2013年12月10日 (火)

NICHOLS v. UNIVERSAL PICTURES CORPORATION et al.

NICHOLS v. UNIVERSAL PICTURES CORPORATION et al.

No. 4


                     Circuit Court of Appeals, Second Circuit


                      45 F.2d 119; 1930 U.S. App. LEXIS 3587

                               November 10, 1930

Before L. HAND, SWAN, and AUGUSTUS N. HAND, Circuit Judges.

   L. HAND, Circuit Judge.

   The plaintiff is the author of a play, "Abie's Irish Rose," which it may be
assumed was properly copyrighted under section five, subdivision (d), of the
Copyright Act, 17 USCA § 5(d).  The defendant produced publicly a motion picture
play, "The Cohens and The Kellys," which the plaintiff alleges was taken from
it.  As we think the defendant's play too unlike the plaintiff's to be an
infringement, we may assume, arguendo, that in some details the defendant used
the plaintiff's play, as will subsequently appear, though we do not so decide.
It therefore becomes necessary to give an outline of the two plays.

   "Abie's Irish Rose" presents a Jewish family living in prosperous
circumstances in New York.  The father, a widower, is in business as a merchant,
in which his son and only child helps him.  The boy has philandered with young
women, who to his father's great disgust have always been Gentiles, for he is
obsessed with a passion that his daughter-in-law shall be an orthodox Jewess.
[**2]  When the play opens the son, who has been courting a young Irish Catholic
girl, has already married her secretly before a Protestant minister, and is
concerned to soften the blow for his father, by securing a favorable impression
of his bride, while concealing her faith and race.  To accomplish this he
introduces her to his father at his home as a Jewess, and lets it appear that he
is interested in her, though he conceals the marriage. The girl somewhat
reluctantly falls in with the plan; the father takes the bait, becomes
infatuated with the girl, concludes that they must marry, and assumes that of
course they will, if he so decides.  He calls in a rabbi, and prepares for the
wedding according to the Jewish rite.

   Meanwhile the girl's father, also a widower, who lives in California, and is
as intense in his own religious antagonism as the Jew, has been called to New
York, supposing that his daughter is to marry an Irishman and a Catholic.
Accompanied by a priest, he arrives at the house at the moment when the marriage
is being celebrated, but too late to prevent it, and the two fathers, each
infuriated by the proposed union of his child to a heretic, fall into unseemly
and grotesque [**3]  antics.  The priest and the rabbi become friendly, exchange
trite sentiments about religion, and agree that the match is good.  Apparently
out of abundant caution, the priest celebrates the marriage for a third time,
while the girl's father is inveigled away.  The second act closes with each
father, still outraged, seeking to find some way by which the union, thus trebly
insured, may be dissolved.

   The last act takes place about a year later, the young couple having
meanwhile been abjured by each father, and left to their own resources.  They
have had twins, a boy and a girl, but their fathers know no more than that a
child has been born.  At Christmas each, led by his craving to see his
grandchild, goes separately to the young folks' home, where they encounter each
other, each laden with gifts, one for a boy, the other for a girl. After some
slapstick comedy, depending upon the insistence of each that he is right about
the sex of the grandchild, they become reconciled when they learn the truth, and
that each child is to bear the given name of a grandparent.  The curtain falls
as the fathers are exchanging amenities, and the Jew giving evidence of an
abatement in the strictness of [**4]  his orthodoxy.

   "The Cohens and The Kellys" presents two families, Jewish and Irish, living
side by side in the poorer quarters of New York in a state of perpetual enmity.
The wives in both cases are still living, and share in the mutual animosity, as
do two small sons, and even the respective dogs.  The Jews have a daughter, the
Irish a son; the Jewish father is in the clothing business; the Irishman is a
policeman.  The children are in love with each other, and secretly marry,
apparently after the play opens.  The Jew, being in great financial straits,
learns from a lawyer that he has fallen heir to a large fortune from a
great-aunt, and moves into a great house, fitted luxuriously.  Here he and his
family live in vulgar ostentation, and here the Irish boy seeks out his Jewish
bride, and is chased away by the angry father.  The Jew then abuses the Irishman
over the telephone, and both become hysterically excited.  The extremity of his
feelings makes the Jew sick, so that he must go to Florida for a rest, just
before which the daughter discloses her marriage to her mother.

   On his return the Jew finds that his daughter has borne a child; at first he
suspects the lawyer, but eventually [**5]  learns the truth and is overcome with
anger at such a low alliance.  Meanwhile, the Irish family who have been
forbidden to see the grandchild, go to the Jew's house, and after a violent
scene between the two fathers in which the Jew disowns his daughter, who decides
to go back with her husband, the Irishman takes her back with her baby to his
own poor lodgings.   [*121]  The lawyer, who had hoped to marry the Jew's
daughter, seeing his plan foiled, tells the Jew that his fortune really belongs
to the Irishman, who was also related to the dead woman, but offers to conceal
his knowledge, if the Jew will share the loot.  This the Jew repudiates, and,
leaving the astonished lawyer, walks through the rain to his enemy's house to
surrender the property.  He arrives in great dejection, tells the truth, and
abjectly turns to leave.  A reconciliation ensues, the Irishman agreeing to
share with him equally.  The Jew shows some interest in his grandchild, though
this is at most a minor motive in the reconciliation, and the curtain falls
while the two are in their cups, the Jew insisting that in the firm name for the
business, which they are to carry on jointly, his name shall stand first.  [**6]

   It is of course essential to any protection of literary property, whether at
common-law or under the statute, that the right cannot be limited literally to
the text, else a plagiarist would escape by immaterial variations.  That has
never been the law, but, as soon as literal appropriation ceases to be the test,
the whole matter is necessarily at large, so that, as was recently well said by
a distinguished judge, the decisions cannot help much in a new case.  Fendler v.
Morosco, 253 N.Y. 281, 292, 171 N.E. 56. When plays are concerned, the
plagiarist may excise a separate scene [Daly v. Webster, 56 F. 483 (C.C.A. 2);
Chappell v. Fields, 210 F. 864 (C.C.A. 2); Chatterton v. Cave, L.R. 3 App. Cas.
483]; or he may appropriate part of the dialogue ( Warne v. Seebohm, L.R. 39 Ch.
D. 73). Then the question is whether the part so taken is "substantial," and
therefore not a "fair use" of the copyrighted work; it is the same question as
arises in the case of any other copyrighted work.  Marks v. Feist, 290 F. 959
(C.C.A. 2); Emerson v. Davies, Fed. Cas. No. 4436, 3 Story, 768, 795-797. But
when the plagiarist does not take out a block in situ, but an abstract of the
whole, decision is more [**7]  troublesome.  Upon any work, and especially upon
a play, a great number of patterns of increasing generality will fit equally
well, as more and more of the incident is left out.  The last may perhaps be no
more than the most general statement of what the play is about, and at times
might consist only of its title; but there is a point in this series of
abstractions where they are no longer protected, since otherwise the playwright
could prevent the use of his "ideas," to which, apart from their expression, his
property is never extended.  Holmes v. Hurst, 174 U.S. 82, 86, 19 S. Ct. 606, 43
L. Ed. 904; Guthrie v. Curlett, 36 F.(2d) 694 (C.C.A. 2).  Nobody has ever been
able to fix that boundary, and nobody ever can.  In some cases the question has
been treated as though it were analogous to lifting a portion out of the
copyrighted work (Rees v. Melville, MacGillivray's Copyright Cases [1911-1916],
168); but the analogy is not a good one, because, though the skeleton is a part
of the body, it pervades and supports the whole.  In such cases we are rather
concerned with the line between expression and what is expressed.  As respects
plays, the controversy chiefly centers upon the characters [**8]  and sequence
of incident, these being the substance.

   We did not in Dymow v. Bolton, 11 F.(2d) 690, hold that a plagiarist was
never liable for stealing a plot; that would have been flatly against our
rulings in Dam v. Kirk La Shelle Co., 175 F. 902, 41 L.R.A. (N.S.) 1002, 20 Ann.
Cas. 1173, and Stodart v. Mutual Film Co., 249 F. 513, affirming my decision in
(D.C.) 249 F. 507; neither of which we meant to overrule.  We found the plot of
the second play was too different to infringe, because the most detailed
pattern, common to both, eliminated so much from each that its content went into
the public domain; and for this reason we said, "this mere subsection of a plot
was not susceptible of copyright." But we do not doubt that two plays may
correspond in plot closely enough for infringement. How far that correspondence
must go is another matter.  Nor need we hold that the same may not be true as to
the characters, quite independently of the "plot" proper, though, as far as we
know, such a case has never arisen.  If Twelfth Night were copyrighted, it is
quite possible that a second comer might so closely imitate Sir Toby Belch or
Malvolio as to infringe, but it would not be enough that [**9]  for one of his
characters he cast a riotous knight who kept wassail to the discomfort of the
household, or a vain and foppish steward who became amorous of his mistress.
These would be no more than Shakespeare's "ideas" in the play, as little capable
of monopoly as Einstein's Doctrine of Relativity, or Darwin's theory of the
Origin of Species.  It follows that the less developed the characters, the less
they can be copyrighted; that is the penalty an author must bear for marking
them too indistinctly.

   In the two plays at bar we think both as to incident and character, the
defendant took no more -- assuming that it took anything at all -- than the law
allowed.  The stories are quite different.  One is of a religious zealot  [*122]
who insists upon his child's marrying no one outside his faith; opposed by
another who is in this respect just like him, and is his foil.  Their difference
in race is merely an obbligato to the main theme, religion. They sink their
differences through grandparental pride and affection. In the other, zealotry is
wholly absent; religion does not even appear.  It is true that the parents are
hostile to each other in part because they differ in race; but [**10]  the
marriage of their son to a Jew does not apparently offend the Irish family at
all, and it exacerbates the existing animosity of the Jew, principally because
he has become rich, when he learns it.  They are reconciled through the honesty
of the Jew and the generosity of the Irishman; the grandchild has nothing
whatever to do with it.  The only matter common to the two is a quarrel between
a Jewish and an Irish father, the marriage of their children, the birth of
grandchildren and a reconciliation.

   If the defendant took so much from the plaintiff, it may well have been
because her amazing success seemed to prove that this was a subject of enduring
popularity.  Even so, granting that the plaintiff's play was wholly original,
and assuming that novelty is not essential to a copyright, there is no monopoly
in such a background.  Though the plaintiff discovered the vein, she could not
keep it to herself; so defined, the theme was too generalized an abstraction
from what she wrote.  It was only a part of her "ideas."

   Nor does she fare better as to her characters.  It is indeed scarcely
credible that she should not have been aware of those stock figures, the low
comedy Jew and Irishman.  [**11]  The defendant has not taken from her more than
their prototypes have contained for many decades.  If so, obviously so to
generalize her copyright, would allow her to cover what was not original with
her.  But we need not hold this as matter of fact, much as we might be
justified.  Even though we take it that she devised her figures out of her brain
de novo, still the defendant was within its rights.

   There are but four characters common to both plays, the lovers and the
fathers.  The lovers are so faintly indicated as to be no more than stage
properties.  They are loving and fertile; that is really all that can be said of
them, and anyone else is quite within his rights if he puts loving and fertile
lovers in a play of his own, wherever he gets the cue.  The plaintiff's Jew is
quite unlike the defendant's.  His obsession is his religion, on which depends
such racial animosity as he has.  He is affectionate, warm and patriarchal.
None of these fit the defendant's Jew, who shows affection for his daughter only
once, and who has none but the most superficial interest in his grandchild. He
is tricky, ostentatious and vulgar, only by misfortune redeemed into honesty.
Both are grotesque,  [**12]  extravagant and quarrelsome; both are fond of
display; but these common qualities make up only a small part of their simple
pictures, no more than any one might lift if he chose.  The Irish fathers are
even more unlike; the plaintiff's a mere symbol for religious fanaticism and
patriarchal pride, scarcely a character at all.  Neither quality appears in the
defendant's, for while he goes to get his grandchild, it is rather out of a
truculent determination not to be forbidden, than from pride in his progeny.
For the rest he is only a grotesque hobbledehoy, used for low comedy of the most
conventional sort, which any one might borrow, if he chanced not to know the
exemplar.

   The defendant argues that the case is controlled by my decision in Fisher v.
Dillingham (D.C.) 298 F. 145. Neither my brothers nor I wish to throw doubt upon
the doctrine of that case, but it is not applicable here.  We assume that the
plaintiff's play is altogether original, even to an extent that in fact it is
hard to believe.  We assume further that, so far as it has been anticipated by
earlier plays of which she knew nothing, that fact is immaterial. Still, as we
have already said, her copyright did not cover [**13]  everything that might be
drawn from her play; its content went to some extent into the public domain. We
have to decide how much, and while we are as aware as any one that the line,
whereever it is drawn, will seem arbitrary, that is no excuse for not drawing
it; it is a question such as courts must answer in nearly all cases.  Whatever
may be the difficulties a priori, we have no question on which side of the line
this case falls.  A comedy based upon conflicts between Irish and Jews, into
which the marriage of their children enters, is no more susceptible of copyright
than the outline of Romeo and Juliet.

   The plaintiff has prepared an elaborate analysis of the two plays, showing a
"quadrangle" of the common characters, in which each is represented by the
emotions which he discovers.  She presents the resulting parallelism as proof of
infringement, but the adjectives employed are so general as to be quite useless.
Take for example the attribute of "love" ascribed to both Jews.  The plaintiff
has depicted her father as deeply attached  [*123]  to his son, who is his hope
and joy; not so, the defendant, whose father's conduct is throughout not
actuated by any affection for his [**14]  daughter, and who is merely once
overcome for the moment by her distress when he has violently dismissed her
lover. "Anger" covers emotions aroused by quite different occasions in each
case; so do "anxiety," "despondency" and "disgust." It is unnecessary to go
through the catalogue for emotions are too much colored by their causes to be a
test when used so broadly.  This is not the proper approach to a solution; it
must be more ingenuous, more like that of a spectator, who would rely upon the
complex of his impressions of each character.

   We cannot approve the length of the record, which was due chiefly to the use
of expert witnesses.  Argument is argument whether in the box or at the bar, and
its proper place is the last.  The testimony of an expert upon such issues,
especially his cross-examination, greatly extends the trial and contributes
nothing which cannot be better heard after the evidence is all submitted.  It
ought not to be allowed at all; and while its admission is not a ground for
reversal, it cumbers the case and tends to confusion, for the more the court is
led into the intricacies of dramatic craftsmanship, the less likely it is to
stand upon the firmer, if more naive,  [**15]  ground of its considered
impressions upon its own perusal.  We hope that in this class of cases such
evidence may in the future be entirely excluded, and the case confined to the
actual issues; that is, whether the copyrighted work was original, and whether
the defendant copied it, so far as the supposed infringement is identical.

   The defendant, "the prevailing party," was entitled to a reasonable attorney
's fee (section 40 of the Copyright Act [17 USCA § 40]).

   Decree affirmed.

Marvel Worldwide, Inc. v. Kirby

Marvel Worldwide, Inc. v. Kirby
756 F.Supp.2d 461
S.D.N.Y.,2010.
November 22, 2010 (Approx. 19 pages)

756 F.Supp.2d 461

United States District Court,
S.D. New York.

MARVEL WORLDWIDE, INC., Marvel Characters, Inc. and MVL Rights, LLC, Plaintiffs,
v.
Lisa R. KIRBY, Barbara J. Kirby, Neal L. Kirby and Susan M. Kirby, Defendants.
Lisa R. Kirby, Barbara J. Kirby, Neal L. Kirby and Susan M. Kirby, Counterclaim–Plaintiffs,
v.
Marvel Worldwide, Inc., Marvel Characters, Inc., MVL Rights, LLC, Marvel Entertainment, Inc., The Walt Disney Company, and Does 1 through 10, Counterclaim–Defendants.

No. 10 Civ. 141 (CM)(KNF).
Nov. 22, 2010.
Background: Comic-book publisher and related entities brought action for declaration that copyright termination notices served by the owners of a comic-book artist's original artwork were not valid. The owners brought counterclaims against plaintiffs and others for declaration that the notices were valid, for declaration as to division of future profits, for conversion and breach of contract, and for violation of the Lanham Act. Plaintiffs moved to dismiss counterclaims.

Holdings: The District Court, McMahon, J., held that:
(1) counterclaim for declaration as to validity of termination notices was not duplicative or redundant of publisher's claim;
(2) counterclaim for declaration as to division of future profits was not ripe;
(3) conversion counterclaim was time-barred;
(4) breach of contract counterclaim was time-barred;
(5) equitable tolling was not warranted;
(6) defendants failed to state Lanham Act claim; and
(7) publisher's parent company was proper defendant to counterclaim for declaration as to validity of termination notices.

Motion granted in part and denied in part.

West Headnotes

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Key Number Symbol99 Copyrights and Intellectual Property
  Key Number Symbol99I Copyrights
    Key Number Symbol99I(A) Nature and Subject Matter
       Key Number Symbol99k33 k. Duration. Most Cited Cases

Copyright grants in works created for hire cannot be terminated by the author or her heirs. 17 U.S.C.A. § 304(c).

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Key Number Symbol118A Declaratory Judgment
  Key Number Symbol118AI Nature and Grounds in General
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       Key Number Symbol118Ak64 k. Adverse interests or contentions. Most Cited Cases

An action for declaratory judgment is proper if the circumstances indicate that there is a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality.

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Key Number Symbol118A Declaratory Judgment
  Key Number Symbol118AIII Proceedings
    Key Number Symbol118AIII(D) Pleading
       Key Number Symbol118Ak323 k. Counterclaim for declaratory relief in other action. Most Cited Cases

Key Number Symbol170A Federal Civil Procedure Headnote Citing References KeyCite Citing References for this Headnote
  Key Number Symbol170AVII Pleadings
    Key Number Symbol170AVII(C) Answer
       Key Number Symbol170AVII(C)3 Set-Offs, Counterclaims and Cross-Claims
        Key Number Symbol170Ak782 Sufficiency of Counterclaims
          Key Number Symbol170Ak783 k. Alternate, hypothetical and inconsistent counterclaims. Most Cited Cases
             (Formerly 170Ak737.1)

A declaratory judgment counterclaim is not subject to dismissal as duplicative or redundant if it asserts an independent case or controversy that survives dismissal of the plaintiff's claim.

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Key Number Symbol118A Declaratory Judgment
  Key Number Symbol118AIII Proceedings
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  Key Number Symbol170AVII Pleadings
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        Key Number Symbol170Ak782 Sufficiency of Counterclaims
          Key Number Symbol170Ak783 k. Alternate, hypothetical and inconsistent counterclaims. Most Cited Cases
             (Formerly 170Ak738)

Counterclaim brought by owners of a comic-book artist's original artwork against comic-book publisher and others for declaration that the owners' termination notices were valid was not subject to dismissal as duplicative or redundant of publisher's claim that the termination notices were invalid because the artist's comic-book characters and stories were created as works for hire; although if publisher were to prevail on its claim, the notices would be invalid, the notices could also be invalid for other reasons, and by securing a declaration of validity, the owners would protect themselves from future litigation in the event that publisher lost the work-for-hire dispute. 17 U.S.C.A. § 304(c).

[5] Headnote Citing References KeyCite Citing References for this Headnote

Key Number Symbol118A Declaratory Judgment
  Key Number Symbol118AII Subjects of Declaratory Relief
    Key Number Symbol118AII(M) Copyrights
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Claim brought by owners of a comic-book artist's original artwork against comic-book publisher and others for declaration as to how future profits from the exploitation of the parties' purported co-owned copyrights in the artwork should be allocated between owners and publisher was not ripe for judicial review; even if the artwork-owners' copyright termination notices were valid, the profits they wished to apportion were presently non-existent and might never materialize, and if it were determined that the notices were invalid because the artworks were works for hire, the owners would not have an ownership interest in the copyrights, and they would have no right to an accounting. 17 U.S.C.A. § 304(c).

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Key Number Symbol170B Federal Courts
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The federal court's power to declare the rights of individuals and to measure the authority of governments is legitimate only in the last resort, and as a necessity in the determination of real, earnest and vital controversy. U.S.C.A. Const. Art. 3, § 2, cl. 1.

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Ripeness is one tool used by federal courts to assess whether an actual case or controversy exists. U.S.C.A. Const. Art. 3, § 2, cl. 1.

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Key Number Symbol170B Federal Courts
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The ripeness doctrine prevents a court from entertaining claims based on contingent future events' that may not occur as anticipated or at all.

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A two-part test applies for determining the constitutional ripeness of an action: (1) the fitness of the issues for judicial decision, and (2) the hardship to the parties of withholding court consideration.

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Key Number Symbol170B Federal Courts
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The first prong of ripeness test, the fitness of the issues for judicial decision, is concerned with whether the issues sought to be adjudicated are contingent on future events or may never occur.

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Key Number Symbol170B Federal Courts
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In assessing the hardships, if any, a party will suffer if judicial review is withheld under the ripeness doctrine, the court asks whether the challenged action creates a direct and immediate dilemma for the parties.

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Key Number Symbol170B Federal Courts
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The mere possibility of future injury, unless it is the cause of some present detriment, does not constitute hardship to the parties of withholding court consideration under the ripeness doctrine.

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Key Number Symbol97C Conversion and Civil Theft
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    Key Number Symbol97Ck108 k. Assertion of ownership or control in general. Most Cited Cases
       (Formerly 389k4 Trover and Conversion)

New York defines “conversion” as the unauthorized exercise of dominion or control over property by one who is not the owner of the property which interferes with and is in defiance of a superior possessory right of another in the property.

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Key Number Symbol97C Conversion and Civil Theft
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Conversion occurs under New York law when a demand for the return of property is made and refused.

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Key Number Symbol97C Conversion and Civil Theft
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To assess whether and when demand was refused, as required to establish conversion under New York law, a court must analyze the actions as well as the words of a person who receives a demand; if either the recipient's words or actions evidences an intent to interfere with the demander's possession or use of his property, which is an overt and positive act of conversion, then the demand has been refused and the cause of action accrues, even if the words “I refuse your demand” were not explicitly used.

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Key Number Symbol241 Limitation of Actions
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Three-year statute of limitations on conversion claims under New York law begins to run from the date the conversion takes place and not from discovery or the exercise of diligence to discover. N.Y.McKinney's CPLR 214(3).

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Key Number Symbol241 Limitation of Actions
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    Key Number Symbol241II(B) Performance of Condition, Demand, and Notice
       Key Number Symbol241k66 Demand
        Key Number Symbol241k66(14) k. Property wrongfully received or held. Most Cited Cases

New York's three-year statute of limitations on conversion claim, brought by comic-book artist's heirs, alleging that comic-book publisher retained artist's original artwork despite his repeated demands for its return and either sold some pieces or allowed its employees or agents to take them, began to run no later than one year after artist and publisher signed a contract for the return of all the artwork and publisher allegedly failed to return it. N.Y.McKinney's CPLR 214(3).

[18] Headnote Citing References KeyCite Citing References for this Headnote

Key Number Symbol241 Limitation of Actions
  Key Number Symbol241II Computation of Period of Limitation
    Key Number Symbol241II(A) Accrual of Right of Action or Defense
       Key Number Symbol241k43 k. Causes of action in general. Most Cited Cases

Under New York law, the limitations period begins to run when the cause of action accrues. N.Y.McKinney's CPLR 203(a).

