Marvel's Win over Kirby Estate

It's been a good stretch for Marvel Entertainment and its former president Stan Lee, the ever-youthful 87-year old face of the company. Marvel characters Thor and Captain America have dominated the box office. Lee keeps winning over young fans with his blink-and-you'll-miss-them film cameos. (Look closely for him as a truck driver trying to dislodge Thor's hammer in Thor or as a general at an award ceremony in Captain America: The First Avenger). Now, thanks to a Stan Lee role on the witness stand, Marvel and its parent The Walt Disney Co. were able claim a win in the courtroom.

District Judge Colleen McMahon of the U.S. District Court for the Southern District of New York recently granted summary judgment to Marvel and its league of lawyers at Paul, Hastings, Janofsky & Walker, Haynes and Boone and Weil, Gotshal & Manges, in the declaratory copyright case brought against Marvel by the estate of comic book legend Jack Kirby. McMahon ruled that Kirby's heirs could not claim rights to valuable characters he created for Marvel, like Spiderman, X-Men and the Incredible Hulk. Marvel Worldwide Inc. v. Kirby, 10 Civ. 141. The Paul Hastings team was led by Jodi Kleinick. James Quinn, Randi Singer and R. Bruce Rich represented Marvel at Weil, and David Fleischer at Haynes and Boone worked on the case.

Works for Hire

Giving considerable weight to two days of testimony from Lee about his arrangements with Kirby and other artists, McMahon held that Kirby created the characters as works for hire, which are excluded from the general rule that a work's creator is its legally recognized author. Had Kirby's heirs prevailed, they stood to collect a windfall, thanks to the provision of the 1976 Copyright Act that lets authors reclaim ownership of pre-1978 copyrights after a 56-year waiting period. Judge McMahon decided, based on the working relationship between Kirby and Marvel: “On the undisputed facts, the Kirby Works were created at the instance and expense of Marvel.” The district judge also noted that a 1972 assignment from Kirby to Marvel “contained an acknowledgement that Kirby had created the works 'as an employee for hire.'”

The case is just the latest chapter in the ongoing saga over Marvel's copyrights. In 2002, Lee himself sued Marvel for $10 million, claiming it breached an agreement to pay him royalties from that year's Spiderman blockbuster movie. The dispute settled for an undisclosed amount.

In 2009, shareholders of Stan Lee Media Inc. (SLMI), a failed Internet venture Lee launched, sued Marvel for $750 million in profits, claiming Lee assigned SLMI his copyrights. A Manhattan federal judge dismissed that case (see, Abadin v. Marvel Entertainment Inc., 09 Civ. 0715 (S.D.N.Y. 2010)), although the SLMI shareholders continue to litigate the issue of whether Lee assigned his copyrights.

The latest ruling was a blow to Kirby heirs' lawyer Marc Toberoff, a film producer living a double life as a copyright crusader. In 2008, Toberoff won a ruling against Warner Brothers that allowed the decedents of Superman co-creator Jerome Siegel to recapture a stake in rights sold more than 70 years ago to DC Comics for $130.

In a statement issued following Judge McMahon's ruling, Toberoff targeted “the arcane and contradictory state of 'work for hire' case law under the 1909 Copyright Act. However, the 1976 Copyright Act's termination provisions at issue were specifically designed to correct the unfairness inherent in the author/publisher relationship, and there is no better example of that than Jack Kirby and Marvel.”

The Kirby estate has since sent a notice of appeal of McMahon's ruling to the U.S. Court of Appeal for the Second Circuit. Marvel's lawyers declined to comment.

It's been a good stretch for Marvel Entertainment and its former president Stan Lee, the ever-youthful 87-year old face of the company. Marvel characters Thor and Captain America have dominated the box office. Lee keeps winning over young fans with his blink-and-you'll-miss-them film cameos. (Look closely for him as a truck driver trying to dislodge Thor's hammer in Thor or as a general at an award ceremony in Captain America: The First Avenger). Now, thanks to a Stan Lee role on the witness stand, Marvel and its parent The Walt Disney Co. were able claim a win in the courtroom.

District Judge Colleen McMahon of the U.S. District Court for the Southern District of New York recently granted summary judgment to Marvel and its league of lawyers at Paul, Hastings, Janofsky & Walker, Haynes and Boone and Weil, Gotshal & Manges, in the declaratory copyright case brought against Marvel by the estate of comic book legend Jack Kirby. McMahon ruled that Kirby's heirs could not claim rights to valuable characters he created for Marvel, like Spiderman, X-Men and the Incredible Hulk. Marvel Worldwide Inc. v. Kirby, 10 Civ. 141. The Paul Hastings team was led by Jodi Kleinick. James Quinn, Randi Singer and R. Bruce Rich represented Marvel at Weil, and David Fleischer at Haynes and Boone worked on the case.

Works for Hire

Giving considerable weight to two days of testimony from Lee about his arrangements with Kirby and other artists, McMahon held that Kirby created the characters as works for hire, which are excluded from the general rule that a work's creator is its legally recognized author. Had Kirby's heirs prevailed, they stood to collect a windfall, thanks to the provision of the 1976 Copyright Act that lets authors reclaim ownership of pre-1978 copyrights after a 56-year waiting period. Judge McMahon decided, based on the working relationship between Kirby and Marvel: “On the undisputed facts, the Kirby Works were created at the instance and expense of Marvel.” The district judge also noted that a 1972 assignment from Kirby to Marvel “contained an acknowledgement that Kirby had created the works 'as an employee for hire.'”

The case is just the latest chapter in the ongoing saga over Marvel's copyrights. In 2002, Lee himself sued Marvel for $10 million, claiming it breached an agreement to pay him royalties from that year's Spiderman blockbuster movie. The dispute settled for an undisclosed amount.

In 2009, shareholders of Stan Lee Media Inc. (SLMI), a failed Internet venture Lee launched, sued Marvel for $750 million in profits, claiming Lee assigned SLMI his copyrights. A Manhattan federal judge dismissed that case (see, Abadin v. Marvel Entertainment Inc., 09 Civ. 0715 (S.D.N.Y. 2010)), although the SLMI shareholders continue to litigate the issue of whether Lee assigned his copyrights.

The latest ruling was a blow to Kirby heirs' lawyer Marc Toberoff, a film producer living a double life as a copyright crusader. In 2008, Toberoff won a ruling against Warner Brothers that allowed the decedents of Superman co-creator Jerome Siegel to recapture a stake in rights sold more than 70 years ago to DC Comics for $130.

In a statement issued following Judge McMahon's ruling, Toberoff targeted “the arcane and contradictory state of 'work for hire' case law under the 1909 Copyright Act. However, the 1976 Copyright Act's termination provisions at issue were specifically designed to correct the unfairness inherent in the author/publisher relationship, and there is no better example of that than Jack Kirby and Marvel.”

The Kirby estate has since sent a notice of appeal of McMahon's ruling to the U.S. Court of Appeal for the Second Circuit. Marvel's lawyers declined to comment.