Marvel Characters, Inc. v. Kirby

11-3333-cv
Marvel Characters, Inc. v. Kirby
UNITED STATES COURT OF APPEALS 1
FOR THE SECOND CIRCUIT 2
August Term, 2012 3
(Argued: October 24, 2012 Decided: August 8, 2013) 4
Docket No. 11-3333-cv 5
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MARVEL CHARACTERS, INCORPORATED, MARVEL WORLDWIDE, 7
INCORPORATED, MVL RIGHTS, LLC, 8
Plaintiffs-Counter-Defendants-Appellees, 9
WALT DISNEY COMPANY, MARVEL ENTERTAINMENT, INCORPORATED, 10
Counter-Defendants-Appellees, 11
- v - 12
LISA R. KIRBY, NEAL L. KIRBY, SUSAN N. KIRBY, BARBARA J. 13
KIRBY, 14
Defendants-Counter-Claimants-Appellants. 15
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Before: CABRANES, SACK, and CARNEY, Circuit Judges. 17
Appeal by the defendants-counter-claimants from a 18
judgment of the United States District Court for the 19
Southern District of New York (Colleen McMahon, Judge) 20
granting summary judgment in favor of the plaintiffs- 21
counter-defendants on their claim for declaratory relief and 22
denying the defendants-counter-claimants' cross-motion for 23
summary judgment. Plaintiffs-counter-defendants commenced 24

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this lawsuit in response to notices sent by the defendants- 1
counter-claimants, the children of comic book artist Jack 2
Kirby, purporting to terminate alleged assignments in 3
certain of their father's works pursuant to 4
section 304(c)(2) of the Copyright Act of 1976. We conclude 5
that: (1) the district court incorrectly determined that it 6
had personal jurisdiction over Lisa and Neal Kirby; (2) Lisa 7
and Neal Kirby were not indispensable parties to the action 8
under Rule 19(b) of the Federal Rules of Civil Procedure; 9
and (3) the district court correctly determined that the 10
works at issue were "made for hire" under section 304(c), 11
and that Marvel was therefore entitled to summary judgment. 12
Affirmed in part; vacated in part. 13
R. BRUCE RICH (James W. Quinn, Randi 14
W. Singer, Gregory Silbert, on the 15
brief), Weil, Gotshal & Manges LLP, 16
New York, New York; David Fleischer, 17
Haynes and Boone, LLP, New York, New 18
York for Plaintiffs-Counter- 19
Defendants-Appellees and Counter- 20
Defendants-Appellees. 21
MARC TOBEROFF, Toberoff & 22
Associates, P.C., Malibu, 23
California, for Defendants-Counter- 24
Claimants-Appellants. 25
SACK, Circuit Judge: 26
This appeal requires us to revisit our case law 27
applying the work-for-hire doctrine in the context of 28
section 304 of the Copyright Act of 1976 (or, the "1976 29
2

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Act"), 17 U.S.C. § 304. Defendants-counter-claimants- 1
appellants Lisa, Neal, Susan, and Barbara Kirby 2
(collectively, the "Kirbys") are the children of the late 3
Jack Kirby. Kirby is considered one of the most influential 4
comic book artists of all time. At various times throughout 5
his career, he produced drawings for Marvel Comics, a comic 6
book publisher that has since grown into the multifaceted 7
enterprise reflected in the case caption: Marvel 8
Characters, Inc., Marvel Worldwide, Inc., MVL Rights, LLC, 9
and Marvel Entertainment, Inc. (collectively, "Marvel"). At 10
issue here are the rights to drawings Kirby allegedly 11
created between 1958 and 1963. 12
The Kirbys appeal from the district court's grant 13
of summary judgment to Marvel, which was based on the 14
conclusion that all of the works at issue are "works made 15
for hire" within the meaning of section 304(c), and that the 16
Kirbys therefore have no rights to the works. Two of the 17
Kirbys, Lisa and Neal, also challenge the district court's 18
conclusion that it had personal jurisdiction over them under 19
New York's long-arm statute. They further argue that they 20
are indispensable parties under Rule 19(b) of the Federal 21
Rules of Civil Procedure, such that their absence from this 22
lawsuit (by virtue of the district court's lack of personal 23
3

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jurisdiction over them) requires that the suit be dismissed 1
in its entirety. 2
We conclude that the district court was without 3
personal jurisdiction over Lisa and Neal. We therefore 4
vacate the judgment as against them. We also find, however, 5
that Lisa and Neal are not indispensable parties to this 6
lawsuit, and that the district court was correct in 7
concluding that the works at issue are "works made for hire" 8
under section 304(c). We therefore affirm the judgment as 9
to defendants Barbara and Susan. 10
BACKGROUND 11
In this appeal from the grant of summary judgment, 12
we view the evidence in the light most favorable to the 13
nonmovants, the Kirbys for present purposes, and draw all 14
reasonable inferences in their favor. See, e.g., Singer v. 15
Ferro, 711 F.3d 334, 339 (2d Cir. 2013). 16
Jack Kirby 17
Jack Kirby, born Jacob Kurtzberg in New York 18
City's Lower East Side in 1917, began his career in the 19
comic book business in the late 1930s. In the summer of 20
1940, a young woman named Rosalind moved into the apartment 21
above his with her family. The day they met, Kirby asked 22
Rosalind if she "[w]ould like to see [his] etchings[.]" She 23
thought he wanted "to fool around"; he only wanted to show 24
4

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her his drawings for a new comic book series called Captain 1
America. John Morrow, "Would You Like to See My Etchings?": 2
Rosalind Kirby Interviewed (conducted Dec. 12, 1995), T HE 3
J ACK K IRBY C OLLECTOR , April 1996, at 6. Kirby and "Roz" were 4
married in 1942. After Kirby's military service in World 5
War II, the couple had four children: Susan, Neal, Barbara, 6
and Lisa. 7
Kirby's career in comic book illustration spanned 8
more than half a century. His influence was substantial. 9
An obituary marking his death in 1994 quoted Joe Simon, 10
Kirby's creative partner for fifteen years: "He brought the 11
action drawing to a new level. His style was imitated all 12
over and still is today to a certain extent." Jack Kirby, 13
76; Created Comic Book Superheroes, N.Y. T IMES , Feb. 8, 1994, 14
at D22. 15
Kirby was prolific, too. In 1951 alone, 308 pages 16
of Kirby's work appeared in published comic books. This 17
output was typical for him in the years between 1940 and 18
1978. 19
Marvel Comics and Stan Lee 20
Marvel was founded as Timely Comics in 1939 by one 21
Martin Goodman. In 1940, Marvel purchased the first ten 22
issues of Captain America from Kirby and Joe Simon. But 23
5

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Kirby and Simon would soon move on to a competitor, DC 1
Comics. To replace them, Goodman hired one Stanley Lieber. 2
Lieber would come to be known by his pen name, 3
Stan Lee. Lee is in his own right a towering figure in the 4
comic book world, and a central one in this case. He in 5
effect directed Marvel from the early 1940s until sometime 6
in the 1970s, serving, in his words, as "Editor," "Art 7
Director" and "a staff writer." Deposition of Stan Lee 8
("Lee Dep."), May 13, 2010, at 17, Joint App'x at 2437. He 9
continued to work for Marvel in one capacity or another at 10
least to the day of his deposition testimony in this 11
litigation. 12
But in the 1940s and 50s, Marvel, hobbled by poor 13
business decisions, was hardly a success story. 1 In 1958, 14
Kirby began producing drawings for Marvel once again. And 15
by 1961, its fortunes began to change. That year, Marvel 16
released the first issues of The Fantastic Four. On its 17
heels were releases of the first issues of some of Marvel's 18
1 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, T HE NEW Y ORKER , 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

