More after the jump.
If the legal suspense is killing you, I can tell you what the tests are without applying them. Note, that I am NOT PROVIDING LEGAL ADVICE OR OPINION OF ANY KIND. Under 17 U.S.C. § 101 the definition of work for hire is:
A "work made for hire" is— (1) a work prepared by an employee within the scope of his or her employment; or (2) a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.
So, while a lot of the discussion out there focuses on the second prong (whether there was a writing, in which, Jack Kirby signed away his ownership of the characters), I think the case will turn on the first prong. Whether Kirby was an employee. Quite coincidentally, I have spent the last few days preparing to teach my law school class on Unincorporated Business Entities Class and the first topic involves the difference between interdependent contractor and employees.
Whether someone is employee for the purposes of the work made for hire doctrine is determined under a facts and circumstances test developed under the the common law (which is fancy way of saying courts made the rules with cases, instead of lawmaker making the law through statutes) The Supreme Court in a case called Community for Creative Non-Violence v. Reid 490 U.S. 730 (1989) listed some of the following factors:
In determining whether a hired party is an employee under the general common law of agency, we consider the hiring party's right to control the manner and means by which the product is accomplished. Among the other factors relevant to this inquiry are the skill required; the source of the instrumentalities and tools; the location of the work; the duration of the relationship between the parties; whether the hiring party has the right to assign additional projects to the hired party; the extent of the hired party's discretion over when and how long to work; the method of payment; the hired party's role in hiring and paying assistants; whether the hiring party is in business; the provision of employee benefits; and the tax treatment of the hired party. See Restatement § 220(2) (setting forth a non-exhaustive list of factors relevant to determining whether a hired party is an employee)."
The Supreme Court took up the issue again in 1992, in Nationwide Mut. Ins. Co. v. Darden (503 U.S. 318 (1992)). There the COurt relied on the following factors (note that no one factor is determinative, which is called a "totality of the circumstances" analysis):
- Skill level of the job provided.
- Source of the equipment and tools used by the individual.
- Location where the work was done.
- Duration of the employment relationship.
- Whether the employer is free to assign additional projects to the employee.
- Employee's control of his or her own work schedule.
- Method of payment.
- Employee's role in hiring and paying assistants.
- Whether the work is part of the regular business of the employer.
- Whether the employer is in business.
- How employee benefits are conducted.
- Tax treatment of the employee.
Here are the 20 factors.
1. Instructions. Workers who are required to comply with others’ instructions about when, where, and how they are to work are ordinarily employees.
2. Training. Training workers indicates that employers exercise control over the means by which results are accomplished.
3. Integration. When the success or continuation of a business depends on the performance of certain services, the workers performing those services are subject to a certain amount of control by the owners of the businesses.
4. Services rendered personally. If services must be rendered personally, employers control both the means and the results of the work.
5. Hiring, supervising, and paying assistants. Control is exercised if employers hire, supervise, and pay assistants.
6. Continuing relationships. Continuing relationships between workers and employers indicate that employer-employee relationships exist.
7. Set hours of work. The establishment of set hours of work by employers indicates control.
8. Full-time required. If workers must devote full time to employers’ businesses, employers have control over workers’ time. Independent contractors are free to work when and for whom they choose.
9. Doing work on employers’ premises. Control is indicated if the work is performed on employers’ premises.
10. Order or sequences set. Control is indicated if workers are not free to choose their own patterns of work but must perform services in the sequences set by the employers.
11. Oral or written reports. Control is indicated if workers must submit regular oral or written reports to employers.
12. Payment by hour, week, or month. This points to employer-employee relationships, provided that this method of payment is not just a convenient way of paying a lump sum agreed on as the cost of a job. Independent contractors are usually paid by the job or on straight commission.
13. Payment of business and/or traveling expense. Employers paying workers’ expenses of this nature shows that employer-employee relationships usually exist.
14. Furnishing tools and materials. If employers furnish significant tools, materials, and other equipment, employer-employee relationships usually exist.
15. Significant investments. Workers are independent contractors if they invest in facilities that are not typically maintained by employees (such as an office rented at fair market value from an unrelated party). Employees depend on employers for such facilities.
16. Realization of profits or losses. Workers who can realize profits or losses (in addition to profits or losses ordinarily realized by employees) they are independent contractors. Workers who cannot are generally employees.
17. Working for more than one firm at a time. If workers perform services for a number of unrelated persons at the same time, they are usually independent contractors.
18. Making services available to the general public. Workers are usually independent contractors if they make their services available to the general public on a regular and consistent basis.
19. Right to discharge. The right of employers to discharge workers indicates that the workers are employees.
20. Right to terminate. Workers are employees if they have the right to end their relationships with their principals at any time without incurring liability.
The 11 Factor test weighs and balances 11 factors in three groups (behavioral control, financial control, and the parties' relationship) to determine if an independent contractor should be reclassified as an employee. That test can be found here on page 6.
Other sites have had heated debate in weighing these factors. Some found them to be in Marvel's favor and others have found them to be in Kirby's favor. I hope, when we get more facts. To apply these tests to the Kirby facts.
Until then here are the press releases that came out Friday from both sides.
NEW YORK--Subsidiaries of Marvel Entertainment, LLC today filed suit in federal court in Manhattan seeking a declaration that notices of termination of copyright assignments served by the heirs of long-time Marvel artist Jack Kirby are invalid.
