parties and

renewal and rights to terminate

make new contracts and grants

and to negotiate and sign

ami

assignments of copyrights,

contracts

wise"take and authorize action

on

and agreements and other-

my b:..ialf, directly or

'through such agents or attorneys -in-fact as she, in her sole

discretion, may appoint, all sol ly with respect to the works
of John Steinbeck in which I now have or will have renewal or

termination rights under the U.S Copyright Law.

John steinoecjc iv

Dated:

EXHIBIT A

&W

'/

-OS'S

Power of iattorney

I, Thom Steinbeck, he eby irrevocably appoint

Elaine Steinbeck ray attorney-inffaet to act in iry place, to

the extent I am permitted by

attorney-in-fact, as follows:

liit
tD

to act through an agent or

exercise .oy .: ghts of

renewal and rights to terminate grants to third parties and

make new contracts and grants and assignments of copyrights,
and to negotiate and sign

contracts

and agreements and other-

wise take and authorize action on ray behalf, directly or

through such agents or attorne ys -in-fact as she, in her sole
discretion, may appoint, all so lely with respect to the works
of John Steinbeck in which I ncw have or will have renewal or
termination rights under the U. S. Copyright Law.

om Steinbeck

Dated;

Vcbv-uctwi^
Z"itvCO
^
EXHIBIT

sWSl-

IWUHB tWjttt John Steinbeck IV

u RELEASOR

i coaaideraiioa of the sum of sixty six thousand eight hundred seventy six and 30AM dollars
($66,876 30),.

and other good and valuable consideration

veeived from

Elaine Steinbeck

as RELEASEE,

epeipt whereof u hereby acknowledged, releases aad discharges

Elaine Steinbeck
tie RELEASEE; RELEASEES heirs, executors, sdmutisrators. successors andassign* from allactions, eauees of action, suits, debts, dues, sums o{ money, accounts, reckonings, bonds,
tub, specialties, corcsaaie, contracts, controversies, agreements, pro sues, vanaaces, trespasses, damages, judgments, extents,.'
xecutJom, claims, and demands whatsoever, in law, admiralty or sqaity, which against the RELEASEE, the RELEASOR,
lELTASOR'S heirs, executors, administrators, successors and assign i ever had, bow have or h*ieaher can, shall or may, have'
or, upon, orbr reason of saynatter, cause or dung whatsoever from the beginning of the world to the day of the date of this,
IELEA5E- except such claims as may arise from the obligations set
forth in the Settlement Agreemen t between the Releasor
and Releasee executed contemporaneously herewith

Whenever the lex! hereof requires, the use of singular number shall include the spprepnnle plural number as the text of
e within instrument may require.

This RELEASE mar sot be changed orally.

In SttXtf55 EUpxrnf. the RELEASOR has hereunto set

RELEASOR'S hand and seal on the

fn pnstnrs of /&2&U <L /Y)tCHdjL.

-LS; '

,*m^ti

ATt of i '6l0e*e&

On

COVSTY OF S^U./t^U

as..

F&BZtifii^ }& 19 93 before me rfaZgM }?)*/"**&*-

r-onallv ***JcHh ^72r/,-/-&? .<" tZ.

me -ncwr.. ana known to me to be the individualisi described in.

\x.o.<\'A'^vo lo me that

he

and who executed the foregoing RELEASE, and duly

executed the same.

.2^

fy "*"

***.# # -*! , a #*# ##* m *K #**f* #/rasts>e1, 4*if bm#w -m *fXf/fI"* smM

........

fern a* s *

.*v#

2CnHin Sfjat Thom Steinbeck, rti<n-

Th(-*r*-J

^K.i"U;

4>

m RELEASOR,

consideration of the sum of Sixty SIX thousand eight hundred seventy six jnd 30A00 dollars
and other good and valuable
received from

cons.deration

(566,876 30 ),

Elaine Steinbeck
RELEASEE,

receipt whereof is hereby acknowledged, releases and discharges

Elaxne Steinbeck
the RELEASEE. RELEASEES heirs, executors, sdminav

debts, dues, sums of money, accounts, reckonings, bonds, t

traiora, successors and assign* from all actions, causes of action,
ITonuses,
variances, trespasses, damages, judgments, extents*
bills, speaalnes, covenaniv contracts, controversies, agreexaenia,
eeiiitr,
which against the RELEASEE, ihe RELEASOR,
executions, claims, and demands whatsoever, in law, sdmiraltr <r
i
ever
had.
now have 01 hereafter can, shall or may, hare'
RELEASOR'S heus, executors, administrators, successors and ass gns
the
beginnmg
of the world to the day of die date of diss.
for. upon, or bv reason ofaav matter, cause or thmg whatsoever from
from the obligations set
RELEASE., except such claims as may arise

su'ta,

forth xn the Settlement Agreement between the Releasor

and Releasee executed contemporaneous ly herewirh.

y|V^^JJJvVfyTV^3-w^^^-?ag CENEIUI AOCNOWU DGfcKMT

State or California

Countynt - ^r ^

Onmis tne t

.}

.dayol

a.

U. .<.

*.;.. v j

fl.v > l'"~ ' **< <" t

t9A_rbaiofeme.

__.

llyiappeared
> ihe undersigned Notary Public, personalty

V~

. X..'

personally

krown tome

"j proved 10 me on tne basis of satisfactory evidence

i^
aupscnteata melooetnepersonis) wnose nameis*
witninmstrumeri

and acanowiesjtc tr.at

WITNESS my na^C andolficia-sea

A

*S&SI&iS>4&aSei&

tU<K

lary's Signal f

3?^a9E>^^^>^gia^^^

rU

.executes.t

JfliaHI (J&ljaf Thom Steinbeck ft**;

T. it,.in4 utt \\i. (K* ^ y^c

-RELEASOR;

a consideration of the sum of

One dollar and no/lO(

and other good and valuable

teeivcd from

consideration

Mcintosh and Otis, Xnc

($1.00

),

as RELEASEE,

veespt whereof is hereby acknowledged, releases and discharges

Mcintosh and Otis, Inc.

d^ RELEASEE, RELEASEE'S heirs, executors, admana?;

mors, successors and assigns from all actions, causes of action, suits, ebta, does, sums ofmoney, accounts, reckonings, bonda^
21s, specialties, covenants, contracts, controversies, agreements, pron
pr uea,
es, vananeea, trespasses, damages, judgments, esnsnts,
tccntioiut claims, and demands whatsoever, m law, admiralty or ..wfwity,
)ity, which against the RELEASEE, the RELEASOR,
ELEASOR'5 heirs, executors, administrators, successors aad assignsl eever
v
had, now have or hereafter can, shall ormay, have
, upon, or byreason of any matter, cause ordung whatsoever from tie beginnmg ei the world to the day of the date of dual
ELEASE.

V
^^^^*^J^&^**J-M**^?S2!Zem CEMCRALACKNOWLCDOHCNTSSSSZi
State ofICalifornia
California

"'.,

\>fil;AAf^J

On thisthe //''a

ieJ3befp/e me.

i.

County

the undersigned Noi

Ncjiary Public, personally appeLbred

tc(<

to/cfta* vi.wu. ..'tiNW

0 personally know|n 10 me
& provedto me on Ihe basis ol satisfactory evidence
>

.v

"1

**

to be the personal vthose name(s)

>S
within Instrument, a id acknowledged that
''*->

WITNESS my hand Adjoificiaiseai.

ii :.
... _

_i*.-.--t f.-C

^~h I

sunsenbofl 10 tne
*eaiafl u

/ (

^^

Notary's Signature

f* i* ...r* ..., f. ,.| ., mml &0 ...

..... ~J.~*. ** -.. MttHftr- mSM .~M * ...

TOTAL P IS

fc

EXHIBIT 3

*SiMg^ftft&^^
&sM^@^^^

Pl0l1ttfij
f((a:xiA)))

ELAINE ANDERSON STEINBECK

Prepared By:

Steven K. Aronoff, Esq.

475 Park
nue South, 23rd Floor
New York, .,^w York 10016

I, ELAINE ANDERSON

STfclNBECK, of the City and State

being of sound and d:. sposing mind and memory,

of New York,

do

hereby make, publish and declare this instrument as and for my Last
Will and Testament, hereby revoking

ell other and former Wills and

Codicils by me at any time heretofore

FIRST:

direct

that

all

made.

just

mv

testamentary expenses shall be paid

a 3

debts,

funeral

and

soon as my estate is able in

the judgement of my Executrix.

SECOND:

A.

I give,

devise

^nd bequeath the proprietary

lease and stock certificate relating to apartment 34D located at

190 East 72nd Street,

New York,

New York 10021,

as well as the

contents therein to the extent I own the same at my death,

daughter WAVERLY SCOTT KAFFAGA.

to my

The bequest of this proprietary

lease and stock certificate and the

blequest of its contents shall

be free of any estate tax whatsoever, and notwithstanding the fact

that other bequests under this last Will may be reduced in the

event my residuary estate does not contain sufficient assets to pay

estate taxes and administration expenses

The reasonable costs of

appraising, packing, storing, shipping and insuring all articles

disposed of in this Article

shall be paid as an expense of

administering ray estate.

B. If my daughter, WAVERLY S0OTT KAFFAGA, predeceases me
then

give

and

bequeath

the

proprietary

certificate relating to apartment 34If>

Street, New York,

New York 10021,

lease

located at

190

and

stock

East 72nd

as well as the contents therein

to the extent I own the same at my death to a group consisting of

1

<yJ

my grandchildren DAVID SCOTT FARBEfc

ZACHARY KAFFAGA,

ANDERSON FARBER RUNKLE, ROLAND

,tad BAHAR KAFFAGA to be divided

JEBEL KAFFAGA,

among them as they may reasonably determine.

The bequest of this

proprietary lease and stock certificate and the bequest of its

contents

shall

be

free

estate

any

of

tax

whatsoever,

and

notwithstanding the fact that o their bequests under this last Will

may be reduced in the event my

res

iduary estate does not contain

sufficient assets to pay estate t ax.es and administration expenses,

My Executors, in their sole and absolute discretion, may divide

these assets as they may deem apprcpriat e if ray beneficiaries shall
not agree.

The decision of my

Exe rutors

as to the composition and.

equality of such shares shall, iae final and binding upon my

articles

which' my Executors consider

inappropriate for my beneficiaries

shall be sold and the proceeds

beneficiaries,

and

any

thereof added to my residuary es tate.

The reasonable costs of

appraising, packing, storing, shi^pdng and insuring all articles

disposed of in this Article

be paid as an expense of

shall

administering my estate.

C.

I give,

devise and bequeath all my real property

located in the Village of Sag Harbcjr , Town of Southampton, Suffolk

County, New York, including all building , fixtures and improvements

extent I own the same at ray

thereon, and contents therein to t|he

death, to a Trust dated October 2

1999 between ELAINE ANDERSON

STEINBECK as Grantor and EUGENE H.

WINICK AND STEVEN FRUSHTICK as

Trustees. The devise of my Sag Harbor real property and the bequest
of its contents shall be free of

iny

estate tax whatsoever,

and

:fM

notwithstanding the fact that other bequests under this last Will

may be reduced in the event my resiiduary estate does .not contain

and administration expenses.

sufficient assets to pay estate taxe

THIRD:

A.

I give and bequeath to Stanford University my

late husband's Nobel Prize Certifiicat e and Medal, to be held by it

Late husband's literary works

together with its collection of my

and materials.

B. I give and bequeath any interest that I may own in R.

W.

Downey Inc.,

a New York corporation

ANDERSON BOONE and RAE W.

my sister,

her companion,

DOWNEY,

severally, or their survivor.

to

JEAN

jointly and

The devise of any interest that I

may own in R. W. Downey Inc. shali.

be free of any estate tax

whatsoever, notwithstanding the fact that other bequests under this

last Will may be reduced in the event my residuary estate does not
contain sufficient assets to pay est at,e taxes and administration
expenses.

C. I make the-following

specific bequests to ray daughter,

WAVERLY SCOTT KAFFAGA:

1. An antique diamond

the center surrounded by twelve

ring with a large diamond in

smali.er diamonds;

2. A gold necklace witth small, round, gold beads;

3. A large gold link bracelet; and
4. A small olive wood

;ross with a gold disc in the

center.

If my daughter, WAVERLY SCOTT KAFFAG , shall predecease me, then

these bequests shall lapse and these

it ems

shall be considered part

f/V>-

mw

of my residuary estate.

FOURTH:

I give and bequeath

tie

portrait of John Steinbeck

by the artist Bo Beskow to THE stein: jeck

OF CALIFORNIA AT SAN JOSE located in San
FIFTH:

CENTER AT THE UNIVERSITY

Jose, California.

the sum of FIFTY THOUSAND

A. I give and bequeath

DOLLARS ($50,000.00) to each of my five grandchildren. DAVID SCOTT

FARBER (subject to Article NINTH I ), ANDERSON FARBER RUNKLE,

ROLAND ZACHARY KAFFAGA, JEBEL KAFFAG^ , and

BAHAR KAFFAGA.

If any

of ray grandchildren shall predecease me, then I give his or her

share to his or her lineal decedents, if any, per stirpes.

If any

of my grandchildren shall predecease me without living decedents

then the specific bequest given to lira or her in this paragraph
shall lapse.

SIXTH:

I have specifically made no provision in this my Last

Will for my stepson, THOMAS STEINBECK, or NANCY STEINBECK, who has

asserted succession rights to the interest of my deceased stepson
JOHN STEINBECK IV.

from the exploitation of

SEVENTH: All copyrights and proceeds

copyrights whether owned or c:ontroi:.ed

limited to those relating to the

works

by me, including but not

of my late husband, JOHN

STEINBECK, and my own, I give and benjueath as follows:

ANDERSON BOONE, one-quarter thereof
A.

To my sister JEAN

during her lifetime, and upon her dea .h or if she shall not survive
I give and bequeath her share to her friend, RAE W. DOWNEY
during his lifetime if he is surviving and upon his death or if he

me,

shall not be surviving, then I give

aiid bequeath this bequest to my

t**>

five grandchildren, DAVID SCOTT

FARIER

(subject to Article NINTH

ZACHARY KAFFAGA, JEBEL KAFFAGA,

B.) , ANDERSON FARBER RUNKLE, ROLAND

and BAHAR KAFFAGA, in equal shares pursuant to the provisions of

Paragraph SEVENTH D. of this Will.

B.

To my sister, FRANCES A&DERSON ATKINSON, one-quarter

thereof during her lifetime, and upon her death or if she shall not
survive me,

I give and bequeath her share to her husband, JOHN

ATKINSON during his lifetime if he is surviving, and upon his death

or if he shall not be surviving,

then

I give and bequeath this

bequest to my five grandchildren

DAVID

SCOTT FARBER (subject to

Article NINTH B.) , ANDERSON FARBER RUMKLE,, ROLAND ZACHARY KAFFAGA,%

:qual shares pursuant to the

JEBEL KAFFAGA, and BAHAR KAFFAGA in

provisions of Paragraph SEVENTH D. of

C.

To

my daughter,

this Will.

WAVE3LY

SCOTT

KAFFAGA,

one-half

thereof during her lifetime, and upon !ier death or if she shall not
survive me, I give and bequeath the

same

DAVID SCOTT FARBER (subject to Articl^

to my five grandchildren,

NINTH B.) , ANDERSON FARBER

RUNKLE, ROLAND ZACHARY KAFFAGA, JEBEL KAFFAGA, and BAHAR KAFFAGA,

pursuant to the provisions of Paragraph

D.

SEVENTH D. of this Will.

All copyrights and proce ids from the exploitation of

copyrights owned or controlled by me

which shall be distributed to

my five named grandchildren shall be Administered and distributed

pursuant to this provision.

The

property shall be divided into a

sufficient number of equal shares to

cjreate one share for each of

my five named grandchildren, and if

any

shall not survive,

such

deceased grandchild's share shall be a located to his or her issue

A*

-""""

'

"!"' '^"'"^W'WIffWWI

in equal shares, per stirpes, and if there be no issue surviving,

''

such deceased grandchild's share sshal 1 be added in equal portions

to the shares allocated to my other jrandchildren, or, if any are

not surviving, to their surviving is sue, per stirpes.

E. As a condition precedent to any beneficiary receiving

in this paragraph SEVENTH, a

an interest in the assets set forth

beneficiary must agree to be bound by the terms of a Special Power

of Attorney between ELAINE ANDERSON StCEINBECK and EUGENE H. WINICK
or his successor as Attorney-in-Fact in effect at the time of my

death, relating to certain copyrigh|t s

and

other

matters.

The

beneficiary will signify his or her agreement to be bound by that

Special Power of Attorney by signing

of Attorney

document including a Power

aiy

reasonably required by the

holder

of

the

power,

provided that the beneficiary shall Execute said document within

one month of his or her receipt of it

Said Power of Attorney or

other document shall include a provis ion whereby the beneficiary

shall

renounce

and

revoke

in favor

successor.Attorneys-in-Fact all right

the Attorney-in-Fact and

of

f the beneficiary himself or.

herself to perform any of the acts or exercise any of the rights

enumerated in the Power of Attorney

or

other document.insofar as.

they relate to the copyrights created by, John Steinbeck; his

literary works and their subsidiary and derivative rights and
renouncing all right to unilaterally
EIGHTH:

All the rest,

residue

revoke such Power of Attorney,

aad

remainder of my estate,

both real and personal and wheresoever situate, of which I may die

seized or possessed,

including withoikt limitation all property

&

r?

'* acquired by me or to which I

become

may

entitled

after

the

execution of this Will, and all pr operty herein attempted to be

disposed of, the disposition whereof by reason of lapse or other

give, devise and bequeath as

cause shall fail to take effect,

follows:

A. One-Half

(M) to my daughter

If my daughter, WAVERLY SCOTT

shall predecease me, then

KAFFAGA

this bequest shall not lapse, but

WAVERLY SCOTT KAFFAGA.

shall

be distributed to her issue

in equal shares, per stirpes.

B. One-Fourth (K) to my s

ster, JEAN ANDERSON BOONE.

If

ray sister, JEAN ANDERSON BOONE, s&all predecease me, then this
bequest shall lapse.
C. One-Fourth (M) to my si:;t:er FRANCES ANDERSON ATKINSON.

If my sister, FRANCES ANDERSON

ATKIKSONI,

shall predecease me, then

this bequest shall lapse.

NINTH:

A.

If, pursuant to

tais

Will, all or any part of my

in a' minor or minors, for

estate shall vest in absolute owner ship

which other provisions have not spe ifically been created by this
Will, I authorize and empower my

Trust

hold the property so vested in any

in a separate trust fund for the

invest and reinvest the same,

such

minor, or any part thereof,

benefit of such minor,

collect

during the minority of such minor,

ees, in their discretion, to

Uo

principal thereof and so much of th<*

and to

the interest therefrom and,

pay or apply so much of the

net income therefrom and any

accumulated income to the proper sup port

, education or maintenance

of such minor as my Trustees shai:. see fit and to accumulate,

i&

West'and reinvest the balance

said income- until such minor

of

shall attain the age of twenty-one (21) years and thereupon to pay

the then principal, together with any accumulated income, to such

minor. If such minor shall die be fore attaining the age of twentysipal together with any accumulated
one (21) years, the then princi

authority conferred upon my

estate of such minor.

the

income, shall be paid over to

Trustee

The

s by this Paragraph NINTH A.

shall be construed as a power oijxly,

and shall not operate to

suspend the absolute, ownership of such property by such minor or to

prevent the absolute vesting thereof in such minor. With respect
to any property held under this Earagraph NINTH A., my Trustees
s, discretions and immunities
shall have all the powers privilege
conferred upon them elsewhere in

is
thi

Will and shall be entitled to

commissions at the rates and in the: manner payable to testamentary

to give any bond or other
trustees, and shall not be re qui: red

security for the faithful perf ormaiLce of their duties hereunder in

any jurisdiction whatsoever.

Any payment hereinabove authorized

shall be in full discharge to my

B.

Anything

in

Trustees

ttiis

with respect thereto,

will

to

the

contrary

notwithstanding, any bequest or de-< ise to my grandson, DAVID SCOTT

FARBER, except as described in Article THIRD B., shall not be given
to him, but instead shall be set apurt and shall be held, IN TRUST,
for the benefit of my grandson, DAVID SCOTT FARBER; and the

>AVID SCOTT FARBER, or apply for

Trustees shall pay to my grandson,

his benefit so much or all of the

nst

time or times and in such amounts,

as

income of such share, at such

the Trustees, in their sole

?A>

^nd absolute discretion, may deem

'iWHWjBWjll|

advis able. The net income which

shall not be paid to or applied fEor

the benefit of my grandson,

DAVID SCOTT FARBER, in any year shall be added to the principal of

such share at the end of such year

shall be held, administered

ard

and disposed of as a part thereof.

(1) The Trustees shall pay ;o or apply for the benefit of

or all of the principal of

my grandson, DAVID SCOTT FARBER, so

such share, at such time or times and in such amounts, as the

Trustees,

in

their

sole

and

absolut e

discretion,

may

deem

advisable.

(2) Upon the death of my grandson, DAVTD SCOTT FARBER,

the

Trustees

shall

distribute

undistributed income of such share

remaining

the

principal

and

his then living issue, per

to

stirpes, or, in default of such issue to my then living issue, per

stirpes. If any portion of such shar^

issue of mine for whom a share

hereunder, then anything herein to

shall become payable to any

shall
the

then be held in trust

contrary notwithstanding,

such portion shall not be paid over to such issue but in lieu
thereof shall be added to his or her share to follow the

disposition thereof in all respect s as to both income and

principal.

C. Anything in this will to :he contrary notwithstanding,

any bequest or devise to my sister,

FRANCES ANDERSON ATKINSON,

shall not be given to her, but insteac shall be set apart and shall

be held, IN TRUST, for the benefit o my sister, FRANCES ANDERSON

ATKINSON; and the Trustees shall pay tio my sister, FRANCES ANDERSON

&

ATKINSON,' or apply for her benefit so much or all of the net income

of such share, at such time or t imes and in such amounts, as the

Trustees,

in

their

sole

4bsolute

and

advisable. The net income which shall

discretion,

deem

not be paid to or applied for

the benefit of my sister, FRANCES ANDERSON ATKINSON,

in any year

such share at the end of such

shall be added to the principal o

year and shall be held

may

administered

and disposed of as a part

thereof.

(1) The Trustees shall

my

sister,

FRANCES

pay

to or apply for the benefit of

ANDERSON ATKINSON,

principal of such share, at such

so

much

or

all

of

the,

tine or times and in such amounts,,

in their sole anc. absolute discretion,

may deem

(2) Except with regard to paragraph SEVENTH B.,

upon the

as the Trustees,
advisable.

death of my sister, FRANCES ANDERSO|N ATKINSON, or if she shall not

survive me,

I give and bequeath

her

share

to her husband,

JOHN

ATKINSON during his lifetime if he is surviving, and upon his death

or if he shall not be surviving,

the remaining principal and

then the Trustees shall distribute

undistributed income of such.share to

her then living issue, per stirpes, or, in default of such issue,

to ray then living issue, per stirpes

If any portion of such share

shall become payable to any issue

mine for whom a share shall

then

be

held

in

trust

hereunder,

of

then anything herein to the

contrary notwithstanding, such port ion shall not be paid over to

such issue but in lieu thereof shaljL be added to his or her share

to follow the disposition thereof in all respects as to both income

10

reimmmmm

and principal.
TENTH:

Whenever in this Will ny Trustees are authorized or

directed to apply any income or principal to the support, education

and maintenance of any minor, my Trustees in determining the amount

to be so applied is authorized, in tieir discretion, to disregard

and not to take into consideration tha amount of income receivable
by such minor from other sources or the amount of such minor's
independent property or the extent to which such minor may be
entitled to support by a parent or aiy other person
Whenever in this Will my Trustee s are authorized or directed

to apply any income or principal to the support, education and

maintenance of any minor, my Trustees are authorized, among other

methods, to pay all or any part of such income or principal, at any

time and from time to time, to such minor, or the person with whom

such minor may reside, without bond or security, and my Trustees

shall not be bound to see to the application or use of any payment
so made.

ELEVENTH: A.

I hereby nominate, constitute and appoint my

daughter, WAVERLY SCOTT KAFFAGA, as Executrix of this Will. If my

daughter, WAVERLY SCOTT KAFFAGA, shall

fail or cease to act for any

reason, to act as Executrix of this will, I appoint my sister, JEAN

ANDERSON BOONE, my grandson, ROLAND ZACHARY KAFFAGA and STEVEN

FRUSHTICK to act as substitute Exerutors.

If one of these

Executors shall fail or cease to act fur any reason, to act as Co

Executors

of

this

will,

appoint

substitute Co-Executor of this will.

11

EUGENE

WINICK

to

act

as

The survivor of the named

parties shall act as sole Executor

B. I hereby nominate

and Trustee.

cor.st itute

and appoint ray daughter,

WAVERLY SCOTT KAFFAGA, as Trustee cf any trust created by this will

except for any trust created for

If my daughter, WAVERLY SCOTT

grandson, DAVID SCOTT FARBER.

my

KAF]'AGA ,

shall fail or cease to act

for any reason, to act as Trustee cf a trust created by this will,

I appoint my sister, jean ANDERSON
act as substitute Co-Trustees.
or STEVEN FRUSHTICK

and STEVEN FRUSHTICK to

If my sister, JEAN ANDERSON BOONE,

shall fail or cease to act for any reason, to

act as Co-Trustee, I appoint EUGENE

Trustee.

BOONE,

WINICK to act as substitute Co-

The survivor of the four :iamed parties shall act as sole

Executrix and Trustee.

constitute and appoint my' brother

C. I hereby nominate

in law, JOHN ATKINSON, as Trustee of

created for my sister, FRANCES

any trust created by this will

ANDEILSON

ATKINSON. If ray brother in

law, JOHN ATKINSON, shall fail or c sase

to act for any reason, to

act as Trustee of a trust created

nephew, JON ATKINSON, to act as

by this

will,

substitute Trustee.