[19] Headnote Citing References KeyCite Citing References for this Headnote

Key Number Symbol241 Limitation of Actions
  Key Number Symbol241II Computation of Period of Limitation
    Key Number Symbol241II(A) Accrual of Right of Action or Defense
       Key Number Symbol241k46 Contracts in General
        Key Number Symbol241k46(6) k. Breach of contract in general. Most Cited Cases

Even if purported contract between comic-book artist and publisher requiring publisher to return to artist all original artwork in its possession did not specify that publisher was to return the art immediately, a reasonable period of time for publisher's performance under the contract was one year, such that New York's six-year statute of limitations on breach of contract claim brought by artist's heirs began to run no later than one year from date of contract. N.Y.McKinney's CPLR 203(a), 213(2).

[20] Headnote Citing References KeyCite Citing References for this Headnote

Key Number Symbol170A Federal Civil Procedure
  Key Number Symbol170AXI Dismissal
    Key Number Symbol170AXI(B) Involuntary Dismissal
       Key Number Symbol170AXI(B)5 Proceedings
        Key Number Symbol170Ak1827 Determination
          Key Number Symbol170Ak1832 k. Matters considered in general. Most Cited Cases

Key Number Symbol170A Federal Civil Procedure Headnote Citing References KeyCite Citing References for this Headnote
  Key Number Symbol170AXI Dismissal
    Key Number Symbol170AXI(B) Involuntary Dismissal
       Key Number Symbol170AXI(B)5 Proceedings
        Key Number Symbol170Ak1827 Determination
          Key Number Symbol170Ak1833 k. Affidavits. Most Cited Cases

Declaration and attachments submitted by defendant concerning purported contract could not be considered on motion to dismiss breach of contract claim on statute of limitations grounds, since the submission raised issues concerning the validity of the contract pleaded by the plaintiffs.

[21] Headnote Citing References KeyCite Citing References for this Headnote

Key Number Symbol95 Contracts
  Key Number Symbol95II Construction and Operation
    Key Number Symbol95II(D) Place and Time
       Key Number Symbol95k212 Reasonable Time
        Key Number Symbol95k212(2) k. Time for performance where no time is specified. Most Cited Cases

When a contract does not specify a time for performance, a reasonable time is implied under New York law.

[22] Headnote Citing References KeyCite Citing References for this Headnote

Key Number Symbol241 Limitation of Actions
  Key Number Symbol241II Computation of Period of Limitation
    Key Number Symbol241II(F) Ignorance, Mistake, Trust, Fraud, and Concealment or Discovery of Cause of Action
       Key Number Symbol241k104 Concealment of Cause of Action
        Key Number Symbol241k104(1) k. In general. Most Cited Cases

Fraudulent concealment will toll the statute of limitations if an otherwise time-barred plaintiff establishes three things: (1) there was in fact a wrongful concealment, (2) which concealment prevented the plaintiff's discovery of the nature of the claim during the limitations period, and (3) the plaintiff exercised due diligence in pursuing discovery of the claim.

[23] Headnote Citing References KeyCite Citing References for this Headnote

Key Number Symbol241 Limitation of Actions
  Key Number Symbol241V Pleading, Evidence, Trial, and Review
    Key Number Symbol241k194 Evidence
       Key Number Symbol241k195 Presumptions and Burden of Proof
        Key Number Symbol241k195(3) k. Burden of proof in general. Most Cited Cases

Party seeking equitable tolling of statute of limitations has the burden of establishing that such tolling applies.

[24] Headnote Citing References KeyCite Citing References for this Headnote

Key Number Symbol241 Limitation of Actions
  Key Number Symbol241II Computation of Period of Limitation
    Key Number Symbol241II(F) Ignorance, Mistake, Trust, Fraud, and Concealment or Discovery of Cause of Action
       Key Number Symbol241k104 Concealment of Cause of Action
        Key Number Symbol241k104(2) k. What constitutes concealment. Most Cited Cases

Key Number Symbol241 Limitation of Actions Headnote Citing References KeyCite Citing References for this Headnote
  Key Number Symbol241II Computation of Period of Limitation
    Key Number Symbol241II(G) Pendency of Legal Proceedings, Injunction, Stay, or War
       Key Number Symbol241k104.5 k. Suspension or stay in general; equitable tolling. Most Cited Cases

Comic-book publisher's alleged concealment of its retention of comic-book artist's original artwork, despite repeated demands for the artworks' return and a contract requiring publisher to return all original artwork in its possession, was insufficient to warrant equitable tolling of statutes of limitations on conversion and breach of contract claims brought by the artist's heirs; even though publisher admitted that it had not returned all the artwork, its alleged concealment neither prevented artist from discovering that some of his artwork had not been returned nor from exercising due diligence to assess whether publisher had lived up to its obligation to return the artwork. N.Y.McKinney's CPLR 213(2), 214(3).

[25] Headnote Citing References KeyCite Citing References for this Headnote

Key Number Symbol241 Limitation of Actions
  Key Number Symbol241II Computation of Period of Limitation
    Key Number Symbol241II(G) Pendency of Legal Proceedings, Injunction, Stay, or War
       Key Number Symbol241k104.5 k. Suspension or stay in general; equitable tolling. Most Cited Cases

Due diligence on the part of the plaintiff in bringing an action is essential element of equitable tolling of statute of limitations under New York law.

[26] Headnote Citing References KeyCite Citing References for this Headnote

Key Number Symbol29T Antitrust and Trade Regulation
  Key Number Symbol29TII Unfair Competition
    Key Number Symbol29TII(A) In General
       Key Number Symbol29Tk29 k. Origin, representations concerning. Most Cited Cases

Alleged failure of comic-book publisher and other entities to credit comic-book artist as the author or co-author of the comic-book stories and characters that formed the basis for two movies could not support Lanham Act claim of false designation of origin in commercial advertising or promotion; there was no allegation that publisher, in advertising or promoting the films, attempted to give moviegoers the impression that either film was quite different from the original comic-book stories. Lanham Act, § 43(a)(1)(B), 15 U.S.C.A. § 1125(a)(1)(B).

[27] Headnote Citing References KeyCite Citing References for this Headnote

Key Number Symbol118A Declaratory Judgment
  Key Number Symbol118AIII Proceedings
    Key Number Symbol118AIII(C) Parties
       Key Number Symbol118Ak299 Proper Parties
        Key Number Symbol118Ak300 k. Subjects of relief in general. Most Cited Cases

Parent company of comic-book publisher was proper defendant to claim brought by the heirs of comic-book artist seeking declaration that their copyright termination notices served on publisher concerning artist's original artwork were valid; claim did not seek to assess liability, notices were served three months before parent acquired publisher, and parent was in a position to exploit whatever rights publisher had in the characters created by the artist. 17 U.S.C.A. § 304(c).

[28] Headnote Citing References KeyCite Citing References for this Headnote

Key Number Symbol101 Corporations and Business Organizations
  Key Number Symbol101VI Shareholders and Members
    Key Number Symbol101VI(D) Liability for Corporate Debts and Acts
       Key Number Symbol101k1643 Nature and Grounds in General
        Key Number Symbol101k1645 k. Parent and subsidiary corporations. Most Cited Cases
          (Formerly 101k215)

A parent corporation is not automatically liable for the actions of its subsidiary.

[29] Headnote Citing References KeyCite Citing References for this Headnote

Key Number Symbol118A Declaratory Judgment
  Key Number Symbol118AIII Proceedings
    Key Number Symbol118AIII(C) Parties
       Key Number Symbol118Ak299 Proper Parties
        Key Number Symbol118Ak300 k. Subjects of relief in general. Most Cited Cases

Alleged successor-in-interest to entity to which comic-book artist assigned his copyrights in his original artwork was a proper defendant to claim brought by the heirs of comic-book artist seeking declaration that their copyright termination notices served on publisher concerning artist's original artwork were valid. 17 U.S.C.A. § 304(c).

*465 David Fleischer, Haynes and Boone, LLP, Randi Wolkenbreit Singer, Robert Bruce Rich, Weil, Gotshal & Manges LLP, Jodi Aileen Kleinick, Paul, Hastings, Janofsky & Walker LLP, New York, NY, for Plaintiffs.

Marc Toberoff, Law Offices of Marc Toberoff, PLC, Los Angeles, CA, for Defendants and Counterclaim–Plaintiffs.

James W. Quinn, Weil, Gotshal & Manges LLP, New York, NY, Plaintiffs and Counterclaim–Defendants.

DECISION AND ORDER GRANTING IN PART AND DENYING IN PART COUNTERCLAIM–DEFENDANTS' MOTION TO DISMISS

McMAHON, District Judge.

Plaintiffs Marvel Worldwide, Inc., Marvel Characters, Inc., and MVL Rights, LLC (collectively “Marvel”) commenced this action seeking declaratory relief as to the work-for-hire status of the comic-book stories and characters created by Jack Kirby. In response, Defendants/Counterclaim–Plaintiffs Lisa R. Kirby, Barbara J. Kirby, Neal L. Kirby, and Susan M. Kirby (collectively, the “Kirbys”) counterclaimed for declaratory relief and joined additional Counterclaim–Defendants Marvel Entertainment, Inc. (“Marvel Entertainment”), The Walt Disney Company (“Disney”), and Does 1 through 10. Presently before this Court is the Counterclaim–Defendants' motion to dismiss the five counterclaims alleged by the Kirbys. The Counterclaim–Defendants also move to dismiss Marvel Entertainment and Disney as Counterclaim–Defendants.

For the following reasons, the Counterclaim–Defendants' motion to dismiss the second, third, fourth, and fifth counterclaims is granted. Their motion to dismiss the first counterclaim is denied. The motion to dismiss the remaining counterclaim against Marvel Entertainment and Disney is also denied.

I. BACKGROUND

Jacob Kurtzberg, popularly known as Jack Kirby (“Kirby”), is a prolific comic-book artist who authored or co-authored numerous now-treasured comic-book stories published by Marvel and its predecessors, including “The Incredible Hulk,” “Iron Man,” “X–Men,” “The Fantastic Four,” and “Spiderman” (collectively, the “Kirby Works”). (Countercl. ¶ 18–19.)

Between 1958 and 1963, Kirby collaborated with other individuals to contribute to several comic-book stories that Marvel published. ( Id.) On May 30, 1972, Kirby entered into an agreement with Magazine Management Co., Inc.,—a predecessor to Marvel—whereby Kirby assigned his copyrights in the Kirby Works to Magazine Management (the “1972 grants”). ( Id. ¶ 24.)

For purposes of publishing Kirby's stories, Marvel took possession of his original *466 artwork. ( Id. ¶ 38.) In 1982, Kirby demanded that Marvel return his artwork. ( Id. ¶ 40.) On October 31, 1986, Kirby and Marvel entered into an agreement requiring Marvel to return all of Kirby's original artwork in its possession, custody, or control. ( Id. ¶ 50.)

Kirby died in 1994, at which time ownership of his artwork passed to his wife, Rosalind Kirby. ( Id. ¶ 39.) Before her death, Rosalind created The Rosalind Kirby Trust (“Rosalind Trust”). ( Id.) When she died, ownership of Kirby's artwork passed to the Rosalind Trust. ( Id.) The Counterclaim–Plaintiffs are Jack Kirby's children. ( Id. ¶¶ 5–8.) Barbara Kirby, Neal Kirby, and Susan Kirby are beneficiaries of the Rosalind Trust; Lisa Kirby is its Trustee. ( Id. ¶ 52.)

Seeking to regain the copyrights in their father's work, on September 16, 2009, the Kirbys served Marvel with notices under 17 U.S.C. § 304(c) (the “Termination Notices”). ( Id. ¶ 25.) The Termination Notices purport to terminate all pre-January 1, 1978 grants of copyrights in the Kirby Works and any prior implied grants of the renewal copyright on a stated future date. (Compl. ¶ 13.) On January 8, 2010, Marvel commenced this action. Marvel seeks a declaration that the Termination Notices are not valid because Kirby's comic-book characters and stories were created as works for hire, in which Marvel owns the copyrights. ( Id. ¶¶ 8–10, 16, 18.)

In response, the Kirbys assert several counterclaims—the first of which is for declaratory relief to establish the validity of the Termination Notices. (Countercl. ¶¶ 29–32.) The second counterclaim is also for declaratory relief regarding how future profits from the exploitation of co-owned copyrights in the Kirby Works will be divided between the Kirbys and Marvel. ( Id. ¶¶ 33–36.) The third and fourth counterclaims, brought by Barbara and Susan Kirby only, assert claims for conversion and breach of contract, respectively. ( Id. ¶¶ 37–54.) The fifth counterclaim alleges a violation of the Lanham Act, 15 U.S.C. § 1125(a)(1)(B), for Marvel's failure to identify Kirby as the author or co-author of the works upon which the films “X–Men Origins: Wolverine” and “The Incredible Hulk” are based. ( Id. ¶¶ 55–71.)

Marvel, Marvel Entertainment, and Disney have filed the present motion, asking this Court to dismiss, for various reasons, the counterclaims asserted by the Kirbys.FN1

FN1. In a prior opinion, this Court addressed Lisa and Neal Kirby's motion to dismiss Marvel's suit as against them for lack of personal jurisdiction. See Marvel Worldwide, Inc. v. Kirby, 2010 WL 1655253, 2010 U.S. Dist. LEXIS 38701 (S.D.N.Y. Apr. 14, 2010).

II. DISCUSSION

A. The Kirbys' First Counterclaim Is Not The Mirror Image Of Marvel's Claim, So The Motion To Dismiss It Is Denied.

[1] Headnote Citing References With one exception, section 304(c) of the Copyright Act grants authors (or their statutory heirs) the right to terminate a grant in a copyright fifty-six years after the original grant, notwithstanding an agreement to the contrary. 17 U.S.C. §§ 304(c)(3), (5). Works created for hire, however, are exempted, and copyright grants in such works cannot be terminated by the author or her heirs. 17 U.S.C. § 304(c): see also Penguin Grp. (USA) Inc. v. Steinbeck, 537 F.3d 193, 203 (2d Cir.2008) ( “Works for hire are exempt from section 304(c) and (d).”).

After receiving the Termination Notices, Marvel commenced this action. Marvel's lone claim seeks a determination that “defendants have no right under section 304(c) of the [Copyright Act] to terminate” the *467 1972 grants by Kirby. (Compl. ¶ 16.) Marvel bases this claim on its allegations that Kirby “was engaged as a comic book artist by the Marvel Entities,” “made contributions to various comic books ... at the instance of members of the editorial staff of the Marvel Entities,” and “[all] contributions made by Kirby” were at Marvel's expense. ( Id. ¶¶ 9–10.) In response, the Kirbys seek a declaratory judgment that the Termination Notices are valid. (Countercl. ¶¶ 29–32.) Marvel contends that the Kirbys' counterclaim should be dismissed because it is the mirror image of Marvel's cause of action.

[2] Headnote Citing References An action for declaratory judgment is proper if the circumstances indicate “that there is a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality ....” Duane Reade, Inc. v. St. Paul Fire & Marine Ins. Co., 411 F.3d 384, 389 (2d Cir.2005). Two cases from the Second Circuit are particularly instructive: Leach v. Ross Heater & Mfr. Co., 104 F.2d 88 (2d Cir.1939), and Larson v. General Motors Corp., 134 F.2d 450 (2d Cir.1943). In Leach, the plaintiff, an owner of patents on an oil-refining apparatus claimed that defendant was selling infringing products. The defendant counterclaimed for a declaratory judgment of invalidity of the patents and non-infringement. 104 F.2d at 89. The Second Circuit concluded that dismissal of the defendant's counterclaims was improper because a case or controversy would remain even if the plaintiff voluntarily dismissed his infringement suit. Id. at 91–92. The court noted that the plaintiffs had threatened the defendant's customers with infringement actions so even in the absence of the plaintiffs infringement suit, the defendant's request for a declaratory judgment was necessary to protect a business interest. Id. at 91. Thus, the defendants' counterclaim was not duplicative because even after dismissal of the plaintiff's suit, a ruling on whether the defendant's conduct infringed the plaintiff's patent was still necessary.

In contrast, the Second Circuit in Larson concluded that it was proper to dismiss the defendant's counterclaim, which sought a determination that the defendant had not infringed the plaintiff's patent (and not a determination as to the patent's validity). Larson, 134 F.2d at 452–53. Unlike the defendant in Leach, the defendant in Larson was not seeking a determination that the plaintiff's patent was invalid. Thus, when the plaintiff voluntarily dismissed his patent-infringement claim on the merits, there was no need to determine the patent's validity and therefore there was no continuing case or controversy. Id.

[3] Headnote Citing References Leach and Larson demonstrate that a counterclaim is not duplicative or redundant if it asserts an independent case or controversy that survives dismissal of the plaintiff's claim.

[4] Headnote Citing References Here, the first counterclaim is not duplicative or redundant of Marvel's claim for declaratory judgment. Marvel is correct that the validity of the Termination Notices hinges on the work-for-hire status of the Kirby Works. If Marvel wins, the Termination Notices will be invalid. But the Termination Notices could be invalid for other reasons as well. See e.g., § 17 U.S.C. § 304(c)(4)(B); 37 C.F.R. § 201.10 (regulations governing the content and form of termination notices); 17 U.S.C. § 304(c)(3) (explaining that notice must be served within the five-year period that begins 56 years after the copyright was secured). By securing a declaration that the notices are valid, the Kirbys protect themselves from future litigation in the event that Marvel loses the work-for-hire live dispute. Thus, the first counterclaim alleges an independent case or controversy separate from Marvel's claim. Marvel's *468 motion to dismiss the first counterclaim is denied.

B. The Kirbys' Second Counterclaim Is Not Ripe For Adjudication.

[5] Headnote Citing References In the second counterclaim, the Kirbys ask the Court to determine how future profits from the exploitation of co-owned copyrights in the Kirby Works should be allocated among the Kirbys and Marvel. Marvel counters that this claim is not ripe for adjudication because there is no actual case or controversy. Marvel contends that there will be no need for an accounting if it prevails on the work-for-hire question, so the declaration the Kirbys seek is premature.

[6] Headnote Citing References Federal Courts are courts of limited jurisdiction, Marcella v. Capital Dist. Physicians' Health Plan. Inc., 293 F.3d 42, 46 (2d Cir.2002). Article III of the United States Constitution limits our jurisdiction to actual cases or controversies. Valley Forge Christian Coll. v. Americans United for Separation, 454 U.S. 464, 471, 102 S.Ct. 752, 70 L.Ed.2d 700 (1982). “The power to declare the rights of individuals and to measure the authority of governments[ ] ... ‘is legitimate only in the last resort, and as a necessity in the determination of real, earnest and vital controversy.’ ” Id. (quoting Chicago & Grand Trunk Ry. Co. v. Wellman, 143 U.S. 339, 345, 12 S.Ct. 400, 36 L.Ed. 176 (1892)).

[7] Headnote Citing References[8] Headnote Citing References[9] Headnote Citing References Ripeness is one tool used by federal courts to assess whether an actual case or controversy exists. Nat'l Park Hospitality Ass'n v. Dep't of Interior, 538 U.S. 803, 807–08, 123 S.Ct. 2026, 155 L.Ed.2d 1017 (2003). The ripeness doctrine prevents a court “from entertaining claims based on ‘contingent future events' that may not occur as anticipated or at all.” City of New Rochelle v. Town of Mamaroneck, 111 F.Supp.2d 353, 359 (S.D.N.Y.2000) (quoting Thomas v. City of New York, 143 F.3d 31 (2d Cir.1998)). In Nat'l Park, the Supreme Court outlined a two-part test for determining the constitutional ripeness of an action: (1) “the fitness of the issues for judicial decision and (2) the hardship to the parties of withholding court consideration.” 538 U.S. at 808, 123 S.Ct. 2026.

[10] Headnote Citing References The first prong “is concerned with whether the issues sought to be adjudicated are contingent on future events or may never occur.” N.Y. Civil Liberties Union v. Grandeau, 528 F.3d 122, 132 (2d Cir.2008) (quoting Simmonds v. Immigration & Naturalization Serv., 326 F.3d 351, 356–57 (2d Cir.2003)). Here, an accounting may never be necessary. If it is determined that the Kirby Works were works for hire, the Kirbys would not have an ownership interest in the copyrights, and they would have no right to an accounting. Also, even if the Kirbys do have an interest in the works, the profits the Kirbys seek to apportion are presently non-existent and may never materialize. If, for instance, Marvel loses on the work-for-hire issue, Marvel could elect not to exploit co-owned Kirby Works, thereby eliminating any profits that would need apportioning.

[11] Headnote Citing References[12] Headnote Citing References The second prong of the ripeness test is also not satisfied. In assessing the hardships, if any, a party will suffer if judicial review is withheld, the court “ask[s] whether the challenged action creates a direct and immediate dilemma for the parties.” N.Y. Civil Liberties, 528 F.3d at 134 (quoting Simmonds, 326 F.3d at 359). “The mere possibility of future injury, unless it is the cause of some present detriment, does not constitute hardship.” Id. Even if this Court were to conclude that the Termination Notices are valid, the Kirbys ownership interests in the copyrights will not vest until 2014 at *469 the earliest. (Compl. ¶ 13.) Between now and then, the parties could amicably agree on the apportionment of profits, without this Court's intervention, once the ownership issue is resolved. As such, the Kirbys have alleged only “the mere possibility of future injury.” N.Y. Civil Liberties, 528 F.3d at 134. Accordingly, the Kirbys' second counterclaim is not ripe for judicial review and is dismissed.

C. The Third And Fourth Counterclaims Are Untimely.

The third and fourth counterclaims (for conversion and breach of contract, respectively) are brought by Barbara and Susan Kirby only. The conversion claim alleges that Marvel retained Kirby's original artwork despite Kirby's repeated demands for its return and either sold some pieces or allowed its employees or agents to take them. (Countercl. ¶¶ 4346.) The breach-of-contract claim alleges that Marvel breached an October 31, 1986 agreement requiring Marvel to return all of Kirby's original artwork in its possession. (Countercl. ¶ 53.)

1. The conversion claim is barred by the statute of limitations.

[13] Headnote Citing References[14] Headnote Citing References[15] Headnote Citing References New York defines conversion as the “unauthorized exercise of dominion or control over property by one who is not the owner of the property which interferes with and is in defiance of a superior possessory right of another in the property.” Meese v. Miller, 79 A.D.2d 237, 436 N.Y.S.2d 496, 500 (1981), Conversion occurs when a demand for the return of property is made and refused. Feld v. Feld, 279 A.D.2d 393, 720 N.Y.S.2d 35 (2001); Solomon R. Guggenheim Found. v. Lubell, 77 N.Y.2d 311, 317–18, 567 N.Y.S.2d 623, 569 N.E.2d 426 (N.Y.1991); Menzel v. List, 49 Misc.2d 300, 267 N.Y.S.2d 804, 809 (N.Y. Gen. Term 1966). To assess whether and when demand was refused, “a court must analyze the actions as well as [the] words of a person who receives a demand .... If either the recipient's words or actions evidences ‘an intent to interfere with the demander's possession or use of his property,’—which is an ‘overt and positive act of conversion,’—then the demand has been refused and the cause of action accrues, even if the words ‘I refuse your demand’ were not explicitly used.” Grosz v. Museum of Modern Art, 772 F.Supp.2d 473, ––––, 2010 WL 88003, at *10 (S.D.N.Y. Jan. 6, 2010) (internal citations omitted).

