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The U.S. Supreme Court will soon (but not today) hand down its decision on the Aereo matter, an entertainment industry-defining copyright case that is, quite frankly, a little soulless. Dealing with the nuances of public and private performance of television transmissions is indeed an important topic that will shape both airwaves and digital lines, but it’s not the kind of copyright issue — like, “Who Owns Ellen DeGeneres‘ Oscar Selfie?” — that touches upon working relationships within entertainment media, spurs the imagination and even gets covered on TMZ. Fortunately, for those in want of a high court case with more zest and huge stakes, there’s one involving superhero rights that could be just around the bend.
The case is Lisa Kirby v. Marvel Characters, concerning whether the estate of comic book legend Jack Kirby can terminate a copyright grant on such creations as Spider-Man, X-Men, The Incredible Hulk and The Mighty Thor. In August 2013, the 2nd Circuit Court of Appeals affirmed a lower court’s ruling that determined Kirby’s heirs couldn’t wrest back his share of rights to these characters because the former Marvel freelancer had contributed his materials as a “work made for hire.” As such, Marvel was considered the statutory author, and Kirby (and his heirs) never had any termination rights under the 1976 Copyright Act to begin with.
In the past couple of months, there have been growing signs that the case might indeed be picked up at the Supreme Court for review. First, Kirby’s petition for certiorari was discussed at a May conference. Then, the justices requested that Marvel respond after the studio initially decided to downplay the affair by staying mum about Kirby’s petition. And now, in advance of Marvel’s response, comes several friend-of-the-court briefs urging the Supreme Court to pick up the case.
The weight of one particularly amici curiae brief in particular shouldn’t be underestimated.
It was authored by Bruce Lehman, former director of the U.S. Patent and Trademark Office and the chief advisor to President Bill Clinton on intellectual property matters. He writes on behalf of himself, former U.S. register of copyrights Ralph Oman (who served as chief minority counsel of the Senate’s IP subcommittee during the consideration of the 1976 Copyright Act), the Artists Rights Society (whose past members included Jackson Pollock and Pablo Picasso), the International Intellectual Property Institute and others.
But before getting into what’s said in this brief (provided below), we’ll turn to another amici curiae brief (also below) that offers a better set-up to what exactly is disputed. This one comes from Mark Evanier, a comic book historian who once apprenticed for Kirby and has been an advisor to Marvel, DC Comics and Dark Horse Comics. He joins John Morrow, another Kirby historian, as well as the PEN Center USA, one of the most prestigious organizations of novelists, poets, playwrights and screenwriters.
“From its beginnings in the 1930s through the 1960s, the comic book business was very much a flyby-night industry,” opens the Evanier brief authored by attorney Steven Smyrski. “Jack Kirby’s career is emblematic of its haphazard, un-businesslike nature during this period.”
The brief goes on to describe how artists such as Kirby were required to work from their homes as freelancers, how the famous artist whose work includes Captain America and The Fantastic Four was not paid a salary and only compensated at each page accepted, how he had to purchase his own art supplies, how his taxes weren’t withheld and so forth.
Kirby was one of the seminal figures in comic book history — along with Stan Lee, among others — working in the mid-20th century under what was known as the “Marvel Method,” a loose collaborative working atmosphere where initial ideas were briefly discussed with artists responsible for taking care of the details.
Initially, the comic book houses might not have been too concerned at the prospect of losing rights. At some point, though, Marvel’s predecessor began writing on the back of its checks to freelancers, “By endorsement of this check. I, the payee, acknowledge full payment for my employment by Magazine Management Company, Inc. and for my assignment to it of any copyright, trademark and any other rights in or related to the material and including my assignment of any rights to renewal copyright.”
Then in 1978, the new Copyright Act kicked in, with its looming termination provisions, potentially allowing authors to reclaim rights over their creation in the latter period of the copyright term. The new law also recited “work made for hire,” meaning that it’s the employer rather than the employee that should be considered the author of a copyrighted work.
Soon, Marvel changed the legends on the back of its checks to say that “all payee’s work has been within the scope of that employment…and shall be considered as works made for hire.”