I appoint my
If

my nephew,

JON ATKINSON, shall fail or cease tc act for any reason, to act as

Trustee, I appoint my sister

JEJlN

ANDERSON

BOONE

to

act

as

substitute Trustee.

D.

I hereby direct that

be required of my Executrix and

no

bond or other security shall

Trust ees

the faithful performance of their

duti es

or their successors for

as such,

whether because

of nonresidence or otherwise.
TWELFTH:

I give my Executors

and

Trustees

and

substitute

12

lrY>

Executors .and

Trustees

the

fullest

and ^y^lflPW

powe;:

matters and questions and to do all acts which I might or could do

if l-iving,

including,

without

complete

limi.taticn

power

and

authority to invest (without restriction

o investments permitted

by law), sell (at public or private sale,

:or cash or credit, with

or without security) , mortgage, lease and dispose of and distribute

in kind, all property, real and personal, at such times and upon
such terms ,and conditions as they may deem advisable, and the power

and authority to negotiate, arrange, execut , acknowledge, contract

countries throughout

and deliver in the United States and in

a LI

the world, any and all contracts for the

sal e,

leasing, licensing,

sub-licensing or other disposition of any iterary or other works

owned or controlled by me, and of any subsiic iary rights therein, on
such terms and conditions as they shall deen proper with respect to

any one or more of such works and for any period hereby directing
that the consent of both Executors and Tfrustees,

acting jointly, shall be required in all

matters relating to the

disposition of any literary or other .works,

me, and of any subsidiary rights therein,
or controlled by me or interests in the

when two are

owned or controlled by

and

any copyrights owned

sane

THIRTEENTH: Should any person entitle^

to share in my estate

either as an heir at law or as a legatee or devisee under this

will, or any trust related thereto, contes ; or oppose or seek to

set aside this will, or any trust related thereto, or establish any

legal right to share in my estate, or any irust related thereto,

other than as approved and provided in tlhis will, I give and
13

bequeath to each such person the sum oi:

expressly direct that he or she shall

One i^iWd'J
receive no other or further

share in my estate and the share to which any such person might
otherwise have been entitled had he or she not participated in the

contest or opposition or to which

entitled

had I

died

intestate,

or

lie

g:.ve,,

she

might

devise,

have

been

and bequeath,

equally, share and share alike, to the other legatees and devisees
mentioned in this will, other than the issue of the contesting

person, who may not have joined in tho contest or opposition and
should all such devisees and legatees join in opposition of this

will, then the shares of each such one which would otherwise have.

gone to him or her under this will,

cive, devise and bequeath to

Ic

my heirs at law according to the law of

succession of the State of

New York then in force, excluding each and all of such contesting

heirs, devisees and legatees and their

FOURTEENTH:

A.

I direct

that

issue.

estate,

c.ll

inheritance or

inter ist and penalties thereon)

other death taxes (including any i

payable by reason of my death in resspect to any property included

in my Estate for the purpose of coraput Inrxg such taxes, whether or

not such property shall pass under

tins

generation-skipping transfer tax which

may

Will,

except

for any

be payable under Chapter

13 of the Code, be paid in the first instance by my Executors,

timat e burden of the balance
However, I further direct that the ulti

of,., such taxes and charges shall be apport ioned among and collected

from the respective distributees and

gross taxable estate, including

benefiiciaries

distributee s

sharing in my

for all manner of

14

&

property passincpin1*

[SrTraFMo-'L-atta'?'beneficaries>
manner outside my Will,

specifically noted in Articles

Artie 1 es

further authorize my Executors to take

necessary to collect these taxes and

and

SECONE

distributees of personal property in

such

from

any property

distributees

THIRD,

and

SECOND and THIRD,

as

the

action as may be

charges from the distributees

and to withhold such

and beneficiaries responsible therefor,

amounts

the

excluding on iy

distributable

otherwise

to

any

distributee or beneficiary hereby made responsible for their

payment.

B.

me which may

With respect to any dispos in ion of property made by

become subject to a generati|:m-skipping transfer tax

upon or after my death, the Executors and

Trustees shall have the

following duties and powers:

(1)

With respect to any disposition of property

onder this Will which shall be a direct skip (from a trust or

Dtherwise), any generation-skipping trans: er tax shall be paid by
ny Executors or the Trustees, as the case njay be, from the property

hich is the subject of the direct skip.

(2)

The unused portion of my generation-skipping

:ransfer tax exemption shall be allocated by my Executors as my

Sxecutors, in their sole and absolute di secretion, may determine;
ind any allocation made by the Execut:ors shall be binding and
inclusive on all persons interested in
FIFTEENTH:

All genders referred

any
to

such transfer.

in my Last Will and

Testament and any Codicils thereto shall be interchangeable so that

IS

9^

_,.. m. -iw
ences are made in tai s Will

shall also be intended to include

IN WITNESS WHEREOF,

in the masculine they

he feminine,

hereunto set ray hand

I have

to this my Last Will and Testament

and seal

this 9-1 day of October, 1999.

2JbJuu il 5&6ca.
ELAINE ANDERS! ON

On this <2>7 day of October, 1999,

signed

and

sealed

at

the

end

as and for her

this foregoing instrument was

thareof,

published and declared by ELAINE

named Testatrix,

STEINBECK

and

at

the

ANDERSON STEINBECK,

Last

same

the

Will and Testament,

time

above
in the

presence of each of us, and we thereupon did, at the request of the

said Testatrix, in her presence, and in the presence of each other.

sign our names as witness thereto.

O L_^vy>w.

residing ct Z3> Vic-r^Ww La-aj*

residing at

residing a

16

12*1 6tM/ /t,j#*clift rjyEf ^fe-,2nHR.

Tieney G4-y} ti.T. 0^3o^

STATE OF NEW YORK

)
ss

COUNTY OF NEW YORK

Lawrence B. Copperman, Lloyd Milttenthal and Marcia Light,

jointly and severally, depose and say

STEINBECK.

Said ELAINE

I am acquainted with ELAINE ANDERS DNthe end of the annexed

ANDERSON STEINBECK signed her name atiter 29, 1999, at 475 Park
instrument, bearing the date of Octob

Avenue South, 23rf Floor, New York, N

Y , on said date, in the

witness. At the time of

declared said
S
the%ame, said BLAINE ANDERSO*st STEINBECK
Will and Testament, and
instrument so signed by her to be tet the end of said instrument

Presence of myself and other subscribing

I
thereupon signed my na%fa^tn^Etl
ANDERS DN
at the request of said ELAINE ANDERS

STEINBECK,

and in her

..
STEINBECK

was then over the age of

presence. Said ELAINE ANDERSON _
If sound mind, memory and
twenty-one years, and in my opinion, raint, or in any respect
understanding, and not under any re the said other subscribing
incompetent to make a Will. I also saw ss at the end of# said
witness sign his or her name as witaess
at the request and in the
S3

instrument and know that he or she did

presence of said ELAINE ANDERSON STEINB

Rtrt 3CK
by ELAINE ANDERSON
The signing of the Last Williwad Testament
AFlONOFF, an attorney at law
STEINBECK was supervised by STEVEN .. Dffices at 475 Park Avenue
of the State of New York who maintains signed my name as witness

South? New York, N.Y., 10016-6901, and

under his supervision.

SWORN TO BEFORE ME THIS

29th DAY OF OCTOBER, 199J

STEVEN K.ARON0FF

Notary Public State el Ne* York

No. 31-4610726

Qualified In NewYorkCounty

Commission Expires Mm u 00,1*.

Oct-. 31,1*?*

17

EXHIBIT 4

JOHN EJUEST STEIVIBSCK, now nsidir.3 in

the State of

Hew York, do hjraby oake, publish and declare this i wtruaint

bo oy. Use Hill and Testanest, hereby revoking every

to

Will and

Codicil heretofore made by aia.

FIRST: I direct oy Executors to pay ay ju|st debts end
funeral expenses out of my es Cte as coon 3fter my decease as nay
be practicable,
SECOND:

I give and bequeath to 07 sister, ZUZAVZTA

STEINBECK AINSTORTH, now o Pacific Grove, CaHfomli), if she sur

vives m, the sua of Twenty rivs Thousand dollars ($p,0OC.0O).

THIRD:

(a)

If- I shall die prior to Decern >=r 31, 1976

(i) and my son, THOM ST2IH3ECK, survive ma, I give

and bequeath the sun of Fifty Thousand Dollars (550, )00.) to oy

Trustees hereinafter named, in trust nevertheless,

fur the follow-

lng uses and purposes: To collect and receive the i1; icons
and co pay over the net incosia to- ay said son THOM

os

quarterly paysencs as may be practicable curing his

later than December 31, 1974; if my son TUoa be Uv

near

ifa but no

IS
<G

on that

ipel of Che

date, the Trustees shall transfer and convey the pr

trusc to him; if my son Thoa shall die before Decesibir

leaving him a child or children hin surviving, then

thereof

31, 1974,

itpon his death

I direcc iay Trustees to transfer a.id convey the print ipal

trust, eogethtx with any undistributed income there ft on ,
child or children nia survivins, in equal shares, but

of said
to his

in the event

there shall be. no child'or children of his then livii , then I di-

rect ny Trustiies to transfer and convey the same to

ty

5on, JOHN

STEINBECK IV, if he be then living, and if he be not then living,

I7
A ;1

then to ray wife, ELAINE;

(ii) and if oy son Thorn

have predeceased as, then

shall

X give and bequeath the said sum of 550 ,000. Co hia child or children
me surviving,, in equal shares, and if there be no child or children

of his then living,' than to ny ssic 3 in

John, if he chall then be

living, and if he be not than living, then to ay tria, Elaine,

'

(h)

If I shall die after December 31, IS74,

(1)' aid my son Thoa survive

, then I give and bequeath

the caid sua oi; $50,000. to oy said 1

(ii)

Thoa;

and if he shall have pi cdeccasedmc, chen I give and

Bequeath the soid sum of $50,000. to

his child or children ma our-

wiving, in eq'u;il shares, and if there

his then livin;;, then to my said son

be no child or childran of
JiBH

if he shall then be living,

and if ho be nut then living, then to ay wife, ELAINE.

FOURTH:

(O

If I shall die prior to December 31, 1974

(i) andcy son, JOffil STEIS5' ;CK I?, survive me, I give

and bequeath t'w cum of Fifty Thousand Dollars (550,000.) to ny

Trustees hereinafter named, in trust n< vertheless, for tho follow-

ing uses and purposes:

To collect and

receive Che income thereof

and to pay over the neC income to my si id

son JOHS in cs r.ear

quarterly payopnts as may be prsctlcoblo during his life but no

later than December'31, 1974; if ay scr John be living 0= chac dace,

the TrusCees shall"transfer and convey

him; if oy son John shall die before

the principal of the trust Co

Da :eabs r

31, 1974, leavicg hia

a child or children him surviving, then upon his death I direct ny

Trustees to transfer and convey the pri jcipa

ipal of said trusc, together
with any" undintributed income therefrem

surviving, in equal shares, but in the

to hia child or children hia

svenc there shall be no child

or children o.<! his Chen living, Chen I iirecc my Trustees to transfer.

-2-

\\

and convoy the .ama to my son, TKOM SasICTECK, i

he be then living,

ATM;

and if he be nob then living, then Co my wife,

(ii) -and if my son John shall have pr id.cceased ma, then

I give and bcqusaca the said sum of 550,000. Co

me surviving, in equal shares, and if there be

'tis child or children

child or children of

a)

bis Chen living', then Co my said son Thorn, if he

shall then be living,

and if he be not then living, then to my wife, E

sine.

If I shall dia after December }l. 1974,

(b.)

(i) and ny son John survive me, then I give and -lequeath
!

the said aum oi1 $50,000. Co my said son John;

(ii) !and if he shall have predeceased me, then I give and

bequeath the et[id sum of $50,000. Co his child oj

children roe surviv-

Ing, in equal ijhares, .and if Chare be no child oi

children of his Chen

living, then Co my aaid son THOM if he shall ehei, be livitis, and if be

be not then li>ring, Chen to my Wife, ELAINE
:R
Ffffil: I give and bequeath to ?.UTH FLETCHER

by ma la my ho:je) the sua of Five Thousand Dollads

'"

(now employed

($5,000.). .

SIXTS:' All the rest, residue and rema index of cay property

and estate, be the same real or personal, of uhs {soever kind or nature,
and wherever Cpa same may be situate, I give and bequeath Co my wife,

ELAINE, if she| shall survive maj if sha shall not siirvive me, I give
the said rest,! residua and remainder of my proper ty and estate, in

equal shares, (a) tb my Trustees, or (b) to my sofis

Thoa aad John or

' their respective children, as Che case may be, to be held, invested

. and distributejd in manner identical Co that which

X directed in the

bequests set <iut in paragraphs THUU) and FOURTH ft ireof, respectively,

SEvJOTH:

die sinultaaeousIn the eveaC my wife and I shfcll

sr

ly or under siich circumstances as Co render it iraposslble to determine who predeceased the 'ochcr, I hereby declare

-C

to be my will and

I direcc that;I shall be deemed to have predeceas

td

oy wife and that

wj Will and any,and all of ics provisions shall ba construed on

chat assuapcion.j
i

EIGHTH:

In connection with tha trusts harairiefsro sot

out, during the .'term thereof coy Vuatees may pay or apply any part
or all of the principal thereof

or auch respective child's care,

support, maintenance, edueacion <tr welfare co such extent and ac such

times and in em;h manner as my Trustees in their absolute discretion

i

shall deem advisable.without cour

order and payaent of any part of

the crust res c<> one child of n

shall noc be related to any pay

meet to the pthcir child of mica

i

HIBTH-J

To- carry ouC th > becvsi:5 recited in paragraphs

SECOND Co and including FLTTli and Co pay ny debes, funeral expenses,

administration <Sxpenses and estati. Cases sec ouc in the following paragraph TEinH, I direct thsc qy Ex cucors shall noc sell any property
of mine which Ijtsy own either in fca or represented by chares in a

cooperative corporation in which 1 ctaincain my homes, unless the seme

be absolutely essential co permit the funding of the said bequests
and other items[in this paragraph uencioned, it being my intention

so far is' possible chac such propc rty used by tie as hcaas of p^n* com
stltute part ofj.tlut residuary estc e to which my wife Elaine msy be
entitled hereunder.

TENTHS

I direct my

Executors

to pay out of ay residuary esr

cate and as'sh 'ispense of adoinis t i a tion, all escace, crinsfcr and in-

heritence taxes-|and other taxes o a 6iailar r.acura, which may be eubstituted for -or added to the forej:gC ing
ng, levied or imposed upon my estace or upon this transfer of proper ty or righes or interests aa a re-

suit of oy deata, whoever arising

political subdl?lson thereof.
r

! .

of any federal, state or other

Ko bisneficiary of mine shall be called

upon to reimburse my Executors fo:

ELEVE-ilTH:

oat

aaym2nt of che foregoing.

in the event a legacy shall bo payable or deliver -

able hereunder to an infanc and 3uct legacy shall- be in property

or in coney, than my .Executors and Trust sas are copovored to de*

liver the ssmo in their discration to a jarent oi such infant or

the person with whom such infcnt shall rjsida, or a aecaral guardian
of the property of such infenc, find upon receiving a written eekaov-

ledgment from nuch person to whom the sa a

shall have hoea delivered

that such nersiW agrees Co hold' the saas for the benefit of such

infant, ny Exeirutoro and Trustees chill be acquitted of any further

of auch legacy.

responsibility with respect Co th paycrp

TwELVTH:

In addition Co such potrers cenferrad upon chem

by law, I suth'jrize- my Executors end Tr

tees:

(a) ..To coaproni6o any claim i n favor or or which may be

asserted again?-? my escate or Ernsts hereunder;

(b) ,To sell, exchange, pledg* , eortgage or otherwise dts-

pose of ox encumber any. property held b>

tham at public or privcte

sale, at such [price, for cesti or portly

or wholly upon credit, and

generally, upon such terms aa cy Executera

and Trusteas oay deea

proper; to extend any bonds end mortgegt s which may be or beeoma

part of my estate or uhich may encumber any property consticnticg

an asset ". my estate; to reduce the pr .ncipal and the rate of interest therein provided end to codify

cipal and interese.'as well is other

the
teiiss

(c)' To retain property and

tian of peymant of printhareof;

ts made by oa; and

iitvcsc

to acquira in .exchange for assets ox oy estate, and to purchase,

lease or licetae for purposes of

investient ,

kind and natura, real, personal and

aix-d ,

property of every.

tangible and intangible,

whether or not, the same, be o a kind authorized by tha laws of the

State of New Vork;-

(d) . To oaka distributions he evader

kind or partlj! in kind with securities

and trusts.

ia their discretion in

>r other property of ny estate

(e) To deal ir. end vi

h tha litzxzvy properties whicn

i=cy constitute* a pert of c-/ escac =,

cichsv directly or ehrcush

literary cg^nl.o, and co ccquiro z :-i cianoss of cthar interests in
literary prosxarcics in coraaeticn with the exploitation of righes
in literary properties coaatituciu.3 a pert of ay estate, in ell
respects, co fully as I could do i

living; sod in ill suoh trans-

actions, to cjoclcdo the sacs cpoc cuch teres as my Executors and

Trustee?, la their sole c unrett red juij-ssnC, msy bslieva to be
advantageous Co my. estate. It Ls

=y

purpose to icvast iay Ssccutcrs

and Trustees Pith che fullest pose find authority to deal in end
wich rights in literary properties realising ths coBpLaaity-and
difficulty oi: exploiting t! 3a=s ddvantasaously and dasiriajj chat

they ohall be: uahac^srei in any resfscz in turnip to account the

rights Chever'ja. end making or as~:ndi ig contracts with respect therato.
I specifically espaver'ay fcosutors end Truotees until th expiretioa of the last of the United Scat: o statutory copyrights end re-

neuola oiraad by ne or in which I aaj havc any incerest at the tiaa

of my death, end renewals to which

*7 Executory may be entitled and

which may be secured by thaa for sue benefit of ny estate, to hold,
manage and'exploit eaid copyrights, md all coaaoa law ar.d foreign

copyrights in y vorIcs,.end che rig!

rigb.13 and iatvt-esto therein, as in

thia subdivision'- (e) set forch. ity

^secutorE end Trustees shall not,

however, ba.li-d.ted as-to che pasiod of any ossignmsnts, licenses or

other contr:icts relating thereto,

cadi

by them.lt being ay intention

chot although title in fiuch copyright: , rights end Interosts aaall vest
in accordance with .the provisions of 'his Will, chey BhsU ba iyjldj
managed and; exploited by my Exceptors and Trustees. If my Executors or

8)

'

Trustees shall deem it ccr.ver.iest co or^anis ; a corporation to

hold title tti my copyrights, I cuthcrirc cad esjoner chea co do

so and make iiuch assignments .thereto ns are

pprcpriatc and to

provide for control of che corporation os thi:y

(f)

ee fit,

To vote by prosy all shares or stock which may bo

or baeotw: ps:;C of my estate; to deposit any s ecuricifcs (including

in said term "securities" wherever used in tils Will, all evi-

dences of indebtedness, instruments securing saise, stocks and

rights and interests therein) which may be or become part of my
estate, in their.uncontrolled discretion, wi t i any protective or
reorganization committee or croup, or with a

trustee or trustees

under a protective or reorganization agreemen : for the safeguard-

lug, of holdeara of such cLass of sccuriCy, oz ifith i truscee or

trustees appointed by any court or jud;a then of for : similcr

purpose, and to make payoents out of ny etate necessary for .the

expenses of such committee, group or trustee, or to enable my
Executors to exchange the security so depositqd for new or substituted securities.

(b)

To place end leave cli or any p :rt

of the funds

or securities .at any tiro held in ay general e :tate or in any

trust esCats'.in Che cere and custody of finy

batk or trust coEpany;

to have all stocks and registered securities p- it

in the name of

such bank cr trust company or in the na=e of

nominee; to sp-

H:s

point such bank or trust ccrpany the agent and attorney of tho
Executors r of the Trustees, as che case may i e, to collect, re-

ceive, receipt for and disburse any income, r.c

ganerally, to

perform al.'l and every the duties and services ijneident to a so-

-7-

-called "custodicn account".

1 direct that cha chrrses sr.d e-.;-

penses of such bank or trust co:i?07;y :*. such 2t;oroey, s^snt, or

custodian shall be a proper chir^; 2c7. iinst

ir.ccaa.

;-?hilu said

funds end securities zzs in t'.w care ; r.d custody of 2ny cuch

bank or trust (iompscy, cs aforesaid,

he Executors i d also che

Trustees shall be under no obligation co inspect or to vsrify

che saoa, nor ithall thoy in finy event ba responsible for tho loss
or misapplication of any securities or funds so left by them in
the custody of such" bank or trust ccomp my

(h)

To hold any property in beerer form or to register

any securities held by them hirsuncar

(i)

n tie naca of a nominee,

To sign, seal, scfcncvle !;;e end deliver any and all

instruments it. writing which chey in '

ir sale and absolute di3-

cretion may dues appropriate or advisatl e Co carry out any of tha

foregoing powcira, ntid, generally, to

deal

with ray general estate

or any trost us cote as in cheir judgmsi t the best business inter-

ests of my general escace or of ouch

crustt

estate may require,

Any obligations -incurred by any such ir

in|ctru3Lint ir. writing sicned
by the Executors shall be discharged only cut of the assets of my
general esCaCe in their bonds and shall noc create any personal

liability on'.the'part of che Executors

Any obligations incurred

by any such Instrument in writing slgne^ by

the Trustees of any

of the trusttj hereinbefore created shai: . b discharged only out of

cha assets oi: such trust in their bands

and shell not create any

personal liability on the part of the T: uscee3.

Ko party to sny

such lnacrumnc in writing signed by che Executors or by the

Trustees shall be .obliged to inquixe.

into

tha validicy,expedieney

or propriety5 of- any obligation incurred by such inscruasnt on

behnlf of ay goneral estate or .of any trust est. ce, nor shili any

such party.be' hound to see to tha application b;

che Enecutors or

by the -Trustee!) of any money or other property d/aid or delivered

to thom by suc'.i party pursuant to the teres of i ny such instrument.
(j)

In connection uich any trusc

hcri inbsforo czeated,

I authorize and empower .ny Trustees to coesir.sle

the funds of Che

two trusts i f in their discretion IE is mora cor venient for the

i

purpose of investment and reiiwestiraot and distribution

discthereof.

THIIITEEOTH: I appoint ny wife, ELAINE UJDERSON STEIHBECK,

and ny friend and attorney, HM&x BUCRHAH, to ba

Trustees hereunder.

the Executors and

In the. event either or.both Of Chen shall fail

to qualify, Of having qualified either or both o,

them shall for

any reason ceise to act fis Esecucor or &a Trustei

before completing .

hex or his duties hereunder, then I Eppoinc SOL

CHASE HANBATIAH BANK (national Association) in

UI 2KER and IKS

tie

order camad, as

substitute Executors or Trustees, as the esse maj be.

It is my in-

tention that at all times thare be two Executors end Trustees of

; Ki

ny estate,

;!n che event Che said The Chase Hacr

cascten Bcnk (National

Association) shall fail to qualify or haviog qualified

shall cease

to act as Eaicocor and Trustee, then the person

aen acting as

Executor shall select another bank or trust cBonpa

ly to be his co-

Executor or .io-Trustea hereunder, as che case may be.

If one in

dividual shall be acting hereunder as Executor or ns Trustee and

such Executor or Trustea shall not be able Co fin;

a bank or trust

company willing to qualify as co-Executor or as c< -Trustee, then

I direct th! court .in which this Will shall be p:
such co-Eserfiutor- or cb-Trustea. If a bank or tru3

-9-

(ba ced to select

company is

acting alocn is ry.:cuCo=. 0i. -, ^

ustca, no ce-Dtceutor or co-

Trustee in clrfc circumstance iu

o be required.

Ko .'bor,d or other secur;

ty 3hcll bo required of any of

the persons naesd'es Executor, ci bstituuc Executor, trustee or

substitute trustee or of any bsn); cr trust coccpcny acting as
Executor or Trustee.

m WITNESS '.vEESSC?, I hive hereunto subscribed

and effixed ;oy. seal, this

5"1

ciiy

of uL,

my none

, 1968.

t
oca Swast Steinbeck

"

Cn this -f >lay bf L-,-~-:1963, the fcrcsoinr inotrmer.:

ccn3i3tir.5 of ten (10) typewritten
F=ses, inciu'Oing this pages, wis
signed, sealsd, published and dc-

clsrcd by JC'33 EnKEST STZIK32C5;,

che Testctor-;- as and for his Use

Uill and Testament,, in cha presence

of us, and w;, In his presence, oai

in the prcsenea of each ochcr end
st hia request, hove hereunto set
our namnc as subscribing witnesses
thereto.

? , 0%

resioin

L .LhJ.:^

</.-/, >/ ('iff.

{'(A'<+A<-~

_residini cc

-i --* t

I'-i-Jt

T^>= f-U^c.
jrcsidin; at

-10-

hi^

ft j 7 /

EXHIBIT 5

STEINBECK v. McINT(|)SH

& OTIS, INC.

395

Cile as 433 F.Supp.2d 39 i (S.D.N.Y. 2006)

(quoting In re Beatrice Foods Co., 57

C.C.P.A. 1302, 429 F.2d 466, 474 n. 13
(1970)). In Weiner King the court fash
ioned a concurrent use arrangement be

ent

faith on part of defendants); Saratoga

Ichy Spring Co., Inc. v. Lehman, 625

bid

tween the parties only after two courts had

determined that the parties' marks were

confusingly similar and that "confusion in

the marketplace if the marks [were] used

side by side [was] not only likely but cer
tain." Id. at 521.

because Lanham Act claim had been

d: smissed and plaintiff was unable to show

2d 1037, 1044 (2d Cir.1980) (dismissing

Lmham Act claims and state law unfair

mpetition claims on summary judgment,

no

ting that "[t]he essence of an unfair

competition claim under New York law is

the defendant has misappropriated

that

No such finding of confusion has been

made here. Moreover, Defendant has not
sought, through either formal or informal

bed

means, to enforce its trademark registra

tion against Plaintiff or to expand into

bad

Plaintiffs market, as was the case in

murk

Weiner King; see also Architemps, Inc. v.

