Marvel Worldwide, Inc. v. Kirby
777 F. Supp. 2d 720
S.D.N.Y.2011Background
- Jack Kirby created Marvel works as a freelance artist during 1958–1963; Marvel assigned and supervised his work via Stan Lee.
- In 1972 Kirby signed an assignment to Marvel/Magazine Management purporting to convey rights Kirby may have had, while acknowledging work-for-hire status.
- Kirby Heirs served 45 termination notices in 2009 under 17 U.S.C. § 304(c) seeking to reclaim copyrights in Kirby Works published 1958–1963.
- Marvel sued for declaration that termination notices are null because Kirby Works were works made for hire under the 1909 Act, making Marvel the copyright owner.
- Court conducted cross-motions for summary judgment, scrutinizing the instance-and-expense test under the 1909 Act and the burden-shifting presumption of work-for-hire.
- Court held that Kirby Works were made for hire, Marvel is the author, and termination notices had no effect; Kirby Heirs’ evidence failed to rebut the presumption.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Were the Kirby Works works made for hire under 1909 Act? | Marvel: yes, created at Marvel's instance and expense. | Kirby Heirs: no, facts show independent contractor status. | Yes; Kirby Works were works made for hire. |
| Does the 1972 assignment rebut the work-for-hire presumption? | Marvel: assignment does not establish contrary intent; shows hire status. | Kirby Heirs: 1972 assignment proves Kirby owned rights. | No; 1972 assignment does not rebut presumption. |
| Does the 1975 employment agreement or post-1976 checks rebut the presumption? | Marvel: later writings reflect preexisting work-for-hire; not evidence of contrary intent. | Kirby Heirs: these show contrary understanding. | No; evidence fails to rebut presumption. |
| Did to existence of non-firsthand expert testimony create genuine issues of material fact? | Marvel: exclude improper expert testimony; credibility issues unresolved. | Kirby Heirs: experts provide context about creation. | Yes; expert testimony excluded; no material fact created. |
| Do termination notices under § 304(c) affect the Kirby Works given the above? | Marvel: termination notices ineffective because works are works-for-hire. | Kirby Heirs: termination notices valid if not works-for-hire. | Terminations ineffective; Marvel owns copyrights. |
Key Cases Cited
- Martha Graham Sch. and Dance Found., Inc. v. Martha Graham Ctr. of Contemporary Dance, Inc., 380 F.3d 624 (2d Cir. 2004) (defines 'instance and expense' in work-for-hire analysis)
- Playboy Enters., Inc. v. Dumas, 53 F.3d 552 (2d Cir. 1995) (almost irrebuttable presumption that commissioned works are works-for-hire)
- Estate of Burne Hogarth v. Edgar Rice Burroughs, Inc., 342 F.3d 149 (2d Cir. 2003) (expense and control factors in work-for-hire analysis)
- Twentieth Century Fox Film Corp. v. Entertainment Distrib., Inc., 429 F.3d 869 (9th Cir. 2005) (expense/prong and independent-contractor analysis in WFH)
- Archie Comic Publ'n, Inc. v. DeCarlo, 258 F. Supp. 2d 315 (S.D.N.Y. 2003) (check-endorsements and WFH presumptions in pre-1978 works)
- Picture Music, Inc. v. Bourne, Inc., 457 F.2d 1213 (2d Cir. 1972) (defines control and supervision as hallmark of work-for-hire)
- Brattleboro Publishing Co. v. Winmill Publishing Corp., 369 F.2d 565 (2d Cir. 1966) (origin of )