Marvel Characters, Inc. v. Kirby, No. 11-3333 (2d Cir. 2013)

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Justia Opinion Summary

Defendants, the children of the late Jack Kirby, one of the most influential comic book artists of all time, appealed the district court's grant of summary judgment to Marvel. This case concerned the property rights in 262 works published by Marvel between 1958-1963. After defendants served various Marvel entities with Termination Notices purporting to exercise statutory termination rights under section 304(c)(2) of the Copyright Act of 1976, 17 U.S.C. 304, Marvel filed suit seeking a declaration that defendants have no termination rights under section 304(c)(2). The court concluded that the district court lacked personal jurisdiction over Lisa and Neal Kirby and, therefore, vacated the district court's judgment against them; Lisa and Neal are not indispensable parties and it was appropriate for the action against Barbara and Susan Kirby to have proceeded on its merits; the district court did not err in determining as a matter of law that the works at issue were "made for hire," made at Marvel's instance and expense, and that the parties had no agreement to the contrary; and the district court properly granted Marvel's motion for summary judgment as to Susan and Barbara, who were without termination rights under section 304(c).

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11-3333-cv Marvel Characters, Inc. v. Kirby 1 UNITED STATES COURT OF APPEALS 2 FOR THE SECOND CIRCUIT 3 August Term, 2012 4 (Argued: October 24, 2012 Decided: August 8, 2013) 5 Docket No. 11-3333-cv 6 ------------------------------------- 7 8 MARVEL CHARACTERS, INCORPORATED, MARVEL WORLDWIDE, INCORPORATED, MVL RIGHTS, LLC, 9 Plaintiffs-Counter-Defendants-Appellees, 10 WALT DISNEY COMPANY, MARVEL ENTERTAINMENT, INCORPORATED, 11 Counter-Defendants-Appellees, 12 - v - 13 14 LISA R. KIRBY, NEAL L. KIRBY, SUSAN N. KIRBY, BARBARA J. KIRBY, 15 Defendants-Counter-Claimants-Appellants. 16 ------------------------------------- 17 18 Before: CABRANES, SACK, and CARNEY, Circuit Judges. Appeal by the defendants-counter-claimants from a 19 judgment of the United States District Court for the 20 Southern District of New York (Colleen McMahon, Judge) 21 granting summary judgment in favor of the plaintiffs- 22 counter-defendants on their claim for declaratory relief and 23 denying the defendants-counter-claimants' cross-motion for 24 summary judgment. Plaintiffs-counter-defendants commenced 1 this lawsuit in response to notices sent by the defendants- 2 counter-claimants, the children of comic book artist Jack 3 Kirby, purporting to terminate alleged assignments in 4 certain of their father's works pursuant to 5 section 304(c)(2) of the Copyright Act of 1976. 6 that: (1) the district court incorrectly determined that it 7 had personal jurisdiction over Lisa and Neal Kirby; (2) Lisa 8 and Neal Kirby were not indispensable parties to the action 9 under Rule 19(b) of the Federal Rules of Civil Procedure; 10 and (3) the district court correctly determined that the 11 works at issue were "made for hire" under section 304(c), 12 and that Marvel was therefore entitled to summary judgment. 13 We conclude Affirmed in part; vacated in part. 14 15 16 17 18 19 20 21 R. BRUCE RICH (James W. Quinn, Randi W. Singer, Gregory Silbert, on the brief), Weil, Gotshal & Manges LLP, New York, New York; David Fleischer, Haynes and Boone, LLP, New York, New York for Plaintiffs-CounterDefendants-Appellees and CounterDefendants-Appellees. 22 23 24 25 MARC TOBEROFF, Toberoff & Associates, P.C., Malibu, California, for Defendants-CounterClaimants-Appellants. 26 27 SACK, Circuit Judge: This appeal requires us to revisit our case law 28 applying the work-for-hire doctrine in the context of 29 section 304 of the Copyright Act of 1976 (or, the "1976 2 1 Act"), 17 U.S.C. § 304. Defendants-counter-claimants- 2 appellants Lisa, Neal, Susan, and Barbara Kirby 3 (collectively, the "Kirbys") are the children of the late 4 Jack Kirby. 5 comic book artists of all time. 6 his career, he produced drawings for Marvel Comics, a comic 7 book publisher that has since grown into the multifaceted 8 enterprise reflected in the case caption: 9 Characters, Inc., Marvel Worldwide, Inc., MVL Rights, LLC, Kirby is considered one of the most influential At various times throughout Marvel 10 and Marvel Entertainment, Inc. (collectively, "Marvel"). 11 issue here are the rights to drawings Kirby allegedly 12 created between 1958 and 1963. 13 At The Kirbys appeal from the district court's grant 14 of summary judgment to Marvel, which was based on the 15 conclusion that all of the works at issue are "works made 16 for hire" within the meaning of section 304(c), and that the 17 Kirbys therefore have no rights to the works. 18 Kirbys, Lisa and Neal, also challenge the district court's 19 conclusion that it had personal jurisdiction over them under 20 New York's long-arm statute. 21 are indispensable parties under Rule 19(b) of the Federal 22 Rules of Civil Procedure, such that their absence from this 23 lawsuit (by virtue of the district court's lack of personal Two of the They further argue that they 3 1 jurisdiction over them) requires that the suit be dismissed 2 in its entirety. 3 We conclude that the district court was without 4 personal jurisdiction over Lisa and Neal. 5 vacate the judgment as against them. 6 that Lisa and Neal are not indispensable parties to this 7 lawsuit, and that the district court was correct in 8 concluding that the works at issue are "works made for hire" 9 under section 304(c). 10 We also find, however, We therefore affirm the judgment as to defendants Barbara and Susan. BACKGROUND 11 12 We therefore In this appeal from the grant of summary judgment, 13 we view the evidence in the light most favorable to the 14 nonmovants, the Kirbys for present purposes, and draw all 15 reasonable inferences in their favor. 16 Ferro, 711 F.3d 334, 339 (2d Cir. 2013). See, e.g., Singer v. 17 Jack Kirby 18 Jack Kirby, born Jacob Kurtzberg in New York 19 City's Lower East Side in 1917, began his career in the 20 comic book business in the late 1930s. 21 1940, a young woman named Rosalind moved into the apartment 22 above his with her family. 23 Rosalind if she "[w]ould like to see [his] etchings[.]" 24 thought he wanted "to fool around"; he only wanted to show In the summer of The day they met, Kirby asked 4 She 1 her his drawings for a new comic book series called Captain 2 America. 3 Rosalind Kirby Interviewed (conducted Dec. 12, 1995), THE 4 JACK KIRBY COLLECTOR, April 1996, at 6. 5 married in 1942. 6 War II, the couple had four children: Susan, Neal, Barbara, 7 and Lisa. Kirby and "Roz" were After Kirby's military service in World Kirby's career in comic book illustration spanned 8 9 John Morrow, "Would You Like to See My Etchings?": more than half a century. His influence was substantial. 10 An obituary marking his death in 1994 quoted Joe Simon, 11 Kirby's creative partner for fifteen years: "He brought the 12 action drawing to a new level. 13 over and still is today to a certain extent." 14 76; Created Comic Book Superheroes, N.Y. TIMES, Feb. 8, 1994, 15 at D22. His style was imitated all Kirby was prolific, too. 16 Jack Kirby, In 1951 alone, 308 pages 17 of Kirby's work appeared in published comic books. This 18 output was typical for him in the years between 1940 and 19 1978. 20 Marvel Comics and Stan Lee 21 Marvel was founded as Timely Comics in 1939 by one 22 Martin Goodman. In 1940, Marvel purchased the first ten 23 issues of Captain America from Kirby and Joe Simon. 5 But 1 Kirby and Simon would soon move on to a competitor, DC 2 Comics. To replace them, Goodman hired one Stanley Lieber. Lieber would come to be known by his pen name, 3 4 Stan Lee. Lee is in his own right a towering figure in the 5 comic book world, and a central one in this case. 6 effect directed Marvel from the early 1940s until sometime 7 in the 1970s, serving, in his words, as "Editor," "Art 8 Director" and "a staff writer." 9 ("Lee Dep."), May 13, 2010, at 17, Joint App'x at 2437. He in Deposition of Stan Lee He 10 continued to work for Marvel in one capacity or another at 11 least to the day of his deposition testimony in this 12 litigation. But in the 1940s and 50s, Marvel, hobbled by poor 13 14 business decisions, was hardly a success story.1 15 Kirby began producing drawings for Marvel once again. 16 by 1961, its fortunes began to change. 17 released the first issues of The Fantastic Four. 18 heels were releases of the first issues of some of Marvel's 1 In 1958, And That year, Marvel On its 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. 