Architemps, Ltd., No. 88 Civ. 5152(RO),
1989 WL 80300 (S.D.N.Y. Apr.16, 1989)
(holding that junior user/senior registrant
of mark, an architecture firm, had superior

quence, the claim for unfair competition is

right to expand into area into which nei

ther it nor defendant, also an architecture
firm, had expanded). Plaintiff has not evi

denced any intent to seek registration of

the "Omicron Capital" mark.

labors and expenditures of another.

the

!|ntral to this notion is some element of

faith."). No evidence has been pre

sented to establish that Defendant acted in

faith in adopting and registering the

'Omicron Capital."

As a conse

dis missed.
Conclusion

?or the reasons set forth above, the

mc

tion by Defendant for summary judg

ment is granted, and the cross-motion of

Pliintiff is denied. Submit judgment on

no ice.

Because

there is no likelihood that Defendant's use

of "Omicron Capital" will result in confu
sion among relevant consumers and be
cause Defendant has no intention to ex

! t is so ordered.

S KEY NUMBER SYSTEM

pand its services to include any similar to

Plaintiffs, no concurrent use registration
is appropriate at this time.

The Unfair Competition Claim Is Dis

missed

[8, 9]

Thomas STEINBECK, an individual;

and

To prevail on a claim for unfair

competition under New York common law,

"a plaintiff must couple its evidence sup

porting liability under the Lanham Act

with additional evidence demonstrating the

defendant's bad faith." Info. Superhigh
way, at 56 (quoting Philip Morris USA

Inc. v. Felizardo, No. 03 Civ. 5891(HB),

2004 WL 1375277 (S.D.N.Y. June 18,
2004)) (dismissing plaintiffs common-law

unfair competition claim on summary judg-

Blake Smyle, an individual, PlainCounterclaim Defendants,

tiffs;and

Nancy Steinbeck, an individual,

Intervenor-Plaintiff,

MCINTOSH & OTIS, INC., a New York

cjrporation; the Steinbeck Heritage
Foundation, a non-profit New York
orporation; Eugene H. Winick, an
individual; Samuel Pinkus, an indi

vidual; Jean Anderson Boone, an indi-

433 FEDERAL SUPPLEMENT, 2d SERIES

396

vidual; Francis Anderson Atkinson,

an individual; Waverly Scott Kaffaga,
an individual and Executor of the Es
tate of Elaine Anderson Steinbeck;

David Scott Farber, an individual;

Anderson Farber Runkle, an individu

1994, continuing prior publication rights

wi :h additional publication costs to publishdespite claim that 1994 agreement was

nelw copyright grant not subject to recaptu*e; agreement expressly reserved widcopyright interests. 17 U.S.C.A.
o vr's

al; Jebel Kaffaga, an individual; Bahar Kaffaga, an individual; and Ste

ven Frushtick, an individual; and
Does 1-10, Defendants and Counter
claim Plaintiffs.

Penguin Group (USA) Inc. Plaintiff,

v.

Thomas Steinbeck and Blake

Smyle, Defendants.

304(c)(5), (d).

Copyrights and Intellectual Property

<3=>47.5

A son and granddaughter of author

hid no rights to recapture copyrights in
w<kks obtained prior to 1978, when author
who had granted to third parties rights to
those works died before renewal term of

ginal

Oil!

copyrights

began;

recapture

Nos. 04-CV-5497 (RO),

ri jhts did not arise until expiration of re

04-CV-6795 (RO).

newal term, and author could grant those

United States District Court,

S.D. New York.

June 8, 2006.

copyrights only through end of original

te|rm, after which rights reverted to author's's

n

widow, who had not made any copy-

lit grants. 17 U.S.C.A. 304(c)(5), (d).

As Amended July 18, 2006.

Background: Holders of right to recap

ture copyrights, provided by Copyright

Act amendments extending period of avail

able copyright protection, served notice of

termination of pre-1978 copyright grants.
Holders and grantees moved and cross
moved for summary judgment.
Holdings: The District Court, Owen, J.,

Mark S. Lee, Manatt, Phelps & Phillips

LLP, New York City, for Plaintiffs/Defen

dants Thomas Steinbeck and Blake Smyle.

Sanford J. Hausler, Cox Padmore Skol-

njk &Shakarchy LLP, New York City, for

held that:

Intervenor-Plaintiff Nancy Steinbeck.

(1) recapture rights were not lost as result

of post-1978 copyright agreement ex
pressly continuing prior publication

Nlancy V. Thornton, Pillsbury Winthrop

rights, and

(2) there were no recapture rights with

respect to copyrights transferred by
author during original copyright term,
when author died before commence
ment of renewal term.

Ordered accordingly.

1. Copyrights and Intellectual Property

@=>47.5

Statutory right to recapture interests

in pre-1978 copyright were not lost when

widow who was statutory heir of author
entered into agreement with publisher in

Susan J. Kohlmann, Carolina A. Fornos,

Siaw Pittman LLP, New York City, for

Defendants

and

Counterclaim

Plaintiffs

Waverly Scott Kaffaga (as individual and

e: tecutor of the Estate of Elaine Anderson

S;einbeck), David Scott Farber, Anderson

F arber Runkle, Jebel Kaffaga, Bahar Kaf

faga, and Jean Anderson Boone.

Elizabeth

McNamara,

Davis

Wright

Tremaine LLP, for Defendants and Coun

terclaim Plaintiffs Mcintosh & Otis, Inc.,

E ugene Winick, and Samuel Pinkus.

Richard Dannay, Thomas Kjellberg, Co-

vdan, Liebowitz & Latman, P.C, New York

City, for Plaintiff Penguin Group.

STEINBECK v. McINTOBH & OTIS, INC.

397

Cite as 433 F.Supp.2d 395 (S.D.N.Y. 2006)

attain,1 and the popular prominence of

OPINION & ORDER

thiir works in musical and literary con

OWEN, District Judge.

Prior to the copyright law amendments

sciousnessnot to mention the eventual

financial rewards to them and their

taking effect in 1978, there were but two

periods of copyright protectionthe origi

fajnilies their work can command, our

nal period of 28 years, and a 28-year re

newal, for a possible total of 56 years. In

th

1978, the copyright term was increased by

19 years, to a total of 75 years, and in
1998, 20 more years was added to that, for
today a total of 95 years.
Given the said length of copyright pro
tection, early in which young creators of
ten less than advantageously contract for
long terms with publishers, etc., and it also
being the way of the world that a number
of such young composers, artists and au
thors, from time to time, such as John
Steinbeck writing his first book in 1929,
cannot predict the high stature they would
1.

Steinbeck was awarded a Pulitzer Prize and

the Nobel Prize for Literature.

2. A third possible mandatory event of return

of the grantif it can be so phrasedis if the
creator dies while the copyright is in its first
term.

Under that circumstance, the right to

future renewal does not follow his contractual

or testamentary grant. Instead, the expectan

cy of the renewal rights automatically vests in

statutorily enumerated categories of per
sonswho are not bound by the original dis

positionaccording to the following hierar

chy: "[1] the widow, widower, or children of
the author, ... [2] the author's executors, if
such author, widow, widower, or children are

not living, or [3] the author's next of kin, in

the absence of a will of the author."

17

U.S.C. 304(a)(1)(C). See also Stewart v.

Abend, 495 U.S. 207, 219-20, 110 S.Ct. 1750,
109 L.Ed.2d 184 (1990). Thus, the additional

years of protection provided by Section 304(a)

represent a completely "new family property
right" in pre-1978 works. Larry Spier, Inc. v.
Bourne Co., 953 F.2d 774, 779 (2d Cir.1992).
3.

See 17 U.S.C. 304(a)(1)(C), discussed su

Dyright laws have come to recognize

s, and accordingly, in the statute, proviifie opportunities for such a creator
add/or his or her family to terminateand
capturerights previously granted othe n3,
. allowing creators or their heirs appro
priate reward for the artistic gifts to our
CO

cu lture.

There are two such "recapture" opportu-

ies during a copyright's lifetime.2 The

firtst, Section 304(c) of the Copyright Act,
giants creators of pre-1978 works or their
stitutory heirs,3 an inchoate but inalien
able 4property right5 to "terminate" earli
er! grants of copyrights made before Janu4.

The inalienability of the Section 304(c) right

las been recognized by the Supreme Court,
;he Second Circuit, and this Court on myriad
accasions.

See Abend, 495 U.S. at 230, 110

S.Ct. 1750 ("The 1976 Copyright Act ... prodes an inalienable termination right."); Lar-

y Spier, 953 F.2d at 779-80 (Section 304(c)

'was drafted so as to leave no doubt about

the family's power to recapture the copy

right.");

Fred Ahlert Music Corp. v. War-

ner/Chappell Music, Inc., 155 F.3d 17, 24 (2d

Cir. 1998) (inalienability is "consistent with
the general thrust of 304, which is designed
to protect the interests of authors and their
heirs and to maximize their ability to exploit
the value of their [works] during the extended
renewal term."); Morris, 73 F.Supp.2d at 372
("unlike the renewal rights, the termination

right is inalienable . .. Congress resorted to

the extraordinary measure of creating an in

alienable right in order to ensure that the

author's heirs would be able to terminate any

contingent grants of renewal rights made dur

ing the author's lifetime."). Termination
rights remain inalienable until they are exer
cised by service of a notice of termination.

pra, and 17 U.S.C. 304(c)(1), (c)(2), dis

17 U.S.C. 304(c)(6)(B); see also, 17 U.S.C.

cussed infra, for the statute's categorical hier

archy of entitlement. See also, Larry Spier,

304(c)(6)(D) (providing that "[a] further

grant, or agreement to make a further grant,
of any right covered by a terminated grant is
valid only if it is made after the effective date

953 F.2d at 778; Abend, 495 U.S. at 218, 110

S.Ct. 1750.

433 FEDERAL SUPPLEMENT, 2d SERIES

398

ary 1,1978 and to do so beginning 56 years

after the copyright was first secured (i.e.,
upon expiration of both the original 28year copyright term and the pre-1978 28year renewal term). 17 U.S.C. 304(c).
Such termination right is optionalnot

mandatory or automaticand can be exer

cised at any time during a five-year period
beginning at the end of the said 56 year
period, or on January 1, 1978 (the date of
enactment of the statute extending the

copyright protection term), whichever is

later. 17 U.S.C. 304(c)(3).6 See Music
Sales Corp. v. Morris, 73 F.Supp.2d 364,

heirs are free to grant these rights to

whomever they desire, as such new grants

fu fill the purpose of the termination right,

which is to provide successors in interest
with an opportunity to obtain the fair value
of the work by negotiating new terms for

pieviously granted rights once the work's

trie value has appeared. 3-11 Melville B.
N miner & David Nimmer, Nimmer on
Copyright 11.01 [A].

The second such termination right was

created in 1998 as part of the Sonny Bono

Copyright Term Extension Act (CTEA),

372 (S.D.N.Y.1999).

wiich extended the copyright term by an

additional twenty years, see 17 U.S.C.

to specific successor(s),7 who, upon recap

their survivors who did not exercise their

ture thereupon possesses and may regrant those rights. 17 U.S.C. 304(c)(1),
(c)(6). Termination rights vest on the date

termination rights the first time (i.e., 56

Should the creator

die, the statute transfers the termination

a notice of termination is

served.

17

U.S.C. 304(c)(6)(B), (C).8 Once a prior

grant of copyright is terminated, statutory

5.

5 304(a), (b), and also gives creators or

y< ars after the copyright was first secured,

see supra) a second opportunity to termi
nate during the five-year period beginning
7J> years after the copyright came into

existence. 17 U.S.C. 304(d).9

of the termination . . . [or] after the notice of

lowing: (i) the author's widow or widower

termination has been served . . .").

owns the author's entire termination interest;

(ii) if the author leaves both a widow

widower and children or grandchildren,
widow or widower owns one-half of the
thor's interest, and the remaining half is

Because Section 304(a) established a com

pletely new family property right in pre-1978

works, see supra, "[t]here are strong reasons

or
the
au
di

for giving the author [and/or his statutory

heirs] ... an opportunity to share in" the
benefits of continued exploitation of such
works by permitted the author or his family to

vided per stirpes among the author's progeny;

terminate third party grants.

See House Re

author, own the author's entire termination

port on the Copyright Act of 1976, House Re

port No. 94-1476, p. 140 (1976).

interest, which is divided among them and

exercised on a per stirpes basis; or (iv) in the

(iii) in the absence of a surviving widow or

widower, the author's surviving children, and

surviving children of any dead child of the

event that none of the aforementioned heirs

6.

A notice of such termination must be served

no more than ten or less than two years
before termination is to be exercised. 17

are living, the author's executor, administra

tor, personal representative, or trustee shall

U.S.C. 304(c)(4)(A). Thus, under Section

304(c), a notice of termination may be served

17 U.S.C. 304(c)(2).

between 46 years and 59 years after the copy

right was originally secureda 13-year "win

dow of opportunity"with the rights that are
to revert vesting in the owners of the termi
nation interest on the date the notice is
served. 17 U.S.C. 304(c)(6)(B).
7.

own the author's entire termination interest.

See Range Road Music, Inc. v. Music Sales

Corp., 76 F.Supp.2d 375, 377 (S.D.N.Y.1999);
see

also

3-11

Nimmer

on

Copyright

11.03[A][3] (stating that the class of recipi

ents of the terminated rights is determined as
of the date the termination notice is served).

The deceased author's termination interest

Section 304(d) applies to copyrights in their

is owned, and may be exercised, by the fol-

renewal term on the effective date of the

STEINBECK v. McINTOSH & OTIS, INC.

399

Cite as 433 F.Supp.2d 395 (S.D.N.Y. 2006)

To protect this right and prevent cre

ators or statutory heirs from contracting
away, for whatever reason, this absolute

right to "recapture" for the years of ex

tended protection any pre-1978 copyright
grant, the statute declares void any con

Jc hn Steinbeck made to those third parties

in accordance with 17 U.S.C. 304(c) and

(d). The parties have filed cross motions

fo * summary judgment as to the validity of
these notices, and the above-captioned ac

tions are joined for this purpose only.11

tract the effect of which is in contravention

Turning to the facts here, when John

of or which negates either of these termi

Steinbeck died in 1968, his third wife, wid-

17 U.S.C. 304(c)(5).10

i Elaine, inherited his copyrights in his

See, e.g., Morris, 73 F.Supp.2d at 372;

Larry Spier, Inc. v. Bourne Co., 953 F.2d

nation rights.

ei rly works 12 under the residuary clause

774, 778 (2d Cir.1992).

Pursuant to these provisions in the

Copyright Act, in May and June 2004, the

then-statutory heirs of John Steinbeck
son Thom and granddaughter Blake
served five "Notices of Termination" on

various third parties which purported to

terminate pre-1978 grants of copyrights
CTEAOctober 27, 1998for which the ter

mination right under Section 304(c) had ex

pired by that date, and as to which the author
or the owner of the Section 304(c) termi

nation right has not previously exercised the

right. A notice of termination under Section
304(d) must be served no more than ten and
not less than two years before termination is
to be exercisedi.e., no earlier than 65 years,
and no later than 78 years, after copyright
was originally secured.

10. This statutory prohibition is intended to be

broadly applied to invalidate such unlawful
contracts and liberally protect termination

rights. See Marvel Characters, Inc. v. Simon,

310 F.3d 280 (2d Cir.2002); Larry Spier, su

pra; Morris, supra. Indeed, copyright termi

nation abrogates freedom of contract in two
ways; it allows for the invalidation of the
original contractual transfer, and it abrogates
subsequent attempts to contract around the
termination

right

it

creates.

17

tered their renewal period after Stein

beck's death,13 his two sons from his sec
ond marriageThomas Steinbeck and
John Steinbeck IVthough inheriting no
interest in the copyrights under their fati er's will, nevertheless became possessed
ofl a 50% share of the copyright termiUnion Carbide Corp., 41 F.Supp.2d 406, 41314 (S.D.N.Y.1999); see also Goenaga v. March
of Dimes Birth Defects Foundation, 51 F.3d
14, 18 (2d Cir.1995); Anderson v. Liberty Lob
by, Inc., 477 U.S. 242, 247-48, 252, 106 S.Ct.
2505,91 L.Ed.2d 202 (1986).

\%.

Steinbeck's "early works" are those whose

renewal term of copyright (i.e., after the first

28 years of copyright) became due in the
course of his lifetime, and for which he filed

renewal registrations. Specifically, Steinbeck

renewed: Cup of Gold (1929), The Pastures
of Heaven (1932), To a God Unknown
(1933), The Red Pony (1937), Tortilla Flat
(1935), In Dubious Battle (1936), Of Mice
and Men (1937), Of Mice and Men (play)
(1937), Murder at Full Moon (1938), The

Long Valley (1938), The Grapes of Wrath

(1939), Forgotten Village (1941), and The
Sea ofCortez (1941) (collectively, the "Early
Works").

U.S.C.

lji.

304(c), (c)(5)

11. Summary judgment is appropriate when

there are no genuine issues of material fact
and the moving party is entitled to judgment
as a matter of law.

in Steinbeck's will. However, with respect

to these works, as well as those that en

Fed.R.Civ.P. 56(c).

To

satisfy its burden under Rule 56(c), the mov

These "late works" are:

The Moon is

Down (1942), The Moon is Down (play)

(1942), Bombs Away (1942), Cannery Row
(1945), The Pearl (1945), The Wayward
Bus (1947), A Russian Journal (1948),

Burning Bright (1950), Log From the Sea of

Cortez (1951), East of Eden (1952), Sweet

ant must show that the record raises no genu

Thursday (1954), The Short Reign of Pippin

ine issue of material fact for trial.

IV (1957), Once There Was a War (1958),

Brink v.

400

433 FEDERAL SUPPLEMENT, 2d SERIES

nation interest in each work pursuant to

with 17 U.S.C. 304(c) and (d).

Section 304(c)(2)(B), quoted supra, which

caly, the Notices terminated: (1) a 1938

grant of book publishing rights made to
the predecessor of Penguin Group (USA)
. (hereinafter the "Penguin Notice");16
(2) grants of motion picture rights in Stein-

states that a deceased author's entire ter

mination interest is to be divided, 50% to

his widow and 50% to his children [and

grandchildren]. 17 U.S.C. 304(c)(2)(B).

Since, however, to exercise a termination

Specifi-

:k's The Red Pony made to Paramount

Pilctures, Inc. in 1946, 1947 and 1949; (3)

right requires a simple majority of the

possessors, this meant here that, Elaine

giants of motion picture rights to Stein-

and the children being in disagreement, no

bfCk'is

termination right could be exercised, as

1991, leaving only one child, Blake Smyle,

The Long Valley given to ParaDunt Pictures, Inc. in 1946, 1947 and
19,49; (4) a 1956 grant of theatrical rights
to Steinbeck's Cannery Row given to Rog-

who now asserts her statutory right in his

eis

stead, as Steinbeck's granddaughter.15

If 49

Elaine died in April 2003, leaving all copy

rights to her heirs from a previous mar
riageall unrelated to Steinbeck.

inbeck's The Wayward Bus made to Twentieth Century Fox Film Corporation,

neither side had 51%.14 John IV died in

But upon Elaine's death in April 2003,

& Hammerstein and MGM; and (5) a

grant of motion picture rights in Ste

Eich notice is now addressed in turn.

Tie,Penguin

Termination Notice

[1] In a 1938 agreement, author John

Thom and Blake, being in agreement, for

the first time together possessed the ma

Sjeinbeck granted to Penguin's predeces-

jority (indeed, the totality) of termination

scr.

interests needed to exercise their termi

and

, The Viking Press, Inc., sole, exclusive,

open-ended publication rights in the

llection of stories The Long Valley, in-

nation right. See 17 U.S.C. 304(c)(1).

In May and June 2004, they served five

eliding all thirteen short stories contained

"Notices of Termination" on various third

tl

parties which purported to terminate pre1978 grants of copyrights John Steinbeck

rrent

made to those third parties in accordance

The Winter of Our Discontent (1961), and
Travels With Charley (1962).

14. The statute provide that if the author him

self has made the assignment, and said author
is now dead, termination of the assignment

may be effected by the person or persons who

own and are entitled to exercise a total of
more than one-half of the author's termi
nation interest. 17 U.S.C. 304(c)(1).

15. Defendants dispute the assertion that

Blake is the granddaughter of John Steinbeck,

claiming that there has been no conclusive

evidence produced to this effect, and there is

erein. By its terms, the 1938 Agree'supersedefd] all previous agree-

mjents made between The Viking Press,

ijic. and John Steinbeck," and also applied
settlement agreement or agreements entered
into by Blake, Thom, and John IV's former
wife Nancy Steinbeck, the intervenor-plaintiff
in this action and the purported residuary

beneficiary of John IV's Estate under his will.

Nancy apparently seeks to ride on the "coat
tails" of Thom and Blake's action against the
defendants, claiming that neither Thom nor
Blake are likely to protect her interests. As
this motion is limited to the validity of the
termination notices issued by Thom and
Blake, the allegations brought by Nancy are
not addressed at this time, and the parties
have reserved their rights to do so.

no mention of her in John IV's will or in his

pleadings in the 1981 action. It is undisput

ed, however, that John IV's heirs continued to

receive his royalties, although the identity of

those heirs and the distribution arrangement

among them are the subject of a confidential

1)5.

Widow Elaine entered into a new agree

ment with Penguin in 1994, Penguin's right of

publication remaining the same as in the
1938 grant, but at a higher consideration, and
statutory termination rights explicitly contin-

STEINBECK v

McINTO|SH & OTIS, INC.

401

Cite as 433 F.Supp.2d 395 (S.D.N.Y. 2006)

to "all the previously published books of

John Steinbeck," namely: Cup of Gold;
The Pastures of Heaven; To A God Un
known; Tortilla Flat; In Dubious Battle;
Of Mice and Men; Of Mice and Men
(Play); The Red Pony, and the three sto
ries included therein.17

Four additional

works by Steinbeck were added to the

1938 Agreement by way of its option
clause, including The Grapes of Wrath, the
latest of the works at issue here, in 1939.

This agreement provided for ongoing roy

alties based on net sales, and was periodi
cally amended. Author Steinbeck re
newed the copyrights in each of the ten
works in question during his lifetime, and
when he died in 1968, he bequeathed the
copyrights in these early works to his wid
ow Elaine.

In 1994, Elaine entered into a

"new agreement for continued publication"

with Penguin as "Publisher" for these ear
ly works, which granted Penguin no more
nor less rights than Penguin already had
and was exercising under the original 1938
Agreement, although at increased cost to

Penguin.18

of law, because widow Elaine's 1994

Aj^rieement, by its express terms, "cance.[, si and superceded] the previous agree-

m mts, as amended, for the Works,"19

wltich effectively transforms Steinbeck's
pie- 1978 grant into a "new" grant of copyright, executed on or after January 1,

and as such, is not subject to termi-

1978,

m tion

under

Section

304.

17

U.S.C.

304(c), (d).

I conclude that this argument fails. The

Agreement was author Steinbeck's

IS 38

exclusive grant of publication rights to

Penguin's predecessor of certain of his
works, so they unquestionably were
within the terms of the subsequently-en

acted termination statute.20 Elaine's 1994

ntical grant to Penguin explicitly carries
fohvard possible future termination under
the statute, reading: "If Elaine Steinbeck
ex ercises her right to terminate grants
mide

to Publisher in this agreement (in

accordance with Section 304(c) of Title 17

ofl the U.S.Code) ..." See Penguin USA,
C mtract For Steinbeck titles, p. 13, I 9A,

Termination Under U.S. Law (Oct. 24,

On or about June 13, 2004, Thom and

The

contention

that

the

1994

Blake served on Penguin a Notice of Ter

mination, purporting to terminate Stein
beck's grants under the 1938 Agreement

Agreement extinguished the very termi-

pursuant to Section 304(d). Penguin and

rights necessarily fails. At no point did

Pi mguin lose or gain any rights other than
those originally granted to it under the

the defendants in the Steinbeck action con

tend that said notice is invalid as a matter

ued, as per the agreement.

infra.

See discussion

17. The Viking Press, Inc. Agreement, H 13A

(Sept. 12, 1938).

18. Elaine simultaneously entered into a simi

lar agreement with Penguin for the late works
on behalf of herself and Thom (who subse

quently ratified the agreement on December

22, 1994), but this second 1994 Agreement is
not relevant here, although it raises questions
of motive.

19. Penguin USA, Contract For Steinbeck ti

tles, p. 10, 11 19, Termination of Previous
Agreements (Oct. 24, 1994).

tion right that it expressly acknowledges

th exists and flows from the 1930s copy

20. Indeed, this grant of publication rights is

terminable because it is a "copyright subsistng in either its first or renewal term on
lanuary 1, 1978, . .. [and is] the exclusive . . .
grant of a transfer or license of the renewal
copyright or any right under it, executed be
fore January 1, 1978, by [the living author of
such work], otherwise than by will [here, by
contract] ..." 17 U.S.C. 304(c) (emphasis
added).

Section 304(d) was enacted four years af

ter the contract was entered into, but remains

no less applicable, as it simply expanded the

opportunity for authors or their statutory
heirs to execute their termination rights.

402

433 FEDERAL SUPPLEMENT, 2d SERIES

1938 Agreement.22

Furthermore, to the

extent that the 1994 Agreement would

strip Thom and Blakeat the time, own

F( x or its predecessors by John Steinbeck

pursuant to agreements in 1949. Defen
dants argue that this termination notice is

ers of one-half of the future termination

of no effect because author Steinbeck died

interest, but on Elaine's death, full own

ersof their inalienable termination rights

before the copyright in this work entered

in the pre-1978 grants, it is void as an

"agreement to the contrary" pursuant to

its renewal term, and thus, the renewal

co 3yright automatically went to his next of

ki i pursuant to Section 304(a).24

As

17 U.S.C. 304(c)(5).23

Accordingly, I consider the Penguin ter

mination notice both valid and effective.