[16] Headnote Citing References Conversion claims have a three-year statute of limitations in New York. N.Y. C.P.L.R. § 214(3). The statute begins to run “from the date the conversion takes place and not from discovery or the exercise of diligence to discover.” Vigilant Ins. Co. of Am. v. Housing Auth., 87 N.Y.2d 36, 44, 637 N.Y.S.2d 342, 660 N.E.2d 1121 (N.Y.1995) (internal citations omitted).

[17] Headnote Citing References Kirby first demanded that Marvel return his artwork in 1982. (Countercl. ¶ 40.) He again demanded its return in 1986. ( Id. ¶ 50.) The Kirbys do not allege the exact date Marvel refused to return Kirby's original artwork, but Marvel's failure to return the artwork in 1982 (when first asked to do so) demonstrates an intent not to return the work. See, e.g., Borumand v. Assar, 2005 WL 741786, at *14 (W.D.N.Y. Mar. 31, 2005). Marvel's repeated failure to return the artwork demonstrates a refusal of Kirby's demand.

Marvel's failure to return any artwork to Kirby between 1986 (when, according to the counterclaims, it entered into a contract to return the artwork) and 1994 (when Kirby died) clearly demonstrates a refusal to comply with Kirby's demand. In Grosz, this Court, applying New York law, held that a museum's failure to return *470 certain paintings for more than one year after the plaintiffs' request for their return constituted a refusal that began the running of the statute of limitations for a conversion claim. 772 F.Supp.2d at ––––, 2010 WL 88003, at *10. If the statute of limitations began to run one year after Kirby's original 1982 request, then it had already expired in 1986, when the alleged contract was made. If, as is more likely for our purposes, the statute began to run one year after the 1986 contract was agreed upon, then it expired in 1990. In either case, the time has long since run on any claim for conversion.

2. The breach-of-contract claim is also untimely.

The Kirbys' breach-of-contract claim is based on Marvel's purported breach of a contract between Marvel and Kirby that was allegedly entered into on or about October 31, 1986. In that agreement, Marvel allegedly agreed to return all of Kirby's original artwork in its possession. (Countercla. ¶¶ 50, 53.) Marvel argues that this claim, too, is barred by the statute of limitations. Again, Marvel is correct.

[18] Headnote Citing References[19] Headnote Citing References New York has a six-year statute of limitations for breach-of-contract claims. N.Y. C.P.L.R. § 213(2). The limitations period begins to run when the cause of action accrues. N.Y. C.P.L.R. § 203(a); Guilbert v. Gardner, 480 F.3d 140, 149 (2d Cir.2007). A breach-of-contract cause of action accrues and the limitations period begins to run when the breach occurs. See Ely–Cruikshank Co. v. Bank of Montreal, 81 N.Y.2d 399, 402, 599 N.Y.S.2d 501, 615 N.E.2d 985 (N.Y.1993). “The plaintiff need not be aware of the breach or wrong to start the period running.” Guilbert, 480 F.3d at 149.

The complaint alleges the existence and the date of a contract but does not allege what the contract says about the time for performance. On a motion to dismiss, the Court may consider documents that are not attached to the complaint if a party relied on the document in bringing suit and the document is either in the party's possession or the party knew of the document when filing suit. See Chambers v. Time Warner, Inc., 282 F.3d 147, 153 (2d Cir.2002); see also Grosz, 772 F.Supp.2d at ––––, 2010 WL 88003, at *23. The October 31, 1986 agreement that is alleged in the counterclaims is integral to the Kirbys' fourth cause of action for breach of contract. As it was not attached to the pleading, the Court asked that the parties produce it.

On November 4, 2010, the Kirbys submitted a one-page document dated October 31, 1986, entitled “Artwork Release.” (Declaration of Marc Toberoff, Nov. 4, 2010, (“11/4/10 Toberoff Decl.”) Ex. A.) The document was signed only by Jack Kirby. ( Id.) The Kirbys identified this document as the document on which they relied in drafting their counterclaim.

On November 5, 2010, Marvel submitted a declaration (Declaration of James W. Quinn (“Quinn Decl.”)) with numerous documents attached. The declaration asserted that the document sent to the Court by the Kirbys was not a final contract, and had been rejected by Marvel in a letter dated March 11, 1987. (Quinn Decl. Ex. A.) Marvel submitted what it claims to be the fully executed Artwork Release—a one-page document dated June 16, 1987, and signed by Jack Kirby and a Marvel representative. ( Id. Ex. C.) Marvel argues that a fully executed version, dated October 31, 1986, does not exist, and so cannot be a contract.

The Kirbys object to the Court's consideration of the Quinn Declaration and any document attached thereto. They argue that Marvel used the Quinn Declaration to *471 raise new arguments in support of its motion to dismiss, and they point out that the Kirbys did not rely on those documents in drafting their counterclaim, so they constitute extrinsic evidence beyond the four corners of the pleading, which the Court cannot consider at this time. (Declaration of Marc Toberoff, Nov. 5, 2010 (“11/5/10 Toberoff Decl.”) ¶ 1.)

[20] Headnote Citing References The Kirbys are correct; Marvel's November 5 submission raises issues concerning the validity of the contract pleaded by the Kirbys, but those issues cannot be resolved on a pre-answer motion to dismiss. Consideration by the Court of the declaration and documents submitted by Marvel—all of which are materials outside the pleadings—would require conversion of Marvel's dismissal motion to a motion for summary judgment under Rule 56 of the Federal Rules of Civil Procedure. See Holowecki v. Fed. Express Corp., 440 F.3d 558, 565–66 (2d Cir.2006); Fonte v. Bd. of Managers of Cont'l Towers Condo., 848 F.2d 24, 25 (2d Cir.1988); In re Payment Card Interchange Fee and Merch. Disc. Antitrust Litig., 2008 WL 115104, at *8 (E.D.N.Y. Jan. 8, 2008). There is absolutely no need to convert this motion in order to decide the motion to dismiss on statute of limitations grounds. The Kirbys rely on the October 31, 1986 document, which they assert is a binding contract; for purposes of Marvel's motion to dismiss, I will not go beyond the Kirby's pleading and the document on which they relied in drafting it. The relevant contract is the October 1986 agreement pleaded in the Kirbys' counterclaims.

The 1986 agreement on which the Kirbys rely specifies that Marvel will return Kirby's “original physical Artwork,” subject to certain conditions. (Toberoff Decl. Ex. A). The Court asked for the document in order to ascertain what it said about the time for performance of this obligation. The Kirbys allege that Jack Kirby fully performed his obligations under the agreement. (Countercl. ¶ 51.) Language in the first paragraph of the Artwork Release suggests that performance by Marvel is due immediately, as it was in exchange for services previously performed by Kirby: “In recognition of the past participation by the ‘Artist’ ... Marvel Comics Group ... is pleased to deliver as a gift to the Artist the original physical Artwork ....” (Toberoff Decl. Ex. A.) Assuming arguendo that Marvel was obligated to return any Artwork in its possession immediately after October 31, 1986, its breach occurred in or about November 1986 and the statute of limitations on a breach of contract claim expired in or about November 1992—18 years ago.

[21] Headnote Citing References But let me assume that the contract does not specify any time for Marvel's performance. That returns us to hornbook contract law: When a contract does not specify a time for performance, a reasonable time is implied. See, e.g., 17A Am. Jur. 2d Contracts § 467; Teramo & Co., Inc. v. O'Brien–Sheipe Funeral Home, Inc., 283 A.D.2d 635, 725 N.Y.S.2d 87, 89 (2001); see also Guilbert, 480 F.3d at 149. For the claim here asserted to be timely, Marvel's breach had to occur no more than six years prior to the filing of the fourth counterclaim, which occurred on April 29, 2010. (Docket No. 30.) But that is almost twenty four years after the October 31, 1986 agreement. Six years prior to the assertion of the counterclaim was April 29, 2004—approximately seventeen and a half years after Marvel purportedly entered into a contract to return the work. These excessive periods of time for performance of a contractual obligation to return property are unreasonable under these circumstances. See, e.g., *472 Savasta v. 470 Newport Assocs., 82 N.Y.2d 763, 765, 603 N.Y.S.2d 821, 623 N.E.2d 1171 (N.Y.1993); Parker v. Booker, 33 A.D.3d 602, 822 N.Y.S.2d 156, 158–59 (2006); Four Asteria Realty, LLC v. BCP Bank of N. Am., 22 Misc.3d 1127(A), 2009 WL 500853, at *6 (N.Y. Gen. Term Feb. 26, 2009).

A reasonable period of time for performance of the October 31, 1986 contract would, generously speaking, be one year—which would mean that Marvel's breach occurred, and Kirby's breach of contract claim accrued, no later than October 31, 1987, some twenty plus years before his children asserted their derivative counterclaim. See, e.g., Grosz, 772 F.Supp.2d at ––––, 2010 WL 88003, at *10. Allowing for an even more generous period for full performance—say, three years from the date the contract was made—Marvel's breach occurred, and the claim accrued, in or about October 1989, which is still more than twenty years before the Kirbys filed their counterclaim for breach of contract. The fourth counterclaim is obviously untimely.

3. Equitable Tolling Does Not Resurrect The Untimely Claims.

The Kirbys' argue that the third and fourth counterclaims should not be dismissed as time barred because equitable tolling stopped the running of the statute of limitations. They assert that Marvel fraudulently concealed its continuing possession of Kirby's original artwork.

[22] Headnote Citing References[23] Headnote Citing References Fraudulent concealment will toll the statute of limitations if an otherwise time-barred plaintiff establishes three things: (1) there was in fact a wrongful concealment, (2) which concealment prevented the plaintiff's discovery of the nature of the claim during the limitations period, and (3) the plaintiff exercised due diligence in pursuing discovery of the claim. In re Merrill Lynch Ltd. P'ship Litig., 154 F.3d 56, 60 (2d Cir.1998). The Kirbys have the burden of establishing that equitable tolling applies. Boos v. Runyon, 201 F.3d 178, 185 (2d Cir.2000). They fail to discharge that burden.

[24] Headnote Citing References On this motion to dismiss, the Court looks to the pleading and what it does (and does not) allege. The Kirbys allege that “Marvel represented to Kirby that it had no other Kirby Artwork in its possession or control than that returned to Kirby,” and that, “Marvel concealed and continues to conceal that Marvel retained certain Kirby Artwork that it did not return to Kirby.” (Countercl. ¶¶ 4243.) Assuming (as I must on a motion to dismiss) the truth of the allegations about misrepresentation and concealment, the Kirbys nonetheless fall far short of pleading either that the concealment prevented their father (from whom they derive the causes of action they are asserting) from discovering that some of his artwork had not been returned or that their father exercised due diligence to assess whether Marvel had lived up to its obligation to return the artwork.

The Kirbys do not allege a single fact that would tend to explain how Marvel could have prevented Jack Kirby—the creator of the artwork—from realizing that Marvel had failed to return some of his pieces. They do not allege a single fact that tends to show any effort made by Kirby himself between October 31, 1986—the date of the purported contract—and his death in 1994 to discover whether he might have a claim for breach of the contract to return his original artwork. Neither is there any allegation that Kirby exercised due diligence after Marvel failed to respond to his 1982 demand in order to discover his purported claim for conversion. And there could not possibly be any such allegation—by asserting that Kirby entered into a contract with Marvel in late 1986 concerning the return of the artwork, the Kirbys admit that their father was *473 fully aware that the artwork had not been returned some four years after he first demanded its return.

Kirby, as the artist, was the person best situated to know that something he created was not given back to him. All he had to do was inventory whatever artwork Marvel delivered to him; if anything was missing (and, as it turns out, some pieces—60 of them, to be exact— were missing, see infra ), Kirby would have known about it. It is true that Kirby's children might not have known about every single work of art created by their father; but Kirby lived for twelve years after he first demanded the return of his Artwork and for eight years after the pleaded contract was (allegedly) entered into. It is, therefore, Kirby—not his children—who Marvel had to prevent from discovering that some of his artwork was missing; and it is Kirby—not his children—who was obliged to exercise due diligence to discover any breach by Marvel once a reasonable period for performance had passed.

[25] Headnote Citing References The Kirbys' failure to plead that Kirby exercised any diligence at all during his lifetime precludes a finding that Marvel “prevented” Kirby from discovering the nature of his claims. “Due diligence on the part of the plaintiff in bringing [an] action ... is essential element of equitable relief.” Abbas v. Dixon, 480 F.3d 636, 642 (2d Cir.2007) (quoting Doe v. Holy See (State of Vatican City), 17 A.D.3d 793, 793 N.Y.S.2d 565 (2005)). Accordingly, the claim for breach of contract (and for conversion as well) cannot be deemed timely by application of equitable tolling.FN2

FN2. Because both claims are barred by the statute of limitations, the Court declines to address Marvel's other arguments for dismissal of these counterclaims.

This conclusion is not altered by the fact that—as we now know—Marvel did not return all of Kirby's original artwork to the artist. On August 26, 2010, Marvel admitted to the Kirbys that it still had some 60 pages of original Kirby artwork (and offered to return 37 of them). (Letter from David Fleischer to Marc Toberoff, dated Aug. 26, 2010.) The Court was told of this while this motion was sub judice. Marvel's admission is deeply troubling in light of Marvel's earlier (and repeated) insistence that the Kirbys' accusations about retained artwork were “baseless.”

However, Marvel's discovery of these 60 pieces of artwork does not change the law of equitable tolling: it will not toll the statute of limitations unless the plaintiffs (or in this case, the counterclaim plaintiffs' predecessor in interest, their father, Jack Kirby) were prevented from learning about their claim despite exercising due diligence to discover whether he had a claim. If the alleged contract turns out to be valid and enforceable, it seems obvious that Jack Kirby did have a claim for breach. But absent allegations of facts tending to show that Kirby exercised due diligence to determine what pieces of artwork Marvel had not returned—and there are none—application of the equitable tolling doctrine to toll the statute of limitations is precluded.

D. The Kirbys Fail To State A Claim Under The Lanham Act.

The fifth counterclaim asserted by the Kirbys alleges a violation of the Lanham Act, 11 U.S.C. § 1125(a)(1)(B), which prohibits the use of a false designation of origin in commercial advertising or promotion. See 15 U.S.C. § 1125(a)(1)(B). The Kirbys allege that Jack Kirby was not credited as the author or co-author of the comic-book stories and characters that form the basis for “The Incredible Hulk” *474 and “X–Men Origins: Wolverine.” (Countercl. ¶¶ 56–57.) In response, Marvel argues that the Kirbys' claim is foreclosed by Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 123 S.Ct. 2041, 156 L.Ed.2d 18 (2003).

In Dastar, the Supreme Court analyzed the meaning of the word “origin” in Section 1125(a)(1)(A) to determine if it encompassed the producer of a television series upon which a later video series was based. 539 U.S. at 31–32, 123 S.Ct. 2041. In that case, Dastar used video footage in the public domain from a Fox television series about World War II (entitled “Crusade in Europe”) to create its own video series about the war (entitled “Campaigns”). Id. at 25–27, 123 S.Ct. 2041. Dastar heavily relied on the footage from “Crusade in Europe” with some modifications but sold the video as its own product, with no references to the underlying television series or Fox. Id. at 27, 123 S.Ct. 2041. Fox sued Dastar, alleging that the sale of “Campaigns” without proper credit to “Crusade in Europe” was “reverse passing off” in violation of 15 U.S.C. § 1125(a)(1)(A). Id.

Fox argued that “in marketing and selling Campaigns as its own product without acknowledging its nearly wholesale reliance on the Crusade television series,” Dastar made a “false designation of origin,” which was likely to confuse consumers about the “origin” of Dastar's video. Id. at 31, 123 S.Ct. 2041. The Supreme Court disagreed, concluding that the phrase “origin of goods” in the Lanham Act “refers to the producer of the tangible goods that are offered for sale, and not to the author of any idea, concept, or communication embodied in those goods.” Id. at 37, 123 S.Ct. 2041. Thus, Dastar did not violate the Lanham Act when it sold its video without properly crediting Fox because it (and not Fox) was the producer of the good being sold ( i.e., the “Campaigns” video). The Court explained that if “the producer of a video that substantially copied the Crusade series were, in advertising or promotion, to give purchasers the impression that the video was quite different from that series” then Fox might have a cause of action under the “ ‘misrepresents the nature, characteristics [or] qualities' provision of [Section 1125(a)(1)(B) ]” Id. at 38, 123 S.Ct. 2041.

[26] Headnote Citing References Marvel is correct that the Kirbys' claim is fundamentally one for failure to credit Kirby with the creation of the stories and characters upon which the two films are based. The Kirbys do not allege that Marvel, in advertising or promoting the films, attempted to give moviegoers the impression that either film was quite different from the original comic-book stories—the window left open in Dastar. See id. at 38, 123 S.Ct. 2041. The Kirbys' own allegations in support of their Section 1125(a)(1)(B) claim state that “Kirby was not properly identified by Marvel's licensees as the author or co-author of the underlying works.” (Countercl. ¶¶ 5960.) Because such claims are false-designation-of-origin claims foreclosed by Dastar, the Kirbys have not pleaded a claim on which relief may be granted. As a result, the Kirbys' fifth counterclaim is dismissed.

E. Disney And Marvel Entertainment Are Proper Counterclaim–Defendants On The First Counterclaim.

Marvel moves to dismiss Disney and Marvel Entertainment as Counterclaim–Defendants because the Kirbys' allegations do not support a finding of liability against either entity. In a footnote, the Kirbys concede that Disney should be removed as a Counterclaim–Defendant on the third, fourth, and fifth counterclaims—all of which have been dismissed. (Kirbys' Mem. Of Law In Opp. To Mot. To Dismiss, *475 25 n. 7.) The second counterclaim has also been dismissed, thereby eliminating the need to address whether Disney or Marvel Entertainment are proper defendants on that counterclaim. What remains is to decide whether Disney and Marvel Entertainment are proper Counterclaim–Defendants on the first counterclaim.

[27] Headnote Citing References The first counterclaim seeks a declaration that the Termination Notices are valid. The Termination Notices relate to copyright grants that were made in 1972, to an entity that is alleged to be a predecessor of Marvel. (Countercl. ¶ 24) The Termination Notices were served on September 16, 2009. ( Id. ¶ 25.) Disney purchased Marvel on December 31, 2009. ( Id. ¶ 10.)

[28] Headnote Citing References Disney argues that it should not be held liable for any action of Marvel that has been or may be undertaken in contravention of the Termination Notices simply because it is Marvel's parent company. It is of course the law that a parent is not automatically liable for the actions of its subsidiary and no facts have been pleaded here to support piercing the corporate veil between Disney and Marvel. However, the first counterclaim does not seek to hold anyone liable for anything. It asks only for a declaration of the validity of the Termination Notices that were served on Marvel three months before Disney—in a widely–publicized move—acquired Marvel and its closet full of classic comic-book characters, including the Kirby characters. As Marvel's parent company, Disney is now in a position to exploit Marvel's assets—including whatever rights Marvel has in the Kirby-created characters. It is therefore perfectly appropriate to include Disney as a defendant on this claim for declaratory relief—even though Disney did not acquire its interest in the matters in suit until after the Termination Notices were sent.

[29] Headnote Citing References Turning to Marvel Entertainment's status as a Counterclaim–Defendant, the Kirbys allege that Marvel Entertainment is the successor-in-interest to numerous entities—including Magazine Management. (Countercl. ¶ 14.) From this allegation, the Court can infer that Marvel or one of its subsidiary entities is in possession of the Kirby copyrights at issue and is in a position to exploit them.

Accordingly, Marvel's motion to dismiss Disney and Marvel Entertainment as Counterclaim–Defendants is denied.

III. CONCLUSION

For the reasons discussed above, Counterclaim–Defendants' motion to dismiss is granted as to Counterclaim–Plaintiffs' second, third, fourth, and fifth counterclaims. Counterclaim–Defendants' motion to dismiss the first counterclaim is denied. Counterclaim–Defendants' motion to dismiss The Walt Disney Company and Marvel Entertainment, Inc. as Counterclaim–Defendants is also denied.

S.D.N.Y.,2010.
Marvel Worldwide, Inc. v. Kirby
756 F.Supp.2d 461


Motions, Pleadings and Filings (Back to top)

2011 WL 2975949 (Trial Filing) Defendants' Pre-Trial Statement (Apr. 1, 2011) View and print document in PDF format exactly like the original filing Original Image of this Document (PDF)
2011 WL 1209648 (Expert Report and Affidavit) Expert Report of Mark Evanier (Feb. 25, 2011) View and print document in PDF format exactly like the original filing Original Image of this Document (PDF)
2011 WL 1209649 (Expert Report and Affidavit) Expert Report of John Morrow (Feb. 25, 2011) View and print document in PDF format exactly like the original filing Original Image of this Document (PDF)
2011 WL 1247320 (Trial Motion, Memorandum and Affidavit) Plaintiffs' and Counterclaim-Defendants' Memorandum of Law in Support of Their Motion for Summary Judgment (Feb. 25, 2011) View and print document in PDF format exactly like the original filing Original Image of this Document (PDF)
2011 WL 1247321 (Trial Motion, Memorandum and Affidavit) Plaintiffs' and Counterclaim-Defendants' Memorandum of Law in Support of Their Motion to Exclude the Expert Report and Testimony of Mark Evanier (Feb. 25, 2011) View and print document in PDF format exactly like the original filing Original Image of this Document (PDF)
2011 WL 1247322 (Trial Motion, Memorandum and Affidavit) Memorandum of Law in Support of Motion by Plaintiffs and Counterclaim-Defendants to Exclude the Expert Report and Testimony of John Morrow (Feb. 25, 2011) View and print document in PDF format exactly like the original filing Original Image of this Document (PDF)
2011 WL 1247323 (Trial Motion, Memorandum and Affidavit) Memorandum of Law in Support of Defendants' Motion for Summary Judgment (Feb. 25, 2011) View and print document in PDF format exactly like the original filing Original Image of this Document (PDF)
2011 WL 1247319 (Trial Motion, Memorandum and Affidavit) Plaintiffs' and Counterclaim-Defendants' Memorandum of Law in Support of Their Motion to Strike Defendants' Jury Demand (Jan. 28, 2011) View and print document in PDF format exactly like the original filing Original Image of this Document (PDF)
2011 WL 1209647 (Partial Expert Testimony) Video Deposition of John Morrow (Jan. 10, 2011) View and print document in PDF format exactly like the original filing Original Image of this Document (PDF)
2011 WL 1209650 (Partial Expert Testimony) Video Deposition of John Morrow (Jan. 10, 2011) View and print document in PDF format exactly like the original filing Original Image of this Document (PDF)
2011 WL 1209651 (Partial Expert Testimony) Video Deposition of John Morrow (Jan. 10, 2011) View and print document in PDF format exactly like the original filing Original Image of this Document (PDF)
2010 WL 6380596 (Partial Expert Testimony) Videotaped Deposition of Mark Evanier (Dec. 6, 2010) View and print document in PDF format exactly like the original filing Original Image of this Document (PDF)
2010 WL 6380597 (Partial Expert Testimony) Videotaped Deposition of Mark Evanier (Dec. 6, 2010) View and print document in PDF format exactly like the original filing Original Image of this Document (PDF)
2010 WL 6380600 (Partial Expert Testimony) Videotaped Deposition of Mark Evanier (Dec. 6, 2010) View and print document in PDF format exactly like the original filing Original Image of this Document (PDF)
2010 WL 6380595 (Partial Expert Testimony) Videotaped Deposition of Mark Evanier (Nov. 9, 2010) View and print document in PDF format exactly like the original filing Original Image of this Document (PDF)
2010 WL 6380598 (Partial Expert Testimony) Videotaped Deposition of Mark Evanier Los Angeles, California (Nov. 9, 2010)
2010 WL 6380599 (Partial Expert Testimony) Videotaped Deposition of Mark Evanier (Nov. 9, 2010) View and print document in PDF format exactly like the original filing Original Image of this Document (PDF)
2010 WL 3060785 (Trial Motion, Memorandum and Affidavit) Marvel's Reply Memorandum of Law in Further Support of Motion to Dismiss Defendants' Counterclaims Pursuant to Rule 12(b)(6) (Jun. 21, 2010) View and print document in PDF format exactly like the original filing Original Image of this Document (PDF)
2010 WL 3060783 (Trial Motion, Memorandum and Affidavit) Memorandum of Law in Opposition to Counterclaim-Defendants' Motion to Dismiss Defendants' Counterclaims Pursuant to Rule 12(b)(6) (Jun. 10, 2010) View and print document in PDF format exactly like the original filing Original Image of this Document (PDF)
2010 WL 3060784 (Trial Motion, Memorandum and Affidavit) Defendants' Objection to the Declaration of Eli Bard (Jun. 10, 2010) View and print document in PDF format exactly like the original filing Original Image of this Document (PDF)
2010 WL 3060781 (Trial Motion, Memorandum and Affidavit) Counterclaim-Defendants'Memorandum of Law in Support of Their Motion to Dismiss Defendants' Counterclaims Pursuant to Rule 12(b)(6) (May 24, 2010) View and print document in PDF format exactly like the original filing Original Image of this Document (PDF)
2010 WL 194759 (Trial Pleading) Complaint (Jan. 8, 2010) View and print document in PDF format exactly like the original filing Original Image of this Document with Appendix (PDF)
1:10cv00141 (Docket) (Jan. 8, 2010)


Judges, Attorneys and Experts (Back to top)
Judges
  • McMahon, Hon. Colleen
  • United States District Court, Southern New York
    New York, New York 10007-1312


    Attorneys
    Attorneys for Plaintiff
  • Fleischer, David
  • New York, New York 10112

  • Kleinick, Jodi A.
  • New York, New York 10022

  • Rich, R. Bruce
  • New York, New York 10153

  • Singer, Randi W.
  • New York, New York 10153

    Other Attorneys
  • Quinn, James W.
  • New York, New York 10153

  • Toberoff, Marc
  • Beverly Hills, California 90212


    Experts
  • Evanier, Mark
  • PRINT MEDIA EXPERT
    CA

  • Morrow, John L.
  • EMPLOYMENT EXPERT
    GA

  • Morrow, John
  • Illustrator
    NY

    END OF DOCUMENT

    PDF Document West Reporter Image (PDF)

    Marvel Characters, Inc. v. Kirby

    Marvel Characters, Inc. v. Kirby
    726 F.3d 119
    C.A.2 (N.Y.),2013.
    August 08, 2013 (Approx. 30 pages)

    726 F.3d 119, 2013 Copr.L.Dec. P 30,470, 86 Fed.R.Serv.3d 286, 107 U.S.P.Q.2d 1813

    United States Court of Appeals,
    Second Circuit.

