Gary Friedrich Enterprises, LLC v. Marvel Characters, Inc. , 716 F.3d 302 ( 2013 )

12-893-cv
Gary Friedrich Enters., LLC v. Marvel Characters, Inc.
U NITED S TATES C OURT OF A PPEALS
FOR THE S ECOND C IRCUIT
August Term 2012
(Argued: February 20, 2013 Decided: June 11, 2013)
Docket No. 12-893-cv
G ARY F RIEDRICH E NTERPRISES , LLC, and
G ARY F RIEDRICH ,
Plaintiffs-
Counter-Defendants-
Appellants,
v.
M ARVEL C HARACTERS , I NC ., a Delaware corporation,
Defendant-
Counter-Claimant-
Appellee,
M ARVEL E NTERPRISES , I NCORPORATED , a Delaware corporation, M ARVEL
E NTERTAINMENT , I NCORPORATED , a Delaware corporation, M ARVEL
S TUDIOS , I NC ., a Delaware corporation, H ASBRO , I NC ., a Rhode
Island corporation, T AKE T WO I NTERACTIVE S OFTWARE , I NC ., a
Delaware corporation, C OLUMBIA T RI -S TAR M OTION P ICTURE G ROUP , a
joint venture, C OLUMBIA P ICTURES I NDUSTRIES , I NC ., a Delaware
corporation, C RYSTAL S KY P ICTURES , a California corporation,
R ELATIVITY M EDIA L.L.C., a California corporation, M ICHAEL D E
L UCA P RODUCTIONS , I NC ., a California corporation, S ONY P ICTURES
E NTERTAINMENT , I NC ., M ARVEL C HARACTERS B.V., M ARVEL I NTERNATIONAL
C HARACTER H OLDINGS , I NC ., M ARVEL W ORLDWIDE , I NC .,
Defendants-Appellees,
3 D AY B LINDS , AAG LOBAL I NDUSTRIES , ABDO P UBLISHING , A DORABLE
K IDS , A RT .C OM I NC ., A RTIMONDE T RADING I NC ., A SGARD P RESS , AST
S PORTWEAR I NC ., B ECKER A ND M AYER LLC, B ERKSHIRE F ASHIONS , B EST
B RANDS C ONSUMER P RODUCTS I NC ., B IODOME , B OWEN D ESIGNS , B ROWN
S HOES , B USTER B ROWN & C O ., B UY R ITE D ESIGNS , C ALEGO I NTERNATIONAL ,
CDV ISIONARY , C LICKS W ORLDWIDE , C ORBIS C ORPORATION , C OMIC I MAGES ,
C ONOPCO I NC ., d/b/a U NILEVER , d/b/a U NILEVER C ANADA , I NC ., CSS
I NDUSTRIES , DCL M OTION P ICTURES LLC, C OURAGE B RANDS I NC ., DCL
M OTION P ICTURES , LLC, D ESPERATE E NTERPRISES , I NC ., D IAMOND S ELECT
T OYS A ND C OLLECTIBLES LLC, D ORIS K INDERSLY L TD ., E VERY P ICTURES
T ELLS A S TORY , F ANTASY F LIGHT G AMES , F UNLINE M ERCHANDISE , G AMER
G RAPHICS , G ELASKINS , G ENTLE G IANT L TD ., G RAPHICS I MAGING , H ANDS -O N
M OBILE A MERICA I NC ., H EWLETT P ACKARD , H OT T OPIC , I NC ., H UGH ,
L AUTER , L EVIN A ND A SSOCIATES , J AGO C ORP . A SIA L IMITED , JAKKS
P ACIFIC , I NC ., J ASMAN A SIA L TD ., J AY F RANCO & S ONS , I NC ., JPI
A CQUISITION G ROUP , d/b/a D ISGUISE I NC ., J OHNNY B LAZE S PORTSWEAR ,
K2, I NC ., K ELLYTOY (USA), K LUTZ , K OTOBUKIYA , KHQ I NVESTMENT
LLC, KDT USA, KSM S UPERHERO L TD ., KSM E NTERPRISE I NC .,
L ASER M ARCH I NC ., L EAP Y EAR P UBLISHING , LF USA I NC ., L OWRIDER
T ECHNOLOGY G ROUP , I NC ., M AD E NGINE I NC ., M AISTO I NTERNATIONAL
I NC ., M ASTER R EPLICAS I NC ., M ATTEL I NC ., M ATTEL E UROPA , M ATTEL
A SIA P ACIFICA , M ATTEL O VERSEAS , M EREDITH C ORPORATION , MCA I NC .,
MGA E NTERTAINMENT , I NC ., M FORMA A MERICAS I NC ., M FORMA H OLDINGS ,
L TD ., M EDICOM , M IGHTY F INE , I NC ., M OB T OWN , M ONOGRAM
I NTERNATIONAL , MZ B ERGER AND C OMPANY , NECA I NC ., N ATIONAL
E NTERTAINMENT C OLLECTIBLES A SSOCIATION I NC ., NMTC, d/b/a M ATCO
T OOLS , I NC ., NR2B R ESEARCH , I NC ., NTD A PPAREL , N UBYTECH , P HOTO
F ILE , I NC ., P LANETWIDE G AMES , P OP C ULTURE G RAPHICS , I NC ., R AND
I NTERNATIONAL , R AVEN S OFTWARE , RC2 C ORPORATION , R ITTENHOUSE
A RCHIVE , L TD ., S ARA L EE C ORPORATION , d/b/a K LUTZ , S CREENLIFE LLC,
S EGA C ORPORATION , S EGA OF A MERICA , I NC ., S IDESHOW C OLLECTIBLES ,
I NC ., S OTA T OYS LLC, S PENCER R EED A CCESSORIES L TD ., S PIN M ASTER
L TD ., S TREET F LYERS , S TRETCH -O-R AMA , I NC ., S WICHERZ LLC, THQ
I NC ., TM I NTERNATIONAL , d/b/a S AAVI , d/b/a VSI, U PPER D ECK
C OMPANY , T OY I SLAND M ANUFACTURING C OMPANY , L TD ., T OY T HINGS ,
T RENDS I NTERNATIONA L LLC, T RI -C OASTAL D ESIGN , T UPPERWARE B RANDS
C ORPORATION , US N UTRITION I NC ., U LTIMATE L ICENSING G ROUP LLC,
U NION U NDERWEAR C OMPANY , I NC ., d/b/a F RUIT OF THE L OOM , U NIVERSAL
C ITY , U NIVERSAL D ESIGNS , L TD ., V ETEMENT A DORABLE T OO , W AGER L OGIC
L IMITED , W ALGREEN C OMPANY , W EAR M E A PPAREL C ORP ., W HAT K IDS W ANT
I NTERNATIONAL , W HAT K IDS W ANT , I NC ., W ILTON B RANDS , I NC ., W ILTON
I NDUSTRIES I NC ., W IZ K IDS LLC, Y ELLOWMAN LLC, Y ORK W ALLCOVERINGS ,
I NC ., Z AZZLE , I NC ., Z IZZLE H OLDING L IMITED , MVL I NTERNATIONAL
C.V., M ARVEL E NTERTAINMENT , LLC, A CTIVISION B LIZZARD , I NC .,
S CHOLASTIC , I NC ., DCL M OTION P RODUCTS , W ALT D ISNEY C OMPANY ,
Defendants.