The Wayward Bus Termination Notice

[2] In 2004, Thom and Blake, now hav

ing between them 100% of the termination

rights, sought to terminate author Stein
beck's 1949 grants of The Wayward Bus
for "all motion picture rights, limited pub
lication rights, radio rights, film, television,
and commercial tie-up rights" that had
been transferred to Twentieth Century
22. By its terms, absent a default, the agree

observed

earlier,

in

Stewart

v.

Abend, 495 U.S. 207, 219-20, 110 S.Ct.

1750, 109 L.Ed.2d 184 (1990), the United
States Supreme Court recognized that a
renewal copyright represents a new estate
froe and clear of all rights, interests or
licenses granted under the original copy

right. Id. at 219, 110 S.Ct. 1750. Accordly, the Court stated that "[i]f the author
dijs before [the renewal right vests], the
ntxt of kin obtain the renewal copyright

fr le of any claim founded upon an assignm;nt made by the author in his lifetime.
Section 304 termination rights (at least with

ment was to continue for as long as the pub

respect to Elaine, who, at the time, owned

lishers keep the works "in print and for sale."

one-half), acknowledges that such rights

(which had not yet been exercised) could be
exercised in the future, and accordingly, con

The Viking Press, Inc. Agreement, 11 12A, Ter

mination of this agreement (Sept. 12, 1938).
Elaine did not inherit any interest in the book
publishing rights Steinbeck granted to Pen

guin in 1938, because Steinbeck did not own

those rights when he died. Rather, Penguin
was the owner of said rights pursuant to the

1938 Agreement, and Steinbeck had only a

contractual right to receive monies pursuant

to that agreement. Elaine inherited only that

contractual

revenue

schemeshe

had

no

"copyright" interest to convey to Penguin by

the 1994 Agreement, and Penguin had no
need to enter into an agreement with Elaine
to maintain its book publishing right (except,

of course, to possibly avoid the exercise of

federal termination rightsor a lawsuit).
23. The 1994 Agreement does not purport to
transfer Elaine's or anyone else's termination

rights under Section 304, nor does it require

Elaine or anyone else to refrain from exercis
ing such rights, as any such contractual lan
guage that purports to affect inalienable ter
mination interest would run afoul of black-

letter copyright law. Rather, the copyright

interests purportedly granted by the docu
ment were granted subject to those very same

rights. The whole of H9A expressly preserves

tains detailed provisions about what would

happen if (i) such termination rights were
indeed exercised; and (ii) the copyright inter
ests in Steinbeck Works were not subsequent

ly re-granted to Penguin. Neither Thom nor

Blake was a party to the 1994 Agreement, and
they have never contractually transferred
their termination

rights

to

Penguin

nor

agreed to forego their termination rights.

Any interpretation of the 1994 Agreement
having the effect of disinheriting the statutory
heirs to the termination interestThom and
Blakein favor of Elaine's heirs must be set

aside as contrary to the very purpose of the

termination statute, which protects children

and grandchildren, and not just widows. See,

e.g., 3-11 Nimmer on Copyright! 11.07, n. 29.
2#.

17 U.S.C.A. 304(a)(1)(C), in relevant

part, states that "the widow ... or children of

the author, if the author is not living ... shall
be entitled to a renewal and extension of the

copyright in such work for a further term

STEINBECK v

McINTOBH & OTIS, INC.

403

Cite as 433 F.Supp.2d 395 (S.D.N.Y. 2006)

These results follow not because the au

this identical to The Wayward Bus termi

thor's assignment is invalid but because he

had only an expectancy to assign [in the
renewal copyright]; and his death, prior to
the renewal period, terminates his interest

nation, immediately above.26

in the renewal [term] ..."which then

vests in the statutorily named classes. Id.

(internal citations omitted).
The renewal copyright for The Way
ward Bus came into effect in 1975. Be
cause John Steinbeck died in 1968seven

Author Steinbeck registered Cannery

Row for copyright protection in 1945, and

so, the original term of copyright ended in
1973.

As John Steinbeck died five years

pi ior to the copyright entering its renewal

te-m, his statutory heir, Elaine, automati

cally received the renewal copyright. See

Wayward Bus Termination Notice discus
sion, supra. Thus, neither Rogers &

this workthe renewal

H immerstein nor MGM possessed any interest in the renewal copyright for Thom

copyright never vested in the grantee

ai d Blake to terminate, so this notice was

years before the renewal period would

commence

for

(Twentieth Century Fox) and, therefore,

the author's then-living statutory heir,
Elaine, inherited those rights free of the

previous assignment by the author pursu

ant to Section 304(a)(1)(C). See Abend
495 U.S. at 219, 110 S.Ct. 1750; Morris, 73

F.Supp.2d

at

371-72.

Consequently,

Twentieth Century Fox had in 2004 no

interest in the renewal copyright today,
and accordingly, there was nothing there

lullity.

7|fte Long Valley and The Red Pony

Termination Notices

In 2004, Thom and Blake, served a no

tice of termination on Paramount Pictures

C Drporation, pertaining to a grant of moti )n picture, radio, and limited publication
ri jhts, in Steinbeck's The Long Valley and
tie collection of stories included therein

for Thom and Blake to terminate in 2004

tl at Paramount's predecessor had received

and the notice was a nullity.

from author Steinbeck pursuant to three

The Cannery Row Termination Notice

On or about May 17, 2004,23 Thom and

Blake served a notice of termination of the

grant for Steinbeck's Cannery Row pursu

ant to Section 304(c) for "all motion pic

ture, radio, and television rights" to Rog

ajp-eements in 1946, 1947, and 1949. Sin ultaneously, Thom and Blake issued a
separate but virtually identical termination
)tice for The Red Pony and all stories
contained therein, granted to Paramount
irsuant to the same contracts.27

The

fendants contest the validity of these

ers & Hammerstein and MGM in or before

tJro nearly identical notices of termination

1956 by author Steinbeck. Defendants as

sert a number of reasons this notice is

o l the grounds that, under a 1983 Settlen ent Agreement between Elaine, Thom

invalid. I need address only the fact that

ajid Blake's father John IV, Thom and

25.

An amended notice was issued on or about

June 13,2004.

26. Rogers & Hammerstein had transferred

the rights it received in or before 1956 to
Cannery Row Productions, Inc. by short form

option agreement after 1978, and Thom and

Blake also served the successor to that trans

fer with this termination notice. The fact that

a copyright grantee made a subsequent post-

1978 transfer of rights it acquired pre-1978

does not insulate such from termination.
Morris, supra.

See

2|7. John Steinbeck had renewed the copy

rights in each of these works during his life

time, see supra n. 12, and the grants he made
to Paramount appear to meet the termination
requirements of the statute.

433 FEDERAL SUPPLEMENT, 2d SERIES

404

Blake have no existing grants which they

th3 validity of these notices as a matter of

can address to terminate.28

la v

Defendants

early asserted that discovery was needed

on the agreements which Thom and Blake
purport to terminate, and until that time,
they wish to reserve their right to contest
the validity of these notices, but the trou

is granted.

So Ordered.

O E KEY NUMBER SYSTEM

blesome question is why discovery was not

timely sought here.
So the record remains that, other than

this bland conclusory assertion (without

sufficient justification)29 that discovery is

needed, defendants are silent on their

principal argument that the said 1983 Set

Simantha RICHARDS, and Samantha

Richards as parent and next friend of
Wydeia and Shanealya Richards,
Plaintiff,

tlement Agreement invalidated all of the

notices of termination which are the sub

ject of the present motion,30 which I there

T HE CITY OF NEW YORK et al.; New

fore deem to be an abandonment of defen

York City Detectives Kevin McCann,

dants' counterclaims regarding these two

notices. See Jessamy v. City of New Rochelle, 292 F.Supp.2d 498, 515 n. 21
(S.D.N.Y.2003). Summary judgment on

York City Police Officer Mark Preiffer; Detectives/Police Officers John

28. After a scuffle in court, Steinbeck v. Stein

beck, No. 81 Civ. 6105 (S.D.N.Y. Dec. 8,

1982), Thom, John IV and Elaine entered into

a settlement agreement in 1983, pursuant to
which Thom, John IV, and Elaine would

share equally in the royalties from author

Steinbeck's late worksone-third, one-third,
one-thirdin return for which Elaine was

granted exclusive control over the copyright

ed works, including the power and authority
to execute contracts in their name.

Disturb

ingly, the settlement agreement also purport

ed to grant Elaine the exclusive right to exer
cise Thom and John IV's termination rights
over the Steinbeck works. Paragraph 5 of the

settlement agreement, in particular, is statuto

rily prohibited, stating; "Elaine Steinbeck
and/or her agent shall have the complete pow
er and authority to negotiate, authorize and
take action with respect to the exploitation
and/or termination of rights in the works of
John Steinbeck which John Steinbeck IV and
Thom Steinbeck have or will have renewal or

termination rights."

29.

At the hearing before me on May 11, 2005,

counsel for the defendants stated, for the first

time, that the two notices at issue "relate to

motion picture rights with respect to a licen

see who the, during John Steinbeck's lifetime

Daniel Carmosin and Mike Paul; New

and Jane Doe; Assistant District Atin a foreclosure action, had those rights trans
ferred ... So it is not at all clear to us, first of
all, whether there is anything to terminate,
because after a bankruptcy during the course
of John Steinbeck's lifetime it's not at all clear

whether anything still exists. It would appear

that it may be the motion picture rights at
issue are actually derivative works, which
would essentially take them out of and have
different meanings with respect to the termi
nation provisions." Hr'g Tr. 17 (May 11,
2005). The record before me does not sup
port this contention.

3Q. If this theory is meant to suggest that the

terms of the 1983 Settlement Agreement void
all of Thorn's and Blake's termination rights

that Elaine successfully contracted away the

rights of these statutory heirs when she set

tled litigation with themit is barred by the
plain language of 17 U.S.C. 304(c)(5) and
(d)(1). Any portion of the settlement agree
ment which limits or extinguishes Thorn's and
Blake's statutory termination rights is invali
dated as a statutorily-prohibited "agreement
to the contrary." See, e.g., Marvel, 310 F.3d
at 290-91; Morris, 73 F.Supp.2d at 373-77.

EXHIBIT 6

PENGUIN GROUP (USA) INC. v. STEINBECK

193

Cite as 537 F.3d 193 (2 id Cir. 2008)

For these reasons, we vacate the Dis

trict Court's October 24 Order insofar as it

PENGUIN GROUP (USA) INC.,

held plaintiff to a pleading standard incon

Plaintiff-Appellant,

sistent with that applicable to pro se liti

gants.5 Likewise, we vacate the District

Wlaverly Scott Kaffaga, individually as

Court's Order dated March 9, 2006 and the

Executor

judgment entered on March 10, 2006, dis

missing plaintiffs complaint for failure to
comply with the October 24 Order.

Anderson Steinbeck, David Scott Far

of the

Estate

of Elaine

ber, Anderson Farber Runkle, Jebel

Kaffaga, Bahar Kaffaga and Jean
Anderson Boone, Defendants-Coun
terclaim-Plaintiffs-Appellants,

CONCLUSION

Because the District Court, lacking the

benefit of the guidance set forth herein, (1)
denied plaintiffs request to litigate this
action under a pseudonym without first
balancing plaintiffs interest in anonymity
against the public interest in disclosure

and prejudice to defendants, and (2) sub

jected plaintiffs pleadings to a standard

Thomas STEINBECK and Blake

Smyle, Plaintiffs-CounterclaimDefendants-Appellees,
Nancy Steinbeck, Intervenor-Plaintiff,

far stricter than that applicable to pro se

litigants, we VACATE the District Court's

Order of October 24, 2005.

We also VA

CATE the District Court's Order of March

9, 2006 and the judgment entered on

March 10, 2006, dismissing plaintiffs com

Mcintosh & Otis, Inc., The Steinbeck

Heritage Foundation, Eugene H. Winick, Samuel Pinkus and Steven Frushtick, Defendants-Counterclaim-Plain
tiffs,

plaint sua spontefor failure to comply with

the October 24, 2005 Order. We REMAND

the cause for further proceedings consis

tent with this opinion. In light of the
serious nature of the claims pressed in this
action, we encourage the district court to
consider whether the appointment of pro

bono

counsel pursuant to 28 U.S.C.

1915(e)(1) is warranted. The mandate

shall issue forthwith, and jurisdiction shall
be returned to this Court, pursuant to
United States v. Jacobson, 15 F.3d 19, 2122 (2d Cir.1994), upon a letter request

Francis Anderson Atkinson and

Does 1-10, Defendants.

Docket Nos. 06-3226-cv, 06-3696-cv.

United States Court of Appeals,

Second Circuit.

Argued: Jan. 23, 2008.

Decided: Aug. 13, 2008.

Background: Holders of right to recap-

from any party. Upon such a restoration

of jurisdiction, the matter is to be referred

ti re copyrights, provided by Copyright

to this panel.

a )le copyright protection, served notice of

KEY NUMBER SYSTEM

Act amendments extending period of avail-

termination of pre-1978 copyright grants.

Publisher filed complaint seeking declara

tory judgment against holders that notice

w)as invalid. The United States District

5. In light of the vacatur of that portion of the
Order denying plaintiff's application to file

under a pseudonym (see Part I), the Order of

October 24, 2005 is vacated in its entirety.

537 FEDERAL REPORTER, 3d SERIES

194

Court for the Southern District of New

Ycrk law; although subsequent agreement

York, Richard Owen, J., 433 F.Supp.2d

ght have intended that earlier-created

395, granted summary judgment for defen

dants. Plaintiffs appealed.

Holdings: The Court of Appeals, Sack,

Circuit Judge, held that:

(1) post-1978 agreement terminated and

superseded all pre-1978 grants of
transfer or license in subject copy
rights;

mination rights survived it, availability

termination rights under Copyright Act
,s not dependent on intent of parties but
, among other things, date that grant of
ri| ;htss was executed and relationship to
adthor of those seeking to exercise termi

nation right. 17 U.S.C.A. 304(d).

Contracts =252
Novation =4

(2) original grantee could execute new

grant of licenses for publication of

copyrighted works any time after no
tice of termination had been served;

(3) subsequent agreement regarding li

censes for publication of copyrighted
works that terminated and superseded
pre-1978 agreement also eliminated
right to terminate grants contained in
pre-1978 agreement;

Under New York law, parties to an

agreement can mutually agree to termi

te it by expressly assenting to its rescis
sion while simultaneously entering into a

n agreement dealing with the same subje

it matter; once terminated and super

seded,
the new contract provides all of the
se
PI rties'

obligations

and

remedies

for

bieach.

(4) phrase, "agreement to the contrary," in

statute governing termination rights

Copyrights and Intellectual Property

did not include any agreement that had

effect of eliminating termination rights;

Under New York law, a contract that

(5) subsequent agreement that terminated

and superseded pre-1978 agreement
was not "agreement to the contrary"
solely because it had effect of eliminat
ing termination rights that did not yet
exist; and

=107

rdmains in force may still be terminated

aid renegotiated in exchange for, among
other things, one party's forbearance of
h< :r legal right, such as a statutory right to
terminate a previous grant of a copyright

transfer or license.
4. Copyrights and Intellectual Property

(6) author or author's statutory heirs were

=48

not entitled to more than one opportu

nity, between them, to use termination

rights.
Reversed and remanded.

Original grantee could execute new

gJ-ant of licenses for publication of copy*hted works any time after notice of
termination had been served, and thus no

moment of freedom" was required under

1. Copyrights and Intellectual Property

=47, 48

Copyright

Act.

17

U.S.C.A.

304(c)(6)(D).

Post-1978 agreement, stating that

"[t]his agreement, when signed by Author
and Publisher, will cancel and supercede

Copyrights and Intellectual Property

the previous agreements," terminated and

superseded all pre-1978 grants of transfer

where a notice of termination of copyright

or license in subject copyrights under New

=47

A prior grant may be renegotiated

his

not

been

304(c)(6)(D).

served.

17

U.S.C.A.

PENGUIN GROUP (USA) INC. v. STEINBECK

195

Cite as 537 F.3d 193 (2idCir. 2008)

6. Copyrights and Intellectual Property

=48

Subsequent agreement regarding li

censes for publication of copyrighted
works, stating that "[t]his agreement,
when signed by Author and Publisher, will
cancel and supercede the previous agree
ments," that terminated and superseded
pre-1978 agreement, also eliminated right
to terminate grants contained in pre-1978
agreement under Copyright Act. 17
U.S.C.A. 304(c, d).

7. Copyrights and Intellectual Property

=47

Phrase, "agreement to the contrary,"

in statute governing termination rights un
der Copyright Act did not include any

agreement that had effect of eliminating

termination rights, even if agreement had
effect of eliminating termination right that
Congress did not provide until after agree
ment, since other provisions of Copyright
Act explicitly contemplated loss of termi
nation rights. 17 U.S.C.A. 304(c)(5),
304(d).

8. Copyrights and Intellectual Property

=33

The holders of a majority of an au

thor's termination interest may agree that

they will not exercise their termination

rights, even though it has the effect of
eliminating a termination right as to the
minority
termination
interests.
17
U.S.C.A. 304(c)(5), 304(d).

did not yet exist.

17 U.S.C.A. 304(c),

3o(l(d).
10 Copyrights and Intellectual Property
=33

Backward-looking attempts to recharac erize existing grants of copyright so as

to eliminate the right to terminate are
fo:'bidden under the Copyright Act. 17
U.S.C.A. 304(c)(5).

lli Copyrights and Intellectual Property

=33, 47.5

Author or author's statutory heirs

ware not entitled to more than one opportuiity, between them, to use termination

rights under Copyright Act to enhance

th 2ir bargaining power or to exercise them
to execute renegotiated contract.
17

UJS.CA. 304(d).

Richard Dannay, Cowan, Liebowitz &

Latman, P.C. (Thomas Kjellberg, of coun
sel), New York, NY, for Plaintiff-Appel

lant Penguin Group (USA) Inc.

Susan J. Kohlmann, Jenner & Block
L _,P (Carolina A. Fornos, of counsel), New

YJrk, NY, for Plaintiffs-Appellants Kaffa. et al.

Mark S. Lee, Manatt Phelps & Phillips,

LLP (Benjamin G. Shatz and Alon G. Markcwitz, of counsel), Los Angeles, CA, for
Dpfendants-Appellees.

9. Copyrights and Intellectual Property

=33

Subsequent agreement regarding li

censes for publication of copyrighted
works, stating that "[t]his agreement,
when signed by Author and Publisher, will
cancel and supercede the previous agree
ments," that terminated and superseded
pre-1978 agreement, was not "agreement
to the contrary" solely because it had ef
fect of eliminating termination rights that

Before: SACK, KATZMANN, and

Rk.GGI, Circuit Judges.

SACK, Circuit Judge:

This is an appeal from an order of the

U nited States District Court for the South

ern District of New York (Richard Owen,

Judge) granting summary judgment to the

appellees Thomas Steinbeck and Blake
Smyle based on the court's conclusion that

537 FEDERAL REPORTER, 3d SERIES

196

a "notice of termination" given in 2004 that

copyrights in the covered works in Stein-

purported to terminate, pursuant to the

Copyright Act, 17 U.S.C. 304(c) and (d),
the 1938grant of copyright licenses by the

to publish the works in the United States

author John Steinbeck, was valid.

We
consider on appeal whether an agreement

entered into in 1994 between Steinbeck's

widow and the publisher terminated and

superseded the 1938 agreement, and, if so,
whether the termination notice is therefore

ineffective. Because the termination right

provided by section 304(d) pursuant to

which the 2004 termination notice was is

sued applies only to pre-1978 grants of

transfers or licenses of copyright, and be
cause the 1994 agreement left intact no

be sk's name, the "sole and exclusive right"

and Canada, with Steinbeck receiving roy
alties based on net sales. The agreement

would terminate if any of the covered

works were not kept in print. The agreem :nt was "binding upon [John Steinbeck's]
heirs,

executors,

administrators or as

signs."

During his lifetime, Steinbeck renewed

th3 copyrights in the works covered by the
IS38 Agreement so that they enjoyed prote

:tion under both of the consecutive 28-

pre-1978 grant for the works in question,

copyright terms provided for by the

version of the Copyright Act in effect at

we conclude that the 2004 notice of termi

nation is ineffective. The 1994 agreement

bequeathed his interestin these copyrights

remains in effect.

BACKGROUND

Grants of Licenses of Copyright

On September 12, 1938, the author John

year

time. When Steinbeck died in 1968, he

to

his widow, Elaine Steinbeck.

His sons

a previous marriage, Thomas and John

IS , each received a bequest of $50,000 in a
trbst arrangement.
On October 24, 1994, Elaine Steinbeck

Steinbeck executed an agreement with The

aiid Penguin entered into a "new agree

Viking Press (the "1938 Agreement") that

ment for continued publication" (the "1994

established the terms for the latter's publi

Agreement"). It addressed the publication

b;' Penguin of all works that were covered
by the 1938 Agreement. It added several
other early Steinbeck works, some of his
posthumous works, and some of Elaine

cation of some of Steinbeck's best-known

works, including The Long Valley, Cup of

Gold, The Pastures of Heaven, To A God
Unknown, Tortilla Flat, In Dubious Bat

tle, and Of Mice and Men, in all of which

Steinbeck held the copyright. In 1939, the

agreement was extended to apply to four

later works, including The Grapes of
Wrath, through the operation of an option
clause in the agreement. The rights

granted by the 1938 Agreement were later

assigned by Viking to plaintiff-appellant
Penguin Group (USA) Inc. ("Penguin"),
and the duties thereunder assumed by

Penguin. The 1938 Agreement provided

to the publisher, who agreed to take out
1. A separate agreement was executed on the
same day by Penguin and by Elaine Stein
beck, acting on her own behalf and on behalf

S,einbeck's own works. It also changed

tie economic terms of the 1938 Agree-

ir ent, mostly to Elaine Steinbeck's benefit,

b;i requiring Penguin to provide a far largannual guaranteed advance, and royal2S of between ten and fifteen percent of
retail (rather than wholesale) sales. The
l!)94 Agreement further stated that "when

signed by Author and Publisher, [it] will

cancel and supersede the previous agree
ments, as amended, for the [works] coved hereunder." !
of Thomas Steinbeck.

Thomas Steinbeck rat

ified this agreement on December 22, 1994,

on behalf of the other Steinbeck Descendants.

PENGUIN GROUP (USA) INC. v. STEINBECK

197

Cite as 537 F.3d 193 (2idCir. 2008)

queathing her copyright interests in the

re tp the initial rewards of an early invest

ment in young talent, but it allowed au-

Steinbeck works at issue, as well as pro

th irs to revisit the terms of earlier grants

ceeds from the 1994 Agreement, to various

of rights once the long-term success of

testamentary heirs including her children

and grandchildren from a previous mar
riage, but she specifically excluded Thomas

th iir works became apparent. See id.

Elaine Steinbeck died in April 2003, be

Steinbeck, John Steinbeck IV, and their

heirs. Her statutory termination rights
expired upon her death.
On June 13, 2004, John Steinbeck's sur

When John Steinbeck entered into the

1938 Agreement with Viking Press, the

Copyright Act of 1909 was in effect. Unde r that version of the Act, authors were

entitled to a copyright in their works for

initial twenty-eight year period begin

viving son Thomas, and Blake Smyle, the

ning on the date of a work's publication.

sole surviving child of Steinbeck's other

son, the deceased John IV, (collectively the

A'ter this period expired, the author had

the right to renew the copyright for a
second twenty-eight year term. The purpcse of providing this renewal term was to
permit "the author, originally in a poor
bargaining position, to renegotiate the
terms of the grant once the value of the

"Steinbeck

Descendants")

served

what

purported to be a notice of termination

(the "Notice of Termination") on Penguin

terminating the "grants" made by the 1938

Agreement to Penguin's predecessor-in-interest (Viking).

Statutory Background

The Copyright Act gives to authors and

certain enumerated family members the

power to terminate prior grants of trans

fers or licenses of copyright. This power
is based on Congressional recognition that

young authors frequently enter into longterm contracts with publishers when their
bargaining power is weak and their pros

pects for success uncertain, and discover

increased leverage only when they later
achieve commercial success. Indeed, in an

effort to balance the interests of publishers

and authors, Congress enacted provisions

in the Copyright Act that "attempted to

give the author a second chance to control

w>rk ha[d] been tested." Stewart, 495

U.S. at 218-19, 110 S.Ct. 1750; accord
Marvel Characters, Inc. v. Simon, 310
F 3d 280, 283 (2d Cir.2002) (quoting Stewait).
Publishers could, and often did,

tlwart the purpose of this statutory

scheme, however, by requiring authors to

as sign both their initial and renewal rights

tc the publisher at the same time and
before the long-term value of an author's
WDrk could be ascertained.

This practice

received the legal imprimatur of the Sup:'erne Court in Fred Fisher Music Co. v.
M. Witmark & Sons, 318 U.S. 643, 63
Ct. 773, 87 L.Ed. 1055 (1943), which held
tliat renewal rights could be assigned by
a:l author during a work's initial copyright
tc rm and before the vesting of the renewal

and benefit from his work" and to "secure

right. Id. at 656-59, 63 S.Ct. 773; see also

to the author's family the opportunity to

Afarvel, 310 F.3d at 284.

exploit the work if the author died." Stew

art v. Abend 495 U.S. 207, 218, 110 S.Ct.

The 1976 amendments to the Copyright

Alct, which took effect in 1978, abandoned

1750, 109 L.Ed.2d 184 (1990). Congress

tliis framework.

permitted a publisher the opportunity to

anility of authors to revisit the terms of

This agreement, which itself is not at issue on

this appeal and which governed works of

ties for these works to Elaine Steinbeck and

John Steinbeck that are not at issue on this

the Steinbeck Descendants.

In order to revitalize the

appeal, obligated Penguin to pay higher royal

537 FEDERAL REPORTER, 3d SERIES

198

earlier grants of rights, the amended Act

replaced the two consecutive twenty-eight
year terms with a single copyright term of

(B) The author's surviving children,

and the surviving children of any dead
child of the author, own the author's

increased duration,2 and it created for au

thors or their statutory heirs, with respect
to transfers or licenses of copyright effect

entire

ed prior to 1978, an inalienable right to

terminate the grant of a transfer or li

author's interest is divided among

interest

unless

case the ownership of one-half of the

them.m

The section

(3) Termination of the grant may be

effected at any time during a period of

In the case of any copyright subsisting

five years beginning at the end of fiftysix years from the date copyright was
originally secured, or beginning on Jan
uary 1, 1978, whichever is later.

cense.

