On Monday, July 14, Marvel filed its response in the Kirby family case, and the main points were rather predictable — in fact, this article is an updated version of an unpublished draft from last week, and there wasn’t much new to add. In short, Marvel makes a standard procedural argument aimed at disqualifying the family’s new legal claims, while the rest of the brief contends that the Second Circuit applied long-established law regarding work made for hire under the Copyright Act of 1909.

As noted in my previous post, Kirby family attorney Marc Toberoff's Supreme Court filing and the supporting amicus briefs are not immune from such attacks, and to get a fuller sense of what the Court may do next we’ll explore not just Marvel’s brief, but additional means by which the Court itself could trump the Kirby family’s central arguments. But before we begin, a quick caveat: this article is not a prediction that Marvel will win, though the odds are decidedly in its favor. Betting on a Supreme Court case is like betting on the World Cup - the arguments you like may seem perfectly reasonable on paper, but you could just as easily lose in a historic blow-out.

Waiving Goodbye

Toberoff's cert petition - which is the filing that asks the Supreme Court to take the case - features a couple major arguments that he did not make in either the trial court or on appeal to the Second Circuit: namely, the presumption that Kirby's work was work-for-hire is a violation of due process and an unconstitutional judicial taking. According to this line of reasoning, when the courts in the mid-1960s flipped the presumption from creator-ownership to work-for-hire, the government took property for its own purposes in direct violation of the Fifth Amendment, which states that a person shall not be "deprived of life, liberty, or property, without due process of law; nor shall private property be taken for public use, without just compensation."

If these arguments sound familiar, that's because you read them here first. By an amazing coincidence, Toberoff’s cert petition ended up tracking the ideas and the language of “Taking Back the Kirby Case”, and the amicus briefs didn’t add anything substantially new. However, because TCJ is not an academic law journal -- and thank your deities of choice for that - I’d deliberately left out several important counter-arguments that Toberoff and company should have addressed.

One key counter-argument, which Marvel predictably makes in its brief, rests on the doctrine known variably as issue waiver or procedural default. In short, legal arguments in federal court are use it or lose it - if you fail to raise the argument below, you don't get to spring it on your opponent and judges later. Losing legal rights due to a procedural muckup may sound unfair, but that does not make it any less of a real possibility, as the Siegels learned when the judge rejected Toberoff’s arguments for failing to make them earlier.

Does this mean that the Kirby family case is doomed? Not necessarily. Waiver is a tricky doctrine in practice, especially with the Supreme Court — if the Justices find that the new issues call attention to a serious injustice or constitutional flaw, it’s not unheard of for the Court to plow ahead anyway. The judicial takings argument in particular was designed to grab the Court’s attention. It was the more creative and cutting-edge gambit, but that’s part of the game — if the Court were to grant cert and take the case, raising it would have done its job; namely, to get the accompanying due process argument before the Court after decades of declining to consider it.

Clever lawyers use this bait-and-switch strategy all the time -- consider this a Penn and Teller reveal of a common legal trick. That said, another thing that clever lawyers do but was not done in Toberoff’s cert petition is anticipate that the other side will make the waiver argument and figure out a way to dance around it.

Crisis on Earth ©

Marvel wisely doesn’t assume that it will win on waiver alone, so it also goes on to tackle the cert petition’s arguments on the merits. What’s more, it does so in a way that is designed to get the Court to see this case as not presenting issues worthy of review.

"It takes a theory to beat a theory" is a popular legal maxim, and the same thing goes for stories used in court. As we've already noted, both Toberoff and the amicus briefs are predicated on the same narrative: in the 1960s, judicial interpretation of the 1909 Copyright Act arbitrarily switched from presuming that freelancers originally owned the copyright in their work to giving publishers a presumption of owning commissioned material as work made for hire.

The may seem seem rather convincing, especially after the series of amicus briefs making the same point. However, it’s important to remember that amicus briefs do not necessarily represent a groundswell of support for a particular point of view — it is not at all uncommon for there to be behind-the-scenes coordination with one of the parties in the case.

The federal appellate circuits tend not to concede that there was an arbitrary shift in standards, but rather describe the interpretation of copyright law as gradually unfolding over time. As Marvel correctly notes, this narrative knocks the props out from under the judicial takings and due process arguments, since in this historical account the courts do not seize property with a new rule but gradually interpret the law as they go from case to case.

