Termination of Transfer of Copyright and the Estate of Jack Kirby

Peter Waldkirch is a second year LL.B. student at the University of Ottawa.

Jack Kirby (1917-1994) is well-known to comic book fans as one of the most influential artists and authors in the history of the industry, particularly noted for his groundbreaking work with Marvel Comics during the 1960s. Kirby had a hand in the development of many of Marvel’s most valuable properties, including the X-Men, The Fantastic Four, Iron Man, and many others. Recently, however, his estate has been making waves of a different sort. The estate, represented by Marc Toberoff, has launched the opening salvos in a battle to reclaim ownership of the characters developed by Kirby and now owned by Marvel by filing numerous notices of termination of copyright transfer.

The claims revolve around s. 304(c) of the US Copyright Act. This complicated mechanism was first introduced in the 1976 copyright overhaul in an effort to balance the interests of the authors of copyrighted works and the owners of those works. Prior to 1976 copyright in the US lasted for an initial period of 28 years with the possibility of renewing the copyright for a further 28 years, for a grand total of 56 years. The 1976 reforms introduced a copyright duration of the lifetime of the author plus 50 years, but for works authored before 1978 (when the new Act took effect), the 28 year renewal term was extended to 47 years, for a maximum of 75 – effectively, a 19 year extension.

From some authors’ perspective, this posed a problem. It was argued that this was an unfair windfall for publishers who had received a transfer of copyright prior to the extension, since the original transfer would have been negotiated on the assumption of a 56 year protection period, not 75. Congress accepted this, and so created a mechanism by which the author (or heirs) could reclaim the copyrights for the balance of the extension once the original period would have expired. When copyright protection was extended yet again in 1998 (adding another 20 years for works published before 1978 for a new total of 95 years of protection), Congress included a similar termination process, leading to the current s. 304(c).

The most prominent use of these powers so far has concerned another comic-book superhero: Superman. Superman was created by Joe Shuster and Jerry Siegel in 1932 and sold to (what would become) DC Comics for $130 and vague promises of future work. The pair would come to rue the deal, and sued twice in an effort to reclaim ownership of the copyrights (first in 1947 and then in 1973), losing both times. In 1999 Siegel’s estate filed a notice of termination of transfer, which has resulted in much recent litigation (in which the Siegel estate has been represented by Marc Toberoff). In 2004 the Schuster estate followed suit. The dust hasn’t fully settled yet, but following the conclusion of a recent round in the courtroom looking into the accounting of the most recent Superman film, Mr. Toberoff claimed that “in 2013, the Siegels, along with the estate of Joe Shuster, will own the entire original copyright to Superman, and neither DC Comics nor Warner Bros. will be able to exploit any new Superman works without a license from the Siegels and Shusters.”

There are important differences between the Siegel/Schuster and Kirby claims, however. There was no doubt about the authorship of Superman, or that he was created outside of any employment relationship. Works for hire, however, are explicitly excluded from s. 304(c), which will certainly lead to a close examination of Kirby’s working relationship with Marvel. Crucially, there is also uncertainty regarding the authorship of many of the characters in question. Kirby collaborated with other artists and writers (most notably Stan Lee), and untangling who did what will prove challenging. The most controversial claim amongst comic fans is that for Spiderman, who has traditionally been attributed to Stan Lee and Steve Ditko.

The notices filed by the Kirby estate are just the first step in the termination process. The estate won’t be able to actually receive ownership of any characters until 2017 (when the original 56 year periods will start to run out). Until then, neither side need take any steps. What is clear is that big money is involved. Just a week before the notices were sent out, Disney announced that it was buying Marvel for $4 billion. The X-Men and Iron Man are two of the hottest contemporary movie franchises. With such high stakes, it seems certain that we are only at the beginning of what will be a long and hard-fought battle.