17 U.S.C. 304(c).

provides, in pertinent part:

in either its first or renewal term on

January 1, 1978, ... the exclusive or

nonexclusive grant of a transfer or li
cense of the renewal copyright or any
right under it, executed before January
1, 1978, by [the author or the author's
heirs
as
specified
at
section
304(a)(1)(C)], otherwise than by will, is

subject to termination under the follow

(5) Termination of the grant may be

effected notwithstanding any agreement
to the contrary, including an agreement
to make a will or to make any future
grant.

ing conditions:

11 U.S.C. 304(c).

(1) ... In the case of a grant executed

by one or more of the authors of the

This termination right provides authors

oi their statutory heirs with an opportuni

work, termination of the grant may be

effected ... by the author who executed
it or, if such author is dead, by the

ty to recapture some of the additional valproduced by the lengthened copyright

person or persons who, under clause (2)

telrm. See H.R.Rep. No. 94-1476, at 140

(1976), U.S.Cong. Code & Admin.News

of this subsection, own and are entitled

It 76, pp. 5659,5756. It is worth noting

to exercise a total of more than one-half

of that author's termination interest.

tlat section 304(c), by its terms, does not

(2) Where an author is dead, his or her

termination interest is owned, and may
be exercised, as follows:

2.

termination

there is a widow or widower, in which

The consecutive-term renewal structure was

retained for pre-1978 works, however, be

cause a "great many of the present expectan
cies in these cases are the subject of existing
contracts, and it would [have been] unfair and

apply to grants of a transfer or license of

tie renewal copyright made on or after
January 1, 1978. Such grants are subject
tc the slightly different termination right
provided at 17 U.S.C. 203, which, among
right was originally secured."

17 U.S.C.

304(b) (1997). When the Copyright Act

was amended in 1998, for works still within

this seventy-five year term, the length of the

term was extended again to provide those

immensely confusing to cut off or alter these

works with a total of ninety-five years of copy

interests."

right protection.

H.R.Rep. No. 94-1476, at 139

(1976), reprinted in 1976 U.S.C.A.N. 5659,

5755.

Pub.L. No. 105-298, 112

Stat. 2827, 2828-29(1998).

For works still in their renewal term

on January 1, 1978, which include the Stein

beck works governed by the 1938 Agreement,
the amendments extended the expiration date
of the then-governing renewal term until
"seventy-five years from the date the copy-

Prior to her death, Elaine Steinbeck held a

one-half interest in the statutory termination

rights under 17 U.S.C. 304(c)(2)(A).

PENGUIN GROUP (USA) INC. v. STEINBECK

199

Cite as 537 F.3d 193 (2ndCir. 2008)

other distinctions, applies only to grants

District Court Proceedings

made by the author rather than to grants

made by either the author or other parties.

Upon receiving the Termination Notice,

Penguin filed a complaint in the United

Section 304(c) also provides only a limit

ed five-year window of time "beginning at
the end of fifty-six years from the date

copyright was originally secured, or begin

ning on January 1, 1978, whichever is la
ter," 17 U.S.C. 304(c)(3), during which
termination rights may be exercised. If
the termination right is not exercised dur
ing this window, the original grant remains
in effect. So, for Cup of Gold, the earliest
work included in the 1938 Agreement, the
termination right under section 304(c) ex

States District Court for the Southern Dis-

trct of New York seeking a declaratory

igment against Thomas Steinbeck and

Blake Smyle that the notice is invalid.
Pi nguin argued that the 1994 Agreement,
which Elaine Steinbeck was a party,
uberseded and itself terminated the 1938

Aj^eement, and that there was therefore

pre-1978 grant of a transfer or license
the renewal copyright to which section

of

3C|4(d) could be applied.

In a related action, initiated by the Ste
inbeck Descendants, the estate and heirs

pired on August 2, 1990, and for The

Grapes of Wrath, the latest work, the right
expired on April 14, 2000. It is undisput

se eking an equivalent declaration.

ed, however, that no termination right un

for

der section 304(c) was ever exercised with

mations.

Elaine Steinbeck filed counterclaims

respect to the copyrights covered by the

the purposes of the summary judgment

In an order issued June 8, 2006 and

amended July 18, 2006, the district court

1938 Agreement.

When the length of the copyright term

was extended in 1998, Congress provided
an additional window of time correspond

ing to this extension, during which the

same termination right could be, had it not

already been, exercised.

The

trict court consolidated the two actions

See 17 U.S.C.

304(d). For pre-1978 grants whose sec

tion 304(c) termination right, as of October
26, 1998, had expired without being exer
cised, termination could "be effected at

any time during a period of 5 years begin

ning at the end of 75 years from the date
copyright was originally secured." Id.

disagreed, granting summary judgment

against Penguin and Elaine Steinbeck's
h< irs and, among other things, upholding
tie validity of the Termination Notice
served
by the Steinbeck Descendants in
s
cr
2(J04.

Steinbeck v. Mcintosh & Otis, Inc.,

F.Supp.2d 395, 401 (S.D.N.Y.2006).

court rejected Penguin's argument
Tie
T
tH at the 1994 Agreement extinguished the

4:

section 304(d) termination right, observing

tl

at the agreement explicitly contemplated

tl

e future exercise of termination rights

and

that it did not grant Penguin rights

any greater or lesser than those

that-were

Section 304(d) otherwise incorporated the

granted by the 1938 Agreement. Id. The

conditions specified in section 304(c) in

cluding the statutory heirs of an author's
termination right.
See
17 U.S.C.

court also concluded that "to the extent

304(d)(1).

alienable termination rights in the pre-

The Notice of Termination

issued in 2004 by the Steinbeck Descen

dants purported to terminate the 1938

grants of copyright licenses within each

work's section 304(d) termination period.

the 1994 Agreement would strip [the

Steinbeck Descendants] ... of their in
1)78

grants, it is void as an 'agreement to

the

contrary' pursuant to 17 U.S.C.

304(c)(5)." Id, at 402 (footnote omitted).

Ifc the district court's view, "[a]ny inter-

537 FEDERAL REPORTER, 3d SERIES

200

pretation of the 1994 Agreement having

the effect of disinheriting the statutory
heirs to the termination interest[the Ste

inbeck Descendants]in favor of Elaine's

heirs must be set aside as contrary to the

th;.t the 1938 Agreement be terminated,

der New York law,4 "parties to an
agreement can mutually agree to termi
na te it by expressly assenting to its rescission while simultaneously entering into a

v agreement dealing with the same sub-

very purpose of the termination stat

ject matter."

ute.... "Id. at 402 n. 23.

Penguin, and the estate and heirs of

Elaine Steinbeck, appeal from the portion
of the district court's judgment addressing
the validity of the 2004 Termination Notice
as to those works covered by the 1938
Agreement.

I.

Standard of Review

"We review de novo a district court's

ment, in each case construing the evidence

in the light most favorable to the nonmoving party." White River Amusement
Pub, Inc. v. Town of Hartford, 481 F.3d
163, 167 (2d Cir.2007).

Whether the 1994 Agreement Ter

minated and Superseded the 1938
Agreement

The Copyright Act provides a termi

nation right for the grant of a transfer or
license of copyright made by parties other
than the author only if the grant was made

prior to January 1, 1978.

obligations and remedies for breach.

Northville Indus. Corp. v. Fort Neck
Terminals Corp., 100 A.D.2d 865, 867,
N.Y.S.2d 122, 125 (2d Dep't 1984)

Oil

[]W]here the parties have clearly ex-

pr ssed or manifested their intention that

ruling on cross-motions for summary judg

II.

ties

Se?

DISCUSSION

Jones v. Trice, 202 A.D.2d

395, 608 N.Y.S.2d 688, 688 (2d Dep't

19)4). Once terminated and superseded,
the new contract provides all of the par-

394

17 U.S.C.

304(d).
Our first inquiry, then, is
whether the 1994 Agreement terminated

and superseded the 1938 Agreement. We

conclude that it did, leaving in effect no

pre-1978 grants to which the termination

rights provided by section 304(d) could be
applied.

[1, 2] The language of the 1994 Agree

ment makes clear that the parties intended
4. The parties do not dispute that New York
state law governs both the 1938 and 1994

bsequent agreement supersede or sub

a sut
stitute for an old agreement, the subsequent agreement extinguishes the old one
an|d the remedy for any breach thereof is
to sue on the superseding agreement." (in
ternal quotation marks omitted)). The
Agreement states that "[t]his agree
ment, when signed by Author and Publishe r will cancel and supercede the previous

gjreements, as amended, for the Works

a;

# 19 [including those works gov

erned by the 1938 Agreement] covered

der."

We see no valid reason to

disregard this language and to regard the

Agreement as surviving the 1994
Agreement.

Contrary to the district court's observathat "[a]t no point did Penguin lose or
gan any rights other than those originally

tion

gilanted to it under the 1938 Agreement,"

Steinbeck, 433 F.Supp.2d at 401-02, the
1<94 Agreement obligated Penguin to pay
la- ger

guaranteed advance payments and

royalties calculated from the "invoiced re

tail price of every copy sold by the Pub
lic her," rather than "the amount which the

Publishers charge for all copies sold."

Agreements.

PENGUIN GROUP (USA) INC. v. STEINBECK

201

Cite as 537 F.3d 193 (2idCir. 2008)

The 1994 Agreement also modifies the geo

graphic limits of the publication rights as
to the covered works and imposes a re

quirement on Penguin to keep a greater

number of Steinbeck works in print.
[3] The district court correctly ob
served that the 1938 Agreement, by its
terms, "was to continue for as long as the

publishers keep the works 'in print and for

sale,'" Steinbeck, 433 F.Supp.2d at 402 n.
22, but this has little relevance to our

analysis. A contract that remains in force

may still be terminated and renegotiated
in exchange for, among other things, one
party's forbearance of her legal right, such
as a statutory right to terminate a previ
ous grant of a copyright transfer or li
cense. See, e.g., Trans-Orient Marine
Corp. v. Star Trading & Marine, Inc., 925
F.2d 566, 573 (2d Cir.1991) ("[Forbear
ance to assert a valid claim, if bargained
for, is sufficient consideration to support a
contract.").

It is of similarly little relevance that the

1994 Agreement might have intended that
earlier created termination rights survive

it, for our central inquiry is not the parties'

intent to preserve these rightswhich are

granted by statute, not contractbut rath

er their intent

to

terminate

the

1938

Agreement. The availability of termi

nation rights under the Copyright Act is
not dependent on the intent of the parties
but on, among other things, the date that a
grant of rights was executed and the rela
tionship to the author of those seeking to
exercise the termination right. So, even if
we accept that the 1994 Agreement "ex
plicitly carries forward possible future ter
mination," Steinbeck, 433 F.Supp.2d at 401,
it does not matter inasmuch as the pre-

1978 grant of rights no longer existed. To

the extent that the 1994 Agreement might
also have contemplated the potential pres
ervation of termination rights, it does not
abrogate the 1994 Agreement's clear ex-

pr?ssion of intent to terminate all prior

grints of a transfer or license in the sub
ject copyrights.
4]

We also reject the suggestion that,

notwithstanding the plain language of the

19)4 Agreement, there was no effective
termination of the 1938 Agreement becaise the 1994 Agreement provided no
opportunityno "moment of freedom"
fo:- those holding the termination right to
re legotiate the terms of the grant. Appel
lees draw support for this theory primarily
from Nimmer on Copyright 11.07 (6th
ed.1978),
referring
to
17
U.S.C.
304(c)(6)(D).

That statutory provision

re ids:

A further grant, or agreement to make a

further grant, of any right covered by a
terminated grant is valid only if it is
made after the effective date of the ter
mination. As an exception, however, an
agreement for such a further grant may
be made between the author or any of
the persons provided by the first sen
tence of clause (6) of this subsection, or

between the persons provided by sub

clause (C) of this clause, and the original

grantee or such grantee's successor in

title, after the notice of termination has
been served as provided by clause (4) of
this subsection.

Id. (emphasis added). The appellees read

the phrase "only if it is made after the
effective date of the termination" to re-

qi ire a period of time during which holdeis of a termination right "know they will
be free of extant agreements and can neg< tiate for the terminated rights." Appelle is' Br. at 80; see also Nimmer on Copyrijht 11.07. But the next sentence in the

stjatute
provides an exception for the origista1
ml grantee, who may execute a new grant
aiy time after the notice of termination

h;.s been servedno "moment of freedom"

required.

537 FEDERAL REPORTER, 3d SERIES

202

[5] In any event, nothing in section

304(c)(6)(D) prevents renegotiation of a
prior grant where a notice of termination
has not been served.

Such a succeeding

grant of rights would presumably take

place with the parties' knowledge that the
holder of a termination right could exer

cise that right if they failed to reach a new

agreement. It is undisputed that no ter
mination right was exercised prior to the
1994 Agreement, but Elaine Steinbeck did
renegotiate and cancel the 1938 Agree
ment while wielding the threat of termi
nation. Indeed, this kind of renegotiation

appears to be exactly what was intended

by Congress. See Section III, supra.
[6]

Because we conclude that the 1994

Agreement terminated and superseded the

1938 Agreement, it also eliminated the
right to terminate the grants contained in
the 1938 Agreement under sections 304(c)
and (d).

III.

Whether the 1994 Agreement is an

"Agreement to the Contrary" un

der 17 U.S.C. 304(c)(5)

[7] The Copyright Act provides that

"[t]ermination of the grant [of transfer or
license rights] may be effected notwith
standing any agreement to the contrary."
17 U.S.C. 304(c)(5).

The 1994 Agree

ment is not invalid as an "agreement to the
contrary"and the Steinbeck Descen
dants' termination right under section
304(d) is therefore no longer effective
even if the agreement had the effect of

eliminating a termination right that Con

gress did not provide until 1998.
[8]

We do not read the phrase "agree

(d require only the consent of a simple

majority in interest for the exercise of a
termination right. Once the termination
right is extinguished, it is extinguished
with respect to all parties holding a termi
nation

interest,

whether

or

not they

agreed to its exercise. See 17 U.S.C.

304(d) (providing a new termination
right but only "where the author or owner
of the termination right has not previously
exercised such termination right"). Simila:-ly, if a termination right expires without
being exercised, the original grant is no
loiger subject to termination, and the
Copyright Act specifically provides that in
si ch a case a grant would "continue[ ] in
effect for the remainder of the extended

renewal term."

17 U.S.C. 304(c)(6)(F).

If the holders of a majority of an author's

termination interest were to agree that

they would not exercise their termination

ri ;hts, this would have the effect of elimin; ting a termination right as to the minori
ty termination interests. Yet such an
aj;reement could not be held ineffective as
an "agreement to the contrary" inasmuch
as section 304 itself contemplates eliminati m of termination rights in that manner.

[9]

Moreover, the 1994 Agreement did

not divest the Steinbeck Descendants of

any termination right under section 304(d)

wiien the parties entered into that agreeirent. In 1994, only 17 U.S.C. 304(c)

p-ovided

termination

rightsection

304(d) would not become effective for an-

o her four years. It is undisputed that the

S;einbeck Descendants could not have ex

ercised their termination rights in 1994

b jcause they lacked more than one-half of

ment to the contrary" so broadly that it

would include any agreement that has the
effect of eliminating a termination right.
To do so would negate the effect of other

the author's termination interest.

provisions of the Copyright Act that ex

plicitly contemplate the loss of termination
rights. For example, sections 304(c) and

hive realized at that time.

As of

1)94, then, the agreement entered into by

E laine Steinbeck did not deprive the Steinb 3ck Descendants of any rights they could
None of the

pirties could have contemplated that Con

gress would create a second termination

PENGUIN GROUP (USA) 1NC. v. STEINBECK

203

Cite as 537 F.3d 193 (2 nd Cir. 2008)

right four years later.

Had Elaine Stein

3011(c)(5).

There was no such attempt at

beck not entered into the 1994 Agreement,

the section 304(c) termination right would

re characterization here.

have expired,3 and Penguin would have

tory text or the legislative history of the

Cc pyright Act that elimination of a termi
nation right through termination of a pre1978 contractual grant was precluded or
undesirable. The House Report for the
1976 amendments noted, for example, that
nothing in [the Copyright Act] is intended
to change the existing state of the law of
contracts concerning the circumstances in
which an author may cancel or terminate a
license,
transfer,
or
assignment."
H R.Rep. No. 94-1476, at 128 (1976), U.S.
Cong.Code & Admin.News at 5742-43.
The report also noted more specifically
that "parties to a transfer or license"

been bound only by the 1938 Agreement

for the duration of the copyright terms
absent (as ultimately happened) Congres
sional action. We cannot see how the 1994

Agreement could be an "agreement to the

contrary" solely because it had the effect
of eliminating termination rights that did
not yet exist.

[10] Appellees'

reliance

on

Marvel

Characters, Inc. v. Simon, 310 F.3d 280

(2d Cir.2002), is misplaced. There, the

parties entered into a settlement agree
ment that contractually recharacterized an
already created work as a "work made for
hire." Works for hire are exempt from
section 304(c) and (d). We agreed with
the author that the grantee could not use
such after-the-fact relabeling of the nature
of the work to eliminate a future exercise

of the author's termination right under

section 304(c), because the contract consti

tuted an "agreement to the contrary" that

left termination rights unaffected under
section 304(c)(5). Id. at 290. We were
concerned that if such an agreement was
not held to be an ineffective "agreement to

the contrary," authors could be coerced

into recharacterizing works already creat
ed as works for hire so as to avoid subse

quent application of a section 304 termi

nation right. Marvel concludes only that
backward-looking attempts to recharacter
ize existing grants of copyright so as to
eliminate the right to terminate under sec
tion 304(c) are forbidden by section
5.

There is some question as to why Penguin

agreed to terminate and renegotiate the 1938
Agreement, for without a majority termi
nation interest, it appears that Elaine Stein
beck would have been unable to terminate the

There is also no indication in the statu

would retain under the amendments the

continued right to "voluntarily agree[ ] at

aiy time to terminate an existing grant
aid negotiate] a new one." Id. at 127,
U S. Cong.Code & Admin.News at 5743244. So, provided that a post-1978 agreemsnt effectively terminates a pre-1978
giant, Congress did not manifest any in
tent for the earlier agreement to survive
si nply for purposes of exercising a termi
ni tion right in the future. See Milne v.

Stephen Slesinger, Inc., 430 F.3d 1036,

1(46 (9th Cir.2005) (post-1978 agreement

si perseding pre-1978 agreement was of

the type expressly contemplated and en
dorsed by Congress" because it enabled an
aithor's statutory heirs to renegotiate the
te rms of an original grant with full knowl
edge of the market value of the works at
issue), cert, denied, 548 U.S. 904, 126 S.Ct.
2(69, 165 L.Ed.2d 952 (2006).6
a result of a 1983 settlement, it is unclear that

her exercise of those rights would have been

valid. But the resolution of these specula
tions is immaterial to the resolution of this

appeal.

1938 Agreement on her own. Although she

possessed a power of attorney to exercise the

We note that the passages quoted above

concern the termination provision that ap

Steinbeck Descendants' termination rights as

plies to post-1978 grants, rather than the

204

537 FEDERAL REPOR'ER, 3d SERIES

It should be noted that under our

until 1984 at the earliest, and where "[n]ei-

view, authors or their statutory heirs hold

ing termination rights are still left with an

tb>r party intended to revoke and replace

opportunity to threaten (or to make good

on a threat) to exercise termination rights

The 1994 Agreement was not an "agree

ment to the contrary" rendered ineffective

and extract more favorable terms from

byj section 304(c)(5).

[11]

early grants of an author's copyright. But

nothing in the statute suggests that an
author or an author's statutory heirs are
entitled to more than one opportunity, be
tween them, to use termination rights to
enhance their bargaining power or to exer
cise them. See 17 U.S.C. 304(d) (per

{o\ even modify)" a 1976 grant of rights).

CONCLUSION

For the foregoing reasons, the judgment

of the district court is reversed and the

case remanded for entry of judgment in

fa ror of Penguin.

mitting exercise of termination right only

"where the author or owner of the termi

nation right has not previously exercised

O | KEY NUMBER SYSTEM >

such termination right"). In this case,

Elaine Steinbeck had the opportunity in
1994 to renegotiate the terms of the 1938

Agreement to her benefit, for at least

some of the works covered by the agree

ment were eligible, or about to be eligible,

for termination. By taking advantage of
this opportunity, she exhausted the single
opportunity provided by statute to Stein
beck's statutory heirs to revisit the terms
of her late husband's original grants of
licenses to his copyrights. It is no viola
tion of the Copyright Act to execute a
renegotiated contract where the Act gives
the original copyright owner's statutory
heirs the opportunity and incentive to do
so. See Milne, 430 F.3d at 1046; cf Clas
sic Media, Inc. v. Mewborn, 532 F.3d 978,
989 (9th Cir.2008) (termination right pre
served, notwithstanding a March 1978i.e.

post-1978grant of rights, where termi

nation right could not have been exercised

UNITED STATES of America,

Appellee,

John DOE, Defendant-appellant.

No. 06-4124-cr.

United States Court of Appeals,

Second Circuit.

Argued: April 24, 2008.

Decided: Aug. 13, 2008.

Background: Defendant was convicted,

guilty plea, of various offense by the
Ulnited States District Court for the SouthDistrict of New York, and defendant

appealed from denial of his motion to with-

105 S.Ct. 638, 83 L.Ed.2d 556 (1985), and

Gustafson v. Alloyd Co., Inc., 513 U.S. 561,

562, 115 S.Ct. 1061, 131 L.Ed.2d 1 (1995);
see also Milne v. Stephen Slesinger, Inc., 430
F.3d 1036, 1046 n.9 (9th Cir.2005) ("To the
extent that the legislative record references

indeed they both contain the "agreement to

the contrary" clause. "The normal rule of

section 304(c)(5)'s counterpart provision un

der section 203(a)(5), we find that history

termination provisions here at issue. The Su

preme Court has described the two provi
sions, however, as "comparable," Mills Mu
sic, Inc. v. Snyder, 469 U.S. 153, 173 n. 39,

statutory construction

[is] that

identical

words used in different parts of the same Act

are intended to have the same meaning."

instructive given Congress's use of identical

language in both provisions.").

EXHIBIT 7


Westlaw.
Page 1

Not Reported in F.Supp.2d, 2009 WL 928171 (S.D.N.Y.)

(Cite as: 2009 WL 928171 (S.D.N.Y.))

Only the Westlaw citation is currently available.

FN1. Plaintiff Blake Smyle has not asser

ted any claims against M&O, and is not
involved in the instant controversy.

United States District Court,

S.D. New York.

Thomas STEINBECK, an individual; and Blake

Smyle, an individual, Plaintiffs and Counterclaim

Defendants,

Nancy Steinbeck, an individual, Intervenor-Plaintiff,

FN2. By letter dated June 23, 2006,

Thomas Steinbeck also purported to ter
minate his relationship with M&O with
respect to any book publishing rights
Thomas Steinbeck might acquire as a res
ult of Judge Richard Owen's decision that
the Notices of Termination Thomas Stein

v.

McINTOSH & OTIS, INC., a New York Corpora

tion; the Steinbeck Heritage Foundation, a non
profit New York corporation; Eugene Winick, an

beck and Blake Smyle served Penguin

(USA) Inc. ("Penguin") were valid. Affi
davit of Lacy H. Koonce III, Aug. 28,

individual; Samuel Pinkus, an individual; Jean An

2006, Ex. H. However, he sent this letter

derson Boone, an individual; Francis Anderson

individual and Executor of the Estate of Elaine An

prior to the Second Circuit reversing Judge

Owen's decision, and mandating the entry
of judgment in Penguin's favor. Compare

derson Steinbeck; David Scott Farber, an individu

Steinbeck v. Mcintosh & Otis et al, 433

al; Anderson Farber Runkle, an individual; Jebel

F.Supp.2d 395 (S.D.N.Y.2006), with Pen

guin Group (USA) Inc. v. Steinbeck, 537
F.3d 193 (2d Cir.2008). M & O's second
counterclaim, addressing the purported ter
mination as to literary works, is moot be

Atkinson, an individual; Waverly Scott Kaffaga, an

Kaffaga, an individual; Bahar Kaffaga, an individu

al; and Steven Frushtick, an individual; and Does
1-10, Defendants and Counterclaim Plaintiffs.
No. 04 CV 5497(GBD).

cause Thomas Steinbeck cannot terminate

March 31, 2009.

M & O as to rights he does not currently

possess.

MEMORANDUM DECISION AND ORDER

GEORGE B. DANIELS, District Judge.

*1

Plaintiff Thomas Steinbeck filed a

com

plaint alleging various state and federal claims

against, inter alia, Defendant Mcintosh & Otis ("M
FN1
& O").
M&O filed an amended answer in

cluding a counterclaim relating to plaintiffs de

cision to partially terminate the literary agency with
respect to non-literary works.
Thomas Stein
beck moved for summary judgment dismissing M
& O's counterclaim and requesting declaratory re
lief that his partial termination of the literary
agency was proper. M&O cross-moved for judg
ment on the pleadings. M & O's motion for judg
ment on the pleadings is granted. Plaintiffs motion
for summary judgment on M & O's counterclaims
is, therefore, moot.

Familiarity with the facts and parallel proceed

ings in this matter is assumed. Pursuant to a written
agreement, John Steinbeck's widow, Elaine Stein
beck, received a one-half share in royalty distribu
tions from copyright renewal interests for the do
mestic exploitation of certain works of John Stein
beck. His two sons from an earlier marriage, John
Steinbeck IV and Thomas Steinbeck, received a

quarter-share each. To resolve litigation between

the parties, the widow and sons entered a settlement
agreement in 1983 ("the 1983 Settlement Agree
ment") that, inter alia, apportioned royalty distribu
tions into one-third shares and appointed M & O as
the literary agent for John Steinbeck's works. De
claration of Plaintiff and Counterclaim Defendant

Thomas Steinbeck in Support of his Motion for

i 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.

