South Carolina Lawyer
SC Lawyer, September 2010, #2.
Adventures in Copyright: Works Made for Hire and Transfers of Ownership Under the Copyright Act
South Carolina LawyerSeptember 2010Adventures in Copyright: Works Made for Hire and Transfers of Ownership Under the Copyright Act By John Harleston On September 16, 2009, the heirs of renowned comic book artist Jack Kirby gave notice to Marvel Entertainment of their intent to terminate copyright assignments in a number of works embodying several of Marvel's most popular comic book characters, including Spiderman, Iron Man, The Incredible Hulk and The X-Men. In the ensuing months, the Kirby heirs have become embroiled in litigation with Marvel and its affiliates over Marvel's continued rights to exploit these characters. At stake are billions of dollars in licensing for movies, books, games, toys and other products. Chiefly at issue in the dispute is whether these creations, many of which Kirby drew in the 1960s for Marvel, were "works made for hire" under the Copyright Act, belonging to Marvel or its predecessors from the outset, or works Kirby created as an independent contractor and author and then granted to Marvel. It seems that the masterminds of the "Silver Age" of comics devoted great attention to the creative product, but not enough attention to the legal nuances.
This is not the first time Marvel has been involved in such a dispute. A few years earlier, Kirby's one-time partner Joseph Simon attempted to terminate a transfer of rights in the Captain America character and several of the first 1940s Captain America comic books. Marvel Characters, Inc. v. Simon, 310 F.3d 280 (2d Cir. 2002). It turns out that authors under the Copyright Act have a special power, like the superpowers of comic book heroes-the statutory right of termination. A grant of rights in a copyrighted work, whether an outright assignment or a license, can be terminated after 35 years, even after the author's death. But this superpower has a nemesis of its own: The termination right does not apply to a "work made for hire." The Kirby case may not be resolved for some time, but the issue deserves attention in many more mundane settings with less pop culture interest and less money at stake. A few themes borrowed from comic book lore may put things in perspective.
Every superhero has an origin story, and so do copyrights. Contrary to a common misconception, the Copyright Act in its current form gives ownership of copyright in a work of authorship automatically, from its creation, to the work's author. 17 U.S.C. §§201(a), 302(a). Registration, publication and copyright notices, although important for various reasons, are permissive and not required for copyright to vest in the author. 17 U.S.C. §§405(a), 408(a). The first essential step in determining ownership of copyright in a work, then, is to determine who the "author" is. The term is broader in copyright law than in common speech and includes not only writers, but also artists, photographers, designers, composers, programmers, cartoonists and any other person who creates an original work protected by the Act. By default, the "author" is the person who translates an idea into a fixed, tangible expression entitled to copyright protection. 17 U.S.C. §102; Cmty. for Creative Non-Violence v. Reid, 490 U.S. 730, 737, 109 S. Ct. 2166, 2171, 104 L. Ed. 2d 811 (1989). If freelance photographer Peter Parker takes Mary Jane's photo, Peter owns the copyright in the photo. But if the work was "made for hire," the hiring party is considered the author. Since corporations, LLCs and like entities can act only through human agents, as a general rule, corporate authorship and corporate copyrights reside in either works made for hire or works acquired by assignment or some other means from the author. An understanding of the rules governing...