by Cynthia Turner and Dena Matthews
The ASAI has joined an amicus brief filed in support of famous comic book artist Jack Kirby. Kirby’s heirs have appealed to the Supreme Court to intervene and correct a lower court decision to deny Kirby his termination rights through the spreading use of a controversial test that was used to retroactively re-characterize his freelance relationship with Marvel Comics as a work-for-hire employee. The test redefines nearly any business transaction between an independent creator and a commissioning party as work-for-hire and divests all rights from the creator. The test is being applied regardless of the facts and law.
The Kirby Case is of national importance with constitutional dimensions. Powerful briefs have been filed with the Supreme Court warning about the fundamental destabilization of copyright law. The first reversions from the 1976 Copyright Act began in 2013, bringing the termination rights of many ASAI members to the forefront. As many famous works approach their statutory renewal periods, artists, writers and musicians and their heirs will find that their statutory termination rights to recapture their copyrights are not theirs to exercise. Congress’s twice expressed intent to allow creators to recapture their copyrights and share in their proven value will have been nullified.
The amici brief was filed by Bruce Lehman, Former Commissioner of U.S. Patents and Trademarks, Ralph Oman, Former Register of U.S. Copyrights, and the Artist Rights Society. An amicus brief is a “friend of the court” brief, filed by those who are not a party to the case, but have a strong mutual interest in the question of law and wish to advise the Court. ASAI, along with the other member organizations of the American Society of Illustrators Partnership (ASIP), and 221 notable cartoonists, several of whom have won the Pulitzer Prize, joined the brief.
About Jack Kirby
The New York Times, in a Sunday op-ed piece written more than a decade after his death, said of Kirby:Jack Kirby (née Jacob Kurtzberg, 1917) was a famous American comic book artist and is widely regarded to be one of the major innovators and most influential creators in the comic book medium. His characters and stories include among others: Captain America, The Fantastic Four, the original X-Men, the original Amazing Spider-Man, The Incredible Hulk, The Mighty Thor, Iron Man, Silver Surfer, Doctor Doom and Magneto.
“He created a new grammar of storytelling and a cinematic style of motion. Once-wooden characters cascaded from one frame to another—or even from page to page—threatening to fall right out of the book into the reader’s lap. The force of punches thrown was visibly and explosively evident. Even at rest, a Kirby character pulsed with tension and energy in a way that makes movie versions of the same characters seem static by comparison.”1
Comic book historians Mark Evanier and John Morrow write:
“Jack Kirby was unquestionably the dynamic creative force behind what are considered to this day to be Marvel’s most iconic superheroes. His work was instrumental in Marvel’s resurgence in the early 1960s … These works all contain the markings of his fertile creative mind and fascination with science, science fiction, astronomy, mythology and religion. Kirby created the iconic ‘look’ of these characters, which have largely remained unchanged to this day, and would often work on his own to both plot and draw the original storylines of these comics.”2
Jack Kirby died in 1994. His copyrights passed to his four children. In September 2009 the Kirby heirs exercised their legal statutory rights to recapture the assigned copyright interests of their father, and the Estate served 45 copyright-termination notices to Marvel, Walt Disney Pictures, 20th Century Fox, Universal Pictures, Paramount Pictures and Sony Pictures. Disney bought Marvel Comics that same year for $4 billion.
Termination Rights: A Benefit Congress Expressly Intended For Authors
Congress realized that many important writers, musicians and artists had signed away their copyrights for little or no money early in their careers. To protect these authors from permanent loss of an inequitable deal they entered into when they had little negotiating skill or leverage, Congress twice gave authors and their heirs an opportunity to share in the proven value of their works.
An artist can recapture a transferred copyright after one of two set periods of time. If an artist sold the copyright before 1978 they, or their heirs, can reclaim it after 56 years.3 If the artist sold the copyright during or after 1978, they, or their heirs, can reclaim it after 35 years.4 Jerry Siegel and Joe Schuster (creators of Superman for DC Comics), and the estates of Truman Capote, Norman Rockwell, and Lorenz Hart (of Broadway’s Rodgers and Hart) are examples of authors and estates that have exercised these valuable rights.
However, if a commissioned work is created under the statutory terms of work-for-hire as defined by the ruling copyright law during the time of creation, the copyright belongs to the commissioning party and that party is considered the “author.” The termination of copyright is complete. There is no recapture right.
