Copyright conflicts could jeopardize comicbook adaptations

As thousands converge on Comic-Con July 22-25, there’s a long gestating question that increasingly is in need of an answer in Hollywood: Just who owns the superheroes?

Studios have invested hundreds of millions — and have reaped billions — in bringing Superman, Spider-Man, the X-Men, the Incredible Hulk, the Fantastic Four and many more to life. But heirs to some of the characters’ creators are exercising a provision of copyright law that may let them win back some of the rights held by Marvel, DC Comics and others.

The litigation involves many of the crown jewels of the comicbook world. It has raised the possibility that studios in the not-too-distant future will have to contend with unwanted partners who will lay claim to a share of the proceeds of future comics, movies and TV series. The legal morass alone could have the paralyzing power of Kryptonite, tying up the heroes in court.

At the very least, it’s delivered plenty of murkiness, to the point where it makes a difference who drew the Incredible Hulk as gray (his first incarnation) and who later made him green.

Just take the case of Superman. A federal judge has split up key parts of the mythology. DC Comics and its parent Warner Bros. still control many key parts of the storyline developed after his debut in 1938, such as Superman’s ability to fly, Kryptonite and the character of Lex Luthor, not to mention international rights and trademarks.

But the heirs to co-creator and writer Jerry Siegel, according to a 2008 opinion from U.S. District Court Judge Stephen Larson, have a claim on such things as Superman’s distinctive blue leotard, a red cape and boots, his ability to leap tall buildings and repel bullets and to run faster than a locomotive, as well as other significant aspects of his origins. And there is still the other piece of the puzzle: The heirs to co-creator and artist Joe Shuster, Siegel’s partner, are seeking to reclaim their share of the copyright as of 2013, and if they do, that could give the two families a big say in the Man of Steel.

Aside from a radically realtered version of Superman, one side may have a tough time exploiting the character without the cooperation of the other. As Columbia Law School professor Jane C. Ginsburg puts it, “What this really means is that Warner Bros. and the heirs can stymie each other.”

Another suit, filed by the estate of artist Jack Kirby last year, involves a much greater breadth of material: They are seeking ownership or co-ownership in dozens of characters controlled by Marvel Entertainment, including Spider-Man, the Incredible Hulk, Iron Man and the Fantastic Four. Marvel and its new corporate parent, Disney, are challenging the claims, and it may end in a long showdown in court.

For the studios, their biggest enemy may not be Marc Toberoff, the aggressive attorney who is representing the heirs and reps to the Shuster, Siegel and Kirby estates, but the calendar. At the heart of the cases is a provision of a 1976 revision of the Copyright Act that gives creators and their heirs the ability, under certain conditions, to reclaim ownership of characters after a passage of time, regardless of whether they had assigned their rights over at some point in their careers.

Roughly speaking, they can terminate their prior grant of rights after the expiration of the original 56-year copyright term. There are a number of caveats, the chief among them that it does not apply to works “made for hire,” which is at the heart of the defense for many publishers and studios. It also applies to works before 1978.

Because so many characters were created in the post-war boomer era of the 1950s, when there was an explosion of creativity to cater to youth and teenage audiences, studios are bound to wrestle with estates and heirs for years to come.

If anything, they want clarity.

“These are incredibly smart people,” says attorney Carole Handler of Lathrop & Gage, who specializes in the area, having represented media companies. “You have people who understand these issues who are running the studios. They want to be comfortable, as they are making a motion picture, that they are the party that has a right to exploit a character.”

But there’s another provision of the Copyright Act that stands to complicate even further the ability of studios to capitalize on works of the past. That provision will let creators of works on or after Jan. 1, 1978, terminate deals (with some restrictions) in which they transferred ownership of material they created to a company. This is likely to set off “a flood of termination notices by artists seeking to regain rights previously granted to record labels, book publishers, advertising agencies and other content owners,” attorneys James Trigg and Sabina Vayner wrote in a recent article on Law Technology News.

This has been particularly true for songwriters, and is expected to create friction with record labels that depend on the exploitation of oldies. (Boomers, take note: the ’70s are well within that category.)

But for the time being, comicbook characters are at the forefront of the legal tussle, partly because it comes at the very moment that studios are mining the past for franchise fortunes.

The decades-old stories of comic creators selling off their rights for a pittance is the stuff of fan lore. Likewise, the legal machinations are fast attaining a compelling narrative of their own. For example, Siegel and Shuster created Superman in the mid-’30s and sold off the rights a few years later, anxious to get it published, and later signed settlement agreements with DC Comics reaffirming the company’s rights. Repped by lawyer Toberoff, the Siegel heirs were able to recapture the copyright to Action Comics No. 1, published in 1938, and other early strips and comicbooks. “Superman’s name, his alter ego, his compatriots, his origins, his mission to serve as a champion of the oppressed, or his heroic abilities in general, do not remain within [DC Comics and Warner Bros.'] sole possession to exploit,” Larson wrote in his decision. DC Comics and Warner Bros. are appealing Larson’s ruling, and also challenge the Shuster estate’s efforts to obtain rights in 2013.

The latest twist in the Superman case came in May, when Warner Bros.’ new legal team, led by Daniel Petrocelli, filed suit against Toberoff claiming that he had wrestled a stake in the heirs’ claimed rights for himself, and that he had essentially poisoned the studios’ relationships with the heirs to gain his own control over the copyrights.

