2d Circuit Affirms That Comics by Artist Jack Kirby Were Works Made for Hire

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By Anandashankar Mazumdar  

Several comic books created by superhero artist Jack Kirby in the late 1950s and early 1960s were works made for hire under the Copyright Act of 1909, the U.S. Court of Appeals for the Second Circuit ruled Aug. 8 (Marvel Characters, Inc. v. Kirby, 2d Cir., No. 11-3333-cv, 8/8/13).

Affirming summary judgment in favor of Marvel Comics, the court held that a communication related to the enforcement of a right under federal law--such as sending a termination notice pursuant to federal copyright law--cannot by itself constitute purposeful availment of the right to conduct business in a state, for the purposes of establishing personal jurisdiction.

Thus, the court affirmed the summary judgment with respect to two of Kirby's heirs, but vacated with respect to two others, over whom the court should not have exercise personal jurisdiction.

Jack Kirby Was Key Collaborator With Marvel

Jacob Kurtzberg (1917-1994) was a comic book artist and writer known under a variety of assumed names. He rose to prominence in the superhero comic book industry under the name “Jack Kirby” starting in 1940, when he began working with Timely Comics and co-created the character Captain America. Some time in the 1940s, Kirby left the Timely staff.

By 1961, Timely had become Marvel Comics. Kirby, working as a freelancer, co-created--with Marvel chief Stanley Lieber (professionally known as Stan Lee) and others--many of Marvel's most famous characters, such as the Fantastic Four, the X-Men, the Mighty Thor, Iron Man, the Avengers, and the Incredible Hulk. Throughout this time, Marvel was owned by Stan Lee's uncle Martin Goodman, who employed several members of his family.

Kirby continued to work for Marvel until 1970, and then again from 1976 to 1978. This latter tenure was governed by an employment contract executed in 1975.

In 1972, Kirby and Marvel executed an agreement that assigned any rights that Kirby might hold with regard to his work on marvel publications. According to the language of the agreement, the contract constituted an “acknowledgement” that his creation of Marvel characters and works were done as works made for hire.

Kirby died in 1994. In 2009, his four children--Susan N. Kirby, Neal L. Kirby, Barbara J. Kirby, and Lisa R. Kirby--sent 45 notices to Marvel pursuant to 17 U.S.C. §304(c) that stated that the Kirbys were terminating Kirby's assignment of rights under the Copyright Act to specific works that had originally been published between 1958 and 1963.

Marvel Worldwide Inc. and other Marvel-affiliated entities then initiated this proceeding, seeking a declaration obviating the termination notices. The Kirbys counterclaimed and also sought a declaration that the notices were effective and that they were holders of the copyright interests in the relevant works.

Judge Colleen McMahon of the U.S. District Court for the Southern District of New York ruled that the works had been works made for hire under the Copyright Act of 1909, and granted summary judgment in favor of Marvel, finding the termination notices to be void. Marvel Worldwide Inc. v. Kirby, 777 F. Supp. 2d 720, 101 U.S.P.Q.2d 1994 (S.D.N.Y. 2011) (156 PTD, 8/12/11). The Kirbys appealed.

No Jurisdiction Over California Siblings

Judge Robert D. Sack first addressed the question of whether the district court had legitimately exercised personal jurisdiction over two of the Kirbys--Lisa and Neal--who were residents of California rather than New York.

The sole act that could serve as a basis for jurisdiction over the two under the New York long-arm statute, N.Y. C.P.L.R. §302(a)(1), was the sending of the termination notices to Marvel in New York. The court concluded that this was insufficient to establish that Lisa and Neal Kirby had purposefully availed themselves of the privilege of conducting activities in New York and thus invoking the benefits and protections of New York law.

The court found that not only had Lisa and Neal Kirby not been physically present in New York, but they had not been engaged in an ongoing business relationship with Marvel, and in sending termination notices, they were not asserting rights under New York state law.

Thus, the court held that an effort to enforce a right under a federal statute, such as sending a termination notice pursuant to the Copyright Act, is not by itself sufficient to constitute purposeful availment for the purposes of establishing personal jurisdiction. The court said:  

We conclude that a communication from out-of-state, required for the exercise of rights conferred under a federal statute, cannot alone constitute a purposeful availment of “the benefits and protections of [New York's] laws,” at least where the only connection to New York is that the recipient's business headquarters has a New York address.  