Before:
W INTER , C HIN , AND D RONEY , Circuit Judges.
Appeal from a judgment of the United States
District Court for the Southern District of New York
(Forrest, J.), dismissing the amended complaint for
copyright infringement brought by the purported creator of
the comic book character Ghost Rider, and awarding damages
to the publishing company on its counterclaim for copyright
infringement. The district court held as a matter of law
that plaintiff-counter-defendant-appellant Gary Friedrich
assigned any rights he retained in the renewal term of the
1972 Ghost Rider copyrights to the predecessor of
defendant-counter-claimant-appellee Marvel Characters, Inc.
in a 1978 form work-for-hire contract. We conclude that
- 3 -
the contract language is ambiguous and that genuine
disputes of material fact, as to the parties' intent and
other issues, preclude the granting of judgment as a matter
of law.
V ACATED AND R EMANDED .
C HARLES S. K RAMER (Joseph D. Schneider, on
the brief), Riezman Berger, P.C.,
St. Louis, Missouri, and Eric W.
Evans and Dawn K. O'Leary, Evans
Blasi, Granite City, Illinois, for
Plaintiffs-Counter-Defendants-
Appellants.
R. B RUCE R ICH (Randi W. Singer, Gregory
Silbert, and Adam B. Banks, on the
brief), Weil, Gotshal & Manges LLP,
New York, New York, and David
Fleischer, Haynes and Boone, LLP,
New York, New York, for Defendant-
Counter-Claimant-Appellee and
Defendants-Appellees.
- 4 -
C HIN , Circuit Judge:
In 1972, the Marvel Comics Group published a comic
book featuring the "Ghost Rider" -- a motorcycle-riding
superhero with supernatural powers and a flaming skull for
a head. The issue -- which sold for twenty cents -- told
the story of Johnny Blaze, a motorcycle stunt rider who
promised his soul to the devil to save his adoptive father
from cancer.
- 5 -
In this case, plaintiff-counter-defendant-
appellant Gary Friedrich contends that he conceived the
Ghost Rider, the related characters, and the origin story,
and that he owns the renewal term copyrights in those
works. While acknowledging that Friedrich contributed his
ideas, defendant-counter-claimant-appellee Marvel
Characters, Inc. ("Marvel") contends that the Ghost Rider
characters and story were created through a collaborative
process with Marvel personnel and resources, and that
Marvel owns the renewal rights in question.
The district court granted summary judgment in
favor of Marvel on the ownership issue, holding that
Friedrich had assigned any rights he had in the renewal
term copyrights to Marvel when he executed a form work -for-
hire agreement in 1978, six years after the initial
publication of the issue in question. Friedrich and his
production company, Gary Friedrich Enterprises, LLC,
appeal. We vacate and remand for trial.
- 6 -
STATEMENT OF THE CASE
A. The Facts
The facts are heavily disputed. They are
presented here in the light most favorable to Friedrich,
with all reasonable inferences drawn in his favor . See
Garcia v. Hartford Police Dep't, 706 F.3d 120, 126-27 (2d
Cir. 2013) (per curiam). To the extent Friedrich argues
that he is entitled to summary judgment on the issue of
authorship, we construe the facts in Marvel's favor and set
forth that alternative version below.
1. Friedrich Creates the Ghost Rider
A fan of comic books and motorcycle gang movies,
Friedrich began to imagine, in the 1950s, a motorcycle-
riding superhero who wore black leather. The hero
developed into a motorcycle stuntman when Evel Knievel rose
in popularity in the late-1960's. Then in 1968, after
seeing his bony-faced and red-headed friend on a
motorcycle, Friedrich was inspired to give his hero a
flaming skull for a head. This epiphany caused Friedrich
to flesh out an origin story in which his hero became a
demon after making a deal with the devil.
- 7 -
Friedrich was a part-time freelance comic book
writer, scripting issues of existing comic book serials
when solicited by Marvel 1 and other publishers. In 1971,
Friedrich decided to try to publish a comic book starring
his flaming-skulled hero after the Comics Code Authority
relaxed its standards to permit comic books to contain more
adult-themed and supernatural content. After refining the
origin story and the characters' appearances, Friedrich
created a written synopsis on his own initiative and at his
own expense. The synopsis detailed Ghost Rider's origin
story and the main characters' appearances.
