No Personal Jurisdiction In Sending Copyright Termination Notices By Stan Soocher

Much of the attention to the recent decision by the U.S. Court of Appeals for the Second Circuit on rights to key Marvel Comics characters focused on the opinion's “work for hire” analysis. On that, the appeals court ruled that the copyrights for such comic-book characters as “The Incredible Hulk,” “The X-Men” and “Spider-Man” belonged to Marvel Comics, rather than illustrator Jack Kirby. Marvel Characters Inc. v. Kirby, 11-3333. But the appeals court also addressed an important procedural concern in copyright termination litigation: the interplay between parties sending these notices and the jurisdictional reach of courts in which termination cases are filed.

Jack Kirby died in 1994. His four children sent copyright termination notices to Marvel in 2009 under '304(c) of the Copyright Act. In 2010, Marvel filed a declaratory action in the Southern District of New York, which found the copyrights at issue were works for hire, made at the instance and expense of Marvel.

Affirming that finding, the appeals court noted in part: “In the final analysis, then, the record suggests that both parties took on risks with respect to the works' success ' Kirby that he might occasionally not be paid for the labor and materials for certain pages, and Marvel that the pages it did pay for might not result in a successful comic book. But we think 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, is enough to satisfy the expense requirement.”

Though it decided the copyright issue, the Second Circuit ruled that the lower court incorrectly concluded it had personal jurisdiction over all four of Kirby's children. Lisa and Neal Kirby are California residents; Barbara and Susan Kirby live in New York. The appeals court determined that sending copyright termination notices to Marvel's New York offices didn't constitute “transacting business” in the state by Lisa and Neal within the meaning of New York's long-arm statute, N.Y.C.P.L.R. '302(a)(1).

“Lisa and Neal were not 'present' in New York ' whether physically or through some other continuous contact in connection with the underlying dispute in this case,” the appeals court noted, adding: “Neither were Lisa and Neal's communications part, or in contemplation, of a course of business dealings with Marvel. ' Here, by contrast, the Termination Notices bear no indication that the Kirbys were negotiating or cared to negotiate for or solicit Marvel's business.”

The appeals court emphasized that “perhaps most importantly,” the copyright termination notices at issue in the Marvel/Kirby dispute involved the federal Copyright Act, 17 U.S.C. '304(c), rather than a “privilege or benefit conferred by New York State law.”

Stan Soocher'is Editor-in-Chief of'Entertainment Law & Finance'and a tenured Associate Professor of Music & Entertainment Industry Studies at the University of Colorado's Denver Campus. He can be reached at'[email protected]'or via'www.stansoocher.com.

Much of the attention to the recent decision by the U.S. Court of Appeals for the Second Circuit on rights to key Marvel Comics characters focused on the opinion's “work for hire” analysis. On that, the appeals court ruled that the copyrights for such comic-book characters as “The Incredible Hulk,” “The X-Men” and “Spider-Man” belonged to Marvel Comics, rather than illustrator Jack Kirby. Marvel Characters Inc. v. Kirby, 11-3333. But the appeals court also addressed an important procedural concern in copyright termination litigation: the interplay between parties sending these notices and the jurisdictional reach of courts in which termination cases are filed.

Jack Kirby died in 1994. His four children sent copyright termination notices to Marvel in 2009 under '304(c) of the Copyright Act. In 2010, Marvel filed a declaratory action in the Southern District of New York, which found the copyrights at issue were works for hire, made at the instance and expense of Marvel.

Affirming that finding, the appeals court noted in part: “In the final analysis, then, the record suggests that both parties took on risks with respect to the works' success ' Kirby that he might occasionally not be paid for the labor and materials for certain pages, and Marvel that the pages it did pay for might not result in a successful comic book. But we think 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, is enough to satisfy the expense requirement.”

Though it decided the copyright issue, the Second Circuit ruled that the lower court incorrectly concluded it had personal jurisdiction over all four of Kirby's children. Lisa and Neal Kirby are California residents; Barbara and Susan Kirby live in New York. The appeals court determined that sending copyright termination notices to Marvel's New York offices didn't constitute “transacting business” in the state by Lisa and Neal within the meaning of New York's long-arm statute, N.Y.C.P.L.R. '302(a)(1).

“Lisa and Neal were not 'present' in New York ' whether physically or through some other continuous contact in connection with the underlying dispute in this case,” the appeals court noted, adding: “Neither were Lisa and Neal's communications part, or in contemplation, of a course of business dealings with Marvel. ' Here, by contrast, the Termination Notices bear no indication that the Kirbys were negotiating or cared to negotiate for or solicit Marvel's business.”

The appeals court emphasized that “perhaps most importantly,” the copyright termination notices at issue in the Marvel/Kirby dispute involved the federal Copyright Act, 17 U.S.C. '304(c), rather than a “privilege or benefit conferred by New York State law.”

Stan Soocher'is Editor-in-Chief of'Entertainment Law & Finance'and a tenured Associate Professor of Music & Entertainment Industry Studies at the University of Colorado's Denver Campus. He can be reached at'[email protected]'or via'www.stansoocher.com.