The court rejected Marvel's argument that a termination notice should be sufficient to establish jurisdiction, on the grounds that it is a “self-executing, legally effective” communication. However, the court pointed out that under 17 U.S.C. §304(c)(4)(A), it is the registration of a termination notice with the Copyright Office that makes it legally effective, not its delivery to a party.

The court thus vacated the judgment with respect to Lisa and Neal Kirby. However, the court found that the absence of those two from the action did not require vacatur of the entire judgment. According to the court, there was only one real issue before the court, and resolving that issue with respect to the Kirbys that were subject to jurisdiction would be based on the same facts and circumstances that would be relevant to the California-based Kirbys.

Thus, the court determined that Lisa and Neal Kirby were not necessary parties and that the proceeding could move forward with just the other two sibling.

'Instance and Expense' Test Applied

Turning to the substantive issue in the case, the court determined that the Section 304 termination right was not applicable in this case, because the works in question were works-made-for-hire under the Copyright Act of 1909--the statute applicable to works created between 1958 and 1963--and thus were owned by Marvel from their inception.

In reaching this conclusion, the court applied the “instance and expense test,” as set forth in Estate of Burne Hogarth v. Edgar Rice Burroughs Inc., 342 F.3d 149, 68 U.S.P.Q.2d 1065 (2d Cir. 2003), and Martha Graham School and Dance Foundation Inc. v. Martha Graham Center of Contemporary Dance Inc., 380 F.3d 624, 72 U.S.P.Q.2d 1143 (2d Cir. 2004) (164 PTD, 8/25/04).

Quoting from Martha Graham, the court set forth the general standard for works made for hire:  

We have stated as a general rule 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.”  





Applying this standard to the instant facts, the court concluded that the works in question were indeed created at Marvel's instance and expense.

Taking the elements of the standard, one-by-one, the court first addressed the issue of “instance.” Acknowledging that Jack Kirby had worked as a freelancer rather than an employee of Marvel, the court nevertheless found that he had worked at Marvel's instance. There was an ongoing relationship between Marvel and Kirby and the works were produced within parameters set by Stan Lee, even though Kirby was given a degree of flexibility in executing his assignments.

Furthermore, the court noted that Stan Lee exercised the right to reject projects submitted by Kirby or to demand that they be re-done. 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.  




The court rejected the Kirbys' argument that the right to supervise relevant to the instance and expense test could exist only with reference to an express contractual right. The court found no jurisprudential support for such a requirement.

The issue of expense was less straightforward, according to the court, because under their arrangement, Marvel paid a flat per-page fee to Kirby based on pages that were accepted. If Marvel rejected a page then there was no payment. Thus, to some degree, Kirby was taking on a risk, because the cost of his supplies and time were borne by him, not by Marvel.

However, in the full context of how Kirby and Marvel had worked together, Kirby was not working completely independently and then submitting works hoping that Marvel would approve of them. There was an ongoing relationship in which Marvel set forth the parameters of the assignments and there was no risk that once completed that Marvel would not go forward with publication. The court said:  

The evidence suggests … that Marvel and Kirby had a standing engagement whereby Kirby would produce drawings designed to fit within specific Marvel universes that his previously purchased pages had helped to define. When Kirby sat down to draw, then, it was not in the hope that Marvel or some other publisher might one day be interested enough in them to buy, but with the expectation, established through their ongoing, mutually beneficial relationship, that Marvel would pay him. And the record makes clear that in the run of assignments, this expectation proved warranted.  




Furthermore, Kirby, having drawn a page for a comic book, could not shop it around to any publisher and sell it. First of all, the work was not a complete work--it would have to be subject to inking, coloring, lettering, and assembly into a complete issue. Furthermore, Marvel held the rights to the characters appearing in Kirby's pages, so they could not be sold to another publisher.

Finding that the works were indeed works for hire, the court affirmed summary judgment in favor of Marvel with respect to Barbara and Susan Kirby.

The court's opinion was joined by Judge José A. Cabranes and Judge Susan L. Carney.

Marvel was represented by R. Bruce Rich of Weil, Gotshal & Manges, New York. The Kirbys were represented by Marc Toberoff of Malibu, Calif.


Text is available at http://www.bloomberglaw.com/public/document/Marvel_Worldwide_Inc_v_Kirby_Docket_No_1103333_2d_Cir_Aug_16_2011.

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