Marvel Worldwide Inc. v. Kirby

• Decision Date: 28 July 2011
• Docket Number: No. 10 Civ. 141(CM)(KNF).,10 Civ. 141(CM)(KNF).
• Parties: MARVEL WORLDWIDE, INC., Marvel Characters, Inc. and MVL Rights, LLC, Plaintiffs,v.Lisa R. KIRBY, Barbara J. Kirby, Neal L. Kirby and Susan M. Kirby, Defendants.Lisa R. Kirby, Barbara J. Kirby, Neal L. Kirby and Susan M. Kirby, Counterclaim–Plaintiffs,v.Marvel Worldwide, Inc., Marvel Characters, Inc., MVL Rights, LLC, Marvel Entertainment, Inc., The Walt Disney Company, and does 1 through 10, Counterclaim–Defendants.
• Court: U.S. District Court — Southern District of New York

777 F.Supp.2d 720

MARVEL WORLDWIDE, INC., Marvel Characters, Inc. and MVL Rights, LLC, Plaintiffs,

v.Lisa R. KIRBY, Barbara J. Kirby, Neal L. Kirby and Susan M. Kirby, Defendants.Lisa R. Kirby, Barbara J. Kirby, Neal L. Kirby and Susan M. Kirby, Counterclaim–Plaintiffs,

v.Marvel Worldwide, Inc., Marvel Characters, Inc., MVL Rights, LLC, Marvel Entertainment, Inc., The Walt Disney Company, and does 1 through 10, Counterclaim–Defendants.

No. 10 Civ. 141(CM)(KNF).

United States District Court, S.D. New York.

July 28, 2011.

David Fleischer, Haynes and Boone, LLP, James W. Quinn, Randi Wolkenbreit Singer, Robert Bruce Rich, Weil, Gotshal & Manges LLP, Jodi Aileen Kleinick, Paul Hastings LLP, New York, NY, for Plaintiffs.Marc Toberoff, Law Offices Of Marc Toberoff, PLC, Los Angeles, CA, for Defendants.

MEMORANDUM OPINION AND ORDER GRANTING PLAINTIFFS' MOTION FOR SUMMARY JUDGMENT AND DENYING DEFENDANTS' CROSS MOTION FOR SUMMARY JUDGMENT

McMAHON, District Judge.

Jack Kirby is a legend in the comic book industry. During his long association with Marvel Comics, Kirby, working as a freelance artist, played a key role in the creation of a number of iconic characters, including “The Fantastic Four,” “The Incredible Hulk,” and “The X–Men.”

Kirby died in 1994, survived by his wife, Rosalind, and their four children—Defendants Susan M. Kirby, Neal L. Kirby, Barbara J. Kirby, and Lisa R. Kirby (the “Kirby Heirs”). (Pls.' Rule 56.1 Statement of Undisputed Material Facts (“Pls.' 56.1”) ¶ 5).

In June 1972, Marvel had Kirby execute an assignment to Marvel Management Company of any and all right, title and interest (including specifically any copyrights, whether statutory and at common law) that Kirby “may have or control” in any of the works Kirby created for Marvel. (2/18/11 Declaration of Randi W. Singer (“Singer Decl.”) Ex. 17 at 1.A.(1).) The assignment did not state that Kirby actually owned any copyright in the works; on the contrary, the assignment contained an acknowledgement that Kirby had created the works “as an employee for hire” of the owners of Marvel, the Goodmans. (Singer Decl. Ex. 17 at 5.)

On September 16, 2009, the Kirby Heirs served Plaintiffs with 45 notices purporting to terminate Kirby's assignment of his federally-protected copyrights in a number of Marvel editions that were published between 1958 and 1963: Amazing Adventures, Vol. 1, Nos. 1–6; Amazing Fantasy, Vol. 1, No. 15; The Amazing Spider–Man, Vol. 1, Nos. 1–7; The Avengers, Vol. 1, Nos. 1–2; The Fantastic Four, Vol. 1, Nos. 1–21; The Fantastic Four Annual, No. 1; Journey Into Mystery, Vol. 1, Nos. 51–98; The Incredible Hulk, Vol. 1, Nos. 1–6; The Rawhide Kid, Vol. 1, Nos. 17–35; Sgt. Fury and His Howling Commandos, Vol. 1, Nos. 1–41 Strange Tales, Vol. 1, Nos. 67–115; Tales of Suspense, Vol. 1, Nos. 1, 3–48; Tales to Astonish, Vol. 1, 8 (collectively, the “Kirby Works”). (Pls.' 56.1 ¶ 7; see also Defs.' Rule 56.1 Statement of Disputed Material Facts (“Defs.' 56.1”) ¶ 7.) The Termination Notices relied for their force on 17 U.S.C. § 304(c), which provides that

In the case of any copyright subsisting in either its first or renewal term on January 1, 1978, other than a copyright in a work made for hire, the exclusive or nonexclusive grant of a transfer or license of the renewal copyright or any right under it, executed before January 1, 1978, ... is subject to termination under the following conditions:.... In the case of a grant executed by one or more of the authors of the work, termination of the grant may be effected, to the extent of a particular author's share in the ownership of the renewal copyright, by the author who executed it or, if such author is dead, by the person or persons who, under clause (2) of this subsection, own and are entitled to exercise a total of more than one-half of that author's termination interest.

See 17 U.S.C. § 304(c)(1) (emphasis added). After fruitless negotiations, Plaintiffs Marvel Worldwide, Inc., Marvel Characters, Inc. and MVL Rights, LLC commenced this action, seeking a declaration that the Termination Notices were a nullity, since Marvel, not Kirby (or his heirs), owned the copyrights in the works that were the subject of the Notices. The Kirby Heirs counterclaimed for a declaration that the Termination Notices were effective and that they now controlled the copyrights in these iconic works.

