- District court holds that plaintiffs, heirs of one of the co-creators of the Superman character, successfully terminated certain prior grants in copyrights and recaptured the rights to several Superman-related works from the 1930s and 40s, including portions of Superman comic books and two weeks’ worth of daily newspaper strips; however, the court ruled that the remaining Superman material at issue in the litigation was created as a work made for hire under the Copyright Act of 1909, and that ownership of such material remains solely with defendants
The Copyright Act of 1976 does not allow an author (or his or her heirs) to terminate a prior grant of copyright in a work made for hire, and thus the primary issue in this ruling was whether four distinct groups of works created by Siegel, by himself or with others, constituted “works made for hire” under the Copyright Act of 1909, the law in effect at the time they were created. While the 1909 Act did not define the terms “work made for hire” or “employer,” courts have analyzed whether works created by independent contractors or employees were ones made for hire using what is known as the “interest and expense” test, which requires the evaluation of three factors: (1) at whose instance the work was prepared; (2) whether the hiring party had the power to accept, reject, modify, or otherwise control the creation of the work; and (3) at whose expense the work was created.
Applying the interest and expense test to the Superman material, the court first held that material created by Siegel prior to a March 1, 1938, grant of rights from Siegel and his co-creator to Detective Comics, which was later published by Detective Comics, was not a work made for hire. However, the court also held that a paragraph drafted by Siegel prior to March, 1938, which described future Superman exploits, merely set forth non-copyrightable “ideas,” and did not suggest that later fuller expressions of the concepts contained therein should be deemed to have been created prior to the March 1, 1938, grant. Based on its analysis, the court held that, in addition to works set forth in earlier orders, works that were created prior to March 1, 1938, and were subsequently published in Action Comics No. 4 and pages three through six of Superman No. 1 were not works made for hire, and were subject to termination.
The court next determined that works created after the March 1, 1938, grant of rights, but before Siegel and his co-creator entered into an employment agreement with Detective Comics dated September 30, 1938, were nevertheless works made for hire. Applying the “instance and expense” test, the court concluded that the creation of the material in question was solicited by and done at the instance of the defendants, finding that “Detective Comics, as the copyright holder of a pre-existing work, approached the artists and asked that they create works derived from that pre-existing material on a regular basis, and then paid the artists for that derivative work.” The court also determined that all comic book material produced by Siegel and his co-creator after they signed the September 30, 1938, employment agreement was clearly work made for hire, and thus was not subject to termination.
The court stated that the final category of works, newspaper strips published from 1939 to 1943, was the most difficult, largely because of the involvement of a third party, the McClure Publications newspaper syndicate, and because the newspaper strips were derivative works. The court applied the instance and expense test and determined that newspaper strips created following the execution of a September 22, 1938, syndication agreement were works made for hire and therefore not subject to termination, because “the artists did not independently decide to create the newspaper strips; rather, they did so because they were contractually obligated to do so and because they expected to receive compensation for their creations,” and because McClure retained editorial supervision rights of the material. The court held that whether the ultimate employer was McClure or Detective Comics was irrelevant, because the present inquiry concerned only whether the artists created the newspaper strips within the scope of their job duties.
However, the court also held that two weeks’ worth of newspaper strips, which were created before the parties signed the syndication agreement, were not works made for hire. The defendants argued that the plaintiffs were not entitled to terminate the grant of these two weeks’ worth of newspaper strips because the works had fallen into the public domain because of faulty copyright notices, but the court rejected this notion, finding that the artists had assigned the entire copyright in this material prior to the material’s publication. The court also rejected the defendants’ contention that plaintiffs’ failure to serve a copy of the termination notice on McClure rendered the termination notice invalid, because all of McClure’s rights in the material were assigned to Detective Comics in 1944, and Detective Comics’ successors were served with the termination notice. The court ruled that service of the termination notice need only be made upon the last grantee in the chain of title of which those serving the notice are reasonably aware.
Finally, the court concluded that the plaintiffs’ failure to list the initial two weeks’ worth of newspaper strips in the termination notice did not invalidate the notice as to those strips (which contained “potentially valuable copyright elements [including] material in which Superman’s home planet of Krypton is named, Superman’s Krypton name is revealed, and the circumstances surrounding Krypton’s destruction are revealed”) in light of the vast number of works plaintiffs sought to recover (thousands) and the existence of a catch-all phrase in their notice.