The Evanier brief, though, tells the story of disprivileged Kirby not working in a true employer/employee relationship, proclaiming that “Marvel is in many ways ‘the house that Jack built.’ With little or no financial security, the prolific Kirby created a wealth of material featuring novel storylines and characters, while Marvel alone has reaped the benefits of Jack Kirby’s most valuable creations.”
That said, when Kirby’s dispute was decided by the 2nd Circuit, the judges there applied what is known as the “instance and expense” test, or what happens 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.” The appeals court pointed out that what Kirby had been working on was “hardly self-directed projects” and that the flat rate he enjoyed from Marvel, was enough to conclude that his works were created at Marvel’s instance and expense.
Lehman attacks the conclusion, not only citing Kirby’s independence during the time he contributed materials to his primary client, but also because he thinks the 2nd Circuit disregarded legislative history on the meaning of the term “employer,” ignored the Supreme Court’s canon of statutory interpretation, and in particular, disregarded Supreme Court Justice Thurgood Marshall‘s 1989 decision in CCNV v. Reid. That opinion dealt with a commissioned work of sculptural art and whether it could be considered a work-made-for-hire when the commissioning party played a big role in its creation. According to Lehman’s interpretation of the CCNV opinion, “Justice Marshall rejected the Second Circuit’s ‘instance and expense’ test and endorsed the D.C. Circuit’s approach, concluding that ‘the term ‘employee’ should be understood in light of the general common law of agency.’”
The brief expresses the feeling that the 2nd Circuit disregarded CCNV because the appeals court was attempting to apply the relevant law (the 1909 Copyright Act) and its then-interpretation during the time that Kirby worked, but Lehman believes the 2nd Circuit had a poor understanding of history.
“The court of appeal’s analysis conflicts with Justice Marshal’s analysis of the work for hire doctrine under the 1909 Act,” he writes. “Jack Kirby’s works at issue fell into the category of ‘commissioned works’ which Justice Marshall concluded were ‘convey[ed],’ i.e., assigned. Furthermore, all of the evidence available to the lower courts supported that Kirby ‘convey[ed] the copyright’ to Marvel, not that Marvel owned Kirby’s work at creation. That is precisely the circumstance 17 U.S.C. § 304 is intended to address by giving authors or their statutory heirs the opportunity to terminate such copyright transfers.”
He adds that the 2nd Circuit’s “misinterpretation” would result in unfairly stripping freelance artists of their termination rights and provides an “unintended and unwarranted windfall to publishers.”
Usually, one of the most influencing factors in whether the Supreme Court agrees to hear a case is whether different appellate circuits have come to differing conclusions in interpreting the law. One potential knock on the Supreme Court taking on Lisa Kirby v. Marvel Characters is a lack of circuit split. Lehman acknowledges that “all courts of appeals which have addressed work for hire under the 1909 Act now follow the infirm ‘instance and expense’ test.” Nevertheless, he invites the Supreme Court justices to basically weigh in on a trampling of their precedent.
If the Supreme Court grants cert on Lisa Kirby v. Marvel Characters, it could be one of those real freak-out moments for Disney, which now owns Marvel and is planning to release sequels to The Avengers, which grossed more than $1.5 billion worldwide as the third-biggest box office success of all time. Even if Kirby demonstrates his entitlement to termination rights, it’s not quite clear just yet the scope of whatever he would reclaim. But at very least, there would be a lot of money on the line.
But the case, if heard, isn’t just about Marvel’s franchises. For starters, it would likely make quite an impact on the music industry, which continues to enjoy profitable legacy works from the likes of Bruce Springsteen and Madonna that don’t require much expensive promotion. Lately, the music industry has been facing a wrath of termination notices with issues like the exact nature of “work for hire” in the background. The case would also impact any business that uses freelancers or independent contractors — and since the entertainment/media industry leans quite heavily on them, it’s no surprise that some advocacy groups are beginning to take a keen interest on whether the Supreme Court takes up this case. As the briefs below show, what’s at stake might just very well be the balance of power.
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