Marvel and Disney Sue the Kirbys
In January 2010 Marvel and Disney struck back by suing the four Kirby descendants to invalidate their copyright termination notices. Marvel claimed the Kirby Estate was trying to rewrite history of Jack Kirby’s work-for-hire relationship with Marvel. However, Jack Kirby was not a Marvel employee.
Kirby was an independent contractor who worked in his own basement, on his own time and conditions, purchasing his own supplies, carrying his own expenses, under his own supervision and working at his own financial risk. He pitched his own ideas to Marvel and also pitched and sold his ideas to other publishers.
Furthermore, Kirby conveyed the copyrights to Marvel. This is precisely the circumstance that copyright termination is intended to address.
Yet, the Kirby Estate lost in lower court and lost on appeal.
Federal Judges Fundamentally Destabilizing Copyright Law
When reaching its decision, the Second Circuit ignored the conventional employer/employee relationship defined under the common law of agency, ignored Kirby’s authorial rights under the 1909 Act and the 1976 Act, ignored the teachings of the Supreme Court precedent of CCNV5 whereby the Court defined the seminal conditions necessary for work-for-hire regarding freelance authors, and nullified Congress’s clear objectives in enacting copyright termination provisions for authors.
Instead, the court relied on an erroneous, simplistic and controversial judicial test. Called the “instance and expense” test, it redefines nearly any business transaction between an independent creator and a commissioning party as work-for-hire. The court then ruled against the Kirbys in summary judgment, meaning the court denied any trying of the facts whereby the Kirbys could have proved the truth.
The Court of Appeals affirmed the lower court summary judgment, compounding the miscarriage of justice. The Kirbys now seek relief from the Supreme Court.
This kind of incoherent and inconsistent copyright ruling is not an aberration. Errant judicial extrapolations conceived years or decades later are constructed to infer an assumption between parties that contradicts their actual understanding at the time.
Last Friday, four amicus briefs were filed in support of the Kirby petition for certiorari, urging the Supreme Court to pick up the case. The California Society of Entertainment Lawyers note in their amicus brief that the ruling against Kirby’s copyrights is symptomatic of unprincipled modern copyright jurisprudence:
Despite the clear legal doctrines laid out by Congress and this [Supreme] Court pertaining to the adjudication of copyright claims, district and appellate courts frequently subvert those doctrines with contrary and outcome-oriented rulings, destabilizing the copyright ecosystem in the process. . . the court brushed aside contrary facts (including contractual language indicating that Marvel simply purchased the material in question and received copyright assignments) by acting as fact-finder instead of allowing the issue to be considered by a jury.”
Noting that this results-driven approach has become endemic in the court of appeals, they warn that the fundamental destabilization of copyright law has resulted in chilling and circumventing authors’ rights.
Retroactively Converts Authors’ Copyrights into Corporate Property
The Court of Appeals acknowledged that the Second Circuit’s “test” creates an “almost irrebuttable presumption” to retroactively re-characterize copyrightable work created by independent contractors as works made for hire. It acknowledged the fundamental gaps in the Second Circuit case law and it ignored the contrary facts and law proving Kirby’s independent contractor relationship with Marvel, and his copyright assignments to them. Yet, remarkably, the Court of Appeals upheld the decision to admittedly incorrect law, effectively gutting Kirby’s termination rights provided by the curative 1976 Copyright Act.
All of the amici call upon the Supreme Court to intervene to correct the federal circuits and uphold the statutory limitations on work-for-hire. The Screen Actors Guild, American Federation of Television and Radio Artists (AFTRA), Directors Guild of America, Inc., and Writers Guild of America, West, Inc. state in their brief:
As many famous works approach their statutory renewal periods, the creators and their heirs will find that the statutory renewal or termination rights are not theirs to exercise. Even if they can afford the cost of litigation, they may find it impossible to overcome the barriers erected by the lower courts . . .
By retroactively deeming commissioned works as ones “made for hire,” the Second Circuit has given the purchaser all of the copyright benefits of the employment relationship, without any of the associated burdens or obligations. The ‘expense’ prong of the test assumes that the acquiring party has borne the risk in a work’s ultimate success by paying value to acquire it and then to market and distribute it, thereby completely disregarding the risk borne by the freelance creator attendant a work’s creation in a relationship such as the one between Jack Kirby and Marvel.”
