A decision handed down earlier this month by U.S. district court judge Richard Owen backing the claims of two of John Steinbeck's heirs to 10 of his classic works turned on a little-known provision in the Copyright Act pertaining to termination rights. In his ruling, Owen found that because Steinbeck's son Thomas and granddaughter Blake Smyle had filed the necessary notices of termination, they are entitled to control the publishing rights to, among other books, The Grapes of Wrath and Of Mice and Men. Penguin has been publishing Steinbeck's works under an agreement with the Steinbeck estate, but if the ruling stands, Steinbeck and Smyle will be in a position to negotiate a new deal.

The provision in question relates to titles that were published before January 1, 1978. For an author's heir to be eligible to recapture the rights, they must file written notice with the publisher that they have acquired the renewal rights to the copyright and record the notice with the Copyright Office. Under the Copyright Act, heirs have the right to terminate and get back publishing rights during five-year periods that begin at the end of 56 years and 75 years after the original copyright date, explained publishing attorney Lloyd Jassin.

The termination clause, Jassin said, "is designed to protect authors of older works from having to live with a bad deal they entered into when they had little or no negotiating power." He added that even if an author grants or licenses the rights to his or her copyrights to a publisher in perpetuity, the author or the author's statutory successors have the right to get back the rights. "In the conflict between copyright law and contract law, copyright wins," Jassin said.

The way the timing works in the Steinbeck case, the heirs could regain control of rights to Cup of Gold July 1; rights to Of Mice and Men terminate in 2012 and The Grapes of Wrath in 2014. Under copyright law, heirs must first negotiate any new agreements with the current publisher, in this case Penguin. Penguin said it will appeal the ruling. "The decision issued by the district court is but the first round in what will be a long and complicated process," Penguin's Maureen Donnelly said.

Authors Guild executive director Paul Aiken praised Owen's decision. "The right to terminate a publishing contract is an important protection for authors, one we're glad to see reaffirmed by Judge Owen," Aiken said. Jassin called the termination provision "a powerful but little-known right" that could make publishers' backlist vulnerable to more renegotiations if it was better understood by authors and their heirs.