Page 2

Not Reported in F.Supp.2d, 2009 WL 928171 (S.D.N.Y.)

(Cite as: 2009 WL 928171 (S.D.N.Y.))

Summary Judgment on Mcintosh & Otis, Inc.'s

Counterclaim ("Thomas Steinbeck Decl."), June 15,
2006, Ex. 2.

5. The Parties hereby appoint M & O as their lit

erary agent to administer in the future, as it has in
the past, all copyrights and rights deriving there
from in the works of John Steinbeck. Said ap

On May 24, 2004, Thomas Steinbeck's counsel

sent a letter notifying M&O that "effective imme
diately [M&O was] no longer authorized to rep
resent [him] and [John Steinbeck IV's] motion pic
ture, television and ancillary interests ...." Thomas
Steinbeck Decl., Ex. 4.

"A motion for judgment on the pleadings under

Fed.R.Civ.P. 12(c) is analyzed under the same
standard as a motion to dismiss for failure to state a

claim under Fed.R.Civ.P. 12(b)(6). CBS Broad..

Inc. v. Jones,
460
F.Supp.2d 500, 503

(S.D.N.Y.2006). The Court assumes as true all fac

tual allegations made by the non-movant and makes

pointment shall be terminable solely at the dis

cretion of Elaine Steinbeck. Elaine Steinbeck
and/or her agent shall have the complete power
and authority to negotiate, authorize and take ac
tion with respect to the exploitation and/or ter
mination of rights in the works of John Steinbeck
in which John Steinbeck IV and Thomas Stein
beck have or will have renewal or termination

rights. In order to effectuate the terms of this

Paragraph, John Steinbeck IV and Thomas
Steinbeck Steinbeck shall each execute, simultan

eously with the execution of this Agreement, an

irrevocable power of attorney in favor of Elaine
Steinbeck ....

all reasonable inferences in the non-movant's favor.

United Res. Recovery Corp. v. Ramko Venture Mgment., 584 F.Supp.2d 645, 651 (2d Cir.2008). "[A]
court may consider the pleadings and attached ex
hibits, statements, or documents incorporated by
reference, and matters subject to judicial notice."
Life Product Clearing LLC. v. Linda Angel, 530
F.Supp.2d 646, 652 (S.D.N.Y.2008). "Bald conten
tions, unsupported characterizations, and legal con
clusions are not well-pled allegations and will not
defeat a motion." Id. (citations omitted).
Thomas Steinbeck argues that Elaine Steinbeck
obtained the ability to terminate M & O, at her sole
discretion, pursuant to a personal services contract
that ended when the power of attorney was extin

guished, and that the power of attorney he signed

became obsolete upon her death. Plaintiff provides
no other basis for the argument that a power of at
torney would be needed to permit Elaine Steinbeck
to terminate M & O's agency, except that the last
line of Paragraph 5 of the 1983 Settlement Agree
ment necessarily refers to every provision within
Paragraph 5.

Thomas Steinbeck Deck, Ex. 2. (emphasis ad

ded).

The interpretation plaintiff suggests is contrary

to "[t]he [primary] purpose of a written power of
attorney [which] is not to define the authority of the
agent as between himself and his principal, but to
evidence the authority of the agent to third parties
with whom the agent deals." In re Estate of Anyon,
244 N.Y.S. 244, 248 (N.Y.Sur.1930). It would ap
pear nonsensical that a power of attorney would be
necessary to evidence to M & O, the agent, that it
could be fired by Elaine Steinbeck, the principal.
Further, M&O was intimately involved in the pro
cess: M&O stood to benefit from both an appoint
ment contained in the 1983 Settlement Agreement
and from Thomas Steinbeck's stated forbearance of

his right to assert previously unasserted claims

against M & O for breach of fiduciary duty. Al
though, M&O was not a signatory to the 1983 Set
tlement Agreement, M&O received a general re
lease from both sons as a result of the agreement.

There is no indication that the power of attor

*2 Paragraph 5 of the 1983 Settlement Agree
ment reads as follows:

ney Thomas Steinbeck provided to Elaine Stein

beck was necessary to effectuate her discretion to
terminate M&O. The execution of the 1983 Settle-

i 2014 Thomson Reuters. No Cla m to Orig. US Gov. Works.

Page 3

Not Reported in F.Supp.2d, 2009 WL 928171 (S.D.N.Y.)

(Cite as: 2009 WL 928171 (S.D.N.Y.))

ment Agreement alone was sufficient to bring about

the appointment of M & O; similarly, it was also
sufficient to delineate the manner of M & O's ter

mination. Tellingly, the power of attorney specific

ally refers to the settlement provision granting
Elaine Steinbeck control over the exploitation of
the copyrights without any mention of her right to
FNj
specifically appoint or terminate M&O.
Ac
cordingly, even if the power of attorney expired,
this would not effect the provision relating to the
discretion to terminate.

FN3. The powers of attorney executed by

John Steinbeck IV and Thomas Steinbeck

provide that:
[Thomas Steinbeck and John Steinbeck
IV] [irrevocably appoint Elaine Stein
beck Steinbeck [as their] attorney-in-fact
... to exercise their rights of renewal and
rights to terminate grants to third parties
and make new contracts and grants and
assignments of copyrights and to negoti
ate and sign contracts and agreements
and otherwise take and authorize action

on [their] behalf, directly or through

such agents or attorneys-in-fact as she,
in her sole discretion, may appoint, all
solely with respect to the works of John
Steinbeck in which [they] now have or
will have renewal or termination rights
under the U.S. copyright law.
Thomas Steinbeck Deck, Ex. 2.

M&O argues that the literary agency agree

ment covering Steinbeck works, if terminable at all,
is not terminable by Thomas Steinbeck because, un
der the 1983 Settlement Agreement, Elaine Stein
beck held the bargained-for contractual right to ter
minate the literary agency agreement. M&O fur
ther argues that regardless of whether the literary
agency relationship is irrevocable or not, in the ab
sence of any specific grant of the right to another
person, only Elaine Steinbeck's heirs would have
the right to terminate M&O. Thomas Steinbeck

does not argue contrary to this last point, instead he

effectively conceded that "New York law has long
recognized that non-personal contractual obliga
tions are indeed descendible ...," and that "the death

of a party generally does not terminate a contract

which is not of a personal nature." PL's Reply Br.
17 (quoting 22A N.Y. Jur., Contracts, 478, citing In
Re Application of Scott, 234 N.Y. 539 (1922)).
However, plaintiff argues that the ability to termin
ate M & O is not a contractual right, but rather, a
personal services contract, which created an agency
relationship independent of the power of attorney.
His contention, however, is belied by the text of
both the 1983 Settlement Agreement and the
powers of attorney, because the phrase, "in her sole
discretion," found in all of these documents indic

ate Elaine Steinbeck's ability to use her own judg

ment regarding appointment and termination.
Thomas Steinbeck points to nothing in the agree
ment that would prevent Elaine Steinbeck from fir
ing M & O if it was in her interests and contrary to
the sons' interests or objectives. Restatement Third,
Agency 1.01, 2.02 (stating that an agent is one
who consents to act on behalf of the principal and is
subject to the principal's control).
*3 Elaine Steinbeck garnered the right to ter
minate M & O as literary agent for Steinbeck's
works, in her sole discretion, as part of a negotiated
settlement. Plaintiff cannot now argue that her be
nefit of the bargain does not subsist. Meanwhile,
plaintiff raises no question that his benefit under
the negotiated settlement, a one-third, as opposed to
a one-quarter, share of royalty distributions for the
domestic exploitation of certain Steinbeck works,
remains in effect, and is descendible to his would-

be heirs. Paragraph 14 of the 1983 Settlement

Agreement states that "[t]his Agreement shall bind
the Parties and their heirs, successors and assigns."
Thomas Steinbeck Deck, Ex. 2. Accordingly, Para
graph 14 is not limited solely to plaintiffs benefit
under the settlement agreement.
Moreover, Elaine Steinbeck's sole discretion to

terminate M & O is not dependent on the existence

)2014 Thomson Reuters. No Clai n to Orig. US Gov. Works.

Page 4

Not Reported in F.Supp.2d, 2009 WL 928171 (S.D.N.Y.)

(Cite as: 2009 WL 928171 (S.D.N.Y.))

of an executed power of attorney; but, even if it

were, her power of attorney did not terminate upon
her death, because it is most properly characterized
as a power coupled with an interest, which does not
create an agency relationship. Restatement Third,
Agency 3.12(1) ("[This power] is given ... for

S.D.N.Y.,2009.

Steinbeck v. Mcintosh & Otis, Inc.

Not Reported in F.Supp.2d, 2009 WL 928171
(S.D.N.Y.)
END OF DOCUMENT

consideration. It is distinct from actual authority

that the holder may exercise if the holder is an

agent of the creator of the power"). Unlike a power

of attorney that creates an agency relationship, a
power of attorney coupled with an interest persists
beyond the death of the principal or the agent. Re
statement Third, Agency 3.12(1); Id. cmt. b ("A
power may be granted irrevocably for the benefit of
its creator as well as the holder."). Therefore,
Elaine Steinbeck's sole authority to terminate would
continue despite her death, thus preventing plaintiff
from lawfully terminating M&O.
FN4. Plaintiff argues that the power of at
torney he gave Elaine Steinbeck is not a
power coupled with an interest because she
does not own any portion of his one-third
interest in royalty distributions from cer
tain copyrights. The interests in the copy
rights were such that neither could indi
vidually exploit their copyright interests,
as the signatures of all three were neces
sary to execute agreements. The fact that
Elaine

Steinbeck

held

no

interest

in

plaintiffs royalty distributions is irrelevant

because the undivided copyright, not the
royalty distributions, is the "subject mat
ter" of the power of attorney.
Because there is no indication, and plaintiff
does not allege, that Elaine Steinbeck made any
written or oral grant of the power to plaintiff while
she was alive, and she specifically excluded him
from her will, he has identified no instance in
which the discretion to terminate M&O would in
ure to his benefit.

M & O's cross-motion for judgment on the

pleadings is granted.

i 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.

EXHIBIT 8

Westlavu
Page 1

400 Fed.Appx. 572, 2010 WL 3995982 (C.A.2 (N.Y.))

(Not Selected for publication in the Federal Reporter)

(Cite as: 400 Fed.Appx. 572, 2010 WL 3995982 (C.A.2 (N.I )))

appealed.

This case was not selected for publication in the

Federal Reporter.

Holdings: The Court of Appeals held that:

(1) third wife did not have fiduciary obligations to
sons;

United States Court of Appeals,

Second Circuit.

Thomas STEINBECK and Blake Smyle,

Plaintiffs-Counter-Defendants-Appellants,
Nancy Steinbeck, Intervenor-Plaintiff,
v.

STEINBECK HERITAGE FOUNDATION, Steven

(2) son failed to allege attorney-client relationship

with literary agency's principals;
(3) son failed to establish a promissory estoppel
claim against third wife; and
(4) third wife's contractual right to terminate
agency relationship with literary agency was fully
descendible.

Frushtick, Scott Kaffaga, individually and as ex

ecutor of the Estate of Elaine Anderson Steinbeck,

Affirmed.

The Estate of Elaine Anderson Steinbeck, Defend

ants-Counter-Claimants-Appellees,
Does 1-10, Defendants-Appellees,
David Scott Farber, Bahar Kaffaga, Jean Anderson
Boone, and Jebel Kaffaga, Defendants-Counter-Claimants-lntervenors-Defendants-

Appellees,
Francis Anderson Atkinson, Scott Kaffaga, indi
vidually and as executor of the Estate of Elaine An
derson Steinbeck, Mcintosh & Otis, Inc., Samuel

Pinkus, Anderson Farber Runkle, and Eugene H.

Winick, Defend-

ants-Intervenors-Defendants-Appellees.
No. 09-1836-cv.

Oct. 13,2010.

Background: Deceased author's son and grand

daughter brought action against estate of author's
third wife and widow, and literary agency adminis
tering copyrights in author's works, asserting claims
of breach of fiduciary duty, promissory estoppel,
and unjust enrichment. Literary agency counterclaimed, challenging the validity of son's purported
termination of it as literary agent for the estate. The
United States District Court for the Southern Dis

trict of New York, George B. Daniels, J., granted

defendants' motion for summary judgment, 2009
WL 928189, and literary agency's motion for judg
ment on the pleadings, 2009 WL 928171. Plaintiffs

West Headnotes

[1] Principal and Agent 308 =>1

308 Principal and Agent
3081 The Relation

3081(A) Creation and Existence

308k 1 k. Nature of the relation in general.
Most Cited Cases

Unambiguous language in settlement agree

ment among deceased author's sons and his third
wife and widow, conferring upon third wife "the
complete power and authority to negotiate, author
ize and take action with respect to the exploitation
and/or termination of rights in the works of [author]
in which [the sons] ha[d] or wfould] have [had] re
newal or termination rights," foreclosed any argu
ment that the parties intended the sons to retain
control over third wife's exercise of authority con
ferred upon her, as would have been necessary to
create an agency relationship giving rise to fidu
ciary obligations under New York law.

[2) Attorney and Client 45 =>64

45 Attorney and Client
4511 Retainer and Authority
45k64 k. What constitutes a retainer. Most
Cited Cases

Under New York law, allegations of deceased

>2014 Thomson Reuters. No Clain to Orig. US Gov. Works.

Page 2

400 Fed.Appx. 572, 2010 WL 3995982 (C.A.2 (N.Y.))

(Not Selected for publication in the Federal Reporter)
(Cite as: 400 Fed.Appx. 572,2010 WL 3995982 (C.A.2 (N.Y')))

author's son that certain principals of literary

agency administering copyrights in author's works,
who were licensed attorneys, held themselves out
as copyright experts, expressed sympathy for him,
and told him that they had his best interests in
mind, thereby persuading him "to have trust and
confidence in their advice concerning his interests
in his father's works," were insufficient to allege an
attorney-client relationship giving rise to fiduciary
duties between son and agency's principals, espe
cially in light of record evidence that son was at all
relevant times represented by other counsel.

pite author's son's argument that the "sole discre

tion" vested with third wife to terminate the agency
in the parties' settlement agreement did not descend
to third wife's heirs because the contract was a per
sonal services contract; son did not contract to ob
tain third wife's services, but contracted to obtain a

greater share of royalty payments in return for

yielding complete authority over the copyrights at
issue, and third wife's exercise of "sole discretion"

did not require unique and extraordinary skills suf

ficient to qualify the agreement as a personal ser
vices contract.

[3( Estoppel 156 C^85

*573 Appeal from a judgment of the United States
156 Estoppel
156III Equitable Estoppel
156111(B) Grounds of Estoppel
156k82 Representations

156k85 k. Future events; promissory

estoppel. Most Cited Cases
Under New York law, deceased author's son

could not reasonably have relied on purported

promise of author's third wife that he could "market

all rights" in author's travelogue, as required to sup

port son's promissory estoppel claim; such a repres
entation modified relationship between the parties
established by settlement agreement conferring
upon third wife "the complete power and authority
to negotiate, authorize and take action with respect
to the exploitation and/or termination of rights in
the works of [author] in which [the sons] ha[d] or
w[ould] have [had] renewal or termination rights,"
which by its terms could only have been done in
writing.
[4] Descent and Distribution 124 0=^8
124 Descent and Distribution
1241 Nature and Course in General

District Court for the Southern District of New

York (George B. Daniels, Judge).

UPON DUE CONSIDERATION IT IS HEREBY

ORDERED, ADJUDGED, AND DECREED that

the December 4, 2009 judgment of the district court

is AFFIRMED.Jennifer Ancona Semko, Baker &

McKenzie LLP, Washington, D.C., for Appellants.

Susan J. Kohlmann (Tarsha A. Phillibert, on the
brief), Jenner & Block LLP, New York, New York,

for Waverly Scott Kaffaga, individually and as ex

ecutor of the Estate of Elaine Anderson Steinbeck,
David Scott Farber, Anderson Farber *574 Runkle,

Jebel Kaffaga, Bahar Kaffaga, and Jean Anderson

Boone, for Appellees.
Elizabeth A. McNamara (Lacy H. Koonce, III, on
the brief), Davis Wright Tremaine LLP, New York,
New York, for Mcintosh & Otis, Inc., Eugene H.
Winick, and Samuel Pinkus.

PRESENT: ROBERT D. SACK, REENA RAGGI,

Circuit Judges and JOHN G. KOELTL, District
i j
FN*
Judge.

124k8 k. Property subject to descent or distri

FN* District Judge John G. Koeltl of the

bution. Most Cited Cases

Under New York law, deceased author's third

United States District Court for the South

wife's contractual right to terminate agency rela

tionship with literary agency administering copy
rights in author's works was fully descendible, des-

ern District of New York, sitting by desig

nation.

)2014 Thomson Reuters. No Claim to Orig. US Gov. Works

Page 3

400 Fed.Appx. 572, 2010 WL 3995982 (C.A.2 (N.Y.))

(Not Selected for publication in the Federal Reporter)
(Cite as: 400 Fed.Appx. 572, 2010 WL 3995982 (C.A.2 (N.Y')))

SUMMARY ORDER

**1 This court is already well familiar with the

longstanding dispute among the heirs of author
John Steinbeck about copyright interests in his
works. See Penguin Group (USA) Inc. v. Steinbeck,
537 F.3d 193, 204 (2d Cir.2008). On this appeal,
plaintiffs Thomas Steinbeck and Blake Smyle, the
author's son and grandaughter (by Steinbeck's de
ceased son, John IV), challenge an award of sum
mary judgment in favor of defendants the estate of
Elaine Steinbeck, the author's third wife and wid

ow, and Mcintosh & Otis, Inc. ("M & O"), a liter
ary agency administering the relevant Steinbeck
copyrights, on claims of (1) breach of fiduciary
duty, (2) promissory estoppel, and (3) unjust en
richment (with an accompanying request for impos
ition of a constructive trust). See Steinbeck v. Mcin
tosh & Otis, Inc., No. 04 Civ. 5497, 2009 WL

928189 (S.D.N.Y. Mar. 31, 2009)

Plaintiffs
further appeal a judgment on the pleadings in favor
of M & O on its counter-claim challenging the
validity of Thomas Steinbeck's purported termina
tion of defendant as literary agent for the estate. See
Steinbeck v. Mcintosh & Otis, Inc., No. 04 Civ.

5497, 2009 WL 928171 (S.D.N.Y. Mar. 31, 2009).

FN1. In a footnote in their appellate brief,

plaintiffs suggest that, for the same reasons
the district court erred in dismissing their
fiduciary duty claim, it erred in dismissing
claims against M & O for fraud, negligent
misrepresentation, and interference with
economic advantage. Generally, we deem
an argument raised only in a footnote as
waived. See Norton v. Sam's Club, 145

F.3d 114, 117 (2d Cir.1998). We see no

reason to depart from this rule in this case.
See In re Nortel Networks Corp. Sec. Litig, 539 F.3d 129, 133 (2d Cir.2008)
(noting that waiver doctrine is prudential
and may be disregarded in our discretion).
In any event, because we identify no merit
in plaintiffs' fiduciary duty challenge, see
infra at 5-11, these derivative arguments
also fail.

We review an award of summary judgment de

novo, "resolving all ambiguities and drawing all
permissible factual inferences in favor of the party
against whom summary judgment is sought." Burg
v. Gosselin, 591 F.3d 95, 97 (2d Cir.2010) (internal
quotation marks omitted). We will uphold such an
award only if the record reveals no genuine issues
of material fact and the moving party is entitled to
judgment as a matter of law. See Fed.R.Civ.P.
56(c)(2). We review a judgment on the pleadings de
novo, accepting the pleaded allegations as true and
drawing all reasonable inferences in favor of the
opposing party, see, e.g., LaFaro v. N.Y. Cardiothoracic Grp., PLLC, 570 F.3d 471, 475-76 (2d
Cir.2009) (characterizing legal standards for review
of motions to dismiss and for judgment on plead
ings as "indistinguishable"), consistent with the
pleading standards articulated in Ashcroft v. Iqbal,
U.S.

, 129 S.Ct. 1937, 1949, 173 L.Ed.2d

868 (2009), and Bell Atlantic Corp. v. Twombly,

550 U.S. 544, 570, 127 S.Ct. 1955, 167 L.Ed.2d

929 (2007). In applying these standards here, we

assume the parties' familiarity with the facts and
procedural history of this case, which we reference
only as necessary to explain our decision to affirm.
*575 1. Breach of Fiduciary Duty
a. Elaine Steinbeck

[1] Thomas Steinbeck contends that the district

court erred in concluding as a matter of law that the

1983 settlement agreement among himself, his
brother John IV, and Elaine Steinbeck (the "1983
Agreement"), as well as powers of attorney in favor
of Elaine Steinbeck executed by the sons in connec
tion with that agreement, did not create an agency
relationship with Elaine Steinbeck assuming fidu
ciary obligations to the sons and their successors in
interest. We disagree.
**2 Under New York law, an agency relation
ship "results from a manifestation of consent by
one person to another that the other shall act on his
behalf and subject to his control, and the consent by
the other to act." New York Marine & Gen. Ins. Co.

'2014 Thomson Reuters. No Clai n to Orig. US Gov. Works.

Page 4
400 Fed.Appx. 572, 2010 WL 3995982 (C.A.2 (N.Y.))
(Not Selected for publication in the Federal Reporter)
(Cite as: 400 Fed.Appx. 572,2010 WL 3995982 (C.A.2 (N.Y )))

v. Tradeline (LLC), 266 F.3d 112, 122 (2d

Cir.2001) (internal quotation marks omitted). A
principal's ability to exercise control over its agent
is an essential element of agency. See generally Re
statement (Third) of Agency 1.01, cmt. f; accord
Mazart v. Slate,

imposed only specific circumscribed reporting obgations on Elaine Steinbeck, not the full reporting
obligations associated with a fiduciary appoint
ment. See generally Restatement (Third) of Agency
ch. 8.

109 Misc.2d 1092, 1099, 441

N.Y.S.2d 600, 605 (N.Y.Ct.C1.1981) (noting that

"there can be no agency relationship where the al
leged principal has no right of control over the al
leged agent"). Where, as here, parties contend that
an agency relationship is established by contract,
see, e.g., Pyramid Champlain Co. v. R.P. Brosseau
& Co., 267 A.D.2d 539, 544, 699 N.Y.S.2d 516,

522 (3d Dep't 1999), a court will look to the lan

guage of that agreement to ascertain the relation
ship created between the parties, see EBC I, Inc. v.
Goldman Sachs & Co., 5 N.Y.3d 11, 19-20, 799
N.Y.S.2d 170, 175, 832 N.E.2d 26 (2005); North
east Gen. Corp. v. Wellington Adver., Inc., 82

N.Y.2d 158, 162, 604 N.Y.S.2d 1, 3, 624 N.E.2d

129 (1993). When we do so here, we conclude that

the 1983 Agreement did not create an agency rela

tionship.
The 1983 Agreement increased the Steinbeck
sons' shares in certain copyright revenue, from onequarter to one-third each, and, in return, conferred
upon Elaine Steinbeck "the complete power and au
thority to negotiate, authorize and take action with
respect to the exploitation and/or termination of
rights in the works of John Steinbeck in which
[John IV] and [Thomas] have or will have renewal
or termination rights." 1983 Agreement \ 5. This
language is unambiguous and forecloses any argu
ment that the parties intended the Steinbeck sons to
retain control over Elaine Steinbeck's exercise of

the authority conferred upon her, as would be ne

cessary to create an agency relationship. See, e.g.,

The powers of attorney executed in favor of

Elaine Steinbeck support no different conclusion. In
urging otherwise, plaintiffs point to the words
"attorney-in-fact" used in those documents, which
they submit New York recognizes to create an
agency relationship and attendant fiduciary obliga
tions. See In re Estate of Ferrara, 1 N.Y.3d 244,
254, 819 N.Y.S.2d 215, 221, 852 N.E.2d 138

(2006). While reference to an attorney-in-fact can

certainly constitute evidence of agency, we do not
understand New York law to depart from the gener
al principle that labels are not dispositive of the
question. See generally Restatement (Third) of
Agency 1.02 *576 ("Although agency is a con
sensual relationship, how the parties to any given
relationship label it is not dispositive."). The 1983
Agreement makes clear that the powers of attorney
were executed solely to effectuate the authority
conferred upon Elaine Steinbeck under that Agree
ment. That authority was "complete" with no con
trol retained by the Steinbeck sons. Thus, because
the 1983 Agreement did not create an agency rela
tionship between Elaine Steinbeck and the Stein
beck sons, or otherwise impose fiduciary obliga
tions on her, nor did the powers of attorneys inten
ded to effectuate it. See Keyes v. Metro. Trust Co.
of NYC, 220 N.Y. 237, 242, 115 N.E. 455, 456
(1917) ("The purpose of a written power of attor
ney is not to define the authority of the agent, as
between himself and his principal, but to evidence
the authority of the agent to third parties with
whom the agent deals."); accord In re Anyon's Es

Meese v. Miller, 79 A.D.2d 237, 241, 436 N.Y.S.2d

tate,

496, 499-500 (4th Dep't 1981); Garcia v. Herald

(1930); see also Villanueva v. Brown, 103 F.3d

1128, 1136 (3d Cir.1997) (holding, in applying
New Jersey law, that "primary purpose of a power
of attorney is not to define the authority conferred
on the agent by the principal, but to provide third
persons with evidence of agency authority").

Tribune Fresh Air Fund, Inc., 51 A.D.2d 897, 897,

380 N.Y.S.2d 676, 678 (1st Dep't 1976); Krom v.

Sharp & Dohme, Inc., 1 A.D.2d 761, 761, 180
N.Y.S.2d 99, 101 (3d Dep't 1958). The conclusion
is reinforced by the fact that the 1983 Agreement

137 Misc. 582, 585, 244 N.Y.S. 244, 248

>2014 Thomson Reuters. No Claim to Orig. US Gov. Works.