    MARVEL CHARACTERS, INCORPORATED, Marvel Worldwide, Incorporated, MVL Rights, LLC, Plaintiffs–Counter–Defendants–Appellees,
    Walt Disney Company, Marvel Entertainment, Incorporated, Counter–Defendants–Appellees,
    v.
    Lisa R. KIRBY, Neal L. Kirby, Susan N. Kirby, Barbara J. Kirby, Defendants–Counter–Claimants–Appellants.

    Docket No. 11–3333–cv.
    Argued: Oct. 24, 2012.
    Decided: Aug. 8, 2013.
    Background: Comic book publishers brought declaratory judgment action against heirs of freelance artist whose artworks depicted iconic characters, challenging validity of heirs' notices purporting to terminate artist's assignment of copyright to publishers. The United States District Court for the Southern District of New York, Colleen McMahon, J., 2010 WL 1655253, denied heirs' motion to dismiss, and, 777 F.Supp.2d 720, granted summary judgment in favor of publishers on their claim for declaratory relief and denied heirs' cross-motion for summary judgment. Heirs appealed.

    Holdings: The Court of Appeals, Sack, Circuit Judge, held that:
    (1) non-resident heirs were not subject to personal jurisdiction under New York's long-arm statute;
    (2) non-resident heirs were not indispensable parties;
    (3) expert testimony on historical perspective concerning relationship between publishers and artist was not admissible;
    (4) artist's works were made at publishers' instance;
    (5) artist's works were created at publishers' expense; and
    (6) heirs failed to overcome presumption that artist's works were “works made for hire.”

    Affirmed in part and vacated in part.

    West Headnotes

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    Non-resident heirs of freelance artist whose artworks depicted iconic characters did not transact business within state of New York, as required under New York's long-arm statute for exercise of personal jurisdiction over them in comic book publishers' declaratory judgment action challenging validity of heirs' notices purporting to terminate artist's assignment of copyright to publishers, although heirs sent termination notices to publishers in New York, where heirs' communications were not part, or in contemplation, of a course of business dealings with publishers, and their notices asserted legal rights under federal copyright laws, not New York law. N.Y.McKinney's CPLR 302(a)(1).

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    Non-resident heirs of freelance artist whose artworks depicted iconic characters were not indispensable parties in comic book publishers' declaratory judgment action, challenging validity of non-resident and resident heirs' notices purporting to terminate artist's assignment of copyright to publishers, where absence of non-resident heirs would not prejudice existing parties, since judgment against resident heirs would foreclose non-resident heirs' rights too, and any judgment would reflect full and fair adjudication of resident heirs' rights under Copyright Act section governing termination of transfers, non-resident heirs' interests would be adequately represented, since they were identical to those of resident heirs, and publishers might be deprived of adequate remedy if the action were dismissed for non-joinder. Fed.Rules Civ.Proc.Rule 19(b), 28 U.S.C.A.; 17 U.S.C.A. § 304(c)(1).

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    An exception to the general rule that everyone should have his own day in court exists when, in certain limited circumstances, a person, although not a party, has his interests adequately represented by someone with the same interests who is a party, and, thus, the potential prejudice to an absent party under rule governing court's actions when joinder is not feasible is mitigated when a remaining party could champion his or her interest. Fed.Rules Civ.Proc.Rule 19(b), 28 U.S.C.A.

    [10] Headnote Citing References KeyCite Citing References for this Headnote

    Key Number Symbol170A Federal Civil Procedure
      Key Number Symbol170AII Parties
        Key Number Symbol170AII(E) Necessary Joinder
           Key Number Symbol170AII(E)1 In General
            Key Number Symbol170Ak201 k. In general. Most Cited Cases

    For purposes of rule governing court's actions when joinder is not feasible, prejudice to absent parties approaches the vanishing point when the remaining parties are represented by the same counsel, and when the absent and remaining parties' interests are aligned in all respects. Fed.Rules Civ.Proc.Rule 19(b), 28 U.S.C.A.

    [11] Headnote Citing References KeyCite Citing References for this Headnote

    Key Number Symbol170B Federal Courts
      Key Number Symbol170BVIII Courts of Appeals
        Key Number Symbol170BVIII(K) Scope, Standards, and Extent
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            Key Number Symbol170Bk776 k. Trial de novo. Most Cited Cases

    The Court of Appeals reviews a district court's grant of summary judgment de novo.

    [12] Headnote Citing References KeyCite Citing References for this Headnote

    Key Number Symbol170B Federal Courts
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        Key Number Symbol170BVIII(K) Scope, Standards, and Extent
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            Key Number Symbol170Bk763 Extent of Review Dependent on Nature of Decision Appealed from
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    In reviewing a summary judgment decision, the Court of Appeals applies the same standards applied by the district court.

    [13] Headnote Citing References KeyCite Citing References for this Headnote

    Key Number Symbol170B Federal Courts
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    In determining whether there is a genuine dispute as to a material fact, the Court of Appeals must resolve all ambiguities and draw all inferences against the moving party.

    [14] Headnote Citing References KeyCite Citing References for this Headnote

    Key Number Symbol170B Federal Courts
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    The Court of Appeals reviews for abuse of discretion the district court's decision on the admissibility of expert testimony.

    [15] Headnote Citing References KeyCite Citing References for this Headnote

    Key Number Symbol157 Evidence
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           Key Number Symbol157k508 k. Matters involving scientific or other special knowledge in general. Most Cited Cases

    To be admissible, expert testimony must be helpful to the trier of fact in comprehending and deciding issues beyond the understanding of a layperson. Fed.Rules Evid.Rule 702, 28 U.S.C.A.

    [16] Headnote Citing References KeyCite Citing References for this Headnote

    Key Number Symbol157 Evidence
      Key Number Symbol157XII Opinion Evidence
        Key Number Symbol157XII(B) Subjects of Expert Testimony
           Key Number Symbol157k508 k. Matters involving scientific or other special knowledge in general. Most Cited Cases

    Key Number Symbol157 Evidence Headnote Citing References KeyCite Citing References for this Headnote
      Key Number Symbol157XII Opinion Evidence
        Key Number Symbol157XII(D) Examination of Experts
           Key Number Symbol157k555 Basis of Opinion
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    Expert testimony on historical perspective concerning relationship between comic book publishers and freelance artist whose artworks depicted iconic characters would not help trier of fact in comprehending and deciding issues beyond understanding of a layperson, and thus was not admissible in publishers' declaratory judgment action against artist's heirs, challenging validity of heirs' notices purporting to terminate artist's assignment of copyright to publishers, where experts' testimony was by and large undergirded by hearsay statements, involved speculation as to motivations and intentions of certain parties, or opined on credibility of other witnesses' accounts. Fed.Rules Evid.Rule 702, 28 U.S.C.A.

    [17] Headnote Citing References KeyCite Citing References for this Headnote

    Key Number Symbol157 Evidence
      Key Number Symbol157XII Opinion Evidence
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           Key Number Symbol157k555 Basis of Opinion
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    Although the rules permit experts some leeway with respect to hearsay evidence, a party cannot call an expert simply as a conduit for introducing hearsay under the guise that the testifying expert used the hearsay as the basis of his testimony; rather, the appropriate way to adduce factual details of specific past events is, when possible, through persons who witnessed those events. Fed.Rules Evid.Rule 703, 28 U.S.C.A.

    [18] Headnote Citing References KeyCite Citing References for this Headnote

    Key Number Symbol99 Copyrights and Intellectual Property
      Key Number Symbol99I Copyrights
        Key Number Symbol99I(E) Transfer
           Key Number Symbol99k43 Assignments or Transfers
            Key Number Symbol99k47 k. Construction and operation. Most Cited Cases

    Copyright Act section governing termination of transfers protects the property rights of widows and children in copyrights by granting them the power to undo earlier transfers and to enjoy the remainder of the copyright term. 17 U.S.C.A. § 304(c).

    [19] Headnote Citing References KeyCite Citing References for this Headnote

    Key Number Symbol99 Copyrights and Intellectual Property
      Key Number Symbol99I Copyrights
        Key Number Symbol99I(D) Ownership
           Key Number Symbol99k41 Ownership
            Key Number Symbol99k41(2) k. Works made for hire. Most Cited Cases

    Key Number Symbol99 Copyrights and Intellectual Property Headnote Citing References KeyCite Citing References for this Headnote
      Key Number Symbol99I Copyrights
        Key Number Symbol99I(E) Transfer
           Key Number Symbol99k43 Assignments or Transfers
            Key Number Symbol99k47 k. Construction and operation. Most Cited Cases

    When a work is “made for hire,” such that copyright law deems the employer to be the “author” for purposes of copyright ownership, the hired party, although the “author” in the colloquial sense, never owned the copyrights to assign, for purposes of Copyright Act section governing termination of transfers. 17 U.S.C.A. §§ 201(b), 304(c).

    [20] Headnote Citing References KeyCite Citing References for this Headnote

    Key Number Symbol99 Copyrights and Intellectual Property
      Key Number Symbol99I Copyrights
        Key Number Symbol99I(D) Ownership
           Key Number Symbol99k41 Ownership
            Key Number Symbol99k41(2) k. Works made for hire. Most Cited Cases

    As a general rule, a work is made at the hiring party's instance and expense, such that the work is “made for hire” within meaning of the Copyright Act, when the employer induces the creation of the work and has the right to direct and supervise the manner in which the work is carried out. 17 U.S.C.A. § 101 et seq.

    [21] Headnote Citing References KeyCite Citing References for this Headnote

    Key Number Symbol99 Copyrights and Intellectual Property
      Key Number Symbol99I Copyrights
        Key Number Symbol99I(D) Ownership
           Key Number Symbol99k41 Ownership
            Key Number Symbol99k41(2) k. Works made for hire. Most Cited Cases

    For purposes of the instance and expense test for determining whether a work is work made for hire within meaning of the Copyright Act, “instance” refers to the extent to which the hiring party provided the impetus for, participated in, or had the power to supervise the creation of the work; actual creative contributions or direction strongly suggest that the work is made at the hiring party's instance. 17 U.S.C.A. § 101 et seq.

    [22] Headnote Citing References KeyCite Citing References for this Headnote

    Key Number Symbol99 Copyrights and Intellectual Property
      Key Number Symbol99I Copyrights
        Key Number Symbol99I(D) Ownership
           Key Number Symbol99k41 Ownership
            Key Number Symbol99k41(2) k. Works made for hire. Most Cited Cases

    The right to direct and supervise the manner in which the work is carried out, even if not exercised, is in some circumstances enough to satisfy the instance requirement, under the instance and expense test for determining whether a work is work made for hire within meaning of the Copyright Act. 17 U.S.C.A. § 101 et seq.

    [23] Headnote Citing References KeyCite Citing References for this Headnote

    Key Number Symbol99 Copyrights and Intellectual Property
      Key Number Symbol99I Copyrights
        Key Number Symbol99I(D) Ownership
           Key Number Symbol99k41 Ownership
            Key Number Symbol99k41(2) k. Works made for hire. Most Cited Cases

    Under the instance and expense test for determining whether a work is work made for hire within the meaning of the Copyright Act, inducement or control alone can be incidental enough not to vest copyright ownership in the hiring party. 17 U.S.C.A. § 101 et seq.

    [24] Headnote Citing References KeyCite Citing References for this Headnote

    Key Number Symbol99 Copyrights and Intellectual Property
      Key Number Symbol99I Copyrights
        Key Number Symbol99I(D) Ownership
           Key Number Symbol99k41 Ownership
            Key Number Symbol99k41(2) k. Works made for hire. Most Cited Cases

    For purposes of the instance and expense test for determining whether a work is work made for hire within meaning of the Copyright Act, the “expense” component refers to the resources the hiring party invests in the creation of the work. 17 U.S.C.A. § 101 et seq.

    [25] Headnote Citing References KeyCite Citing References for this Headnote

    Key Number Symbol99 Copyrights and Intellectual Property
      Key Number Symbol99I Copyrights
        Key Number Symbol99I(D) Ownership
           Key Number Symbol99k41 Ownership
            Key Number Symbol99k41(2) k. Works made for hire. Most Cited Cases

    Under the instance and expense test for determining whether a work is work made for hire within the meaning of the Copyright Act, payment of a sum certain suggests a work-for-hire arrangement, but when the creator of a work receives royalties as payment, that method of payment generally weighs against finding a work-for-hire relationship. 17 U.S.C.A. § 101 et seq.

    [26] Headnote Citing References KeyCite Citing References for this Headnote

    Key Number Symbol99 Copyrights and Intellectual Property
      Key Number Symbol99I Copyrights
        Key Number Symbol99I(D) Ownership
           Key Number Symbol99k41 Ownership
            Key Number Symbol99k41(2) k. Works made for hire. Most Cited Cases

    Whether the instance and expense test for determining whether a work is work made for hire within the meaning of the Copyright Act is satisfied turns on the parties' creative and financial arrangement as revealed by the record in each case. 17 U.S.C.A. § 101 et seq.

    [27] Headnote Citing References KeyCite Citing References for this Headnote

    Key Number Symbol99 Copyrights and Intellectual Property
      Key Number Symbol99I Copyrights
        Key Number Symbol99I(D) Ownership
           Key Number Symbol99k41 Ownership
            Key Number Symbol99k41(2) k. Works made for hire. Most Cited Cases

    If the hiring party is able to satisfy the instance and expense test for determining whether a work is work made for hire within the meaning of the Copyright Act, it is presumed to be the author of the work, and the independent contractor can overcome the presumption only by evidence of an agreement to the contrary. 17 U.S.C.A. § 101 et seq.

    [28] Headnote Citing References KeyCite Citing References for this Headnote

    Key Number Symbol99 Copyrights and Intellectual Property
      Key Number Symbol99I Copyrights
        Key Number Symbol99I(D) Ownership
           Key Number Symbol99k41 Ownership
            Key Number Symbol99k41(2) k. Works made for hire. Most Cited Cases

    Key Number Symbol99 Copyrights and Intellectual Property Headnote Citing References KeyCite Citing References for this Headnote
      Key Number Symbol99I Copyrights
        Key Number Symbol99I(E) Transfer
           Key Number Symbol99k43 Assignments or Transfers
            Key Number Symbol99k47 k. Construction and operation. Most Cited Cases

    Freelance artist's works depicting iconic characters were made at comic book publishers' instance, as required for the works to be work made for hire within meaning of Copyright Act section governing termination of transfers, where artist's working relationship with publishers was close and continuous during period of years in which publishers published great majority of artist's work, artist created the works pursuant to publishers' assignment or with them specifically in mind, publishers played at least some creative role with respect to the works, publishers had power to reject artist's pages and require him to redo them, or to alter them. 17 U.S.C.A. § 304(c).

    [29] Headnote Citing References KeyCite Citing References for this Headnote

    Key Number Symbol99 Copyrights and Intellectual Property
      Key Number Symbol99I Copyrights
        Key Number Symbol99I(D) Ownership
           Key Number Symbol99k41 Ownership
            Key Number Symbol99k41(2) k. Works made for hire. Most Cited Cases

    Key Number Symbol99 Copyrights and Intellectual Property Headnote Citing References KeyCite Citing References for this Headnote
      Key Number Symbol99I Copyrights
        Key Number Symbol99I(E) Transfer
           Key Number Symbol99k43 Assignments or Transfers
            Key Number Symbol99k47 k. Construction and operation. Most Cited Cases

    Freelance artist's works depicting iconic characters were created at comic book publishers' expense, as required for the works to be work made for hire within meaning of Copyright Act section governing termination of transfers, where publishers paid artist a flat rate per page for those pages they accepted, and no royalties, they did not pay for artist's supplies or provide him with office space, and they were free to reject his pages and pay him nothing for them. 17 U.S.C.A. § 304(c).

    [30] Headnote Citing References KeyCite Citing References for this Headnote

    Key Number Symbol99 Copyrights and Intellectual Property
      Key Number Symbol99I Copyrights
        Key Number Symbol99I(D) Ownership
           Key Number Symbol99k41 Ownership
            Key Number Symbol99k41(2) k. Works made for hire. Most Cited Cases

    Key Number Symbol99 Copyrights and Intellectual Property Headnote Citing References KeyCite Citing References for this Headnote
      Key Number Symbol99I Copyrights
        Key Number Symbol99I(E) Transfer
           Key Number Symbol99k43 Assignments or Transfers
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    Heirs of freelance artist failed to overcome presumption that artist's works depicting iconic characters were “works made for hire” within meaning of Copyright Act section governing termination of transfers, where there was no evidence of an agreement to the contrary contemporaneous with the creation of the works. 17 U.S.C.A. § 304(c).

    *124 R. Bruce Rich (James W. Quinn, Randi W. Singer, Gregory Silbert, on the brief), Weil, Gotshal & Manges LLP, New York, NY; David Fleischer, Haynes and Boone, LLP, New York, N.Y. for Plaintiffs–Counter–Defendants–Appellees and Counter–Defendants–Appellees.

    Marc Toberoff, Toberoff & Associates, P.C., Malibu, CA, for Defendants–Counter–Claimants–Appellants.

    Before: CABRANES, SACK, and CARNEY, Circuit Judges.


    SACK, Circuit Judge:

    This appeal requires us to revisit our case law applying the work-for-hire doctrine in the context of section 304 of the Copyright Act of 1976 (or, the “1976 Act”), 17 U.S.C. § 304. Defendants-counter-claimants-appellants Lisa, Neal, Susan, and Barbara Kirby (collectively, the “Kirbys”) are the children of the late Jack Kirby. Kirby is considered one of the most influential comic book artists of all time. At various times throughout his career, he produced drawings for Marvel Comics, a comic book publisher that has since grown into the multifaceted enterprise reflected in the case caption: Marvel Characters, Inc., Marvel Worldwide, Inc., MVL Rights, LLC, and Marvel Entertainment, Inc. (collectively, “Marvel”). At issue here are the rights to drawings Kirby allegedly created between 1958 and 1963.

    The Kirbys appeal from the district court's grant of summary judgment to Marvel, which was based on the conclusion that all of the works at issue are “works made for hire” within the meaning of section 304(c), and that the Kirbys therefore have no rights to the works. Two of the Kirbys, Lisa and Neal, also challenge the district court's conclusion that it had personal jurisdiction over them under New York's long-arm statute. They further argue that they are indispensable parties under Rule 19(b) of the Federal Rules of Civil Procedure, such that their absence from this lawsuit (by virtue of the district court's lack of personal jurisdiction over them) requires that the suit be dismissed in its entirety.

    We conclude that the district court was without personal jurisdiction over Lisa and Neal. We therefore vacate the judgment as against them. We also find, however, that Lisa and Neal are not indispensable parties to this lawsuit, and that the district court was correct in concluding that the works at issue are “works made for hire” under section 304(c). We therefore affirm the judgment as to defendants Barbara and Susan.

    BACKGROUND

    In this appeal from the grant of summary judgment, we view the evidence in the light most favorable to the nonmovants, the Kirbys for present purposes, and draw all reasonable inferences in their favor. See, e.g., Singer v. Ferro, 711 F.3d 334, 339 (2d Cir.2013).

    Jack Kirby

    Jack Kirby, born Jacob Kurtzberg in New York City's Lower East Side in 1917, began his career in the comic book business*125 in the late 1930s. In the summer of 1940, a young woman named Rosalind moved into the apartment above his with her family. The day they met, Kirby asked Rosalind if she “[w]ould like to see [his] etchings[.]” She thought he wanted “to fool around”; he only wanted to show her his drawings for a new comic book series called Captain America. John Morrow, “Would You Like to See My Etchings?”: Rosalind Kirby Interviewed (conducted Dec. 12, 1995), The Jack Kirby Collector, April 1996, at 6. Kirby and “Roz” were married in 1942. After Kirby's military service in World War II, the couple had four children: Susan, Neal, Barbara, and Lisa.

    Kirby's career in comic book illustration spanned more than half a century. His influence was substantial. An obituary marking his death in 1994 quoted Joe Simon, Kirby's creative partner for fifteen years: “He brought the action drawing to a new level. His style was imitated all over and still is today to a certain extent.” Jack Kirby, 76; Created Comic Book Superheroes, N.Y. Times, Feb. 8, 1994, at D22.

    Kirby was prolific, too. In 1951 alone, 308 pages of Kirby's work appeared in published comic books. This output was typical for him in the years between 1940 and 1978.

