In what might be yet another sign that Marvel should begin to fret that the U.S. Supreme Court could review a massive superhero rights dispute, the respected attorney Tom Goldstein is now co-representing Jack Kirby‘s family members. Goldstein is perhaps most famous for running the invaluable SCOTUSblog, which on July 21 highlighted Kirby v. Marvel Characters as its “Petition of the Day.”
The dispute started when the family of comic book legend Kirby sent termination notices to Marvel and its licensees Sony, Fox and Universal over such superhero characters as Spider-Man, X-Men, Captain America, Iron Man, Incredible Hulk and others. The bid fell short when the 2nd Circuit Court of Appeals affirmed a lower court’s ruling that 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.
The high court has been asked to review the 2nd Circuit opinion, and in recent months there’s been signs that it could indeed be taken up: Justice Ruth Bader Ginsburg told Marvel to respond to a cert petition after it initially declined to do so. Then Kirby’s side got amicus support from the former director of the U.S. Patent and Trademark Office, the former U.S. register of copyrights and various Hollywood labor guilds.
Two weeks ago, Marvel urged the Supreme Court to decline review, arguing that the case was a “poor and atypical vehicle” to examine the application of the work-for-hire doctrine.
On Tuesday, the Kirby estate responded with a reply brief co-authored by Goldstein and long-term Kirby attorney Marc Toberoff that highlights why this case might not only bring billion dollar entertainment properties under the microscope, but go much further. That’s because the attorneys are asking the court to address the 2nd Circuit’s use of the “instance and expense” test, defined by the court as 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.”
One of the reasons why Marvel thought the Kirby dispute shouldn’t be reviewed was that there was no appellate circuit split. That is usually one of the predominate factors in why justices agree to take up an appeal, but it’s not a hard-and-fast rule.
According to the latest Kirby reply brief, Marvel’s “opposition reduces to the argument that because the ‘instance and expense’ test for work-for-hire is entrenched in circuit precedent, it should evade review, no matter how capricious and indefensible it may be. Respondents thus mistake the problem for the solution in an area of the law that badly needs this Court’s authoritative voice.”
The Supreme Court is told that the lower appellate courts are broadly interpreting “employer” under the 1909 Copyright Act — which reigned when Kirby was doing most of his work in the 1950s and 1960s — to refer to commissioned works, thus “radically alter[ing] the statute,” according to the Kirby camp.
The petitioners believe that Supreme Court Justice Thurgood Marshall‘s 1989 decision in CCNV v. Reid. provided a much “narrower construction” of the definition of employer.
“Respondents attempt to dismiss the petition as ‘factbound,'” the reply brief continues. “But petitioners challenge the ‘instance and expense’ test itself — not merely its application to this case. The distinction matters because nearly every publication authored before 1978 qualifies as a work-for-hire under the Second Circuit’s test, except those completed prior to the author-publisher relationship. The petition thus presents questions that implicate the ownership and value of an immense number of copyrighted works.”
As to Kirby himself, who worked alongside Stan Lee and others in what has been described as a loose collaborative relationship, Marvel is said to have attempted to “stack the deck” with references in its own brief to financial commitments and legal obligations. “But the record showed that Marvel studiously avoided any legal or financial commitments to Kirby,” says the brief. “Marvel had no ‘right’ to direct Kirby; all it had was purchasing power. Kirby also shouldered all expenses of creation without any guarantee his work would sell.”
The parties dispute the characterization of evidence about Kirby’s relationship with the comic book studio. And the implications. Because work-for-hire is an exception to the powers of authors to terminate copyright grants, it’s argued that the lower circuit’s interpretation of law “guts” the termination rights on older work.
“Many of our most celebrated literary and musical works were created before 1978 and signed away to publishers in un-remunerative transactions,” concludes the brief. “Termination rights were ‘needed because of the unequal bargaining position of authors.’ It would be hard to find a better example of this than the prolific Jack Kirby, who worked in his basement with no contract, no financial security and no employment benefits, but without whom Marvel might not even be in business today.”
Below is the full brief.