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most enduring and profitable titles, including The 1
Incredible Hulk, The X-Men, and Spider-Man. 2
Kirby's Relationship with Marvel from 1958-1963 3
This litigation concerns the property rights in 4
262 works published by Marvel between 1958 and 1963. Who 5
owns these rights depends upon the nature of Kirby's 6
arrangement with Marvel during that period. 7
It is undisputed that Kirby was a freelancer, 8
i.e., he was not a formal employee of Marvel, and not paid a 9
fixed wage or salary. He did not receive benefits, and was 10
not reimbursed for expenses or overhead in creating his 11
drawings. He set his own hours and worked from his home. 12
Marvel, usually in the person of Stan Lee, was free to 13
reject Kirby's drawings or ask him to redraft them. When 14
Marvel accepted drawings, it would pay Kirby by check at a 15
per-page rate. 16
Despite the absence of a formal employment 17
agreement, however, the record suggests that Kirby and 18
Marvel were closely affiliated during the relevant time 19
period. Lee assigned Kirby, whom he considered his best 20
artist, a steady stream of work during that period. See Lee 21
Dep. at 36, Joint App'x at 2456 ("I wanted to use Jack for 22
everything, but I couldn't because he was just one guy."); 23
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id. at 37, Joint App'x at 2457 ("So I said: All right, 1
forget it, Jack. I will give [the Spider-Man strip] to 2
somebody else. Jack didn't care. He had so much to do."); 3
id. at 30, Joint App'x 2450 ("He got the highest [rate] 4
because I considered him our best artist."). 5
And Kirby seems to have done most of his work with 6
Marvel projects in mind. Although the Kirby children assert 7
that their father could and did produce and sell his work to 8
other publishers during those years, lists of Kirby's works 9
cited by both parties establish that the vast majority of 10
his published work in that time frame was published by 11
Marvel (or Atlas Comics, as part of Marvel Comics Group). 12
The specifics of Kirby and Marvel's creative 13
relationship during this time period are less clear. 14
According to Lee, at the relevant time, artists 15
worked using what the parties call the "Marvel Method." It 16
was developed as a way to "keep a lot of artists busy" when 17
Lee or another writer could not provide the artist with a 18
completed script. Lee Dep. at 21, Joint App'x at 2441. The 19
first step was for Lee to meet with an artist at a "plotting 20
conference." Id. at 39-40, Joint App'x at 2459-60. Lee 21
would provide the artist with a "brief outline" or 22
"synopsis" of an issue; sometimes he would "just talk . . . 23
8

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with the artist" about ideas. Id. at 35, Joint App'x at 1
2455. The artist would then "draw it any way they wanted 2
to." Id. at 21, Joint App'x at 2441. Then a writer, such 3
as Lee, would "put in all the dialogue and the captions." 4
Id. According to Lee, he "maintain[ed] the ability to edit 5
and make changes or reject what the other writers or artists 6
had created." Id. at 22, Joint App'x at 2442. 7
Lee testified that he worked this way with Kirby 8
"for years": 9
And Jack Kirby and I would, let's say 10
when we did the Fantastic Four, I first 11
wrote a synopsis of what I thought the 12
Fantastic Four should be, who the 13
characters should be, what their 14
personalities were. And I gave it to 15
Jack, and then I told him what I thought 16
the first story should be, how to open 17
it, who the villain should be, and how we 18
would end it. And that was all. Jack 19
went home and drew the whole thing. I 20
put the dialogue in. 21
Id. at 118, Joint App'x at 2538. 22
Other evidence in the record, including some of 23
Lee's own deposition testimony, indicates, however, that 24
Kirby had a freer hand within this framework than did 25
comparable artists. For example, Lee explained that 26
"instead of telling [Kirby] page by page" what to draw, Lee 27
might simply tell him to "[d]evote five pages to this, five 28
pages to that, and three pages to that." Id. at 70, Joint 29
9

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App'x at 2490. Sometimes during plotting sessions, Kirby 1
might "contribute something or he might say, 'Stan, let's 2
also do this or do that.'" Id. at 41, Joint App'x at 2461. 3
It is beyond dispute, moreover, that Kirby made 4
many of the creative contributions, often thinking up and 5
drawing characters on his own, influencing plotting, or 6
pitching fresh ideas. 7
The Termination Notices 8
The dispute before us began in September 2009, 9
when the Kirbys served various Marvel entities with 10
documents entitled "Notice of Termination of Transfer 11
Covering Extended Renewal Term" (the "Termination Notices"). 12
The Termination Notices purport to exercise statutory 13
termination rights under section 304(c)(2) of the Copyright 14
Act of 1976, 17 U.S.C. § 304, with respect to 262 works in 15
all. 16
Each notice states an effective date sometime in 17
the future, presumably between 2014 and 2019. The effective 18
dates are calculated according to section 304(c)'s timing 19
provision, which states in relevant part that 20
"[t]ermination . . . may be effected at any time during a 21
period of five years beginning at the end of fifty-six years 22
10

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from the date copyright was originally secured . . . ." 17 1
U.S.C. § 304(c)(3). 2
Procedural History 3
Marvel filed this lawsuit on January 8, 2010. It 4
sought a declaration that the Kirbys have no termination 5
rights under section 304(c)(2), and that the Termination 6
Notices are therefore ineffective. Marvel's claim was 7
premised on its contention that all of the works were "made 8
for hire" by Jack Kirby for Marvel within the definition of 9
section 304(c). 10
On March 9, 2010, the Kirbys filed a motion to 11
dismiss the complaint. Lisa and Neal Kirby, residents of 12
California, sought dismissal on the ground that they were 13
not subject to personal jurisdiction in New York State. 14
(The other Kirby siblings, Susan and Barbara, are residents 15
of New York and do not contest personal jurisdiction.) The 16
Kirbys also argued that Lisa and Neal are indispensable to 17
the action under Fed. R. Civ. P. 19, and that Marvel's 18
entire suit must therefore be dismissed as against all 19
parties. 20
The district court denied the motion on April 14, 21
2010. Marvel Worldwide, Inc. v. Kirby, No. 10 Civ. 141, 22
2010 WL 1655253, 2010 U.S. Dist. LEXIS 38701 (S.D.N.Y. Apr. 23
11

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14, 2010). It concluded that it had personal jurisdiction 1
over Lisa and Neal under New York's long-arm statute, and 2
that the exercise of this jurisdiction was consistent with 3
constitutional due process. Id. at *3-*9; 2010 U.S. Dist. 4
LEXIS 38701, at *7-*25. It therefore did not reach the 5
question of whether Lisa and Neal were indispensable 6
parties. 7
The Kirbys answered Marvel's complaint and 8
asserted several counterclaims of their own. Marvel moved 9
to dismiss each of them. On November 22, 2010, the district 10
court granted the motion as to all but the Kirbys' 11
counterclaim seeking a declaration that the Termination 12
Notices were valid. Marvel Worldwide, Inc. v. Kirby, 756 13
F. Supp. 2d 461 (S.D.N.Y. 2010). 14
In early 2011, after discovery was complete, the 15
parties cross-moved for summary judgment. Marvel also moved 16
to exclude some of the Kirbys' evidence, most notably the 17
reports of the Kirbys' putative expert witnesses, John 18
Morrow and Mark Evanier. 19
On July 28, 2011, the district court granted 20
Marvel's motions to exclude Morrow and Evanier's testimony, 21
and granted Marvel's motion for summary judgment. Marvel 22
Worldwide, Inc. v. Kirby, 777 F. Supp. 2d 720 (S.D.N.Y. 23
12

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2011). It relied upon case law in this Circuit applying the 1
so-called "instance and expense test" to determine whether a 2
work is "made for hire" under section 304(c). Id. at 738- 3
43. The court concluded that undisputed facts in the record 4
establish as a matter of law that the works at issue were 5
made at Marvel's instance and expense, and were therefore 6
works made for hire. Id. This being so, the Kirbys had no 7
termination rights, and their Termination Notices were 8
ineffective. The district court entered judgment 9
accordingly on August 8, 2011. 10
The Kirbys appeal. 11
DISCUSSION 12
I. Personal Jurisdiction over Lisa and Neal Kirby 13
We turn first to the issue of personal 14
jurisdiction over Lisa and Neal Kirby. Lisa and Neal are 15
California residents. They contend that the district court 16
erred when it determined that New York State's long-arm 17
statute provided a basis for jurisdiction over them in the 18
Southern District of New York. We review a district court's 19
legal conclusions concerning its exercise of personal 20
jurisdiction de novo, and its underlying factual findings 21
for clear error. D.H. Blair & Co., Inc. v. Gottdiener, 462 22
F.3d 95, 103 (2d Cir. 2006). 23
13

