Second Circuit Sends <i>Ghost Rider</i> Copyright Back to District Court

Friedrich met with Stan Lee, the head of Marvel, who agreed to publish Ghost Rider in the Marvel Spotlight series. While Friedrich assigned his rights to the character, the two never discussed renewal rights and did not put the agreement in writing. Friedrich gave the synopsis to a freelance artist to illustrate the comic book according to his specific instructions and the first issue appeared in Marvel Spotlight 5 in April 1972 bearing a copyright notice in favor of “Magazine Management Co. Inc., Marvel Comics Group.” The first page of the comic credited it as conceived and written by Friedrich.

The character was immensely popular, and Marvel launched a separate Ghost Rider series in 1973, written by Friedrich in what he acknowledged were “works made for hire.”

Over the next three decades, Marvel went on to publish more than 300 Ghost Rider comic book stories, on which it filed copyright registrations, and reprinted five times the Spotlight 5 story, on which it had not filed registrations. All of the Spotlight 5 reprints credited Friedrich.

Under the Copyright Act, the renewal copyright would have vested in Friedrich in 2001 as the original author. Marvel continued to profit from Ghost Rider , publishing reprints from Spotlight 5 , selling a Ghost Rider toy, making a movie released in 2007 and releasing a video game. Friedrich later claimed he was unaware of his renewal rights until 2005 or 2006.

Judge Forrest ruled for the company in 2011 and Friedrich went to the Second Circuit, where oral arguments were heard on Feb. 20, 2013. Circuit Court Judge Chin wrote the panel's 48-page appellate opinion.

Ambiguous on its Face

Under the Copyright Act, the initial copyright term lasts for 28 years before a renewal term of 67 years begins. Judge Chin said an author may reassign renewal rights, but there is a strong presumption against it, and, in Friedrich's case, the agreement he signed in 1978 was ambiguous on its face as to the definition of the “work” covered by the agreement, whether it included the work published six years before and whether there were any renewal rights.

The Second Circuit said that Marvel relied on a phrase in the agreement “grant[ing] to Marvel forever all rights of any kind and nature in and to Work.” But Judge Chin said it was unclear whether this applied to works created in 1972 and the agreement “could reasonably be construed as a form of work-for-hire contract having nothing to do with renewal rights.”

“When Friedrich signed the agreement, he was doing other freelance work for Marvel and he believed the agreement would only cover future work” because that's what he was told at the time, Judge Chin noted. “He was not paid anything separately for signing the agreement.”

Judge Chin also said that the “agreement appears to create an 'employee for hire' relationship, but the Agreement could not render Ghost Rider a 'work made for hire' ex post facto , even if the extrinsic evidence shows the parties intended to do so.” And there is little extrinsic evidence, the appeals court judge said, suggesting “that the parties actually intended to assign anything other than an initial term of copyright and much evidence to suggest they did not.”

The appeals court rejected Marvel's claim that Friedrich was barred by the three-year statute of limitations of the Copyright Act, by citing a genuine dispute over when Marvel repudiated Friedrich's ownership of the renewal rights and “first told Friedrich it intended to take sole credit for Ghost Rider.”

But in remanding the case, the circuit court also refused to disturb District Judge Forrest's refusal to grant summary judgment to Friedrich on the issue of ownership.

Charles Kramer of Riezman Berger P.C. in St. Louis, MO, argued for Friedrich. R. Bruce Rich of the New York office of Weil, Gotshal & Manges argued for the Marvel defendants.

Mark Hamblett is Staff Reporter for the New York Law Journal, an ALM affiliate of Entertainment Law & Finance .

A dismissed lawsuit over the rights to the Ghost Rider comic book character has been revived and sent back for trial. The U.S. Court of Appeals for the Second Circuit decided that Gary Friedrich, who claimed he created the flaming-skull motorcycle superhero, will get a chance to challenge Marvel Comics' claim that the character was the result of a collaborative process within Marvel. Gary Friedrich Enterprises LLC v. Marvel Characters Inc., 12-893.