2. Marvel Agrees to Publish the Comic
Friedrich presented his written synopsis to his
friend Roy Thomas, an assistant editor at Magazine
Management Co., Inc. ("Magazine Mgmt."), the then-publisher
of Marvel comics. 2 Thomas liked the idea, so he gave the
1
Ownership of the comic book brand "Marvel Comics
Group" has changed hands multiple times over the years. For
simplicity, the term "Marvel" will be used to refer generally to
the publisher of the comics, and the specific corporate owner
will be identified only when relevant.
2
In 1968, Martin and Jean Goodman sold the Marvel
Comics Group brand and their other publishing assets to Perfect
Film & Chemical Corporation ("Perfect Film"). Perfect Film then
- 8 -
synopsis to Marvel chief Stan Lee and arranged for Lee to
meet with Friedrich. Lee agreed to publish the Ghost Rider
comic book in the series Marvel Spotlight, a vehicle used
to audition new superheroes. In return, Friedrich agreed
to assign his rights in the Ghost Rider characte rs to
Marvel. Friedrich and Lee never discussed renewal rights
and did not execute a written agreement.
At Marvel's suggestion, Friedrich gave the
synopsis to freelance artist Mike Ploog, who illustrated
the comic book according to Friedrich's instructions.
Friedrich supervised the entire production of the comic
book, advising Ploog on how the characters should look and
what to draw.
3. The Comic Is Published in 1972
The first Ghost Rider comic was published in
Marvel Spotlight, Vol. 1, No. 5 ("Spotlight 5") in April
1972, bearing a copyright notice in favor of "Magazine
Management Co., Inc. Marvel Comics Group." The first page
assigned the Marvel brand to its wholly-owned subsidiary
Magazine Mgmt.
- 9 -
of the comic, reproduced above, contained a credit box that
included the following:
CONCEIVED & WRITTEN
GARY FRIEDRICH
At the same time Spotlight 5 was published, Marvel
advertised the new superhero in a contemporaneous issue of
The Amazing Spider-Man. In a feature called "Marvel
Bullpen Bulletins," Marvel encouraged fans to read
Spotlight 5 and acknowledged that Friedrich had "dreamed
the whole thing up."
Ghost Rider quickly became one of Marvel's most
popular comic book heroes. After Spotlight 5, Ghost Rider
stories appeared in the next six issues of Marvel
Spotlight. By May 1973, Marvel launched a separate Ghost
Rider comic book series. Friedrich wrote the stories for
several of these later comics on a freelance basis and does
not dispute that these subsequent stories were "works made
for hire." 3 Marvel promptly filed registrations for several
of these subsequent Ghost Rider comic books, even though it
3
Friedrich only alleges authorship of the main
characters and origin story contained in Spotlight 5.
- 10 -
had not filed a registration for Spotlight 5. 4 In October
1974, Marvel reprinted the original Spotlight 5 as Ghost
Rider Vol. 1, No. 10, leaving Friedrich's "Conceived &
Written" credit intact.
The Ghost Rider comic book series ran, in
successive volumes, from 1973 to 1983, 1990 to 1998, and
2001 to 2002. In total, Marvel published over 300 comic
book stories starring Ghost Rider and reprinted Spotlight 5
five times, including as late as 2005. Marvel never
removed Friedrich's "Conceived & Written" credit from any
of the Spotlight 5 reprints.
4. The Agreement
Friedrich continued to write Ghost Rider and other
superhero stories for Marvel on a freelance basis until
approximately 1978. In 1976, Congress repealed the 1909
Copyright Act and replaced it with the current Copyright
Act. See Pub. L. No. 94-553, 90 Stat. 2541 (1976)
(codified at 17 U.S.C. § 101 et seq.). Under the 1976 Act,
which took effect on January 1, 1978, id. § 102 (codified
4
Marvel would not register Spotlight 5 until 2010,
after this action was filed.
- 11 -
at note preceding 17 U.S.C.), a work created outside the
scope of employment was considered a "work-for-hire" only
if the parties had executed an express written agreement to
that effect, see 17 U.S.C. § 101 (defining "work made for
hire"). 5 Thus, in 1978, Cadence Industries, Inc.
("Cadence"), the then-publisher of Marvel comics, 6 required
Friedrich and all of its other freelance artists to sign a
form work-for-hire agreement.
The full agreement was a page long and read in
pertinent part:
MARVEL is in the business of
publishing comic and other magazines
known as the Marvel Comics Group,
and SUPPLIER wishes to have MARVEL
order or commission either written
material or art work as a
contribution to the collective work
known as the Marvel Comics Group.
MARVEL has informed SUPPLIER that
MARVEL only orders or commissions
such written material or art work on
an employee-for-hire basis.
5
The statute defines "work made for hire" as, inter
alia, "a work specially ordered or commissioned for use as a
contribution to a collective work . . . if the parties expressly
agree in a written instrument signed by them that the work shall
be considered a work made for hire." 17 U.S.C. § 101.
6
Magazine Mgmt. assigned the Marvel Comics Group brand
to Cadence, Perfect Film's successor, in 1972.
- 12 -
THEREFORE, the parties agree as
follows:
In consideration of MARVEL's
commissioning and ordering from
SUPPLIER written material or art
work and paying therefor, SUPPLIER
acknowledges, agrees and confirms
that any and all work, writing, art
work material or services (the
"Work") which have been or are in
the future created, prepared or
performed by SUPPLIER for the Marvel
Comics Group have been and will be
specially ordered or commissioned
for use as a contribution to a
collective work and that as such
Work was and is expressly agreed to
be considered a work made for hire.
SUPPLIER expressly grants to
MARVEL forever all rights of any
kind and nature in and to the Work,
the right to use SUPPLIER's name in
connection therewith and agrees that
MARVEL is the sole and exclusive
copyright proprietor thereof having
all rights of ownership therein.
