At the end of March, Jack Kirby’s descendants took their legal battle against Marvel Comics to the next level by filing a petition for writ of certiorari to the Supreme Court of the United States. Jack “King” Kirby is one of the most well-known figures in the history of comic books, known for creating and co-creating iconic characters such as the X-Men, Iron Man, the Incredible Hulk, and the Fantastic Four.
Kirby’s estate has been fighting in a battle that began in early 2010 for the termination of an earlier transfer of ownership in copyrights to the characters that Kirby helped create and that still maintain large amounts of popularity, as well as profit-generation.
Termination Rights: The Works Made for Hire Exception
The Copyright Act of 1976 contains a provision known as “termination rights.” Termination rights have become more and more popular as we have just recently started reaching the thirty-five year mark for many copyrights registered following the 1976 Act. In 17 U.S.C. 304(c) and (d), artists are given the ability terminate their transfer rights – effectively allowing them to reclaim ownership of their copyrighted works thirty-five years after transferring them to another party. Congress intended this to provide original creators and their heirs the ability to recover rights that might have been assigned or licensed based upon the previous provisions of the Copyright Act.
One recent example of how this works is with songwriter Victor Willis and his mega-hit “Y.M.C.A.,” which was written during his time as lead singer of the Village People. Willis recently regained control of the copyrights to many popular songs he wrote during the late 70s, songs which had long been under the control of music catalogue companies making a profit of the licensing fees for the works of Willis and others.
Unknown to most is a small exception to an artist’s termination rights. U.S. Copyright law provides for a type of copyright classification called “works made for hire.” “Works made for hire” are common in settings in which an artist is being paid, or commissioned, to create a work for someone else, i.e. a company. Once classified as a “work made for hire,” an artist is prevented from asserting an ownership claim in the work they help create. Instead of the artist, or artists, owning the work they create, another individual or business can assert ownership rights and register the work as their own with the Copyright Office.
Adding to the confusion is that sometimes courts must consider two different copyright acts depending upon when the work in question was created. For works created prior to January 1, 1978, the Copyright Act of 1909 applies. Works created on or after January 1, 1978 are governed by the Copyright Act of 1976. The works at issue in the Kirby/Marvel lawsuit were created between 1958 and 1963, therefore falling within the scope of the Copyright Act of 1909.
For an overview of the differences between the two Acts and an in-depth analysis of the 2011 district court opinion, check out Terry Hart’s post over at Copyhype.
The Copyright Act of 1909 section 26 states, “The word author shall include an employer in the case of works made for hire.” During the first sixty years of the 1909 Act, this section “applied solely to conventional employment, not to independent contractors,” according to the opinion. However, right before the Copyright Act of 1976, the Second Circuit expanded section 26 to include independent contracts through the creation of the “instance and expense” test. See Picture Music, Inc. v. Bourne, Inc., 457 F.2d 1213 (2d Cir. 1972).
The Kirby-Marvel Relationship
Kirby signed his first formal contract with Marvel on June 5, 1972. The contract, which was referred to only as “Assignment,” assigned all of the copyrights to Marvel that had been published by Marvel, according to the opinion. In 2009, Kirby’s heirs served Marvel with forty-five termination notices seeking to regain control of a number of comics published by Marvel between 1958 and 1963. These comics in particular helped introduce well-known characters like Thor, the Avengers, and Spider-man. Marvel responded in 2010 with a lawsuit seeking a declaratory judgment arguing that the works referenced in the termination notices were works made for hire under the Copyright Act of 1909, and therefore not terminable.
Kirby was known to be an unsalaried freelancer for Marvel and therefore arguments are being made by both sides as to what type of work relationship existed between Kirby and Marvel. The type of work relationship that a court finds can determine whether or not his work should be classified as “made for hire” under the Copyright Act.
The Works Made for Hire Test
The main issue in this lawsuit revolves around the characterization of freelance work as “works made for hire.” The lower courts have relied upon the “instance and expense” test while ruling in favor of Marvel. As stated in the petition, under the “instance and expense” test:
“The ‘instance’ prong turns on whether the publisher was ‘the motivating factor’ which induced the work’s creation. The ‘expense’ prong turns on whether the publisher paid ‘a sum certain’ for the freelance work.”
If the test is satisfied, then the court should determine that the parties intended a “work for hire” to be created.
The “instance and expense” test was criticized and rejected by the Supreme Court in the 1989 case of CCNV v. Reid, but not necessarily in a way that would be binding upon lower courts (this is known as dicta). See Community for Creative Non-Violence v. Reid, 490 U.S. 730 (1989). However, the Kirby Second Circuit viewed the negative treatment of the test in CCNV as being mere dicta, not a complete overruling of the 1909 Act’s inclusion of “independent contractors” with “employees.” Another argument point being made by Kirby’s heirs includes the common law of agency construction of an “independent contractor” work as being different than that of an “employee” and “employer.”
It remains to be seen whether or not the Supreme Court will agree to hear the case, given that they receive thousands of petitions for certiorari each year and there are only so many cases that can be selected. Therefore, the Kirby heirs might be at the end of the road for their battle to obtain the rights to the work of their father. On the other side of the argument, Marvel will be able to continue exploiting the works. Marvel can maintain control and ownership over the brands they have helped build and carry forward for the past few decades. Comic books have become more entwined into the popular culture. It’s only logical that similar legal battles will be seen more frequently as new works hit the thirty-five year mark, becoming eligible for copyright termination.
If you’re interested, you can read the full petition for certiorari here.
Jack Kirby by Susan Skaar is licensed under a Creative Commons Attribution-ShareAlike 3.0 Unported License.
Cover of ‘The Avengers’ #4: All Marvel characters and the distinctive likeness(es) thereof are Trademarks & Copyright © 1964 Marvel Characters, Inc. ALL RIGHTS RESERVED.