On August 8th 2013, the United States Court of Appeals for the Second Circuit upheld a lower court ruling that comic book artist Jack Kirby’s contributions to Marvel were “made for hire”, and therefore ineligible for copyright termination notices under §304 (c) of Title 17 of the United States Code.
In 2009, the Kirby heirs served Marvel with notices of termination of transfer covering the extended renewal term for works published between 1958 and 1963. After negotiations failed, Marvel sought and received a summary judgment that the works were for hire.
Work for Hire
§ 304 (c) of Title 17 of the United States Code governs transfers executed before 1978. This provision covers works in which copyright was initially secured before 1978. This section allows parties to terminate the transfer for the extended copyright period under the 1976 legislation, which is a longer term than the parties had initially contemplated. This provision, however, excludes works for hire, in which case the employer owns the copyright and will retain it after their employee passes away. To determine whether a work was “for hire”, courts turn to case law interpreting the legislation in effect at the time – the 1909 Copyright Act. Under the 1909 act, courts developed the “instance and expense” test to determine whether a work was in fact “for hire” or not.
Instance and Expense Test
The general rule of the instance and expense test (from Martin Graham) is that, “a work is made at the hiring party’s instance and expense when the employer induces the creation of the work and has the right to direct and supervise the manner in which the work is carried out”. The instance refers to the extent to which the hiring party provided the impetus for, or participated in, the creation of the work, while expense refers to the resources the hiring party invests or their power to supervise the creation of the work.
Application to Kirby
The Kirby estate argued that when Jack Kirby drew panels for Marvel it was as a freelance artist. Kirby undertook all the costs, including his materials, and he bore the risk of non-publication. In addition, he received a flat per-page rate regardless of whether Marvel required edits. During the relevant period, Kirby worked from home, set his own hours and did not receive fixed wages or benefits. Marvel conceded that Kirby had more creative freedom than many of his peers, as he was Marvel’s best artist. Under what Stan Lee termed the “Marvel Method”, Kirby sometimes created panels without a script after collaboration meetings where Lee outlined the contours of the story and filled in the script after panels were completed.
Marvel paid a flat, per-page rate and reserved the right to require edits or reject pages although it admitted that this was a rarity for Kirby’s work. Marvel contended that the flat per-page rate paid to Kirby and other artists at the time showed that Marvel took on the risk of editing, ultimate publication, and commercial success. Marvel further argued that Kirby did not complete his work on spec; his work was created with an expectation that it would be published due to an ongoing relationship, which required little supervision due to its prolonged nature. The fact that Marvel rarely exercised control over Kirby did not mean that they did not retain the right to do so. Even when working under the Marvel Method, Kirby’s work was within and for the scope of titles published by Marvel, under the direction of Stan Lee.
The court held that Marvel established that Kirby created the works at their instance and expense. This raised the presumption that the works were made for hire, which is rebuttable by an agreement to the contrary, contemporary with the works. The Kirby estate put forward the argument that a 1975 assignment to transfer interests in works to Marvel suggested an understanding that Marvel did not have the rights at the time. The court disagreed and felt that in all likeliness this was a redundancy to protect Marvel and its rights, not an admission that it lacked the rights.
Comparison to Canadian Context
In my opinion, this decision would have reached a similar outcome in Canada. Canadian employers are the first owner of copyright for an employee in the absence of an agreement to the contrary, while a freelancer generally owns first copyright in their works. The question of whether Kirby was a freelance artist would still depend on the overall relationship between the parties and the control that Marvel was able to exert on Kirby. A Canadian court would consider whether Kirby worked on his own account or in the business of Marvel and the extent to which Marvel could control his work. I think that as the court ruled in Kirby, the works were not stand-alone; they were a part of the universe developed by Marvel. The works came from direction from Lee and other writers, and he drew panels based on instructions from Lee. This was a prolonged relationship during which Marvel directed Kirby’s work and assigned him to specific story lines. Therefore the heirs to the Kirby estate would be unlikely to fare any better in Canada. Is this an uncanny result? Amazing, perhaps? No matter the outcome, copyright law is always incredible.
Allison McLean is an IPilogue Editor as well as a JD Candidate and second year student at Osgoode Hall Law School.