SUPPLIER agrees not to contest
MARVEL's exclusive, complete and
unrestricted ownership in and to the
Work.
July 31, 1978 Agreement between Friedrich & Marvel (the
"Agreement"). Cadence told Friedrich that the Agreement
only covered future work and that he had to sign it without
alteration if he wanted to obtain further freelance work
- 13 -
from them. Thus, Friedrich filled in his name and address
by hand as the "Supplier" and signed the Agreement on July
31, 1978. Friedrich was not paid anything for signing the
Agreement. After he signed, neither Cadence nor any
subsequent Marvel publisher solicited any more freelance
work from him.
5. The Renewal Term Beginning in 2001
The initial copyright term for Ghost Rider expired
at the end of 2000, twenty-eight years after Spotlight 5's
original publication in 1972. See 17 U.S.C.
§ 304(a)(1)(A). Beginning in 2001, the renewal copyright
would have vested in Friedrich, as the original author, by
operation of law. See id. § 304(a)(1)(C)(i), (2)(B)(ii).
Nonetheless, Marvel exploited the Ghost Rider character
after 2000 by: publishing reprints of Spotlight 5 in 2001,
2004, and 2005; publishing six issues of a new Ghost Rider
comic series that ran from August 2001 to January 2002;
offering a single Ghost Rider toy for sale in catalogs in
2003 and 2004; having Ghost Rider make cameo appearances in
other characters' video games released in 2000 and 2006;
filming the Ghost Rider movie in 2005 and releasing it in
- 14 -
2007 (pursuant to a licensing agreement entered into in
2000); and releasing a Ghost Rider video game, based on the
movie, in 2007. While most of these items did not credit
Friedrich, all the Spotlight 5 reprints published during
the renewal term contained Friedrich's "Conceived &
Written" credit.
Friedrich was not aware of Marvel's use of the
Ghost Rider character during the renewal period until
around 2004, when he learned Marvel was preparing to make
the Ghost Rider movie. On April 6, 2004, Friedrich's
attorney wrote a letter to Sony Pictures, the company
producing the movie, asserting Friedrich's rights to the
Ghost Rider copyright. In a response dated April 14, 2004,
Marvel advised Friedrich that Ghost Rider was a work-for-
hire. Despite taking this position, however, Marvel paid
Friedrich with checks labeled "roy," meaning "royalties,"
when it reprinted Spotlight 5 in 2005.
Friedrich first learned about the concept of
renewal rights in 2005 or 2006. He filed for, and
received, a Renewal Copyright Registration in Spotlight 5
- 15 -
and Ghost Rider in February 2007. He then assigned the
rights to his company, Gary Friedrich Enterprises, LLC.
B. Proceedings Below
On April 4, 2007, plaintiffs filed a complaint in
the Southern District of Illinois against the current
owners of Marvel and their licensees, alleging copyright
infringement and various state law claims. The action was
transferred to the Southern District of New York. The
district court (Jones, J.) dismissed plaintiffs' state law
claims because they were either preempted by the Copyright
Act or failed to state a claim for relief. See generally
Gary Friedrich Enters., LLC v. Marvel Enters., Inc., 713 F.
Supp. 2d 215 (S.D.N.Y. 2010). The district court (Forrest,
J.) thereafter denied Friedrich's motion for
reconsideration, which sought to reinstate his state law
accounting claim under federal law. 7
On May 17, 2010, Marvel and the related defendants
filed their answer, asserting that Ghost Rider was a "work-
7
Friedrich argues on appeal that the district court
erred in dismissing his state law claims and denying the motion
for reconsideration. After an independent review of the record,
we affirm the dismissal of the state law claims for
substantially the reasons set out in the district court's
orders.
- 16 -
for-hire." On December 15, 2010, they amended their answer
to include a compulsory counterclaim for copyright
infringement. Plaintiffs also amended their complaint in
March 2011 to add additional licensee defendants.
After discovery on the ownership issues, both
sides moved for summary judgment. Plaintiffs argued that
Friedrich was the sole author, or at least a joint author,
as a matter of law. Defendants argued primarily that
Friedrich's ownership claim was barred by the statute of
limitations, but alternatively that he had assigned his
renewal rights to Marvel in the Agreement. The district
court concluded that genuine disputes of material fact
surrounded the authorship of the work, but it nonetheless
granted Marvel's motion and denied Friedrich's. See
generally Gary Friedrich Enters., LLC v. Marvel Enters.,
Inc., 837 F. Supp. 2d 337 (S.D.N.Y. 2011). The court
reasoned that even if Friedrich were the sole author, by
executing the Agreement, he had conveyed all his remaining
rights in the work to Marvel "forever." See id. at 344-45. 8
8
The district court also noted that Friedrich was paid
for his work on Spotlight 5 with checks bearing legends
- 17 -
The district court reasoned that the term "forever" clearly
indicated the parties' intent to convey the renewal term to
Marvel. See id. at 344-46 (citing P.C. Films Corp. v.
MGM/UA Home Video Inc., 138 F.3d 453, 457 (2d Cir. 1998)).
After the court issued its order, the parties
stipulated that Friedrich realized $17,000 in profits from
exploiting the Ghost Rider copyright. Defendants also
agreed to voluntarily dismiss their trademark counterclaims
without prejudice, pending this appeal. The district court
then entered final judgment dismissing all outstanding
claims, awarding damages to Marvel for Friedrich's
copyright infringement, and enjoining Friedrich from using
the Ghost Rider copyright. This appeal followed.
DISCUSSION
On appeal, Friedrich argues that the district
court erred in granting Marvel's motion for summary
judgment because the Agreement did not convey the renewal
assigning, in general terms, all of his rights to Marvel. See
Gary Friedrich Enters., LLC v. Marvel Enters., Inc., 837 F.