6 1 most enduring and profitable titles, including The 2 Incredible Hulk, The X-Men, and Spider-Man. 3 Kirby's Relationship with Marvel from 1958-1963 4 This litigation concerns the property rights in 5 262 works published by Marvel between 1958 and 1963. 6 owns these rights depends upon the nature of Kirby's 7 arrangement with Marvel during that period. It is undisputed that Kirby was a freelancer, 8 9 Who i.e., he was not a formal employee of Marvel, and not paid a 10 fixed wage or salary. He did not receive benefits, and was 11 not reimbursed for expenses or overhead in creating his 12 drawings. 13 Marvel, usually in the person of Stan Lee, was free to 14 reject Kirby's drawings or ask him to redraft them. 15 Marvel accepted drawings, it would pay Kirby by check at a 16 per-page rate. He set his own hours and worked from his home. When Despite the absence of a formal employment 17 18 agreement, however, the record suggests that Kirby and 19 Marvel were closely affiliated during the relevant time 20 period. 21 artist, a steady stream of work during that period. 22 Dep. at 36, Joint App'x at 2456 ("I wanted to use Jack for 23 everything, but I couldn't because he was just one guy."); Lee assigned Kirby, whom he considered his best 7 See Lee 1 id. at 37, Joint App'x at 2457 ("So I said: 2 forget it, Jack. 3 somebody else. 4 id. at 30, Joint App'x 2450 ("He got the highest [rate] 5 because I considered him our best artist."). 6 All right, I will give [the Spider-Man strip] to Jack didn't care. He had so much to do."); And Kirby seems to have done most of his work with 7 Marvel projects in mind. Although the Kirby children assert 8 that their father could and did produce and sell his work to 9 other publishers during those years, lists of Kirby's works 10 cited by both parties establish that the vast majority of 11 his published work in that time frame was published by 12 Marvel (or Atlas Comics, as part of Marvel Comics Group). 13 14 15 The specifics of Kirby and Marvel's creative relationship during this time period are less clear. According to Lee, at the relevant time, artists 16 worked using what the parties call the "Marvel Method." 17 was developed as a way to "keep a lot of artists busy" when 18 Lee or another writer could not provide the artist with a 19 completed script. 20 first step was for Lee to meet with an artist at a "plotting 21 conference." 22 would provide the artist with a "brief outline" or 23 "synopsis" of an issue; sometimes he would "just talk . . . Lee Dep. at 21, Joint App'x at 2441. Id. at 39-40, Joint App'x at 2459-60. 8 It The Lee 1 with the artist" about ideas. 2 2455. 3 to." 4 as Lee, would "put in all the dialogue and the captions." 5 Id. 6 and make changes or reject what the other writers or artists 7 had created." 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 Id. at 35, Joint App'x at The artist would then "draw it any way they wanted Id. at 21, Joint App'x at 2441. Then a writer, such According to Lee, he "maintain[ed] the ability to edit 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. 23 Other evidence in the record, including some of 24 Lee's own deposition testimony, indicates, however, that 25 Kirby had a freer hand within this framework than did 26 comparable artists. 27 "instead of telling [Kirby] page by page" what to draw, Lee 28 might simply tell him to "[d]evote five pages to this, five 29 pages to that, and three pages to that." For example, Lee explained that 9 Id. at 70, Joint 1 App'x at 2490. Sometimes during plotting sessions, Kirby 2 might "contribute something or he might say, 'Stan, let's 3 also do this or do that.'" Id. at 41, Joint App'x at 2461. It is beyond dispute, moreover, that Kirby made 4 5 many of the creative contributions, often thinking up and 6 drawing characters on his own, influencing plotting, or 7 pitching fresh ideas. 8 The Termination Notices 9 The dispute before us began in September 2009, 10 when the Kirbys served various Marvel entities with 11 documents entitled "Notice of Termination of Transfer 12 Covering Extended Renewal Term" (the "Termination Notices"). 13 The Termination Notices purport to exercise statutory 14 termination rights under section 304(c)(2) of the Copyright 15 Act of 1976, 17 U.S.C. § 304, with respect to 262 works in 16 all. 17 Each notice states an effective date sometime in 18 the future, presumably between 2014 and 2019. 19 dates are calculated according to section 304(c)'s timing 20 provision, which states in relevant part that 21 "[t]ermination . . . may be effected at any time during a 22 period of five years beginning at the end of fifty-six years 10 The effective 1 from the date copyright was originally secured . . . ." 2 U.S.C. § 304(c)(3). 3 Procedural History 4 17 Marvel filed this lawsuit on January 8, 2010. It 5 sought a declaration that the Kirbys have no termination 6 rights under section 304(c)(2), and that the Termination 7 Notices are therefore ineffective. 8 premised on its contention that all of the works were "made 9 for hire" by Jack Kirby for Marvel within the definition of 10 Marvel's claim was section 304(c). On March 9, 2010, the Kirbys filed a motion to 11 12 dismiss the complaint. Lisa and Neal Kirby, residents of 13 California, sought dismissal on the ground that they were 14 not subject to personal jurisdiction in New York State. 15 (The other Kirby siblings, Susan and Barbara, are residents 16 of New York and do not contest personal jurisdiction.) 17 Kirbys also argued that Lisa and Neal are indispensable to 18 the action under Fed. R. Civ. P. 19, and that Marvel's 19 entire suit must therefore be dismissed as against all 20 parties. The The district court denied the motion on April 14, 21 22 2010. Marvel Worldwide, Inc. v. Kirby, No. 10 Civ. 141, 23 2010 WL 1655253, 2010 U.S. Dist. LEXIS 38701 (S.D.N.Y. Apr. 11 1 14, 2010). 2 over Lisa and Neal under New York's long-arm statute, and 3 that the exercise of this jurisdiction was consistent with 4 constitutional due process. 5 LEXIS 38701, at *7-*25. 6 question of whether Lisa and Neal were indispensable 7 parties. 8 9 It concluded that it had personal jurisdiction Id. at *3-*9; 2010 U.S. Dist. It therefore did not reach the The Kirbys answered Marvel's complaint and asserted several counterclaims of their own. Marvel moved 10 to dismiss each of them. 11 court granted the motion as to all but the Kirbys' 12 counterclaim seeking a declaration that the Termination 13 Notices were valid. 14 F. Supp. 2d 461 (S.D.N.Y. 2010). 15 On November 22, 2010, the district Marvel Worldwide, Inc. v. Kirby, 756 In early 2011, after discovery was complete, the 16 parties cross-moved for summary judgment. 17 to exclude some of the Kirbys' evidence, most notably the 18 reports of the Kirbys' putative expert witnesses, John 19 Morrow and Mark Evanier. 20 Marvel also moved On July 28, 2011, the district court granted 21 Marvel's motions to exclude Morrow and Evanier's testimony, 22 and granted Marvel's motion for summary judgment. 23 Worldwide, Inc. v. Kirby, 777 F. Supp. 2d 720 (S.D.N.Y. 12 Marvel 1 2011). 2 so-called "instance and expense test" to determine whether a 3 work is "made for hire" under section 304(c). 4 43. 5 establish as a matter of law that the works at issue were 6 made at Marvel's instance and expense, and were therefore 7 works made for hire. 8 termination rights, and their Termination Notices were 9 ineffective. 10 11 It relied upon case law in this Circuit applying the Id. at 738- The court concluded that undisputed facts in the record Id. This being so, the Kirbys had no The district court entered judgment accordingly on August 8, 2011. The Kirbys appeal. DISCUSSION 12 13 I. Personal Jurisdiction over Lisa and Neal Kirby 14 We turn first to the issue of personal 15 jurisdiction over Lisa and Neal Kirby. Lisa and Neal are 16 California residents. 17 erred when it determined that New York State's long-arm 18 statute provided a basis for jurisdiction over them in the 19 Southern District of New York. 20 legal conclusions concerning its exercise of personal 21 jurisdiction de novo, and its underlying factual findings 22 for clear error. 23 F.3d 95, 103 (2d Cir. 2006). They contend that the district court We review a district court's D.H. Blair & Co., Inc. v. Gottdiener, 462 13 1 A district court must have a statutory basis for 2 exercising personal jurisdiction. See Grand River 3 Enterprises Six Nations, Ltd. v. Pryor, 425 F.3d 158, 165 4 (2d Cir. 2005). 