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A district court must have a statutory basis for 1
exercising personal jurisdiction. See Grand River 2
Enterprises Six Nations, Ltd. v. Pryor, 425 F.3d 158, 165 3
(2d Cir. 2005). Because this is "a federal question case 4
where a defendant resides outside the forum 5
state, . . . [and the relevant] federal statute does not 6
specifically provide for national service of process," PDK 7
Labs, Inc. v. Friedlander, 103 F.3d 1105, 1108 (2d Cir. 8
1997) (internal quotation marks omitted), we apply "the 9
forum state's personal jurisdiction rules," id. We 10
therefore look to New York State law. 11
We focus our attention on section 302(a)(1) of New 12
York State's long-arm statute, N.Y. C.P.L.R. § 302(a)(1), 13
upon which the district court rested its jurisdiction, and 14
which Marvel invokes here. Section 302(a)(1) provides that 15
"a court may exercise personal jurisdiction over any non- 16
domiciliary . . . who in person or through an agent . . . 17
transacts any business within the state . . . ." Id. We 18
have recognized that for section 302(a)(1) to apply, "'it is 19
essential . . . that there be some act by which the 20
defendant purposefully avails [herself] of the privilege of 21
conducting activities within the forum State, thus invoking 22
the benefits and protections of its laws.'" Beacon 23
14

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Enterprises, Inc. v. Menzies, 715 F.2d 757, 766 (2d Cir. 1
1983) (alteration in original) (quoting George Reiner and 2
Co. v. Schwartz, 41 N.Y.2d 648, 650, 363 N.E.2d 551, 553, 3
394 N.Y.S.2d 844, 846 (1977)). 4
Under the facts of this case, the only acts that 5
could potentially give rise to section 302(a)(1) 6
jurisdiction over Lisa and Neal are the sending of the 7
Termination Notices to Marvel in New York. We conclude that 8
this is an insufficient basis for personal jurisdiction. 9
In Beacon Enterprises, supra, we applied section 10
302(a)(1) in a declaratory judgment suit very similar to 11
this one. The defendant there, Mary Menzies, thought that 12
the plaintiff, Beacon, was infringing her trademarks and 13
copyrights in a line of weight-loss garments designed to 14
emulate the effects of a sauna. Beacon Enterprises, 715 15
F.2d at 760. Menzies sent a cease-and-desist letter to 16
Beacon at its New York City headquarters, threatening 17
litigation. Id. Upon receiving it, Beacon filed a suit in 18
the United States District Court for the Southern District 19
of New York, seeking a judgment declaring that its products 20
did not infringe Menzies' intellectual property rights. Id. 21
We concluded that Menzies' mailing of the cease- 22
and-desist letter into New York was insufficient to give 23
15

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rise to personal jurisdiction over her under section 1
302(a)(1). Id. at 762, 766. We pointed out that "New York 2
courts have consistently refused to sustain section 3
302(a)(1) jurisdiction solely on the basis of defendant's 4
communication from another locale with a party in New York." 5
Id. at 766 (collecting cases). And we thought it "difficult 6
to characterize Menzies' letter alleging infringement in an 7
unspecified locale and threatening litigation in an 8
unspecified forum as an activity invoking the 'benefits and 9
protections' of New York law." Id. 10
In Ehrenfeld v. Bin Mahfouz, 9 N.Y.3d 501, 881 11
N.E.2d 830, 851 N.Y.S.2d 381 (2007), the New York Court of 12
Appeals, responding to a certified question from us, 13
confronted a somewhat analogous fact pattern. There, the 14
defendant had obtained a default judgment against the 15
plaintiff in English courts for the plaintiff's allegedly 16
libelous statements. Id. at 505, 881 N.E.2d at 832, 851 17
N.Y.S.2d at 383. The plaintiff brought suit in federal 18
court in the Southern District of New York seeking a 19
declaration that she could not be held liable for defamation 20
under the circumstances of that case, and that the 21
defendant's default judgment was therefore not enforceable 22
against her in New York. She argued that the "defendant 23
16

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ha[d] transacted business in New York because he 1
purposefully projected himself into the state to further a 2
'foreign litigation scheme'" -- the libel suit in England -- 3
"designed to chill her speech." Id. at 508, 881 N.E.2d at 4
834, 851 N.Y.S.2d at 385. 5
When the case came before us on appeal, we 6
certified to the New York Court of Appeals the question 7
whether section 302(a)(1) conferred jurisdiction in the 8
circumstances presented. Id. at 504, 881 N.E.2d at 831, 851 9
N.Y.S.2d at 382; see Ehrenfeld v. Bin Mahfouz, 489 F.3d 542, 10
551 (2d Cir. 2007). The Court of Appeals answered in the 11
negative, reasoning: 12
Here, none of defendant's relevant New 13
York contacts have invoked the privileges 14
or protections of our State's laws. 15
Quite to the contrary, his communications 16
in this state were intended to further 17
his assertion of rights under the laws of 18
England. As defendant points out –- and 19
plaintiff does not dispute –- his 20
prefiling demand letter and his service 21
of documents were required under English 22
procedural rules governing the 23
prosecution of defamation actions. And 24
in none of his letters to plaintiff did 25
defendant seek to consummate a New York 26
transaction or to invoke our State's 27
laws. 28
Ehrenfeld, 9 N.Y.3d at 509, 881 N.E.2d at 835, 851 N.Y.S.2d 29
at 386. 30
17

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Beacon Enterprises and Ehrenfeld point to the 1
result of the jurisdictional inquiry here. 2
Like the defendants in those cases, Lisa and Neal 3
were not "present" in New York -- whether physically or 4
through some other continuous contact 2 -- in connection with 5
the underlying dispute in this case. This factor is not 6
alone dispositive, of course. Cf. Deutsche Bank Sec., Inc. 7
v. Montana Bd. of Invs., 7 N.Y.3d 65, 71, 850 N.E.2d 1140, 8
1142, 818 N.Y.S.2d 164, 166-67 (2006) ("[P]roof of one 9
transaction in New York is sufficient to invoke 10
jurisdiction, even though the defendant never enters New 11
York." (internal quotation marks omitted)). It does, 12
however, set this action apart from those the New York Court 13
of Appeals has described as "the clearest sort of case[s] in 14
which [New York] courts would have 302 jurisdiction," George 15
Reiner & Co., Inc. v. Schwartz, 41 N.Y.2d 648, 652 (1977), a 16
notion plainly grounded in constitutional principles of due 17
2 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

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process developed by the federal courts in and since 1
International Shoe Co. v. Washington, 326 U.S. 310 (1945). 2
Neither were Lisa and Neal's communications part, 3
or in contemplation, of a course of business dealings with 4
Marvel. This distinguishes them from the sort of 5
communications we found sufficient to confer section 6
302(a)(1) jurisdiction in PDK Labs, a case relied upon by 7
the district court, but distinguished in Ehrenfeld, 9 N.Y.3d 8
at 510, 881 N.E.2d at 836, 851 N.Y.S.2d at 387. In PDK 9
Labs, we concluded that the defendant had "purposefully 10
availed himself of the New York forum by using [his agent] 11
in New York and apparently elsewhere for many years to 12
advance his interest in his unique 'product' through 13
soliciting funds and negotiating royalty agreements." PDK 14
Labs, 103 F.3d at 1111; see also Hoffritz for Cutlery, Inc. 15
v. Amajac, Ltd., 763 F.2d 55, 57 (2d Cir. 1985) (concluding 16
that contract negotiated in part in New York, signed in 17
Georgia and New York, and containing a New York forum 18
selection clause constituted "transaction of business" in 19
New York under section 302(a)(1)). Here, by contrast, the 20
Termination Notices bear no indication that the Kirbys were 21
negotiating or cared to negotiate for or solicit Marvel's 22
business. 23
19

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Finally, and perhaps most importantly, the 1
Termination Notices, like the letter in Beacon Enterprises 2
and the communications in Ehrenfeld, asserted legal rights 3
under a body of law other than New York's. What the Kirby 4
siblings seek to vindicate are purported termination rights 5
under section 304(c) of the federal copyright laws; they 6
seek no privilege or benefit conferred by New York State 7
law. Section 304(c)(4), moreover, states that termination 8
rights "shall be effected by serving an advance notice in 9
writing upon the grantee [of the initial assignment] or the 10
grantee's successor in title." The Termination Notices thus 11
not only seek to vindicate rights under federal law, they 12
also are a compulsory feature of that body of law. 13
We think these factors foreclose the exercise of 14
section 302(a)(1) jurisdiction in the circumstances of this 15
case. We conclude that a communication from out-of-state, 16
required for the exercise of rights conferred under a 17
federal statute, cannot alone constitute a purposeful 18
availment of "the benefits and protections of [New York's] 19
laws," at least where the only connection to New York is 20
that the recipient's business headquarters has a New York 21
address. 22
20