    Marvel Comics and Stan Lee

    Marvel was founded as Timely Comics in 1939 by one Martin Goodman. In 1940, Marvel purchased the first ten issues of Captain America from Kirby and Joe Simon. But Kirby and Simon would soon move on to a competitor, DC Comics. To replace them, Goodman hired one Stanley Lieber.

    Lieber would come to be known by his pen name, Stan Lee. Lee is in his own right a towering figure in the comic book world, and a central one in this case. He in effect directed Marvel from the early 1940s until sometime in the 1970s, serving, in his words, as “Editor,” “Art Director” and “a staff writer.” Deposition of Stan Lee (“Lee Dep.”), May 13, 2010, at 17, Joint App'x at 2437. He continued to work for Marvel in one capacity or another at least to the day of his deposition testimony in this litigation.

    But in the 1940s and 50s, Marvel, hobbled by poor business decisions, was hardly a success story.FN1 In 1958, Kirby began producing drawings for Marvel once again. And by 1961, its fortunes began to change. That year, Marvel released the first issues of The Fantastic Four. On its heels were releases of the first issues of some of Marvel's most enduring and profitable titles, including The Incredible Hulk, The X–Men, and Spider–Man.

    FN1. Certainly not helping matters was a mid–1950s investigation by the United States Senate into comics' alleged corrupting influence on America's youth. On April 21, 1954, a subcommittee of the Senate Judiciary Committee held a televised hearing on the topic. Louis Menand, The Horror: Congress investigates the comics, The New Yorker, Mar. 31, 2008, at 124. The venue was the United States Courthouse at 40 Foley Square in New York City—named in 2001 the “Thurgood Marshall United States Courthouse”—in which this opinion was prepared. Id.

    Kirby's Relationship with Marvel from 1958–1963

    This litigation concerns the property rights in 262 works published by Marvel between 1958 and 1963. Who owns these rights depends upon the nature of Kirby's arrangement with Marvel during that period.

    It is undisputed that Kirby was a freelancer, i.e., he was not a formal employee of Marvel, and not paid a fixed wage or salary. He did not receive benefits, and *126 was not reimbursed for expenses or overhead in creating his drawings. He set his own hours and worked from his home. Marvel, usually in the person of Stan Lee, was free to reject Kirby's drawings or ask him to redraft them. When Marvel accepted drawings, it would pay Kirby by check at a per-page rate.

    Despite the absence of a formal employment agreement, however, the record suggests that Kirby and Marvel were closely affiliated during the relevant time period. Lee assigned Kirby, whom he considered his best artist, a steady stream of work during that period. See Lee Dep. at 36, Joint App'x at 2456 (“I wanted to use Jack for everything, but I couldn't because he was just one guy.”); id. at 37, Joint App'x at 2457 (“So I said: All right, forget it, Jack. I will give [the Spider–Man strip] to somebody else. Jack didn't care. He had so much to do.”); id. at 30, Joint App'x 2450 (“He got the highest [rate] because I considered him our best artist.”).

    And Kirby seems to have done most of his work with Marvel projects in mind. Although the Kirby children assert that their father could and did produce and sell his work to other publishers during those years, lists of Kirby's works cited by both parties establish that the vast majority of his published work in that time frame was published by Marvel (or Atlas Comics, as part of Marvel Comics Group).

    The specifics of Kirby and Marvel's creative relationship during this time period are less clear.

    According to Lee, at the relevant time, artists worked using what the parties call the “Marvel Method.” It was developed as a way to “keep a lot of artists busy” when Lee or another writer could not provide the artist with a completed script. Lee Dep. at 21, Joint App'x at 2441. The first step was for Lee to meet with an artist at a “plotting conference.” Id. at 39–40, Joint App'x at 2459–60. Lee would provide the artist with a “brief outline” or “synopsis” of an issue; sometimes he would “just talk ... with the artist” about ideas. Id. at 35, Joint App'x at 2455. The artist would then “draw it any way they wanted to.” Id. at 21, Joint App'x at 2441. Then a writer, such as Lee, would “put in all the dialogue and the captions.” Id. According to Lee, he “maintain[ed] the ability to edit and make changes or reject what the other writers or artists had created.” Id. at 22, Joint App'x at 2442.

    Lee testified that he worked this way with Kirby “for years”:

    And Jack Kirby and I would, let's say when we did the Fantastic Four, I first wrote a synopsis of what I thought the Fantastic Four should be, who the characters should be, what their personalities were. And I gave it to Jack, and then I told him what I thought the first story should be, how to open it, who the villain should be, and how we would end it. And that was all. Jack went home and drew the whole thing. I put the dialogue in.

    Id. at 118, Joint App'x at 2538.

    Other evidence in the record, including some of Lee's own deposition testimony, indicates, however, that Kirby had a freer hand within this framework than did comparable artists. For example, Lee explained that “instead of telling [Kirby] page by page” what to draw, Lee might simply tell him to “[d]evote five pages to this, five pages to that, and three pages to that.” Id. at 70, Joint App'x at 2490. Sometimes during plotting sessions, Kirby might “contribute something or he might say, ‘Stan, let's also do this or do that.’ ” Id. at 41, Joint App'x at 2461.

    It is beyond dispute, moreover, that Kirby made many of the creative contributions, often thinking up and drawing characters*127 on his own, influencing plotting, or pitching fresh ideas.

    The Termination Notices

    The dispute before us began in September 2009, when the Kirbys served various Marvel entities with documents entitled “Notice of Termination of Transfer Covering Extended Renewal Term” (the “Termination Notices”). The Termination Notices purport to exercise statutory termination rights under section 304(c)(2) of the Copyright Act of 1976, 17 U.S.C. § 304, with respect to 262 works in all.

    Each notice states an effective date sometime in the future, presumably between 2014 and 2019. The effective dates are calculated according to section 304(c)'s timing provision, which states in relevant part that “[t]ermination ... may be effected at any time during a period of five years beginning at the end of fifty-six years from the date copyright was originally secured....” 17 U.S.C. § 304(c)(3).

    Procedural History

    Marvel filed this lawsuit on January 8, 2010. It sought a declaration that the Kirbys have no termination rights under section 304(c)(2), and that the Termination Notices are therefore ineffective. Marvel's claim was premised on its contention that all of the works were “made for hire” by Jack Kirby for Marvel within the definition of section 304(c).

    On March 9, 2010, the Kirbys filed a motion to dismiss the complaint. Lisa and Neal Kirby, residents of California, sought dismissal on the ground that they were not subject to personal jurisdiction in New York State. (The other Kirby siblings, Susan and Barbara, are residents of New York and do not contest personal jurisdiction.) The Kirbys also argued that Lisa and Neal are indispensable to the action under Fed.R.Civ.P. 19, and that Marvel's entire suit must therefore be dismissed as against all parties.

    The district court denied the motion on April 14, 2010. Marvel Worldwide, Inc. v. Kirby, No. 10 Civ. 141, 2010 WL 1655253, 2010 U.S. Dist. LEXIS 38701 (S.D.N.Y. Apr. 14, 2010). It concluded that it had personal jurisdiction over Lisa and Neal under New York's long-arm statute, and that the exercise of this jurisdiction was consistent with constitutional due process. Id. at *3–9, 2010 U.S. Dist. LEXIS 38701, at *7–25. It therefore did not reach the question of whether Lisa and Neal were indispensable parties.

    The Kirbys answered Marvel's complaint and asserted several counterclaims of their own. Marvel moved to dismiss each of them. On November 22, 2010, the district court granted the motion as to all but the Kirbys' counterclaim seeking a declaration that the Termination Notices were valid. Marvel Worldwide, Inc. v. Kirby, 756 F.Supp.2d 461 (S.D.N.Y.2010).

    In early 2011, after discovery was complete, the parties cross-moved for summary judgment. Marvel also moved to exclude some of the Kirbys' evidence, most notably the reports of the Kirbys' putative expert witnesses, John Morrow and Mark Evanier.

    On July 28, 2011, the district court granted Marvel's motions to exclude Morrow and Evanier's testimony, and granted Marvel's motion for summary judgment. Marvel Worldwide, Inc. v. Kirby, 777 F.Supp.2d 720 (S.D.N.Y.2011). It relied upon case law in this Circuit applying the so-called “instance and expense test” to determine whether a work is “made for hire” under section 304(c). Id. at 738–43. The court concluded that undisputed facts in the record establish as a matter of law that the works at issue were made at Marvel's instance and expense, and were therefore works made for hire. Id. This *128 being so, the Kirbys had no termination rights, and their Termination Notices were ineffective. The district court entered judgment accordingly on August 8, 2011.

    The Kirbys appeal.

    DISCUSSION

    I. Personal Jurisdiction over Lisa and Neal Kirby

    [1] Headnote Citing References We turn first to the issue of personal jurisdiction over Lisa and Neal Kirby. Lisa and Neal are California residents. They contend that the district court erred when it determined that New York State's long-arm statute provided a basis for jurisdiction over them in the Southern District of New York. We review a district court's legal conclusions concerning its exercise of personal jurisdiction de novo, and its underlying factual findings for clear error. D.H. Blair & Co., Inc. v. Gottdiener, 462 F.3d 95, 103 (2d Cir.2006).

    [2] Headnote Citing References[3] Headnote Citing References A district court must have a statutory basis for exercising personal jurisdiction. See Grand River Enterprises Six Nations, Ltd. v. Pryor, 425 F.3d 158, 165 (2d Cir.2005). Because this is “a federal question case where a defendant resides outside the forum state, ... [and the relevant] federal statute does not specifically provide for national service of process,” PDK Labs, Inc. v. Friedlander, 103 F.3d 1105, 1108 (2d Cir.1997) (internal quotation marks omitted), we apply “the forum state's personal jurisdiction rules,” id. We therefore look to New York State law.

    We focus our attention on section 302(a)(1) of New York State's long-arm statute, N.Y. C.P.L.R. § 302(a)(1), upon which the district court rested its jurisdiction, and which Marvel invokes here. Section 302(a)(1) provides that “a court may exercise personal jurisdiction over any non-domiciliary ... who in person or through an agent ... transacts any business within the state....” Id. We have recognized that for section 302(a)(1) to apply, “ ‘it is essential ... that there be some act by which the defendant purposefully avails [herself] of the privilege of conducting activities within the forum State, thus invoking the benefits and protections of its laws.’ ” Beacon Enterprises, Inc. v. Menzies, 715 F.2d 757, 766 (2d Cir.1983) (alteration in original) (quoting George Reiner & Co. v. Schwartz, 41 N.Y.2d 648, 650, 363 N.E.2d 551, 553, 394 N.Y.S.2d 844, 846 (1977)).

    [4] Headnote Citing References Under the facts of this case, the only acts that could potentially give rise to section 302(a)(1) jurisdiction over Lisa and Neal are the sending of the Termination Notices to Marvel in New York. We conclude that this is an insufficient basis for personal jurisdiction.

    In Beacon Enterprises, supra, we applied section 302(a)(1) in a declaratory judgment suit very similar to this one. The defendant there, Mary Menzies, thought that the plaintiff, Beacon, was infringing her trademarks and copyrights in a line of weight-loss garments designed to emulate the effects of a sauna. Beacon Enterprises, 715 F.2d at 760. Menzies sent a cease-and-desist letter to Beacon at its New York City headquarters, threatening litigation. Id. Upon receiving it, Beacon filed a suit in the United States District Court for the Southern District of New York, seeking a judgment declaring that its products did not infringe Menzies' intellectual property rights. Id.

    We concluded that Menzies' mailing of the cease-and-desist letter into New York was insufficient to give rise to personal jurisdiction over her under section 302(a)(1). Id. at 762, 766. We pointed out that “New York courts have consistently refused to sustain section 302(a)(1) jurisdiction solely on the basis of defendant's *129 communication from another locale with a party in New York.” Id. at 766 (collecting cases). And we thought it “difficult to characterize Menzies' letter alleging infringement in an unspecified locale and threatening litigation in an unspecified forum as an activity invoking the ‘benefits and protections' of New York law.” Id.

    In Ehrenfeld v. Bin Mahfouz, 9 N.Y.3d 501, 881 N.E.2d 830, 851 N.Y.S.2d 381 (2007), the New York Court of Appeals, responding to a certified question from us, confronted a somewhat analogous fact pattern. There, the defendant had obtained a default judgment against the plaintiff in English courts for the plaintiff's allegedly libelous statements. Id. at 505, 881 N.E.2d at 832, 851 N.Y.S.2d at 383. The plaintiff brought suit in federal court in the Southern District of New York seeking a declaration that she could not be held liable for defamation under the circumstances of that case, and that the defendant's default judgment was therefore not enforceable against her in New York. She argued that the “defendant ha[d] transacted business in New York because he purposefully projected himself into the state to further a ‘foreign litigation scheme’ ”—the libel suit in England—“designed to chill her speech.” Id. at 508, 881 N.E.2d at 834, 851 N.Y.S.2d at 385.

    When the case came before us on appeal, we certified to the New York Court of Appeals the question whether section 302(a)(1) conferred jurisdiction in the circumstances presented. Id. at 504, 881 N.E.2d at 831, 851 N.Y.S.2d at 382; see Ehrenfeld v. Bin Mahfouz, 489 F.3d 542, 551 (2d Cir.2007). The Court of Appeals answered in the negative, reasoning:

    Here, none of defendant's relevant New York contacts have invoked the privileges or protections of our State's laws. Quite to the contrary, his communications in this state were intended to further his assertion of rights under the laws of England. As defendant points out—and plaintiff does not dispute—his prefiling demand letter and his service of documents were required under English procedural rules governing the prosecution of defamation actions. And in none of his letters to plaintiff did defendant seek to consummate a New York transaction or to invoke our State's laws.

    Ehrenfeld, 9 N.Y.3d at 509, 881 N.E.2d at 835, 851 N.Y.S.2d at 386.

    Beacon Enterprises and Ehrenfeld point to the result of the jurisdictional inquiry here.

    Like the defendants in those cases, Lisa and Neal were not “present” in New York—whether physically or through some other continuous contact FN2—in connection with the underlying dispute in this case. This factor is not alone dispositive, of course. Cf. Deutsche Bank Sec., Inc. v. Montana Bd. of Invs., 7 N.Y.3d 65, 71, 850 N.E.2d 1140, 1142, 818 N.Y.S.2d 164, 166–67 (2006) (“[P]roof of one transaction in New York is sufficient to invoke jurisdiction, even though the defendant never enters New York.” (internal quotation marks omitted)). It does, however, set this action apart from those the New York Court of Appeals has described as “the clearest sort of case[s] in which [New York] courts would have 302 jurisdiction,” *130 George Reiner & Co., Inc. v. Schwartz, 41 N.Y.2d 648, 652, 394 N.Y.S.2d 844, 363 N.E.2d 551 (1977), a notion plainly grounded in constitutional principles of due process developed by the federal courts in and since International Shoe Co. v. Washington, 326 U.S. 310, 66 S.Ct. 154, 90 L.Ed. 95 (1945).

    FN2. The New York Court of Appeals has recognized that an individual, although not physically present in the state, may still be present in the relevant sense through some “direct and personal involvement” in “sustained and substantial transaction of business.” Parke–Bernet Galleries v. Franklyn, 26 N.Y.2d 13, 18, 256 N.E.2d 506, 508, 308 N.Y.S.2d 337, 340 (1970). Participation in an auction by phone is one example. Id. Marvel does not allege such a connection in this case, and we do not perceive one in the record.

    Neither were Lisa and Neal's communications part, or in contemplation, of a course of business dealings with Marvel. This distinguishes them from the sort of communications we found sufficient to confer section 302(a)(1) jurisdiction in PDK Labs, a case relied upon by the district court, but distinguished in Ehrenfeld, 9 N.Y.3d at 510, 881 N.E.2d at 836, 851 N.Y.S.2d at 387. In PDK Labs, we concluded that the defendant had “purposefully availed himself of the New York forum by using [his agent] in New York and apparently elsewhere for many years to advance his interest in his unique ‘product’ through soliciting funds and negotiating royalty agreements.” PDK Labs, 103 F.3d at 1111; see also Hoffritz for Cutlery, Inc. v. Amajac, Ltd., 763 F.2d 55, 57 (2d Cir.1985) (concluding that contract negotiated in part in New York, signed in Georgia and New York, and containing a New York forum selection clause constituted “transaction of business” in New York under section 302(a)(1)). Here, by contrast, the Termination Notices bear no indication that the Kirbys were negotiating or cared to negotiate for or solicit Marvel's business.

    Finally, and perhaps most importantly, the Termination Notices, like the letter in Beacon Enterprises and the communications in Ehrenfeld, asserted legal rights under a body of law other than New York's. What the Kirby siblings seek to vindicate are purported termination rights under section 304(c) of the federal copyright laws; they seek no privilege or benefit conferred by New York State law. Section 304(c)(4), moreover, states that termination rights “shall be effected by serving an advance notice in writing upon the grantee [of the initial assignment] or the grantee's successor in title.” The Termination Notices thus not only seek to vindicate rights under federal law, they also are a compulsory feature of that body of law.

    We think these factors foreclose the exercise of section 302(a)(1) jurisdiction in the circumstances of this case. We conclude that a communication from out-of-state, required for the exercise of rights conferred under a federal statute, cannot alone constitute a purposeful availment of “the benefits and protections of [New York's] laws,” at least where the only connection to New York is that the recipient's business headquarters has a New York address.

    Marvel's principal argument to the contrary rests on the premise that the Termination Notices are self-executing, legally effective communications. They are therefore different from the cease-and-desist letter at issue in Beacon Enterprises, Marvel contends, because there the notice did no more than advise the recipient of alleged infringement and threaten future litigation.

    To begin with, we doubt Marvel's is an entirely accurate characterization of the Termination Notices: They are necessary to the exercise of the termination rights, but only the additional act of filing the notices with the Copyright Office consummates the legal act of termination. See 17 U.S.C. § 304(c)(4)(A). In any event, Marvel does not explain why the notices' legal effect under federal copyright law renders the act of mailing them any more a “transaction of business” or a purposeful invocation of the benefits and protections of New York law than would be other communications.

    *131 Marvel also points to the notices' effects on Marvel in New York, characterizing them as “target[ing] the center of gravity of Marvel's publishing business,” and of having been “designed to disrupt and divert license fees from Marvel's New York-based business,” leaving Marvel with “no option but to protect its rights and those of its licensees.” Appellees' Br. at 47–48 & n. 17. These statements may well be essentially true, if perhaps a bit hyperbolic. But the Court in Ehrenfeld rejected virtually identical arguments based on the alleged in-state effects of the English default judgment that the defendant had obtained in the defamation case against the plaintiff, and the in-state action that that judgment would compel. See Ehrenfeld, 9 N.Y.3d at 511, 881 N.E.2d 830, 837, 851 N.Y.S.2d 381, 388. Cf. Whitaker v. Am. Telecasting, Inc., 261 F.3d 196, 209 (2d Cir.2001) (finding that “financial consequences in New York due to the fortuitous location of plaintiffs” are insufficient to confer jurisdiction under section 302(a)(3)). We read Ehrenfeld strongly to suggest that we reject Marvel's arguments in this regard here.

    Finally, we are unpersuaded by Marvel's attempts to connect Lisa and Neal with New York through their relationship with other family members. Appellees' Br. at 51; see also Marvel Worldwide, Inc., 2010 WL 1655253, at *4–5, 2010 U.S. Dist. LEXIS 38701, at *10–12. The problem with these arguments—whether they seek to endow Lisa and Neal with their father's jurisdictional status, or to analyze their contacts with New York “collectively” with their other siblings—is that they identify no legal mechanism by which Jack's, Barbara's, or Susan's actions become those of Lisa or Neal. Absent a bona fide agency relationship—the existence of which no one has asserted—there is no basis for imputing to Lisa and Neal actions by their father half a century ago, or coincident actions by their siblings who now live in New York and for that reason are subject to personal jurisdiction here. Doing so would stretch the text of section 302 beyond the breaking point, see N.Y. C.P.L.R. § 302(a) (referring to transaction of business “in person or through an agent”).

    We conclude that the district court lacked personal jurisdiction over Lisa and Neal Kirby. We therefore vacate the district court's judgment as against those two Kirbys.

    II. Compulsory Joinder

    The Kirbys next argue that the absence of personal jurisdiction over Lisa and Neal requires vacatur of the judgment as against Barbara and Susan too. They rely on Federal Rule of Civil Procedure 19: “Required Joinder of Parties.”

    A. Federal Rule of Civil Procedure 19

    Rule 19 recognizes exceptional circumstances in which the plaintiff's choice of parties or forum must give way because of an absent party's interest in the outcome of the action or involvement in the underlying dispute. See generally 7 Charles Alan Wright & Arthur R. Miller, Federal Practice and Procedure § 1602 (3d ed.2008). The Rule's principal provisions are divided into two subsections. Subsection (a) protects certain parties by deeming them “required”; a party who is “required” according to the factors enumerated in subsection (a) is one whose participation is so desirable or important that the party must be joined so long as she or he is “subject to service of process” and joinder “will not deprive the court of subject-matter jurisdiction.” Fed.R.Civ.P. 19(a)(1).

    Subsection (b) addresses situations in which a party otherwise “required” under *132 subsection (a) cannot be joined for some reason, for example (as in this case), want of personal jurisdiction. In such circumstances, Rule 19(b) requires courts to consider whether, “in equity and good conscience,” the party is one without whom the action between the remaining parties cannot proceed—or, in the traditional terminology, whether the absent party is “indispensable.” Fed.R.Civ.P. 19(b); see also CP Solutions PTE, Ltd. v. General Electric Co., 553 F.3d 156, 159 n.2 (2d Cir.2009) (per curiam).

    We assume, for present purposes, that Lisa and Neal are “required” parties under Rule 19(a). They are also parties whose joinder is not feasible, inasmuch as we conclude that they are not amenable to personal jurisdiction in the Southern District of New York, and they are unwilling to consent to suit within the jurisdiction. The remainder of this discussion, then, centers on the effects of Rule 19(b) on these proceedings.

    B. Indispensability

    [5] Headnote Citing References Because of the “flexible nature of Rule 19(b) analysis,” we review a district court's decision under that rule for abuse of discretion.FN3 Universal Reinsurance Co., Ltd. v. St. Paul Fire & Marine Ins. Co., 312 F.3d 82, 87 (2d Cir.2002). Here, however, the district court decided—mistakenly, as we have explained—that it had personal jurisdiction over Lisa and Neal. The court therefore had no occasion to apply Rule 19(b).

    FN3. The standard of review applicable to Rule 19(b) is apparently the subject of a circuit split. See National Union Fire Ins. Co. v. Rite Aid of South Carolina, Inc., 210 F.3d 246, 250 n.7 (4th Cir.2000) (recognizing the split and collecting cases); compare Universal Reinsurance Co., 312 F.3d at 87 (abuse of discretion), with Keweenaw Bay Indian Community v. Michigan, 11 F.3d 1341, 1346 (6th Cir.1993) (abuse of discretion for Rule 19(a), but de novo for Rule 19(b)). In Republic of Philippines v. Pimentel, 553 U.S. 851, 128 S.Ct. 2180, 171 L.Ed.2d 131 (2008), the Supreme Court passed on an opportunity to resolve the question, although it did suggest that the Rule's “in equity and good conscience” language “implies some degree of deference to the district court,” id. at 864, 128 S.Ct. 2180, 171 L.Ed.2d 131.

