IP Law Daily, COPYRIGHT—N.D. Ill.: Dispute over To Kill a Mockingbird stage rights sent back to arbitration, (Jun 21, 2022)

By Matthew Hersh, J.D.

The question is how to define the term “off-Broadway.”

An arbiter will have to re-weigh the precise dividing line between the rights held in the original amateur adaptation and an updated professional version of a classic 1960s novel, the federal court in Chicago has held. The court, weighing in on the latest stage of a dispute over two different adaptations of To Kill a Mockingbird, held that the arbitrator’s award was unclear about which adaptation would prevail in the off-Broadway setting (Dramatic Publishing Co. v.Carter, June 17, 2022, Kennelly, M.).

The case involves the literary classic written by Harper Lee in 1960 about a lawyer named Atticus Finch and his representation of a Black man unjustly accused of rape in a small town in Alabama. In 1969, the now late author assigned to Dramatic Publishing Company the exclusive stage adaptation rights, for amateur performances only, to the novel. The author reserved for herself the exclusive rights to professional stage performances of the novel.

Subject to that grant, the publishing company licensed an adaptation by the playwright Christopher Sergel. As described by The New York Times, the Sergel adaption “has long been a staple at schools and community theaters around the country.” Indeed, the Times notes, “for decades, Dramatic was the only publisher Lee had authorized to license a theatrical adaptation of her beloved 1960 novel.”

Forty years later, the author terminated the assignment and granted stage rights in the novel to a new publishing company, Rudinplay Inc, a production company. That company then authorized the production of a play written by noted screenwriter Aaron Sorkin. The Sorkin version, starring Jeff Daniels, came out in 2018 and became an instant hit. As Rolling Stonewrote of the new adaptation: “Brimming with humor, generous heart and gritty provocation, To Kill a Mockingbird is as timely as it is timeless.”

After the Sorkin play debuted, the original publishing company, Dramatic, sued Lee’s estate under the 1969 agreement, claiming that the estate had breached the 1969 agreement and tortiously interfered with the publishing company’s contracts with various licensees. Essentially, the publishing company contended, the estate interfered with its rights to exploit the Sergel version – which it had retained even after termination under the derivative works exception of the Copyright Act –by threatening theater companies with lawsuits for continuing to stage the work. The estate filed a counterclaim against the publishing company for breach of the same agreement.

The arbitrator entered a nearly 100-page award that rejected the estate’s claims. The arbiter found that the publishing company was still entitled to license the Sergel version under the derivative rights exception to the Act. The arbitrator imposed an award of $2.5 million damages and injunctive relief. The estate moved to vacate the award on several grounds, leading to this opinion.

Scope of license. In perhaps the most notable aspect of its decision, the court remanded to the arbitrator to redetermine the scope of the rights granted to the original publishing company. The question was the breadth of the publishing company’s right to exploit the Sergel version of the work in “amateur” theaters. The original grant to the publishing company – preserved under the derivative works exception because the Sergel version was prepared during the term of the agreement – defined “amateur” works as “little theatres, community theatres and/or drama associations, colleges, universities, high school and other school groups, churches, clubs and other amateur organizations” and the like. The agreement expressly carved out “Broadway production rights” and “first-class professional road and/or first-class touring production rights.” But just what precisely did this clause mean in the context of off-Broadway?

The arbitrator’s award was too ambiguous, the court found, because it failed to adequate draw the line between permitted and impermissible off-Broadway uses. In one aspect of the opinion, the arbitrator appeared to have found that these rights were retained by the publishing company. But other parts of the award appeared to find that “in some cases an off-Broadway production could constitute a first-class production, but in others, an off-Broadway production would be a [second-class] right.” Although the award offered up some factors to help determine when an off-Broadway production would be considered a “first class” right, there remained too much “uncertainty regarding the dividing line between first-class and non-first-class rights.” Thus, remand would be required to consider the issue further.

Other issues. Although the opinion remanded on the contract interpretation issue, it affirmed the award in other respects. One aspect of the award required the estate to indemnify the publishing company for lawsuits that others – such as the production company that put on the Sorkin version – might bring against that company. To be sure, the court noted, the indemnification obligations ran broader than those expressly arising from the original 1969 agreement. But in the context of an arbitration clause, the court noted, the term “‘arising out of’ reaches all disputes having their origin or genesis in the contract, whether or not they implicate interpretation or performance of the contract per se.” Thus, the award was confirmed in this respect. The estate’s other arguments were also rejected.

The Case is No 1:21-cv-05541.

Attorneys: Kevin Tottis (TottisLaw) for The Dramatic Publishing Co. Andrew Sean Murphy (Taft Stettinius & Hollister LLP) and David Glenn Hymer (Bradley Arant Boult Cummings LLP) for Tonja Carter and Harper Lee, LLC.

Companies: The Dramatic Publishing Co.; Harper Lee, LLC

Cases: Copyright IllinoisNews GCNNews