Marvel wins round in Jack Kirby showdown; case to be litigated in New York

By Eriq Gardner

EXCLUSIVE: Marvel Entertainment has scored an important win in its ongoing litigation with the estate of Jack Kirby, the comic book icon whose family is trying to terminate a copyright grant on such iconic characters as Iron Man, X-Men, Spider-Man and the Incredible Hulk.

In January, Marvel sued Kirby's estate in New York district court after receiving 45 notices of copyright termination, looking for a declaration that the creations were "works-made-for-hire" and not eligible for termination. In March, the Kirbys responded by filing their own lawsuit against Marvel in California district court.

Now, thanks to a decision by New York District Judge Colleen McMahon and a court filing yesterday by the Kirby estate, it appears that the billion-dollar battle for the future of the Marvel universe will take place in New York.

Here's why it matters.

Over the past decade, termination has become a hot-button issue in copyright circles. Many authors have attempted to exercise their termination rights under the 1976 Copyright Act to wrestle back control over works that generate millions of dollars.

But there's been a split developing between two major jurisdictions over how to treat the topic. California, in the Ninth Circuit, has given authors favorable treatment in cases involving "Superman" and "Lassie," among others. Meanwhile, New York, in the Second Circuit, has given studios and publishers a slight upper hand in cases involving John Steinbeck books. The East Coast takes a more favorable view about whether late agreements can supersede termination rights.

As such, Marvel's lawsuit in January was an attempt, as they say in the comic book world, to beat the Kirbys to the punch. And it appears to have worked, possibly even catching the Kirbys by surprise.
 

According to Judge McMahon's April 14 decision, the two sides had been engaged last winter in settlement talks, which evidently broke down. After Marvel filed its case in New York court, the Kirbys filed in California and tried to extinguish the New York action by arguing that their termination notices, many of which were mailed to New York, shouldn't necessarily subject the Kirbys to litigating the case in New York.

Judge McMahon disagreed, ruling that "by virtue of having mailed the termination notices to Marvel, all four Kirbys...projected themselves into New York and into the local commerce." She found that the first lawsuit should take priority, meaning Marvel and the Kirbys will duke it out in New York.

Officially, the lawsuit in California hasn't been dismissed yet. But it seems like only a matter of time.

Rather than appeal the decision and tie up the case at the appeals court, the Kirby estate yesterday filed its answer and counterclaims to Marvel's suit, which pretty much mirrors the complaint it filed in California in March.

Now L.A.-based Kirby attorney Marc Toberoff needs to get himself in a New York state of mind for the coming trial.