Marvel may have to call in The Avengers for help with this one. The comic giant filed papers on July 14th arguing to the U.S. Supreme Court that it should not review the Second Circuit appeal court’s decision in Marvel Characters, Inc. v Kirby. The case concerned whether the estate of legendary comic book artist Jack Kirby could terminate the copyright grant on works Kirby co-created during his career, a catalogue of characters including Spider-Man, The Incredible Hulk, and Captain America.
The Evolution of the Kirby vs. Marvel Saga
In 2010, Marvel filed suit against Kirby’s heirs, who contended that they had the right to issue copyright termination notices to Marvel (and other entertainment powerhouses like Fox, Sony, Universal and Paramount Pictures) on characters created by Kirby under section 304(c)(2) of the 1976 Copyright Act. Marvel argued that Kirby’s works were made for hire and thus his estate had no termination rights. In August of 2011 the district court found in favour of Marvel, applying the “instance and expense test” to find that the works were indeed made for hire. The Kirbys thus appealed and subsequently lost both the appeal and a request for the Second Circuit appeal court to rehear the case. Their latest petition brings the issue to where it stands today.
The Issue Hits the Stands
The March petition filed by the Kirbys to the Supreme Court focused its attack on the “instance and expense” test used by the Second Circuit court to determine if a creation is work for hire (both doctrines explained rather well by IP lawyer Terry Hart here). The Kirbys submitted that the test was used “under the 1909 Act to eviscerate the 1976 Act’s inalienable termination right, and it did so with respect to a major independent artist and numerous invaluable works.” It further suggested that the late Kirby was a “creative genius who redefined an industry from a small drafting board in his basement, without financial security or any participation in the success of his creations, [epitomizing] the very author/publisher imbalance Congress sought to remedy in enacting the termination provisions.” The petition acts as a sort of call-to-arms for creators and their families, who would find great power in holding termination rights over the wealthy and powerful studios relying on these individuals for their works and talents.
Marvel Brings the (Asgardian) Hammer Down
Marvel did not hold back in its response to the Kirbys, clearly tired of this seemingly never-ending dance (wait, I thought Marvel liked sequels?). In addition to submitting that the case in question presented “a factbound application of a test uniformly adopted by the lower courts” Marvel sharply summarized its position stating: “It [the decision] implicates no circuit split, no judicial taking, no due process violation, and no grave matter of separation of powers. It does not remotely merit this Court’s review.” Amongst the various arguments used to dismiss the Kirbys’ claims, Marvel’s papers include a discussion of why the Second Circuit was correct in finding that Kirby’s creations were works for hire. Marvel noted that comic book legend Stan Lee “supervised the creation of Kirby’s work from conception to publication” and had the authority to approve Kirby’s art or seek revisions, while Kirby was paid at a fixed fee-per-page created. As such, Marvel argues that they, not Kirby, “bore the “risk” and potential expense if the publication of the works was unsuccessful” and that Kirby himself had repeatedly stated that Marvel owned all the rights in his works.
The Interesting Web That Has Been Woven
Even though it will be a while until we know which party the Supreme Court sides with, the Kirby’s reopening of the issue and Marvel’s response have ignited a conversation about copyright and the idea of work for hire – a concept extremely significant to the entire entertainment industry. On the Kirbys’ team, Hollywood guilds SAG-AFTRA, the WGA, and the DGA submitted an amicus brief to the Supreme Court, stating that the appeal court’s decision and a broad interpretation of works made for hire regarding commissioned works creates a huge power shift within the entertainment industry in favour of studios. The decision allows for a “presumption that copyright ownership vests in a commissioning party as a work made for hire, rather than in the work’s creator.”
The guilds’ interest in the matter reflects the importance of the case for the entertainment industry, especially if the Supreme Court reviews the issue. As noted by Billboard, “film studios, record labels and publishing houses have built their businesses in no small part on the conveyed rights of artists like Kirby, who worked quasi-independently.” If the Supreme Court were to find in favour of the Kirbys’ camp, the leaders of the entertainment industry could see their copyrights in important (and financially lucrative) franchises, characters, and works be challenged and potentially taken away by individual creators and their families or estates. This could result in a huge shift in how these studios, record labels, and publishing houses do business, having to possibly create partnerships with these artists and seek permission to use the works their businesses rely on. The artist’s or creator’s role could thus be elevated within the industry, no longer just a “worker” or “gear” in the machine but a partner in the creation of entertainment products. If Marvel wins or the Supreme Court decides not to revisit the case I can only assume that the status quo would hold and artists and their families may be deterred from spending the time and money to challenge industry giants like Marvel again. Whether this is the correct way for the entertainment industry to function (cue debate on artist’s rights and artistic integrity vs. the commercialization of art and entertainment), that is a discussion for another day.
There is a strong chance the Supreme Court will not open the case. Only a handful of cases from those requested to be reviewed are examined each year, and as noted by Comics Alliance this is a year of hot-button topics and upcoming challenges to the Affordable Care Act that may trump the Kirby estate’s petition in importance. Yet, there are signs that the case may actually be heard. For example, Marvel originally declined to respond to the petition and only did so after being asked to by the Court’s justices because they planned to take the case into conference – a step towards a hearing. Again, nothing has been decided yet, but I think I feel my Spidey senses tingling…
Jaimie Franks is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.