Last September, attorneys acting for the Kirby heirs sent 45 notices to Marvel seeking to terminate purported assignments by Kirby of copyright interests in Marvel Super Hero characters such as X-Men and Fantastic Four. Kirby's heirs are claiming that from 2014 to 2019 various rights supposedly transferred to Marvel will revert to them. The Marvel lawsuit asserts that those claims are baseless because all of Kirby's contributions to Marvel's publications, like those of other comic book writers and artists of the same period, were works made for hire, making Marvel the sole owner of the copyrights.
"The notices filed by the heirs are an attempt to rewrite the history of Kirby's relationship with Marvel," said John Turitzin, Marvel's General Counsel. "Everything about Kirby's relationship with Marvel shows that his contributions were works made for hire and that all the copyright interests in them belong to Marvel."
Under federal copyright law, works that were created at the "instance and expense" of a publisher during the time Kirby was a creator for Marvel were "works made for hire" and owned by that publisher. If, for example, Marvel gave a writer or artist an assignment to create a comic book story populated with new characters or to illustrate a comic book story with depictions of its characters - and paid the writer or artist for carrying out the assignment - the publisher, not the writer or artist, would own the copyright. All of Kirby's contributions to Marvel comic books the heirs are claiming for themselves fall into this category.
Marvel editors determined which publications Kirby would work on, just as they did with all the other artists and writers engaged to work on the publications, and always retained full editorial control. In addition, Kirby was paid for his contributions. As a result, all of Kirby's contributions were solely owned by Marvel, which was standard practice in the comic book publishing industry.
Kirby's situation at Marvel is completely different from the facts that gave rise to the Superman litigation. The initial Superman story was written and illustrated by its creators well before they had any business relationship with its ultimate publisher.
"The purpose of the lawsuit filed today is simply to set the record straight and obtain a judicial declaration that the Kirby termination notices have no effect," said Mr. Turitzin.
MARVEL SUES THE CHILDREN OF LEGENDARY COMIC BOOK CREATOR JACK KIRBY
New York, NY, January 8, 2010, Marvel Entertainment, LLC today sued the four children of legendary comic book creator, artist and writer Jack Kirby ( 1917-1994) for exercising their rights under the Copyright Act to recapture their father's copyrights. The prolific Jack Kirby co-authored Marvel's most famous and valuable properties including X-Men, The Fantastic Four, The Incredible Hulk, The Mighty Thor, Iron Man, Magneto, Spider-Man, Dr. Doom, The Avengers, and Nick Fury.
Kirby, known among comic book fans as Jack "The King" Kirby, is today one of the most celebrated comic book talents of all time, widely lauded for his ground-breaking work in The New York Times and by creative talent such as Pulitzer prize winner, Michael Chabon. Yet Jack Kirby and his family have never received even the slightest share of the great fortune his co-creations have generated for Marvel. Sadly, Jack died without proper compensation, credit or recognition for his lasting creative contributions.
On September 16, 2009, the Kirby children availed themselves of their rights to recapture Kirby's copyrights in his work by serving Notices of Termination under the 1976 Copyright Act on Marvel Entertainment, Inc., The Walt Disney Company, and others, relating to the numerous comic book characters and stories authored or co-authored by Jack Kirby.
The fundamental purpose of our copyright laws is to provide economic incentives for authors to create as this enhances both our economy and culture. Congress instituted the termination provisions of the Copyright Act to rectify the obvious imbalance of power between authors and publishers, and to provide authors and their families with the opportunity to financially benefit from the enhanced value of their works over time. Under U.S. copyright law, creators and their heirs are therefore able, after a lengthy waiting period, to statutorily " terminate" old copyright grants, thereby recapturing such copyrights for their eventual benefit.
The Kirby terminations become effective beginning in 2014, after which the Kirby family will be entitled, at long last, to share in the profits generated by Jack Kirby's co-creations.
In suing the Kirby children, Marvel now claims that all of Jack Kirby's creative efforts and work were merely "work-made-for-hire," and that Marvel is the real "author" of such works under the 1909 Copyright Act. It is a standard claim predictably made by comic book companies to deprive artists, writers, and other talent of all rights in their work.
Marvel made the same "work for hire" claims in the case of Marvel Characters v. Simon, 310 F.3d 280 (2d Cir. 2002) regarding Captain America, and lost in the Second Circuit Court of Appeals.
The truth is that Jack Kirby was his own man. Like so many artists in the fledgling comic book industry of the late 1950's/early 1960's, Kirby worked with Marvel out of his own house as a free-lancer with no employment contract, no financial or other security, nor any other indicia of employment.
Kirby's wonderful creations, which leapt from the page, were not Marvel's " assignments," but were instead authored by Kirby under his own steam and then published by Marvel. It was not until 1972 that Kirby by contract granted Marvel the copyrights to his works. It is to this grant that the Kirby family's statutory notices of termination apply.
The Kirby children intend to vigorously defend against Marvel's claims in the hope of finally vindicating their father's work.
The Kirby family is represented by intellectual property attorney Marc Toberoff of the Los Angeles law firm, Toberoff & Associates, P.C., which succeeded to recently recapture for the family of Jerry Siegel, his original copyrights in a character he co-created and named Superman.