Caveat Author: Understanding Copyrights, Revisited ….

We previously reviewed a copyright case involving Marvel and a comic book author’s relinquishment of any copyrights in the iconic characters Hulk, Spiderman, the X-Men and others because the works were determined to be “for hire.” Marvel Worldwide v. Kirby.

In an unrelated action, Judge Forrest of the Southern District of New York recently found in favor of Marvel, in Gary Friedrich Enters., LLC v. Marvel Enters., Inc. The court ruled that the plaintiff writer, Gary Friedrich, although he indisputably conceived of the character, “Ghost Rider,” and wrote the initial comic book, had ceded all rights in the character to Marvel.

The decision turned on two defining moments where the court found plaintiff conveyed his rights by contract: 1) at the time of plaintiff’s payment for the initial creation of the character in 1971 and 1972; and 2) in a separate contract signed by the parties in 1978, when plaintiff was a freelancer for Marvel.

Regarding the former, the court found that in the course of conduct between the parties in 1971 and 1972, when the work was created, plaintiff was paid by a check which bore a legend on the back of it indicating that by endorsing the check, plaintiff was assigning all rights to Marvel. The court noted that when an individual endorses a check subject to a condition, he accepts that condition. As to the 1978 contract, the court determined that plaintiff relinquished all rights to the character in consideration for future freelance work. And although the parties extensively briefed “works for hire” as well, the court did not need to consider this theory since the foregoing findings were dispositive.

Of note, plaintiff had testified that his understanding during the freelance period when he created Ghost Rider was that Marvel would own the rights to Ghost Rider for comic books, but that he would personally retain rights to exploit the character in non-comic media. The court found no record evidence whatsoever to support this contention.

As a practical takeaway, authors need to ensure they fully understand and can document what they believe their copyrights are, before contractually binding themselves.

Ralph A. Dengler, a former Director in the Gibbons Intellectual Property Department, and Todd M. Nosher, a former Associate in the Gibbons Intellectual Property Department, co-authored this post.
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