Toberoff denies this, calling the charges “gutter tactics” designed to intimidate the heirs into selling back rights they have recaptured at “a distressed price.” He’s hired Richard Kendall, a prominent attorney who has represented major studios and networks, to represent him.

The suit reflects just how hard-fought the battle has become, and how intent the studio is in clearing the way for future Superman projects after 2013. Warner Bros. has been trying to line up key talent to get a Man of Steel project off the ground well before then.

The Kirby heirs’ claims against Marvel and Disney raise even greater entanglements.

Last September, just after Disney struck a deal to acquire the comic giant, Toberoff, on behalf of the Kirby heirs, sent 45 notices of copyright termination to Marvel, Disney and other studios that have been using the characters (films, TV, theme-park attractions, etc.), with some of his rights being recaptured as early as 2014.

Included are characters that Kirby created or co-created between 1958 and 1963, such as the Fantastic Four, X-Men, Iron Man, Spider-Man, the Incredible Hulk, Thor and the Avengers, but also the work in more than 200 comicbooks.

When the works first appeared, the landscape for comics was far different. As the heirs point
out in their suit, Marvel’s predecessor, Atlas Comics, had a tiny office and was having a tough go of it. In part because of government concerns in the mid-1950s over juvenile delinquency and a system of self-censorship via the Comics Code Authority, there was a severe contraction in the business, and plenty of pressure to come up with something new.

As such, a big part of the dispute in the Kirby case has to do with just how he produced his work for publication. Marvel claims simply that it was a “work for hire,” negating his heirs’ efforts to recapture copyright.

James W. Quinn, who is representing Marvel, plans to file a motion for summary judgment following the discovery phase. “This is not the Superman case,” he says. “This is as clear as can be that these are works made for hire.”

The heirs, however, claim that Kirby worked “solely on a freelance basis out of his own home,” and was not paid a fixed salary or wage.

Each case is so intricate, even the definition of “work for hire” has been in dispute. There’s the case of Captain America. Joe Simon and Kirby were listed as authoring the first Captain America comicbook in 1940, and Simon long disputed the ownership of the character until he made a settlement with Marvel in 1969, stating that it was indeed a “work for hire.” But that was before the 1976 revision of the Copyright Act. As Simon later sought to recapture the copyright, he argued that his settlement agreement was no longer valid, and in 2002, the 2nd Circuit Court of Appeals agreed with him. Their reasoning: You can’t just say that something is a “work for hire” after the fact, if there is evidence that it isn’t.

Eventually, Simon settled with Marvel.

The question now is whether many of the current suits will be settled, or whether they will represent long-term, significant threats to the clarity of ownership for the characters.

The intent of the 1976 revision of the Copyright Act was to give creators an opportunity to share in the rewards of their creations after they reached their full potential. The rationale was that it was all too common for eager artists, anxious to get their material published, to sign away rights for little money so early in their careers.

Even so, as the litigation proves, claiming ownership via the Copyright Act isn’t as easy as just serving notice and reaping the rewards. There’s a five-year window to do it, and the courts have been sticklers to following the letter of the law.

The heirs to Edgar Rice Burroughs, for instance, sought to recapture their rights to Tarzan in 1978. But according to a 2nd Circuit Court of Appeals decision in 1982, that could not stop MGM from exploiting the character because the heirs, in their notice of termination, failed to include ownership claims on five Tarzan stories. The issues were far from settled, and even in a concurring opinion, Judge Jon O. Newman hinted at the prospect of dueling versions of a character.

“The upshot is that a victory by the heirs in court will translate into higher licensing fees and royalties for those heirs,” says Jack Lerner, a USC assistant professor of law and director of the school’s Intellectual Property and Technology Law Clinic. “And it is going to translate into more litigation and legal fees for both sides.”

Often lost in the legal tangle is the motive of the author or creator.

As Columbia professor Ginsburg says, “The idea of the termination right is not to wreck the business model of the intermediary exploiter; it is to give the author the chance to make more money from the work.”

The implications for the cases are, in the end, about more than who gets what. They are about how, when and in what form the characters get seen.

Studios have undoubtedly mastered the delivery of superheroes to mass audiences, in ways that their creators could not have imagined.

“This is what they have done,” notes Handler, who also has taught a class at USC on characters and copyright. “They have years of experience in exploiting these characters and turning things out. It is probably much more in the public interest that they continue to do that.”

The consumer, she says, has an interest as well in seeing the heroes in further adventures.

“You are dealing with such worldwide recognition, and even a form of international communication, in what these characters bring to the world.”

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SUPER SPLIT

With the heirs to the creators of “Superman” reclaiming copyright, ownership of key parts of the character’s mythology may be split.

A federal district court judge in 2008 already determined that the estate of co-creator Jerry Siegel recaptured its share of copyrights on Action Comics No. 1 and other early comics and books, while DC Comics still retains other elements of his story and international rights and trademarks. The estate of co-creator Joseph Shuster is seeking the other share of those early works.

Based on the judge’s decision, here’s a sampling of how the ownership is shaking out:

Siegel and Shuster estates: Superman’s origins from another planet; his blue leotard, red cape and boots; his superhuman ability to leap tall buildings, repel bullets and run faster than a locomotive

DC Comics and Warner Bros.: Superman’s ability to fly, characters Lex Luthor, Jimmy Olsen, General Zod and Brainiac, Kryptonite

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