Marvel Comics Illustrations Held to be Works for Hire

A federal court in New York City has ruled that artistic works created by freelance artist Jim Kirby for classic comic books including “The Fantastic Four,” “The Incredible Hulk,” and “The X-Men” were works-for-hire owned by Marvel Worldwide pursuant to the U.S. Copyright Act of 1909. Marvel Worldwide, Inc. v. Kirby, No; 1:10-cv-00141-CM-KNF (S.D. N.Y. Jul. 28, 2011). Kirby contributed to the works in question from 1958-63, and there was no surviving written contract evidencing the terms of his engagement. However, in 1972, Kirby executed an agreement in which he purported to assign to Marvel’s predecessor “any and all right, title, and interest [Kirby] may have or control” in works he created for Marvel. In 2009, Kirby’s heirs notified Marvel that, pursuant to Section 304(c) of the Copyright Act, they were terminating Kirby’s copyright assignments in 45 works. Section 304(c) provides in relevant part that–

In the case of any copyright subsisting in either its first or renewal term on January 1, 1978, other than a copyright in a work made for hire, the exclusive or nonexclusive grant of a transfer or license of the renewal copyright or any right under it, executed before January 1, 1978, …  is subject to termination under the following conditions: … In the case of a grant executed by one or more of the authors of the work, termination of the grant may be effected, to the extent of a particular author’s share in the ownership of the renewal copyright, by the author who executed it or, if such author is dead, by the person or persons who, under clause (2) of this subsection, own and are entitled to exercise a total of more than one-half of that author’s termination interest.

17 U.S.C. § 304(c)(1).

Marvel filed a lawsuit against Kirby’s heirs and sought a declaration that the termination notices were null because Kirby’s contributions were works for hire and thus not subject to 17 U.S.C. § 304(c)(1). The Kirby heirs counterclaimed for a declaration that they owned the copyrights in question. Both sides filed motions for summary judgment.

The court granted Marvel’s motion for summary judgment, finding that Kirby’s creations were “works made for hire” under the Copyright Act of 1909–the statute that governed copyright matters when Kirby created the works in question–and that the copyright assignment termination notices did not divest Marvel of the copyrights in those creations. Kirby’s heirs pointed to Kirby’s 1972 assignment agreement as evidence of the parties’ belief that Marvel did not own the rights to Kirby’s work. However, the court observed that the agreement did not contain a warranty or representation that Kirby actually owned any of the copyrights he purported to assign. Instead, the agreement referred to whatever rights he “may” have. This ambiguity as to prior copyright ownership was underscored by a description in the agreement of some of the works created by Kirby as having been made by him when he was “an employee for hire of” Marvel’s predecessors. The court noted that “if that be true, … Marvel, not Kirby, owned the federal copyright all along.” Because the assignment spoke “out of both sides of its mouth,” the agreement was inconclusive as to whether Kirby’s creations were works for hire.

For purposes of determining what constitutes a work made for hire, the currently-effective Copyright Act of 1976 makes a clear distinction between works created by employees in the course of their employment and commissioned works. Works prepared by employees in the course of their employment are categorized as works made for hire. Commissioned works are only considered works made for hire if they fit within certain specified categories, and even then, only if the commissioning party and the person or persons accepting the commission agree in writing that the work to be created will be considered a work made for hire.

The Copyright Act of 1909 treated the work for hire question quite differently from the 1976 Act. The 1909 Act, which applies to works published prior to January 1, 1978, included within the definition of “author” an “employer in the case of works made for hire.” The 1909 Act did not define “employer” or “works made for hire.” However, in Brattleboro Publishing Co. v. Winmill Publishing Corp., 369 F.2d 565, 567-68 (2d Cir.1966), the U.S. Court of Appeals for the Second Circuit ruled that, for this purpose, an independent contractor was an “employee,” the hiring party was an “employer,” and “works made for hire” included works made at the hiring party’s “instance and expense.” Under the Second Circuit’s jurisprudence, a work is created 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.” Martha Graham School and Dance Foundation, Inc. v. Martha Graham Center of Contemporary Dance, Inc., 380 F. 3d 624, 635 (2d Cir. 2004). The breadth of this interpretation of the 1909 Act was such that there was “an almost irrebuttable presumption that any person who paid another to create a copyrightable work was the statutory ‘author’ under the ‘work for hire’ doctrine.” Estate of Burne Hogarth v.Edgar Rice Burroughs, Inc., 342 F. 3d 149, 158 (2d Cir. 2003).

Applying the “instance and expense” test, the court found as a matter of law that Kirby’s contributions to Marvel comics were works for hire under the 1909 Copyright Act. The undisputed facts showed that Marvel, through its chief editor Stan Lee, gave Kirby assignments, reviewed his work, and made changes when necessary. Therefore Marvel “did control and supervise all work that it published between 1958 and 1963.” It was also undisputed that Kirby was paid a fixed per-page fee for all work that Marvel published. In light of the strong presumption in favor of works for hire under the 1909 Act, the  court found unpersuasive the Kirby heirs’ arguments that other evidence negated the effect of these salient facts.

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