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Marvel's principal argument to the contrary rests 1
on the premise that the Termination Notices are self- 2
executing, legally effective communications. They are 3
therefore different from the cease-and-desist letter at 4
issue in Beacon Enterprises, Marvel contends, because there 5
the notice did no more than advise the recipient of alleged 6
infringement and threaten future litigation. 7
To begin with, we doubt Marvel's is an entirely 8
accurate characterization of the Termination Notices: They 9
are necessary to the exercise of the termination rights, but 10
only the additional act of filing the notices with the 11
Copyright Office consummates the legal act of termination. 12
See 17 U.S.C. § 304(c)(4)(A). In any event, Marvel does not 13
explain why the notices' legal effect under federal 14
copyright law renders the act of mailing them any more a 15
"transaction of business" or a purposeful invocation of the 16
benefits and protections of New York law than would be other 17
communications. 18
Marvel also points to the notices' effects on 19
Marvel in New York, characterizing them as "target[ing] the 20
center of gravity of Marvel's publishing business," and of 21
having been "designed to disrupt and divert license fees 22
from Marvel's New York-based business," leaving Marvel with 23
21

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"no option but to protect its rights and those of its 1
licensees." Appellees' Br. at 47-48 & n.17. These 2
statements may well be essentially true, if perhaps a bit 3
hyperbolic. But the Court in Ehrenfeld rejected virtually 4
identical arguments based on the alleged in-state effects of 5
the English default judgment that the defendant had obtained 6
in the defamation case against the plaintiff, and the in- 7
state action that that judgment would compel. See 8
Ehrenfeld, 9 N.Y.3d at 511, 881 N.E.2d 830, 837, 851 9
N.Y.S.2d 381, 388. Cf. Whitaker v. Am. Telecasting, Inc., 10
261 F.3d 196, 209 (2d Cir. 2001) (finding that "financial 11
consequences in New York due to the fortuitous location of 12
plaintiffs" are insufficient to confer jurisdiction under 13
section 302(a)(3)). We read Ehrenfeld strongly to suggest 14
that we reject Marvel's arguments in this regard here. 15
Finally, we are unpersuaded by Marvel's attempts 16
to connect Lisa and Neal with New York through their 17
relationship with other family members. Appellees' Br. at 18
51; see also Marvel Worldwide, Inc., 2010 WL 1655253, at *4- 19
*5, 2010 U.S. Dist. LEXIS 38701, at *10-*12. The problem 20
with these arguments -- whether they seek to endow Lisa and 21
Neal with their father's jurisdictional status, or to 22
analyze their contacts with New York "collectively" with 23
22

-- 22 of 57 --

their other siblings -- is that they identify no legal 1
mechanism by which Jack's, Barbara's, or Susan's actions 2
become those of Lisa or Neal. Absent a bona fide agency 3
relationship -- the existence of which no one has asserted - 4
- there is no basis for imputing to Lisa and Neal actions by 5
their father half a century ago, or coincident actions by 6
their siblings who now live in New York and for that reason 7
are subject to personal jurisdiction here. Doing so would 8
stretch the text of section 302 beyond the breaking point, 9
see N.Y. C.P.L.R. § 302(a) (referring to transaction of 10
business "in person or through an agent"). 11
We conclude that the district court lacked 12
personal jurisdiction over Lisa and Neal Kirby. We 13
therefore vacate the district court's judgment as against 14
those two Kirbys. 15
II. Compulsory Joinder 16
The Kirbys next argue that the absence of personal 17
jurisdiction over Lisa and Neal requires vacatur of the 18
judgment as against Barbara and Susan too. They rely on 19
Federal Rule of Civil Procedure 19: "Required Joinder of 20
Parties." 21
23

-- 23 of 57 --

A. Federal Rule of Civil Procedure 19 1
Rule 19 recognizes exceptional circumstances in 2
which the plaintiff's choice of parties or forum must give 3
way because of an absent party's interest in the outcome of 4
the action or involvement in the underlying dispute. See 5
generally 7 C HARLES A LAN W RIGHT & A RTHUR R. M ILLER , F EDERAL P RACTICE 6
AND P ROCEDURE § 1602 (3d ed. 2008). The Rule's principal 7
provisions are divided into two subsections. Subsection (a) 8
protects certain parties by deeming them "required"; a party 9
who is "required" according to the factors enumerated in 10
subsection (a) is one whose participation is so desirable or 11
important that the party must be joined so long as she or he 12
is "subject to service of process" and joinder "will not 13
deprive the court of subject-matter jurisdiction." Fed. R. 14
Civ. P. 19(a)(1). 15
Subsection (b) addresses situations in which a 16
party otherwise "required" under subsection (a) cannot be 17
joined for some reason, for example (as in this case), want 18
of personal jurisdiction. In such circumstances, Rule 19(b) 19
requires courts to consider whether, "in equity and good 20
conscience," the party is one without whom the action 21
between the remaining parties cannot proceed -- or, in the 22
traditional terminology, whether the absent party is 23
24

-- 24 of 57 --

"indispensable." Fed. R. Civ. P. 19(b); see also CP 1
Solutions PTE, Ltd. v. General Electric Co., 553 F.3d 156, 2
159 n.2 (2d Cir. 2009) (per curiam). 3
We assume, for present purposes, that Lisa and 4
Neal are "required" parties under Rule 19(a). They are also 5
parties whose joinder is not feasible, inasmuch as we 6
conclude that they are not amenable to personal jurisdiction 7
in the Southern District of New York, and they are unwilling 8
to consent to suit within the jurisdiction. The remainder 9
of this discussion, then, centers on the effects of Rule 10
19(b) on these proceedings. 11
B. Indispensability 12
Because of the "flexible nature of Rule 19(b) 13
analysis," we review a district court's decision under that 14
rule for abuse of discretion. 3 Universal Reinsurance Co., 15
Ltd. v. St. Paul Fire & Marine Ins. Co., 312 F.3d 82, 87 (2d 16
3 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

-- 25 of 57 --

Cir. 2002). Here, however, the district court decided -- 1
mistakenly, as we have explained -- that it had personal 2
jurisdiction over Lisa and Neal. The court therefore had no 3
occasion to apply Rule 19(b). 4
It is ordinarily appropriate for us to vacate the 5
judgment of a district court and remand the cause to it when 6
matters committed to that court's discretion arise for the 7
first time on appeal. See CP Solutions, 553 F.3d at 161. 8
But where a record is fully developed and it discloses that, 9
in our judgment, only one possible resolution of such an 10
issue would fall "within the permissible range of choices" - 11
- in other words, where only one determination by the 12
district court would be within its discretion –- there is no 13
reason to remand. Id. If we did and the court decided to 14
the contrary, we would be duty bound to reverse in any event 15
on the grounds of abuse of discretion. 16
In this case, the parties have fully briefed the 17
Rule 19(b) issue on appeal, and the facts are 18
straightforward and undisputed. Only one result, we think, 19
is permissible. We therefore resolve the issue in the first 20
instance. 4
21
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

-- 26 of 57 --

Rule 19(b) sets forth four considerations that 1
will ordinarily be among those relevant to the analysis of 2
whether a party is "indispensable." We have restated them 3
as: "(1) whether a judgment rendered in a person's absence 4
might prejudice that person or parties to the action, (2) 5
the extent to which any prejudice could be alleviated, (3) 6
whether a judgment in the person's absence would be 7
adequate, and (4) whether the plaintiff would have an 8
adequate remedy if the court dismissed the suit." CP 9
Solutions, 553 F.3d at 159. 10
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

-- 27 of 57 --

Applying these factors requires an understanding 1
of the legal interests at stake, here the Kirbys' 2
termination rights under section 304(c). Central to the 3
current discussion is paragraph (1) of section 304(c), and 4
in particular the following provision: "In the case of a 5
grant executed by one or more of the authors of the work, 6
termination of the grant may be effected, . . . if such 7
author is dead, by the person or persons who . . . own and 8
are entitled to exercise a total of more than one-half of 9
that author's termination interest." 17 U.S.C. § 304(c)(1) 10
(emphasis added); see also id. § 304(c)(6)(C). 11
The parties interpret this to mean that at least 12
three of the four Kirbys -- "more than one-half" -- must 13
"effect" termination of their father's assignment in order 14
for any of them to realize their termination rights. 15
Appellants' Br. at 21; Appellees' Br. at 55. So, all seem 16
to acknowledge, if Barbara and Susan Kirby are disabled by 17
an adverse judgment in this suit from effecting termination, 18
all four Kirbys lose. 19
Under this interpretation of section 304(c)(1), 20
which we assume without deciding is correct, several of the 21
possible Rule 19(b) considerations are irrelevant. Marvel 22
cannot, and does not, complain that a judgment rendered in 23
28