Presently before the Court are the parties' cross motions for summary judgment. Plaintiffs argue that there are no disputed issues of material fact and that the undisputed material facts establish that the Kirby Works were “works made for hire” within the meaning of the Copyright Act of 1909, which law conferred all federal copyright in a “work made for hire” in the employer. Defendants counter that there are disputed issues of material fact that bar summary judgment in Marvel's favor, but none that would prevent the court from concluding, as a matter of law, that the Kirby Works are not “works made for hire.”

At the outset, it is important to state what this motion is not about. Contrary to recent press accounts and editorials, see, e.g., Brent Staples, Marvel Superheroes and the Fathers of Invention, N.Y. Times, June 26, 2011, at SR11; Earl Wells, Letter to the Editor, Giving Credit for Comics, N.Y. Times, July 3, 2011, at A18, this case is not about whether Jack Kirby or Stan Lee is the real “creator” of Marvel characters, or whether Kirby (and other freelance artists who created culturally iconic comic book characters for Marvel and other publishers) were treated “fairly” by companies that grew rich off the fruit of their labor. It is about whether Kirby's work qualifies as work-for-hire under the Copyright Act of 1909, as interpreted by the courts, notably the United States Court of Appeals for the Second Circuit. If it does, then Marvel owns the copyright in the Kirby Works, whether that is “fair” or not. If it does not, then the Kirby Heirs have a statutory right to take back those copyrights, no matter the impact on a recent corporate acquisition or on earnings from blockbuster movies made and yet to be made.

I conclude that there are no genuine issues of material fact, and that the Kirby Works were indeed works for hire within the meaning of the Copyright Act of 1909. Therefore, the Section 304(c) Termination Notices did not operate to convey any federally-protected copyrights in the Kirby Works to the Kirby Heirs. Marvel's motion for summary judgment is granted; the Kirby Heirs' cross motion is denied.

THE MOTIONS TO STRIKE

Before the court can recite the facts, I must consider exactly what should and should not be part of the record on the parties' cross motions for summary judgment. Marvel has made three procedural motions, in an effort to strike certain material from the motion record: to strike the “expert” testimony of Mark Evanier and John Morrow, to strike the declarations of Joe Sinnott and James F. Steranko, and to strike certain documents attached as exhibits to the Declarations of Marc Toberoff and John Morrow. All of these documents were filed in support of the Kirby Heirs' opposition to Marvel's motion for summary judgment.

Marvel's side of the story is told by the most percipient of witnesses: Stan Lee Marvel's editor during the period 1958–1963—when the Kirby Works were created—and a legendary figure in his own right. Although 87 years old, Lee gave a two-day deposition in this matter: Marvel's motion stands or falls on his testimony, although Marvel supplemented Lee's testimony with testimony from Roy Thomas, Lawrence Lieber, and John Romita.

Thomas began as a staff writer at Marvel in July 1965 and continued to work at Marvel until 1980. (10/26/10 Deposition of Roy Thomas (“Thomas Dep.”) 8:9–14.)

Lieber was a writer for Marvel beginning in June 1958. (Deposition of Lawrence Lieber (“Lieber Dep.”) 9:14–20.)

Romita first worked for Timely Comics in 1949 as a “ghost penciller”—that is, Romita completed pencil artwork for comic book stories Stan Lee assigned to another artist, Lester Zakarin. (Deposition of John Romita (“Romita Dep.”) 7:16–8:21.) Following his one-year stint as a ghost penciller, Romita spent two years in the army. In 1951, while still in the army, Romita was hired by Lee to work as a freelance artist for Timely Comics. (Romita Dep. 10:6–12:4.) In 1953, after leaving the army, Romita continued working for Timely Comics as a freelance artist until 1958. ( Id. 12:5–13.) In 1965, Romita returned to Marvel, first as a freelance artist and in 1966, as a staff artist. (Romita Dep. 14:5–11.) Romita remained at Marvel until 1996.( Id.)

To counter Lee's first-hand testimony, the Kirby Heirs offer the testimony from three comic book artists who also worked as freelancers for Marvel between the 1950s and 1970s. James F. Steranko is a comic book artist and historian who worked for Marvel as a freelance artist between 1966 and 1973. (Declaration of James F. Steranko (“Steranko Decl.”) ¶¶ 2, 5.) Joe Sinnott is a comic book artist who worked for Marvel as a freelance artist in the 1950s and 1960s. (Declaration of Joe Sinnott (“Sinnott Decl.”) ¶ 3.) Sinnott also worked as a “freelance inker” and inked many issues of Kirby's “The Mighty Thor” and “The Avengers.” (Sinnott Decl. ¶ 5.) Richard Ayers is a comic book artist who worked on a freelance basis for Marvel from 1959 until 1975. (Declaration of Richard Ayers (“Ayers Decl.”) ¶¶ 2, 6–8.) Richard Ayers also inked various newspaper comic strips drawn by Kirby (but not for Marvel) between 1959 and 1961. (Ayers Decl. ¶ 5.)

The Kirby Heirs also offer their own reminiscences about their father and his work, but as they were children during the relevant time period, they do not claim to have first-hand knowledge about their father's business dealings with Marvel.

Finally, in an attempt to cast doubt on Lee's testimony, the Kirby Heirs offer the “expert” testimony of Mark Evanier and John Morrow.

Marvel asks the Court to disregard...