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.