Marvel Characters, Inc. v. Kirby
726 F.3d 119
| 2d Cir. | 2013Background
- Kirbys are the children of Jack Kirby, who created numerous Marvel works between 1958–1963.
- Marvel sued to confirm Kirbys have no termination rights under 17 U.S.C. §304(c)(2) because works are works made for hire.
- Kirbys served Notices of Termination under §304(c)(2) alleging to terminate transfers of rights.
- District court granted Marvel summary judgment that the works were made for hire and dismissing Kirbys’ termination claims.
- Lisa and Neal Kirby, California residents, challenged New York long-arm jurisdiction and argued Rule 19 indispensability.
- Court held district court lacked personal jurisdiction over Lisa and Neal, found them not indispensable, and affirmed judgment only as to Barbara and Susan on the §304(c) issue.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the district court had personal jurisdiction over Lisa and Neal Kirby | Marvel asserted jurisdiction under NY CPLR 302(a)(1) | Kirbys argued lack of sufficient NY contacts | No personal jurisdiction over Lisa and Neal |
| Whether Lisa and Neal Kirby are indispensable under Rule 19(b) | Rule 19(b) requires joinder | Absent due to lack of jurisdiction; they are indispensable | They are not indispensable; suit may proceed against Barbara and Susan |
| Whether the works are “works made for hire” under §304(c) | Kirbys have termination rights; works are not made for hire | Works were made for hire; Marvel owns rights | Works are made for hire; Marvel entitled to summary judgment |
Key Cases Cited
- Beacon Enters., Inc. v. Menzies, 715 F.2d 757 (2d Cir. 1983) (mailing cease-and-desist letter insufficient for 302(a)(1) jurisdiction)
- Ehrenfeld v. Bin Mahfouz, 489 F.3d 542 (2d Cir. 2007) (negative jurisdiction finding where foreign litigation scheme involved)
- Parke-Bernet Galleries v. Franklyn, 256 N.E.2d 506 (N.Y. 1970) (presence via direct involvement can sustain jurisdiction)
- Estate of Burne Hogarth v. Edgar Rice Burroughs, Inc., 342 F.3d 149 (2d Cir. 2003) (application of instance and expense framework for work-for-hire)
- Playboy Enters., Inc. v. Dumas, 53 F.3d 549 (2d Cir. 1995) (independent contractor as author when work made at hiring party's instance and expense)
- Shapiro, Bernstein & Co. v. Bryan, 123 F.2d 697 (2d Cir. 1941) (early work-for-hire principles for commissioned works)
- Yardley v. Houghton Mifflin Co., 108 F.2d 28 (2d Cir. 1939) (presumption of author’s control in commissioned works)
- CP Solutions PTE, Ltd. v. General Electric Co., 553 F.3d 156 (2d Cir. 2009) (Rule 19 considerations for indispensable parties; equity-focused)
- Universal Reinsurance Co., Ltd. v. St. Paul Fire & Marine Ins. Co., 312 F.3d 82 (2d Cir. 2002) (abuse of discretion review for Rule 19(b))
- Playboy Enters., Inc. v. Bourne, 457 F.2d 1213 (2d Cir. 1972) (integration of work-for-hire and implied assignment)