Tuesday, October 31, 2017

Halloween Costumes & Knock-offs

          Happy Halloween! I’ve always loved Halloween; it might be my favorite holiday. Not only do I love the costumes, decorations, and candy, it’s also close to my birthday. I’m definitely a Halloween person.
            Adding to my love of the holiday was the fact one of my earlier jobs as a lawyer was working for a retailer of Halloween costumes and d├ęcor. Not only was it a fun job, but it also provided a crash-course on the outer limits of intellectual property law. As many people are aware, knock off costumes – unlicensed costumes resembling popular characters – are abundant. Knock offs are abundant for a few reasons. First, some costume manufacturers cannot afford the licensing fees but still want to capitalize on a recent trend or fad. Second, sometimes a license for a particular property might not be available, either due to poor planning by the licensor, choice, or unforeseen popularity. And third, if done correctly knock-off costumes are legal under copyright law.
            Knock-offs can be legal because copyright law does not protect functional designs. If a design is important to the actual purpose and operation of the good, then it’s not protected by copyright. (Patent protection for elements of clothing is possible, but will not be discussed here.) Therefore, clothes are generally not protected by copyright. However, the designs on the clothing, if distinctive enough, can be protected by copyright. This issue was recently addressed by the U.S. Supreme Court in the Star Athletics case, which I previewed here. So, if a manufacturer can come up with a design evoking a popular character without infringing on any possible copyrightable elements of the costume, then their costume should be legal under copyright law. However, they still must be wary to not run afoul of trademark law, which means they cannot use the character’s name or any related logos associated with the character, and they have to be wary of right of publicity law, meaning they have to be careful about using a famous person’s name or likeness. It can make for some interesting products and descriptions. Below are a few of the more interesting ones I found recently. (Note: affiliate links)

Most of us should be able to guess who this is supposed to be.

A little trickier, but click through the link to see the product description, which makes it obvious and could run them afoul of the rights-holder.

Most of my readers should be able to guess this one.

It's a little harder to find men's costumes skirting this issue, and it's not always obvious. To me, this seems like it's evoking a certain character from a long-running animated sitcom.

Thursday, October 12, 2017

Changing Work Made for Hire

When I was in law school, I wrote a paper on what I perceived to be unfairness in the Copyright Act’s work-made-for-hire law. The main reason I believed the law to be unfair was due to the plight of comic book creators, and a good chunk of the article went on to highlight some of the unequal treatment creators encountered under this law. My article proposed a remedy to try and address the problem. It is not my finest work. But, it does have some concepts worth exploring.
I’ve written before about work-made-for-hire agreements, and I’ve discussed some lawsuits creators have brought trying to reclaim characters they created, but I don’t believe I’ve addressed the basics of why the doctrine exists in the first place. The work-made-for-hire doctrine was formally adopted in the Copyright Act of 1909, where it was briefly mentioned,[1] and it was adopted in more detail in the 1976 Copyright Act. (I previously discussed it in depth here: http://www.comicslawyer.com/2016/08/work-made-for-hire.html). The basic rationale behind the doctrine is that an employer has paid an employee to create the work, and it therefore belongs to the employer.
While writing my paper in law school, I believed the work-made-for-hire doctrine unfair to comic book creators. In most employment-related situations, the salary paid to an employee for their work is adequate. However, when an employee creates something potentially worth millions of dollars to the company, is it fair for the employee’s only compensation to be his salary?
The main remedy I advocated called for reworking the work-made-for-hire doctrine into a mandatory licensing scheme. Instead of the employee having no rights to his creation, he would be entitled to a fixed percentage of revenue generated by his creation outside of its original work. For instance, if the character was originally introduced in an established title but soon found its way into a stand-alone comic book, the creator would receive a percentage of profits. Additionally, if the publisher stopped exploiting the character for a fixed period of time, the rights to the character would revert back to the creator.
At the time, I thought my idea novel and a great solution to a problem I believed was prevalent. I spoke with a few people in the industry at the time, but I was not privy to the behind-the-scenes deals that were in place between publishers and their creators. My knowledge of the industry was a far cry from what it is today. The information on the inner workings of the comic book industry available today online and through well-researched books far surpasses what was available a decade ago. Imagine my surprise when I finally learned DC and Marvel had instituted a system not too dissimilar to my proposal on their own years before.
The best publicly available description of this policy I’ve been able to locate was posted by Mark Waid on his Thrillbent site: http://thrillbent.com/blog/how-dc-contracts-work/. It’s a fascinating read, and if you haven’t read it you should. Basically, if creators introduced a new character, they would be paid a small royalty on the revenue the character generates for the company.
Perhaps unsurprisingly, I was a little embarrassed when I discovered my “big idea” to help creators was already put into place years before. The nuts and bolts differ from what I proposed, but the basic elements are the same. Two differences separate my proposal from theirs. First, mine would be a change to copyright law. The programs put in place by the publishers are contractual—at best. If the additional incentives paid to creators are policies enacted by the companies and not actual contractual obligations, the company can change the program without much input from the creator.  Second, I advocated a way for the creators to regain their characters if the publisher failed to utilize it. While certain creators may be able to contractually negotiate this happening, most cannot. For those who cannot, their creations will always belong to the publisher.
Even though I’m embarrassed I failed to discover when I was writing my paper my solution was already being implemented, I’m still proud of myself for coming up with an idea to resolve the problem similar to what was actually used. Not too bad for a second year law student.     