This puts the Court in the legal version of a Choose Your Own Adventure book. Choosing the shift-in-standards option leads to an ending with an arbitrary money grab, an unfounded instance-and-expense test for work-for-hire, and substantial violations of core constitutional principles. On the other hand, choosing the gradually-unfolding-standard option leads to where the federal appellate courts are today: agreement among the circuits that the instance-and-expense test is constitutional for assessing work-for-hire under the 1909 Act and that the statement to the contrary in Justice Marshall’s 1989 opinion in Citizens for Creative Non-Violence is not binding precedent but mere dicta courts are free to disregard.

Marvel doubles down on the image of appellate courts singing together in perfect harmony free from a circuit split, which under Supreme Court Rule 10(a) is a sign that there isn’t really a problem for the Court to step in to resolve. Nonetheless, the alternate history in the cert petition and the amicus briefs does raise some interesting questions, especially when you spice it with tantalizing references to a test without a historical basis and the Second Circuit’s own depiction of the shift in standards as what actually occurred.

So where does the Court go from here?

Back to the Future

There’s a decent chance that the Court will agree with Marvel that the Second Circuit applied a viable and established interpretation of the 1909 Act. If so, it’s a legal death trap from which not even Mister Miracle could escape — the Court will decline to take the case and the Kirby family will have nowhere else to turn.

Conversely, it is also worth noting that this case has been handled thus far by Justice Ginsburg, who wrote the opinion in the recent case that allowed for a rolling statute of limitations in copyright and who may be inclined to weigh in on the equities of the Kirby family case. A majority of the Justices could agree to take the family's case, but even then a win is by no means guaranteed - the Court could end up using the Kirby case to establish once and for all that the instance-and-expense test is valid.

And this is where the Court could do what the Court likes to do when faced with two conflicting interpretations of our legal past: reject them both in favor of a story of its own. At base, the two competing stories in this case are equally unattractive from a jurisprudential point of view. The Kirby side depicts the courts as making an arbitrary shift that is at base corrupt, with judges willfully deciding to hand billions of dollars over to big business when legal reform is in the works. The Marvel approach — which is the current consensus approach — has courts stumbling from case to case to develop a standard that is the law because the courts says it’s the law, and that’s that.

If the Court decides that rationalizing the interpretation of the 1909 Copyright Act is worth its time, the strategic misstep of the amicus briefs could loom very large indeed, with their references to the legislative history of the 1909 Act pointing the way to a more compelling counter-narrative.

As I intimated in my last piece, when we dig into the history of the deliberations leading up to the 1909 Act — which either Marvel’s lawyers or Supreme Court clerks are likely to do if the Court takes the case — the record establishes early on that the 1909 Act was created in consultation with publishers in response to the challenges created by changing technology. One big challenge facing the magazine and book industries would become even more pressing years later with comic book publishers, who likewise would have been part of the discussion if they’d been around in 1905: the emergence of a vibrant market for works created by more than one person, from books with commissioned illustrations to magazines with articles and images by multiple creators.

To publishers, these composite works presented several major problems. First, if a book or magazine is made up of material from multiple contributors, who owns the copyright in the work in its entirety? Furthermore, who would own the material when the copyright came up for renewal in 28 years? Could corporations own copyrights? How should we apply the traditional law of agency - then primarily concerned with liability of employers with control over their workers versus the employers of independent contractors -- to commissioned works? And given the ongoing rapid changes in technology, how do we make the law flexible enough to adapt?

The stakeholders who met to create the first drafts of a new Copyright Act to present to Congress came up with a framework for addressing the publishers' concerns while accommodating representatives from the writers' and artists' guilds, who themselves feared that publishers would lay claim to the copyright in works created by independent creators on their own without having first been commissioned for pay by a publisher.

As for works with multiple contributors, the stakeholders decided that the proprietor of a composite work who registered the copyright would also have the right to renew and extend the copyright, although independent creators would be able to renew the copyright in contributions that weren't created at the publisher’s "instance and expense." Work-for-hire would be the property of the employer — the corporation or individual hiring the creator to do the work.

To secure adaptability, a committee of attorneys from New York -- the publishing capital of the U.S. and the driving force of intellectual property law in the Second Circuit -- suggested that the way to keep the law flexible for changing times was not to limit it with precise definitions. This way the courts could fill in any gaps arising from unanticipated situations in the spirit of the policy embodied in the statute -- such as the appearance of comic books.

