The Superwar Over Jack Kirby’s Marvel Comics Heroes: To the Supreme Court?

A feature at Hollywood Reporter does a pretty
good job summing up a long, tangled legal history of a case that
just might (or, as always, might not) end up at the Supreme Court
and have ripple effects through the law of intellectual property
and the uses of popular culture: Lisa Kirby v. Marvel
Characters.

The heirs of groundbreaking comic book artist and creator Jack
Kirby are suing under a provision of copyright law to reclaim
copyrights in certain characters they claim Kirby created
(including Hulk, Thor, and X-Men) that they allege he merely
conveyed to Marvel Comics. Marvel is insisting the characters were
created as works made for hire by Kirby and belong to them (which
now means Disney) perpetually.

Excerpts laying forth some of the circumstances, facts, and
arguments:

In the past couple of months, there have been growing signs that
the case might indeed be picked up at the Supreme Court for review.
First, Kirby’s petition for certiorari was discussed at a May
conference. Then, the justices requested that Marvel respond after
the studio initially decided to downplay the affair by staying mum
about Kirby’s petition. And now, in advance of Marvel’s response,
comes several friend-of-the-court briefs urging the Supreme Court
to pick up the case.

The weight of one particularly amici curiae brief in particular
shouldn’t be underestimated.

It was authored by Bruce Lehman, former
director of the U.S. Patent and Trademark Office and the chief
advisor to President Bill Clinton on
intellectual property matters. He writes on behalf of himself,
former U.S. register of copyrights Ralph
Oman (who served as chief minority counsel of the
Senate’s IP subcommittee during the consideration of the 1976
Copyright Act), the Artists Rights Society….the International
Intellectual Property Institute and others….

Lehman’s brief challenges some of the conclusions of the 2nd
Circuit Court of Appeals, which decided for Marvel:

not only citing Kirby’s independence during the time he
contributed materials to his primary client, but also because he
thinks the 2nd Circuit disregarded legislative history on the
meaning of the term “employer,” ignored the Supreme Court’s canon
of statutory interpretation, and in particular, disregarded Supreme
Court Justice Thurgood Marshall‘s 1989
decision in CCNV
v. Reid. That opinion dealt with a commissioned work of
sculptural art and whether it could be considered a
work-made-for-hire when the commissioning party played a big role
in its creation. According to Lehman’s interpretation of
the CCNV opinion, “Justice Marshall rejected the
Second Circuit’s ‘instance and expense’ test and endorsed the D.C.
Circuit’s approach, concluding that ‘the term ‘employee’ should be
understood in light of the general common law of agency.’”….

“The court of appeal’s analysis conflicts with Justice Marshal’s
analysis of the work for hire doctrine under the 1909 Act,” he
writes. “Jack Kirby’s works at issue fell into the category of
‘commissioned works’ which Justice Marshall concluded were
‘convey[ed],’ i.e., assigned. Furthermore, all of the evidence
available to the lower courts supported that Kirby ‘convey[ed] the
copyright’ to Marvel, not that Marvel owned Kirby’s work at
creation. That is precisely the circumstance 17 U.S.C. § 304 is
intended to address by giving authors or their statutory heirs the
opportunity to terminate such copyright transfers.”

He adds that the 2nd Circuit’s “misinterpretation” would result
in unfairly stripping freelance artists of their termination rights
and provides an “unintended and unwarranted windfall to
publishers.”

The article notes that for the most part Kirby worked from
home, was paid a page rate and not a salary, bought his own
supplies, didn’t have taxes withheld, and other indications of “not
an employee.” Marvel used to force those they paid via a
declaration on their checks that endorsing the check—that is,
actually getting paid—meant they were assigning to Marvel “any
copyrights, trademark, and any other right….including my
assignment of any rights to renewal copyright.”

However, once:

in 1978, the new Copyright Act kicked in, with its looming
termination provisions, potentially allowing authors to reclaim
rights over their creation in the latter period of the copyright
term. The new law also recited “work made for hire,” meaning that
it’s the employer rather than the employee that should be
considered the author of a copyrighted work.

Soon, Marvel changed the legends on the back of its checks to
say that “all payee’s work has been within the scope of that
employment…and shall be considered as works made for hire.”

This implies there was a difference between giving up a
right that was the artists, in the old formulation, and never
having had such a right at all—doing work for hire.

There has not, alas for the chances of this case at the Supreme
Court, been any Circuit split yet; all lower courts considering
these sorts of things have sided with companies over artists.

To the extent that intellectual property remains an eternal
thing in these here United States, a decision for the rights of
creators over the companies they may have assigned copyright to in
the past will have some interesting effects, not just for the
personal fortunes of artists and heirs, but for the vast majority
of creators who might want to play with the characters once they
are libertated from corporate control. One doesn’t know exactly how
open or closed artists or heirs will be about licensing or
permitting the use of copyright-controlled characters, but its hard
to imagine they’d be more restrictive than the likes of a
Disney.