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 Ěýof the . 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 and a for the Second Circuit appeal court to rehear the case. Their latest brings the issue to where it stands today.

The Issue Hits the Stands

The March 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 ). ĚýThe 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 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 theĚýidea of work for hire - a concept extremely significant to the entire entertainment industry. On the Kirbys’ team, Hollywood guilds , the , and the submitted an 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 , “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 examinedĚýeach year, and as noted by this is a year of hot-button topics and to the 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.Ěý

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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

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.Ěý To determine whether a work was "for hire", courts turn to case law interpreting the legislation in effect at the time - the . 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 (fromĚý) 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”. ĚýThe 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.Ěý 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 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 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 anĚý result? , perhaps? No matter the outcome, copyright law is always .

Allison McLean is an IPilogue Editor as well as a JD Candidate and second year student at Osgoode Hall Law School.Ěý

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