[1] “…or by an employer for whom such work is made for hire…”, Sec. 23, Copyright Act of 1909.

Thursday, September 28, 2017

Comic Pros & Cons Podcat

Derek Becker was kind enough to invite me on his Comic Pros & Cons podcast. I had a great time chatting with Derek, and his podcasts touch on some great issues. You can check out the podcast with me here: http://www.comicprosandcons.com/episode-082-dirk-vanover/. While you're there, check out some of his other ones as well.

Wednesday, September 6, 2017

Would a Bumblebee by any other name sting as much?

           Last week news broke that Hasbro, manufacturer of the Transformers toys, sued DC Comics for trademark infringement.[1] The trademark at issue: Bumblebee. Both companies created a character and released a toy bearing the name Bumblebee. For Hasbro, it’s a car that transforms into a robot; for DC, it’s a character who created a suit granting her super strength and durability, and the ability to fly, shrink, and use sonic disruptors.[2]
            In its complaint, Hasbro states it has used the Bumblebee trademark in connection with toys since as early as October 3, 1983. This also is the date it gave when registering its Bumblebee trademark with the U.S. Patent and Trademark Office in 2015. DC’s Bumblebee character, however, was first introduced in 1978 in Teen Titans #48 (or Teen Titans #45 in 1976, when her non-Bumblebee character, Karen Beecher, was introduced).[3] However, it does not appear DC ever created a Bumblebee toy until recently. In its complaint, Hasbro alleges DC began using the “spurious” Bumblebee trademark in connection with its Superhero Girls line of toys, which it launched in 2015.[4]
Did I finally purchase the Bumblebee doll my
daughter wanted after this lawsuit was filed? Yes, yes I did.
            When discussing this case, it’s important to keep in mind the differences between copyright law and trademark law. Copyright law protects the way an idea is expressed through art, writing, film, music, etc. Trademark law protects the identifying marks of providers of goods and services. Additionally, trademark registrations are broken down in to multiple categories, and it is possible for two similarly-named trademarks to co-exist at the same time if they are in separate and unrelated categories. While the two characters can exist simultaneously with the same name under copyright law, provided they are not copies of each other, it can become a problem when the character names are both used in relation to the same category, in this case toys.
            Given Hasbro has been manufacturing Bumblebee toys since 1983, it’s surprising they never attempted to register a trademark for the name until 2005. In reviewing the online trademark records, Hasbro was prevented from registering the trademark at that time because another company was attempting to register a trademark using Bumblebee in the same toys category and a few others. Even though the other company’s trademark ultimately did not register, Hasbro did not attempt to register the Bumblebee name again until 2015. This time it was successful, and the trademark was officially registered in December.    
Since these characters have co-existed for decades, what has prompted this lawsuit now? A few things jump out. First, Hasbro finally registered and received a federal trademark registration for Bumblebee in the toys category in 2015. With a federal trademark registration secured, it has stronger trademark rights that it can enforce, along with a requirement to do so. Second, DC did not manufacture a Bumblebee toy until 2015. The two companies never had a competing toy on the market bearing the same name until recently. Third, a new film starring Bumblebee is coming out next year, which is probably why Hasbro registered the trademark since they’ll be manufacturing tie-in toys, and fourth, DC’s Superhero Girl toys are manufactured by Mattel. When you’re a large company like Hasbro, it’s unlikely you’d initiate a lawsuit solely to stick it to a competitor, but it doesn’t hurt.
I’m a little surprised this actually ended up in court. Most likely Hasbro filed the lawsuit to put pressure on DC during negotiations – to let them know Hasbro means business. In trademark infringement lawsuits, the test is likelihood of confusion. It’s hard to believe a likelihood of confusion could be found between these two very different toys, but the way the system is set up favors Hasbro because they have a registered trademark. Ultimately, I imagine this case will settle before trial with DC making some minor tweaks to the packaging of their Bumblebee figures, such as a slight renaming like calling it DC Comics’ Bumblebee.