Supp. 2d 337, 343-44 (S.D.N.Y. 2011). But the record does not
reveal the exact language of these check legends and Marvel
concedes that only the Agreement contains language that could
have even arguably conveyed Friedrich's renewal rights.
- 18 -
rights in the 1972 Ghost Rider copyright. While Marvel
argues that we may affirm on that basis, it primarily
argues that we should affirm on the alternative ground that
Friedrich's ownership claim is barred by the Copyright
Act's three-year statute of limitations. Finally,
Friedrich asks us to reverse the district court's denial of
his cross-motion for summary judgment on the issue of
authorship, leaving only the issue of damages on remand .
We address each of the three arguments in turn.
A. Renewal Rights
We review de novo both the grant of summary
judgment and the district court's interpretation of the
Agreement. See Ment Bros. Iron Works Co. v. Interstate
Fire & Cas. Co., 702 F.3d 118, 120-21 (2d Cir. 2012);
Mullins v. City of New York, 653 F.3d 104, 113 (2d Cir.
2011). In reviewing a grant of summary judgment, we must
construe the evidence in the light most favorable to the
non-moving party and draw all reasonable inferences in its
favor. See Mullins, 653 F.3d at 113.
- 19 -
1. Applicable Law
For artistic works still in their initial term of
copyright protection on January 1, 1978, the Copyright Act
establishes two terms of protection: an initial term of
twenty-eight years from "the date [the copyright] was
originally secured" and a renewal term of sixty-seven
years. 17 U.S.C. § 304(a)(1)(A), (a)(1)(C). The renewal
term of a copyright is "not merely an extension of the
original copyright term but a 'new estate . . . clear of
all rights, interests or licenses granted under the
original copyright.'" P.C. Films Corp., 138 F.3d at 456-57(quoting G. Ricordi & Co. v. Paramount Pictures, Inc. , 189
F.2d 469, 471 (2d Cir. 1951)). Its purpose is "to 'provide
authors a second opportunity to obtain remuneration for
their works'" and "'to renegotiate the terms of the grant
once the value of the work has been tested.'" Id. at 457
(alteration omitted) (quoting Stewart v. Abend, 495 U.S.
207, 217, 218-19 (1990)).
An author may assign his renewal rights during the
copyright's initial term, but "there is a strong
presumption against the conveyance of renewal rights."
- 20 -
Corcovado Music Corp. v. Hollis Music, Inc., 981 F.2d 679,
684 (2d Cir. 1993). This presumption may be rebutted by an
express assignment of "renewals of copyright" or
"extensions of copyright," or by "general words of
assignment," such as "forever," "hereafter," or
"perpetual," if the parties' clear intent was to convey
renewal rights. P.C. Films Corp., 138 F.3d at 457 (quoting
Corcovado Music Corp., 981 F.2d at 684-85; Siegel v. Nat'l
Periodical Publ'ns., Inc., 508 F.2d 909, 913 (2d Cir.
1974)) (internal quotation marks omitted). In Siegel, we
explained that words like "forever" may be indicative of an
intent to convey renewal rights, but this "intent is to be
determined by the trier of the facts." Siegel, 508 F.2d at
913. 9 In P.C. Films Corp., we affirmed the district court's
conclusion, reached after a bench trial, that the term
"perpetual" indicated a clear intent to convey renewal
rights. 138 F.3d at 454. There, the parties had agreed to
9
This is not to suggest that summary judgment may never
be granted when a contract contains only general words of
assignment. Rather, it means that general phrases like
"forever" are merely some evidence of the parties' intent to
convey renewal rights. As always, summary judgment should be
granted if the record as a whole demonstrates there is no
genuine dispute regarding the parties' intent. See Fed. R. Civ.
P. 56(a).
- 21 -
use the term "perpetual" after "months of negotiations
conducted by sophisticated and expert parties, each
represented by counsel." Id. at 455. Furthermore, there
was undisputed testimony that the assignee would not have
entered the agreement "for less than a perpetual term and
that, in his understanding, the term 'perpetual' . . . was
not coterminous with the initial copyright term." Id. at
457.
We construe the Agreement according to state law
principles of contract interpretation, even though the
subject matter of the Agreement concerns issues of federal
copyright law. See Kennedy v. Nat'l Juvenile Detention
Ass'n, 187 F.3d 690, 694 (7th Cir. 1999); P.C. Films Corp.
v. Turner Entm't Co., 954 F. Supp. 711, 714 n.6 (S.D.N.Y.
1997), aff'd sub nom. P.C. Films Corp. v. MGM/UA Home Video
Inc., 138 F.3d 453 (2d Cir. 1998); 1 Melville B. Nimmer &
David Nimmer, Nimmer on Copyright § 1.01[B][3][a] (rev. ed.
Supp. 2013) ("[T]he vast bulk of copyright contractual
issues must be resolved under state law, given the silence
of the Copyright Act in addressing such issues as . . . how
to construe ambiguous contractual language . . . .").
- 22 -
Because the Agreement was made entirely in New York and
performance was complete upon execution, New York law
governs its construction. See Brink's Ltd. v. S. African
Airways, 93 F.3d 1022, 1030-31 (2d Cir. 1996); P. S. & E.,
Inc. v. Selastomer Detroit, Inc., 470 F.2d 125, 127 (7th
Cir. 1972). 10
"When interpreting a contract [under New York
law], the 'intention of the parties should control, and the
best evidence of intent is the contract itself.'" Cont'l
Ins. Co. v. Atl. Cas. Ins. Co., 603 F.3d 169, 180 (2d Cir.
