Are The Avengers Soon to Meet the Supreme Court?

Note: Marvel and the family of Jack Kirby have since reached a settlement. Their joint statement is as follows: “Marvel and the family of Jack Kirby have amicably resolved their legal disputes, and are looking forward to advancing their shared goal of honoring Mr. Kirby’s significant role in Marvel’s history.”

By Dan Spinelli

Dan Spinelli is a freshman at the University of Pennsylvania studying Philosophy, Politics, and Economics (PPE).

The cross-media domination of Marvel Comics characters, evidenced by the recent blockbuster successes of The Avengers and X-Men: Days of Future Past, has reached another type of written media altogether: a writ of certiorari to the U.S. Supreme Court in the case of Lisa Kirby v. Marvel Characters. On September 29th, the Supreme Court will meet in conference to decide to what degree Marvel Comics holds copyright over notable characters such as Captain America and the X-Men should remain with the company. If the Court takes the case, as rumored in legal circles, the wide-ranging effect on work-for-hire artists and comic fans alike, will be—shall I say—uncanny.

This case has picked up steam since the petitioners applied for certiorari. The Court ordered Marvel (which had previously ignored the Kirbys’ petition) to file a reply brief, and numerous amici filed briefs in support of Jack Kirby, a former Marvel artist, including “the former director of the U.S. Patent and Trademark Office and the former U.S. register of copyrights, plus Hollywood guilds like SAG-AFTRA, the DGA and the WGA.” [1] While the district and appellate courts have both sided with Marvel, the petitioners present a compelling argument for granting certiorari, including a redefining of the longstanding Copyright Act of 1909. 

Under Section 26 of the Act, “The word author shall include an employer in the case of works made for hire.”  [2] As the Kirbys’ brief to the Supreme Court explains, the common-law meaning of “employer” contemporary to 1909 referred to a traditional salaried employee, as opposed to an independent contractor like Kirby. However, Marvel has argued that Kirby’s employment arrangement was not as an independent contractor, but as a work-for-hire employee—an argument upheld by the district and appeals courts respectively. 

Now, here’s where things get tricky: in 1978, Congress passed a new Copyright Act, effectively expanding the termination rights of creators, whose work they had previously lost the copyright to in unfair bargains. The rationale for the new law, according to the petitioners’ brief for certiorari to the Supreme Court, was that “Congress recognized that publishers held far greater bargaining power and that consequently, authors commonly agreed to one-sided grants which precluded them from sharing in the success of their works.” [3] 

Unfortunately for Kirby, the 1978 law precluded work-for-hire employees from reclaiming copyright to their works. The Second Circuit Court of Appeals invoked the 1978 Law when deciding against the Kirbys, invoking the so-called “instance and expense” test to prove that Kirby was in fact a work-for-hire employee. In using the instance and expense test, the Second Circuit Court explained, “The ‘instance’ prong turns on whether the publisher was ‘the motivating factor’ which induced the work’s creation. The ‘expense’ prong turns on whether the publisher paid ‘a sum certain’ for the freelance work.” [4]  According to the Court, Kirby’s published work was done at Marvel’s request and expense, nullifying his independent contractor status. [5]

The issues before the Supreme Court are thus: (1) whether the Second Court correctly invoked the instance and expense test, considering the supposed disavowal of said test in the case of Community for Creative Non-Violence v. Reid (1989), and (2) if the transfer of copyright from Kirby to Marvel violates the Takings Clause of the Fifth Amendment. The first issue seems to be the most prominent, because if the Court rules against the use of the instance and expense test, it would be hard-pressed to find any other way to label Jack Kirby’s work as anything but that of an independent contractor. And, if the Kirbys’ right to terminate is returned, well…someone with the last name of Kirby may be reaping in a pile of dough from the next Avengers movie. So, without further ado, let’s briefly address the arguments made by both parties, and see which side may come out on top if the justices vote to consider the case. 

What exactly is the criticism in CCNV that would reverse the 2nd Court’s use of the instance and expense test? In CCNV, the Supreme Court condemned overly broad applications of the instance and expense test, especially when applied to books and movies, as they are “usually prepared at the instance, direction, and risk of a publisher or producer.” [6] Furthermore, the Court expressly distinguished between the traditional “employer-employee” relationship (which Marvel claimed it had with Kirby), and the “employer-independent contractor” relationship (which the Kirbys claimed actually applied). The Kirbys also argue that the test is too vague to be used properly. [7]  The Second Circuit Court decided that CCNV did not outlaw use of the instance and expense test. Various commentators think this particular controversy will be the issue that convinces the justices to grant certiorari on September 29th, as the highest court in the land generally likes to clarify ambiguities in its own decisions as a guide for the lower courts. If the Court hears Kirby v. Marvel, it will have to determine whether the use of the instance and expense test makes legal sense, and whether or not its invocation to shift copyright back to Marvel violates the Fifth Amendment. 

In its reply brief, Marvel reiterates most of the same points made by the Second Circuit: the instance and expense test has been uniformly adopted by federal courts since its inception, and the Kirbys’ case does not merit certiorari as it merely concerns a singular case of statutory interpretation. Marvel uses the history of copyright law to its advantage, saying that the “Petitioners raise questions that have failed to divide the courts of appeals in the hundred-plus years they have applied the 1909 Act.” [8] In what appears to be a contentious argument if it befalls the Court, Marvel’s lawyers argue that CCNV’s redefinition of “work-for-hire” was specific to the confusion surrounding copyright law after the 1978 Act, and therefore did not affect the status of works (i.e. Kirby’s) under the 1909 law. [9] Finally, with little more than a flourish of their hand, Marvel flatly denies the Kirbys’ claim under the Takings Clause by using Justice Scalia’s own analysis that “a decision that clarifies property entitlements (or lack thereof) that were previously unclear…does not eliminate established property rights.” [10]


 [1] Gardner, Eriq. "Marvel Urges Supreme Court to Deny Review of Superhero Rights Dispute." Hollywood, Esq. The Hollywood Reporter, 14 July 2014. Web. 20 Sept. 2014. http://www.hollywoodreporter.com/thr-esq/marvel-urges-supreme-court-deny-718426.
[2] Section 26 of the 1909 Copyright Act, 17 U.S.C. § 26 (1976 Ed.). http://copyright.gov/history/1909act.pdf
[3] Kirby v. Marvel Characters, Inc. petition for cert. filed WL 1275190 (U.S. Marc. 24, 2014) (No. 13-1178)
[4] Ibid. 
[5] Second Circuit Court of Appeals case of Kirby v. Marvel. Decided on August 8, 2013. http://docs.justia.com/cases/federal/appellate-courts/ca2/11-3333/11-3333-2013-08-08.pdf
[6] Ibid.
[7] Community for Creative Non-Violence v. Reid (“CCNV”), 490 U.S. 730, 738-739 (1989). https://supreme.justia.com/cases/federal/us/490/730/case.html
[8] Petitioners’ Brief to the U.S. Supreme Court. 
[9] Reply Brief to the U.S. Supreme Court. Filed on 7/14/14. https://pmcdeadline2.files.wordpress.com/2014/07/marvel-kirby-brief-in-oppostion-scotus.pdf
[10] Ibid.
[11] Stop the Beach Renourishment, Inc. v. Florida Dept. of Environmental Protection, 560 US ---- (Docket No. 08-1151). (2010). https://supreme.justia.com/cases/federal/us/560/08-1151/opinion.html

Photo credit: Flickr user mikequozl