Judicial Economy has Been Prioritized over Constitutional Mandates
In fact, echoing many creators’ fears of the imposition of Copyright Small Claims Court scheme, The California Society of Entertainment Lawyers further state:
Copyright litigation often hinges upon close questions of fact, making summary judgment in its context traditionally frowned upon. Yet the vast majority of copyright claims filed against major studios or publishers are now dismissed in short order on summary judgment or earlier, depriving litigants of due process and their right to trial by jury. In short, judicial economy has been prioritized over constitutional mandates, and the route taken to accomplish this has resulted in a breakdown of coherent law.”
Those constitutional mandates are just what Bruce Lehman and Ralph Oman argue in the amicus brief signed by ASAI.
A Case of National Importance with Constitutional Dimensions
Bruce Lehman and Ralph Oman are uniquely positioned to advise the Court on the subversion of law that has denied Kirby his constitutionally mandated rights. Lehman and Oman write eloquently in support of the conditions faced by all freelance creators, and write authoritatively about the well-considered intent and objective of Congress in defining works-for-hire and the author’s right to terminate previous transfers of copyright ownership. They advise the Court that this case raises issues of national importance and implicates wide-ranging and recurring policy concerns of constitutional dimension.
Bruce Lehman was the Director of the U.S. Patent and Trademark Office from 1993 through 1998, and chief advisor to the President for intellectual property matters, including copyright. In that capacity he supervised and coordinated the provisions permitting authors to recapture the extended term copyrights they had transferred to others during the first 75 years of the term of copyright in works created by them, culminating in the passage of the Copyright Term Extension Act of 1998. In the decade prior Lehman served as Counsel to the Committee on the Judiciary of the U.S. House of Representatives and as principal legal counsel to the Committee on copyright matters. In that capacity, he advised the Committee during the process of consideration and final passage of the 1976 Copyright Act which extended the 56-year term of protection for works created under the 1909 Act for an additional 19 years, giving the authors of those works the right to recapture for the extended term their ownership of copyrights previously transferred to others.
Ralph Oman served as U.S. Register of Copyrights from 1985 to 1993. As Register, he filed with the Acting Solicitor General an amicus curiae brief with the Supreme Court in a case that dealt with the application of the work-for-hire doctrine, Community for Creative Non-Violence v. Reid. The Supreme Court’s opinion agreed with the amicus brief’s conclusions. Oman further served as Chief Counsel of the Subcommittee on Patents, Trademarks, and Copyrights of the U.S. Senate Committee on the Judiciary and as chief minority counsel of the Senate Subcommittee on Patents, Trademarks, and Copyrights during the final two years of Senate consideration of the landmark 1976 Copyright Act.
In their amicus brief Lehman and Oman note:
All of the amici represent self-employed, working freelance artists whose livelihood depends on the ability to retain and exercise effective control of their copyrights in an environment in which the clients served are more often than not publishers or institutional and corporate purchasers who regularly use their greater market power to provide the minimum compensation possible in return for transfer of the greatest possible copyright control in works commissioned by them. The ability to make effective use of the termination rights at issue in this case is essential if these artists are to retain meaningful benefit from the use of their copyrights, as Congress intended, in the face of the disproportionately greater negotiating power of their clients.”
Lehman and Oman note that Marvel’s relationship with Kirby is symptomatic of the predatory practices of publishers and the very imbalance Congress sought to remedy by the 1976 Act’s termination provisions. Indeed, as the success of his works grew, Kirby was subjected to several attempts at retroactive confiscation of his rights, even before the more recent miscarriage of justice in the courts.
Unethical and Illegal Confiscation
As was the custom of the time, publishers rarely had contracts with their freelance independent artists. It was understood that the copyrights to the work were purchased and assigned. This relationship governed the work at issue in this case, which was created 1958-1963. Later, pressure was brought to bear on Kirby to divest him of his rights as a condition of payment and continuing work.
A written “agreement” between Kirby and Marvel first appeared decades later in 1970, as a legend inserted by Marvel’s attorneys on the back of its checks. This tactic forced Kirby to simultaneously surrender “assignment of any rights to renewal copyright” when signing his name in order to be paid.
Later still, in 1978, when the 1976 Copyright Act went into effect, Marvel changed the legends on the back of the check to a “work-for-hire” acknowledgement. Again, Kirby and other Marvel artists were required to sign the back of the check in order to be paid.
