With potentially billions of dollars at stake, Marvel told the U.S. Supreme Court on Monday not to review 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 andThe Mighty Thor.
The dispute, says Marvel in papers filed at the high court Monday, “implicates no circuit split, no judicial taking, no due process violation, and no grave matter of separation of powers. It does not remotely merit this Court’s review.”
Although thousands of cert petitions are considered by the Supreme Court justices every year, this one from Kirby’s heirs has got the minds of the entertainment industry working overdrive thanks to its absolutely enormous implications and some possible interest from Justice Ruth Bader Ginsburg.
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After the Supreme Court ordered Marvel to respond, Kirby’s heirs picked up huge support from the former director of the U.S. Patent and Trademark Office and the former U.S. register of copyrights, plusHollywood guilds like SAG-AFTRA, the DGA and the WGA. The amici make the argument that the 2nd Circuit Court of Appeals wrongly used what’s known as the “instance and expense” test to come to the conclusion that Kirby had merely created “work made for hire” as a comic book freelancer in the 1950s and 1960s. They attack the appellate court’s conclusion that Marvel and not Kirby should be considered the statutory author of Kirby’s creations, saying that to extend the interpretation of works-made-for-hire broadly to commissioned works would be tantamount to a consequential power shift in the entertainment industry in favor of studios.
Film studios, record labels and publishing houses have built their businesses in no small part on the conveyed rights of artists like Kirby, who worked quasi-independently. The significance of a potential Supreme Court review in Lisa Kirby v. Marvel Characters is thus undeniable, especially given looming termination rights enjoyed by these artists.
That being noted, the Supreme Court usually only grants review when federal appellate circuits disagree on the interpretation of law, and the petitioner and its amici have struggled to identify any appellate controversy. Marvel makes sure to highlight the appellate unanimity throughout its brief, even pointing to such disputes as Warner Bros. fight to retain Superman rights from the creator’s heirs.
“Petitioners raise questions that have failed to divide the courts of appeals in the hundred-plus years they have applied the 1909 Act,” writes R. Bruce Rich, representing Marvel and referring to the copyright law that existed when Kirby was doing his work. “Plaintiffs allege no division in authority for the simple reason that there is none. Every court of appeals to have addressed the issue has held that the instance and expense test applied in this case is the appropriate test for assessing whether a work was made for hire under the 1909 Act. Courts have repeatedly reaffirmed that uniform view in the quarter century since this Court interpreted the very different language of the 1976 Act in CCNV.”
CCNV refers to 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. In his amicus brief, Bruce Lehman, formerly the chief advisor to President Bill Clinton on intellectual property matters, cites CCNV as one of the big reasons why the Supreme Court should take up the Kirby case, arguing that Justice Marshall rejected the “instance and expense” test for commissioned works like Kirby’s as “precisely the circumstance 17 U.S.C. § 304 … intended to address by giving authors or their statutory heirs the opportunity to terminate such copyright transfers.”
The Marvel brief takes an alternative view, of course, saying that in the absence of clarity in the 1909 Act, it was the court’s duty to define “employer” and “works made for hire.” By the 1960s, courts had settled on 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.” (Marvel believes that applies to Kirby.) The 1976 Copyright Act amended the law by allowing authors to reclaim rights over their creation in the latter period of the copyright term, but Marvel doesn’t believe it negated the prior interpretation of what constitutes a work-made-for-hire.
“The courts have had 25 years to digest this Court’s decision in CCNV and to consider its implications for the very different text and context of the 1909 Act and have uniformly reaffirmed the use of the instance and expense test in disputes arising under 1909 Act,” argues Marvel.
The studio then slams “a series of bizarre constitutional arguments” on why the Supreme Court should take up the case. Is Marvel’s deemed ownership of superhero characters a violation of the Takings Clause of the U.S. Constitution? That would invite appeals from every losing party in a copyright, patent, or trademark case, responds Marvel. Is Kirby’s loss a violation of due process? Actually, says Marvel, due process principles counsel against retroactive application of the 1976 Act. And how about the separation of powers since Congress and not courts are suppose to define things what’s work for hire under the Copyright Act? True enough, responds Marvel, but Congress failed to make those definitions in 1909 so it was within judicial authority to fill in the gaps.
Finally, Marvel addresses Kirby himself.
The brief notes that between 1958 and 1963, Marvel’s editor had complete editorial and stylistic control over Kirby’s work, that he was supervised, that he went through an approval process and that he was paid a fixed per-page fee for all work that Marvel published.
“It was Marvel — not Kirby — that bore the ‘risk’ and potential expense if the publication of the works was unsuccessful,” Marvel asserts. “Indeed, Kirby himself repeatedly confirmed that Marvel owned all the rights in the works.”
And as for the Kirby estate’s “smoking gun” — or “contemporaneous agreements between Marvel and Kirby consist[ing] of legends on the back of Marvel’s checks to Kirby expressly assigning his copyrights in the work Marvel purchased” — Marvel says those were neither “contemporaneous” nor “between Marvel and Kirby.” In fact, they deny the existence altogether, mentioning only checks issued from Kirby’s camp between 1973 and 1974 to others in an effort to support arguments.
“What is in the record, however, are numerous statements by Kirby making clear that he had no rights to the works that Marvel published,” concludes the Marvel brief. “At various points in time Kirby himself . . . admitted that —as a matter of course—ownership ‘vested’ in Marvel when the works it published were created, and that he had ‘no copyright rights and no claim to copyright’ in works published by Marvel. These statements— made by Kirby— ‘prove conclusively that the [works]… were works for hire.’ These statements not only defeat petitioners’ claim to ownership, but make this case a poor and atypical vehicle for this Court’s review.”
This article was first published by The Hollywood Reporter