A pair of octogenarians are now in court looking to recover rights to iconic “G.I. Joe” from Hasbro. The franchise is being valued at $100 million.
Esteemed entertainment attorney Bert Fields, 86, is representing Stanley Weston, 82, who six decades ago “created the original idea of manufacturing and selling male action figures wearing and carrying miniaturized versions of the uniforms, insignias, emblems and equipment of each of the different branches of the United States armed forces.”
That would be “G.I. Joe,” aka “a real American hero.” Two G.I. Joe films starring Channing Tatum have recently come out. A third is being developed. However, a new lawsuit potentially stands in the way.
Weston has served a notice of termination to Hasbro, which acquired rights to “G.I. Joe” some years back through a predecessor company. He’s seeking to exploit a mid-1970s change in copyright law that allows authors or their heirs to grab back rights after 35 years from assignees. These termination rights have come up often in the music industry; here, it would terminate copyrights associated with a toy and derivative works.
This lawsuit does have some precedent.
In 2013, the creator of “He-Man” and the Masters of the Universe characters took on Mattel in a similar lawsuit with the prospect of termination looming. Mattel eventually won the case after a judge found the plaintiff’s creations were a work-made-for-hire. As such, the company was deemed to be the statutory author and the creator had no termination rights.
One can imagine the “G.I. Joe” lawsuit moving in the same direction as the complaint notes that Hasbro has denied Weston has any such termination right. An even stronger hint is the care taken to describe the genesis of “G.I. Joe.” Who “commissioned” the work? Did it come at the Hasbro predecessor’s “instance and expense” or Weston’s? Did the company or Weston induce the creation and have the right to “direct and supervise”? These are some of the questions that might determine whether a California federal judge agrees to find the termination notice valid.
According to the complaint, Weston pitched his idea to Donald Levine, defendant’s vp research and development, who liked it.
“Weston had no facilities to create prototypes of his Outfitted Action Figures, but defendant did; and, when asked by Weston, defendant was willing to undertake that,” says the complaint. “Weston authorized and directed defendant to make initial drawings of his Outfitted Action Figures and then, if the initial drawings were approved, to fabricate prototypes of his Outfitted Action Figures wearing and carrying their miniaturized uniforms, insignias, emblems and equipment, as he had described them and had shown in his oaktag presentation.”
The lawsuit continues with what’s probably going to be the center of the fight — the focus of factual investigation.
“Levine told Weston that, if Weston approved what defendant made, he was sure defendant would want to buy the rights from Weston,” says the complaint. “Weston offered to pay any expense incurred by defendant in fabricating the prototypes, but Levine said defendant could recoup any such expense in setting the purchase price of the rights. Weston agreed, however, that, if Weston did not sell defendant the rights, Weston would reimburse defendant for any expense it incurred in making the prototype action figures. Thus, Weston assumed the entire burden of any such expense.”
It was Hasbro’s predecessor that actually made the drawings, allegedly under Weston’s direction. In some ways, this lawsuit flips the usual script. Weston seems to be implying that whatever the big toy company created, it was a work-made-for-hire where he is the statutory author. Over the years, “G.I. Joe” has undergone alterations, but it’s argued that the main features remain “substantially similar” the the original.
The complaint notes that there was a contract signed in 1964 that granted the toy company rights. “Unfortunately, Weston has not been able to locate a copy,” says the complaint.
If Weston wins, Hasbro rights would terminate in February, 2020. Here’s the full complaint.