[1] http://variety.com/2017/biz/news/bumblebee-trademark-transformers-dc-comics-warner-bros-1202541577/
[2] http://dc.wikia.com/wiki/Karen_Beecher_(New_Earth)
[3] https://en.wikipedia.org/wiki/Bumblebee_(comics)
[4] http://www.dccomics.com/blog/2015/10/01/the-dc-super-hero-girls-universe-is-live

Tuesday, August 29, 2017

5 Top Copyright FAQ's

As an intellectual property lawyer who works with comic book creators and who hosts panels at comic book conventions, I answer a lot of questions about copyright law. As of August 2017, here are five of the most frequently asked questions.

1) If I place a copy of my work in an envelope and mail it to myself, does this give me copyright protection?

This is what’s known as a poor man’s copyright. It’s not a real thing. Once you have created your work, you own the copyright. Registering your work with the Copyright Office solidifies your claim of ownership and grants you some additional rights regarding enforcement.

2) How do I prevent someone from stealing my idea?

The answer to this question varies. The simplest way is to not tell anyone about your fantastic idea. The second best solution is to have everyone you tell about your idea sign a non-disclosure agreement, which can be burdensome and impractical. Typically, the best approach is to write down as much of your idea as possible in a detailed synopsis, outline, etc. This shows you have taken steps to actually turn your idea into a copyrightable work. If you do need to discuss your idea with someone else, either give them the synopsis you’ve prepared or, if you’re having a conversation and there is not an opportunity to get a signed agreement, don’t be as thorough in your descriptions. Additionally, it’s always a good idea to document who knows about your project.

3) Other people are making and selling fan art pieces, so it’s legal, right?

No. Just because others are violating someone’s copyright rights and not being stopped does not give you a free license to do the same. A copyright owner could come along at any time and enforce its rights through cease-and-desist letters, DMCA takedown notices, or lawsuits. If you are making and selling art using the intellectual property of others without their permission, you are likely infringing on their rights. Be careful. For more, check out my previous posts on fan art: Is Fan Art Legal? and Fan Art and Fair Use - An Update

4) If my work is 10/20/30% different than the original work I’ll be fine, right?

There is no set percentage that would make your work non-infringing. One of the factors courts look at is whether the new work is “transformative.” The Copyright Office describes transformative works as “those that add something new, with a further purpose or different character, and do not substitute for the original use of the work.”[1] Obviously, you will be better off with more differences between your work and the original work.

5) What about fair use?

As I’ve said numerous times, fair use is a defense to copyright infringement. It will be raised in court after you’ve been sued, and the court will decide whether your work is a fair use. If someone thinks you’ve ripped off their work, claiming your work is a fair use probably won’t stop them from suing you. I’ve talked about fair use more in-depth here.

For a bit more-detailed explanation of copyright law, check out my post here.

[1] More information on fair use, Copyright.gov, https://www.copyright.gov/fair-use/more-info.html (last visisted August 29, 2017).

Monday, August 7, 2017

ComixLaunch Podcast

I'd like to thank Tyler James for having me as a guest on his ComixLaunch podcast once again. In this episode, we have a detailed talk about publishing contracts and what creators need to be aware of when they negotiate them. You can find it here.

If you like what you hear and want to learn more about some of the nuts-and-bolts of the self-publishing world, check out more of the ComixLaunch podcast. The episodes are full of useful and practical advice

