Copyright attorney Marc Toberoff’s winning streak on behalf of comics creators collided with the Southern District Court of New York’s streak of publisher-friendly, work-for-hire rulings last week and the losers were Jack Kirby’s heirs. In a July 27 summary judgment in favor of Marvel/Disney that shut down Toberoff’s arguments before they even reached trial, Judge Colleen McMahon concluded that Kirby’s heirs were not entitled to a share in such creations as Iron Man and Thor, because they were the products of work for hire.
In September 2009, the Kirbys (Lisa, Barbara, Neal and Susan Kirby) served Marvel with 45 notices of termination in order to reclaim copyrights in several Marvel comics published between 1958 and 1963. The comics included Amazing Adventures #1-6, Amazing Fantasy #1-7, Avengers #1-2, Fantastic Four #1-21, Fantastic Four Annual #1, Journey Into Mystery #51-98, Incredible Hulk #1-6, Rawhide Kid #17-35, Sgt. Fury and His Howling Commandos #1-4, Strange Tales #67-115, Tales of Suspense #3-48 and Tales to Astonish #8 — issues that are noteworthy for having originated such recent and potential Hollywood gold mines as Iron Man, Thor, the Hulk, the Fantastic Four and the Avengers. In filing the notices of termination, Toberoff was following in the footsteps of his own successful bid on behalf Jerry Siegel’s heirs. Siegel’s heirs had been able to regain their shares in the Superman copyrights from DC under a provision of the Copyright Act of 1976, which allowed copyright terms to be extended only if the original author or authors had an opportunity to reclaim the rights when they came up for renewal.
On the strength of the Siegel ruling, the Kirbys entered into negotiations with Marvel on the expectation that Marvel might be willing to reach a settlement rather than risk losing huge chunks of its cash-cow copyrights. Instead, Marvel went on the offensive in January 2010, filing suit in the U.S. Southern District Court of New York to nullify the notices of termination on the grounds that Kirby had never owned the copyrights and therefore could not reclaim them. In March of 2010, Toberoff filed for a summary judgment in the Central District Court of California declaring the terminations to be valid and the Kirby heirs to be in control of the relevant copyrights. Toberoff later withdrew that suit “without prejudice,” meaning that it could in theory be revived. The Kirbys also crossfiled against Marvel’s suit in New York, calling for a summary judgment in their favor.
Some legal observers were expecting Marvel to be the second major comics-publisher domino to fall when Toberoff filed on behalf of the Kirbys, but there is a key difference between Kirby’s comics work and Siegel’s: It was well established that Superman already existed as a full-blown character concept before Siegel and Joe Shuster pitched him to DC, whereas Kirby, who died in 1994, did most if not all of his Marvel work on assignment from the publisher. In the case of work for hire, the Copyright Act defines the instigating employer/publisher as the Author of the work.
Clearly very conscious of recent editorials and letters in The New York Times expressing outrage at the way that Kirby had been shut out of the massive profits being reaped by Marvel/Disney, McMahon tried to distance herself from that controversy. At the outset of her ruling, she noted, “This case is not about whether Kirby (and other freelance artists who created culturally iconic comic book characters for Marvel and other publishers) were treated ‘fairly’ by companies that grew rich off the fruit of their labor. It is about whether Kirby’s work qualifies as work-for-hire … If it does, then Marvel owns the copyright in the Kirby works, whether that is ‘fair’ or not. If it does not, then the Kirby Heirs have a statutory right to take back those copyrights, no matter the impact on a recent corporate acquisition or on earnings from blockbuster movies made and yet to be made.”
Although today publishers are required to show contractual proof of work-for-hire arrangements, there was no such requirement during this period of Kirby’s freelance work for Marvel. In the absence of a contract, Judge McMahon relied on the instance-and-expense test. Under this test, a work-for-hire relationship is said to exist if a creator produces work at the behest of a publisher/employer and is compensated by the publisher/employer for the work. Toberoff argued that Kirby had generated ideas and concepts beyond what he had been specifically assigned to create, but McMahon concluded Marvel’s editorial supervision of Kirby’s work and its page-rate payments to him were sufficient for the relationship to pass the instance-and-expense test.
The case did not go to trial, but during the discovery phase, testimonies on both sides were collected in deposition. Testifying on behalf of Kirby were Silver Age Marvel artists Jim Steranko, Joe Sinnott and Dick Ayers and comics experts Mark Evanier and John Morrow. Lined up on Marvel/Disney’s side were Roy Thomas, John Romita Sr. and Larry Lieber, but the key testimony that seemed to carry the greatest weight with Judge McMahon came from Kirby’s erstwhile creative partner Stan Lee. The 87-year-old Lee gave a two-day deposition in support of Marvel. Based on the depositions, McMahon formed the following picture of Lee and Kirby’s working relationship: Lee gave Kirby a premise in outline and then “created the plot and dialogue for the characters after the pencil drawing was complete, [and] often times ignored any ‘margin notes’ submitted by the artist with suggestions as to the plot or dialogue in the story.”
Those familiar with how a comics story is produced under the Marvel method, may have difficulty imagining how the pencil drawing for an entire story could be complete and still be in need of a plot to be added afterward by the writer, and Evanier and Morrow argued that Kirby’s creative contributions went well beyond the instructions he received from Lee. McMahon, however, acceded to Marvel’s motion to strike Evanier and Morrow’s testimony. She seemed skeptical of their status as comics “experts,” always placing the word in quotes, and expressed the view that they would not be able to add anything to the proceedings that lay persons, or non-comics-experts, couldn’t determine on their own. Also mitigating against the relevance of Evanier’s and Morrow’s testimony was the fact that they didn’t have firsthand knowledge of industry practices before 1963.
If the case were to go to trial, the jury would be in a position to weigh the reliability of the various witnesses and judge the material evidence as to how independent Kirby’s creative processes were to Marvel’s instance and expense. In issuing her summary judgment, McMahon has precluded a jury trial from going forward, ruling that the law is clearly in favor of Marvel/Disney’s argument.
Toberoff has said that he intends to appeal to the Second Circuit Court. “Sometimes you have to lose in order to win,” he told The Hollywood Reporter. Whatever options Toberoff may pursue, last week’s ruling will certainly not help the Kirby family in its negotiations with Marvel/Disney.
It was a ruling that follows from a long line of precedents, including the recent judgment that quashed Dan DeCarlo’s challenging of Archie’s copyrights. As Judge McMahon said, it’s not about fairness. Work for hire is the best tool corporations have ever had for exploiting creative talent and the courts’ consistent safeguarding of that concept has ensured that the intent of the Copyright Act of 1976 has in part been undermined. The Act was based on a new understanding of the ways that intellectual property can turn out to have a value far beyond anything dreamt of at the time of its creation. When Siegel and Schuster sold the rights to Superman, they had no idea that the property could one day be parlayed into Blu-Ray discs and video games and computer apps — neither, for that matter, did DC. After a few decades, the property was expected to go into the Public Domain. Under pressure from entertainment companies, however, Congress has repeatedly extended the maximum limits of copyright terms, thereby adding value to intellectual property that it didn’t have at the time creators like Siegel and Kirby were turning their brainstorms over to publishers in exchange for modest pay checks. The Copyright Act of 1976 was meant to redress that to a degree, by giving the original authors a chance to benefit from the extended copyright terms. Arguably, the same principle ought to apply, whether you created something and then sold it as Siegel and Shuster did or simply accepted payment for your creative labors page by page as Kirby did.