I recently
wrapped up a lengthy series on the battle over the rights to Superman. You can find the first part of the series here. Now, it only makes sense to follow it up by
discussing some other high-profile cases involving the ownership of comic book
characters. First up, we are going to take a look at Joe Simon’s efforts to
reclaim ownership of Captain America.
In 1940,
Timely Comics, the predecessor of Marvel Comics, published the first issue of Captain America Comics debuting the titular character.[1]
Simon and Jack Kirby were the attributed authors of the book.[2] Simon would continue working on the comic
through the tenth issue.[3]
According
to Simon, and recounted by the Court, he “sold the Captain America stories to
Timely for a fixed page rate plus a twenty-five percent share of the profits of
the comic books.”[4] He also
maintained he worked on the first 10 issues as a freelancer. There was no
written contract between the parties, but Simon acknowledged he orally assigned
to Timely his rights to Captain America.[5]
In 1967,
Simon filed a lawsuit in the Southern District of New York.[6] He
sought the court to declare he had the sole right to the copyright renewal term
under the Copyright Act of 1909.[7] A
year prior, he also filed a claim in New York state court claiming Timely’s use
of Captain America was unfair competition and misappropriation of his state law
property.[8]
After two years, the parties agreed to a settlement.[9] As
part of the settlement, Simon acknowledged his contributions to the work were
done as a work made for hire, and he assigned “‘any and all right, title and interest he may have or control or which
he has had or controlled in [the Works] (without warranty that he has had or
controlled any such right, title or interest)’” to Timely.[10]
As with Superman, the change in law
brought about by the 1976 Copyright Act gave Simon another shot at reclaiming
the rights to Captain America. The new law gave authors the ability to
terminate a transfer of copyright after a set number of years had passed, and
an additional provision of the law stated a termination “may be effected
notwithstanding any agreement to the contrary, including an agreement to make a
will or to make any future grant.”[11]
In December 1999, Simon filed termination
notices with the Copyright Office.[12]
He claimed he independently created Captain America and authored the first
issue and he did so as “‘neither an employee for hire nor a creator of a work
for hire.’”[13] Marvel filed a lawsuit
seeking to have the termination notices invalidated and reaffirming Marvel as
the owner of Captain America.[14]
The district court found for Marvel based upon the settlement agreement signed
in 1969, in which Simon acknowledged Captain America was a work made for hire.[15]
On appeal to the Second Circuit, the
court found Simon was not prevented from litigating the issue of whether he
created Captain America as a work for hire because of the previous settlement
agreement. It also found that the prior settlement agreement retroactively
acknowledging Captain America as a work made for hire is “an ‘agreement to the
contrary’ under § 304(c)(5) of the 1976 Act.”[16]
The court’s decision paved the way for Simon to relitigate the issues
surrounding the authorship and creation of Captain America at the district.[17]
The case settled in 2003 with Simon once again assigning all of his rights to
Captain America to Marvel.[18]
Simon’s battle with Marvel highlights two important things. First,
using contracts with agreed upon and negotiated terms at the beginning of the
relationship would have solved some of the problems. Second, creators should
use the legal means available to them to make sure they are compensated
adequately for their creations. Even though Simon did not reclaim ownership of
Captain America, he was able to leverage his rights under the law to receive
additional compensation for his creation.
[1] Marvel
Characters, Inc. v. Simon, 310 F.3d 280, 282
(2nd Cir. 2002).
[2] Id.
[3] Id.
[4] Id.
[5] Id.
[6] Id. at
283.
[7] Id.
[8] Id.
[9] Id.
[10] Id. at
283-84.
[11] See 17
U.S.C. §304(c) and 304(c)(5).
[12] Id. at
284.
[13] Id. at
285.
[14] Id.
[15] Id.
[16] Id. at
292.
[17] See Id.
at 293.
[18] Dispute
over Captain America is Settled, NYTimes.com, https://mobile.nytimes.com/2003/09/30/business/media/dispute-over-captain-america-is-settled.html
(last visisted March 28, 2017).