5 where a defendant resides outside the forum 6 state, . . . [and the relevant] federal statute does not 7 specifically provide for national service of process," PDK 8 Labs, Inc. v. Friedlander, 103 F.3d 1105, 1108 (2d Cir. 9 1997) (internal quotation marks omitted), we apply "the Because this is "a federal question case 10 forum state's personal jurisdiction rules," id. 11 therefore look to New York State law. 12 We We focus our attention on section 302(a)(1) of New 13 York State's long-arm statute, N.Y. C.P.L.R. § 302(a)(1), 14 upon which the district court rested its jurisdiction, and 15 which Marvel invokes here. 16 "a court may exercise personal jurisdiction over any non- 17 domiciliary . . . who in person or through an agent 18 transacts any business within the state . . . ." 19 have recognized that for section 302(a)(1) to apply, "'it is 20 essential . . . that there be some act by which the 21 defendant purposefully avails [herself] of the privilege of 22 conducting activities within the forum State, thus invoking 23 the benefits and protections of its laws.'" Section 302(a)(1) provides that 14 Id. Beacon . . . We 1 Enterprises, Inc. v. Menzies, 715 F.2d 757, 766 (2d Cir. 2 1983) (alteration in original) (quoting George Reiner and 3 Co. v. Schwartz, 41 N.Y.2d 648, 650, 363 N.E.2d 551, 553, 4 394 N.Y.S.2d 844, 846 (1977)). Under the facts of this case, the only acts that 5 6 could potentially give rise to section 302(a)(1) 7 jurisdiction over Lisa and Neal are the sending of the 8 Termination Notices to Marvel in New York. 9 this is an insufficient basis for personal jurisdiction. We conclude that In Beacon Enterprises, supra, we applied section 10 11 302(a)(1) in a declaratory judgment suit very similar to 12 this one. 13 the plaintiff, Beacon, was infringing her trademarks and 14 copyrights in a line of weight-loss garments designed to 15 emulate the effects of a sauna. 16 F.2d at 760. 17 Beacon at its New York City headquarters, threatening 18 litigation. 19 the United States District Court for the Southern District 20 of New York, seeking a judgment declaring that its products 21 did not infringe Menzies' intellectual property rights. 22 23 The defendant there, Mary Menzies, thought that Beacon Enterprises, 715 Menzies sent a cease-and-desist letter to Id. Upon receiving it, Beacon filed a suit in Id. We concluded that Menzies' mailing of the ceaseand-desist letter into New York was insufficient to give 15 1 rise to personal jurisdiction over her under section 2 302(a)(1). 3 courts have consistently refused to sustain section 4 302(a)(1) jurisdiction solely on the basis of defendant's 5 communication from another locale with a party in New York." 6 Id. at 766 (collecting cases). 7 to characterize Menzies' letter alleging infringement in an 8 unspecified locale and threatening litigation in an 9 unspecified forum as an activity invoking the 'benefits and 10 11 Id. at 762, 766. We pointed out that "New York protections' of New York law." And we thought it "difficult Id. In Ehrenfeld v. Bin Mahfouz, 9 N.Y.3d 501, 881 12 N.E.2d 830, 851 N.Y.S.2d 381 (2007), the New York Court of 13 Appeals, responding to a certified question from us, 14 confronted a somewhat analogous fact pattern. 15 defendant had obtained a default judgment against the 16 plaintiff in English courts for the plaintiff's allegedly 17 libelous statements. 18 N.Y.S.2d at 383. 19 court in the Southern District of New York seeking a 20 declaration that she could not be held liable for defamation 21 under the circumstances of that case, and that the 22 defendant's default judgment was therefore not enforceable 23 against her in New York. There, the Id. at 505, 881 N.E.2d at 832, 851 The plaintiff brought suit in federal She argued that the "defendant 16 1 ha[d] transacted business in New York because he 2 purposefully projected himself into the state to further a 3 'foreign litigation scheme'" -- the libel suit in England -- 4 "designed to chill her speech." 5 834, 851 N.Y.S.2d at 385. Id. at 508, 881 N.E.2d at When the case came before us on appeal, we 6 7 certified to the New York Court of Appeals the question 8 whether section 302(a)(1) conferred jurisdiction in the 9 circumstances presented. Id. at 504, 881 N.E.2d at 831, 851 10 N.Y.S.2d at 382; see Ehrenfeld v. Bin Mahfouz, 489 F.3d 542, 11 551 (2d Cir. 2007). 12 negative, reasoning: The Court of Appeals answered in the 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 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. 29 Ehrenfeld, 9 N.Y.3d at 509, 881 N.E.2d at 835, 851 N.Y.S.2d 30 at 386. 17 Beacon Enterprises and Ehrenfeld point to the 1 2 result of the jurisdictional inquiry here. Like the defendants in those cases, Lisa and Neal 3 4 were not "present" in New York -- whether physically or 5 through some other continuous contact2 -- in connection with 6 the underlying dispute in this case. 7 alone dispositive, of course. 8 v. Montana Bd. of Invs., 7 N.Y.3d 65, 71, 850 N.E.2d 1140, 9 1142, 818 N.Y.S.2d 164, 166-67 (2006) ("[P]roof of one This factor is not Cf. Deutsche Bank Sec., Inc. 10 transaction in New York is sufficient to invoke 11 jurisdiction, even though the defendant never enters New 12 York." (internal quotation marks omitted)). 13 however, set this action apart from those the New York Court 14 of Appeals has described as "the clearest sort of case[s] in 15 which [New York] courts would have 302 jurisdiction," George 16 Reiner & Co., Inc. v. Schwartz, 41 N.Y.2d 648, 652 (1977), a 17 notion plainly grounded in constitutional principles of due 2 It does, 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. 18 1 process developed by the federal courts in and since 2 International Shoe Co. v. Washington, 326 U.S. 310 (1945). 3 Neither were Lisa and Neal's communications part, 4 or in contemplation, of a course of business dealings with 5 Marvel. 6 communications we found sufficient to confer section 7 302(a)(1) jurisdiction in PDK Labs, a case relied upon by 8 the district court, but distinguished in Ehrenfeld, 9 N.Y.3d 9 at 510, 881 N.E.2d at 836, 851 N.Y.S.2d at 387. This distinguishes them from the sort of In PDK 10 Labs, we concluded that the defendant had "purposefully 11 availed himself of the New York forum by using [his agent] 12 in New York and apparently elsewhere for many years to 13 advance his interest in his unique 'product' through 14 soliciting funds and negotiating royalty agreements." 15 Labs, 103 F.3d at 1111; see also Hoffritz for Cutlery, Inc. 16 v. Amajac, Ltd., 763 F.2d 55, 57 (2d Cir. 1985) (concluding 17 that contract negotiated in part in New York, signed in 18 Georgia and New York, and containing a New York forum 19 selection clause constituted "transaction of business" in 20 New York under section 302(a)(1)). 21 Termination Notices bear no indication that the Kirbys were 22 negotiating or cared to negotiate for or solicit Marvel's 23 business. 19 PDK Here, by contrast, the Finally, and perhaps most importantly, the 1 2 Termination Notices, like the letter in Beacon Enterprises 3 and the communications in Ehrenfeld, asserted legal rights 4 under a body of law other than New York's. 5 siblings seek to vindicate are purported termination rights 6 under section 304(c) of the federal copyright laws; they 7 seek no privilege or benefit conferred by New York State 8 law. 9 rights "shall be effected by serving an advance notice in What the Kirby Section 304(c)(4), moreover, states that termination 10 writing upon the grantee [of the initial assignment] or the 11 grantee's successor in title." 12 not only seek to vindicate rights under federal law, they 13 also are a compulsory feature of that body of law. The Termination Notices thus We think these factors foreclose the exercise of 14 15 section 302(a)(1) jurisdiction in the circumstances of this 16 case. 17 required for the exercise of rights conferred under a 18 federal statute, cannot alone constitute a purposeful 19 availment of "the benefits and protections of [New York's] 20 laws," at least where the only connection to New York is 21 that the recipient's business headquarters has a New York 22 address. We conclude that a communication from out-of-state, 20 1 Marvel's principal argument to the contrary rests 2 on the premise that the Termination Notices are self- 3 executing, legally effective communications. 4 therefore different from the cease-and-desist letter at 5 issue in Beacon Enterprises, Marvel contends, because there 6 the notice did no more than advise the recipient of alleged 7 infringement and threaten future litigation. 8 9 They are To begin with, we doubt Marvel's is an entirely accurate characterization of the Termination Notices: They 10 are necessary to the exercise of the termination rights, but 11 only the additional act of filing the notices with the 12 Copyright Office consummates the legal act of termination. 