Who Owns Superman? - Part III

            This is the third in my series of posts on the fight over the rights to Superman. You can find posts one and two here and here.

            In the late 1960s and mid-1970s, Siegel and Shuster and Detective Comics again went to court over the ownership rights of Superman. At issue between the parties were the copyright renewal rights to Superman. Before I dive in to the cases, I need to provide a brief overview of relevant copyright law at the time.

            At the time of Superman’s creation and at the time of the litigation, U.S. copyright law was governed by the Copyright Act of 1909. Unlike today where the full term of copyright protection is granted upon completion of a work, the original term of copyright protection was for 28 years from the date of publication.[1] The term of protection could be extended for an additional 28 years if a notice of renewal was filed with the copyright office.[2] The applicability of the work for hire doctrine also was different than today (see here for my previous discussion of the work made for hire doctrine). Even though the work for hire doctrine was mentioned in the Copyright Act, there was no guidance provided.[3] Instead, courts applied various tests to determine whether an employee-employer relationship existed thereby making something a work made for hire.

            After agreeing to settle the previous case over Superman and granting the rights to DC, Siegel and Shuster used the expiration of Superman’s initial copyright term and upcoming copyright renewal term in another attempt to regain control of the character they created. They filed their case in federal court in New York in 1969 seeking a declaration that they did not transfer the copyright renewal rights to DC.[4]

            DC argued Siegel and Shuster had assigned the renewal rights to DC in the various agreements they had signed over the years and while settling the previous lawsuit.[5] DC also argued Superman was a work for hire and ownership of the character belonged to DC.[6]

            The court ruled Siegel and Shuster were prevented from arguing many of their claims because of the previous settlement agreement.[7] It also ruled the language of the settlement agreement seemed to clearly state that Siegel and Shuster had transferred all ownership rights to DC, including the renewal rights.[8] Furthermore, the court ruled Superman was a work for hire because DC had instructed Siegel and Shuster on the revision and expansion of the Superman story published in Action Comics #1.[9]   

             On appeal, the Second Circuit court of appeals found the lower court had properly ruled that Siegel and Shuster were barred from relitigating the ownership of Superman due to the state court judgment in the 1948 case, and it found the lower court was correct in finding that the judgment and other agreements between the parties had transferred the copyright renewal rights to DC.[10] However, the Second Circuit did overturn the lower courts finding that Superman was a work for hire.[11]

At the time, it appeared the fight over Superman was over. Siegel and Shuster could not regain Superman through his renewal rights. However, a change in copyright law in 1976 will give them, and their heirs, another opportunity to try and take back Superman, which we’ll begin discussing next time.

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[1] See Copyright Act of 1909, § 23, http://www.copyright.gov/history/1909act.pdf (last visisted Nov. 11, 2016).

[2] Id.

[3] Id.

[4] Siegel v. Time Warner, Inc., 496 F.Supp.2d 1111, 1119 (C.D. Cal. 2007).

[5] Siegel v. National Periodical Publications, Inc., 364 F.Supp. 1032, 1035 (S.D.N.Y. 1973).

[6] Id.

[7] Id. at 1036.

[8] Id. at 1037

[9] Id. at 1036.

[10] Siegel v. National Periodical Publicatoins, Inc., 508 F.2d 909, 912-14 (2nd Cir. 1974).

[11] Id. at 914.

Who Owns Superman? - Part II

            In this second part of my Who Owns Superman? series (you can find the first post here), I am going to briefly discuss the first lawsuit over the ownership rights to Superman.

            Before I get to the lawsuit, I need to summarize another related dispute between Siegel and Shuster and Detective Comics brewing at around the same time. As I mentioned in the previous post, Siegel and Shuster signed an agreement giving DC a right of first refusal to new stories they developed.[1] Around December 1938 and in December 1940, Siegel submitted detailed pitches for a Superboy comic.[2] In both cases, DC declined to publish it.[3] However, in 1944 while Siegel was stationed abroad during WWII, DC published a Superboy comic strip without his knowledge or consent.[4] It also obtained a copyright registration in all materials in the magazine containing the Superboy strip.[5]

            In 1947, Siegel and Shuster filed a lawsuit in New York against National Periodical Publications, the successor of DC. At issue in the case was whether the original agreement assigning Superman to DC was valid and whether DC violated Siegel’s rights by publishing Superboy comics.[6]

            In the case, Siegel and Shuster argued their previous agreements with DC should be “void for lack of mutuality and consideration.”[7] In effect, they argued the compensation DC gave them for Superman was inadequate, and it rendered the agreement void. They also raised a whole host of arguments relating to DC’s publication of Superboy without Siegel’s knowledge or consent, and its attribution of the character to him.[8]  