-- 28 of 57 --

Lisa and Neal's absence prejudices it in any way, because it 1
should be satisfied by a judgment against Barbara and Susan 2
that forecloses Lisa and Neal's rights too. Nor can Barbara 3
and Susan claim prejudice. Any judgment here stands to 4
reflect the full and fair adjudication of their rights under 5
section 304(c). And whatever the result, there is no risk 6
that Barbara and Susan will somehow bear in full a legal 7
obligation that is properly shared by their absent siblings. 8
There is thus no prejudice to Marvel, Barbara, or Susan as 9
"existing parties." Fed. R. Civ. P. 19(b)(1). 10
We also do not see how a judgment in this case 11
could be crafted to alleviate any prejudice that may exist 12
to absent parties Lisa and Neal. See Fed. R. Civ. P. 13
19(b)(2). The judgment here will declare the existence vel 14
non of Barbara and Susan's termination rights, and whatever 15
the practical effect of this declaration, it can do no more 16
or less. 17
Finally, although we can hardly be confident that 18
the absent parties in this case will accept a judgment as 19
the last word in this dispute, we think that any judgment 20
would be "adequate," Fed. R. Civ. P. 19(b)(3), in the sense 21
of honoring the "public stake in settling disputes by 22
wholes, whenever possible." CP Solutions, 553 F.3d at 160 23
29

-- 29 of 57 --

(internal quotation marks omitted). If Marvel wins against 1
Barbara and Susan, the parties' interpretation of section 2
304(c)(1) implies that the issue is resolved as to all 3
Kirbys; if Barbara and Susan prevail, principles of issue 4
preclusion would likely bar Marvel from relitigating the 5
issue against Lisa and Neal. See R ESTATEMENT (S ECOND ) OF 6
J UDGMENTS § 29 (1982). 7
This leaves us with two factors to consider. The 8
first is potential prejudice to Lisa and Neal arising from 9
their absence. Fed. R. Civ. P. 19(b)(1). They complain 10
that by operation of section 304(c)(1)'s "more than one- 11
half" requirement, they stand to have their legal rights 12
finally determined in their absence. Appellants' Br. at 21- 13
22. This argument appeals to our "'deep-rooted historic 14
tradition that everyone should have his own day in court.'" 15
See Richards v. Jefferson County, 517 U.S. 793, 798 (1996) 16
(quoting 18 C HARLES A LAN W RIGHT , A RTHUR R. M ILLER , E DWARD H. C OOPER , 17
F EDERAL P RACTICE AND P ROCEDURE § 4449 (3d ed. 2008)). 18
But the law in this context and elsewhere 19
"'recognize[s] an exception to the general rule when, in 20
certain limited circumstances, a person, although not a 21
party, has his interests adequately represented by someone 22
with the same interests who is a party.'" Id. (quoting 23
30

-- 30 of 57 --

Martin v. Wilks, 490 U.S. 755, 762 n.2 (1989)). As we 1
recognized in CP Solutions, the potential prejudice to an 2
absent party under Rule 19(b) is mitigated where a remaining 3
party "could champion [his or her] interest." 553 F.3d at 4
160. And prejudice to absent parties approaches the 5
vanishing point when the remaining parties are represented 6
by the same counsel, and when the absent and remaining 7
parties' interests are aligned in all respects. Id.; 8
Prescription Plan Serv. Corp. v. Franco, 552 F.2d 493, 497 9
(2d Cir. 1977). 10
This lawsuit concerns a single legal issue in 11
which Lisa's and Neal's interests are identical to Barbara's 12
and Susan's. The Kirbys have the same lawyer -- who we are 13
sure was "no less vigorous in [his] advocacy," Prescription 14
Plan Serv., 552 F.2d at 497, because he represented two 15
Kirbys instead of four. And we have been given no reason 16
whatever to think that the proofs advanced by Barbara and 17
Susan are materially different from those Lisa and Neal 18
would have proffered. We therefore see no practical 19
prejudice to Lisa and Neal as a result of adjudicating this 20
case in their absence. 21
The other remaining consideration is whether 22
Marvel "would have an adequate remedy if the action were 23
31

-- 31 of 57 --

dismissed for non-joinder." Fed. R. Civ. P. 19(b)(4). As 1
Marvel points out, because Lisa and Neal are not amenable to 2
personal jurisdiction in New York, and because Barbara and 3
Susan –- New York residents -- are, as far as the record 4
reveals, not amenable to personal jurisdiction in 5
California, the Kirbys might well be able to thwart a 6
declaratory judgment suit brought by Marvel in a forum in 7
either state. Appellees' Br. at 56-57. In light of the 8
nearly non-existent showing of prejudice to any of the 9
parties involved here, we see no reason to permit the Kirbys 10
to withhold consent to any suit in which the forum or 11
litigation posture are not to their liking. See Provident 12
Tradesmens Bank & Trust Co. v. Patterson, 390 U.S. 102, 109 13
(1968) (recognizing a plaintiff's "interest in having a 14
forum"). 15
We conclude, therefore, that the only 16
determination that falls within the range of permissible 17
decisions in the circumstances of this case is that Lisa and 18
Neal are not indispensable parties, and that it was 19
appropriate for the action against Barbara and Susan to have 20
proceeded on its merits. 5
21
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

-- 32 of 57 --

III. Summary Judgment 1
The remaining Kirbys -- Barbara and Susan -- 2
challenge the district court's grant of summary judgment in 3
favor of Marvel. "We review a district court's grant of 4
summary judgment de novo. In reviewing a summary judgment 5
decision, we apply the same standards applied by the 6
district court. Under this standard, summary judgment may 7
be granted only if 'there is no genuine dispute as to any 8
material fact and the movant is entitled to judgment as a 9
matter of law.' [Fed. R. Civ. P. 56(a)]. In determining 10
whether there is a genuine dispute as to a material fact, we 11
must resolve all ambiguities and draw all inferences against 12
the moving party." Garcia v. Hartford Police Dep't, 706 13
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 C HARLES ALAN WRIGHT & A RTHUR R. MILLER ,
F EDERAL 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

-- 33 of 57 --

F.3d 120, 126-27 (2d Cir. 2013) (per curiam) (alteration, 1
some citations, and internal quotation marks omitted). 2
A. Exclusion of Expert Testimony 3
We address first the admissibility of the reports 4
and testimony of Barbara and Susan's putative experts, John 5
Morrow and Mark Evanier, who purported to offer historical 6
perspective concerning the relationship between Marvel and 7
Jack Kirby. The district court ruled that the reports and 8
testimony were inadmissible. Marvel Worldwide, Inc., 777 9
F. Supp. 2d at 729-30. We review this decision for abuse of 10
discretion. Wills v. Amerada Hess Corp., 379 F.3d 32, 41 11
(2d Cir. 2004). 12
Federal Rule of Evidence 702 governs the 13
admissibility of expert testimony. It requires for 14
admissibility, among other things, that "the expert's 15
scientific, technical, or other specialized knowledge will 16
help the trier of fact to understand the evidence or to 17
determine a fact in issue." Fed. R. Evid. 702(a). In other 18
words, "[e]xpert testimony must be helpful to the [trier of 19
fact] in comprehending and deciding issues beyond the 20
understanding of a layperson." DiBella v. Hopkins, 403 F.3d 21
102, 121 (2d Cir. 2005). 22
34

-- 34 of 57 --

We have no doubt that a historian's "specialized 1
knowledge" could potentially aid a trier of fact in some 2
cases. A historian could, for example, help to identify, 3
gauge the reliability of, and interpret evidence that would 4
otherwise elude, mislead, or remain opaque to a layperson. 5
See generally Maxine D. Goodman, Slipping Through the Gate, 6
60 B AYLOR L. R EV . 824, 857 (2008) (commenting that a 7
historian's task is "to choose reliable sources, to read 8
them reliably, and to put them together in ways that provide 9
reliable narratives about the past" (quoting M ARTHA C. H OWELL 10
& W ALTER P REVENIER , F ROM R ELIABLE S OURCES : A N I NTRODUCTION TO H ISTORICAL 11
M ETHODS 2 (2001))). He or she might helpfully synthesize 12
dense or voluminous historical texts. Id. Or such a 13
witness might offer background knowledge or context that 14
illuminates or places in perspective past events. See, 15
e.g., Int'l Soc. for Krishna Consciousness, Inc. v. Barber, 16
650 F.2d 430, 440 (2d Cir. 1981) ("In fact, one religious 17
expert at trial remarked that the American movement is 'one 18
of the most unusual examples of transfer of a cultural 19
tradition across broad national and cultural barriers.' 20
This evidence of historical longevity and theological 21
consistency should not be ignored."). 22
35

