Marvel Prevails in Copyright Termination Case: Famous artist Jack Kirby found to have created his comic drawings as a “work made for hire”

by Jeffer Mangels Butler & Mitchell LLP
Contact

In what can fairly be interpreted as a favorable decision for any business whose success depends upon copyrighted intellectual property, on August 8, 2013, the Second Circuit Court of Appeals issued its decision in Marvel Characters, Incorporated, et al v. Kirby, et al, __ F.3d __, 2013 WL 4016875 (2d. Cir. 2013), determining that the late Jack Kirby, one of the most influential comic book artists of all times and who produced drawings for Marvel Comics from his home as a freelancer without a written contract, did so as a “work made for hire” and therefore neither he nor his heirs possessed a right to terminate the grant of copyrights under Section 304(c)(2) of the Copyright Act of 1976.  As a result, Marvel is free to continue to create additional derivative works such as movies and television series based on Jack Kirby’s drawings at issue in the case.

“Copyright Termination” is the legal term for the right of an author to terminate any transfer of his or her interest in a copyrighted work.  This includes any sale or grant of any rights in a copyright, including licenses, such as a literary purchase or option agreement for a screenplay.

The right to terminate a copyright transfer does not apply to works created as a “work made for hire”, such as when a motion picture studio engages a writer to create or revise a screenplay (in which case the studio is the author of the literary work). However, the right to terminate a copyright transfer would apply to an underlying literary work, such as a treatment or screenplay, which the writer is hired to revise.

The issue of whether a work was created as a “work made for hire” can be hotly contested, and different tests apply depending upon whether the works were created before or after January 1, 1978, the effective date of the Copyright Act of 1976. The “old” Copyright Act of 1909 governs copyrights issued prior to January 1, 1978.  The “new” Act governs copyrights issued on or after January 1, 1978.

Subject to some variations, copyrights governed by the old Act are generally protected for a total of 95 years under current law, assuming they are properly renewed.  This includes an initial 28-year copyright term and a 67-year renewal term.  On the other hand, copyrights governed by the new Act are protected for the life of the author plus 70 years.

For terminations, the key date is when the agreement you wish to terminate was entered into.  If the agreement was executed before January 1, 1978, then the time periods established by the old Act apply.  If the agreement was executed on or after January 1, 1978, then the new Act applies.

In Marvel, 262 Kirby drawings made between 1958 and 1963 were at issue. Accordingly, the key question under the 1909 Copyright Act was whether the scripts were created at the employer’s “instance and expense.”  The “instance and expense” test requires the court to analyze three factors:  (1) whether the employer was the motivating factor in producing the work; (2) the degree to which the employer had the right to control or supervise the artist’s work; and (3) whether the work was created at the employer’s expense. Twentieth Century Fox Film Corp. v. Entertainment Distributing, 429 F.3d 869, 879-881 (9th Cir. 2005) (applying 1909 Act). In Playboy Enterprises, Inc. v. Dumas, 53 F.3d 549, 556 (2d. Cir. 1995), the Second Circuit found that paintings were works made for hire when the artist “certainly would not have created those particular paintings if he had not been given the assignments by Playboy.”

Against that backdrop, the Second Circuit pointed out that “[i]t is undisputed that Kirby was a freelancer, i.e., he was not a formal employee of Marvel, and not paid a fixed wage or salary. He did not receive benefits, and was not reimbursed for expenses or overhead in creating his drawings. He set his own hours and worked from his home. Marvel, usually in the person of Stan Lee, was free to reject Kirby’s drawings or ask him to redraft them. When Marvel accepted drawings, it would pay Kirby by check at the per-page rate.”  It was also undisputed that “Kirby made many of the creative contributions, often thinking up and drawing characters on his own, influencing plotting, or pitching ideas.”

But Kirby and other Marvel freelance artists worked using the “Marvel Method” by which Marvel furnished the artist with an outline or ideas and the artist would draw it “any way they wanted to,” with Kirby having even more latitude than most other artists.

The Marvel court found that Kirby created the drawings at the “instance” of Marvel, that “the hiring party provide the impetus for, participated in, or had the power to supervise the creation of the work,” because “Kirby created the relevant works pursuant to Marvel’s assignment or with Marvel specifically in mind” and “Marvel also played at least some creative role with respect to the works”.

The court also found that Kirby created the works at the “expense” of Marvel. The “expense” component refers to the resources the hiring party invests in the creation of the work, such as the provisioning of tools, overhead or resources or in other cases the nature of the payment: “payment of a ‘sum certain’ suggests a work-for-hire.”

It was undisputed that “Marvel paid Kirby a flat rate per page for those pages it accepted and no royalties. It did not pay for Kirby’s supplies or provide him with office space. It was free to reject Kirby’s pages and pay him nothing for them.”

Ultimately, the Marvel court found that “Marvel’s payment of a flat rate and its contribution of both creative and production value, in light of the parties’ relationship as a whole, is enough to satisfy the expense requirement.”

The result in Marvel v. Kirby was favorable to the employer, but as the Second Circuit noted: “Whether the instance and expense test is satisfied turns on the parties’ creative and financial arrangement as revealed by the record in each case.”

As a copyright termination precludes an employer from creating additional derivative works based on the author’s work, a contrary result would have prevented Marvel from creating and exploiting in the United States any additional movies or television series or comic books, among other things, based on the Kirby drawings at issue in the case absent a new grant of rights from Jack Kirby’s heirs.

 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Jeffer Mangels Butler & Mitchell LLP | Attorney Advertising

Written by:

Jeffer Mangels Butler & Mitchell LLP
Contact
more
less

Jeffer Mangels Butler & Mitchell LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Privacy Policy (Updated: October 8, 2015):
hide

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.

Security

JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.