Marvel Characters, Inc. v. Lisa R. Kirby

Affirming a determination that certain comic book drawings were works made for hire and the artist had no rights to the work, the U.S. Court of Appeals for the Second Circuit upheld a summary judgment for the plaintiff publisher because the works were made at the publisher’s instance and expense, and the defendants, children of the artist, had failed to show an agreement to the contrary. Marvel Characters, Inc. v. Lisa R. Kirby, Case No. 11-3333 (2d Cir. Aug. 8, 2013) (Sack, J.)

James Kirby, one of the most influential comic book artists of all time, worked as a freelance artist and produced certain drawings for publisher Marvel Comics between 1958 and 1963. The children of the late James Kirby (the Kirbys) sent notices to Marvel purporting to terminate assignments in their father’s work pursuant to § 304 (c)(2) of the Copyright Act. Marvel filed a lawsuit in response seeking declaratory relief that the Kirbys had no termination rights under § 304 (c)(2) on the basis that the work was “made for hire” within the definition of § 304 (c). Copyright law deems the employer to be the author for purposes of copyright ownership where a work is “made for hire.” The district court, relying on Second Circuit case law, applied an “instance and expense test” to determine that the works were “made for hire” under the version of the law in effect when the works were created (the 1909 Act), and concluded that they were. The Kirbys appealed.

An independent contractor’s works are deemed to be works “made for hire” and the hiring party considered an employer and the contractor an employee for purposes of the 1909 Act if the work is made at the hiring party’s “instance and expense.” If the hiring party satisfies the “instance and expense” test, it is presumed to be the author of the work. The independent contractor can overcome the presumption by showing evidence of an agreement to the contrary. The “instance” aspect of this test refers to the hiring party providing the impetus for, participating in, or having the power to supervise, the creation of the work. Actual creative contributions or direction by the hiring party strongly suggest that the work is made at its instance. The “expense” component refers to the resources the hiring party invests in the creation of the work. Payment by the hiring party of a “sum certain” suggests a work-for-hire arrangement.

The Second Circuit agreed with the district court’s application of the “instance and expense test,” finding that Marvel’s right to supervise and its contribution to Kirby’s work were sufficient to establish that the work was produced at Marvel’s instance when Kirby created the work pursuant to Marvel’s assignment, and that Marvel had a right to reject Kirby’s work or require him to redo it or to alter it. The Second Circuit also found that Marvel’s payment of a flat rate and its contribution of both creative and production value, in light of the parties’ relationship as a whole, was enough to satisfy the expense requirement. According to the Second Circuit, the question of who created the characters was irrelevant to the issue because the hired party’s ingenuity and acumen are among the reasons for the hiring party enlisting the artist.