Page 5

400 Fed.Appx. 572, 2010 WL 3995982 (C.A.2 (N.Y.))

(Not Selected for publication in the Federal Reporter)
(Cite as: 400 Fed.Appx. 572,2010 WL 3995982 (C.A.2 (N.Y )))

Rather, the powers of attorney here at issue con

ferred upon Elaine Steinbeck power coupled with
an interest in the very copyrights that were the sub
ject of the power conferred, an arrangement from
which no fiduciary obligation arises. See 330 Ac
quisition Co., LLC. v. Regency Sav. Bank, F.S.B.,
306 A.D.2d 154, 155, 761 N.Y.S.2d 185, 186 (1st
Dep't 2003); Hotel Prince George Affiliates v.
Maroulis, 98 A.D.2d 652, 654, 469 N.Y.S.2d 718,
721 (1st Dep't 1983), rev'd on other grounds, 62
N.Y.2d 1005, 1008-09, 479 N.Y.S.2d 489, 490-91,
468 N.E.2d 671 (1984); French v. Kensico
Cemetery, 264 A.D. 617, 619, 35 N.Y.S.2d 826,
828-29 (2d Dep't 1942), affd, 291 N.Y. 77, 80, 50
N.E.2d 551 (1943); see also Restatement (Third) of
Agency 3.12, cmt. b & illus. 5.

**3 Accordingly, we conclude that plaintiffs

fail as a matter of law to state a claim against
Elaine Steinbeck for breach of fiduciary duty.
b. M& O

M&O was complying with Elaine Stein

beck's directions, we are not persuaded be
cause such inquiry could not reasonably be
expected to create a genuine issue of ma
terial fact as to the existence of an agency
relationship between M&O and Thomas
Steinbeck. See Miller v. Wolpoff & Abramson, LLP., 321 F.3d 292, 303 (2d
Cir.2003).

*577 [2] Nor did fiduciary duties arise by vir

tue of an alleged attorney-client relationship
between Thomas Steinbeck and certain principals at
M&O. "Since an attorney-client relationship does
not depend on the existence of a formal retainer
agreement or upon payment of a fee, a court must
look to the words and actions of the parties to as
certain the existence of such a relationship." Moran
v. Hurst, 32 A.D.3d 909, 911, 822 N.Y.S.2d 564,

566 (2d Dep't 2006) (internal citations omitted); see

also Talansky v. Schulman, 2 A.D.3d 355, 359, 770
N.Y.S.2d 48, 52 (1st Dep't 2003) (finding fact issue
where "totality of the evidence at least suggested]
that defendant was acting as plaintiffs attorney").

We similarly reject Thomas Steinbeck's argu

ment that M&O owed and breached fiduciary ob
ligations created by the 1983 Agreement and
powers of attorney. To the extent M & O is charged
with fiduciary duties derivatively as Elaine Stein
beck's subagent, that argument is foreclosed by our
conclusion that Elaine was not an agent of the
Steinbeck sons. See generally Empire State Ins. Co.

principals who were licensed attorneys held them

selves out as copyright experts, expressed sympathy
for him, and told him they had his best interests in
mind, thereby persuading him "to have trust and
confidence in their advice concerning his interests

v. Am. Cent. Ins. Co., 138 N.Y. 446, 449, 34 N.E.

in his father's works." Plaintiffs Thomas Stein

200, 201 (1893); Restatement (Third) of Agency

3.16. Nor did the 1983 Agreement appoint M&O
to act as agent for the Steinbeck heirs generally.
The Steinbeck sons surrendered "complete author
ity" to Elaine Steinbeck to exploit John Steinbeck's
copyrights and also vested her with "sole discre
tion" to terminate M & O's agency. Under these cir
cumstances, the 1983 Agreement does not manifest
Thomas Steinbeck's ability to control M & O as
would be required to create an agency relationship
giving rise to fiduciary obligations.
FN2.

To

the

extent

Thomas

Steinbeck

urges reversal of summary judgment to al

low him to pursue discovery as to whether

Here, Thomas Steinbeck asserts that certain M&O

beck's & Blake Smyle's Rule 56.1 Statement of Ad

ditional Material Facts in Opp'n to the M & O
Defs.' Mot. for Summ. J. %48, Steinbeck v. Stein
beck, No. 04 Civ. 5497 (S.D.N.Y. Oct. 15, 2008).
Even accepting these allegations as true, they are
insufficient to allow a reasonable factfinder to infer

an attorney-client relationship, especially in light of

record evidence that Thomas Steinbeck was at the

relevant times represented by other counsel. See,

e.g.,

Moran v. Hurst,

32 A.D.3d at 911, 822

N.Y.S.2d at 566 ("The record is devoid of any evid

ence indicating that [the attorneys] either affirmat
ively led [the alleged client] to believe that they
were acting as his attorney or knowingly allowed

)2014 Thomson Reuters. No Claim to Orig. US Gov. Works

Page 6

400 Fed.Appx. 572, 2010 WL 3995982 (C.A.2 (N.Y.))

(Not Selected for publication in the Federal Reporter)
(Cite as: 400 Fed.Appx. 572,2010 WL 3995982 (C.A.2 (N.Y')))

him to proceed under that misconception."); cf.

McLenithan v. McLenithan, 273 A.D.2d 757, 759,
710 N.Y.S.2d 674, 675-76 (3d Dep't 2000) (finding
factual issue as to attorney-client relationship where
attorney advised plaintiffs to sign certain docu
ments, previously represented plaintiffs, had famili
al relationship with plaintiffs, and represented them
with respect to aspects of instant transaction).
**4 Accordingly, we conclude that the district
court properly granted summary judgment in favor
of M & O on the breach of fiduciary duty claim.

2. Promissory Estoppel
Under New York law, a claim for promissory
estoppel requires "a clear and unambiguous prom

ise, reasonable and foreseeable reliance by the party

to whom the promise is made, and an injury sus
tained in reliance on that promise." Williams v.
Eason, 49 A.D.3d 866, 868, 854 N.Y.S.2d 477, 479
(2d Dep't 2008); see also Braddock v. Braddock, 60
A.D.3d 84, 95, 871 N.Y.S.2d 68, 77 (1st Dep't
2009). The district court concluded that Thomas
Steinbeck failed to adduce evidence raising a tri

able issue of fact on the reliance element. We may

"affirm the district court's judgment on any ground
appearing in the record, even if the ground is differ
ent from the one relied on by the district court."
ACEquip Ltd. v. Am. Eng'g Corp., 315 F.3d 151,
155(2dCir.2003).
[3] The record makes clear that Thomas Stein
beck could not reasonably have relied on Elaine
Steinbeck's purported oral promise that he could
"market all rights in" John Steinbeck's travelogue,
Travels With Charley, Compl. ^ 48(c), because such
a representation modifies the relationship between
the parties established by the 1983 Agreement,
which by its terms can only be done in writing. See,
e.g., Capricorn Investors III, LP. v. Coolbrands
Int'l, Inc., 66 A.D.3d 409, 410, 886 N.Y.S.2d 158,

159 (1st Dep't 2009) (holding that party cannot

reasonably rely on promise that conflicts with writ
ten agreement's express terms); *578Ruffino v. Neiman, 17 A.D.3d 998, 1000, 794 N.Y.S.2d 228, 229

Assocs., 42 N.Y.2d 338, 343, 397 N.Y.S.2d 922,

926, 366 N.E.2d 1279 (1977) (noting that, gener

ally, "if the only proof of an alleged agreement to
deviate from a written contract is the oral ex

changes between the parties, the writing controls").

3. Unjust Enrichment and Constructive Trust

Under New York law, a claim for unjust en

richment requires proof "(1) that the defendant be
nefitted; (2) at the plaintiffs expense; and (3) that
equity and good conscience require restitution."
Beth Isr. Med. Ctr. v. Horizon Blue Cross & Blue

Shield of N.J., Inc., 448 F.3d 573, 586 (2d

Cir.2006) (internal quotations omitted); see also
Old Republic Nat'l Title Ins. Co. v. Luft, 52 A.D.3d
491, 491-92, 859 N.Y.S.2d 261, 262 (2d Dep't
2008). Meanwhile, to impose a constructive trust,

the law demands "(1) a confidential or fiduciary re

lationship; (2) a promise, express or implied; (3) a
transfer made in reliance on that promise; and (4)
unjust enrichment." In re Ades & Berg Grp. In
vestors, 550 F.3d 240, 245 (2d Cir.2008); see also
Abacus Fed. Sav. Bank v. Lim, 75 A.D.3d 472, 473,
905 N.Y.S.2d 585, 587 (1st Dep't 2010); Rose v.
Rose, 72 A.D.3d 1060, 1060, 898 N.Y.S.2d 889,
890 (2d Dep't 2010).

To support their claim for unjust enrichment,

plaintiffs appear to argue that Elaine Steinbeck be
nefitted at Blake Smyle's expense by withholding
information from the granddaughter about her ter
mination rights and then exercising those rights
herself without seeking Blake Smyle's consent in a
1994 transaction the validity of which we upheld in
Penguin Group (USA) Inc. v. Steinbeck, 537 F.3d at

204. This was, however, precisely what Elaine

Steinbeck was empowered to do under the 1983
Agreement, which expressly bound Blake Smyle as
John Steinbeck IV's successor in interest. Blake

Smyle's consent was not required for the exercise of

Elaine Steinbeck's authority under that Agreement,

and any attempt by the granddaughter to exercise
rights transferred to Elaine Steinbeck likely would
have violated the 1983 Agreement. The parties do
not dispute that Blake Smyle continues to receive

(4th Dep't 2005) (same); accord Rose v. Spa Realty

'2014 Thomson Reuters. No Claim to Orig. US Gov. Works.

Page 7

400 Fed.Appx. 572, 2010 WL 3995982 (C.A.2 (N.Y.))

(Not Selected for publication in the Federal Reporter)
(Cite as: 400 Fed.Appx. 572,2010 WL 3995982 (C.A.2 (N.Y )))

pro rata royalty payments owed to her under the

1994 agreement she claims unjustly enriched Elaine
Steinbeck. As a result, we identify no benefit de
rived by Elaine Steinbeck at Blake Smyle's expense
and, consequently, conclude that plaintiffs' claims
for unjust enrichment and imposition of a construct
ive trust were properly dismissed as without merit.
4. Termination ofM&O
**5 [4] Thomas Steinbeck argues that the "sole
discretion" vested with Elaine Steinbeck to termin

456, 462, 37 N.E. 489, 491 (1894) (citing Taylor v.

Caldwell, 122 Eng. Rep. 309, 1863 WL 6052
(K.B.I863)). Here, Thomas Steinbeck did not con
tract to obtain Elaine Steinbeck's services; rather,

he and his brother contracted to obtain a greater

share of royalty payments in return for yielding
complete authority over the copyrights at issue to
Elaine Steinbeck, including sole discretion to ter
minate M & O as literary agent.
Second, nothing in the record indicates that

ate M & O did not descend to Elaine Steinbeck's

Elaine Steinbeck's exercise of "sole discretion" re

heirs because the 1983 Agreement was a personal

services contract and, as a result, was not governed
by New York's general rule that, "in the absence of
express words, ... the parties to a contract intend to
bind not only themselves, but their personal repres

quired unique and extraordinary skills sufficient to

qualify this provision of the 1983 Agreement as a
personal services contract. Thomas Steinbeck ar
gues that Elaine Steinbeck's experience made her
"uniquely well-positioned to handle the concededly
difficult and complex process of effectively exploit
ing the copyrights." Reply Br. at 17. Even if that
were true, the power at issue is the authority to ter
minate a literary agent, not Elaine's overall author
ity to manage the copyrights. We are not persuaded
that the exercise of that authority required ex
traordinary skills possessed uniquely by Elaine

entatives." Gura v. Herman, 227 A.D. 452, 454,

238 N.Y.S. 230, 233 (2d Dep't 1929), affd, 253

N.Y. 618, 171 N.E. 808 (1930); see Warner v. Ka

plan, 71 A.D.3d 1, 4, 892 N.Y.S.2d 311, 313-14

(1st Dep't 2009); Di Scipio v. Sullivan, 30 A.D.3d
660, 661, 816 N.Y.S.2d 576, 577 (3d Dep't 2006).
FN3
That distinction does not apply here.

Steinbeck.
FN3. We do not consider whether M&O

should be permitted to invoke the 1983

Agreement because Thomas Steinbeck did
not raise that issue before the district court.

See Singleton v. Wulff 428 U.S. 106, 120,

96 S.Ct. 2868, 49 L.Ed.2d 826 (1976);
Diaz v. Paterson, 547 F.3d 88, 94-95 (2d
Cir.2008). Under the circumstances, we
perceive no unfairness in enforcing
Thomas Steinbeck's waiver.

*579 First, the 1983 Agreement is not a ser

vices contract in the manner described in the de

cisions relied upon by Thomas Steinbeck. See, e.g.,

Buccini v. Paterno Const.

Co., 253 N.Y. 256,

257-58, 170 N.E. 910, 911 (1930) (Cardozo, J.).

Those decisions hold that where unique and ex
traordinary services of a particular obligor are the
subject of a contract, that obligor's death absolves
the parties of any unfulfilled performance obliga
tions. See, e.g., id.; Lorillard v. Clyde, 142 N.Y.

Finally, Thomas Steinbeck has not identified a

material factual dispute regarding whether Elaine
Steinbeck, acting through M&O principals, sur
rendered her right to terminate M & O's agency in
her sole discretion. Even assuming that Elaine
Steinbeck so surrendered those powers of attorney,
Thomas Steinbeck offers no reason for interpreting
that authority as conditioned upon Elaine Stein
beck's holding her stepson's power of attorney. Just
as that power of attorney did not create Elaine's au
thority, which derived from the 1983 Agreement,
neither would release of the power of attorney ter
minate that authority. Consequently, we conclude
that Elaine's contractual right to terminate the
agency relationship with M&O, like other contrac
tual rights not personal in nature, was fully des
cendible.

**6 We have considered plaintiffs' other argu

ments and find them to be without merit. Accord-

2014 Thomson Reuters. No Clai n to Orig. US Gov. Works.

Page 8

400 Fed.Appx. 572, 2010 WL 3995982 (C.A.2 (N.Y.))

(Not Selected for publication in the Federal Reporter)
(Cite as: 400 Fed.Appx. 572, 2010 WL 3995982 (C.A.2 (N.Y )))

ingly, the December 4, 2009 judgment of the dis

trict court is hereby AFFIRMED.
C.A.2 (N.Y.),2010.
Steinbeck v. Steinbeck Heritage Foundation
400 Fed.Appx. 572, 2010 WL 3995982 (C.A.2
(N.Y.))
END OF DOCUMENT

2014 Thomson Reuters. No Clai n to Orig. US Gov. Works

EXHIBIT 9

9C28PENC
1

UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YORK

__.x

2
2

THOMAS STEINBECK, etal.,

Plaintiffs,

v. -

04 Cv. 5497 (GBCl)

MclNTOCH & OTIS, INC., etal.,

Defendants.

PENGUIN GROUP (USA) INC.,

Plaintiff,

10

10
11

v.

06 Cv. 2438

(GBD)

11

12

THOMAS STEINBECK, et al.,

12

13
13

Defendants.

14
14

15

December 2, 200?

15

10:25 a.m.

16
16

Before:

17
17

HON. GEORGE B. DANIELS

18

District Judge

18
19

20
21

22
23
24

25

SOUTHERN DISTRICT REPORTERS, P.C.

(212)805-0300
9C28PENC

APPEARANCES
HOLLAND & KNIGHT LLP

Attorneys for Plaintiffs Thomas Steinbeci and Blake Smyle

BY: SEAN C. SHEELY

COX PADMORE SKOLNIK &SHAKARCH'tf LLP

Attorneys for Intervenor Plaintiff Nancy Steinbeck

BY: SANFORD HAUSLER

COWAN, LIEBOWITZ & LATMAN, P.C.

Attorneys for Plaintiff Penguin Group

BY: RICHARD DANNAY

THOMAS KJELLBERG

9
9
10

10

DAVIS WRIGHT TREMAINE LLP

Attorneys for Defendant Mclntoch & Otis
BY: ELIZABETH A. McNAMARA

11
11

12
12

JENNER & BLOCK

Attorneys for Estate of Elaine Steinbeck

etal.

BY: SUSAN J. KOHLMANN

13
13
14

15
15
16

16
17
18

19
20

21
22
23
24
25

SOUTHERN DISTRICT REPORTERS

(212)805-0300

P.C.

9C28PENC

(Case called)

THE DEPUTY CLERK: Will the attorney s

please state

their name for the record starting with plainti;ilr.

MR. SHEELY: Sean Sheely from Holl nd & Knight for
plaintiffTom Steinbeck and Blake Smyle.
MR. HAUSLER: Sanford Hausler, Cox

Padmore Skolnik &

Shakarchy LLP, for intervenor plaintiffNancy Steinbeck.

MR. DANNAY: Richard Dannay with rr y colleague Thomas
Kjellberg for Penguin Group.
10

MS. McNAMARA: Elizabeth McNama a, Davis Wright

11

Tremaine, for Mclntoch & Otis.

MS. KOHLMANN: Susan Kohlmann,. enner & Block, for the

12

13
14
15
16
17

18
19
20

21
22

23
24

25

estate of Elaine Steinbeck and the related d Pendants.

THE COURT: Good morning.

Let me see exactly where we are with egard to the
did get some letters. I guess I can add ress that
first. I guess the original letter was from Ms. Kohlmann.
MS. KOHLMANN: I think, your Honor it may make sense
to start with Mr. Sheely's letter about the stifulation.

case,

THE COURT: OK. Let's deal with tha first.

Mr. Sheely, what is the status withi reg ird to that?

MR. SHEELY: We requested the conf rence here today so
that the Steinbecks can move forward with t leir appeal in this
matter. On March 31, your Honor entered a i order dismissing
the Steinbecks' complaint. We have filed ar appeal from that,

SOUTHERN DISTRICT REPORTERS

(212)805-0300
4

P.C.

9C28PENC
1

and in order to move forward with the appelal, there are some

housekeeping issues to be done so we havfe a final judgment

here.

5
6
7
8
9

Thereare some counterclaims by the defendants

that

were not the subject of the pending summary judgment motions.

There is also an intervenOr complaint. I ha te conferred with
counsel for the defendants, and on November 17 we submitted to
the Court a proposed stipulation and order ;hat would
all of the outstanding counterclaims that weYe open.

resolve

The stipulation also addresses the in|ervenor

10
11

complaint, but I don't know what Nancy StAi nbeck's position is

12
13

with respect to the dismissal of the intervenor complaint, and

if we can resolve that, then I think we are r ady to move

14

forward with the Second Circuit.

THE COURT: At this point, you heard nothing from

15
16

Nancy Steinbeck's counsel?

MR. SHEELY: Mr. Hausler is here tc day. I had a brief

17

18
19

conversation with him yesterday. He said le was going to be

appearing, but I don't know what Nancy's f osition is with

20

22

respect to the stipulation or the dismissal qf the intervenor

complaint.
MR. HAUSLER: I conferred with my client yesterday and

23

certainly put forward all of the relevant factjs

24

certainly aware of the Court's ruling on the prior motion, and

25

that since her claim is tied to Tom's claim, :hat the Court

21

She is

SOUTHERN DISTRICT REPORTERS

(212)805-0300

P.C.

9C28PENC
1

inevitably at some point would dismiss at

claim which was dismissed as to Tom.

3
4

I am not authorized at this point to en er into a

stipulation, but she is aware that the Court nay very well

dismiss that action notwithstanding her refujsal

6
7

that stipulation.
THE COURT: Is there any reason foi us having any
further conversation with you on this issue'

8
9

least that first

to enter into

MR. HAUSLER: No.

THE COURT: Then she is not going to stipulate, and we

10
11

will do what needs to be done.

12

Do you have any intent on her behal! to do anything

else with regard to this litigation?

13

MR. HAUSLER: Obviously, it depen

14

is on what the Court

15

does.

16
18

THE COURT: I am ready to dismiss So it doesn't

depend on what the Court does. It depenc s on what you intend
to do with any alternative, if you say I shoupd do something

19

other than dismiss.

17

20

MR. HAUSLER: No.

21
22

THE COURT: Ifyou tell me you havfe

23

24
25

some other

application or motion to make, or somehow you think there is a

legitimate basis to pursue her claim in this case

independently, then I will hear you. But if rpot, based on this
record, I think if I had a signed stipulation ty all of the
SOUTHERN DISTRICT REPORTERS P.C.

(212) 805-0300
6

9C28PENC
1

other parties, she wishes to decline to sign

stipulation, you're not telling me you're purs jing this case

before this courtany further on any particular issue and you
have any further application, then I am prepared to sign the

3
4

uch a

stipulation and dismiss the entire case.

Do I have a stipulation with signatures on

MR. SHEELY: You don't have one wi i signatures, your

8
9

10
11
12

it?

Honor. It does address the intervenor comr Iaint

in two

separate paragraphs. Iam not sure whether we should just

strike that portion and a separate order s ho|uld be entered by

the Court dismissing those. I am looking al page 5, paragraph

7Aand B relate to the intervenor complaint
THE COURT: My suggestion is this.

13

I would leave it
on behalf of

14

as is with everyone's signature but a signat jre

15

Nancy Steinbeck. Then I would submit to n e a proposed order

dismissing that claim, very simple and stra i^htforward,

16
17
18

consistent with this. You can run it by Mr.

Ha uslerand see if

he has any comments to make, but send it o me right away, and

19

Iwill sign that, and I am prepared to sign th 3 stipulation

20

now.

MR. SHEELY: Great. Thank you yotir Honor,

21
22
23
24

25

MS. McNAMARA: You have our executed copy, don't you?

We can execute it right now and give t to the Court,

THE COURT: Just tell me when you are prepared for me
to do it. I have my copy. I am just waiting tairesolve that
SOUTHERN DISTRICT REPORTERS P.C.

(212)805-0300
7

9C28PENC
1

issue and sign a copy.

MR. SHEELY: We have a fully executed one here.

THE COURT: Just hand it to my clerkand Iwill sign

it.

MS. KOHLMANN: If I could.

THE COURT: Yes. Ms. Kohlmann w lat d
i o you want me to

6
7

do?

MS

question.

10
11
12

13

KOHLMANN: You may be sorry ylou asked me that

THE COURT: You may be sorry you

asked me.

MS. KOHLMANN: Your Honor, there are, I believe, now

two letters with respect to the following iss3U 3 n fact, the
stipulation you just signed, in which Tom Steinbeck and Blake

14

Smyle have now stipulated, in effect, to you

15

decisions, which includes that the September 1983 settlement

16

agreement is effective, notwithstanding thoge decisions, what

Honor's March 31

17

has occurred is that Tom Steinbeck and his wife Gail and Blake

18

Smyle are unwilling effectively to live by tha

19

23

could just direct your Honor THE COURT: They don't have a choice
MS. KOHLMANN: That's my view,
r Honor. And they
have not moved for a stay. In fact, the lette that Mr. Sheely
has submitted to your Honor, if I could, with your indulgence,

24

go through a few points because this is truly

20
21
22

decision. If I

critical.

25

THE COURT: Let me cut to the chas

It seems to me

SOUTHERN DISTRICT REPORTERS ,P.C.

(212)805-0300
8
9C28PENC

that reading of the stipulation and reading o the Second

Circuit opinion and reading of this Court's O;pinion makes clear
that they have nothing to say about this. Thley can complain

all they want. They can complain for decades I can't stop

them from complaining. I assume anybody hat you are

negotiating with, with regard to any of the ridhts at issue,

they have competent counsel and they can ead these decisions
as clearly as you can read them, and they h
what the

9
10
11

12
13
14

consequences of that is, despite what calls 'hey get

independently from the individuals.
If you tell me the lawyers on their behhlf are

representing that the status is something different than what

it is, that's a different thing. I don't want to harshly say
this, but they can go to their grave thinking hat they deserve

15

more. It doesn't matter. It doesn't matter.

16

19

decided. If anybody thinks this issue is not decided, you can

hand them a copy of various decisions ini ths case, including
this stipulation that makes it clear that they lave no rights
to assert beyond what the limits are that ha re been set by the

20

court.

17

18

21

I am not prepared to monitor this situ

fhis issue is

tion for the

22

rest oftheir lifetime and my lifetime and youjr

23

tell them that they can't complain, they can1, tell people that
everybody should get a better deal. If that's their position,
and they are persuasive about that, maybe everybody will make
SOUTHERN DISTRICT REPORTERS P.C.

24

25

ifetime to

(212)805-0300
9

9C28PENC
1

more money. I assume every time you hearjd

situation, and you made it clear to them that this has been in
litigation for years, and to the extent that the/ are claiming
that they have some greater rights than what has been
determined by this court, it should be clear tp everybody and
clear to their lawyers who you negotiated wi h that there is
absolutely no basis for them to do that, and hey can either

3
4
5
6

about such a

take their phone calls or they can politely sa^ to

sorry, we have reviewed court decisions, an i we have discussed

it with the counsel involved, and it's clear to us that you

10

them, I am

11

don't individually have much to say about tf|is

12

appreciate your input, but we are going to i dependently

13
14

negotiate with the individuals that have the

negotiate, and negotiate what we think are

15

appropriate.

16

Unless you have some greater conceifn other than they

are out in front of somebody's business anc walking up and down
with a protest sign saying, I am being unfairly treated, give
me more money, I am not sure what it is yo j want. Do you want

17

18
19
20
21

22

and we

x>wer to

erms that are

me to scold them?

MS. KOHLMANN: I am hopeful, your Honor, that their

lawyer will perhaps show them this transcript

23
24

25

Just to highlight some of the issues, thfere is a very

important audio rights amendment to the Pe ig uin agreement, and
their lawyer in his letter says that it's outside the Penguin

SOUTHERN DISTRICT REPORTERS

P.C.

(212)805-0300
10
9C28PENC
1

agreement. It's not. It's paragraph 10 oni page

Penguin agreement. They have actually bee|i out,

independently, based on the letter that his cl jnts have written to Penguin, shopping rights that they lave no rights
to. They have been publicly involved in the Google book
settlement, misrepresenting that they repres nt the Steinbeck

4
5
6
7
8

estate. That's a problem. That's a problem

exploitation.