Monday, July 31, 2017

Fan Art & Fair Use - An Update

I’m frequently asked about fan-created works. I’ve written about my thoughts on the matter previously here, and generally, my thoughts on the matter remain the same: if you don’t own the rights to the characters you are drawing, you are probably in violation of someone’s intellectual property rights. Recently, rulings have been made in two cases involving works akin to fan art that will perhaps provide some guidance.
            First, we have the Axanar case. I previously wrote about the Axanar case when Paramount and CBS released their fan art guidelines. Briefly, Axanar Productions was attempting to create a feature-length film based around a character who appeared in an episode of the original Star Trek series, Garth of Izard. Axanar raised over $1 million on Kickstarter to fund its production and was planning on hiring people who had worked on Star Trek productions in the past. In 2015, Paramount/CBS sued for copyright infringement. In January, the judge hearing the case ruled Axanar was not entitled to a fair use defense in its work, and the case was settled shortly after. For more information, see the Hollywood Reporter coverage.
            Our second case also involves Star Trek, but in this case, a different rights-holder is suing. ComicMix, LLC started a Kickstarter campaign to fund a mashup of Dr. Seuss’ Oh, the Places You’ll Go! and Star Trek called Oh, the Places You’ll Boldly Go![1] It did not have permission from Paramount/CBS or from Seuss Enterprises.[2] Seuss Enterprises sued ComicMix for copyright and trademark infringement.[3] In addressing ComicMix’s Motion to Dismiss, the court weighed the four factors of fair use and found it evenly weighted between the two parties.[4] As such, it could not dismiss the case. Additionally, the court found the ComicMix work was not a parody.[5] The work used Go!’s style and format to tell stories from the Star Trek canon.[6] However, the court did find the work transformative because it creates a completely new work from the two source worlds.[7] The court also dismissed the trademark claims.[8]
            Initially, these two cases might seem at odds with each other, but they can easily be reconciled. They also shed light on questions surrounding fan art. The Axanar case involved a work heavily reliant on the Star Trek universe to tell its story. Since it sought to develop a character and story line first mentioned in the original Star Trek series, it is easy to clarify it as a derivative work. It primarily used Paramount/CBS’ intellectual property to create a new work. However, the ComicMix case involved a mash-up. As the court points out, it blends two different intellectual properties together to create a new work. [9] The court recognized mash-up works as an emerging culture and did not want to categorically eliminate this form of art.[10] Whether or not a mash-up work qualifies as a fair use will be a case-by-case determination, and in the ComicMix case, it is still to be determined whether Oh, the Places You’ll Boldly Go! will qualify as a fair use.[11]
            As I mentioned in the beginning, if you don’t own the rights to the intellectual property you’re using in your fan-created work, you could be infringing on someone’s rights. Even though you might believe your work qualifies as fair use, it’s likely you will have to go to court to assert your fair use defense. As both of these cases illustrate, courts determine fair use on a case-by-case basis, and you can easily find yourself on the wrong side of a copyright infringement claim.  Especially since there is not a clear line demarcating the point of infringement. If you are creating a piece of work using someone else’s intellectual property, tread carefully.  

[1] Dr. Seuss Enters., L.P. v. ComicMix, LLC, No. 16cv2779-JLS, at page 2 (S.D. Cal. 2017).
[2] See Cullins, Ashley, Dr. Seuess Enterprises Takes Another Shot at Vaporizing ‘Star Trek’ Parody Book, July 3, 2017, HollywoodReporter.com,  http://www.hollywoodreporter.com/thr-esq/dr-seuss-enterprises-takes-shot-at-vaporizing-star-trek-parody-book-1016754 (last visited July 28, 2017).
[3]Id. at page 3.
[4] Id. at page 13.
[5] Id. at page 8.
[6] Id.
[7] Id.
[8] Id. at page 20.
[9] Id. at pages 8, 12.
[10] Id. at 12.
[11] See Cullins, Ashley, Dr. Seuess Enterprises Takes Another Shot at Vaporizing ‘Star Trek’ Parody Book, July 3, 2017, HollywoodReporter.com,  http://www.hollywoodreporter.com/thr-esq/dr-seuss-enterprises-takes-shot-at-vaporizing-star-trek-parody-book-1016754 (last visited July 28, 2017).