Later again, in 1980, decades after the success of the key Kirby characters, Marvel’s new corporate parents attempted to again “clean up” Marvel’s claims to what had become comic book franchises. This marked a further attempt at a confiscation of rights, this time as a condition of the mere return of physical original artwork which it never owned. Sales of original comic art in the collector’s market began to fetch considerable sums and artists began demanding return of their original art from publishers. Publishers had to return the originals; they had only acquired reproduction rights. However, Marvel’s corporate parents conditioned the return of the artists’ own property upon signing releases now retroactively re-characterizing their artwork as work-for-hire. Kirby’s “release” was far more extensive than those required of the other artists, running more than four pages long. But, just as the other artists, Kirby was compelled to seek the return of his originals as a means of providing his family with some form of security.
As Lehman and Oman note,
Like most freelance commercial artists Jack Kirby had little choice if he wished to continue to sell his work to his biggest client. The working artists among the amici are intimately familiar with this kind of pressure. They face it each time they attempt to sell a work to a publisher with vastly greater market power than they possess.”
The Rule of Law
Lehman and Oman painstakingly set forth the governing law at each step in Kirby’s career and the ongoing term of his copyrights, making a powerful case to the Court:
Climate of Hostility Towards True Authors
Lehman and Oman trace the development of the new 1976 Copyright Act, including compromises providing authors with new termination rights for copyrights they had conveyed and allowing publishers to now commission works-for-hire under limited circumstances.
They note that Irwin Karp, leading advocate for writers at the time, argued “publishers would use their superior bargaining position to force authors to sign work-for-hire agreements far beyond those limited circumstances if they wanted to get their work published.” Lehman and Oman write:
The amici represented in this brief can attest through personal experience that Mr. Karp’s concerns, articulated 51 years ago, remain as valid today as then. Not only because many of them created material before 1978, but because they cannot rely upon the legislative compromises that their representatives reached in Congress.”
Lehman and Oman trace the development of the ‘instance and expense’ test in 1966, and its acknowledged deviation from statutory law. Citing numerous cases, they note, “all courts of appeals which have addressed work for hire under the 1909 Act now follow the infirm ‘instance and expense’ test.” They emphasize that not one has even attempted to reconcile its holding with the statutory construction of the law and the 1989 Supreme Court ruling affirming that necessity:
The circuits’ total disregard for this Court’s holding and reasoning in CCNV is matched only by their lack of concern.”
They cite leading commenters, including leading copyright authority Nimmer, that the use of the “instance and expense” test to transform freelance material into work for hire is “wrong both on principle and under the rule of the early cases” and “untenable.” Lehman and Oman advise that the Kirby case presents compelling grounds for the Supreme Court to intervene:
Amici strongly urge this Court to review this important case. The ‘instance and expense’ test for retroactively characterizing independent work as employment ‘for hire’ establishes a game of ‘gotcha’ designed to block freelance artists from exercising their rights under the Copyright Act. If the court of appeals unsupportable decision is allowed to stand, Congress’s twice expressed intent to give authors and their families the benefit of its copyright term extensions will be nullified.”
The California Society of Entertainment Lawyers concur in their advice to the Supreme Court noting:
The current climate of hostility towards true authors and copyright plaintiffs can only be tempered by bringing the legal standards that govern the litigation of their claims back towards a sensible equilibrium.”
Marc Toberoff, Counsel of Record for the Kirby heirs, writes in the Petition for Writ of Certiorari to the U.S. Supreme Court:
Kirby, the creative genius who redefined an industry from a small drafting board in his basement, without financial security or any participation in the success of his creations, epitomizes the very author/publisher imbalance Congress sought to remedy in enacting the termination provisions.”
The first reversions from the 1976 Copyright Act began in 2013, bringing the termination rights of many ASAI members to the forefront. We sincerely hope that the Supreme Court will take up this case to uphold the rule of law and authors’ termination rights, and again “affirm that courts are not at liberty to jettison Congress’s judgment”6 on copyright.
The ASAI wishes to express deep appreciation to Bruce Lehman, Ralph Oman, and to the Artists Rights Society for its continued alliance and support of ASIP and illustrators’ rights.
Cynthia Turner is Co-Chair, American Society of Illustrators Partnership (ASIP)
Dena Matthews serves on the ASIP Board of Directors as the AMI Representative
Amicus Curiae Briefs