2010) (alterations omitted) (quoting Hatalmud v. Spellings,
505 F.3d 139, 146 (2d Cir. 2007)). At the outset, the
court must determine whether the language the parties have
chosen is ambiguous, see Lockheed Martin Corp. v. Retail
Holdings, N.V., 639 F.3d 63, 69 (2d Cir. 2011), after
giving all "words and phrases . . . their plain meaning,"
10
While this case was originally filed in the Southern
District of Illinois, we conclude that New York law would govern
the contract whether we applied Illinois's or New York's choice-
of-law rules. See Van Dusen v. Barrack, 376 U.S. 612, 639
(1964) (explaining that federal court sitting in diversity must
apply choice-of-law rules of state where action was originally
filed, even after a transfer for improper venue); see also
Ferens v. John Deere Co., 494 U.S. 516, 531 (1990) (holding that
"transferor law should apply regardless of who makes the
§ 1404(a) motion").
- 23 -
Olin Corp. v. Am. Home Assurance Co., 704 F.3d 89, 99 (2d
Cir. 2012) (quotation omitted). Furthermore, we do not
consider particular phrases in isolation, but rather
interpret them in light of the parties' intent as
manifested by the contract as a whole. See JA Apparel
Corp. v. Abboud, 568 F.3d 390, 397 (2d Cir. 2009). The
language is unambiguous only if it "has 'a definite and
precise meaning, unattended by danger of misconception in
the purport of the contract itself, and concerning which
there is no reasonable basis for a difference of opinion.'"
John Hancock Mut. Life Ins. Co. v. Amerford Int'l Corp. , 22
F.3d 458, 461 (2d Cir. 1994) (alteration omitted) (quoting
Hunt Ltd. v. Lifschultz Fast Freight, Inc., 889 F.2d 1274,
1277 (2d Cir. 1989)). But if the terms "suggest more than
one meaning when viewed objectively by a reasonably
intelligent person who has examined the context of the
entire integrated agreement," then the agreement is
ambiguous and extrinsic evidence may be considered to
determine the parties' intent. Law Debenture Trust Co. of
N.Y. v. Maverick Tube Corp., 595 F.3d 458, 466 (2d Cir.
2010) (quotation omitted).
- 24 -
2. Application
Applying the "strong presumption against the
conveyance of renewal rights," Corcovado Music Corp., 981
F.2d at 684, we conclude that the district court erred in
holding as a matter of law that Friedrich had assigned his
renewal rights to Marvel by signing the Agreement. We
reach this conclusion for the following reasons.
a. The Plain Language
The Agreement is ambiguous on its face. First,
the critical sentence defining the "Work" covered by the
Agreement is ungrammatical and awkwardly phrased:
In consideration of MARVEL's
commissioning and ordering from
SUPPLIER written material or art
work and paying therefor, SUPPLIER
acknowledges, agrees and confirms
that any and all work, writing, art
work material or services (the
"Work") which have been or are in
the future created, prepared or
performed by SUPPLIER for the Marvel
Comics Group have been and will be
specially ordered or commissioned
for use as a contribution to a
collective work and that as such
Work was and is expressly agreed to
be considered a work made for hire.
- 25 -
This opaque cluster of clauses is simply not clear and
parsing through its dense provisions does little to
elucidate its meaning.
Second, the language is ambiguous as to whether it
covered a work published six years earlier. The
introductory recitals indicate that the "SUPPLIER wishes to
have MARVEL order or commission" work and that "MARVEL only
orders or commissions such . . . work on an employee-for-
hire basis." There is no explicit acknowledgement that the
generic "SUPPLIER" ever performed work for Marvel
previously, and certainly no specific mention of the Ghost
Rider works. Marvel attempts to extract the phrase "all
work . . . which have [sic] been . . . created, prepared or
performed by SUPPLIER for the Marvel Comics Group" from the
dense sentence quoted above, but the entire agreement
suggests that this was a forward-looking contract only
intended to cover work submitted after the Agreement was
signed. 11 Read in this context, work that "have [sic] been
. . . created" -- to the extent the phrase has a
11
Indeed, after reading the Agreement for the first time
during a deposition, a Marvel representative concluded that the
form contract appeared to only cover work created after the 1976
Act.
- 26 -
discernible meaning -- may refer to work that was in-
progress when the Agreement was executed, even though
Marvel may have commissioned that work, and the freelance
artist may have begun working on it, before the Agreement
was formally reduced to writing. See, e.g., Agreement
("MARVEL has informed SUPPLIER that MARVEL only orders
. . . work on an employee-for-hire basis. . . . SUPPLIER
acknowledges, agrees and confirms that any and all work
. . . have [sic] been and will be specially ordered or
commissioned . . . [as] a work made for hire. ").
Third, the language is ambiguous as to whether it
conveys renewal rights. The contract contains no explicit
reference to renewal rights and most of the language merely
tracks the 1976 Act's definition of "work made for hire."
See 17 U.S.C. § 101 (defining term as "a work specially
ordered or commissioned for use as a contribution to a
collective work . . . if the parties expressly agree in a
written instrument signed by them"). If the contract only
covers "work made for hire," Marvel would be the statutory
author, see id. § 201(b); Cmty. for Creative Non-Violence
v. Reid, 490 U.S. 730, 743-44 (1989) (citing 1909 Copyright
- 27 -
Act § 62, 17 U.S.C. § 26 (repealed 1976)), and the
"SUPPLIER" would not have any renewal rights that could be
assigned to Marvel.
Finally, Marvel relies heavily on the provision
"grant[ing] to MARVEL forever all rights of any kind and
nature in and to the Work." Cf. Siegel, 508 F.2d at 913-
14. In context, however, for the reasons discussed above,
it is not clear whether this broad language applies to work
performed by Friedrich some six years earlier. The
broadness of the language would be of no help to Marvel if
the Agreement were intended to cover only future work.
Moreover, that sentence goes on to provide that "Marvel is
the sole and exclusive copyright proprietor thereof having
all rights of ownership therein," which again suggests
Marvel is the statutory author by virtue of the fact that
the work was "made for hire." Thus, the Agreement could
reasonably be construed as a form work -for-hire contract
having nothing to do with renewal rights. According ly, the
language by itself fails to overcome the "strong
presumption against the conveyance of renewal rights ."