Monday, July 3, 2017

The Batmobile and the Bounds of Copyright Protection

           When can a character be protected by copyright? Over the years, it has been an interesting question for courts to address. In early cases involving Superman, the court found the character was sufficiently different from stock Hercules-type characters to warrant copyright protection.[1] A more recent example was addressed in Gaiman v. McFarlane (briefly discussed here); the Seventh Circuit looked closely at the Cogliostro character to determine if the character was more than a stock wizened, wise wino.[2]
            In 2015, the Ninth Circuit Court of Appeals revisited the question of what characters can be protected by copyright in DC Comics v. Towle.[3] At issue was whether the Batmobile could be considered a character entitled to copyright protection.[4]
            Mark Towle made and sold replicas of the Batmobiles from the Adam West TV show and the Michael Keaton movie.[5] They were near-exact replicas, and he also advertised the cars as the Batmobile and used bat motifs throughout the vehicles.[6] In 2011, DC brought a lawsuit against him alleging copyright infringement, trademark infringement, and other causes of action.[7] The district court found Towle’s actions in reproducing the Batmobile constituted copyright infringement.[8]
            On appeal, the Ninth Circuit upheld the lower court’s decision.[9] The central part of the Court’s decision revolved around how “‘sufficiently distinctive’” a character must be in order to receive copyright protection and whether the Batmobile met the requirement.[10] In analyzing the Batmobile, the court found (1) “it has ‘physical as well as conceptual qualities,’ and is thus not a mere literary character[,]”[11] (2) it is “recognizable as the same character whenever it appears” because it is almost always high-tech, has bat-like features, and has consistent features, and character traits,[12] and (3) it’s “‘especially distinctive’ and contains unique elements of expression” because of its sidekick-status, character traits, physical characteristics, and recognizable name.[13] Because the Batmobile satisfied the court’s three-part test, it ruled the Batmobile to be an “‘especially distinctive’ character entitled to copyright protection.”[14] Because the Batmobile is entitled to copyright protection, Towle’s faithful reproductions of the Batmobile constituted copyright infringement.
            The court’s decision further paves the way for copyright protection to extend to non-traditional “characters” in comic books so long as they meet the criteria set forth by the court. It’s good to keep this case in mind as you create your work and realize that copyright protection can apply to inanimate, side “characters” in addition to your main creations.

[1] See Detective Comics v. Bruns Publications, 111 F.2d 432 (2nd Cir. 1940).
[2] See Gaiman v. McFarlane, 360 F.3d 644 (7th Cir. 2004).
[3] 802 F.3d 1012.
[4] DC Comics, 802 F.3d at 1019.
[5] Id. at 1017.
[6] Id.
[7] Id.
[8] Id. at 1017-18.
[9] Id. at 1027.
[10] Id. at 1019.
[11] Id. at 1021 (citations omitted).
[12] Id. at 1021-22.
[13] Id. at 1022.
[14] Id. at 1023.

Tuesday, June 13, 2017

Batman & Bill

           Recently, I was giving a presentation on intellectual property issues in the comic book industry when I was asked about Bill Finger finally receiving credit as a co-creator of Batman. For the most part, I try to discuss issues litigated in the courts or that have been well-documented in the press. Generally speaking, Bill Finger’s involvement with co-creating Batman, while known among most fans, had stayed out of the courts and mostly out of the press. Without a verified record, I don’t like to speculate. I believe I told the questioner I had noticed the development, but I was unfamiliar with what went into it. I said there has been a greater trend toward recognizing the contributions of early creators, and I hope that was what was happening here. After recently watching the new documentary “Batman & Bill” on Hulu, I realize my answer was inaccurate.
            “Batman & Bill” begins with author Marc Tyler Nobleman’s quest to learn more about Bill Finger and his role in creating Batman. Along the way, he spearheads a campaign to officially recognize Bill Finger as a co-creator of Batman, and his efforts prompt Finger’s granddaughter to seek such recognition. After years of being denied credit, Finger’s name is finally listed alongside Bob Kane’s. However, according to the documentary, it took threats of litigation and the termination of Finger’s copyright interests in Batman to induce DC into doing so. Certainly, the fight with Siegel and Shuster’s heirs prompted them to settle, but it would have been nice to learn DC acted on its own without Finger’s heirs having to threaten litigation. 
            The documentary is fascinating and helps shed light on Finger’s contributions to the Batman legacy. While briefly discussed, it also highlights many of the legal issues I’ve discussed on this site in the past regarding copyright ownership and contractual issues. As a creator, it is important to know your rights and how to enforce them. 
If you are interested in the legacy of one of Batman’s creators, I highly recommend watching this documentary on Hulu. You can also read Marc Nobleman’s book on Bill Finger, Bill the Boy Wonder: The Secret Co-Creator of Batman (note: affiliate link), which was released before Bill Finger finally received the recognition he deserved.    

Sunday, May 28, 2017

Guest on ComixLaunch

I was once again a guest on the ComixLaunch podcast. Tyler James and I discussed many of the nuances of work-made-for-hire agreements, and generally, how best to protect yourself contractually as a creator. Give it a listen. You can find it here: http://www.comixlaunch.com/session096/.

If you want to know more about making comics or running Kickstarter campaigns, you should consider subscribing to the podcast and follow the ComixLaunch page.

