Marvel Characters, Inc. v. Kirby

• Decision Date: 08 August 2013
• Docket Number: Docket No. 11–3333–cv.
• Citation: 726 F.3d 119
• Parties: MARVEL CHARACTERS, INCORPORATED, Marvel Worldwide, Incorporated, MVL Rights, LLC, Plaintiffs–Counter–Defendants–Appellees, Walt Disney Company, Marvel Entertainment, Incorporated, Counter–Defendants–Appellees, v. Lisa R. KIRBY, Neal L. Kirby, Susan N. Kirby, Barbara J. Kirby, Defendants–Counter–Claimants–Appellants.
• Court: U.S. Court of Appeals — Second Circuit

726 F.3d 119

MARVEL CHARACTERS, INCORPORATED, Marvel Worldwide, Incorporated, MVL Rights, LLC, Plaintiffs–Counter–Defendants–Appellees,

Walt Disney Company, Marvel Entertainment, Incorporated, Counter–Defendants–Appellees,

v.Lisa R. KIRBY, Neal L. Kirby, Susan N. Kirby, Barbara J. Kirby, Defendants–Counter–Claimants–Appellants.

Docket No. 11–3333–cv.

United States Court of Appeals,

Second Circuit.

Argued: Oct. 24, 2012.

Decided: Aug. 8, 2013.

R. Bruce Rich (James W. Quinn, Randi W. Singer, Gregory Silbert, on the brief), Weil, Gotshal & Manges LLP, New York, NY; David Fleischer, Haynes and Boone, LLP, New York, N.Y. for Plaintiffs–Counter–Defendants–Appellees and Counter–Defendants–Appellees.

Marc Toberoff, Toberoff & Associates, P.C., Malibu, CA, for Defendants–Counter–Claimants–Appellants.

Before: CABRANES, SACK, and CARNEY, Circuit Judges.

SACK, Circuit Judge:

This appeal requires us to revisit our case law applying the work-for-hire doctrine in the context of section 304 of the Copyright Act of 1976 (or, the “1976 Act”), 17 U.S.C. § 304. Defendants-counter-claimants-appellants Lisa, Neal, Susan, and Barbara Kirby (collectively, the “Kirbys”) are the children of the late Jack Kirby. Kirby is considered one of the most influential comic book artists of all time. At various times throughout his career, he produced drawings for Marvel Comics, a comic book publisher that has since grown into the multifaceted enterprise reflected in the case caption: Marvel Characters, Inc., Marvel Worldwide, Inc., MVL Rights, LLC, and Marvel Entertainment, Inc. (collectively, “Marvel”). At issue here are the rights to drawings Kirby allegedly created between 1958 and 1963.

The Kirbys appeal from the district court's grant of summary judgment to Marvel, which was based on the conclusion that all of the works at issue are “works made for hire” within the meaning of section 304(c), and that the Kirbys therefore have no rights to the works. Two of the Kirbys, Lisa and Neal, also challenge the district court's conclusion that it had personal jurisdiction over them under New York's long-arm statute. They further argue that they are indispensable parties under Rule 19(b) of the Federal Rules of Civil Procedure, such that their absence from this lawsuit (by virtue of the district court's lack of personal jurisdiction over them) requires that the suit be dismissed in its entirety.

We conclude that the district court was without personal jurisdiction over Lisa and Neal. We therefore vacate the judgment as against them. We also find, however, that Lisa and Neal are not indispensable parties to this lawsuit, and that the district court was correct in concluding that the works at issue are “works made for hire” under section 304(c). We therefore affirm the judgment as to defendants Barbara and Susan.

BACKGROUND

In this appeal from the grant of summary judgment, we view the evidence in the light most favorable to the nonmovants, the Kirbys for present purposes, and draw all reasonable inferences in their favor. See, e.g., Singer v. Ferro, 711 F.3d 334, 339 (2d Cir.2013).

Jack Kirby

Jack Kirby, born Jacob Kurtzberg in New York City's Lower East Side in 1917, began his career in the comic book businessin the late 1930s. In the summer of 1940, a young woman named Rosalind moved into the apartment above his with her family. The day they met, Kirby asked Rosalind if she “[w]ould like to see [his] etchings[.]” She thought he wanted “to fool around”; he only wanted to show her his drawings for a new comic book series called Captain America. John Morrow, “Would You Like to See My Etchings?”: Rosalind Kirby Interviewed (conducted Dec. 12, 1995), The Jack Kirby Collector, April 1996, at 6. Kirby and “Roz” were married in 1942. After Kirby's military service in World War II, the couple had four children: Susan, Neal, Barbara, and Lisa.

Kirby's career in comic book illustration spanned more than half a century. His influence was substantial. An obituary marking his death in 1994 quoted Joe Simon, Kirby's creative partner for fifteen years: “He brought the action drawing to a new level. His style was imitated all over and still is today to a certain extent.” Jack Kirby, 76; Created Comic Book Superheroes,N.Y. Times, Feb. 8, 1994, at D22.

Kirby was prolific, too. In 1951 alone, 308 pages of Kirby's work appeared in published comic books. This output was typical for him in the years between 1940 and 1978.