Corcovado Music Corp., 981 F.2d at 684.
- 28 -
b. Extrinsic Evidence
Because the Agreement is reasonably susceptible of
more than one meaning, it is ambiguous and we next look to
extrinsic evidence in the record to determine whether there
is a genuine dispute regarding the parties' intent at the
time of the Agreement. See Diesel Props S.r.l. v.
Greystone Bus. Credit II LLC, 631 F.3d 42, 51 (2d Cir.
2011).
Here, the record demonstrates that Cadence
extended this same one-page, forward-looking form contract
to all its freelance artists to ensure that commissioned
work would be deemed a "work made for hire" under the new
1976 Copyright Act. It did so shortly after the 1976 Act
took effect on January 1, 1978. See 17 U.S.C. § 101; see
also Copyright Act of 1976 § 102, Pub. L. No. 94-553, 90
Stat. 2541 (codified at note preceding 17 U.S.C.) (noting
effective date of 1976 Act was January 1, 1978); Martha
Graham Sch. & Dance Found., Inc. v. Martha Graham Ctr. of
Contemporary Dance, Inc., 380 F.3d 624, 633-34 (2d Cir.
2004) (explaining that 1976 Act only governs whether a work
"created on or after January 1, 1978" is a work-for-hire).
- 29 -
When Friedrich signed the Agreement, he was doing other
freelance work for Marvel and he believed the Agreement
would only cover future work because that was what Cadence
told him at the time. He was not paid anything separately
for signing the Agreement. Moreover, Spotlight 5 had been
published six years earlier by a different corporate entity
(Magazine Mgmt.) and had grown so popular that Marvel had
already reprinted it once and had launched a separate Ghost
Rider comic book series. Given that context, it is
doubtful the parties intended to convey rights in the
valuable Ghost Rider copyright without explicitly
referencing it. It is more likely that the Agreement only
covered ongoing or future work. Hence, there is a genuine
dispute regarding the parties' intent for this form
contract to cover Ghost Rider.
Even if the parties intended the definition of
"Work" to extend to Ghost Rider, that alone would not mean
that they intended the Agreement to convey Friedrich's
remaining renewal rights in that work. First, the
Agreement appears to create an "employee for hire"
relationship, but the Agreement could not render Ghost
- 30 -
Rider a "work made for hire" ex post facto, even if the
extrinsic evidence shows the parties had the intent to do
so. The 1909 Act governs whether works created and
published before January 1, 1978 are "works made for hire,"
see Martha Graham Sch., 380 F.3d at 633-34, and that Act
requires us to look to agency law and "the actual
relationship between the parties, rather than the language
of their agreements," in determining the authorship of the
work, Marvel Characters, Inc. v. Simon, 310 F.3d 280, 291-
92 (2d Cir. 2002). 12 Thus, regardless of the parties'
intent in 1978, the evidence must prove Ghost Rider was
actually a "work made for hire" at the time of its
12
Marvel Characters, Inc. v. Simon, 310 F.3d 280 (2d
Cir. 2002), is instructive. There, an artist had sued Marvel,
alleging he created the comic book character Captain America and
therefore owned the renewal copyright in that work. Id. at 283.
To settle the action, the artist agreed to assign the renewal
rights to Marvel and stipulated that Captain America was a "work
for hire." Id. at 283-84. In 1999, the artist attempted to
exercise his statutory right to terminate the assignment of
renewal rights. Id. at 284 (citing 17 U.S.C. § 304(c)).
Because the work was subject to the 1909 Act, we held that "an
agreement made subsequent to a work's creation which
retroactively deems it a 'work for hire' constitutes an
'agreement to the contrary' under § 304(c)(5) of the 1976 Act."
Id. at 292. Thus, the settlement agreement did not preclude the
artist from proving that he actually was the author and had the
statutory right to terminate the assignment. Id. at 292-93.
- 31 -
creation. But the circumstances surrounding the creation
of the work are genuinely in dispute.
Second, there is little extrinsic evidence to
suggest that the parties actually intended to assign
anything other than an initial term of copyright and much
evidence to suggest that they did not. See P.C. Films
Corp., 138 F.3d at 457 ("'[G]eneral words of assignment can
include renewal rights if the parties had so intended.'"
(emphasis added) (quoting Siegel, 508 F.2d at 913)).
Friedrich was unrepresented by counsel, was told that the
Agreement only covered future work, and did not learn about
the concept of renewal rights until 2005. There was no
discussion about renewal rights when he signed the
Agreement in 1978. A jury could reasonably conclude that
the parties never even considered renewal rights when they
made this contract. Accordingly, the district court erred
in granting summary judgment based on the Agreement.
B. Timeliness of Ownership Claims
Because Marvel asserts that there is an
alternative ground for affirming the district court's
judgment, we next consider its argument that Friedrich's
- 32 -
claim is barred by the statute of limitations. We may
affirm the district court's order granting summary judgment
"on any ground supported by the record, even if it is not
one on which the district court relied." McElwee v. Cnty.
of Orange, 700 F.3d 635, 640 (2d Cir. 2012).
1. Applicable Law
Under the Copyright Act, all civil actions,
including claims of ownership, must be commenced "within
three years after the claim accrued." 17 U.S.C § 507(b);
see Kwan v. Schlein, 634 F.3d 224, 228 (2d Cir. 2011). "An
ownership claim accrues only once, when 'a reasonably
diligent plaintiff would have been put on inquiry as to the
existence of a right.'" Kwan, 634 F.3d at 228 (quoting
Stone v. Williams, 970 F.2d 1043, 1048 (2d Cir. 1992)). If
"the ownership claim is time-barred, and ownership is the
dispositive issue, any attendant infringement claims must
fail." Id. at 230.