Tuesday, May 23, 2017

Licensing Basics

           Licensing Expo kicks off this week in Las Vegas. If you’ve never heard of it, a simplified explanation is it’s a trade convention where brand owners can seek out companies interested in licensing their brands for use on other goods and services and vice versa. Licensing is important to brands for a number of reasons, but two of the biggest are additional revenue and increasing brand awareness.
Licensing Expo is a good excuse to discuss licensing for comic book creators. The first thing to keep in mind is that licensing rights are valuable. A typical licensing deal will involve an advance, a royalty percentage paid on sales, and a minimum guaranteed amount payable to the brand owner. The advance fee is usually deducted from the minimum guaranteed amount, and the licensee usually does not pay a royalty until it has sold enough to recover its advance fee payment.
For example, let’s say you signed a licensing deal with Company Z to make clothes featuring your property. If the deal terms are a $5,000 minimum guarantee with a $1,000 advance, a 10 percent royalty, over 3 years, then it means Company Z will pay you $1,000 when the deal is signed, and Company Z guarantees you will earn another $4,000 in royalty revenue by the end of the deal. They will not pay you until royalty revenue has exceeded $1,000 – the advance – and will pay the 10 percent royalty rate on goods sold thereafter. If at the end of the 3 year deal, they have not paid you $5,000 in royalty, then they have to pay you the difference.  
If you are thinking about licensing your brand, it is important to have a licensing agreement in place. At a minimum, you need to address the length of the deal, the royalty rate, and any other payment terms. It’s also important to address where the items can be sold by identifying both distribution channels (brick & mortar stores, online) and territory (U.S., Europe, Canada, etc.), implement an approval process to make sure the use of your brand meets your expectations and requirements, make sure the company licensing your brand agrees to abide by all relevant laws, require the company to indemnify you if an action they take harms you or your brand, and address the reasons for early termination of the agreement. Some of these terms are necessary for business reasons and some are necessary for legal reasons. If you are going to be licensing your brand, make sure you work with someone who understands these types of deals and can walk you through it.
Additionally, if you are signing a deal with a publisher you need to know what rights you are giving up. If a publisher is seeking the ability to license your property to others, be it on posters, apparel, drinkware, board games, or other goods, you need to be aware of it. You need to understand how much you will receive from any deals, and you need to make sure you have some say in the process.
Licensing can be a great way to increase exposure of your brand and to make additional money. It is important to understand how these deals work, and it is also important to make sure you retain some control over your brand if you decide to license it. 

Thursday, May 4, 2017

The Messy Origin of the Ghost Rider

            I’ve recently written a few posts on creators attempting to reclaim ownership of the characters they created. I’ve discussed Siegel and Shuster and their attempt to reclaim Superman, Joe Simon and his attempt to reclaim Captain America, and Jack Kirby’s heirs’ attempts to reclaim most of Kirby’s creations for Marvel. Today, I’ll discuss Gary Friedrich’s attempt to reclaim ownership of the Ghost Rider character he developed for Marvel.
            Ghost Rider debuted in April 1972 in Marvel Spotlight No. 5.[1] In the comic book, Gary Friedrich was credited as having conceived and written the story.[2] The character was popular, and Marvel began publishing a Ghost Rider comic book series.[3]
            The story of how the character was created, however, is not easy to discern. In its opinion, the Second Circuit Court of Appeals acknowledges the facts around the character’s creation are heavily disputed.[4] Due to the procedural nature of the case – the lower court found for Marvel on summary judgment – the Second Circuit construed the facts “in the light most favorable to Friedrich, with all reasonable inferences drawn in his favor.”[5]
            Friedrich was working as a freelance comic book writer when he decided to pitch Marvel a character he had been developing over the years, the basics of which form the core of the Ghost Rider character.[6] Marvel agreed to publish the character in exchange for Friedrich assigning his rights in the character to the company.[7] At the time this transaction took place, there was not a written agreement.[8] Friedrich did not sign a work-for-hire agreement until 1978.[9]
            The 1909 Copyright Act applied to the creation of Spotlight No. 5, and the original copyright term for the work ended in 2000.[10] In 2005 or 2006, Friedrich learned he may have renewal rights in the Ghost Rider character and filed “a Renewal Copyright Registration in Spotlight 5 and Ghost Rider in February 2007.”[11] His company sued Marvel shortly afterwards.[12]
            In 2010, Marvel filed their answer in the lawsuit claiming Ghost Rider was made as a work-for-hire, and they filed a counterclaim against Friedrich for copyright infringement.[13] On summary judgment, the lower court found Friedrich’s signing of the 1978 agreement had conveyed all of his remaining rights to Marvel.[14] The lower court awarded damages to Marvel for Friedrich's copyright infringement, and it ordered him to stop using the Ghost Rider copyright.[15]
            On appeal, the second circuit overturned the lower court’s decision. It found the 1978 agreement did not convey any renewal rights Friedrich may have had in the Ghost Rider character, and it could not retroactively declare Ghost Rider a work-made-for-hire.[16] Additionally, the facts surrounding the creation of Ghost Rider were in dispute, which prevented the appellate court from deciding the issue.[17]
            Friedrich asked the court to reconsider his claim for summary judgment that he is the creator of Ghost Rider.[18] Applying the facts most favorably to Marvel, the court found the facts to be heavily disputed, and the facts presented by Marvel support an account of Ghost Rider contradictory to Friedrich’s.[19] Marvel’s version of events would show Friedrich had an uncopyrightable idea he presented to Marvel that was subsequently and collaboratively created by the contributions of Friedrich, Stan Lee, Roy Thomas (then-publisher of Marvel), and Mike Ploog (original artist) to Ghost Rider’s origins and appearance.[20]  
            The court sent the case back to the lower court for trial.[21] Three months later, Marvel and Friedrich settled the case.[22]
            This is a messy case, but there are two important lessons to be learned from it. First, if you don’t have a signed agreement addressing copyright ownership, you are asking for trouble. If Marvel had the appropriate contracts in place when the work was created, the whole situation would have been avoided. Second, it’s important to know your rights. Friedrich could have lost this case because he was unaware of copyright renewal rights and how they might apply to him. Fortunately for him, the appellate court revived his chances of proving himself at trial, which ultimately led to a settlement. 