Great post, Jaimie! Always nice to see a fellow IPilogue editor writing about comic books, since my first blog entry (here: http://www.iposgoode.ca/2014/06/seeing-double-two-quicksilvers-on-the-silver-screen/) was also about Marvel…and the complicated ‘web’ they have woven with respect to licensing issues surrounding characters created by the likes of Jack Kirby.
Also, I noticed your post was published one day before the Kirby estate issued its 13-page “Reply Brief for Petitioners” (on July 29th) which responds directly to Marvel’s filed papers (on July 14th) mentioned at the beginning of your piece. A link to the PDF of the new reply brief can be found here: http://www.scribd.com/doc/235399127/Kirby-Cert-Reply-Final
The reply seems to be directly in line with how you represented the Kirby estate’s position “as a sort of call-to-arms for creators and their families”, Jaimie (to quote you). For example, I think the following quote from pgs. 11-12 makes a similar point rather persuasively (and also gets “my Spidey senses tingling” a bit, lol about SCOTUS potentially hearing this case out):
–> “Even if the legal rule at issue affected only the multi-billion dollar franchises based on Kirby’s creations—X-Men, Thor, The Avengers, Captain America, Iron Man, and Hulk, for example—that would justify review. But the implications are much broader…The contours of the work for hire doctrine therefore carry profound significance for *freelance creators*—including ***artists, writers, photographers, designers, composers, and computer programmers—and for the publishing, advertising, music, and other industries which commission their works***…Respondents deflect the obvious importance of this by relegating it to the past. But because work-for-hire is the sole exception to statutory termination, the circuits’ unsupported construction…[is] casting a pall over the present rights of *innumerable authors*.”
Just to think about the effect this would have on authors/creators outside of the comic-book industry, I thought an interesting example would be related to digital sampling in music…and how record labels use the “work-for-hire” doctrine to charge outrageous fees (sometimes $250,000) when giving permission to other artists to sample recordings they have released/published (but not ‘created’ themselves, of course)…As discussed on pg. 88 of this book Prof. K McLeod (URL here: http://www.freedomofexpression.us/documents/mcleod-freedomofexpression.pdf)…
–> “For instance, when Public Enemy wanted to sample from Buffalo Springfield’s “For What It’s Worth” for the title song in Spike Lee’s He Got Game, the fees were outrageous. Chuck D told me it was cheaper to mimic the song’s instrumentation in the studio and to wheel in Stephen Stills, who originally wrote the song, and have him re-sing it. This way, they only had to pay royalties to Stills, the songwriter, and not deal with Atlantic Records, which released the Buffalo Springfield recording and demanded a steep price. This is how copyright law and the sample-licensing bureaucracy have forced hip-hop artists to bend and twist.”
Something similar happened when Kanye West tried to get a brief sample for his 2004 “College Dropout” album taken from hip-hop artist Lauryn Hill’s 2002 “MTV Unplugged” album, but he encountered multiple obstacles despite the fact that his record label (owned by Jay-Z) could afford the ridiculously high prices ($150,000 in this case) that publishers sometimes charge before giving out sampling licenses…Instead, to get around the need for both licenses as Chuck D did with Atlantic Records, West just called in another R&B songstress and asked her to sing/imitate Hill’s part…as a result of these kinds of scenarios…“Today, hip-hop producers regularly hire studio musicians who are instructed to imitate a known song” (pg. 87 of above link).
Imagine what would happen if the “work-for-hire” doctrine was changed so that only Stills’ and Hill’s consent was really necessary and businesses thus “hav[e] to possibly create partnerships with these artists and seek permission to use the works their businesses rely on” (to quote you)…In the music industry, it may lead to certain sampling licenses being easier to obtain if artists like Hill and Stills remain open to being sampled, as opposed to artists like the Beatles (who refuse to give permission to be sampled, only covered)…the artist’s/creator’s role would then surely be elevated in the industry!
I can imagine similar complications occurring with the works/characters that Jack Kirby created under the “work-for-hire” doctrine…especially when considering that Marvel has licensed out Spiderman to Sony, X-Men to Fox (in addition to Daredevil and the Fantastic Four), and managed to keep most of the characters on the Avengers team to itself (in its new partnership with Disney)…If the doctrine was changed, I’m sure Kirby’s estate would also be elevated in the control/ creative process behind those movies too…and w/ multiple movie studios!
Anyways, that’s just my two cents on this topic for today. Hope this comment didn’t get too long, Jaimie! In conclusion, I just wanted to mention I am somewhat sympathetic to the argument put forward by Kirby’s estate, especially in this well-worded conclusion from their July 29th reply brief (on pg. 13):
–> “Many of our most celebrated literary and musical works were created before 1978 and signed away to publishers in un-remunerative transactions. Termination rights were “needed because of the **unequal bargaining position of authors**.” H.R. Rep. No. 94-1476, at 124 (1976). It would be hard to find a better example of this than the prolific Jack Kirby who worked in his basement with no contract, no financial security, and no employment benefits, but without whom Marvel might not even be in business today”.