            The court found the original assignment of the rights to Superman to DC “was valid and supported by consideration, and that, therefore, Detective was the exclusive owner of ‘all’ the rights to Superman.”[9] The court also found that Superboy was Siegel’s creation and a distinct work for Superman, and due to DC’s failure to exercise its right of first refusal, Superboy belonged to Siegel.[10] Therefore, DC had “acted illegally.”[11]

            Both sides filed an appeal, but while it was pending, they reached an agreement on a settlement in 1948.[12] Siegel and Shuster received a payment of over $94,000.[13] DC was again declared the sole owner of the rights to Superman, and it also received all ownership rights to Superboy.[14]

            Even though the parties settled the dispute, this would not be the last time they’d battle over Superman in court. I’ll discuss the next set of cases in part 3.

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[1] Siegel v. Time Warner, Inc., 496 F.Supp.2d 1111, 1114 (C.D. Cal. 2007).

[2] Id. at 1114-15.

[3] Id.

[4] Id. at 1115.

[5] Id.

[6] Id.

[7] Id.

[8] Id. at 1115-16.

[9] Id. at 1116.

[10] Id.

[11] Id.

[12] Id. at 1118.

[13] Id.

[14] Id.

Who owns Superman? - Part I

            I’m going try and discuss a delicate topic in the comic book community. Namely, I want to talk about the ownership of Superman. Over the years, my thoughts on this topic have shifted back and forth, between being outraged at Siegel and Shuster’s lack of compensation for their creation to thinking DC really didn’t do much wrong. To this day, I’m still not sure exactly where I stand. About a decade ago, I thought it was appalling how DC treated Superman’s creators and the sad financial state they were reduced to in their later years. I was even inspired to write an article calling for changes to copyright law to prevent an injustice like this from happening again. Fortunately, the paper was never published. It was written well, but I later realized I had a fundamental, factual error in it that would’ve been a major embarrassment. (This topic on changing copyright law might be revisited at a later date.) These days, I think I fall somewhere in-between feeling pity for Siegel and Shuster and anger at DC. Both sides have reasons why they are in the right and why they are in the wrong, and at this point, there is not really an outcome fair to either side. But, let’s start at the beginning before we come to our final analysis.

            Most people who’ve been around comics long enough know the story. Jerry Siegel came up with the basic idea of the Superman story in 1933, and he and Joseph Shuster created several weeks’ worth of material for a possible comic strip.[1] They shopped the story for a number of years without finding a publisher.[2] Eventually, they started working on some comic strips for Detective Comics, and, in 1938 it decided to finally publish Siegel and Shuster’s Superman story in its new book, Action Comics.[3] The two had already signed employment agreements stating DC owned all rights to the creations they made during their term of employment. On March 1, 1938, DC also had them execute an agreement giving all rights in the Superman strips to DC.[4] For the assignment of their rights to Superman, Siegel and Shuster received $130 as compensation from DC.[5]

            In September 1938, they again executed another employment agreement with DC.[6] The agreement was to run for five years, and they were to be paid $10 per page for their work on Superman, in addition to being paid for their work on other comic strips at a lower rate.[7] It also reiterated that DC was the owner of all rights in the Superman strips, and it gave DC a right of first refusal to future creations from Siegel and Shuster.[8] By 1947, Siegel and Shuster’s total compensation for the Superman strip was greater than $400,000.[9]        

            In the next post, I’ll discuss the first lawsuit over the rights to Superman.

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[1] Siegel v. Time Warner, Inc., 496 F.Supp.2d 1111, 1113 (C.D. Cal. 2007).

[2] Id.

[3] Id. at 1114.

[4] Id.

[5] Id.

[6] Id.

[7] Id.

[8] Id.

[9] Siegel v. National Periodical Publications, Inc., 508 F.2d 909, 911 (2nd Cir. 1974).

Copyrights & Costumes

As we enter September, most people’s attention starts to shift to fall foliage, football, and pumpkin spice lattes. For the legal profession, our attention turns to the first Monday in October when a new U.S. Supreme Court session begins. This year, one of the cases I will be following closely is the copyright case pitting two manufacturers of cheerleading outfits against each other. The court will be addressing the question of “What is the appropriate test to determine when a feature of a useful article is protectable under §101 of the Copyright Act?”[1]

In 2015, the Sixth Circuit Court of Appeals decided the case of Varsity Brands, Inc. v. Star Athletica, LLC. Varsity Brands created cheerleading uniforms bearing chevrons, stripes, zigzags, and color blocks on them, and it obtained copyright registrations for some of these designs.[2]  It noticed its competitor, Star Athletica, selling cheerleading uniforms with similar designs and sued.[3] The district court found “that a cheerleading uniform is not a cheerleading uniform without stripes, chevrons, zigzags, and colorblocks, and therefore Varsity’s copyrights are invalid.”[4] The Sixth Circuit overruled the district court and found the graphic designs on Varsity Brands’ cheerleading uniforms are copyrightable subject matter.[5] The court looked at a number of different tests used by other courts to determine whether a pictorial, graphic, or sculptural work on a useful article can stand independently of the useful article and is therefore entitled to copyright protection.[6] Eventually, it adopted and applied a hybrid approach of its own design.[7] Star Athletica appealed to the Supreme Court seeking to have the court rule on two questions, but the court agreed to only address the question mentioned above.

