When The Comics Journal asked me to write about the latest ruling in Marvel's lawsuit against the four children of Jack Kirby, my initial plan was to focus on how the case should serve as a cautionary tale for other creators and their heirs. After all, the legal standard governing work-for-hire under the old copyright law has for years been said to create a presumption that the commissioning party holds the copyright. Overcoming this hurdle is all but impossible without clear evidence that a freelancer created the material before taking on the publisher as a client, and even then the path to victory is laden with legal landmines.
What’s more, a creator can’t count on an appeals court to share the comics community’s sense of moral outrage over the mistreatment of past writers and artists. There are deeply ingrained cultural reasons why appellate judges would be likely to identify more with Stan Lee than Jack Kirby. Not only do the elevated honorables of the federal courts of appeal glean much of their material from their lower-court counterparts, but a substantial amount of their creative output is written by anonymous clerks. In this environment receiving credit for someone else's inspired insights is seen not as a grievous injustice, but the way the system works.
Nonetheless, as I re-read last week's opinion affirming that Jack Kirby's Marvel material was work made for hire, I started noticing certain aspects of the three-judge panel's reasoning that made me wonder if there were more to this case than just another reason for creators to feel discouraged. For example, in her 2011 summary judgment opinion against the Kirbys, Judge Colleen McMahon began with a most unusual disclaimer, all but apologizing for the fact that her ruling was grounded in law, not fairness. The appellate court made no such distinction. Instead, its Marvel v. Kirby opinion sent the clear message that its ruling was fair and just.
This face-off over fairness was both a challenge and a clue. Could it be that the case has exposed fundamental problems not merely with how Marvel treated Kirby, but with the law itself?
The answer to this question could determine whether the Kirby family has any chance of having the appellate court ruling reversed. Unlike the U.S. Court of Appeals, the Supreme Court does not have to rule on every case submitted for review. Instead, it grants certiorari to — that is to say, it accepts — only a small percentage of the thousands of petitions it receives every year. Its basis for choosing a particular case typically goes beyond a factual dispute, such as whether Jack Kirby, Stan Lee, or Steve Ditko deserves the most credit for creating Spider-Man. Instead, the Court looks for a legal issue on which appellate courts disagree or that raises important constitutional concerns.
The following analysis is one possible approach. Besides explaining how a court could reach a conclusion so sharply at odds with that of many within the comics community, the story behind this scenario is also chock-full of tantalizing connections to the history of comics and graphic design, from commercial illustration and Disney’s Three Little Pigs to Joe Simon’s claim on Captain America and the king of all comics lawsuits, the dispute over the Superman copyright. It all builds to a strategy that is admittedly a long shot, but when it comes to the Supreme Court, let’s face it, aren’t they all?
Your mileage may certainly vary — and I’d love to read your own ideas below.
Why Work-for-Hire Matters in the Kirby Case
Before we dig into the reasons why the work-for-hire standard in this case is arguably unconstitutional, let’s review why the work-for-hire question is so important to this case.
The Marvel v. Kirby litigation arose because the four Kirby children — Lisa, Neal, Susan, and Barbara — submitted a filing with the Copyright Office to take back the copyrights to several Marvel properties, including the Fantastic Four, Thor, Hulk, Nick Fury, the Avengers, X-Men, and a host of classic early Marvel monsters such as Fin Fang Foom and Groot, who later became a member of the Guardians of the Galaxy. The heirs also claim that Kirby held the original copyright to Spider-Man, which doesn’t leave much more than Doctor Strange and Forbush Man on the table.
The basis of their claim is a provision enacted as part of the 1976 reforms that gives creators and their heirs the right to terminate a previous transfer of copyright. The length of a copyright term used to be 28 years. This term could be renewed once, for a maximum total of 56 years. When Congress extended the maximum length of copyright ownership in the Copyright Act of 1976 and once again in the Sonny Bono law of 1998, it gave creators and their heirs an opportunity to get the benefit of this extra time by reclaiming copyrights they had previously sold.