13 See 17 U.S.C. § 304(c)(4)(A). 14 explain why the notices' legal effect under federal 15 copyright law renders the act of mailing them any more a 16 "transaction of business" or a purposeful invocation of the 17 benefits and protections of New York law than would be other 18 communications. 19 In any event, Marvel does not Marvel also points to the notices' effects on 20 Marvel in New York, characterizing them as "target[ing] the 21 center of gravity of Marvel's publishing business," and of 22 having been "designed to disrupt and divert license fees 23 from Marvel's New York-based business," leaving Marvel with 21 1 "no option but to protect its rights and those of its 2 licensees." 3 statements may well be essentially true, if perhaps a bit 4 hyperbolic. 5 identical arguments based on the alleged in-state effects of 6 the English default judgment that the defendant had obtained 7 in the defamation case against the plaintiff, and the in- 8 state action that that judgment would compel. 9 Ehrenfeld, 9 N.Y.3d at 511, 881 N.E.2d 830, 837, 851 Appellees' Br. at 47-48 & n.17. These But the Court in Ehrenfeld rejected virtually See 10 N.Y.S.2d 381, 388. 11 261 F.3d 196, 209 (2d Cir. 2001) (finding that "financial 12 consequences in New York due to the fortuitous location of 13 plaintiffs" are insufficient to confer jurisdiction under 14 section 302(a)(3)). 15 that we reject Marvel's arguments in this regard here. 16 Cf. Whitaker v. Am. Telecasting, Inc., We read Ehrenfeld strongly to suggest Finally, we are unpersuaded by Marvel's attempts 17 to connect Lisa and Neal with New York through their 18 relationship with other family members. 19 51; see also Marvel Worldwide, Inc., 2010 WL 1655253, at *4- 20 *5, 2010 U.S. Dist. LEXIS 38701, at *10-*12. 21 with these arguments -- whether they seek to endow Lisa and 22 Neal with their father's jurisdictional status, or to 23 analyze their contacts with New York "collectively" with 22 Appellees' Br. at The problem 1 their other siblings -- is that they identify no legal 2 mechanism by which Jack's, Barbara's, or Susan's actions 3 become those of Lisa or Neal. 4 relationship -- the existence of which no one has asserted - 5 - there is no basis for imputing to Lisa and Neal actions by 6 their father half a century ago, or coincident actions by 7 their siblings who now live in New York and for that reason 8 are subject to personal jurisdiction here. 9 stretch the text of section 302 beyond the breaking point, Absent a bona fide agency Doing so would 10 see N.Y. C.P.L.R. § 302(a) (referring to transaction of 11 business "in person or through an agent"). We conclude that the district court lacked 12 13 personal jurisdiction over Lisa and Neal Kirby. We 14 therefore vacate the district court's judgment as against 15 those two Kirbys. 16 II. Compulsory Joinder 17 The Kirbys next argue that the absence of personal 18 jurisdiction over Lisa and Neal requires vacatur of the 19 judgment as against Barbara and Susan too. 20 Federal Rule of Civil Procedure 19: "Required Joinder of 21 Parties." 23 They rely on 1 A. Federal Rule of Civil Procedure 19 2 Rule 19 recognizes exceptional circumstances in 3 which the plaintiff's choice of parties or forum must give 4 way because of an absent party's interest in the outcome of 5 the action or involvement in the underlying dispute. 6 generally 7 CHARLES ALAN WRIGHT & ARTHUR R. MILLER, FEDERAL PRACTICE 7 AND 8 provisions are divided into two subsections. 9 protects certain parties by deeming them "required"; a party PROCEDURE § 1602 (3d ed. 2008). See The Rule's principal Subsection (a) 10 who is "required" according to the factors enumerated in 11 subsection (a) is one whose participation is so desirable or 12 important that the party must be joined so long as she or he 13 is "subject to service of process" and joinder "will not 14 deprive the court of subject-matter jurisdiction." 15 Civ. P. 19(a)(1). 16 Fed. R. Subsection (b) addresses situations in which a 17 party otherwise "required" under subsection (a) cannot be 18 joined for some reason, for example (as in this case), want 19 of personal jurisdiction. 20 requires courts to consider whether, "in equity and good 21 conscience," the party is one without whom the action 22 between the remaining parties cannot proceed -- or, in the 23 traditional terminology, whether the absent party is In such circumstances, Rule 19(b) 24 1 "indispensable." Fed. R. Civ. P. 19(b); see also CP 2 Solutions PTE, Ltd. v. General Electric Co., 553 F.3d 156, 3 159 n.2 (2d Cir. 2009) (per curiam). We assume, for present purposes, that Lisa and 4 5 Neal are "required" parties under Rule 19(a). They are also 6 parties whose joinder is not feasible, inasmuch as we 7 conclude that they are not amenable to personal jurisdiction 8 in the Southern District of New York, and they are unwilling 9 to consent to suit within the jurisdiction. The remainder 10 of this discussion, then, centers on the effects of Rule 11 19(b) on these proceedings. 12 B. Indispensability 13 Because of the "flexible nature of Rule 19(b) 14 analysis," we review a district court's decision under that 15 rule for abuse of discretion.3 16 Ltd. v. St. Paul Fire & Marine Ins. Co., 312 F.3d 82, 87 (2d 3 Universal Reinsurance Co., 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 (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. 25 1 Cir. 2002). Here, however, the district court decided -- 2 mistakenly, as we have explained -- that it had personal 3 jurisdiction over Lisa and Neal. 4 occasion to apply Rule 19(b). The court therefore had no It is ordinarily appropriate for us to vacate the 5 6 judgment of a district court and remand the cause to it when 7 matters committed to that court's discretion arise for the 8 first time on appeal. 9 But where a record is fully developed and it discloses that, See CP Solutions, 553 F.3d at 161. 10 in our judgment, only one possible resolution of such an 11 issue would fall "within the permissible range of choices" - 12 - in other words, where only one determination by the 13 district court would be within its discretion - there is no 14 reason to remand. 15 the contrary, we would be duty bound to reverse in any event 16 on the grounds of abuse of discretion. Id. If we did and the court decided to In this case, the parties have fully briefed the 17 18 Rule 19(b) issue on appeal, and the facts are 19 straightforward and undisputed. 20 is permissible. 21 instance.4 Only one result, we think, We therefore resolve the issue in the first 4 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. 26 1 Rule 19(b) sets forth four considerations that 2 will ordinarily be among those relevant to the analysis of 3 whether a party is "indispensable." 4 as: "(1) whether a judgment rendered in a person's absence 5 might prejudice that person or parties to the action, (2) 6 the extent to which any prejudice could be alleviated, (3) 7 whether a judgment in the person's absence would be 8 adequate, and (4) whether the plaintiff would have an 9 adequate remedy if the court dismissed the suit." 10 We have restated them CP Solutions, 553 F.3d at 159. 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. 27 1 Applying these factors requires an understanding 2 of the legal interests at stake, here the Kirbys' 3 termination rights under section 304(c). 4 current discussion is paragraph (1) of section 304(c), and 5 in particular the following provision: 6 grant executed by one or more of the authors of the work, 7 termination of the grant may be effected, . . . if such 8 author is dead, by the person or persons who . . . own and 9 are entitled to exercise a total of more than one-half of Central to the "In the case of a 10 that author's termination interest." 11 (emphasis added); see also id. § 304(c)(6)(C). 12 17 U.S.C. § 304(c)(1) The parties interpret this to mean that at least 13 three of the four Kirbys -- "more than one-half" -- must 14 "effect" termination of their father's assignment in order 15 for any of them to realize their termination rights. 16 Appellants' Br. at 21; Appellees' Br. at 55. 17 to acknowledge, if Barbara and Susan Kirby are disabled by 18 an adverse judgment in this suit from effecting termination, 19 all four Kirbys lose. 20 So, all seem Under this interpretation of section 304(c)(1), 21 which we assume without deciding is correct, several of the 22 possible Rule 19(b) considerations are irrelevant. 23 cannot, and does not, complain that a judgment rendered in 28 Marvel 1 Lisa and Neal's absence prejudices it in any way, because it 2 should be satisfied by a judgment against Barbara and Susan 3 that forecloses Lisa and Neal's rights too. 4 and Susan claim prejudice. 