Jack Kirby needs no introduction to comic book lovers, as he is, according to the Second Circuit decision I am commenting today, “considered one of the most influential comic book artists of all time.”
Here are the facts of the case. In September 2009, the four children of Jack Kirby served Marvel, the comic book publisher, with termination notices, seeking to terminate all grants of copyright for works made by their father for Marvel before January 1, 1978, and any grants of copyright made prior to that date for a stated future date.
The works at stake were made between 1958 and 1963, and featured famous characters such as Spider Man, Hulk, or the Fantastic Four. Marvel and Kirby had executed a written agreement in 1972, which assigned to Marvel “any and all right, title and interest [Kirby] may have or control” in the work he had created for Marvel. Kirby also acknowledged that all the work he did for Marvel was done as an employee of Marvel.
Section 304(c) of the Copyright Act indeed gives authors and their heirs the right to terminate a grant of copyright fifty-six years after the original grant, unless another agreement to the contrary does exist. However, grants in works made for hire cannot be terminated.
Marvel filed suit in January 2010 seeking the court to declare that the Kirbys had no right to terminate the transfers, as the works in contention were works-for-hire in which Marvel holds the copyright. Defendants filed a motion to dismiss the complaint, which was denied by the Southern District of New York (SDNY) on November 22, 2010.
The SDNY then granted summary judgment to Marvel on July 28, 2011, finding that the works at stake were indeed works-for-hire within the meaning of the Copyright Act of 1909, and that thus the termination notices did not convey the copyright in these works back to the Kirbys.
The heirs appealed to the Second Circuit, and on August 8, 2013, the Court affirmed the judgment as to two of the Kirbys and vacated the judgment as to the two siblings over which the SDNY had no personal jurisdiction. However, the Second Circuit did not find that they were indispensable parties to the suit under Fed. R. Civ. P. 19, and thus that the suit did not have to be dismissed in its entirety.
When are Works-Made-for-Hire?
Jack Kirby drew many comics for Marvel between 1958 and 1963. At this time, the copyright law was the Copyright Act of 1909, which still applies to all works published before January 1, 1978. Under the 1909 Act, an employer who hired someone to create a copyrightable work is the author of the work. However, the 1909 Act did not define what is an ‘employer’ or even a ‘work-for-hire,’ and that task fell to the courts.
In the Second Circuit, courts apply a two-pronged test, the “instance and expense” test, to determine if a work is made for hire under the 1909 Act. Under this test, the copyright belongs to the person at whose “instance and expense” the work was created. The hiring party induces the creation of the work and has the right to direct and supervises the manner the work is carried out (Martha Graham School and Dance Foundation. v. Martha Graham Center of Contemporary Dance, 2d Cir. 2004, at 635).
However, the Second Circuit noted that “inducement” or “control” may be so incidental that the copyright does not belong to the hiring party, and states that whether the test is indeed conclusive depends on what was the creative and financial arrangement between the parties for each case.
The “Marvel Method”
In this case, the SDNY explained how Stan Lee, the Marvel editor from sometimes in the 40’s until the early 1970’s, devised the “Marvel Method” during the 50’s. Before that, Lee prepared detailed scripts, featuring panel-by-panel breakdown of the stories that comic artists had to follow.
In order to accelerate the comics production, Lee stopped writing these detailed outlines to favor instead “plotting conferences” with the artists, where the plot for new stories where discussed. Lee and other Marvel artists testified that Lee described the plot to the artist during the conference. Lee then edited the work and added dialogues and captions. He also retained the right to approve the final work or to reject it altogether. This method allowed Lee to work with several artists simultaneously.
Kirby did not work without having received an assignment from Lee. However, evidence in the record showed that Kirby was given a somewhat freer hand, that is, was given more general instructions, not page-by-page instructions.
The Kirby’s works were created at Marvel’s instance
An employer may well direct and supervise an independent contractor, not only an employee, as courts focus on whether the hiring party had the right to control and supervise the work, that is, had the power to accept, reject, or modify the work.
In this case, the SDNY had found that there was a presumption that the works at stake had been created at Marvel’s ‘instance. The Second Circuit was of the same opinion, noting that Kirby’s works for Marvel from 1958 to 1963 “were hardly self-directed projects,” but, rather, that Kirby “created the… works pursuant to Marvel’s assignment.”
The Kirby’s works were created at Marvel’s expense
There is an almost irrebutable presumption under the test that any person who paid another to create a copyrightable work is the author of the work.
Kirby paid for his own supplies, worked at home, and did not receive any benefits from Marvel. He was paid at a page rate multiplied by the number of pages, but never received royalties for his work.
However, Marvel argued successfully that it took the financial risks involved with publishing the works, and thus the works had been created at its expense. The Kirbys argued in front of the Second Circuit that it was instead their father who had taken the financial risks, by working and providing supplies without knowing for sure if his work would be accepted by Marvel. This argument did not convince the Second Circuit, as Marvel and Kirby had a standing engagement, where Kirby produced works following Marvel’s specs.
The Second Circuit found that Marvel had satisfied the instance and expense test, and that Kirby’s heirs failed to rebut the work-for-hire presumption. Therefore, the Second Circuit affirmed the judgment of the SDNY for the two parties under its jurisdiction.
The money interests at stake in this suit were high. Disney bought Marvel in 2009 for four billion dollars and has since released several movies about famous Marvel characters. It joined Marvel to defend the suit. Spider Man is now a Broadway play. A movie featuring the Thor character is scheduled for release next November.
Image is Spiderman for a day, courtesy of Flickr user chispita_666 pursuant to a CC BY 2.0 license.
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