There is, of course, an important exception: Creators and their heirs cannot reclaim work originally made for hire, since the creator would have never had any copyright interest to sell. What makes this so difficult to determine for works created before the 1976 Act took effect on January 1, 1978, is that the previous copyright law, the Copyright Act of 1909, did not define the operative phrase, "an employer for whom such work is made for hire."
Millions, if not billions of dollars can be at stake in disputes over whether copyrighted material was originally created as work made for hire, and Marvel's lawsuit against the Kirby children was a preemptive strike — Lisa and Neal Kirby live in California, where in 2008 a federal district court made international headlines by awarding Superman to the Siegel heirs. Marvel chose to challenge the validity of the Kirby termination by filing instead in federal court in New York, which is part of the Second Circuit of the U.S. Court of Appeals.
Because the Second Circuit is widely considered to be a business-friendly court with the most rigorous standards for copyright claims, the Kirby heirs tried to get the lawsuit moved to California. However, their effort did not succeed, at least at the level of the district court. Both the district and appellate courts agreed with Marvel’s argument that their father’s work was work-for-hire, which, barring a successful appeal to the Supreme Court, effectively ends the family’s attempt to exercise the termination right.
Can the Kirby Heirs Sue in Another Court?
The Kirbys’ loss in the Second Circuit made headlines and led to speculation as to what the Kirbys could do next. In this regard, a number of news reports claimed that the Marvel v. Kirby appellate opinion provides an escape hatch for at least a couple of the Kirby children — namely, the two who live in California.
The Marvel v. Kirby case was filed in a New York federal district court. Barbara and Susan Kirby reside in New York, so we’ll call them the New York Kirbys. Because the New York Kirbys reside in the same geographical area over which this particular federal court has jurisdiction, it’s pretty much a no-brainer that the court can hear the case that Marvel brought against them. As a result, unless the Supreme Court agrees to take their case, the New York Kirbys are done.
However, the appellate court reversed the lower court on the jurisdiction issue, finding that the New York district court did not have jurisdiction over the California Kirbys, Neal and Lisa. This is what prompted assertions that the California Kirbys could still prevail by filing suit in California and re-litigating the case in a more favorable forum.
However, as the Second Circuit observed in its opinion, this is not likely to occur. Barring reversal by the Supreme Court, a federal court in California is most likely to consider itself bound by the Second Circuit's ruling in this case. As a result, the Second Circuit’s lack of jurisdiction over the California Kirbys would make no practical difference on the overall outcome.
Even if this weren’t the case, the legal standard in the California federal court — the Ninth Circuit — is not as favorable to the California Kirbys as some seem to believe. The Ninth Circuit was actually the first court to apply the legal standard used by the Second Circuit to find that Kirby’s Marvel material was work-for-hire, and the circuit’s commitment to applying this standard has remained relatively firm. Perhaps the most notorious example is the 2005 case of Twentieth Century Fox Film Corp. v. Entertainment Distributing, which found President Dwight Eisenhower’s memoirs to be work made for hire owned by Doubleday.
Golden and Silver Age Freelancer Copyright
How could the law get to the point where even a president can’t own the copyright to his own autobiography?
The Marvel v. Kirby court provides a few hints in its comprehensive overview of how courts have interpreted the 1909 Act on works made for hire, though as is all too often the case the opinion focuses on the letter of the law with little regard for its underlying principles. Even if history isn't your particular cup of legal tea, you might want to check this one out. It's an epic judicial monologue that could actually help the Kirby family’s case.
As the court notes, the concept of work-for-hire originally applied just to material created by employees within the scope of their employment. This was a direct outgrowth of the language of Section 24 of the 1909 Act, which referred to renewal of a copyright by "an employer for whom such work is made for hire."
Limiting the work-for-hire concept to traditional employment relationships left the courts with a dilemma: what to do with material created by freelancers at the request of a commissioning party.