As time went on after the passage of the 1909 Act the courts handled a range of cases addressing ownership of the copyright in works created by contractors who did not work full-time for the person or company employing them, with the deciding principle substantially, but not literally, being the extent to which the work was produced at someone else's instance and expense.

Eventually someone - a judge? his clerk? - recalled or discovered the phrase that had been in the air in the copyright world since at least the early 20th century, when the "instance and expense" standard was adapted from its use in cases establishing ownership or personal responsibility since at least 1806. The uncertainty we now face regarding the 1909 Act could have been prevented if the judge who first used the phrase "instance and expense" in a copyright case had either cited the 1909 Act's legislative history or explained that he was applying to intellectual property a long-established standard for establishing ownership of real and personal property in contract disputes.

The Composite Spider-Man

Were the Supreme Court to accept this counter-narrative - and there's a heckuva lot of evidence to support it - it would likely result in giving Marvel an alternate path to victory. In place of an arbitrary shift from one standard to its opposite we have interpretation of a statute evolving gradually from case to case by adapting long-established legal principles, which is the way things are supposed to work in our legal system.

Beyond the work-for-hire question, the open-ended nature of the 1909 Act's provision pertaining to periodicals and other composite works consisting of material by multiple authors also suggests an interesting alternate means of preserving Marvel's ownership of the material in dispute -- and it appears that at one point Marvel was well aware of how this could work.

The clue lies in a mystery that bothered me for longer than I care to admit: if you look at the Copyright Office volumes from the late-60s through the mid-70s for the renewals of Marvel's material from the Timely era you'll find that they are missing. Instead, the phrase “consult Copyright Office” pops up on occasion in regard to Timely properties.

The copyright officials from that era may for the most part be gone, but as it happens the full story can be found in a case initiated by Marvel's then-parent company, Cadence Industries. The reason for the missing renewals was not that Marvel forgot to renew the copyrights, thus putting the material in the public domain. Rather, the Copyright Office refused to accept the filings on the grounds that Marvel described the comics as "composite work-made-for-hire."

As explained in Cadence Industries v. Ringer, the Copyright Office contended that a work could not be both a composite work and work made for hire -- Marvel had to choose one or the other. The court disagreed, concluding that these two concepts were not contradictory but related -- a comic book could consist of work made for hire by multiple individuals. Not only did the court order the Copyright Office to accept the past decade or so of Marvel's renewal filings, but in so doing it effectively affirmed Marvel's fallback claim on the material - were the work-for-hire categorization to fail, Marvel or a court could still assert that the company owned the stories as composite works whose components had not been separately copyrighted by their creators.

This characterization of Marvel comics is of direct relevance to the Kirby family's termination claim. In establishing the termination right, Section 304(a)(1)(B) of the Copyright Act of 1976 expressly provides that the proprietor of a composite work, like the owner of work made for hire, gets the benefit of the 1976 Act's extension of the copyright term. In other words, the original creator and his or her heirs would not have a legal right to take the material back.

The Mountain of Judgment

I’ve been asked why I didn’t write an amicus brief myself. There are several reasons, though for now I prefer not to discuss them. Let’s just say I had an indication that none of my analysis in “Taking Back the Kirby Case” would be left on the table and am gratified from a professional point of view that it appears to have had an impact on the Court. That said, the analysis was a thought experiment for an article and not something I would have filed with a court without addressing the material noted in this piece.

Were the Supreme Court to take the case, well, who’s to say I won’t join in the fray, though I’ll leave it to you to suss out my approach. Not that writing an amicus brief is the best thing that anyone could do — the most effective argument for the Kirby side that I’ve seen is the play King Kirby by Fred Van Lente and Crystal Skillman, the Inherit the Wind of comics history.

If there's one key takeaway from all this, it's that times haven't changed as much we might think. The 1909 Act may seem archaic now, but it was conceived as a cutting-edge adaptation of existing law to rapid changes in information technology. The 1909 Act also reflects many of the same competing interests that shape the law today -- the attempt to depict it as a utopia for freelancers and the bane of publishers may have a certain appeal, but the real story is more complex. Finding a way to establish that Kirby originally had an ownership interest is not impossible, but arguing this before the Supreme Court will likely require a heightened level of strategic and analytical firepower for the Kirby family to prevail.