-- 35 of 57 --

But Morrow and Evanier do not bring their 1
expertise to bear in any such way. As the district court 2
recognized, their reports are by and large undergirded by 3
hearsay statements, made by freelance artists in both formal 4
and informal settings, concerning Marvel's general practices 5
towards its artists during the relevant time period. See, 6
e.g., Deposition of Mark Evanier, Dec. 6, 2010, at 18-21, 7
Joint App'x at 957-59. Drawing from these statements, they 8
then speculate as to the motivations and intentions of 9
certain parties, see, e.g., Expert Report of John Morrow at 10
9, Joint App'x at 1152 ("I do not believe that Goodman, Lee, 11
Marvel or the freelance artists, like Jack Kirby, 12
. . . thought that the material they created was 'work made 13
for hire' . . . ."), or opine on the credibility of other 14
witnesses' accounts, see, e.g., Expert Report of Mark 15
Evanier at 14, Joint App'x at 1105 ("I have great respect 16
and personal affection for Stan Lee, but I disagree with the 17
accounts he has sometimes given . . . ."). 18
Although the Rules permit experts some leeway with 19
respect to hearsay evidence, Fed. R. Evid. 703, "a party 20
cannot call an expert simply as a conduit for introducing 21
hearsay under the guise that the testifying expert used the 22
hearsay as the basis of his testimony." Malletier v. Dooney 23
36

-- 36 of 57 --

& Bourke, Inc., 525 F. Supp. 2d 558, 666 (S.D.N.Y. 2007). 1
The appropriate way to adduce factual details of specific 2
past events is, where possible, through persons who 3
witnessed those events. And the jobs of judging these 4
witnesses' credibility and drawing inferences from their 5
testimony belong to the factfinder. See Nimely v. City of 6
New York, 414 F.3d 381, 397-98 (2d Cir. 2005). We therefore 7
think the district court clearly did not abuse its 8
discretion in declining to admit this evidence. 9
B. Termination Rights and Work Made for Hire 10
We thus, at last, arrive at the merits of Marvel's 11
summary judgment motion. At issue is section 304(c) of the 12
Copyright Act of 1976, which, insofar as bears on this 13
litigation, provides: 14
Termination of Transfers and Licenses 15
Covering Extended Renewal Term. -- In the 16
case of any copyright subsisting in 17
either its first or renewal term on 18
January 1, 1978, other than a copyright 19
in a work made for hire, the exclusive or 20
nonexclusive grant of a transfer or 21
license of the renewal copyright or any 22
right under it, executed before January 23
1, 1978 . . . is subject to 24
termination . . . . 25
17 U.S.C. § 304(c). 6
26
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

-- 37 of 57 --

1
If the author is no longer alive, section 2
304(c)(2) grants his or her termination rights to specified 3
heirs. See id. § 304(c)(2)(B). The provision "protect[s] 4
the property rights of widows and children in copyrights" by 5
granting them the power to undo earlier transfers and to 6
enjoy the remainder of the copyright term. 7 Larry Spier, 7
Inc. v. Bourne Co., 953 F.2d 774, 778 (2d Cir. 1992). 8
But section 304(c) provides that termination 9
rights under that section do not exist with respect to 10
"work[s] made for hire." 17 U.S.C. § 304(c). Where a work 11
is "made for hire," copyright law deems the employer to be 12
the "author" for purposes of copyright ownership. Copyright 13
Act of 1909 § 62 (formerly codified at 17 U.S.C. § 26) 14
("[T]he word 'author' shall include an employer in the case 15
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

-- 38 of 57 --

of works made for hire."); see also Copyright Act of 1976 1
§ 201(b), 17 U.S.C. § 201(b) ("In the case of a work made 2
for hire, the employer or other person for whom the work was 3
prepared is considered the author for purposes of this 4
title . . . ."). The hired party, although "the 'author' in 5
the colloquial sense," Shapiro, Bernstein & Co. v. Bryan, 6
123 F.2d 697, 699 (2d Cir. 1941), therefore never owned the 7
copyrights to assign. It stands to reason, then, that there 8
are no rights the assignment of which his or her heirs may 9
now terminate. 10
Marvel argues that all of the works at issue in 11
this case fall into the category of "work made for hire." 12
1. The Instance and Expense Test. To determine 13
whether a work is "work made for hire" within the meaning of 14
section 304(c), we apply case law interpreting that term as 15
used in the 1909 Act, the law in effect when the works were 16
created. See Estate of Burne Hogarth v. Edgar Rice 17
Burroughs, Inc., 342 F.3d 149, 156-63 (2d Cir. 2003). This 18
requires us to apply what is known as the "instance and 19
expense test." 20
a. Origins. 21
The origins of the instance and expense test were 22
described at some length by Judge Newman's opinions in 23
39

-- 39 of 57 --

Estate of Burne Hogarth v. Edgar Rice Burroughs, Inc., 1
supra, and Martha Graham School and Dance Foundation, Inc. 2
v. Martha Graham Center of Contemporary Dance, Inc., 380 3
F.3d 624, 633-36 (2d Cir. 2004). 4
The test was developed from two lines of cases. 5
One was our court-made work-for-hire jurisprudence. 6
"Because the 1909 Act did not define 'employer' or 'works 7
made for hire,' the task of shaping these terms fell to the 8
courts." Community for Creative Non-Violence v. Reid, 490 9
U.S. 730, 744 (1989). Using Bleistein v. Donaldson 10
Lithographing Co., 188 U.S. 239, 248 (1903) -- the Supreme 11
Court's first encounter with the work-for-hire phenomenon -- 12
as a guidepost, our early cases focused principally on 13
whether the work at issue was created within the scope of a 14
traditional employment relationship. See, e.g., Tobani v. 15
Carl Fischer, Inc., 98 F.2d 57, 59 (2d Cir. 1938); Shapiro, 16
Bernstein & Co., Inc. v. Bryan, 123 F.2d 697, 698-700 (2d 17
Cir. 1941). Work-for-hire doctrine thus served to identify 18
which party within the traditional employment relationship 19
was the statutory "author," and hence owned the copyright in 20
the work from the time of creation. 21
The second doctrine developed to address what was 22
initially considered a separate issue under the 1909 Act: 23
40

-- 40 of 57 --

rights in commissioned works created by independent 1
contractors. The issue in this situation, at least in the 2
early cases, was not who the statutory author was –- the 3
author was the independent contractor. The issue was 4
whether the hiring party nevertheless owned copyrights by 5
way of the author's implied assignment of those rights; and, 6
if so, whether the assignment applied to only the "original" 7
copyright term, or to both the "original" term and an 8
"expectancy" in the so-called "renewal" term. 9
We addressed the first half of this issue in 10
Yardley v. Houghton Mifflin Co., 108 F.2d 28 (2d Cir. 1939). 11
There we concluded that if a party "is solicited by a patron 12
to execute a commission for pay, the presumption should be 13
indulged that the patron desires to control the publication 14
of copies and that the artist consents that he may, unless 15
by the terms of the contract, express or implicit, the 16
artist has reserved the copyright to himself." Id. at 31. 17
And in later cases, we seemed to answer the second half, 18
limiting Yardley's presumption in favor of implied 19
assignment to the original term. See Estate of Burne 20
Hogarth, 342 F.3d at 159; Shapiro, Bernstein & Co. v. Jerry 21
Vogel Music Co., 221 F.2d 569, 570 (1955). 22
41