Marvel Comics and Stan Lee

Marvel was founded as Timely Comics in 1939 by one Martin Goodman. In 1940, Marvel purchased the first ten issues of Captain America from Kirby and Joe Simon. But Kirby and Simon would soon move on to a competitor, DC Comics. To replace them, Goodman hired one Stanley Lieber.

Lieber would come to be known by his pen name, Stan Lee. Lee is in his own right a towering figure in the comic book world, and a central one in this case. He in effect directed Marvel from the early 1940s until sometime in the 1970s, serving, in his words, as “Editor,” “Art Director” and “a staff writer.” Deposition of Stan Lee (“Lee Dep.”), May 13, 2010, at 17, Joint App'x at 2437. He continued to work for Marvel in one capacity or another at least to the day of his deposition testimony in this litigation.

But in the 1940s and 50s, Marvel, hobbled by poor business decisions, was hardly a success story.¹ In 1958, Kirby began producing drawings for Marvel once again. And by 1961, its fortunes began to change. That year, Marvel released the first issues of The Fantastic Four. On its heels were releases of the first issues of some of Marvel's most enduring and profitable titles, including The Incredible Hulk, The X–Men, and Spider–Man.

Kirby's Relationship with Marvel from 1958–1963

This litigation concerns the property rights in 262 works published by Marvel between 1958 and 1963. Who owns these rights depends upon the nature of Kirby's arrangement with Marvel during that period.

It is undisputed that Kirby was a freelancer, i.e., he was not a formal employee of Marvel, and not paid a fixed wage or salary. He did not receive benefits, and was not reimbursed for expenses or overhead in creating his drawings. He set his own hours and worked from his home. Marvel, usually in the person of Stan Lee, was free to reject Kirby's drawings or ask him to redraft them. When Marvel accepted drawings, it would pay Kirby by check at a per-page rate.

Despite the absence of a formal employment agreement, however, the record suggests that Kirby and Marvel were closely affiliated during the relevant time period. Lee assigned Kirby, whom he considered his best artist, a steady stream of work during that period. See Lee Dep. at 36, Joint App'x at 2456 (“I wanted to use Jack for everything, but I couldn't because he was just one guy.”); id. at 37, Joint App'x at 2457 (“So I said: All right, forget it, Jack. I will give [the Spider–Man strip] to somebody else. Jack didn't care. He had so much to do.”); id. at 30, Joint App'x 2450 (“He got the highest [rate] because I considered him our best artist.”).

And Kirby seems to have done most of his work with Marvel projects in mind. Although the Kirby children assert that their father could and did produce and sell his work to other publishers during those years, lists of Kirby's works cited by both parties establish that the vast majority of his published work in that time frame was published by Marvel (or Atlas Comics, as part of Marvel Comics Group).

The specifics of Kirby and Marvel's creative relationship during this time period are less clear.

According to Lee, at the relevant time, artists worked using what the parties call the “Marvel Method.” It was developed as a way to “keep a lot of artists busy” when Lee or another writer could not provide the artist with a completed script. Lee Dep. at 21, Joint App'x at 2441. The first step was for Lee to meet with an artist at a “plotting conference.” Id. at 39–40, Joint App'x at 2459–60. Lee would provide the artist with a “brief outline” or “synopsis” of an issue; sometimes he would “just talk ... with the artist” about ideas. Id. at 35, Joint App'x at 2455. The artist would then “draw it any way they wanted to.” Id. at 21, Joint App'x at 2441. Then a writer, such as Lee, would “put in all the dialogue and the captions.” Id. According to Lee, he “maintain[ed] the ability to edit and make changes or reject what the other writers or artists had created.” Id. at 22, Joint App'x at 2442.

Lee testified that he worked this way with Kirby “for years”:

And Jack Kirby and I would, let's say when we did the Fantastic Four, I first wrote a synopsis of what I thought the Fantastic Four should be, who the characters should be, what their personalities were. And I gave it to Jack, and then I told him what I thought the first story should be, how to open it, who the villain should be, and how we would end it. And that was all. Jack went home and drew the whole thing. I put the dialogue in.

Id. at 118, Joint App'x at 2538.

Other evidence in the record, including some of Lee's own deposition testimony, indicates, however, that Kirby had a freer hand within this framework than did comparable artists. For example, Lee explained that “instead of telling [Kirby] page by page” what to draw, Lee might simply tell him to “[d]evote five pages to this, five pages to that, and three pages to that.” Id. at 70, Joint App'x at 2490. Sometimes during plotting sessions, Kirby might “contribute something or he might say, ‘Stan, let's also do this or do that.’ ” Id. at 41, Joint App'x at 2461.

It is beyond dispute, moreover, that Kirby made many of the creative contributions, often thinking up and drawing characterson his own, influencing plotting, or pitching fresh ideas.

The Termination Notices

The dispute before us began in September 2009, when the Kirbys served various Marvel entities with documents entitled “Notice of Termination of Transfer Covering Extended Renewal Term” (the “Termination Notices”)...