5 reflect the full and fair adjudication of their rights under 6 section 304(c). 7 that Barbara and Susan will somehow bear in full a legal 8 obligation that is properly shared by their absent siblings. 9 There is thus no prejudice to Marvel, Barbara, or Susan as 10 Nor can Barbara Any judgment here stands to And whatever the result, there is no risk "existing parties." Fed. R. Civ. P. 19(b)(1). We also do not see how a judgment in this case 11 12 could be crafted to alleviate any prejudice that may exist 13 to absent parties Lisa and Neal. 14 19(b)(2). 15 non of Barbara and Susan's termination rights, and whatever 16 the practical effect of this declaration, it can do no more 17 or less. 18 See Fed. R. Civ. P. The judgment here will declare the existence vel Finally, although we can hardly be confident that 19 the absent parties in this case will accept a judgment as 20 the last word in this dispute, we think that any judgment 21 would be "adequate," Fed. R. Civ. P. 19(b)(3), in the sense 22 of honoring the "public stake in settling disputes by 23 wholes, whenever possible." CP Solutions, 553 F.3d at 160 29 1 (internal quotation marks omitted). 2 Barbara and Susan, the parties' interpretation of section 3 304(c)(1) implies that the issue is resolved as to all 4 Kirbys; if Barbara and Susan prevail, principles of issue 5 preclusion would likely bar Marvel from relitigating the 6 issue against Lisa and Neal. 7 JUDGMENTS § 29 (1982). See RESTATEMENT (SECOND) OF This leaves us with two factors to consider. 8 9 If Marvel wins against The first is potential prejudice to Lisa and Neal arising from 10 their absence. 11 that by operation of section 304(c)(1)'s "more than one- 12 half" requirement, they stand to have their legal rights 13 finally determined in their absence. 14 22. 15 tradition that everyone should have his own day in court.'" 16 See Richards v. Jefferson County, 517 U.S. 793, 798 (1996) 17 (quoting 18 CHARLES ALAN WRIGHT, ARTHUR R. MILLER, EDWARD H. COOPER, 18 FEDERAL PRACTICE AND PROCEDURE § 4449 (3d ed. 2008)). 19 Fed. R. Civ. P. 19(b)(1). They complain Appellants' Br. at 21- This argument appeals to our "'deep-rooted historic But the law in this context and elsewhere 20 "'recognize[s] an exception to the general rule when, in 21 certain limited circumstances, a person, although not a 22 party, has his interests adequately represented by someone 23 with the same interests who is a party.'" 30 Id. (quoting 1 Martin v. Wilks, 490 U.S. 755, 762 n.2 (1989)). 2 recognized in CP Solutions, the potential prejudice to an 3 absent party under Rule 19(b) is mitigated where a remaining 4 party "could champion [his or her] interest." 5 160. 6 vanishing point when the remaining parties are represented 7 by the same counsel, and when the absent and remaining 8 parties' interests are aligned in all respects. 9 Prescription Plan Serv. Corp. v. Franco, 552 F.2d 493, 497 10 11 As we 553 F.3d at And prejudice to absent parties approaches the Id.; (2d Cir. 1977). This lawsuit concerns a single legal issue in 12 which Lisa's and Neal's interests are identical to Barbara's 13 and Susan's. 14 sure was "no less vigorous in [his] advocacy," Prescription 15 Plan Serv., 552 F.2d at 497, because he represented two 16 Kirbys instead of four. 17 whatever to think that the proofs advanced by Barbara and 18 Susan are materially different from those Lisa and Neal 19 would have proffered. 20 prejudice to Lisa and Neal as a result of adjudicating this 21 case in their absence. 22 23 The Kirbys have the same lawyer -- who we are And we have been given no reason We therefore see no practical The other remaining consideration is whether Marvel "would have an adequate remedy if the action were 31 1 dismissed for non-joinder." Fed. R. Civ. P. 19(b)(4). 2 Marvel points out, because Lisa and Neal are not amenable to 3 personal jurisdiction in New York, and because Barbara and 4 Susan - New York residents -- are, as far as the record 5 reveals, not amenable to personal jurisdiction in 6 California, the Kirbys might well be able to thwart a 7 declaratory judgment suit brought by Marvel in a forum in 8 either state. 9 nearly non-existent showing of prejudice to any of the Appellees' Br. at 56-57. As In light of the 10 parties involved here, we see no reason to permit the Kirbys 11 to withhold consent to any suit in which the forum or 12 litigation posture are not to their liking. 13 Tradesmens Bank & Trust Co. v. Patterson, 390 U.S. 102, 109 14 (1968) (recognizing a plaintiff's "interest in having a 15 forum"). See Provident 16 We conclude, therefore, that the only 17 determination that falls within the range of permissible 18 decisions in the circumstances of this case is that Lisa and 19 Neal are not indispensable parties, and that it was 20 appropriate for the action against Barbara and Susan to have 21 proceeded on its merits.5 5 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 32 1 III. Summary Judgment 2 The remaining Kirbys -- Barbara and Susan -- 3 challenge the district court's grant of summary judgment in 4 favor of Marvel. 5 summary judgment de novo. 6 decision, we apply the same standards applied by the 7 district court. 8 be granted only if 'there is no genuine dispute as to any 9 material fact and the movant is entitled to judgment as a "We review a district court's grant of In reviewing a summary judgment Under this standard, summary judgment may 10 matter of law.' [Fed. R. Civ. P. 56(a)]. In determining 11 whether there is a genuine dispute as to a material fact, we 12 must resolve all ambiguities and draw all inferences against 13 the moving party." Garcia v. Hartford Police Dep't, 706 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. 33 1 F.3d 120, 126-27 (2d Cir. 2013) (per curiam) (alteration, 2 some citations, and internal quotation marks omitted). 3 A. Exclusion of Expert Testimony 4 We address first the admissibility of the reports 5 and testimony of Barbara and Susan's putative experts, John 6 Morrow and Mark Evanier, who purported to offer historical 7 perspective concerning the relationship between Marvel and 8 Jack Kirby. 9 testimony were inadmissible. The district court ruled that the reports and 10 F. Supp. 2d at 729-30. 11 discretion. 12 Marvel Worldwide, Inc., 777 (2d Cir. 2004). 13 We review this decision for abuse of Wills v. Amerada Hess Corp., 379 F.3d 32, 41 Federal Rule of Evidence 702 governs the 14 admissibility of expert testimony. It requires for 15 admissibility, among other things, that "the expert's 16 scientific, technical, or other specialized knowledge will 17 help the trier of fact to understand the evidence or to 18 determine a fact in issue." 19 words, "[e]xpert testimony must be helpful to the [trier of 20 fact] in comprehending and deciding issues beyond the 21 understanding of a layperson." 22 102, 121 (2d Cir. 2005). Fed. R. Evid. 702(a). 34 In other DiBella v. Hopkins, 403 F.3d We have no doubt that a historian's "specialized 1 2 knowledge" could potentially aid a trier of fact in some 3 cases. 4 gauge the reliability of, and interpret evidence that would 5 otherwise elude, mislead, or remain opaque to a layperson. 6 See generally Maxine D. Goodman, Slipping Through the Gate, 7 60 BAYLOR L. REV. 824, 857 (2008) (commenting that a 8 historian's task is "to choose reliable sources, to read 9 them reliably, and to put them together in ways that provide A historian could, for example, help to identify, 10 reliable narratives about the past" (quoting MARTHA C. HOWELL 11 & WALTER PREVENIER, FROM RELIABLE SOURCES: AN INTRODUCTION TO HISTORICAL 12 METHODS 2 (2001))). 13 dense or voluminous historical texts. 14 witness might offer background knowledge or context that 15 illuminates or places in perspective past events. 16 e.g., Int'l Soc. for Krishna Consciousness, Inc. v. Barber, 17 650 F.2d 430, 440 (2d Cir. 1981) ("In fact, one religious 18 expert at trial remarked that the American movement is 'one 19 of the most unusual examples of transfer of a cultural 20 tradition across broad national and cultural barriers.' 21 This evidence of historical longevity and theological 22 consistency should not be ignored."). He or she might helpfully synthesize 35 Id. Or such a See, 1 But Morrow and Evanier do not bring their 2 expertise to bear in any such way. As the district court 3 recognized, their reports are by and large undergirded by 4 hearsay statements, made by freelance artists in both formal 5 and informal settings, concerning Marvel's general practices 6 towards its artists during the relevant time period. 7 e.g., Deposition of Mark Evanier, Dec. 6, 2010, at 18-21, 8 Joint App'x at 957-59. 