[1] Gary Friedrich Enters., LLC v. Marvel Characters, Inc., 716 F.3d 302, 309 (2nd Cir. 2013).
[2] Id.
[3] Id.
[4] Id. at 308.
[5] Id.
[6] Id.
[7] Id.
[8] Id.
[9] Id.
[10] Id. at 310.
[11] Id. at 311.
[12] Id.
[13] Id.
[14] Id.
[15] Id. at 311-12.
[16] Id. at 314-16.
[17] Id. at 316.
[18] Id. at 320.
[19] Id. at 321.
[20] Id.
[21] Id.
[22] Eriq Gardner, Marvel Settles Lawsuit with ‘Ghost Rider’ Creator, Sept. 9, 2013, HollywoodReporter.com,  http://www.hollywoodreporter.com/thr-esq/marvel-settles-lawsuit-ghost-rider-624609 (last visited May 2, 2017).

Tuesday, April 18, 2017

Jack Kirby and Work Made For Hire

I’ve recently written a few posts about creators attempting to reclaim ownership of characters they created for other companies. You can find my posts about Siegel & Shuster trying to reclaim Superman here, and my post on Joe Simon’s attempts to reclaim Captain America here. Today, I’m going to talk about the heirs of Jack Kirby attempting to reclaim the rights to some of the characters he created for Marvel.
            As a court hearing the dispute between Marvel and his heirs noted, Kirby was a prolific producer of art.[1] In 1951 alone, he had 308 pages of art appear in published comic books.[2] As the court pointed out, this was typical for Kirby “in the years between 1940 and 1978.”[3]
Kirby first began working for Marvel in the 1940s, but left to work for a competitor.[4] Around 1958, Kirby once again started creating comics for Marvel.[5] It was undisputed during the lawsuit that when he returned there was no signed contract between Kirby and Marvel, and Kirby worked as a freelancer.[6]
The comics Kirby worked on during the period between 1958 and 1963 were the subject of the copyright termination lawsuit filed by his heirs, and the lawsuit was based upon a 1972 agreement Kirby signed giving Marvel “all right, title, and interest (including specifically any copyrights, whether statutory and at common law) that Kirby ‘may have or control’ in any of the works Kirby created….”[7] Kirby’s heirs were relying on section 304(c) of the 1976 Copyright Act, which grants authors, and their heirs, the ability to terminate a pre-1976 transfer of a copyright after 56 years has passed from the date of registration.[8] However, the termination right does not apply to works made for hire.[9] Some of the characters and books the Kirby heirs attempted to reclaim included: The Fantastic Four, The Incredible Hulk, The Mighty Thor, Spider-Man, Iron Man, The X-Men, The Avengers, Ant-Man, Nick Fury, and The Rawhide Kid.[10]
            The comic books at issue were created by Kirby and Stan Lee using the Marvel Method.[11] The Marvel Method was developed by Lee keep the artists he used busy.[12] Instead of providing a detailed script from which the artist would then create the pictures, Lee would hold a plotting conference where he would either provide an outline or synopsis to the artist or would talk about the overarching ideas he wanted in the comic book.[13] The artist would then draw the book based upon the loose guidelines Lee had given them.[14] Then, the writer would add the captions and dialogue to the artwork submitted by the artist.[15] Lee retained the right to edit, alter, or reject anything the writers or artists contributed.[16]
The court acknowledged Kirby had a freer hand to work under the Marvel Method than many other artists and made many creative contributions to the works on his own, such as creating and drawing new characters, “influencing plotting, or pitching fresh ideas.”[17]
Ultimately, Kirby’s original contributions and his freelancer status were not enough to claim ownership over the characters he helped create. In 2013, the Second Circuit Court of Appeals in New York ruled Kirby created all of these characters for Marvel as a work made for hire.