Why does this case matter? The Supreme Court’s ruling could have a profound impact on the copyright protection afforded to clothes, costumes, and any other items that combine usefulness and art or design. I used to work as an attorney for an online retailer of Halloween costumes, and I still follow industry trends. A ruling by the Supreme Court that extends the copyright protections afforded to costume designs could have a major impact on the industry. Typically, there are officially licensed costumes, and there are more generic costumes that evoke a licensed property. The generic ones have been able to survive and thrive because copyright protection has generally been limited to designs that can be separated and stand apart from the clothing. Usually, copyright protection has not been interpreted to include color selection, blocking, lines, etc., or other design additions necessary to the design of the costume or unable to stand on its own from the costume.  However, if the ruling in Varsity Brands is upheld, the costume industry could see an increase in demands for licenses from intellectual property holders and lawsuits, and the generic costume industry could be in trouble.

To a lesser extent, the cosplay industry could be impacted in a similar manner. If you are creating a costume for your own personal use, you are unlikely to find yourself embroiled in a copyright lawsuit. However, if you create a detailed replica of a copyrighted character/costume, and start to profit from it by selling photos of yourself in the costume or selling your replica costumes, then you will likely be noticed and could face threats of a lawsuit.

One final thing about this case that amuses me: oral arguments are scheduled for Halloween. How fitting.   

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[1] Petition for Writ of Certoriari, Star Athletica, L.L.C. v. Varsity Brands, Inc., (No. 15-866).

[2] Varsity Brands, Inc. v. Star Athletica, LLC, 799 F.3d 468, 471 (6th Circuit 2015).

[3] Id. at 474.

[4] Id. at 471.

[5] Id. at 492.

[6] Id. at 484-87.

[7] Id. at 487. 

Tattoos and Copyrights

This week’s post discusses a growing lawsuit trend in the entertainment industry. Namely, tattoo artists suing content producers when the work they tattooed upon a famous individual is reproduced in a movie, video game, etc. The trend began a few years ago when the artist responsible for tattooing Mike Tyson’s face sued Warner Bros. before the release of The Hangover Part II. The basis for the artist’s claim was the movie recreating Tyson’s tattoo on Ed Helms' character’s face. The case ended up settling out of court, and there was no ruling on the extent of copyright protection for tattoos being reproduced in other forms of media.

Recently, a company sued the maker of the NBA 2K video games for copyright infringement for recreating NBA players’ tattoos in the game. Due to a favorable initial ruling for the video game maker reducing its possible liability, the game maker is asserting some strong claims against lawsuits of this type, including that the use should be considered a fair use and is a de minimus use, meaning it's too trivial to merit consideration. It would be helpful to have judicial decision directly addressing the issue of recreated images of tattooed individuals.

Personally, I find this trend, and the mere fact that these lawsuits exist, annoying. While I’m inclined to acknowledge some tattoos can be creative enough to merit copyright protection, I cannot comprehend copyright law being used to sue third parties because they recreated a true-life representation of the tattoo artist’s client in some form of media. With the prevalence of tattoos on many people, the risk to content producers can be very high unless they take precautions to protect against such lawsuits. The primary methods to avoid being sued are to seek a license from the tattoo artist, have the tattooed person seek permission and/or indemnify you, or do not reproduce tattoos at all.  

Hopefully, the courts or congress (yeah, right) will address this issue and clearly define the copyright rights of tattoo artists and their patrons as it relates to portrayals in media. It seems to me if a patron obtains a tattoo he should be allowed to be photographed or otherwise reproduced without having to receive the tattoo artist’s permission. It should be an assumed part of the deal—an implied license for the patron to give consent to others who are reproducing his image. Copyright law should not be used to prevent someone from being truthfully depicted in various forms of media just because he is tattooed.     

As of right now, there have not been any lawsuits in the comic book world, but if you are in the habit of drawing famous tattooed people, or otherwise drawing tattoos on individuals in your work, you should proceed carefully.

For more on the NBA 2K lawsuit, read The Hollywood Reporter story here.