The Second Circuit reversed the decision of Southern District Judge Katherine Forrest, who had granted summary judgment for Marvel and other defendants on Marvel's claim that it owned the renewal rights on the Ghost Rider character, which made its debut in 1972. District Judge Forrest found that Friedrich had assigned any rights to Ghost Rider when he executed a work-for-hire agreement in 1978, six years after the comic book first appeared. She dismissed Friedrich's claim and awarded $17,000 in damages to Marvel on its counterclaim for copyright infringement.

At the federal appeals circuit, Judges Ralph Winter, Denny Chin and Christopher Droney made the decision to send the dispute back to Judge Forrest by noting that the facts in the case were “heavily disputed.” Friedrich was a part-time freelance comic book writer when he presented to Marvel a written synopsis of the story of motorcycle stunt rider Johnny Blaze ' the Ghost Rider ' who sells his soul to the devil to save his adoptive father from cancer.

Friedrich met with Stan Lee, the head of Marvel, who agreed to publish Ghost Rider in the Marvel Spotlight series. While Friedrich assigned his rights to the character, the two never discussed renewal rights and did not put the agreement in writing. Friedrich gave the synopsis to a freelance artist to illustrate the comic book according to his specific instructions and the first issue appeared in Marvel Spotlight 5 in April 1972 bearing a copyright notice in favor of “Magazine Management Co. Inc., Marvel Comics Group.” The first page of the comic credited it as conceived and written by Friedrich.

The character was immensely popular, and Marvel launched a separate Ghost Rider series in 1973, written by Friedrich in what he acknowledged were “works made for hire.”

Over the next three decades, Marvel went on to publish more than 300 Ghost Rider comic book stories, on which it filed copyright registrations, and reprinted five times the Spotlight 5 story, on which it had not filed registrations. All of the Spotlight 5 reprints credited Friedrich.

Under the Copyright Act, the renewal copyright would have vested in Friedrich in 2001 as the original author. Marvel continued to profit from Ghost Rider , publishing reprints from Spotlight 5 , selling a Ghost Rider toy, making a movie released in 2007 and releasing a video game. Friedrich later claimed he was unaware of his renewal rights until 2005 or 2006.

Judge Forrest ruled for the company in 2011 and Friedrich went to the Second Circuit, where oral arguments were heard on Feb. 20, 2013. Circuit Court Judge Chin wrote the panel's 48-page appellate opinion.

Ambiguous on its Face

Under the Copyright Act, the initial copyright term lasts for 28 years before a renewal term of 67 years begins. Judge Chin said an author may reassign renewal rights, but there is a strong presumption against it, and, in Friedrich's case, the agreement he signed in 1978 was ambiguous on its face as to the definition of the “work” covered by the agreement, whether it included the work published six years before and whether there were any renewal rights.

The Second Circuit said that Marvel relied on a phrase in the agreement “grant[ing] to Marvel forever all rights of any kind and nature in and to Work.” But Judge Chin said it was unclear whether this applied to works created in 1972 and the agreement “could reasonably be construed as a form of work-for-hire contract having nothing to do with renewal rights.”

“When Friedrich signed the agreement, he was doing other freelance work for Marvel and he believed the agreement would only cover future work” because that's what he was told at the time, Judge Chin noted. “He was not paid anything separately for signing the agreement.”

Judge Chin also said that the “agreement appears to create an 'employee for hire' relationship, but the Agreement could not render Ghost Rider a 'work made for hire' ex post facto , even if the extrinsic evidence shows the parties intended to do so.” And there is little extrinsic evidence, the appeals court judge said, suggesting “that the parties actually intended to assign anything other than an initial term of copyright and much evidence to suggest they did not.”

The appeals court rejected Marvel's claim that Friedrich was barred by the three-year statute of limitations of the Copyright Act, by citing a genuine dispute over when Marvel repudiated Friedrich's ownership of the renewal rights and “first told Friedrich it intended to take sole credit for Ghost Rider.”

But in remanding the case, the circuit court also refused to disturb District Judge Forrest's refusal to grant summary judgment to Friedrich on the issue of ownership.

Charles Kramer of Riezman Berger P.C. in St. Louis, MO, argued for Friedrich. R. Bruce Rich of the New York office of Weil, Gotshal & Manges argued for the Marvel defendants.

Mark Hamblett is Staff Reporter for the New York Law Journal, an ALM affiliate of Entertainment Law & Finance .