by Jeff Trexler
Last year a federal court in New York denied the Kirby heirs’ attempt to claim the copyright in Spider-Man and other Marvel properties. Why, then, is their lawyer betting the future of the Siegel lawsuit on the same losing arguments?
Over the past few years, Marc Toberoff has become public enemy #1 for corporate copyright holders. His lower court victory in the Siegel case was a legal landmark, not least of all because it could inspire other writers and artists to sue to regain their own creations. This is a prime consideration in DC’s decision to make Toberoff the central target of recent court filings–taking Toberoff off the board could also complicate a Shuster estate lawsuit and dissuade other creators from filing new claims.
Given the high stakes, Toberoff’s appellate brief takes a rather interesting approach. As DC notes in its most recent filing, Toberoff’s filing does not appeal certain core rulings pertinent to the Siegel interest in the property, such as DC’s retention of foreign rights and the copyright in the promotional ads. This arguably means that Toberoff has waived the right to challenge these rulings, handing DC a decided victory in key aspects of the case. Instead, Toberoff stakes the entire appeal on the issue of whether Siegel’s work from 1938 to 1943 was truly work-for-hire.
The limited span of this claim–the focus on Superman & Action comics (plus Superman newspaper strips) up to five years from the publication of Action Comics #1–reflects a five-year termination window by Section 304 of the 1976 Copyright Act. Citing this provision, the lower court held that the Siegel’s right to terminate grants of copyright was limited to a five-year period from April 16, 1938 through April 16, 1943, which includes Action Comics 1-61, Superman 1-23 and the Superman strips prepared for or published by the McClure syndicate through April 16, 1943.
However, the lower court ruling did not automatically give the Siegels actually all of the material within the five-year window. The emphasis on work-for-hire in Toberoff’s appellate brief reflects the lower court’s determination that the Siegel heirs could reclaim only a small portion. In two major rulings in 2008 and 2009, the lower court found that the Siegel heirs could terminate the transfer of copyright in Action Comics #1, #4, select pages of Superman #1 and the first two weeks of newspaper strips–in short, the only material prepared prior to the sale of Superman to DC. Under the terms of Siegel’s 1938 employment contract and its subsequent revision, the remaining material was work-for-hire–and because DC was the corporate author, there was no copyright transfer for the Siegel heirs to terminate.
To persuade the appellate court otherwise, Toberoff attacked primarily on two fronts. One was to assert that Jerry Siegel wrote the material in Action #2-6 prior to his employment agreement with DC, which made him its original co-owner and transferor. Toberoff exploits the six month gap between the sale of Superman in March, 1938 and the employment agreement signed in September. His appellate brief also cites a paragraph that Siegel wrote pitching several of his character’s future exploits, which the lower court characterized these as uncopyrightable ideas.
As for the rest of the material within the five-year termination window, Toberoff reiterates an argument that has long been central his legal filings for both the Siegel and Kirby heirs. As you may recall, the crux of the Kirby claim was the assertion that Jack Kirby was an independent contractor whose Marvel product was not work-for-hire. Because Jack Kirby (allegedly) owned the original copyright in many of Marvel’s leading characters and transferred this material to Marvel, his heirs claimed that they could terminate these transfers and take the characters back.
In the Siegel appeal, Toberoff uses similar arguments regarding work-for-hire that he used in the Kirby case. According to Toberoff, Jerry Siegel’s work was not actually work for hire. Instead, Siegel was an independent contractor selling his own property to DC. Indeed, the similarity in legal arguments is so pronounced at times that it feels as if you are reading Toberoff’s account of Jack Kirby’s work with Jerry Siegel cut and pasted into it, calling to mind DC’s infamous decision to put a different face on Kirby’s Superman.
The net effect of this reasoning is that the Ninth Circuit should see Jerry Siegel in a position analogous to that of Neil Gaiman in the Medieval Spawn case. Because Siegel was an independent creator offering original new elements to pre-existing copyrighted material, Siegel at the very least co-owned all of the original material contained in these derivative works, such as Lex Luthor, Toyman and Superman’s enhanced powers. Accordingly, Toberoff argues, the court should expand Siegel Larson’s copyright interest to include everything within the five-year termination window.
Maybe this will prove to be a winning strategy–I’ve seen courts do stranger things–but it’s a risky gambit.
Unlike Gaiman, Siegel and Shuster were working under rather detailed employment contracts. These written agreements expressly provided that Detective Comics, Inc. was sole owner, exclusive publisher and final editor of all of the Superman material that Siegel wrote. Whereas the Gaiman case had a direct concession of Gaiman’s co-authorship, we arguably have direct documentary evidence that DC owned, controlled, and produced all of the disputed Superman material and related continuity.
What makes the decision to stake the case on Siegel’s alleged status as an independent contractor particularly daring is the recent failure of this argument in the Kirby case. If Toberoff were to prevail, the ruling could buttress his appeal in the Kirby case, either in the Second Circuit or possibly even by creating a circuit split for the Supreme Court to resolve.
That said, as the judge noted in the Kirby case there’s an almost irrebuttable legal presumption that a copyright owner commissioning material under the 1909 Act was the author of the work for copyright purposes. While splits between the Second and Ninth Circuits on the interpretation of copyright law do exist, it is rather bold to expect that the Ninth Circuit will base a sweeping assertion of creative autonomy on a case record replete with documentation of DC’s ownership, financial commitment and editorial supervision.
Of course, another big difference from the Kirby case is that no court has ever awarded the Kirby heirs a copyright interest in the material he created. The Siegel heirs have something to lose–they vindicated their father by winning a historic lawsuit in the lower court, and the appeal could take that away. In my next post, we’ll take a closer look at how DC is trying to preserve its share of the Superman property–and, if possible, win everything back.