Side note: If you’re famous or on a career path where your image will be reproduced and you want to get a tattoo, you may want to have the artist sign a release giving you complete control over the design and reproduction rights. Your production partners will thank you. 

Protecting Your Work Online Using the DMCA

Protecting Your Work Online Using the DMCA

            I have recently been asked a number of times about what to do if someone is distributing your work online without your authorization. It is a great question, and there are a few options.

Obviously, you can reach out to the person distributing your art online and ask them to take it down. Frequently, this will be enough, and it is an approach that you can take in just about every instance where someone has posted your work online. The potential downside to this option is in how the person reacts. Sometimes, he will ignore you, and you will have to resort to the options below. Sometimes, he will engage you in a conversation about what he has done and what you are doing, and this can be an opportunity to educate him about your work and your rights. Sometimes, however, he will be defensive and argue with you, which can be stressful and an unproductive drain on your time. Even with the downsides, this is still a good option in many cases.

Another option, and the harshest, is to sue him. If someone is using or posting your work online without your permission, it is likely to be a copyright infringement. However, this can take a long time to wind through the courts, cost a lot of money up front, and, depending on the circumstances, it can make you look like a bully.

My favorite option to remove infringing content from the internet is to send a Digital Millennium Copyright Act takedown notice. Depending on where the work is posted, sending a DMCA takedown notice is the easiest way to enforce your rights. The DMCA was enacted in the late 1990s, and it includes a provision that limits online service providers’ liabilities for copyright infringement if they register with the Copyright Office a designated copyright agent to receive notice of infringement, post the information on their website for the public to access, and if they promptly respond to proper takedown requests sent to this copyright agent.[1] Online service providers are not required to take down material that is alleged to be infringing. However, if they receive a takedown notice and do not act, then they have been placed on notice of infringing materials, and they may face liability as a secondary infringer.[2] Due to the way this law is structured, online service providers almost always take down allegedly infringing material as soon as they are notified. Personally, I find this method to be one of the easiest ways to quickly remove infringing material from the internet, particularly if one website has a lot of infringing materials on it.

For example, if you are an online marketplace like Etsy where people are uploading and selling homemade items, you would not want to be held liable for copyright infringement for any infringing items being sold on your website by your users. So, you would register a copyright agent with the Copyright Office, usually someone in your legal department, and you would list the copyright agent’s email address in an easily accessible area. If your copyright agent receives a proper takedown notice from someone who believes their copyrighted work is being infringed, and your website acts quickly to remove or disable the allegedly infringing content, then your website would not be found liable for secondary copyright infringement.  
In order to send a DMCA takedown notice, you must send the following information in writing to the designated agent of the service provider:

(i)                 “A physical or electronic signature of a person authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.

(ii)               Identification of the copyrighted work claimed to have been infringed, or, if multiple copyrighted works at a single online site are covered by a single notification, a representative list of such works at that site.

(iii)             Identification of the material that is claimed to be infringing or to be the subject of infringing activity and that is to be removed or access to which is to be disabled, and information reasonably sufficient to permit the service provider to locate the material.

(iv)             Information reasonably sufficient to permit the service provider to contact the complaining party, such as an address, telephone number, and, if available, an electronic mail address at which the complaining party may be contacted.

(v)               A statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law.

(vi)             A statement that the information in the notification is accurate, and under penalty of perjury, that the complaining party is authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.”[3]

 Once you have sent a takedown notice containing all of the information above to the designated agent, a site will typically remove or disable the allegedly infringing material in a few days. The alleged infringer does have the ability to challenge your takedown and have the material reposted, but if it is clearly an infringement, they won’t.

The DMCA takedown notice is an effective and quick way to protect against the unauthorized distribution of your work online. Once you know how to use it, it will quickly become your favorite method of removing infringing material from websites.

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[1] Online Service Providers, U.S. Copyright Office, http://www.copyright.gov/onlinesp/ (last visited July 5, 2016).

[2] Id.

[3] 17 U.S.C. §512(c)(3)(A)

Wizard World Chicago

I'm excited to announce that I will be presenting my Comics Startup 101 panel at Wizard World Chicago on Saturday, August 20 at 4:00. If you will be attending the show, I hope you'll stop by.

Joining me on the panel will be Wesley Sun, writer and communications director for Sun Bros. Studios,  Ali Cantarella, creator of The Hasty Pastry and founder of The Wet Stain, and Dirk Manning, the creator of Tales of Mr. Rhee and Nightmare World and author of Write or Wrong: A Writer's Guide to Creating Comics. This great trio of creators has a diversity of experiences, and they will share their knowledge and insights on the business and legal issues of making comics with those in attendance.