The Second Circuit’s solution was a compromise that eventually went viral. In a 1939 dispute discussed in more detail here, Yardley v. Houghton Mifflin Co., the court concluded that the purchaser of a mural by freelance artist Charles Turner also bought the right to reproduce the two-panel “cartoon” on more portable media such as postcards. Accordingly, the court established the following default rule: Unless the contract stated that the creator retained the copyright, a freelancer automatically assigned the copyright to the commissioning party.
But this did not mean that the material was work made for hire. The fact that the creator assigned the copyright implied that the creator initially owned it. Accordingly, the court later confirmed another principle implicit in its 1939 ruling, namely, that a creator retained the right to renew the copyright upon the expiration of its first 28-year term. For example, the 1955 case of Shapiro, Bernstein & Co. v. Jerry Vogel Music Co. involved a composer who wrote new lyrics to a previously copyrighted song as an independent contractor. The basic legal framework was so well established that none of the disputants in the case contested it: The copyright in the lyrics was automatically assigned to the company that commissioned them, but the composer retained the right to renew the copyright at the end of its first term.
The right to renew the copyright of a previously assigned work was central to what are arguably the two most significant comics-related creators’-rights cases of the Golden Age. In the mid-1960s, Jerry Siegel filed to renew the Superman copyright and Joe Simon filed to renew the copyright to Captain America. Neither of their subsequent legal disputes attempting to enforce these claims was rejected on the grounds that such a filing was inherently improper. By that point in time, a freelance creator’s right to renew was well established, and Simon was able to parlay it into a favorable settlement with Marvel in 1969.
Siegel was less successful, and his case has a direct connection to the decision by the Second and Ninth Circuits to abandon the longstanding default rule that gave freelance creators a copyright interest in their commissioned work.
Retconning Work-for-Hire
To recap, up through the time Jack Kirby was creating the material at issue in the Marvel lawsuit, the default rule in the Second Circuit was that, barring a contract stating that the creator kept the copyright, a freelancer automatically assigned the copyright to the material’s purchaser. However, this assignment, or transfer, of copyright was only for the first term. The freelancer still held the right to renew the copyright for the second term.
The story of this default rule’s undoing begins in 1965 with an entrepreneurial illustrator named H.L. Baxter. In the Ninth Circuit case of Lin-Brook Builders Hardware v. Gertler, Baxter had drawn illustrations for ads and catalogs for Lin-Brook Builders, which in turn sued a competitor who place similar pictures in its own catalogs. Concluding that the copyright in these illustrations did indeed belong to the commissioning company, the court made an assertion that would have ripple effects throughout a number of cases, including Marvel v. Kirby:
In the absence of an express contractual reservation of the copyright in the artist, the presumption arises that the title to the copyright shall belong to the party at whose instance and expense the work is done.
This may sound similar to what was before then the existing rule that merely assigned the copyright to the commissioning party, but in the broader context of the case the court appeared to be saying that illustrations were in fact work made for hire. The title wasn’t something that was transferred. It was something that the client always owned.
A year later the Second Circuit followed suit, once again with a case involving graphic art. Brattleboro Publishing Co. v. Winmill Publishing Co. involved a newspaper called the Reformer that designed ads, including illustrations, for its advertisers. One of the advertisers placed a photostatic copy of such an ad in a rival paper, which led to an allegation of copyright infringement.
The Second Circuit concluded that although the advertiser was obviously not an employer, it should nonetheless own the copyright as work made for hire. From the court’s perspective, basic principles of fairness called for this outcome:
It would be unfair in these circumstances to place the burden on the advertiser; it is far more equitable to require the Reformer to provide by express agreement with the advertisers that it shall own any copyright to the advertisements.
Supplementing this appeal to fairness, the court once again invoked the magic phrase that first appeared in the Lin-Wood Builder case, at least in the copyright context: “instance and expense.”
If the outcomes in these cases seem reasonable, that’s probably because they were. Sort of. Both of these cases could have, in effect, reached the same outcome by applying the old default rule, which would have assigned the copyright to the commissioning party. However, these rulings essentially rebooted the traditional work-for-hire standard and retconned the earlier cases, claiming that a legal standard that had been considered clear for decades was in fact ambiguous.