6 of the

apparently,

terms of

13

So I think your Honor has done exactly what we need,

which is to state that your Honor has ruledI 01 this, and we
have the rights and we are going to go forws rd. At this point,
I don't know that there is anything more to d< >. If we need to
do some sort of motion practice if they won't stop, then we

14

will.

9
10
11
12

THE COURT: As I say, if what is soi ol ivicous to you

15
16

17
18
19
20
21

22
23
24

25

should be obvious to them and obvious to>&'e rybody else, then I

some
think there is not much else to do. If there
argument,
I
legitimate, good-faith basis to make some other legal

despite the language of the agreement, that s for another day.

It seems to me that they can try and sit arou i d the room and be
as creative as possible and try to figure out whether there is
some other way to pursue this issue, butt wit i regard to the
issues that have already been presented to his court and the
Second Circuit, those issues have been re solved, and very
clearly resolved. I think at least all the lawyo rs should
SOUTHERN DISTRICT REPORTERS P.C.
(212)805-0300
11

1
2

3
4
5

6
7

8
9

10
11
12

13
14
15

9C28PENC
understand that.

If there is something they legitimately believe is

outside any decision that has been made by the courts, that can
be litigated on another day. I can't give an advisory opinion
to anyone who wants to negotiate with the p jrties about whether
or not what they are negotiating is somehow outside the realm
of what has been litigated here. As I say, I had Ithis
conversation with you. Maybe this transcript is good enough,
Ifit's not good enough, you can make ai specific application
with regard to either a lawyer's activity or a client's
activity, but insofar as it may be awkward fo- you, I am not
sure they have either done anything or accc mplished anything
ility to
that would illegitimately interfere with your cbilit

negotiate within the authority and power the'tyou have.

Did you want to be heard at all on this issue?
MR. SHEELY: No. I think your HonoJ s

16

conclusion is

17

just what we urged in our letter. I don't hav? anything to

18

add.

19

THE COURT: I am putting the final touches on the

summary judgment motion. When I say1final touches, literally,

20

22

I expect to have it to you today. At this point, I just want

to make some final quick changes, and I jxpect to have it to

23

you by the end of the day.

21

24
25

The reality is that I am granting the summary judgment

motion. Iam denying the request for furtl|i er

discovery. I
SOUTHERN DISTRICT REPOR" ERS, P.C.
(212)805-0300
12

9C28PENC
1
2

3
4

5
6
7

8
9

10
11

think given the clear legal determinations )y the Second

Circuit, in conjunction with the decisions that Ihave been made
by this court subsequent to that, I think; th.it it is
appropriate to grant summary judgment, end I don't think
further discovery on the unclean hands issue would be
appropriate given the nature of the issues involved and
determinations made by the Second CiIrciit and this court and
the history of this case.
So I am going to issue that order toe ay I think

that, if I am correct, that leaves the only outstanding legal

dispute the counterclaim in the case How do you want to

12

proceed with regard to that or do you warjt to evaluate that

13

after you get this opinion or procedurally how do you want to

proceed?
MR. SHEELY: I think we can probably evaluate it after
we read the opinion. Your Honor is corre :t, it does leave open
the counterclaim on East of Eden. We a eady have outstanding
discovery, some of which has been proddced, some of which I
think we need to finalize execution of a protective order. We
have got some deposition notices that we had sort of put on

14

15

16
17
18

19
20

mbtion. So assuming

21

hold until we heard the outcome of this

22
23

that the parties can agree on a discovery schedule, then I

think we would just move forward, and if \|ve needed the Court's

24

assistance, we can reach out to you at

25

that time,
THE COURT: Does it make sense 'or me to set another

SOUTHERN DISTRICT REPOR- ERS, P.C.

(212)805-0300
13

1
2
3
4
5

6
7
8

9
10
11

12

13
14

9C28PENC
conference date a few months out?

MR. SHEELY: I think that's a good idea.

THE COURT: At what point do you think that would be

appropriate? February?
MR. SHEELY: Why don't we get a February date? With
the holidays here, it will give us a chance o get some of this
discovery under our belts in January, and if we had a February
conference, I think that would be a good dontrol date.
THE COURT: Why don't I do late February?
February 24 at 10:00. That's a Wednesday.
MR. SHEELY: Thank you, your Hopor.
THE COURT: I will set that down.

I will give you copies. I don't know f you want the

original or you want me to file the original or an ECF filing.

15

MR. SHEELY: ECF is fine.

16

THE COURT: I don't really need

tha

original for the

17

ECF filing. Ifyou want the original back, can give you the

18

original back.

19
MR. SHEELY: Sure. Iwill put it in the file.
20
THE COURT: Iwill give you those copies.
21
As Isay, Iwill, hopefully, before the $nd of the
22 day, or early this afternoon, I will put out the decision

so

23

you will get notification of that.

24
25

We are going to file the original. My secretary is

going to take care of that. I have copies for everybody.
SOUTHERN DISTRICT REPORTERS P.C.

(212)805-0300
14

9C28PENC
1
2

3
4

set it flown for February. Ifthere are any is sues that arise
before then, just let me know and I will bring you in before
then if necessary, and I will get this decisi out, hopefully,
today.
Is there anything else then we need to address?
(Adjourned)

7
8

9
10
11
12
13

14
15

16
17
18

19
20
21
22

23
24
25

SOUTHERN DISTRICT REPORTERS, P.C.

(212)805-0300

EXHIBIT 10

10/01/2014

X
2

WED

11; 27

PAX 212

68?4

Nwno: Tho PUdii Group, Im,.

Mcintosh 5. Otis

inc.

City & State: Santa Barbara, CA 93106

Telephone: 005-665-0275

In Propria Persona

RECEIVED

BEFORE THE STATE LABOR COMMISSIONER

Of"THE STATE OF CALIFORNIA

OCT 1111013

State of Cfll fornla

Labor Commlieloner
San prandtoo

CW No. i (Number)

12003/011

PBT TION TO DETERMINE. CONTROVEKSY

(],4or Code Section 1700.44)

The Polladln Group Inc.

10

on bahair of Thomas StoinbacK

11

On bohalf at Httncy Stsinbock

Lloenstng & fiefllBtratlon

if.
13

Faticlonar.

14
vs.

ja
16
17
18

19

RWSG Literary Agency

Geoffrey Stanford

Jill llolwagar Qiilocl and .the

Partners therein
Respondents.

20
21

22
23

24

Petitioner aliecjas as Xollows:

1

Phis petition is Cilwd pursuant to ti> authority oi! aectlon 1700.44 of

the Labor Code Of tho atat ot California

ES

26
27
2U

PETITION TO nETBRMINJS CONTROVERSY (Labor Code Section 1700.44)

10/01/2014 WED 11:28

FAX 212

6894

Mcintosh &

Ot is

ht ,11 rimes Mentioned Herein Thomas St

Inc.

3004/011

hinbeck wee and is now c resident

of the county of Santa Barbara, "" of Cal

Lfor^ia, and an artist (Talent

700.4 of the Labor Cods.

Agency) A3 that term is defied i" 9oCti,:,n l

III

4
b
6
1

t acted in the capacity of a

Ar all times mentioned herein Redden

:,a
Talent Agency and was not duly licensed by t

Laws of the State Of

California.
IV

9
10
11

Petitioners wera novel pseaented with f

H*podnts. im partis h" """ unt0,:'

l4prMrttion by Respondent* or any atrili'

r did they siyn * contract with

d into a written contract, for
tea ol Respondents.

12

13
14

15
16

17

18
19

2D

21
22

23

24
25
26

27
26

A Controversy haa -risen between Petit

contract in chat Petitioner contends a i"l

one

x and ftospondent under said

ows

Petitioners are the autnor/screenwrita : Thomas Steinbeck, son of the

(second wife, Cwyti Conger

late Nobel Laureate John Steinbeck and his

n steinbeok IV's estate and for
Steinbeck, and Nancy Steinbeck, heix to Joh
ay, Geoff-rey flaniord and Jill

which Thomas Steinbeck hold* power ot atto

nUepondents) have put ^hemac-ive*

lielweger GlUetf. of RWSfi Literary Aqency (

ate or: California functioning
forward as licensed talent agents in che et
ork. Petitioners were never
sub-agent to Mcintosh * Otis (MsO) in New *
, Steinbeck read in the media
informed of Reeponden" activities until Mr

as a

trader that Respondents, had negotiated filn deals baaed upon "East o Eden"
and M'he Grape* of Wr-c/i", two of the most

Steinbeck library. Thomas either own. or cc

valuable properties in the John

ntrola 2/3'a of those domestic

,Pre never hired by the Steinbeck

intellectual property rights. ReBpondon-* *
,*pondents relationship with M*0
family, nor were th* Steinbecks awara of Ri
PETITION TO DETF.RMINE CONTROVERSY

(Labor Code Suction 1700.441.- 2

10/01/2014 WED 11:28

fax 212

6894

Mcintosh &

Ot is

Inc.

0005/011

Uptil their discovery of that relationship th rough wikki Finks's

s but claim to have no fiduciary
Deadline,co*. M*0 represent the foreign rilQh
k is a member of WGA West, The
duty to the Steinbeck family. Then** Stein*
Authors Guild and the National writers Uniion
ie ;

6
7

8
9
10
11.

12
13
1.4

lb

15
17
18
IS

20

21
22

23

24
2b
20
27
29

^a, Reepondenta are functioning

Regardlee- of M40'a position in this c
that lisn no license in either
without . license on behalf of another agan C/
intain their proper corporate
California or New York. M&0 ha, tailed to nt
nts have failed to perform due

status in New York or California, thoa Res ponde

Respondents are, without, notice
diligence in creating an alliance with "*0.
ceklng a 20* commission from PetJr.ioners . ft' l literary contacts c"" the

right and title to John Steinbeck's works ) at Petitioners aa Author,

contracts to l>etiUonrs
Respondent* have failed to dslivnr copies
discuss or inform Petitioners of any offers

or to

rondo on their behalf. While

Respondents huve two lawyers on their staff

both are on inactive status,

therefore are unqualified to serve * legal

counertl in lieu of a licensed.

talent agent atat.ua.

WHER&FORK, Petitioner ?ceka the follow

Petitioner* seek a Judgment by the I/b

.jig determination;

,r commission requiring that

Respondents refrain from representing Petit .oners

Whatsoever. Petitioners' demand that tha tw|. nr.y

oarnod, market sxcestfive, and unfair commit

ne a client In any manner

percent (20%) Illegally

ions be returned to Petitioners

r'a fees incurred by Petitioners,

with penalties and interest and any attorno

yetiCionere demand thao Respondents inform ill parties with whom they hove

negotiated on behalf of Petitioner* in *>i

no right to represent the Steinbeck feftily

,f the United States that t.hoy had

and that duo to their actions,

had a clean chain of title in the

those parties do not now nor have they .*or

root or obtain those rights they
Steinbeck iiaelUecuol properties and to co

must contact the Steinbeck family directly.

PETITION TO OOTIiRMINE CONTROVERSY (Labor Code Section 1700.4 4)

10/01/2014 wed 11:28

fax 212 A

6894 Mcintosh & Ot is

Dated

Inc.

3006/OU

this flth of: October, 201.3

2
3

ft:

ey-in-fact - ail iSpiyht

5
6
1

10
11
12
13
14

15
16
17
IB

19
20

21
T2.
23

24

2f)
2(3
21
20

PHTITTON TO UETKRMINB CONTROVERSY (Labor Codp Section J700.44) - 'I

10/01/2014 WED lls28

FAX 212

6894

Mcintosh & OtLg

inc.

TITLE 8 CALIFORNIA CODE 0: REGULATIONS

UNDER SECTION 1700.44

ARTICLE 2, CONTROVERSIES SUBMITTE D

LABOR COD!

12022. Filing of Application for Hearing to Determine Controversy

ofthe Labor commissioner, Licensing

Proceedings shall be commenced by filing "the office

_.. to Determine Controversy between the
Division, P.O. Box 420603, Sap Francisco, Ca 94142. a-Petition
amand of the petitioner and shall be^lgned
artist and talent agency which shall set forth the claim or and shall set forth:

by the petitioner or aperson duly authorized to act for

hln

(a) Astatement as to the nature ofthe contra /, Including submission ofsuch pertinent
information as Is within the knowledge of the petitioner,
(b) The claim or demand of the petitioner.

(c) Acopy of any contract pertaining to the cont oversy.

12032.1 Form

The following form repents the minimum requjl

re

ments for Petitionto Determine

Controversy.

Hadln Group INC,

NAME OF REPRESENTATIVE; Gall Knight - President, Pal93108

Street Address: 1482 E. Valley Rd. #100 Monieclto Ca, 9

City &State: Montacito, Ca
Telephone NumbBn.(805) 565-02.75

CresentatWe forPet.tioner: Gall Kn.eht -President PalIfcidln Group INC.

BEFORE THE STATE LABOR COMMISSIONER
OF THE STATE OF'CALIFORNIA
Palladin Group Inc.

On behalf of Thomas Steinbeck

On behalf of Nancy Steinbeck
Petitioner.

Uo,

ETITION TO DETERMINE CONTROVERSY

{Labor Code Section 1700.44)

vs.

RWSG Literary Agency

Geoffrey Stanford

Jill GHIettand all partners theln

Respondents.

'

This petition Is filed pursuant to the authority of Section 1700.44 ofLabor Code of the State of

California.

0007/011

ORIGINAL

UNITED STATES DISTRICT COURT, CENT *AL DISTRICT OF CALIFORNIA

CIVIL COVER SHEET

I. (a) PLAINTIFFS (Check box if you are representing yourself Q )

DEFENDANTS

WaverlyScott Kaffaga, as Executor of the Estate of Elaine Anderson Steinbeck

Thombs Steinbeck, Gail Knight Steinbeck, andThe Palladin Group Inc.

(Check box ifyou are representing yourself

(b) County of Residence of First Listed Plaintiff New York

Cour ty of Residence of First Listed Defendant

(EXCEPT INU.S. PLAINTIFF CASES)

(IN as PLAINTIFF CASESONLY)

(c) Attorneys {Firm Name, Address and Telephone Number) If you are

Attor leys {Firm Name, Address andTelephone Number) Ifyouare

representing yourself, provide the same information.

repre

enting yourself, provide the same information.

JennerS Block LLP

633 West 5th Street, Suite 3600

Los Angeles, CA 90071
Telephone: (213) 239-5100

III. CITIZEN: SHIP OF PRINCIPAL PARTIES-For Diversity Cases Only

II. BASIS OFJURISDICTION (Place an Xinone boxonly.)

(Place aq Xinone boxfor plaintiff and one for defendant)

Q 3. Federal Question (U.S.

[~j 1.U.S. Government

Government Not a Party)

Plaintiff

I j 2.U.S. Government

fjl [fl ^T^t^T^ D 4 "

Citizen of Anotl ler State

[x] 2

of Business in this State

2 Incorporated andPrincipal Place

of Business in Another State

[X|4.Diversity (Indicate Citizenship

Citizen or Subje ct of a

ofPartiesinltemlll)

Defendant

Citizen ofThis fete

Foreign Countr'

3 Foreign Nation

fj 6 Q 6

IV. ORIGIN (Place an Xin one box only.)

1. Original
Proceeding

2. Removed from
State Court

3. Remanded from

Appellate Court

4. Reinstated pr
Reopened

V. REQUESTED IN COMPLAINT: JURY DEMAND: px] Yes

No

CLASS ACTION under F.R.Cv.P. 23: [J Yes (x]No

5. Transferred from Another

District (Specify)

6. Multi-

r~|

District

'' Litigation

(Chock "Yes" only if demanded in complaint.)

MONEY DEMANDED IN COMPLAINT: $

To be determined at trial, but in

anYfiYsmnvfir^Mftfl

VI. CAUSE OFACTION(Cite theU.S. Civil Statute under which you arefiling andwrite a brief statement ofcause. Do notcite jurisdictional statutes unless diversity.)
U.S. Civil Statute: 28 U.S.C 2201 & 2202

Breachof contract and intentional interference with prospective economic advantage

VII.NATURE OF SUIT (Place an X in one box only).

"^ CCjjCTjjACTT

OTHER STAWEST

f~| 110 Insurance

375 FalseClaims Act

r-i 400 State

I' Reapportionment

fj 41Ci Antitiust
Q 430 Banks and Banking

450 Commerce/ICC
Rates/Etc.

490 Cable/Sat TV

893 Environmental
Matters

895 Freedom of Info.

Act

f~) 896 Arbitration

290 All Other Real

140 Negotiable

151 MedicareAct
Defaulted Student

Loan (Excl. Vet.)

[3 Overpayment of

State Statutes

195 Contract

Product Liability

196Franchise

210 Land
Condemnation

FOR OFFICE USE ONLY:

CV-71 (06/14)

II Ejectment

320 Assault, Libel &

rI 510MotionstoVacate

I' Sentence

'ROPERTYi

370Oth<r Fraud

371 Truth in Lending

380 Othe r Personal

345 Marine Product

Property Damage

a
_

350 Motor Vehicle

ri 555 Prison Condition

Product Liability
360 Other Personal

Personal Injury
Product Liability

1% |ydi<yliability

UV 14 -

863 DIWC/DIWW(405 (g))

864 SSID Title XVI

865 RSI (405 (g))

625 Drug Related

871 IRS-Thlrd Party 26 USC

7609

USC 881

690Other

440Other Civil Rights Z2mmm&&&

710 Fair Labor Standards

441Votirg
Act

442 Empl syment

|i 720Labor/Mgmt

443 Hous ng/

LJ Relations

AccomrrKidations

Disability s446 Amer can vwith

Disabilities-*.Other

448 Education

740Railway LaborAct
751 Family and Medical
Leave Act

Employm;?nt

368 Asbestos

861 HIA(1395ff)

862 Black Lung (923)

870 Taxes (US Plaintiffor

U Seizure ofProperty 21

445 Amer can with

367 Health Care/

Pharmaceutical

LI Personal Injury

Case Number:

840 Trademark

Defendant)

ssl

Injury

362 Personal Injury

Med Malpratice
365 Personal Injury-
Product Liability

820 Copyrights
830 Patent

Confinement

422 Appi al 28

L-l USC 157

355 Motor Vehicle

540 Mandamus/Other
550Civil Rights

385 Prop ?rty Damage

560 Civil Detainee
Product'I lability
LJ Conditions of

USC 158

Liability

530General
535DeathPenalty

ZESSS

mmm.>mr^

463Allen Detainee

or" Action*

Product Liability

340 Marine

,-, 230 Rent Lease &

315 Airplane

r~| 220 Foreclosure

950 Constitutionality of

310 Airplane

899 Admin. Procedures

Property

330 Fed. Employers'

Liability

(jji 190Other

[J Act/Review of Appeal of
Agency Decision

Habeas Corpus:

Applicat on

r-i 423 With Irawai 28

' Contract

462 Natl rahzation

4650thsr

Slander

160 Stockholders'
Suits

Liability

Vet. Benefits

Instrument

153 Recovery of

[~~| 891 Agricultural Acts

130Miller Act

152 Recovery of

890 Other Statutory

Actions

Judgment

850 Securities/Com

modities/Exchange

120Marine

245 Tort Product

Enforcement of

fj 480 Consumer Credit

240 Torts to Land

150 Recovery of
r~\ Overpayment*

2 160 Deportation

[, 470 Racketeer InfluI' enced&Corrupt Org.

790 Other Labor

Litigation
791 Employee Ret Inc.

SecurityAct

OS* T9

CIVIL COVER SHEE"

Pagel of 3

UNITED STATES DISTRICT COURT, CENTRAL DISTRICT OF CALIFORNIA

CIVIL COVER SHEET

VIII. VENUE: Your answers to the questions below will determine the division of the Cout
^ towhich this case will beinitially assigned. This initial assignment is subject
tochange, in accordance with the Court's General Orders, upon review by the Court ofyour C >mplilaint or Notice of Removal.

QUESTION A: Was this case removed

,'6

is*

STATE CASEWASf>END(N6INTI !COUWrrF*

from state court?

Yes [x] No

Los Angeles, Ventura, Santa Barbara, or Sar

Orange

If"no,"skip to Question B. If"yes," check the

boxto the right that applies, enter the

corresponding division in response to

Question E,below, and continue from there. Q

Riverside or SanBernardino

QUESTION B: Is the United States, or B.I. Do50%or more of the defendants who reside

one of its agencies or employees, a

YES. Yourcase willinitiallybe assigned to the Southern Division.

the district reside in Orange Co.?

PLAINTIFF in this action?

Enter"Southern" in responseto Question E, below, and continue

from there.

checkone of theboxesto theright

Yes fx] No

Q NO. Continueto Question B.2.

If"no," skipto Question C. If"yes," answer

Question B.I, at right.

B.2. Do 50% or more of the defendants who res de in

YES. Yourcase willinitiallybe assigned to the Eastern Division.

the district reside in Riversideand/or San Bernardino

Counties? (Consider the two counties together.

Enter "Eastern" In response to Question E, below, and continue

from there.

checkone of theboxesto theright

NO. Your case will initially be assigned to the Western Division.

Q Enter "Western" inresponseto Question E, below, and continue

from there.

..^

QUESTION C: Is the United States, or CI. Do 50% or more of the plaintiffs who reside in
district reside in Orange Co.?
one of its agencies or employees, a
DEFENDANT in this action?

check one ofthe boxes tothe right

the

Yes [x] No

C.2. Do 50% or more of the plaintiffs who reside in the

district reside in Riverside and/or San Bernardino

Question C.1, at right.

Counties? (Consider the two counties together.)

check one ofthe boxes tothe right

Enter "Southern" inresponseto Question E, below, and continue

from there.

"""^

If"no, *skip to Question D. If "yes,"answer

s*^ *< " W ^

YES. Yourcase willinitially be assigned to the Southern Division.

NO. Continue to Question C.2.

YES. Your case will initially be assigned to the Eastern Division.

[~| Enter "Eastern" in response to Question E, below, and continue
from there.

mm9h

NO. Your case will initially be assigned to the Western Division.

Q Enter"Western" in responseto QuestionE, below,and continue

from there.

B.

Riverside or San

QUESTION D: Location of plaintiffs and defendants?

Bernardino County

Orange County

Indicate the location(s) in which 50% or more of plaintiffs who residein thisdistrict
reside. (Check up to two boxes, or leave blank if none of these choices apply.)

Los Angeles, Ventura,

.Santa Barbara, or San
' Luis Obispo County -

Indicate the location(s) in which 50% or more of defendants who reside in this

district reside. (Check up to two boxes, or leave blank if none of these choices
apply.)

f*

D.2. Is there at least one answer in Column B?

D.I. Is there at least one answer in Column A?

Yes

fx] No

Yes

|xl No

If"yes,"your case willinitiallybe assigned to the

If"yes,"your case willinitially be assigned to the

SOUTHERN DIVISION.

EASTERN DIVISION.

Enter"Southern"in response to Question E, below, and continue from there.

Enter "Eastern" in response to Question E, below.

If"no," go to question D2 to the right.

If"no," your case will be assigned to the WESTERN DIVISION.

Enter "Western" in response to Question E, below.

QUESTION E:Initial Division?

INITIAL: DIVISION IN CACD

Enter the initial division determined by Question A,B, C,or D above:

WESTERN

QUESTION F:Northern Counties?

Do 50%or more of plaintiffsor defendants in this district reside in Ventura, Santa Bart ara, or San LuisObispo counties?
CV-71 (06/14)

CIVIL COVER SHEE-

Yes

No

Page2of3

UNITED STATES DISTRICTCOURT, CENTRAL DISTRICT OF CALIFORNIA

CIVIL COVER SHEET

IX(a). IDENTICAL CASES: Has this action been previously filed inthiscourt?

NO

YES

NO

YES

Ifyes, listcase number(s):

IX(b). RELATED CASES: Is this case related (as defined below) toany cases prev ously filed in this court?
Ifyes, list case numbers):

Civil cases are related when they:

[] A. Arise from the same orclosely related transactions, happening,

>r event;

B. Call fordetermination of the sameor substantially related or sirrlilar questions of law and fact; or

Q C For other reasons would entailsubstantial duplication of labor if heard by different judges.

Check all boxes thatapply. That cases may involve thesame patent, trademark, orcopyright is not, in itself, sufficient to deem cases
related.

X. SIGNATURE OF ATTORNEY

Ga*4a*+j\- Jfu
rTJT>~aJZ> /^ffi"

(OR SELF-REPRESENTED LITIGANT):

DATE: 11/10/2014

Notice to Counsel/Parties: The submission of this Civil CoverSheet is requiredby (.ocal Rule 3-1. This Form CV-71 andthe information contained herein
neither replaces nor supplements the filing and serviceof pleadings or other paper; as required by law, except as provided by local rules of court. For
more detailed instructions, see separate instruction sheet (CV-071 A).

Keyto Statistical codes relating to Social Security Cases:

Nature of Suit Code
861

Abbreviation
HIA

Substantive Statement of Cause f Action

Allclaims for health insurance benefits (Medidare) under Title 18, Part A,of the Social Security Act, as amended. Also,
include claims by hospitals, skilled nursing faqilities,
ilities,etc., for certification as providers of services under the program.
(42U.S.C. 1935FF(b))

862

BL

All claimsfor "Black Lung" benefits under Title 4, Part B, of the FederalCoal MineHealth and Safety Actof 1969.(30 U.S.C.
923)

863

DIWC

863

DIWW

864

SSID

865

RSI

All claims filed by insured workers for disabilit t insurance benefits under Title 2 of the Social Security Act, as amended; plus
all claims filed for child's insurance benefits b; sed on disability. (42 U.S.C.405 (g))

All claims filed forwidows orwidowers insurance benefits based on disability underTitle 2 ofthe Social Security Act as
amended. (42 U.S.C. 405 (g))

All claims for supplemental security income payments based upon disability filed under Title 16oftheSocial Security Actas
amended.

All claims forretirement (oldage)andsurvivoils benefits underTitle 2of the Social Security Act, as amended.
(42 U.S.C. 405(g))

CV-71 (06/14)

CIVIL COVER SHEE f

Page 3 of3