9 then speculate as to the motivations and intentions of See, Drawing from these statements, they 10 certain parties, see, e.g., Expert Report of John Morrow at 11 9, Joint App'x at 1152 ("I do not believe that Goodman, Lee, 12 Marvel or the freelance artists, like Jack Kirby, 13 . . . thought that the material they created was 'work made 14 for hire' . . . ."), or opine on the credibility of other 15 witnesses' accounts, see, e.g., Expert Report of Mark 16 Evanier at 14, Joint App'x at 1105 ("I have great respect 17 and personal affection for Stan Lee, but I disagree with the 18 accounts he has sometimes given . . . ."). 19 Although the Rules permit experts some leeway with 20 respect to hearsay evidence, Fed. R. Evid. 703, "a party 21 cannot call an expert simply as a conduit for introducing 22 hearsay under the guise that the testifying expert used the 23 hearsay as the basis of his testimony." 36 Malletier v. Dooney 1 & Bourke, Inc., 525 F. Supp. 2d 558, 666 (S.D.N.Y. 2007). 2 The appropriate way to adduce factual details of specific 3 past events is, where possible, through persons who 4 witnessed those events. 5 witnesses' credibility and drawing inferences from their 6 testimony belong to the factfinder. 7 New York, 414 F.3d 381, 397-98 (2d Cir. 2005). 8 think the district court clearly did not abuse its 9 discretion in declining to admit this evidence. And the jobs of judging these See Nimely v. City of We therefore 10 B. Termination Rights and Work Made for Hire 11 We thus, at last, arrive at the merits of Marvel's 12 summary judgment motion. 13 Copyright Act of 1976, which, insofar as bears on this 14 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 . . . . 15 16 17 18 19 20 21 22 23 24 25 26 At issue is section 304(c) of the 17 U.S.C. § 304(c).6 6 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 37 1 2 If the author is no longer alive, section 3 304(c)(2) grants his or her termination rights to specified 4 heirs. 5 the property rights of widows and children in copyrights" by 6 granting them the power to undo earlier transfers and to 7 enjoy the remainder of the copyright term.7 8 Inc. v. Bourne Co., 953 F.2d 774, 778 (2d Cir. 1992). 9 But section 304(c) provides that termination See id. § 304(c)(2)(B). The provision "protect[s] Larry Spier, 10 rights under that section do not exist with respect to 11 "work[s] made for hire." 12 is "made for hire," copyright law deems the employer to be 13 the "author" for purposes of copyright ownership. 14 Act of 1909 § 62 (formerly codified at 17 U.S.C. § 26) 15 ("[T]he word 'author' shall include an employer in the case 17 U.S.C. § 304(c). Where a work Copyright 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). 7 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. 38 1 of works made for hire."); see also Copyright Act of 1976 2 § 201(b), 17 U.S.C. § 201(b) ("In the case of a work made 3 for hire, the employer or other person for whom the work was 4 prepared is considered the author for purposes of this 5 title . . . ."). 6 the colloquial sense," Shapiro, Bernstein & Co. v. Bryan, 7 123 F.2d 697, 699 (2d Cir. 1941), therefore never owned the 8 copyrights to assign. 9 are no rights the assignment of which his or her heirs may 10 It stands to reason, then, that there now terminate. Marvel argues that all of the works at issue in 11 12 The hired party, although "the 'author' in this case fall into the category of "work made for hire." 1. 13 The Instance and Expense Test. To determine 14 whether a work is "work made for hire" within the meaning of 15 section 304(c), we apply case law interpreting that term as 16 used in the 1909 Act, the law in effect when the works were 17 created. 18 Burroughs, Inc., 342 F.3d 149, 156-63 (2d Cir. 2003). 19 requires us to apply what is known as the "instance and 20 expense test." See Estate of Burne Hogarth v. Edgar Rice This 21 a. 22 The origins of the instance and expense test were 23 Origins. described at some length by Judge Newman's opinions in 39 1 Estate of Burne Hogarth v. Edgar Rice Burroughs, Inc., 2 supra, and Martha Graham School and Dance Foundation, Inc. 3 v. Martha Graham Center of Contemporary Dance, Inc., 380 4 F.3d 624, 633-36 (2d Cir. 2004). The test was developed from two lines of cases. 5 6 One was our court-made work-for-hire jurisprudence. 7 "Because the 1909 Act did not define 'employer' or 'works 8 made for hire,' the task of shaping these terms fell to the 9 courts." Community for Creative Non-Violence v. Reid, 490 10 U.S. 730, 744 (1989). 11 Lithographing Co., 188 U.S. 239, 248 (1903) -- the Supreme 12 Court's first encounter with the work-for-hire phenomenon -- 13 as a guidepost, our early cases focused principally on 14 whether the work at issue was created within the scope of a 15 traditional employment relationship. 16 Carl Fischer, Inc., 98 F.2d 57, 59 (2d Cir. 1938); Shapiro, 17 Bernstein & Co., Inc. v. Bryan, 123 F.2d 697, 698-700 (2d 18 Cir. 1941). 19 which party within the traditional employment relationship 20 was the statutory "author," and hence owned the copyright in 21 the work from the time of creation. 22 23 Using Bleistein v. Donaldson See, e.g., Tobani v. Work-for-hire doctrine thus served to identify The second doctrine developed to address what was initially considered a separate issue under the 1909 Act: 40 1 rights in commissioned works created by independent 2 contractors. 3 early cases, was not who the statutory author was - the 4 author was the independent contractor. 5 whether the hiring party nevertheless owned copyrights by 6 way of the author's implied assignment of those rights; and, 7 if so, whether the assignment applied to only the "original" 8 copyright term, or to both the "original" term and an 9 "expectancy" in the so-called "renewal" term. 10 The issue in this situation, at least in the The issue was We addressed the first half of this issue in 11 Yardley v. Houghton Mifflin Co., 108 F.2d 28 (2d Cir. 1939). 12 There we concluded that if a party "is solicited by a patron 13 to execute a commission for pay, the presumption should be 14 indulged that the patron desires to control the publication 15 of copies and that the artist consents that he may, unless 16 by the terms of the contract, express or implicit, the 17 artist has reserved the copyright to himself." 18 And in later cases, we seemed to answer the second half, 19 limiting Yardley's presumption in favor of implied 20 assignment to the original term. 21 Hogarth, 342 F.3d at 159; Shapiro, Bernstein & Co. v. Jerry 22 Vogel Music Co., 221 F.2d 569, 570 (1955). 41 Id. at 31. See Estate of Burne 1 The two doctrines first converged in Brattleboro 2 Publishing Co. v. Winmill Publishing Corp., 369 F.2d 565, 3 567 (2d Cir. 1966). 4 original term in an independent contractor setting -- like 5 in Yardley -- but we nevertheless began our analysis by 6 discussing traditional work-for-hire doctrine. 7 We relied on Professor Melville Nimmer's copyright treatise, 8 which we described as recognizing "a presumption in the 9 absence of an express contractual reservation to the That case concerned rights in the Id. at 567. 10 contrary, that the copyright shall be in the person at whose 11 instance and expense the work is done." 12 added) (citing NIMMER ON COPYRIGHT 238 (1964)). 13 "see no sound reason why these same principles are not 14 applicable when the parties bear the relationship of 15 employer and independent contractor." Id. (emphasis And we could Id. at 568. This discussion does not appear to have been 16 17 necessary to the result inasmuch as the Court went on to 18 resolve the case on the grounds of Yardley's presumption. 19 Id. 20 of the phrase "instance and expense" to Professor Nimmer. 21 The phrase is apparently not to be found in the cited 22 passage on work-for-hire doctrine. 23 DAVID NIMMER, NIMMER ON COPYRIGHT § 5.03 n.171b (Matthew Bender, Just as curious was the Brattleboro Court's attribution 42 See MELVILLE B. NIMMER & 1 Rev. Ed. 2013). It seems instead to be drawn from a Ninth 2 Circuit opinion in an independent contractor case published 3 the year before. 4 Gertler, 352 F.2d 298, 300 (9th Cir. 1965); see generally 5 Martha Graham, 380 F.3d at 634 n.17. See Lin-Brook Builders Hardware v. But we effectively adopted the union of these two 6 7 approaches in Picture Music, Inc. v. Bourne, Inc., 457 F.2d 8 1213, 1216 (2d Cir. 1972), relying on both work-for-hire and 9 implied assignment cases to conclude that an independent 10 contractor's works were "made for hire," and therefore that 11 the hiring party owned both the original and renewal term. 12 Id. at 1216. 