In order to understand how Kirby’s contributions were found to be a work made for hire, we must look to the law in effect at the time of the comics being created. During the time frame when the works were created, the Copyright Act of 1909 was in effect.[18] In the case of a work made for hire, the 1909 Act stated the employer would be considered to be the author and owner of the copyrighted work.[19] However, the 1909 Act did not define the words employer or work made for hire.[20] Instead, courts had to interpret these terms, many doing so using various tests.[21]
The Southern District of New York and the Second Circuit Court of Appeals, the two courts that heard the Kirby case, apply what is known as the “instance and expense test” to determine whether an employer-employee relationship existed.[22]   Under this test, if the work was done at the instance and expense of the employer, then it is a work made for hire and the employer would own the copyrighted work. As mentioned above, if the Kirby works were works made for hire, then his heirs would not be able to utilize section 304(c) of the 1976 Act and regain control over the copyrighted works.
Applying the instance and expense test, both the Southern District of New York and Second Circuit Court of Appeals found the works to be a work made for hire.[23] Since the Second Circuit had the final say on the matter, the facts as set forth in that opinion will be cited.
In evaluating the instance prong of the instance and expense test, the court acknowledged Kirby’s freelance status, but also noted the great majority of his work came from Marvel.[24]  Kirby rarely created something and pitched it to Marvel; most of his work came after Lee gave him an assignment.[25] Additionally, Marvel had the ability to reject or edit the pages Kirby submitted and did so on occasion.[26] After evaluating the facts on the record, the court said, “Marvel’s inducement, right to supervise, exercise of that right, and creative contribution with respect to Kirby’s work during the relevant time period is more than enough to establish that the works were created at Marvel’s instance.”
As to the expense prong of the instance and expense test, the court acknowledged Marvel paid Kirby only a flat per page rate.[27] It did not pay him royalties.[28] It did not pay him for his expenses or overhead.[29] The court found the relationship between Kirby and Marvel created an expectation of payment for Kirby’s art.[30] For the most part, Marvel paid Kirby for the art he submitted to them.[31] The court found “Marvel’s payment of a flat rate and its contribution of both creative and production value, in light of the parties’ relationship as a whole, is enough to satisfy the expense requirement.”[32]
Since the court ruled Kirby’s works were created for Marvel as a work made for hire, Marvel is the owner of the copyrighted works. Therefore, Kirby’s heirs could not terminate the transfer of copyright because under the law Kirby never had an ownership right to the works he created for Marvel.
Jack Kirby was responsible for bringing to life many of Marvel’s most iconic characters. Had the works Kirby created been done after the passage of the 1976 Copyright Act, the outcome of these cases may have been different because of the 1976 Act’s stricter work made for hire standard. The failure of Kirby’s heirs to reclaim the rights to comic books and characters he helped create is another example of the importance of using contracts and understanding copyright law.

[1] Marvel Characters, Inc. v. Kirby, 726 F.3d 119, 125 (2nd Cir. 2013).
[2] Id.
[3] Id.
[4] Id. at 125.
[5] Id.
[6] Id. at 125-26.
[7] Marvel Worldwide, Inc., at 724.
[8] 17 U.S.C. § 304(c).
[9] Id.
[10] Marvel Worldwide, Inc., at 733-34.
[11] Marvel Characters, Inc., at 126.
[12] Id.
[13] Id.
[14] Id.
[15] Id.
[16] Id.
[17] Id. at 126-27.
[18] Id. at 137.
[19] Id. at 137; see also Copyright Act of 1909 §62.
[20] Id. at 137.
[21] Id.
[22] Id.
[23] Marvel Worldwide, Inc., at 750; Marvel Characters, Inc., at 143.
[24] Marvel Characters, Inc., at 141.
[25] Id.
[26] Id.
[27] Id. at 142.
[28] Id.
[29] Id.
[30] Id. at 142-43.
[31] Id. at 143.
[32] Id.