-- 41 of 57 --

The two doctrines first converged in Brattleboro 1
Publishing Co. v. Winmill Publishing Corp., 369 F.2d 565, 2
567 (2d Cir. 1966). That case concerned rights in the 3
original term in an independent contractor setting -- like 4
in Yardley -- but we nevertheless began our analysis by 5
discussing traditional work-for-hire doctrine. Id. at 567. 6
We relied on Professor Melville Nimmer's copyright treatise, 7
which we described as recognizing "a presumption in the 8
absence of an express contractual reservation to the 9
contrary, that the copyright shall be in the person at whose 10
instance and expense the work is done." Id. (emphasis 11
added) (citing N IMMER ON C OPYRIGHT 238 (1964)). And we could 12
"see no sound reason why these same principles are not 13
applicable when the parties bear the relationship of 14
employer and independent contractor." Id. at 568. 15
This discussion does not appear to have been 16
necessary to the result inasmuch as the Court went on to 17
resolve the case on the grounds of Yardley's presumption. 18
Id. Just as curious was the Brattleboro Court's attribution 19
of the phrase "instance and expense" to Professor Nimmer. 20
The phrase is apparently not to be found in the cited 21
passage on work-for-hire doctrine. See M ELVILLE B. N IMMER & 22
D AVID N IMMER , N IMMER ON C OPYRIGHT § 5.03 n.171b (Matthew Bender, 23
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Rev. Ed. 2013). It seems instead to be drawn from a Ninth 1
Circuit opinion in an independent contractor case published 2
the year before. See Lin-Brook Builders Hardware v. 3
Gertler, 352 F.2d 298, 300 (9th Cir. 1965); see generally 4
Martha Graham, 380 F.3d at 634 n.17. 5
But we effectively adopted the union of these two 6
approaches in Picture Music, Inc. v. Bourne, Inc., 457 F.2d 7
1213, 1216 (2d Cir. 1972), relying on both work-for-hire and 8
implied assignment cases to conclude that an independent 9
contractor's works were "made for hire," and therefore that 10
the hiring party owned both the original and renewal term. 11
Id. at 1216. And when we next confronted the issue, in 12
Playboy Enterprises, Inc. v. Dumas, 53 F.3d 549, 554 (2d 13
Cir. 1995), we explained that "an independent contractor is 14
an 'employee' and a hiring party an 'employer' for purposes 15
of the [1909 Act] if the work is made at the hiring party's 16
'instance and expense.'" 8
17
8 Our approach has been criticized. See N IMMER 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.
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b. General Principles 1
We have stated as a general rule that "[a] work is 2
made at the hiring party's 'instance and expense' when the 3
employer induces the creation of the work and has the right 4
to direct and supervise the manner in which the work is 5
carried out." Martha Graham, 380 F.3d at 635. Our case law 6
is, however, not so tidy. To the extent we can distill from 7
our prior cases a set of principles applicable here, they 8
are these: 9
"Instance" refers to the extent to which the 10
hiring party provided the impetus for, participated in, or 11
had the power to supervise the creation of the work. Actual 12
creative contributions or direction strongly suggest that 13
the work is made at the hiring party's instance. See, e.g., 14
Playboy Enterprises, Inc., 53 F.3d at 556 (evidence that 15
independent contractor "was given specific instructions for 16
his early submissions to Playboy" suggested work for hire); 17
Yardley, 108 F.2d at 30-31 ("[W]here a photographer takes 18
photographs of a person who goes or is sent to him in the 19
usual course, and is paid for the photographs and for his 20
services in taking them, the right of copyright is in the 21
sitter or in the person sending the sitter to be 22
photographed, and not in the photographer . . . ."). 23
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The "right to direct and supervise the manner in 1
which the work is carried out," Martha Graham, 380 F.3d at 2
635, moreover, even if not exercised, is in some 3
circumstances enough to satisfy the "instance" requirement. 4
It may be sufficient, for example, where the hiring party 5
makes a particularly strong showing that the work was made 6
at its expense, Scherr v. Universal Match Corp., 417 F.2d 7
497, 501 (2d Cir. 1969) (noting "the overwhelming 8
appropriation of [the hiring party's] funds, time and 9
facilities to the project"), or where prior dealings between 10
the parties on similar assignments, as part of an ongoing 11
arrangement, have rendered fine-grained supervision 12
unnecessary, Playboy Enterprises, Inc., 53 F.3d at 556 13
("right to control" and exercise of control with respect to 14
"certain characteristics" sufficient in light of earlier 15
"specific assignments"). 16
But "inducement" or "control" alone can be 17
incidental enough not to vest copyright ownership in the 18
hiring party. For example, in Siegel v. National Periodical 19
Publications, Inc., 508 F.2d 909, 914 (2d Cir. 1974), we 20
concluded that it was insufficient that the independent 21
contractor "revise[d] and expand[ed] the Superman material 22
at the request of the [hiring party]," because "Superman had 23
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been spawned by the [independent contractor] four years 1
before the relationship [with the hiring party] existed." 2
Indeed, even in cases arising under traditional employment 3
law, a work created "as a special job assignment" may not be 4
a "work made for hire." Shapiro, Bernstein & Co., 221 F.2d 5
at 570. 6
The "expense" component refers to the resources 7
the hiring party invests in the creation of the work. We 8
have, at least in some cases, continued the tradition of 9
treating the incidents of a traditional employment 10
relationship as relevant to the analysis. See, e.g., Martha 11
Graham, 380 F.3d at 637-41. We have, moreover, suggested 12
that the hiring party's provision of tools, resources, or 13
overhead may be controlling. Id. at 638 ("It may well be 14
that the resources of the Center –- notably, its rehearsal 15
space and the dancers enrolled at the School –- 16
significantly aided Graham in her choreography, thereby 17
arguably satisfying the 'expense' component . . . ."). But 18
cf. Playboy Enterprises, Inc., 53 F.3d at 555 (finding that 19
factors relevant to work for hire analysis under the 1976 20
Act, like setting hours or providing tools, have "no bearing 21
on whether the work was made at the hiring party's 22
expense"). 23
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In other cases, however, we seem to have focused 1
mostly on the nature of payment: payment of a "sum certain" 2
suggests a work-for-hire arrangement; but "where the creator 3
of a work receives royalties as payment, that method of 4
payment generally weighs against finding a work-for-hire 5
relationship." Playboy Enterprises, Inc., 53 F.3d at 555. 6
We note, though, that this distinction appears to be a 7
rather inexact method of properly rewarding with ownership 8
the party that bears the risk with respect to the work's 9
success. See Twentieth Century Fox Film Corp. v. 10
Entertainment Distributing, 429 F.3d 869, 881 (9th Cir. 11
2005) (noting that publisher took on "all the financial risk 12
of the book's success"); see also Donaldson Publishing Co. 13
v. Bregman, Vocco & Conn, Inc., 375 F.2d 639, 643 (2d Cir. 14
1967) (finding relevant employee's "freedom to engage in 15
profitable outside activities without sharing the proceeds 16
with [the hiring party]"). 17
Our case law counsels against rigid application of 18
these principles. Whether the instance and expense test is 19
satisfied turns on the parties' creative and financial 20
arrangement as revealed by the record in each case. 21
If the hiring party is able to satisfy the 22
instance and expense test, it "is presumed to be the author 23
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of the work," and the independent contractor can overcome 1
the presumption only "by evidence of an agreement to the 2
contrary." 9 Playboy Enterprises, Inc., 53 F.3d at 556. 3
2. Application of the Instance and Expense Test 4
in the Present Case. Applying these principles to the facts 5
in the record before us -- a challenging endeavor in some 6
respects 10 -- we conclude that the works were created at 7
Marvel's instance and expense, and that Barbara and Susan 8
have not adduced evidence of an agreement to the contrary 9
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.
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contemporaneous with the creation of the works. We 1
therefore conclude that the district court was correct to 2
award summary judgment in favor of Marvel. 3
a. Instance. 4
The evidence, construed in favor of the Kirbys, 5
establishes beyond dispute that the works in question were 6
made at Marvel's instance. 7
Although Jack Kirby was a freelancer, his working 8
relationship with Marvel between the years of 1958 and 1963 9
was close and continuous. Stan Lee considered Kirby to be 10
Marvel's best artist, Lee Dep. at 30, Joint App'x at 2450, 11
an assessment reinforced by the admiration of Kirby by his 12
contemporaries, see Deposition of Lawrence Lieber ("L. 13
Lieber Dep."), Jan. 7, 2011, at 104-05, Joint App'x at 1530- 14
31; Deposition of John Romita ("Romita Dep."), Oct. 21, 15
2010, at 75-76, Joint App'x at 360-61. Lee "wanted to use 16
Jack for everything," Lee Dep. at 36, Joint App'x at 2456, 17
and Kirby appears to have been kept busy with assignments 18
from Marvel, id. at 37, Joint App'x at 2457. 19
Marvel published the great majority of Kirby's 20
work during these years -- 1958 through 1963. There are 21
indications in the record that artists did customarily work 22
with more than one publisher during the relevant time 23
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period, see, e.g., L. Lieber Dep. at 74-75, Joint App'x at 1
1521-22, and a handful of Kirby's works between 1958 and 2
1963 were not published by Marvel, see Excerpt of J ACK K IRBY 3
