Things may be looking up for authors and comic book fans due to a provision of U.S. copyright law that is little known among the public at large. The U.S. Supreme Court is currently considering whether it will review the case of Lisa Kirby v. Marvel Characters. In the Kirby case, the children and heirs of comic book legend Jack Kirby were denied the right to terminate their father’s copyright grant to Marvel of works he created between 1958 and 1963—works that include such extremely profitable characters as the Avengers, X-Men, The Fantastic Four, and Thor.
What is this right to terminate? Briefly, it’s the right of an author to terminate his prior grant of copyright to another if the grant was made before Congress extended the copyright term.
The Copyright Windfall
Over the years, Congress has extended the term of copyright protection well beyond its limited initial term of 28 years plus a possible renewal term of another 28 years. These term extensions—which ultimately added another 39 years of copyright protection—provide a financial windfall to those who were granted assignment of an author’s rights before the term was extended. 
So, if an author granted its work to another party anytime prior to 1978, the copyright term at that time was a maximum of 56 years (28-year initial term plus 28-year renewal term). Thus, 56 years—and 56 years only—was the benefit traded away by the author. Today, however, the party who received that benefit would own an additional 39 years of copyright for which they did not bargain initially, making their benefit a total of 95 years of copyright ownership. To remedy this windfall, Congress enacted a statutory termination right, which allows authors to reclaim the rights to their works for the extra 39 years of the copyright term, regardless of any prior contracts or settlement agreements.
The only exception to the termination right is if a work was a “work made for hire.” And that’s the rub—there is a long history of case law interpreting pre-1978 “works made for hire” to include any work created at the “instance and expense” of a hiring party. Marvel relied on this test to argue, and the lower courts agreed, that Jack Kirby contributed his materials to Marvel as “works made for hire.” Thus, Marvel, not Mr. Kirby, was the author and Kirby (and his heirs) never had the right to terminate copyright.
Superheroes Fight Back
The courts have applied this “instance and expense” test in a way that presents a nearly insurmountable hurdle for authors to clear. The Kirby heirs call this court-created “instance and expense” test the “the Achilles’ heel” of the statutory termination right. After all, the termination provisions were enacted to enhance the rewards of creativity to authors, protect authors from their unequal bargaining positions, and “readjust the author/publisher balance.” Unless the “instance and expense” test is reversed, they argue, it will destroy the right granted to authors by the Copyright Act to revoke a prior copyright transfer and enjoy the fruits of their creative works during the extended term of copyright.
A Little Help From Their Friends
I first learned of Jack Kirby (and the passionate world of comic book fans who worship him and his work) when I represented another comic book legend and Jack Kirby’s one-time partner, Joe Simon, in a similar copyright termination case against Marvel. (That case settled, but Mr. Simon would have had to face the same “instance and expense” test hurdle if the case proceeded to trial.)
In 1940, Jack Kirby and Joe Simon together created the iconic Captain America. The cover of the first issue of Captain America comics famously featured Captain America “smashing thru” to knock out Hitler and save the day. It also featured Captain America’s “young ally Bucky.” “You gotta have a sidekick,” as Joe Simon would say.
Today, Jack Kirby and his heirs have garnered important allies, which include the former director of the U.S. Patent and Trademark Office and the former U.S. Register of Copyrights, as well as Hollywood guilds like The Screen Actors Guild-Federation of Television and Radio Artists, the Directors Guild of America and the Writers Guild of America. These allies have submitted amicus (“friend of the court”) briefs to the Supreme Court, arguing that they, too, believe the “instance and expense” test jeopardizes the statutory termination right of authors and is contrary to the Court’s prior rulings on “work made for hire.” That’s some impressive sidekick support!
The Supreme Court accepts only 100 to 150 out of the more than 7,000 cases that it’s asked to review each year. But this is an important case to watch, particularly since Justice Ginsberg seems to have expressed an interest.
I’m probably biased, but I’m rooting for the superheroes. Stay tuned for the outcome!