    [6] Headnote Citing References It is ordinarily appropriate for us to vacate the judgment of a district court and remand the cause to it when matters committed to that court's discretion arise for the first time on appeal. See CP Solutions, 553 F.3d at 161. But where a record is fully developed and it discloses that, in our judgment, only one possible resolution of such an issue would fall “within the permissible range of choices”—in other words, where only one determination by the district court would be within its discretion—there is no reason to remand. Id. If we did and the court decided to the contrary, we would be duty bound to reverse in any event on the grounds of abuse of discretion.

    In this case, the parties have fully briefed the Rule 19(b) issue on appeal, and the facts are straightforward and undisputed. Only one result, we think, is permissible. We therefore resolve the issue in the first instance. FN4

    FN4. There is some authority, albeit none from this Circuit, suggesting that a court of appeals may apply Rule 19 in the first instance when the issue arises for the first time on appeal. See, e.g., Fidelity & Casualty Co. v. Reserve Ins. Co., 596 F.2d 914, 918 (9th Cir.1979) (considering indispensability in the first instance on appeal in deciding applicability of Fed.R.Civ.P. 21, which permits courts to add or drop parties to avoid dismissing an action); Anrig v. Ringsby United, 591 F.2d 485, 489–92 (9th Cir.1978) (faulting the district court for failing to consider the dispensability of parties prior to dismissing the entire case, and proceeding to address the question in the first instance); see also Walsh v. Centeio, 692 F.2d 1239, 1241–42 (9th Cir.1982) (discussing case law in analysis of applicable standard of review of dismissals under Rule 19(b)); Cloverleaf Standardbred Owners Ass'n, Inc. v. National Bank of Washington, 699 F.2d 1274, 1277 n. 5 (D.C.Cir.1983) (suggesting, in dicta, that a court of appeals may apply Rule 19 itself in “cases in which Rule 19 does not figure in a district court's decision but becomes an issue on appeal in conjunction with a jurisdiction or venue challenge pursued by one or more of several defendants”).

    That we may (or ought to) do so is perhaps born of the notion that we have an independent equitable obligation to protect the interests of absentee parties. See MasterCard Int'l Inc. v. Visa Int'l Service Ass'n, Inc., 471 F.3d 377, 382–83 (2d Cir.2006). Inasmuch as we conclude that there is indeed only one permissible outcome here, however, we need not rest our decision on this basis.
    *133 [7] Headnote Citing References Rule 19(b) sets forth four considerations that will ordinarily be among those relevant to the analysis of whether a party is “indispensable.” We have restated them as: “(1) whether a judgment rendered in a person's absence might prejudice that person or parties to the action, (2) the extent to which any prejudice could be alleviated, (3) whether a judgment in the person's absence would be adequate, and (4) whether the plaintiff would have an adequate remedy if the court dismissed the suit.” CP Solutions, 553 F.3d at 159.

    [8] Headnote Citing References Applying these factors requires an understanding of the legal interests at stake, here the Kirbys' termination rights under section 304(c). Central to the current discussion is paragraph (1) of section 304(c), and in particular the following provision: “In the case of a grant executed by one or more of the authors of the work, termination of the grant may be effected, ... if such author is dead, by the person or persons who ... own and are entitled to exercise a total of more than one-half of that author's termination interest.” 17 U.S.C. § 304(c)(1) (emphasis added); see also id. § 304(c)(6)(C).

    The parties interpret this to mean that at least three of the four Kirbys—“more than one-half”—must “effect” termination of their father's assignment in order for any of them to realize their termination rights. Appellants' Br. at 21; Appellees' Br. at 55. So, all seem to acknowledge, if Barbara and Susan Kirby are disabled by an adverse judgment in this suit from effecting termination, all four Kirbys lose.

    Under this interpretation of section 304(c)(1), which we assume without deciding is correct, several of the possible Rule 19(b) considerations are irrelevant. Marvel cannot, and does not, complain that a judgment rendered in Lisa and Neal's absence prejudices it in any way, because it should be satisfied by a judgment against Barbara and Susan that forecloses Lisa and Neal's rights too. Nor can Barbara and Susan claim prejudice. Any judgment here stands to reflect the full and fair adjudication of their rights under section 304(c). And whatever the result, there is no risk that Barbara and Susan will somehow bear in full a legal obligation that is properly shared by their absent siblings. There is thus no prejudice to Marvel, Barbara, or Susan as “existing parties.” Fed.R.Civ.P. 19(b)(1).

    We also do not see how a judgment in this case could be crafted to alleviate any prejudice that may exist to absent parties Lisa and Neal. See Fed.R.Civ.P. 19(b)(2). The judgment here will declare the existence vel non of Barbara and Susan's termination rights, and whatever the practical effect of this declaration, it can do no more or less.

    Finally, although we can hardly be confident that the absent parties in this case will accept a judgment as the last word in this dispute, we think that any judgment would be “adequate,” Fed.R.Civ.P. 19(b)(3), in the sense of honoring the “public stake in settling disputes by wholes, whenever possible.” *134 CP Solutions, 553 F.3d at 160 (internal quotation marks omitted). If Marvel wins against Barbara and Susan, the parties' interpretation of section 304(c)(1) implies that the issue is resolved as to all Kirbys; if Barbara and Susan prevail, principles of issue preclusion would likely bar Marvel from relitigating the issue against Lisa and Neal. See Restatement (Second) of Judgments § 29 (1982).

    This leaves us with two factors to consider. The first is potential prejudice to Lisa and Neal arising from their absence. Fed.R.Civ.P. 19(b)(1). They complain that by operation of section 304(c)(1)'s “more than one-half” requirement, they stand to have their legal rights finally determined in their absence. Appellants' Br. at 21–22. This argument appeals to our “ ‘deep-rooted historic tradition that everyone should have his own day in court.’ ” See Richards v. Jefferson County, 517 U.S. 793, 798, 116 S.Ct. 1761, 135 L.Ed.2d 76 (1996) (quoting 18 Charles Alan Wright, Arthur R. Miller, Edward H. Cooper, Federal Practice and Procedure § 4449 (3d ed.2008)).

    [9] Headnote Citing References[10] Headnote Citing References But the law in this context and elsewhere “ ‘recognize[s] an exception to the general rule when, in certain limited circumstances, a person, although not a party, has his interests adequately represented by someone with the same interests who is a party.’ ” Id. (quoting Martin v. Wilks, 490 U.S. 755, 762 n.2, 109 S.Ct. 2180, 104 L.Ed.2d 835 (1989)). As we recognized in CP Solutions, the potential prejudice to an absent party under Rule 19(b) is mitigated where a remaining party “could champion [his or her] interest.” 553 F.3d at 160. And prejudice to absent parties approaches the vanishing point when the remaining parties are represented by the same counsel, and when the absent and remaining parties' interests are aligned in all respects. Id.; Prescription Plan Serv. Corp. v. Franco, 552 F.2d 493, 497 (2d Cir.1977).

    This lawsuit concerns a single legal issue in which Lisa's and Neal's interests are identical to Barbara's and Susan's. The Kirbys have the same lawyer—who we are sure was “no less vigorous in [his] advocacy,” Prescription Plan Serv., 552 F.2d at 497, because he represented two Kirbys instead of four. And we have been given no reason whatever to think that the proofs advanced by Barbara and Susan are materially different from those Lisa and Neal would have proffered. We therefore see no practical prejudice to Lisa and Neal as a result of adjudicating this case in their absence.

    The other remaining consideration is whether Marvel “would have an adequate remedy if the action were dismissed for non-joinder.” Fed.R.Civ.P. 19(b)(4). As Marvel points out, because Lisa and Neal are not amenable to personal jurisdiction in New York, and because Barbara and Susan—New York residents—are, as far as the record reveals, not amenable to personal jurisdiction in California, the Kirbys might well be able to thwart a declaratory judgment suit brought by Marvel in a forum in either state. Appellees' Br. at 56–57. In light of the nearly non-existent showing of prejudice to any of the parties involved here, we see no reason to permit the Kirbys to withhold consent to any suit in which the forum or litigation posture are not to their liking. See Provident Tradesmens Bank & Trust Co. v. Patterson, 390 U.S. 102, 109, 88 S.Ct. 733, 19 L.Ed.2d 936 (1968) (recognizing a plaintiff's “interest in having a forum”).

    We conclude, therefore, that the only determination that falls within the range of permissible decisions in the circumstances of this case is that Lisa and Neal are not indispensable parties, and that it was appropriate for the action against Barbara *135 and Susan to have proceeded on its merits. FN5

    FN5. There is an abstract question lurking in the background: Should a court apply the Rule to present circumstances, or instead to the circumstances as they were at the time the party initially made its motion for dismissal under Rule 19(b)? Compare Universal Reinsurance Co., 312 F.3d at 89 (noting, in a case in which Rule 19(b) issue did not arise until after first appeal and remand, that “[o]nce the district court has proceeded to final judgment, considerations of finality, efficiency, and economy become overwhelming, and federal courts are directed to salvage jurisdiction where possible” (internal quotation marks and citations omitted)), with Young v. Powell, 179 F.2d 147, 152 (5th Cir.1950) (reviewing district court's Rule 19(b) analysis based on the “relief asked for” rather than the “relief granted” on the merits in order to prevent prejudice to the defendant). See generally 7 Charles Alan Wright & Arthur R. Miller, Federal Practice and Procedure § 1609 (3d ed.2008). We need not address it, though, because we conclude that under either approach, the result would be the same: Lisa and Neal are not indispensable parties.

    III. Summary Judgment

    [11] Headnote Citing References[12] Headnote Citing References[13] Headnote Citing References The remaining Kirbys—Barbara and Susan—challenge the district court's grant of summary judgment in favor of Marvel. “We review a district court's grant of summary judgment de novo. In reviewing a summary judgment decision, we apply the same standards applied by the district court. Under this standard, summary judgment may be granted only if ‘there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.’ [Fed.R.Civ.P. 56(a) ]. In determining whether there is a genuine dispute as to a material fact, we must resolve all ambiguities and draw all inferences against the moving party.” Garcia v. Hartford Police Dep't, 706 F.3d 120, 126–27 (2d Cir.2013) (per curiam) (alteration, some citations, and internal quotation marks omitted).

    A. Exclusion of Expert Testimony

    [14] Headnote Citing References We address first the admissibility of the reports and testimony of Barbara and Susan's putative experts, John Morrow and Mark Evanier, who purported to offer historical perspective concerning the relationship between Marvel and Jack Kirby. The district court ruled that the reports and testimony were inadmissible. Marvel Worldwide, Inc., 777 F.Supp.2d at 729–30. We review this decision for abuse of discretion. Wills v. Amerada Hess Corp., 379 F.3d 32, 41 (2d Cir.2004).

    [15] Headnote Citing References Federal Rule of Evidence 702 governs the admissibility of expert testimony. It requires for admissibility, among other things, that “the expert's scientific, technical, or other specialized knowledge will help the trier of fact to understand the evidence or to determine a fact in issue.” Fed.R.Evid. 702(a). In other words, “[e]xpert testimony must be helpful to the [trier of fact] in comprehending and deciding issues beyond the understanding of a layperson.” DiBella v. Hopkins, 403 F.3d 102, 121 (2d Cir.2005).

    We have no doubt that a historian's “specialized knowledge” could potentially aid a trier of fact in some cases. A historian could, for example, help to identify, gauge the reliability of, and interpret evidence that would otherwise elude, mislead, or remain opaque to a layperson. See generally Maxine D. Goodman, Slipping Through the Gate, 60 Baylor L. Rev. 824, 857 (2008) (commenting that a historian's task is “to choose reliable sources, to read them reliably, and to put them together in ways that provide reliable narratives about the past” (quoting Martha C. Howell & Walter Prevenier, From Reliable Sources: An Introduction to Historical Methods 2 (2001))). He or she might helpfully synthesize dense or voluminous historical*136 texts. Id. Or such a witness might offer background knowledge or context that illuminates or places in perspective past events. See, e.g., Int'l Soc. for Krishna Consciousness, Inc. v. Barber, 650 F.2d 430, 440 (2d Cir.1981) (“In fact, one religious expert at trial remarked that the American movement is ‘one of the most unusual examples of transfer of a cultural tradition across broad national and cultural barriers.’ This evidence of historical longevity and theological consistency should not be ignored.”).

    [16] Headnote Citing References But Morrow and Evanier do not bring their expertise to bear in any such way. As the district court recognized, their reports are by and large undergirded by hearsay statements, made by freelance artists in both formal and informal settings, concerning Marvel's general practices towards its artists during the relevant time period. See, e.g., Deposition of Mark Evanier, Dec. 6, 2010, at 18–21, Joint App'x at 957–59. Drawing from these statements, they then speculate as to the motivations and intentions of certain parties, see, e.g., Expert Report of John Morrow at 9, Joint App'x at 1152 (“I do not believe that Goodman, Lee, Marvel or the freelance artists, like Jack Kirby, ... thought that the material they created was ‘work made for hire’....”), or opine on the credibility of other witnesses' accounts, see, e.g., Expert Report of Mark Evanier at 14, Joint App'x at 1105 (“I have great respect and personal affection for Stan Lee, but I disagree with the accounts he has sometimes given....”).

    [17] Headnote Citing References Although the Rules permit experts some leeway with respect to hearsay evidence, Fed.R.Evid. 703, “a party cannot call an expert simply as a conduit for introducing hearsay under the guise that the testifying expert used the hearsay as the basis of his testimony.” Malletier v. Dooney & Bourke, Inc., 525 F.Supp.2d 558, 666 (S.D.N.Y.2007). The appropriate way to adduce factual details of specific past events is, where possible, through persons who witnessed those events. And the jobs of judging these witnesses' credibility and drawing inferences from their testimony belong to the factfinder. See Nimely v. City of New York, 414 F.3d 381, 397–98 (2d Cir.2005). We therefore think the district court clearly did not abuse its discretion in declining to admit this evidence.

    B. Termination Rights and Work Made for Hire

    We thus, at last, arrive at the merits of Marvel's summary judgment motion. At issue is section 304(c) of the Copyright Act of 1976, which, insofar as bears on this litigation, provides:

    Termination of Transfers and Licenses Covering Extended Renewal Term.—In the case of any copyright subsisting in either its first or renewal term on January 1, 1978, other than a copyright in a work made for hire, the exclusive or nonexclusive grant of a transfer or license of the renewal copyright or any right under it, executed before January 1, 1978 ... is subject to termination....

    17 U.S.C. § 304(c).FN6

    FN6. The termination right in section 304(c) applies only to transfers executed by the author prior to January 1, 1978. Section 203 governs termination of transfers of the rights to works executed on or after January 1, 1978. See 17 U.S.C. § 203(a). We have cautioned that “Section 203 and Section 304 are different provisions involving different rights.” Larry Spier, Inc. v. Bourne Co., 953 F.2d 774, 779 (2d Cir.1992).

    [18] Headnote Citing References If the author is no longer alive, section 304(c)(2) grants his or her termination rights to specified heirs. See id. § 304(c)(2)(B). The provision “protect[s] the property rights of widows and children *137 in copyrights” by granting them the power to undo earlier transfers and to enjoy the remainder of the copyright term.FN7 Larry Spier, Inc. v. Bourne Co., 953 F.2d 774, 778 (2d Cir.1992).

    FN7. Thirty-nine years, to be precise. Termination rights may be effected “during a period of five years beginning at the end of fifty-six years from the date copyright was originally secured, or beginning on January 1, 1978, whichever is later.” 17 U.S.C. § 304(c)(3). Under section 304, as amended by the Sonny Bono Copyright Term Extension Act, the full copyright term of the works at issue—consisting of a 28–year initial term plus a 67–year renewal term—is 95 years. See 17 U.S.C. § 304(a), (b). At stake here, then, is the 39 years that will be remaining on each of the works' copyright terms at the time they turn 56.

    [19] Headnote Citing References But section 304(c) provides that termination rights under that section do not exist with respect to “work[s] made for hire.” 17 U.S.C. § 304(c). Where a work is “made for hire,” copyright law deems the employer to be the “author” for purposes of copyright ownership. Copyright Act of 1909 § 62 (formerly codified at 17 U.S.C. § 26) (“[T]he word ‘author’ shall include an employer in the case of works made for hire.”); see also Copyright Act of 1976 § 201(b), 17 U.S.C. § 201(b) (“In the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for purposes of this title....”). The hired party, although “the ‘author’ in the colloquial sense,” Shapiro, Bernstein & Co. v. Bryan, 123 F.2d 697, 699 (2d Cir.1941), therefore never owned the copyrights to assign. It stands to reason, then, that there are no rights the assignment of which his or her heirs may now terminate.

    Marvel argues that all of the works at issue in this case fall into the category of “work made for hire.”

    1. The Instance and Expense Test. To determine whether a work is “work made for hire” within the meaning of section 304(c), we apply case law interpreting that term as used in the 1909 Act, the law in effect when the works were created. See Estate of Burne Hogarth v. Edgar Rice Burroughs, Inc., 342 F.3d 149, 156–63 (2d Cir.2003). This requires us to apply what is known as the “instance and expense test.”

    a. Origins.

    The test was developed from two lines of cases. One was our court-made work-for-hire jurisprudence. “Because the 1909 Act did not define ‘employer’ or ‘works made for hire,’ the task of shaping these terms fell to the courts.” Community for Creative Non–Violence v. Reid, 490 U.S. 730, 744, 109 S.Ct. 2166, 104 L.Ed.2d 811 (1989). Using Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 248, 23 S.Ct. 298, 47 L.Ed. 460 (1903)—the Supreme Court's first encounter with the work-for-hire phenomenon—as a guidepost, our early cases focused principally on whether the work at issue was created within the scope of a traditional employment relationship. See, e.g., Tobani v. Carl Fischer, Inc., 98 F.2d 57, 59 (2d Cir.1938); Shapiro, Bernstein & Co., Inc. v. Bryan, 123 F.2d 697, 698–700 (2d Cir.1941). Work-for-hire doctrine thus served to identify which party within the traditional employment relationship was the statutory “author,” and hence owned the *138 copyright in the work from the time of creation.

    The second doctrine developed to address what was initially considered a separate issue under the 1909 Act: rights in commissioned works created by independent contractors. The issue in this situation, at least in the early cases, was not who the statutory author was—the author was the independent contractor. The issue was whether the hiring party nevertheless owned copyrights by way of the author's implied assignment of those rights; and, if so, whether the assignment applied to only the “original” copyright term, or to both the “original” term and an “expectancy” in the so-called “renewal” term.

    We addressed the first half of this issue in Yardley v. Houghton Mifflin Co., 108 F.2d 28 (2d Cir.1939). There we concluded that if a party “is solicited by a patron to execute a commission for pay, the presumption should be indulged that the patron desires to control the publication of copies and that the artist consents that he may, unless by the terms of the contract, express or implicit, the artist has reserved the copyright to himself.” Id. at 31. And in later cases, we seemed to answer the second half, limiting Yardley's presumption in favor of implied assignment to the original term. See Estate of Burne Hogarth, 342 F.3d at 159; Shapiro, Bernstein & Co. v. Jerry Vogel Music Co., 221 F.2d 569, 570 (1955).

    The two doctrines first converged in Brattleboro Publishing Co. v. Winmill Publishing Corp., 369 F.2d 565, 567 (2d Cir.1966). That case concerned rights in the original term in an independent contractor setting—like in Yardley—but we nevertheless began our analysis by discussing traditional work-for-hire doctrine. Id. at 567. We relied on Professor Melville Nimmer's copyright treatise, which we described as recognizing “a presumption in the absence of an express contractual reservation to the contrary, that the copyright shall be in the person at whose instance and expense the work is done.” Id. (emphasis added) (citing Nimmer on Copyright 238 (1964)). And we could “see no sound reason why these same principles are not applicable when the parties bear the relationship of employer and independent contractor.” Id. at 568.

    This discussion does not appear to have been necessary to the result inasmuch as the Court went on to resolve the case on the grounds of Yardley's presumption. Id. Just as curious was the Brattleboro Court's attribution of the phrase “instance and expense” to Professor Nimmer. The phrase is apparently not to be found in the cited passage on work-for-hire doctrine. See Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 5.03 n. 171b (Matthew Bender, Rev. Ed.2013). It seems instead to be drawn from a Ninth Circuit opinion in an independent contractor case published the year before. See Lin–Brook Builders Hardware v. Gertler, 352 F.2d 298, 300 (9th Cir.1965); see generally Martha Graham, 380 F.3d at 634 n. 17.

    But we effectively adopted the union of these two approaches in Picture Music, Inc. v. Bourne, Inc., 457 F.2d 1213, 1216 (2d Cir.1972), relying on both work-for-hire and implied assignment cases to conclude that an independent contractor's works were “made for hire,” and therefore that the hiring party owned both the original and renewal term. Id. at 1216. And when we next confronted the issue, in Playboy Enterprises, Inc. v. Dumas, 53 F.3d 549, 554 (2d Cir.1995), we explained that “an independent contractor is an ‘employee’ and a hiring party an ‘employer’ for purposes of the [1909 Act] if the work *139 is made at the hiring party's ‘instance and expense.’ ” FN8

    FN8. Our approach has been criticized. See Nimmer on Copyright § 9.03[D]. It was also called into question by language in Community for Creative Non–Violence v. Reid, 490 U.S. 730, 744, 109 S.Ct. 2166, 104 L.Ed.2d 811 (1989), which discussed some of our cases as background to interpreting the 1976 Act's somewhat different “work made for hire” provisions, 17 U.S.C. § 101. We nonetheless reaffirmed our adherence to the instance and expense test in cases turning on the interpretation of the 1909 Act's work-for-hire provisions in Estate of Burne Hogarth, supra.

    b. General Principles

    [20] Headnote Citing References We have stated as a general rule that “[a] work is made at the hiring party's ‘instance and expense’ when the employer induces the creation of the work and has the right to direct and supervise the manner in which the work is carried out.” Martha Graham, 380 F.3d at 635. Our case law is, however, not so tidy. To the extent we can distill from our prior cases a set of principles applicable here, they are these:

    [21] Headnote Citing References “Instance” refers to the extent to which the hiring party provided the impetus for, participated in, or had the power to supervise the creation of the work. Actual creative contributions or direction strongly suggest that the work is made at the hiring party's instance. See, e.g., Playboy Enterprises, Inc., 53 F.3d at 556 (evidence that independent contractor “was given specific instructions for his early submissions to Playboy” suggested work for hire); Yardley, 108 F.2d at 30–31 (“[W]here a photographer takes photographs of a person who goes or is sent to him in the usual course, and is paid for the photographs and for his services in taking them, the right of copyright is in the sitter or in the person sending the sitter to be photographed, and not in the photographer....”).

    [22] Headnote Citing References The “right to direct and supervise the manner in which the work is carried out,” Martha Graham, 380 F.3d at 635, moreover, even if not exercised, is in some circumstances enough to satisfy the “instance” requirement. It may be sufficient, for example, where the hiring party makes a particularly strong showing that the work was made at its expense, Scherr v. Universal Match Corp., 417 F.2d 497, 501 (2d Cir.1969) (noting “the overwhelming appropriation of [the hiring party's] funds, time and facilities to the project”), or where prior dealings between the parties on similar assignments, as part of an ongoing arrangement, have rendered fine-grained supervision unnecessary, Playboy Enterprises, Inc., 53 F.3d at 556 (“right to control” and exercise of control with respect to “certain characteristics” sufficient in light of earlier “specific assignments”).