C HECKLIST (Two Morrows Gold ed. 2008), Joint App'x at 1751- 4
62. But it is beyond dispute that most of Kirby's work 5
during this period was published by Marvel and for 6
established Marvel titles. Id. 7
Understood as products of this overarching 8
relationship, Kirby's works during this period were hardly 9
self-directed projects in which he hoped Marvel, as one of 10
several potential publishers, might have an interest; 11
rather, he created the relevant works pursuant to Marvel's 12
assignment or with Marvel specifically in mind. Kirby's 13
ongoing partnership with Marvel, however unbalanced and 14
under-remunerative to the artist, is therefore what induced 15
Kirby's creation of the works. 16
Marvel also played at least some creative role 17
with respect to the works. Kirby undoubtedly enjoyed more 18
creative discretion than most artists did under the "Marvel 19
Method," a fact Lee readily admits. Lee Dep. at 70, Joint 20
App'x at 2490. But the only evidence on the issue indicates 21
that he did not work on "spec" (speculation) -- that is, he 22
worked within the scope of Marvel's assignments and titles. 23
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Id. at 48, Joint App'x at 2468; Deposition of Neal Kirby, 1
June 30, 2010, at 167-68, Joint App'x at 1592-93. There is 2
no disputing, moreover, that Marvel had the power to reject 3
Kirby's pages and require him to redo them, or to alter 4
them, a power it exercised from time to time. Id. at 234- 5
35, Joint App'x at 1599-1600; Deposition of Susan Kirby, 6
Oct. 25, 2010, at 37, Joint App'x at 1607. And there is 7
evidence that Kirby collaborated with Lee with respect to 8
many of the works. Lee Dep. at 118, Joint App'x at 2538. 9
Marvel's inducement, right to supervise, exercise 10
of that right, and creative contribution with respect to 11
Kirby's work during the relevant time period is more than 12
enough to establish that the works were created at Marvel's 13
instance. 14
The Kirbys' attempts to avoid this conclusion are 15
unsuccessful. Their argument is that the "right to 16
supervise" referred to in our case law requires a legal, 17
presumably contractual, right. Appellants' Br. at 42-45. 18
We find no hint of this requirement in our case law applying 19
the instance and expense test. Nor do the Kirbys provide a 20
principled reason why Marvel's active involvement in the 21
creative process, coupled with its power to reject pages and 22
request that they be redone, should not suffice. 23
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The Kirbys also point to factual disputes over who 1
actually created the characters, plots, and other concepts 2
in Marvel's comic books during the relevant time period, 3
mostly in an attempt to discredit Lee and find fault in the 4
district court's reading of the record. Appellants' Br. at 5
33-35. Questions of who created the characters are mostly 6
beside the point. That Marvel owes many of its triumphs to 7
Kirby is beyond question. But the hired party's ingenuity 8
and acumen are a substantial reason for the hiring party to 9
have enlisted him. It makes little sense to foreclose a 10
finding that work is made for hire because the hired artist 11
indeed put his exceptional gifts to work for the party that 12
contracted for their benefit. 13
b. Expense. 14
Whether the Works were created at Marvel's expense 15
presents a more difficult question. We ultimately find 16
ourselves in agreement with the district court and in favor 17
of Marvel here too. 18
The facts underlying the expense component are not 19
in dispute. Marvel paid Kirby a flat rate per page for 20
those pages it accepted, and no royalties. It did not pay 21
for Kirby's supplies or provide him with office space. It 22
was free to reject Kirby's pages and pay him nothing for 23
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them. The record contains anecdotal evidence that Marvel 1
did in fact reject Kirby's work or require him to redo it on 2
occasion, if less often than it did the work of other 3
artists, but with what frequency is unclear. 4
Marvel argues that its payment of a flat rate for 5
Kirby's pages is all that matters. It relies on our 6
suggestion in Playboy Enterprises, 53 F.3d at 555, that "the 7
'expense' requirement [is] met where a hiring party simply 8
pays an independent contractor a sum certain for his or her 9
work." Because, Marvel argues, it paid Kirby a sum certain 10
when it accepted his pages -- irrespective of whether the 11
pages required edits or additions, were ultimately 12
published, or were part of a comic book that was a 13
commercial success -- it took on the risk of financial loss. 14
The Kirbys urge us to focus not on the risk Marvel 15
took at the time it purchased the pages, but on the risk 16
Kirby took when he set out to create them. Until Marvel 17
purchased Kirby's pages, they point out, Kirby had 18
undertaken all of the costs of producing the drawings -- 19
time, tools, overhead -- and shouldered the risk that Marvel 20
would reject them, leaving him in the lurch. Marvel's 21
purely contingent payment, they argue, thus acted more like 22
a royalty than a sum certain. Appellants' Br. at 36-42. 23
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This argument might give us pause if Kirby's 1
relationship with Marvel comprised discrete engagements with 2
materially uncertain prospects for payment, or, indeed, if 3
he undertook to create the works independent of Marvel. But 4
there is no evidence of which we are aware to either effect. 5
The evidence suggests instead that Marvel and Kirby had a 6
standing engagement whereby Kirby would produce drawings 7
designed to fit within specific Marvel universes that his 8
previously purchased pages had helped to define. When Kirby 9
sat down to draw, then, it was not in the hope that Marvel 10
or some other publisher might one day be interested enough 11
in them to buy, but with the expectation, established 12
through their ongoing, mutually beneficial relationship, 13
that Marvel would pay him. And the record makes clear that 14
in the run of assignments, this expectation proved 15
warranted. 16
Kirby's completed pencil drawings, moreover, were 17
generally not free-standing creative works, marketable to 18
any publisher as a finished or nearly finished product. 19
They built on preexisting titles and themes that Marvel had 20
expended resources to establish -- and in which Marvel held 21
rights -- and they required both creative contributions and 22
production work that Marvel supplied. That the works are 23
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now valuable is therefore in substantial part a function of 1
Marvel's expenditures over and above the flat rate it paid 2
Kirby for his drawings. 3
In the final analysis, then, the record suggests 4
that both parties took on risks with respect to the works' 5
success –- Kirby that he might occasionally not be paid for 6
the labor and materials for certain pages, and Marvel that 7
the pages it did pay for might not result in a successful 8
comic book. But we think that Marvel's payment of a flat 9
rate and its contribution of both creative and production 10
value, in light of the parties' relationship as a whole, is 11
enough to satisfy the expense requirement. 12
c. Agreement to the Contrary. 13
Because Marvel has satisfied the instance and 14
expense test, a presumption arises that the works in 15
question were "works made for hire" under section 304(c). 16
This presumption can be overcome only by evidence of an 17
agreement to the contrary contemporaneous with the creation 18
of the works. 19
The Kirbys' showing in this regard consists mostly 20
of negative or elliptical inferences concerning the parties' 21
agreement at the time. For example, they point to a 1975 22
assignment executed by Jack Kirby that purported to transfer 23
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interests in certain works to Marvel (but also averred that 1
all of his work was for hire), which they say suggests the 2
parties' understanding that Marvel did not already own the 3
rights. Appellants' Br. at 48. They also call to our 4
attention evidence that indicates that Marvel paid Kirby 5
during the relevant time periods with checks that contained 6
a legend with assignment, instead of work-for-hire, 7
language. Id. at 47. 8
This evidence is not enough to enable the Kirbys 9
to survive the motion for summary judgment. Anderson v. 10
Liberty Lobby, Inc., 477 U.S. 242, 252 (1986) ("The mere 11
existence of a scintilla of evidence in support of the [non- 12
movant's] position will be insufficient; there must be 13
evidence on which the jury could reasonably find for the 14
[non-movant]."); Bickerstaff v. Vassar Coll., 196 F.3d 435, 15
448 (2d Cir. 1999) ("[A]n inference is not a suspicion or a 16
guess." (internal quotation marks omitted)). It is all too 17
likely that, if the parties thought about it at all, Kirby's 18
assignments at the time he was paid or later were 19
redundancies insisted upon by Marvel to protect its rights; 20
we decline to infer from Marvel's suspenders that it had 21
agreed to give Kirby its belt. 22
* * * 23
56

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In sum, the district court made no error, in our 1
view, in determining as a matter of law that the works were 2
made at Marvel's instance and expense, and that the parties 3
had no agreement to the contrary. The remaining Kirbys, 4
Barbara and Susan, are therefore without termination rights 5
under section 304(c), and the district court properly 6
granted Marvel's motion for summary judgment as to them. 7
CONCLUSION 8
For the foregoing reasons, we vacate the district 9
court's judgment as against Lisa and Neal Kirby and remand 10
with instructions to the district court to dismiss the 11
action against them for want of personal jurisdiction. We 12
affirm the judgment in favor of Marvel as against Barbara 13
and Susan Kirby. Each party shall bear his, her, or its own 14
costs. 15
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