13 Playboy Enterprises, Inc. v. Dumas, 53 F.3d 549, 554 (2d 14 Cir. 1995), we explained that "an independent contractor is 15 an 'employee' and a hiring party an 'employer' for purposes 16 of the [1909 Act] if the work is made at the hiring party's 17 'instance and expense.'"8 And when we next confronted the issue, in 8 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 (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. 43 1 b. General Principles 2 We have stated as a general rule that "[a] work is 3 made at the hiring party's 'instance and expense' when the 4 employer induces the creation of the work and has the right 5 to direct and supervise the manner in which the work is 6 carried out." 7 is, however, not so tidy. 8 our prior cases a set of principles applicable here, they 9 are these: 10 Martha Graham, 380 F.3d at 635. Our case law To the extent we can distill from "Instance" refers to the extent to which the 11 hiring party provided the impetus for, participated in, or 12 had the power to supervise the creation of the work. 13 creative contributions or direction strongly suggest that 14 the work is made at the hiring party's instance. 15 Playboy Enterprises, Inc., 53 F.3d at 556 (evidence that 16 independent contractor "was given specific instructions for 17 his early submissions to Playboy" suggested work for hire); 18 Yardley, 108 F.2d at 30-31 ("[W]here a photographer takes 19 photographs of a person who goes or is sent to him in the 20 usual course, and is paid for the photographs and for his 21 services in taking them, the right of copyright is in the 22 sitter or in the person sending the sitter to be 23 photographed, and not in the photographer . . . ."). 44 Actual See, e.g., 1 The "right to direct and supervise the manner in 2 which the work is carried out," Martha Graham, 380 F.3d at 3 635, moreover, even if not exercised, is in some 4 circumstances enough to satisfy the "instance" requirement. 5 It may be sufficient, for example, where the hiring party 6 makes a particularly strong showing that the work was made 7 at its expense, Scherr v. Universal Match Corp., 417 F.2d 8 497, 501 (2d Cir. 1969) (noting "the overwhelming 9 appropriation of [the hiring party's] funds, time and 10 facilities to the project"), or where prior dealings between 11 the parties on similar assignments, as part of an ongoing 12 arrangement, have rendered fine-grained supervision 13 unnecessary, Playboy Enterprises, Inc., 53 F.3d at 556 14 ("right to control" and exercise of control with respect to 15 "certain characteristics" sufficient in light of earlier 16 "specific assignments"). 17 But "inducement" or "control" alone can be 18 incidental enough not to vest copyright ownership in the 19 hiring party. 20 Publications, Inc., 508 F.2d 909, 914 (2d Cir. 1974), we 21 concluded that it was insufficient that the independent 22 contractor "revise[d] and expand[ed] the Superman material 23 at the request of the [hiring party]," because "Superman had For example, in Siegel v. National Periodical 45 1 been spawned by the [independent contractor] four years 2 before the relationship [with the hiring party] existed." 3 Indeed, even in cases arising under traditional employment 4 law, a work created "as a special job assignment" may not be 5 a "work made for hire." 6 at 570. 7 Shapiro, Bernstein & Co., 221 F.2d The "expense" component refers to the resources 8 the hiring party invests in the creation of the work. We 9 have, at least in some cases, continued the tradition of 10 treating the incidents of a traditional employment 11 relationship as relevant to the analysis. 12 Graham, 380 F.3d at 637-41. 13 that the hiring party's provision of tools, resources, or 14 overhead may be controlling. 15 that the resources of the Center - notably, its rehearsal 16 space and the dancers enrolled at the School - 17 significantly aided Graham in her choreography, thereby 18 arguably satisfying the 'expense' component . . . ."). 19 cf. Playboy Enterprises, Inc., 53 F.3d at 555 (finding that 20 factors relevant to work for hire analysis under the 1976 21 Act, like setting hours or providing tools, have "no bearing 22 on whether the work was made at the hiring party's 23 expense"). See, e.g., Martha We have, moreover, suggested Id. at 638 ("It may well be 46 But In other cases, however, we seem to have focused 1 2 mostly on the nature of payment: payment of a "sum certain" 3 suggests a work-for-hire arrangement; but "where the creator 4 of a work receives royalties as payment, that method of 5 payment generally weighs against finding a work-for-hire 6 relationship." 7 We note, though, that this distinction appears to be a 8 rather inexact method of properly rewarding with ownership 9 the party that bears the risk with respect to the work's Playboy Enterprises, Inc., 53 F.3d at 555. 10 success. 11 Entertainment Distributing, 429 F.3d 869, 881 (9th Cir. 12 2005) (noting that publisher took on "all the financial risk 13 of the book's success"); see also Donaldson Publishing Co. 14 v. Bregman, Vocco & Conn, Inc., 375 F.2d 639, 643 (2d Cir. 15 1967) (finding relevant employee's "freedom to engage in 16 profitable outside activities without sharing the proceeds 17 with [the hiring party]"). 18 See Twentieth Century Fox Film Corp. v. Our case law counsels against rigid application of 19 these principles. 20 satisfied turns on the parties' creative and financial 21 arrangement as revealed by the record in each case. 22 If the hiring party is able to satisfy the 23 Whether the instance and expense test is instance and expense test, it "is presumed to be the author 47 1 of the work," and the independent contractor can overcome 2 the presumption only "by evidence of an agreement to the 3 contrary."9 Playboy Enterprises, Inc., 53 F.3d at 556. 4 2. Application of the Instance and Expense Test 5 in the Present Case. 6 in the record before us -- a challenging endeavor in some 7 respects10 -- we conclude that the works were created at 8 Marvel's instance and expense, and that Barbara and Susan 9 have not adduced evidence of an agreement to the contrary Applying these principles to the facts 9 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. 10 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. 48 1 contemporaneous with the creation of the works. We 2 therefore conclude that the district court was correct to 3 award summary judgment in favor of Marvel. 4 a. Instance. 5 The evidence, construed in favor of the Kirbys, 6 establishes beyond dispute that the works in question were 7 made at Marvel's instance. 8 9 Although Jack Kirby was a freelancer, his working relationship with Marvel between the years of 1958 and 1963 10 was close and continuous. 11 Marvel's best artist, Lee Dep. at 30, Joint App'x at 2450, 12 an assessment reinforced by the admiration of Kirby by his 13 contemporaries, see Deposition of Lawrence Lieber ("L. 14 Lieber Dep."), Jan. 7, 2011, at 104-05, Joint App'x at 1530- 15 31; Deposition of John Romita ("Romita Dep."), Oct. 21, 16 2010, at 75-76, Joint App'x at 360-61. 17 Jack for everything," Lee Dep. at 36, Joint App'x at 2456, 18 and Kirby appears to have been kept busy with assignments 19 from Marvel, id. at 37, Joint App'x at 2457. 20 Stan Lee considered Kirby to be Lee "wanted to use Marvel published the great majority of Kirby's 21 work during these years -- 1958 through 1963. 22 indications in the record that artists did customarily work 23 with more than one publisher during the relevant time 49 There are 1 period, see, e.g., L. Lieber Dep. at 74-75, Joint App'x at 2 1521-22, and a handful of Kirby's works between 1958 and 3 1963 were not published by Marvel, see Excerpt of JACK KIRBY 4 CHECKLIST (Two Morrows Gold ed. 2008), Joint App'x at 1751- 5 62. 6 during this period was published by Marvel and for 7 established Marvel titles. 8 But it is beyond dispute that most of Kirby's work Id. Understood as products of this overarching 9 relationship, Kirby's works during this period were hardly 10 self-directed projects in which he hoped Marvel, as one of 11 several potential publishers, might have an interest; 12 rather, he created the relevant works pursuant to Marvel's 13 assignment or with Marvel specifically in mind. 14 ongoing partnership with Marvel, however unbalanced and 15 under-remunerative to the artist, is therefore what induced 16 Kirby's creation of the works. 17 Kirby's Marvel also played at least some creative role 18 with respect to the works. Kirby undoubtedly enjoyed more 19 creative discretion than most artists did under the "Marvel 20 Method," a fact Lee readily admits. 21 App'x at 2490. 