    [23] Headnote Citing References But “inducement” or “control” alone can be incidental enough not to vest copyright ownership in the hiring party. For example, in Siegel v. National Periodical Publications, Inc., 508 F.2d 909, 914 (2d Cir.1974), we concluded that it was insufficient that the independent contractor “revise[d] and expand[ed] the Superman material at the request of the [hiring party],” because “Superman had been spawned by the [independent contractor] four years before the relationship [with the hiring party] existed.” Indeed, even in cases arising under traditional employment law, a work created “as a special job assignment” may not be a “work made for hire.” Shapiro, Bernstein & Co., 221 F.2d at 570.

    [24] Headnote Citing References The “expense” component refers to the resources the hiring party invests in the creation of the work. We have, at least in some cases, continued the tradition *140 of treating the incidents of a traditional employment relationship as relevant to the analysis. See, e.g., Martha Graham, 380 F.3d at 637–41. We have, moreover, suggested that the hiring party's provision of tools, resources, or overhead may be controlling. Id. at 638 (“It may well be that the resources of the Center—notably, its rehearsal space and the dancers enrolled at the School—significantly aided Graham in her choreography, thereby arguably satisfying the ‘expense’ component....”). But cf. Playboy Enterprises, Inc., 53 F.3d at 555 (finding that factors relevant to work for hire analysis under the 1976 Act, like setting hours or providing tools, have “no bearing on whether the work was made at the hiring party's expense”).

    [25] Headnote Citing References In other cases, however, we seem to have focused mostly on the nature of payment: payment of a “sum certain” suggests a work-for-hire arrangement; but “where the creator of a work receives royalties as payment, that method of payment generally weighs against finding a work-for-hire relationship.” Id.. We note, though, that this distinction appears to be a rather inexact method of properly rewarding with ownership the party that bears the risk with respect to the work's success. See Twentieth Century Fox Film Corp. v. Entertainment Distributing, 429 F.3d 869, 881 (9th Cir.2005) (noting that publisher took on “all the financial risk of the book's success”); see also Donaldson Publishing Co. v. Bregman, Vocco & Conn, Inc., 375 F.2d 639, 643 (2d Cir.1967) (finding relevant employee's “freedom to engage in profitable outside activities without sharing the proceeds with [the hiring party]”).

    [26] Headnote Citing References Our case law counsels against rigid application of these principles. Whether the instance and expense test is satisfied turns on the parties' creative and financial arrangement as revealed by the record in each case.

    [27] Headnote Citing References If the hiring party is able to satisfy the instance and expense test, it “is presumed to be the author of the work,” and the independent contractor can overcome the presumption only “by evidence of an agreement to the contrary.” FN9 Playboy Enterprises, Inc., 53 F.3d at 556.

    FN9. Marvel sees this as a formal “burden shifting framework.” Under that framework, as Marvel conceives of it, the hiring party must “come forward with ‘some credible evidence’ that the Works were created at its instance and expense,” from which showing “arises an ‘almost irrebuttable presumption’ that the Works were works made for hire.” Appellees' Br. at 22 (citations omitted). Neither the “some credible evidence” statement—a cherry-picked comment from a Ninth Circuit opinion, see Twentieth Century, 429 F.3d at 877—nor the “almost irrebuttable presumption” language—a Fifth Circuit opinion's description of our approach, noted in our opinion in Estate of Burne Hogarth, 342 F.3d at 158 (quoting Easter Seal Society for Crippled Children & Adults of Louisiana, Inc. v. Playboy Enterprises, 815 F.2d 323, 327 (5th Cir.1987))—is an accurate statement of our case law.

    2. Application of the Instance and Expense Test in the Present Case. Applying these principles to the facts in the record before us—a challenging endeavor in some respects FN10—we conclude that the *141 works were created at Marvel's instance and expense, and that Barbara and Susan have not adduced evidence of an agreement to the contrary contemporaneous with the creation of the works. We therefore conclude that the district court was correct to award summary judgment in favor of Marvel.

    FN10. The facts underlying this dispute took place decades ago, and Jack Kirby is, of course, no longer alive to provide an account of his working relationship with Marvel during the relevant time period. This leaves us to reconstruct the arrangement through (1) the deposition testimony of Stan Lee, whose credibility the Kirbys contest; (2) the depositions and declarations of other comic book artists who worked for Marvel at various times, but likely under different arrangements from Kirby's; (3) the depositions of the Kirby children, who have little direct knowledge; and (4) some documentary evidence concerning Kirby's contributions to or creation of some of the works.

    a. Instance.

    [28] Headnote Citing References The evidence, construed in favor of the Kirbys, establishes beyond dispute that the works in question were made at Marvel's instance.

    Although Jack Kirby was a freelancer, his working relationship with Marvel between the years of 1958 and 1963 was close and continuous. Stan Lee considered Kirby to be Marvel's best artist, Lee Dep. at 30, Joint App'x at 2450, an assessment reinforced by the admiration of Kirby by his contemporaries, see Deposition of Lawrence Lieber (“L. Lieber Dep.”), Jan. 7, 2011, at 104–05, Joint App'x at 1530–31; Deposition of John Romita (“Romita Dep.”), Oct. 21, 2010, at 75–76, Joint App'x at 360–61. Lee “wanted to use Jack for everything,” Lee Dep. at 36, Joint App'x at 2456, and Kirby appears to have been kept busy with assignments from Marvel, id. at 37, Joint App'x at 2457.

    Marvel published the great majority of Kirby's work during these years—1958 through 1963. There are indications in the record that artists did customarily work with more than one publisher during the relevant time period, see, e.g., L. Lieber Dep. at 74–75, Joint App'x at 1521–22, and a handful of Kirby's works between 1958 and 1963 were not published by Marvel, see Excerpt of Jack Kirby Checklist (Two Morrows Gold ed.2008), Joint App'x at 1751–62. But it is beyond dispute that most of Kirby's work during this period was published by Marvel and for established Marvel titles. Id.

    Understood as products of this overarching relationship, Kirby's works during this period were hardly self-directed projects in which he hoped Marvel, as one of several potential publishers, might have an interest; rather, he created the relevant works pursuant to Marvel's assignment or with Marvel specifically in mind. Kirby's ongoing partnership with Marvel, however unbalanced and under-remunerative to the artist, is therefore what induced Kirby's creation of the works.

    Marvel also played at least some creative role with respect to the works. Kirby undoubtedly enjoyed more creative discretion than most artists did under the “Marvel Method,” a fact Lee readily admits. Lee Dep. at 70, Joint App'x at 2490. But the only evidence on the issue indicates that he did not work on “spec” (speculation)—that is, he worked within the scope of Marvel's assignments and titles. Id. at 48, Joint App'x at 2468; Deposition of Neal Kirby, June 30, 2010, at 167–68, Joint App'x at 1592–93. There is no disputing, moreover, that Marvel had the power to reject Kirby's pages and require him to redo them, or to alter them, a power it exercised from time to time. Id. at 234–35, Joint App'x at 1599–1600; Deposition of Susan Kirby, Oct. 25, 2010, at 37, Joint App'x at 1607. And there is evidence that Kirby collaborated with Lee with respect to many of the works. Lee Dep. at 118, Joint App'x at 2538.

    Marvel's inducement, right to supervise, exercise of that right, and creative contribution with respect to Kirby's work during the relevant time period is more than enough to establish that the works were created at Marvel's instance.

    The Kirbys' attempts to avoid this conclusion are unsuccessful. Their argument is that the “right to supervise” referred to in our case law requires a legal, presumably*142 contractual, right. Appellants' Br. at 42–45. We find no hint of this requirement in our case law applying the instance and expense test. Nor do the Kirbys provide a principled reason why Marvel's active involvement in the creative process, coupled with its power to reject pages and request that they be redone, should not suffice.

    The Kirbys also point to factual disputes over who actually created the characters, plots, and other concepts in Marvel's comic books during the relevant time period, mostly in an attempt to discredit Lee and find fault in the district court's reading of the record. Appellants' Br. at 33–35. Questions of who created the characters are mostly beside the point. That Marvel owes many of its triumphs to Kirby is beyond question. But the hired party's ingenuity and acumen are a substantial reason for the hiring party to have enlisted him. It makes little sense to foreclose a finding that work is made for hire because the hired artist indeed put his exceptional gifts to work for the party that contracted for their benefit.

    b. Expense.

    [29] Headnote Citing References Whether the Works were created at Marvel's expense presents a more difficult question. We ultimately find ourselves in agreement with the district court and in favor of Marvel here too.

    The facts underlying the expense component are not in dispute. Marvel paid Kirby a flat rate per page for those pages it accepted, and no royalties. It did not pay for Kirby's supplies or provide him with office space. It was free to reject Kirby's pages and pay him nothing for them. The record contains anecdotal evidence that Marvel did in fact reject Kirby's work or require him to redo it on occasion, if less often than it did the work of other artists, but with what frequency is unclear.

    Marvel argues that its payment of a flat rate for Kirby's pages is all that matters. It relies on our suggestion in Playboy Enterprises, 53 F.3d at 555, that “the ‘expense’ requirement [is] met where a hiring party simply pays an independent contractor a sum certain for his or her work.” Because, Marvel argues, it paid Kirby a sum certain when it accepted his pages—irrespective of whether the pages required edits or additions, were ultimately published, or were part of a comic book that was a commercial success—it took on the risk of financial loss.

    The Kirbys urge us to focus not on the risk Marvel took at the time it purchased the pages, but on the risk Kirby took when he set out to create them. Until Marvel purchased Kirby's pages, they point out, Kirby had undertaken all of the costs of producing the drawings—time, tools, overhead—and shouldered the risk that Marvel would reject them, leaving him in the lurch. Marvel's purely contingent payment, they argue, thus acted more like a royalty than a sum certain. Appellants' Br. at 36–42.

    This argument might give us pause if Kirby's relationship with Marvel comprised discrete engagements with materially uncertain prospects for payment, or, indeed, if he undertook to create the works independent of Marvel. But there is no evidence of which we are aware to either effect. The evidence suggests instead that Marvel and Kirby had a standing engagement whereby Kirby would produce drawings designed to fit within specific Marvel universes that his previously purchased pages had helped to define. When Kirby sat down to draw, then, it was not in the hope that Marvel or some other publisher might one day be interested enough in them to buy, but with the expectation, *143 established through their ongoing, mutually beneficial relationship, that Marvel would pay him. And the record makes clear that in the run of assignments, this expectation proved warranted.

    Kirby's completed pencil drawings, moreover, were generally not free-standing creative works, marketable to any publisher as a finished or nearly finished product. They built on preexisting titles and themes that Marvel had expended resources to establish—and in which Marvel held rights—and they required both creative contributions and production work that Marvel supplied. That the works are now valuable is therefore in substantial part a function of Marvel's expenditures over and above the flat rate it paid Kirby for his drawings.

    In the final analysis, then, the record suggests that both parties took on risks with respect to the works' success—Kirby that he might occasionally not be paid for the labor and materials for certain pages, and Marvel that the pages it did pay for might not result in a successful comic book. But we think that Marvel's payment of a flat rate and its contribution of both creative and production value, in light of the parties' relationship as a whole, is enough to satisfy the expense requirement.

    c. Agreement to the Contrary.

    [30] Headnote Citing References Because Marvel has satisfied the instance and expense test, a presumption arises that the works in question were “works made for hire” under section 304(c). This presumption can be overcome only by evidence of an agreement to the contrary contemporaneous with the creation of the works.

    The Kirbys' showing in this regard consists mostly of negative or elliptical inferences concerning the parties' agreement at the time. For example, they point to a 1975 assignment executed by Jack Kirby that purported to transfer interests in certain works to Marvel (but also averred that all of his work was for hire), which they say suggests the parties' understanding that Marvel did not already own the rights. Appellants' Br. at 48. They also call to our attention evidence that indicates that Marvel paid Kirby during the relevant time periods with checks that contained a legend with assignment, instead of work-for-hire, language. Id. at 47.

    This evidence is not enough to enable the Kirbys to survive the motion for summary judgment. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 252, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986) (“The mere existence of a scintilla of evidence in support of the [non-movant's] position will be insufficient; there must be evidence on which the jury could reasonably find for the [non-movant].”); Bickerstaff v. Vassar Coll., 196 F.3d 435, 448 (2d Cir.1999) ( “[A]n inference is not a suspicion or a guess.” (internal quotation marks omitted)). It is all too likely that, if the parties thought about it at all, Kirby's assignments at the time he was paid or later were redundancies insisted upon by Marvel to protect its rights; we decline to infer from Marvel's suspenders that it had agreed to give Kirby its belt.

    * * *

    In sum, the district court made no error, in our view, in determining as a matter of law that the works were made at Marvel's instance and expense, and that the parties had no agreement to the contrary. The remaining Kirbys, Barbara and Susan, are therefore without termination rights under section 304(c), and the district court properly granted Marvel's motion for summary judgment as to them.

    CONCLUSION

    For the foregoing reasons, we vacate the district court's judgment as against Lisa *144 and Neal Kirby and remand with instructions to the district court to dismiss the action against them for want of personal jurisdiction. We affirm the judgment in favor of Marvel as against Barbara and Susan Kirby. Each party shall bear his, her, or its own costs.

    726 F.3d 119, 2013 Copr.L.Dec. P 30,470, 86 Fed.R.Serv.3d 286, 107 U.S.P.Q.2d 1813


    Briefs and Other Related Documents (Back to top)

    2012 WL 1573514 (Appellate Brief) Appellants' Reply Brief (Apr. 27, 2012) View and print document in PDF format exactly like the original filing Original Image of this Document (PDF)
    2012 WL 1268314 (Appellate Brief) Brief for Appellees (Apr. 5, 2012)
    2012 WL 363897 (Appellate Brief) Appellants' Opening Brief (Jan. 26, 2012) View and print document in PDF format exactly like the original filing Original Image of this Document (PDF)
    2012 WL 248179 (Appellate Brief) Appellants Lisa R. Kirby, Neal L. Kirby, Susan M. Kirby and Barbara J. Kirby's Opening Brief (Jan. 13, 2012) View and print document in PDF format exactly like the original filing Original Image of this Document (PDF)
    11-3333 (Docket) (Aug. 16, 2011)


    Judges and Attorneys (Back to top)
    Judges
  • Cabranes, Hon. Jose A.
  • United States Court of Appeals, Second Circuit
    New York, New York 10007

  • Carney, Hon. Susan L.
  • United States Court of Appeals, Second Circuit
    New York, New York 10007

  • McMahon, Hon. Colleen
  • United States District Court, Southern New York
    New York, New York 10007-1312

  • Sack, Hon. Robert D.
  • United States Court of Appeals, Second Circuit
    New York, New York 10007


    Attorneys
    Attorneys for Defendant
  • Toberoff, Marc
  • Beverly Hills, California 90212

    Other Attorneys
  • Fleischer, David
  • New York, New York 10112

  • Quinn, James W.
  • New York, New York 10153

  • Rich, R. Bruce
  • New York, New York 10153

  • Silbert, Gregory
  • New York, New York 10153

  • Singer, Randi W.
  • New York, New York 10153

    END OF DOCUMENT

    PDF Document West Reporter Image (PDF)

    Jacob Kurtzberg

    1. Marvel Characters, Inc. v. Kirby,
    726 F.3d 119, 2013 Copr.L.Dec. P 30,470, 86 Fed.R.Serv.3d 286, 107 U.S.P.Q.2d 1813, C.A.2 (N.Y.), August 08, 2013 (NO. 11-3333-CV)
      ... United States Court of Appeals, Second Circuit. MARVEL CHARACTERS, INCORPORATED Marvel Worldwide , Incorporated, MVL Rights, LLC , Plaintiffs–Counter–Defendants–Appellees, Walt Disney Company Marvel Entertainment , Incorporated, Counter–Defendants–Appellees, v. Lisa R. KIRBY, Neal L. Kirby, Susan N. Kirby, Barbara J. Kirby, Defendants–Counter...

    ...of the most influential comic book artists of all time. At various times throughout his career, he produced drawings for Marvel Comics, a comic book publisher that has since grown into the multifaceted enterprise reflected in the case caption: Marvel Characters, Inc., Marvel Worldwide, Inc., MVL Rights, LLC, and Marvel Entertainment, Inc. (collectively, “Marvel”). At issue here are the rights to drawings Kirby allegedly created between 1958 and 1963. The Kirbys appeal from the district court's grant of summary judgment to Marvel, which was based on the conclusion that all of the works at issue are “works made for hire” within the...

    ...their favor. See, e.g., Singer v. Ferro, 711 F.3d 334, 339 (2d Cir.2013) Jack Kirby Jack Kirby, born Jacob Kurtzberg in New York City's Lower East Side in 1917, began his career in the comic book business in the late......


    KeyCite Yellow Flag - Negative Treatment 2. Marvel Worldwide, Inc. v. Kirby,
    756 F.Supp.2d 461, S.D.N.Y., November 22, 2010 (NO. 10 CIV. 141 CM KNF)
      ... United States District Court, S.D. New York. MARVEL WORLDWIDE, INC. Marvel Characters, Inc. and MVL Rights, LLC , Plaintiffs, v. Lisa R. KIRBY, Barbara J. Kirby, Neal L. Kirby and Susan M. Kirby, Defendants. Lisa R. Kirby, Barbara J. Kirby, Neal L. Kirby and Susan M. Kirby, Counterclaim–Plaintiffs, v. Marvel Worldwide, Inc. Marvel Characters, Inc. MVL Rights, LLC Marvel Entertainment, Inc. The Walt Disney Company , and Does 1 through 10, Counterclaim–Defendants. No. 10 Civ. 141 (CM)(KNF). Nov...

    ...Defendants. DECISION AND ORDER GRANTING IN PART AND DENYING IN PART COUNTERCLAIM–DEFENDANTS' MOTION TO DISMISS McMAHON , District Judge. Plaintiffs Marvel Worldwide, Inc., Marvel Characters, Inc., and MVL Rights, LLC (collectively “Marvel”) commenced this action seeking declaratory relief as to the work-for-hire status of the comic-book stories and characters...

    ...Kirby, Neal L. Kirby, and Susan M. Kirby (collectively, the “Kirbys”) counterclaimed for declaratory relief and joined additional Counterclaim–Defendants Marvel Entertainment, Inc. (“Marvel Entertainment”), The Walt Disney Company (“Disney”), and Does 1 through 10. Presently before this Court is the Counterclaim–Defendants' motion to dismiss the five counterclaims alleged by the Kirbys. The Counterclaim–Defendants also move to dismiss Marvel Entertainment and Disney as Counterclaim–Defendants. For the following reasons, the Counterclaim–Defendants' motion to dismiss the second, third, fourth......

    Kirby v. Sega of America, Inc.

    Kirby v. Sega of America, Inc.
    144 Cal.App.4th 47, 50 Cal.Rptr.3d 607
    Cal.App. 2 Dist.,2006.
    September 25, 2006 (Approx. 14 pages)

    144 Cal.App.4th 47, 50 Cal.Rptr.3d 607, 81 U.S.P.Q.2d 1172, 35 Media L. Rep. 1075, 06 Cal. Daily Op. Serv. 9978, 2006 Daily Journal D.A.R. 14,190

    Court of Appeal, Second District,
    Division 8.

    Kierin KIRBY, Plaintiff and Appellant,
    v.
    SEGA OF AMERICA, INC. et al., Defendants and Respondents.

    No. B183820.
    Sept. 25, 2006.
    Background: Celebrity sued distributors of video game asserting claims for common law right of publicity, statutory misappropriation of likeness, unfair competition, interference with prospective business advantage, and a violation of the Lanham Act based on the alleged use of her likeness and identity to create a character in the game. The Superior Court, Los Angeles County, James C. Chalfant, J., entered summary judgment in defendants' favor. Celebrity appealed.

    Holding: The Court of Appeal, Boland, J., held that the video game character was transformative and protected by the First Amendment.

    Affirmed and remanded with directions.

    West Headnotes

    [1] Headnote Citing References KeyCite Citing References for this Headnote

    Key Number Symbol379 Torts
      Key Number Symbol379IV Privacy and Publicity
        Key Number Symbol379IV(C) Use of Name, Voice or Likeness; Right to Publicity
           Key Number Symbol379k386 Conduct or Misappropriation Actionable in General
            Key Number Symbol379k390 Picture, Photograph, or Likeness
              Key Number Symbol379k390(1) k. In General. Most Cited Cases

    In the context of a celebrity, the “invasion of privacy” tort for appropriation turns on a right of publicity arising from commercially exploitable opportunities embodied in the plaintiff's likeness.

    [2] Headnote Citing References KeyCite Citing References for this Headnote

    Key Number Symbol379 Torts
      Key Number Symbol379IV Privacy and Publicity
        Key Number Symbol379IV(C) Use of Name, Voice or Likeness; Right to Publicity
           Key Number Symbol379k385 k. Elements of the Tort in General. Most Cited Cases

    The elements of a common law claim for invasion of privacy for appropriation are the unauthorized use of the plaintiff's identity to the defendant's advantage by appropriating the plaintiff's name, voice, likeness, etc., commercially or otherwise, and resulting injury.

    [3] Headnote Citing References KeyCite Citing References for this Headnote

    Key Number Symbol379 Torts
      Key Number Symbol379IV Privacy and Publicity
        Key Number Symbol379IV(C) Use of Name, Voice or Likeness; Right to Publicity
           Key Number Symbol379k383 k. In General. Most Cited Cases

    Key Number Symbol379 Torts Headnote Citing References KeyCite Citing References for this Headnote
      Key Number Symbol379IV Privacy and Publicity
        Key Number Symbol379IV(D) Actions in General
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    The legislative prohibition against the unauthorized appropriation of one's likeness was intended to complement, not supplant, common law claims for “right of publicity.” West's Ann.Cal.Civ.Code § 3344(a).

    [4] Headnote Citing References KeyCite Citing References for this Headnote

    Key Number Symbol29T Antitrust and Trade Regulation
      Key Number Symbol29TII Unfair Competition
        Key Number Symbol29TII(A) In General
           Key Number Symbol29Tk30 k. Sponsorship, Approval, or Connection, Representations Concerning. Most Cited Cases

    The Lanham Act is the federal equivalent of a right of publicity claim; it protects against use of a celebrity's image or persona in connection with a product in a manner likely to falsely imply a celebrity product endorsement. Lanham Act, § 1 et seq., 15 U.S.C.A. § 1051 et seq.

    [5] Headnote Citing References KeyCite Citing References for this Headnote

    Key Number Symbol92 Constitutional Law
      Key Number Symbol92XVIII Freedom of Speech, Expression, and Press
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           Key Number Symbol92XVIII(A)1 In General
            Key Number Symbol92k1490 k. In General. Most Cited Cases
              (Formerly 92k90(1))

    The freedom of expression protected by the First Amendment exists to preserve an uninhibited marketplace of ideas and to further individual rights of self expression. U.S.C.A. Const.Amend. 1.

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    Key Number Symbol92 Constitutional Law
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      Key Number Symbol92XVIII Freedom of Speech, Expression, and Press
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            (Formerly 92k90.1(6), 92k90(1))

    First Amendment protections may extend to all forms of expression, including written and spoken words, be they fact or fiction, and music, films, paintings, and entertainment, whether or not sold for a profit. U.S.C.A. Const.Amend. 1.

    [7] Headnote Citing References KeyCite Citing References for this Headnote

    Key Number Symbol92 Constitutional Law
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           Key Number Symbol92XVIII(A)2 Commercial Speech in General
            Key Number Symbol92k1540 k. Unlawful Speech or Activities. Most Cited Cases
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    Even commercial speech receives significant First Amendment protection, unless it is false and misleading, in which case it receives no protection. U.S.C.A. Const.Amend. 1.

