Forty-three years after the publication of The Godfather, a prequel to the Corleone story now is the focus of a copyright battle before Judge Nathan in Paramount Pictures v. Puzo.

In 1969, Mario Puzo sold Paramount Pictures certain copyrights to the novel, including “the sole and exclusive right: to make and cause to be made literary and dramatic and other versions and adaptations of every kind . . . .”  When Puzo’s estate recently sought to publish The Family Corleone, Paramount sued for copyright and trademark infringement. The Estate counterclaimed for breach of contract and tortious interference based on Paramount’s refusal to consent to the prequel’s publication, and sought cancellation, rescission, and repudiation of the 1969 contract. The Family Corleone (written by Ed Falco) has since been published pursuant to an interim settlement agreement, under which all funds from the book’s publication were placed in escrow.

At issue in the case is language that was in an early version of the of the 1969 agreement between Puzo and Paramount, which did not make it to the final version. That language would have granted Paramount the right to “publish said work and/or any versions or adaptations thereof, or any part or parts thereof, and to vend copies thereof.”  Paramount contends the stricken language merely reserved Puzo’s right to publish the original Godfather novel, as well as versions or adaptations thereof; the Estate claims it meant Puzo retained all book publication rights, including to any sequels.

Judge Nathan dismissed the Estate’s counterclaims for cancellation and rescission on the grounds that the Estate had not properly alleged a breach significant enough to warrant the “extraordinary remedy” of rescission. The Court also dismissed the Estate’s tortious interference claim based on the failure to show damages, given that The Family Corleone had been published, and the sales proceeds were escrowed. But the Court denied Paramount’s motion to dismiss the Estate’s counterclaim for breach of contract and repudiation. She found that the Estate’s claim was not preempted by federal copyright law. And as a matter of New York contract law, she also found that the mere assertion by a party of an untenable contract position does not amount to a claim that the party repudiated its contract. But a claim for repudiation that can allege more – such as when it is alleged that the untenable contract position is advanced by a party “to avoid its contractual obligations or when it refuses to perform its contractual obligations absent the other party’s satisfaction of extra contractual provisions,” a claim for repudiation is stated.

The Court did not decide the ultimate question of which party actually owns the book publishing rights to Godfather sequels. That will have to wait for another day – unless one party can make a settlement offer the other can’t refuse.

(My colleague Joe Alonzo ably assisted on this entry.)