What followed was a retroactive re-interpretation of previous cases to imply that an automatic assignment of copyright while retaining the right of renewal actually meant that commissioned material is in fact work made for hire if it met what came to called “the instance-and-expense test.”
This shift in legal standards did not need to occur. In these mid-1960s cases contradicting the old default rule, the artwork in dispute had a relatively short marketable life span — reclassifying the material from an assignment of the freelancer’s copyright to work-for-hire had no rational relation to the interests at stake. Nonetheless, this new approach to freelance material would soon have dramatic implications for creators seeking to exercise their renewal rights.
Siegel v. Kirby
To see how, we need only look to the two cases that the Marvel v. Kirby court describes as having unambiguously established the reversal of the old default rule that freelancers merely transferred their copyright to the commissioning party for a single term.
The 1972 case of Picture Music, Inc., v. Bourne, Inc. concerned renewal of the copyright to the song, “Who’s Afraid of the Big Bad Wolf?”, from the Academy Award-winning 1933 Disney animated short, Three Little Pigs. In this case, a woman — worth noting, by the way — who helped write the song was denied co-author status on the grounds that her personal contribution was in fact work for hire. Formally recognizing the instance-and-expense standard for finding an independent contractor’s material to be work made for hire, the court concluded that the song actually belonged to the corporation and the man who supervised her creative contributions.
The other paradigmatic model for the instance-and-expense test is none other than the 1974 case of Jerry Siegel and Joseph Shuster v. National Periodical Publications, Inc., in which the co-creators of Superman unsuccessfully attempted to renew the copyright to the hero they had fatefully sold. The crux of the Siegel opinion was the relation between the federal law of copyright and the 1947 state-court ruling that Superman was work-for-hire material whose sale included the right to renew the copyright.
In the co-creators’ favor, the court found that the federal law of copyright trumped the lower court’s work-for-hire finding. In its place, the court applied the instance-and-expense test, concluding that Superman was created years before Siegel and Shuster signed the 1937 employment contract making them — you guessed it — the company’s employees. Because Superman was originally prepared outside the scope of their employment, the company’s subsequent contributions to publishing the pair’s newspaper strips in comic-book form were not sufficient to create a legal presumption that the material was work made for hire.
Nonetheless, the Second Circuit did not concede that Siegel and Shuster had a right to renew the copyright in the material they had assigned to the publisher. Although federal precedent established that copyright renewal could not be transferred to the publisher absent an express reference in the contract, the court concluded that this aspect of federal law did not trump state law governing the conveyance of rights in the contract. Because the New York state court found that Siegel and Shuster had sold the renewal right along with all other rights back in 1938, the appellate court ruled that they could not exercise what would otherwise have been their right to reclaim the copyright.
Within the comics community, Siegel served to confirm that our legal system was fundamentally rigged against creators. Established precedent regarding the right of renewal was conveniently set aside, sending a message to all corporate rights holders that the law would find a way to enable them to keep their most valuable properties. Even the tentative concession that Superman might not have been work made for hire worked against other freelance creators, the vast majority of whom would not be able to prove that they had created their characters years before they started supplying stories or art to a publisher.
It’s a tradition that continues to this day, including the recent Bizarro-Siegel appellate ruling in the Gary Friedrich case. The Second Circuit may have disagreed with a lower court’s finding that Friedrich had sold the renewal right, but it went on to state that in applying the instance-and-expense test, “a jury could easily conclude from these facts that Ghost Rider was a ‘work made for hire’ and thus that Marvel was the sole statutory author.”
The post-1965 default rule for freelance material under the 1909 Act was aptly summarized by a later court as follows: absent a contract expressly stating otherwise, “whenever one person bought authorship services from another, the seller was a copyright ‘employee’ and the buyer was a statutory ‘author.’” Since most comic-book creators from the ’30s to the early ’70s seem to have worked without a contract, the Second and Ninth Circuits had effectively shifted billions of dollars in intellectual property from its creators to their clients.
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