    [8] Headnote Citing References KeyCite Citing References for this Headnote

    Key Number Symbol92 Constitutional Law
      Key Number Symbol92XVIII Freedom of Speech, Expression, and Press
        Key Number Symbol92XVIII(N) Entertainment
           Key Number Symbol92k1898 Video and Computer Games
            Key Number Symbol92k1899 k. In General. Most Cited Cases
              (Formerly 92k90.1(6))

    Video games are expressive works entitled to as much First Amendment protection as the most profound literature. U.S.C.A. Const.Amend. 1.

    [9] Headnote Citing References KeyCite Citing References for this Headnote

    Key Number Symbol92 Constitutional Law
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           Key Number Symbol92k1630 k. Right of Publicity; Misappropriation of Likeness, Name, or Celebrity Status. Most Cited Cases
            (Formerly 92k90.1(1))

    To maintain the balance between a celebrity's right to control the commercial exploitation of his or her likeness or identity and the First Amendment right of free expression, a defendant may raise the First Amendment as an affirmative defense to a celebrity's allegation of misappropriation of likeness if the defendant's work adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message, so that the new work contains significant transformative elements. U.S.C.A. Const.Amend. 1.

    [10] Headnote Citing References KeyCite Citing References for this Headnote

    Key Number Symbol92 Constitutional Law
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            (Formerly 92k90.1(1))

    If a product containing a celebrity's likeness is so transformed that it has become primarily the defendant's own expression of what he or she is trying to create or portray, rather than the celebrity's likeness, it is protected by the First Amendment. U.S.C.A. Const.Amend. 1.

    [11] Headnote Citing References KeyCite Citing References for this Headnote

    Key Number Symbol29T Antitrust and Trade Regulation
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        Key Number Symbol92XVIII(E) Advertising and Signs
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            Key Number Symbol92k1652 k. Right of Publicity; Misappropriation of Likeness, Name, or Celebrity Status. Most Cited Cases
              (Formerly 92k90.1(6))

    Key Number Symbol379 Torts Headnote Citing References KeyCite Citing References for this Headnote
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    Key Number Symbol379 Torts Headnote Citing References KeyCite Citing References for this Headnote
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           Key Number Symbol379k391 k. Defenses in General. Most Cited Cases

    Video game character was transformative and protected by the First Amendment; notwithstanding certain similarities between character and celebrity who alleged claims for infringement of her common law right of publicity, statutory misappropriation of likeness, unfair competition, interference with prospective business advantage, and a Lanham Act violation against game distributors, First Amendment afforded distributors a complete defense to all of those claims, since the game character contained sufficient expressive dissimilar content to constitute a protected transformative work. U.S.C.A. Const.Amend. 1; Lanham Act, § 1 et seq., 15 U.S.C.A. § 1051 et seq.; West's Ann.Cal.Bus. & Prof.Code § 17200; West's Ann.Cal.Civ.Code § 3344(a).

    See 5 Witkin, Summary of Cal. Law (10th ed. 2005) Torts, § 680; Annot., First Amendment Protection Afforded to Commercial and Home Video Games, 106 A.L.R.5th 337.

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    The Court of Appeal is bound to follow the decisions of the state Supreme Court, not those of another state.

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    Key Number Symbol102 Costs
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    Video game distributors who prevailed in asserting First Amendment defense to celebrity's misappropriation of likeness claim were entitled to mandatory award of attorney fees. U.S.C.A. Const.Amend. 1; West's Ann.Cal.Civ.Code § 3344(a).

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    Key Number Symbol102 Costs
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    Statutory authorization for the recovery of attorney fees incurred at trial necessarily includes attorney fees incurred on appeal unless the statute specifically provides otherwise.

    **608 Blecher & Collins, Maxwell M. Blecher and Courtney A. Palko, Los Angeles, for Appellant.

    Baker & McKenzie, Tod L. Gamlen, Keith L. Wurster, Palo Alto, and Christopher J. Keller, San Francisco, for Respondents Sega of America, Inc., AGETEC, Inc. and THQ, Inc.

    BOLAND, J.

    *50 SUMMARY

    A celebrity sued distributors of a video game alleging that, in creating a character in the video game, the distributors misappropriated her likeness and identity in violation of state and federal law. The distributors moved for summary judgment asserting the First Amendment provided a complete defense to each of the celebrity plaintiff's claims. The trial court agreed, **609 granted the motions, and subsequently awarded the distributors mandatory attorney's fees, as prevailing parties under Civil Code section 3344, subdivision (a). We affirm the judgment and remand for a determination regarding the amount of attorney's fees.

    FACTUAL AND PROCEDURAL BACKGROUND

    From 1986 to approximately 1995, appellant Keirin Kirby, professionally known as “Lady Miss Kier,” “Miss Kier” or “Lady Kier” (hereafter, Kirby) was the lead singer of a retro-funk-dance musical group known as “Deee–Lite” which was popular in the early 1990's. Deee–Lite made five albums which were distributed and sold throughout the world. The band was best known for its song “ Groove is in the Heart ” from its first album released in *51 1990. The song's music video, which received extensive airplay on MTV, features band members clad in “funky retro outfits, vivid graphics, groovy dance moves, a futuristic setting and an overall party feel.”

    In addition to being a musician, Kirby is a dancer, artist, choreographer and fashion designer. Kirby insists that, as “Lady Kier,” she developed a “specific, distinctive ... look,” of a “fashionable, provocative, and funky diva-like artistic character.” Kirby claims her “unique public identity,” which combines retro and futuristic visual and musical styles, results from her signature costumes and lyrical expression. Kirby's costumes included platform shoes, knee-socks, brightly-colored form-fitting clothes and unitards, short pleated or cheerleader-type skirts, bare midriffs, cropped tops with words or a numeral written on the chest, space or other helmets, a blue backpack, and red/pink hair worn in a “page-boy flip” held back by a headband, pigtails and other styles. Kirby alleges her “signature” lyrical expression, with which she introduces herself in the opening of the music video for “ Groove is in the Heart,” and which is included in three of her songs, is “ooh la la.” Kirby claims substantial, commercially valuable goodwill in her sound, appearance, persona and likeness.

    Deee–Lite disbanded by the mid–1990's. Since then, Kirby has been involved in preparing—but has not released—an album of her own, and does not pursue publicity or grant press interviews. She alleges she has been and is regularly approached by advertisers and manufacturers interested in licensing her name and likeness to sell products. Kirby declines most offers, but derives some income from commercial endorsements.

    Respondents are distributors of a videogame called “Space Channel 5” (SC5, or the game). SC5 was created from 1997–1999 by Takashi Yuda, an employee of Sega Japan, and was released in Japan in December 1999. Yuda originally conceived the main character as a male, but changed the character to a female in order to develop a video game to appeal to girls. Yuda testified the name “Ulala” was a derivative of a Japanese name “Urara,” modified to make it easier for English-speakers to pronounce. Yuda claims he developed the Ulala character based on the “anime” style of Japanese cartoon characters, and denied using Kirby as a reference. Ulala has six main dance moves (up, down, right, left, forward and backward). The character's dance moves were created by Nahoko Nezu, a Japanese choreographer and dancer. Nezu's dance moves were hers alone. At the time she created the moves, Nezu did not know Kirby, and had not ever heard of her. Nezu created and performed dance moves for Ulala at Yuda's direction. He videotaped the moves and used the tapes to create Ulala's dance moves in the game. **610 The musical theme song for SC5 is “ Mexican Flyer.” That song, written in the 1960's, is performed by composer Ken Woodman. The music is not based on, or used in reference to, any music by Deee–Lite or Kirby.

    *52 The game, set in outer space in the 25th Century, features the computer-generated image of a young, fictional elongated and extremely thin female reporter named “Ulala” who works for a news channel called Space Channel 5. In the game, Ulala wears a few different costumes, but is primarily seen in an almost entirely orange outfit which includes a midriff-exposing top bearing the numeral “5,” a mini-skirt, elbow-length gloves, and stiletto-heeled, knee-high platform boots. Her hot pink hair is always worn in short pigtails placed high on the back of her head, and she wears a blue headset and jet pack and a blue gun holster strapped to her right thigh. Orange and blue were chosen as the primary colors for Ulala's costume because orange is the official color of Dreamcast, and the corporate color of Sega Japan is blue.

    In the game, Ulala is dispatched to investigate an invasion of Earth by dance-loving aliens who shoot earthlings with ray guns, causing them to dance uncontrollably. During her investigation, Ulala encounters the aliens and competitor reporters. The player attempts to have Ulala match the dance moves of the other characters. If successful, the player acquires points, eliminates certain characters, and causes others to become part of Ulala's dance troupe. The player moves to higher levels of more difficult play until he or she reaches a final level and a surprise ending to Ulala's story. One character at the final level is known as “Space Michael.” It was created to resemble the celebrity Michael Jackson, who performed the character's voice and receives credit in the game.

    Several promotional products are associated with the game. Sega produced a give-away promotional video with samples of music from SC5. Sega also sub-licensed the sale of three Ulala-related products in the United States: (1) a strategy guide for playing SC5; (2) a lunch box displaying characters from the game, including Ulala; and (3) a “Hot Wheels” car containing a picture of Ulala.

    Respondent Sega of America, Inc. (Sega) released a “localized” version of the game in North America in June 2000. The localized North American version differs from the Japanese version in that voices are different, and the language is changed to English.

    In July 2000, Kirby was contacted by PD*3 Tully Co. (PD3), a firm retained by a subsidiary of Sega Japan, in connection with its effort to launch a version of SC5 in England. PD3 was considering using one of several music videos or songs, including Groove is in the Heart, to promote the game. PD3 contacted Kirby to determine if she was interested in promoting the SC5 in England and, possibly, Europe. Kirby was not.

    Under a license granted by Sega Japan, respondent THQ, Inc. (THQ) was authorized to release and market a hand-held version of SC5 in June 2003 for *53 use on the Nintendo Gameboy Advance platform. Later that year, respondent Agetec, Inc. (Agetec) received Sega's authorization to market a special edition of the game for the “Playstation 2” platform.FN1

    FN1. The special edition consisted of SC5, originally published for the Dreamcast platform, and a sequel, SC5 Part 2, which had been released in Japan for both the Dreamcast and Playstation 2 platforms.

    Kirby initiated this action in April 2003. The operative second amended complaint **611 alleges causes of action for: (1) common law infringement of the right of publicity; (2) misappropriation of likeness (Civ.Code, § 3344); (3) violation of the Lanham Act (15 U.S.C. § 1125(a)); (4) unfair competition (Bus. & Prof.Code, § 17200); (5) interference with prospective business advantage; and (6) unjust enrichment. Kirby alleged respondents wrongfully used her name, likeness and identity in developing and marketing the game and, specifically, its Ulala character.

    Sega, Agetec and THQ each moved for summary judgment asserting Kirby could not establish all elements of her claims and, even if she could, the First Amendment provided a complete defense to the entire action.FN2 The motions were granted after the trial court found all claims constitutionally foreclosed.

    FN2. Sega also argued the action was barred by the statute of limitations, and Agetec and THQ asserted the defense of laches. The trial court declined to address those arguments, which are not at issue in this appeal.

    Respondents subsequently moved for a “mandatory” award of attorneys fees in the amount of approximately $763,000, collectively. (Civ.Code, § 3344, subd. (a).) Kirby opposed the motion, arguing the “mandatory” fee provision of Civil Code section 3344 created public policy concerns. She also asserted the amount of fees sought was unreasonable, any fees awarded must be apportioned among the state claims, and no fees should be awarded on the federal claim. The trial court declined to award fees on the Lanham Act claim and reduced the fee award to approximately $608,000, but granted the remainder of the motion. This appeal followed.

    DISCUSSION

    1. Standard of review.

    The standard of review articulated by the Supreme Court applies in this case. In Aguilar v. Atlantic Richfield Co. (2001) 25 Cal.4th 826, 107 Cal.Rptr.2d 841, 24 P.3d 493, the Supreme Court described a party's burdens on summary judgment. “[F]rom commencement to conclusion, the party moving for summary judgment bears the burden of persuasion that there is no triable issue of material fact and that he is entitled to *54 judgment as a matter of law.” ( Id. at p. 850, 107 Cal.Rptr.2d 841, 24 P.3d 493.) “ ‘That is because of the general principle that a party who seeks a court's action in his favor bears the burden of persuasion thereon. [Citation.] There is a triable issue of material fact if, and only if, the evidence would allow a reasonable trier of fact to find the underlying fact in favor of the party opposing the motion in accordance with the applicable standard of proof.... [Citation.]’ ” ( TrafficSchoolOnline, Inc. v. Clarke (2003) 112 Cal.App.4th 736, 738, 739, 5 Cal.Rptr.3d 408.) A defendant moving for summary judgment satisfies its burden of showing a claim lacks merit if the defendant can show one or more elements of a cause of action cannot be established because the plaintiff does not possess and cannot reasonably obtain the evidence necessary to establish the claim, or a complete defense to that cause of action exists. (Code Civ. Proc., § 437c, subds. ( o )(2), (p)(2).); ( Aguilar, supra, 25 Cal.4th at pp. 849, 854–855, 107 Cal.Rptr.2d 841, 24 P.3d 493.) If this burden of production is met, the burden shifts to the plaintiff to set forth specific facts sufficient to establish a prima facie showing of the existence of a triable material issue of fact. (Code Civ. Proc., § 437c, subds. ( o )(2), (p)(2); Aguilar, supra, 25 Cal.4th at p. 854, 107 Cal.Rptr.2d 841, 24 P.3d 493.)

    **612 In cases involving free speech, a speedy resolution is desirable because protracted litigation may chill the exercise of First Amendment rights. For that reason, summary judgment is a favored remedy in free speech cases. ( Winter v. DC Comics (2003) 30 Cal.4th 881, 891–892, 134 Cal.Rptr.2d 634, 69 P.3d 473 ( Winter ); Shulman v. Group W Productions, Inc. (1998) 18 Cal.4th 200, 228, 74 Cal.Rptr.2d 843, 955 P.2d 469.) Indeed, in an appropriation case not dissimilar from this one, the Supreme Court instructed that: “courts can often resolve the question as a matter of law simply by viewing the work in question and, if necessary, comparing it to an actual likeness of the person or persons portrayed. Because of these circumstances, an action presenting this issue is often properly resolved on summary judgment....” ( Winter, supra, 30 Cal.4th at pp. 891–892, 134 Cal.Rptr.2d 634, 69 P.3d 473.) The trial court's decision to enter summary judgment is reviewed de novo. However, if the decision is correct on any ground, the judgment must be upheld regardless of the reasons given by the trial court. ( TrafficSchoolOnline, Inc. v. Clarke, supra, 112 Cal.App.4th at pp. 738–739, 5 Cal.Rptr.3d 408.)

    2. Material issues of fact exist as to whether Kirby's likeness or identity was appropriated.

    a. The state statutory and common law claims of appropriation.

    Kirby alleges both a common law and statutory appropriation claim, a claim for violation of the Lanham Act, and several claims related to unfair competition. Her claims are predicated on the same underlying misconduct, i.e., respondents' alleged misappropriation and exploitation of Kirby's likeness or identity as depicted by the game's Ulala character.

    [1] Headnote Citing References[2] Headnote Citing References *55 In the context of a celebrity, the “invasion of privacy” tort for appropriation turns on a right of publicity arising from commercially exploitable opportunities embodied in the plaintiff's likeness. ( Baugh v. CBS, Inc. (N.D.Cal.1993) 828 F.Supp. 745.) The cause of action may be both common law and statutory. The elements of a common law action are the unauthorized use of the plaintiff's identity to the defendant's advantage by appropriating the plaintiff's name, voice, likeness, etc., commercially or otherwise, and resulting injury. ( Eastwood v. Superior Court (1983) 149 Cal.App.3d 409, 417, fn. 6, 198 Cal.Rptr. 342.)

    [3] Headnote Citing References The statutory claim provides: “Any person who knowingly uses another's name, voice, signature, photograph, or likeness, in any manner, on or in products, merchandise, or goods, or for purposes of advertising or selling, or soliciting purchases of, products, merchandise, goods or services, without such person's prior consent, ... shall be liable for any damages sustained by the person or persons injured as a result thereof.” (Civ.Code, § 3344, subd. (a) [section 3344, subdivision (a) ].) The legislative prohibition against the unauthorized appropriation of one's likeness was intended to complement, not supplant, common law claims for “right of publicity.” ( Comedy III Productions, Inc. v. Gary Saderup, Inc. (2001) 25 Cal.4th 387, 391, 106 Cal.Rptr.2d 126, 21 P.3d 797 ( Comedy III ); Eastwood v. Superior Court, supra, 149 Cal.App.3d at pp. 416–417, 198 Cal.Rptr. 342.) The common law and statutory claims are similar but not identical, but both are involved here. A statutory cause of action for appropriation not only encompasses the common law elements, it requires a knowing use of the plaintiff's name, likeness, etc. ( Eastwood v. Superior Court, supra, 149 Cal.App.3d at pp. 417–418, 198 Cal.Rptr. 342; § 3344, subd. **613 (a).) The privacy invasion is actionable under either the statute or common law regardless of whether the purpose is commercial. (See KNB Enterprises v. Matthews (2000) 78 Cal.App.4th 362, 367–368, fn. 5, 92 Cal.Rptr.2d 713.)

    Kirby repeatedly insists the trial court found, as a matter of law, that her “likeness and identity had been misappropriated.” Her insistence is not supported by the record. The trial court found only the existence of material factual issues as to whether, by creating Ulala, respondents misappropriated Kirby's likeness and identity. Our review of the record reveals the court's conclusion was correct.

    The misappropriation of one's “likeness” refers to a person's visual image. ( Midler v. Ford Motor Co. (9th Cir.1988) 849 F.2d 460, 463.) Ulala resembles Kirby in certain respects. Certain of Ulala's characteristics and computer-generated features resemble Kirby's. Both images are thin, and have similarly shaped eyes and faces, red lips and red or pink hair. Both wear brightly-colored, form-fitting clothing, including short skirts and platform *56 shoes in a 1960's retro style. In addition, Ulala's name is a phonetic variant of “ooh la la,” a phrase often used by Kirby and associated with Kirby. Finally, as the trial court pointed out, both Kirby and Ulala used the phrases “groove,” “meow,” “dee-lish,” and “I won't give up.” These similarities support Kirby's contention her identity was misappropriated.

    However, Ulala and Kirby also differ in significant respects. Although Ulala dons assorted costumes in the game, she is seen most often with her hair in short, high pigtails, wearing an orange cropped-top bearing the numeral “5” and orange miniskirt, orange gloves and boots with stiletto heels, a blue ray-gun holster strapped to her thigh, and a blue headset and jetpack. Kirby asserts she often wears short skirts, crop tops with numbers, elbow-length gloves, pigtails and space helmets. Kirby, as the record reflects, is found more frequently in form-fitting body suits, with her hair shaped into a page-boy flip, held back with a head band. And, unlike Ulala, when Kirby wears her hair in pigtails, the pigtails not only are longer than Ulala's, but Kirby has tendrils of hair draping over her forehead which she holds back with clips. Kirby concedes she has no singular identity, her appearance and visual style are “continually moving,” and she “is not the type of artist that wants to do the same thing every time.” This lack of stasis is inconsistent with a claim of appropriation. Moreover, unlike the game, which is set in outer space several centuries in the future, Kirby's fashion approach harkens back to a retro 1960's style, and neither her videos nor photographs relate to outer space.

    Notwithstanding the differences between Kirby and Ulala, we agree with the trial court that a material factual issue exists as to whether respondents misappropriated Kirby's likeness. Ulala's facial features, her clothing, hair color and style, and use of certain catch phrases are sufficiently reminiscent enough of Kirby's features and personal style to suggest imitation. In addition, although no evidence indicates Kirby's likeness was actually used to create Ulala, Kirby was specifically asked by a Sega affiliate in 2003 to endorse SC5. This solicitation suggests Sega knew of Kirby and believed her celebrity association would benefit the release of the European version of the game.

    The differences also give rise to a factual issue on the common law claim of misappropriation of Kirby's identity. Again, Kirby's admission that she possesses no singular identity militates against a successful claim of appropriation. (Compare **614 White v. Samsung Electronics America, Inc. (9th Cir.1992) 971 F.2d 1395, 1399 [Nonconsensual use of robotic image of celebrity Vanna White, dressed in wig, gown and jewelry regularly worn by White, turning letters on a game show set designed to look like the “Wheel of Fortune,” constitutes common law appropriation of celebrity's singular identity].) In *57 addition, we agree with the trial court that Ulala's limited and consistently short and choppy dance movement and style differ markedly from Kirby's, a finding consistent with Sega's claim that Ulala's dance moves were created by a dancer who knew nothing of Kirby. Nevertheless, the differences are sufficient to give rise to a triable factual issue on the common law claim as well.FN3

    FN3. Kirby's remaining state law claims—unfair competition in violation of Business and Professions Code section 17200, interference with prospective business advantage and accounting-ride the coattails of her privacy claims. That is, each is predicated on the unauthorized appropriation of her likeness or identity. As such, material issues of fact exist as to these claims as well.

    b. The Lanham Act.

    [4] Headnote Citing References The Lanham Act is the federal equivalent of a right of publicity claim. It protects against use of a celebrity's image or persona in connection with a product in a manner likely to falsely imply a celebrity product endorsement. ( ETW Corp. v. Jireh Pub., Inc. (6th Cir.2003) 332 F.3d 915, 924) ( ETW ). Critical to a Lanham Act claim is the likelihood reasonable consumers will be confused about the celebrity's endorsement. ( Id. at pp. 925–926.) For reasons discussed above, we agree with the trial court's finding that “[t]he same issues of fact concerning likeness and identity which support [Kirby's] appropriation claims also support her Lanham Act claim. There is a question of fact that [Kirby's] identity, though constantly evolving, has been appropriated for SC5.” FN4

    FN4. Ordinarily, a Lanham Act claim requires analysis of the key element of false endorsement which is not required by the state law appropriation claims. In other words, the court must evaluate the likelihood an ordinary consumer would reasonably believe the celebrity endorsed or sponsored the product or service at issue. (See e.g., White v. Samsung Electronics America, Inc., supra, 971 F.2d at p. 1401.) That evaluation need not be conducted here. The test does not apply in a case such as this, in which there is a colorable defense that the use of the celebrity's likeness or identity is entitled to First Amendment protection. ( ETW, supra, 332 F.3d at p. 926.)

    3. The First Amendment affords a complete defense to Kirby's claims.

    Respondents contend here, as they did below, that their right of free expression under the First Amendment of the United States Constitution and the even greater speech protections afforded by the California Constitution, Article I, section 2, provide a complete defense to Kirby's claims. (See Robins v. Pruneyard Shopping Center (1979) 23 Cal.3d 899, 153 Cal.Rptr. 854, 592 P.2d 341 [Cal. Const. provides broader speech protection than does U.S. Const.].) The trial court agreed, as do we.

    [5] Headnote Citing References[6] Headnote Citing References[7] Headnote Citing References[8] Headnote Citing References The freedom of expression protected by the First Amendment exists to preserve an uninhibited marketplace of ideas and to further individual *58 rights of self expression. ( Winter, supra, 30 Cal.4th at p. 887, 134 Cal.Rptr.2d 634, 69 P.3d 473.) The protections may extend to all forms of expression, including written and spoken words (fact or fiction), music, films, paintings, and entertainment, whether or not sold for a profit. FN5 **615