22 that he did not work on "spec" (speculation) -- that is, he 23 worked within the scope of Marvel's assignments and titles. Lee Dep. at 70, Joint But the only evidence on the issue indicates 50 1 Id. at 48, Joint App'x at 2468; Deposition of Neal Kirby, 2 June 30, 2010, at 167-68, Joint App'x at 1592-93. 3 no disputing, moreover, that Marvel had the power to reject 4 Kirby's pages and require him to redo them, or to alter 5 them, a power it exercised from time to time. 6 35, Joint App'x at 1599-1600; Deposition of Susan Kirby, 7 Oct. 25, 2010, at 37, Joint App'x at 1607. 8 evidence that Kirby collaborated with Lee with respect to 9 many of the works. There is Id. at 234- And there is Lee Dep. at 118, Joint App'x at 2538. Marvel's inducement, right to supervise, exercise 10 11 of that right, and creative contribution with respect to 12 Kirby's work during the relevant time period is more than 13 enough to establish that the works were created at Marvel's 14 instance. 15 The Kirbys' attempts to avoid this conclusion are 16 unsuccessful. Their argument is that the "right to 17 supervise" referred to in our case law requires a legal, 18 presumably contractual, right. 19 We find no hint of this requirement in our case law applying 20 the instance and expense test. 21 principled reason why Marvel's active involvement in the 22 creative process, coupled with its power to reject pages and 23 request that they be redone, should not suffice. 51 Appellants' Br. at 42-45. Nor do the Kirbys provide a The Kirbys also point to factual disputes over who 1 2 actually created the characters, plots, and other concepts 3 in Marvel's comic books during the relevant time period, 4 mostly in an attempt to discredit Lee and find fault in the 5 district court's reading of the record. 6 33-35. 7 beside the point. 8 Kirby is beyond question. 9 and acumen are a substantial reason for the hiring party to Appellants' Br. at Questions of who created the characters are mostly That Marvel owes many of its triumphs to But the hired party's ingenuity 10 have enlisted him. It makes little sense to foreclose a 11 finding that work is made for hire because the hired artist 12 indeed put his exceptional gifts to work for the party that 13 contracted for their benefit. 14 b. Expense. 15 Whether the Works were created at Marvel's expense 16 presents a more difficult question. 17 ourselves in agreement with the district court and in favor 18 of Marvel here too. 19 We ultimately find The facts underlying the expense component are not 20 in dispute. Marvel paid Kirby a flat rate per page for 21 those pages it accepted, and no royalties. 22 for Kirby's supplies or provide him with office space. 23 was free to reject Kirby's pages and pay him nothing for 52 It did not pay It 1 them. The record contains anecdotal evidence that Marvel 2 did in fact reject Kirby's work or require him to redo it on 3 occasion, if less often than it did the work of other 4 artists, but with what frequency is unclear. Marvel argues that its payment of a flat rate for 5 6 Kirby's pages is all that matters. It relies on our 7 suggestion in Playboy Enterprises, 53 F.3d at 555, that "the 8 'expense' requirement [is] met where a hiring party simply 9 pays an independent contractor a sum certain for his or her 10 work." 11 when it accepted his pages -- irrespective of whether the 12 pages required edits or additions, were ultimately 13 published, or were part of a comic book that was a 14 commercial success -- it took on the risk of financial loss. 15 Because, Marvel argues, it paid Kirby a sum certain The Kirbys urge us to focus not on the risk Marvel 16 took at the time it purchased the pages, but on the risk 17 Kirby took when he set out to create them. 18 purchased Kirby's pages, they point out, Kirby had 19 undertaken all of the costs of producing the drawings -- 20 time, tools, overhead -- and shouldered the risk that Marvel 21 would reject them, leaving him in the lurch. 22 purely contingent payment, they argue, thus acted more like 23 a royalty than a sum certain. Until Marvel Marvel's Appellants' Br. at 36-42. 53 1 This argument might give us pause if Kirby's 2 relationship with Marvel comprised discrete engagements with 3 materially uncertain prospects for payment, or, indeed, if 4 he undertook to create the works independent of Marvel. 5 there is no evidence of which we are aware to either effect. 6 The evidence suggests instead that Marvel and Kirby had a 7 standing engagement whereby Kirby would produce drawings 8 designed to fit within specific Marvel universes that his 9 previously purchased pages had helped to define. But When Kirby 10 sat down to draw, then, it was not in the hope that Marvel 11 or some other publisher might one day be interested enough 12 in them to buy, but with the expectation, established 13 through their ongoing, mutually beneficial relationship, 14 that Marvel would pay him. 15 in the run of assignments, this expectation proved 16 warranted. 17 And the record makes clear that Kirby's completed pencil drawings, moreover, were 18 generally not free-standing creative works, marketable to 19 any publisher as a finished or nearly finished product. 20 They built on preexisting titles and themes that Marvel had 21 expended resources to establish -- and in which Marvel held 22 rights -- and they required both creative contributions and 23 production work that Marvel supplied. 54 That the works are 1 now valuable is therefore in substantial part a function of 2 Marvel's expenditures over and above the flat rate it paid 3 Kirby for his drawings. 4 In the final analysis, then, the record suggests 5 that both parties took on risks with respect to the works' 6 success - Kirby that he might occasionally not be paid for 7 the labor and materials for certain pages, and Marvel that 8 the pages it did pay for might not result in a successful 9 comic book. But we think that Marvel's payment of a flat 10 rate and its contribution of both creative and production 11 value, in light of the parties' relationship as a whole, is 12 enough to satisfy the expense requirement. 13 c. Agreement to the Contrary. 14 Because Marvel has satisfied the instance and 15 expense test, a presumption arises that the works in 16 question were "works made for hire" under section 304(c). 17 This presumption can be overcome only by evidence of an 18 agreement to the contrary contemporaneous with the creation 19 of the works. 20 The Kirbys' showing in this regard consists mostly 21 of negative or elliptical inferences concerning the parties' 22 agreement at the time. 23 assignment executed by Jack Kirby that purported to transfer For example, they point to a 1975 55 1 interests in certain works to Marvel (but also averred that 2 all of his work was for hire), which they say suggests the 3 parties' understanding that Marvel did not already own the 4 rights. 5 attention evidence that indicates that Marvel paid Kirby 6 during the relevant time periods with checks that contained 7 a legend with assignment, instead of work-for-hire, 8 language. 9 Appellants' Br. at 48. They also call to our Id. at 47. This evidence is not enough to enable the Kirbys 10 to survive the motion for summary judgment. 11 Liberty Lobby, Inc., 477 U.S. 242, 252 (1986) ("The mere 12 existence of a scintilla of evidence in support of the [non- 13 movant's] position will be insufficient; there must be 14 evidence on which the jury could reasonably find for the 15 [non-movant]."); Bickerstaff v. Vassar Coll., 196 F.3d 435, 16 448 (2d Cir. 1999) ("[A]n inference is not a suspicion or a 17 guess." (internal quotation marks omitted)). 18 likely that, if the parties thought about it at all, Kirby's 19 assignments at the time he was paid or later were 20 redundancies insisted upon by Marvel to protect its rights; 21 we decline to infer from Marvel's suspenders that it had 22 agreed to give Kirby its belt. 23 * * * 56 Anderson v. It is all too In sum, the district court made no error, in our 1 2 view, in determining as a matter of law that the works were 3 made at Marvel's instance and expense, and that the parties 4 had no agreement to the contrary. 5 Barbara and Susan, are therefore without termination rights 6 under section 304(c), and the district court properly 7 granted Marvel's motion for summary judgment as to them. The remaining Kirbys, CONCLUSION 8 9 For the foregoing reasons, we vacate the district 10 court's judgment as against Lisa and Neal Kirby and remand 11 with instructions to the district court to dismiss the 12 action against them for want of personal jurisdiction. 13 affirm the judgment in favor of Marvel as against Barbara 14 and Susan Kirby. 15 costs. We Each party shall bear his, her, or its own 57

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