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.