Although an alleged author is aware of his claim
to ownership of the work "from the moment of its creation,"
Merchant v. Levy, 92 F.3d 51, 56 (2d Cir. 1996), the author
does not need to bring suit until there has been an
- 33 -
"express repudiation" of that claim, see Zuill v. Shanahan,
80 F.3d 1366, 1370-71 (9th Cir. 1996). "[A]ny number of
events can trigger the accrual of an ownership claim,
including '[a]n express assertion of sole authorship or
ownership.'" Kwan, 634 F.3d at 228 (quoting Netzer v.
Continuity Graphic Assocs., Inc., 963 F. Supp. 1308, 1315
(S.D.N.Y. 1997)); see also Zuill, 80 F.3d at 1369("[C]laims of co-ownership, as distinct from claims of
infringement, accrue when plain and express repudiation of
co-ownership is communicated to the claimant, and are
barred three years from the time of repudiation."). For
example, a claim can accrue: when a book is published
without the alleged co-author's name on it, see Kwan, 634
F.3d at 229; when alleged co-authors are presented with a
contract identifying the defendant as the "sole owner and
copyright holder," Zuill, 80 F.3d at 1368; see also Gaiman
v. McFarlane, 360 F.3d 644, 652 (7th Cir. 2004); or when
alleged co-owners learn they are entitled to royalties that
- 34 -
they are not receiving, see Merchant, 92 F.3d at 53, 56;
Stone, 970 F.2d at 1048. 13
2. Application
Marvel is not entitled to summary judgment on its
statute of limitations defense. Friedrich filed his
complaint on April 4, 2007 and thus Marvel had to have
repudiated Friedrich's claim to ownership of the renewal
rights prior to April 4, 2004 for his claim to be untimely.
We conclude the district court could n ot have granted
summary judgment on this basis because there are genuine
disputes of fact regarding whether and , if so, when Marvel:
(a) publicly repudiated Friedrich's claim; (b) privately
repudiated Friedrich's claim in its communications with
him; and (c) implicitly repudiated Friedrich's claim by
13
Friedrich argues that the statute of limitations
merely restricts his recovery to damages suffered in the three
years before filing. In Stone v. Williams, 970 F.2d 1043 (2d
Cir. 1992), we permitted the illegitimate heir of a famous
singer to seek royalties for the three years prior to filing
even though she was charged with knowledge of her ownership
claim well before that. See id. at 1051. We have subsequently
made clear, however, that a stale ownership claim bars recovery
for all subsequent infringement claims. See Kwan v. Schlein,
634 F.3d 224, 228 (2d Cir. 2011). Stone represents a narrow
exception in those rare situations "where uncertainty
surround[s] the relative's status as a member of the author's
family." Merchant v. Levy, 92 F.3d 51, 56 (2d Cir. 1996).
- 35 -
conspicuously exploiting the copyright without paying
royalties.
a. Public Repudiation
First, there is a genuine dispute whether Marvel
publicly repudiated Friedrich's claim. There is evidence
that, over the years, Marvel repeatedly and publicly
recognized that Friedrich created the work. Marvel
publicly credited Friedrich with "conceiv[ing]" Spotlight 5
each time it reprinted the original comic -- including as
late as 2005. When the comic was originally published in
1972, Marvel explained in a contemporaneous publication
that Friedrich had "dreamed the whole thing up." Moreover,
Marvel did not register a copyright in Spotlight 5 or Ghost
Rider before Friedrich filed this action, even though it
had registered nearly all of its other characters and
several later Ghost Rider stories.
Marvel argues that the copyright notice on
Spotlight 5 declared that Marvel was the owner and publicly
repudiated Friedrich's claim. But in 1972, the notice
would have only indicated that Marvel held the rights to
the initial term of copyright. It would not have
- 36 -
conclusively demonstrated that Marvel was the author or
otherwise had the right to register the renewal term. 14
See, e.g., P.C. Films Corp., 138 F.3d at 456 (explaining
that agreement permitted alleged assignees to "register[]
the renewal copyright in the[ir] names . . . as co -
claimants [just] as [their predecessors] had done for the
original copyright registration"). At a minimum, there is
a genuine dispute regarding whether this notice publicly
repudiated Friedrich's claim of authorship, and thus his
claim to ownership of the renewal rights.
b. Private Repudiation
Second, the record is unclear as to whether Marvel
privately repudiated Friedrich's claim in its
communications with Friedrich before April 4, 2004.
Although Marvel contends that it told Friedrich that it
14
Under the 1909 Act, copyright protection was not
renewed automatically. See 3 Nimmer on Copyright § 9.05[A][1].
Only certain parties could file for renewal and formal renewal
was an "absolute condition" to continued copyright protection.
Id. § 9.05[A][1], [D][1][a]. While subsequent amendments made
it possible for the renewal rights in works published between
1964 and 1977 to vest without formal registration, see Copyright
Renewal Act of 1992, Pub. L. No. 102-307, 106 Stat. 264; 3
Nimmer on Copyright § 9.05[A][1]-[2], this historical fact
indicates that the name on the original 1972 copyright notice
was not necessarily a public repudiation of Friedrich's claim to
ownership of the renewal copyright.
- 37 -
considered Ghost Rider to be a "work made for hire" either
at the time of the comic book's creation or at the time he
executed the Agreement in 1978, the circumstances
surrounding those events are in dispute. Only Marvel's
letter dated April 16, 2004 clearly communicates that
position to Friedrich. Because Friedrich filed his
complaint less than three years later, his ownership claim
would be timely if that was the first time Marvel privately
repudiated his ownership claim. Accordingly, there is a
genuine dispute as to when Marvel first told Friedrich that
it intended to take sole credit for Ghost Rider.
c. Implied Repudiation
Finally, there is a genuine dispute as to whether
Marvel's exploitation of the Ghost Rider copyright during
the renewal term, 15 without paying royalties, implicitly
repudiated Friedrich's claim to ownership. In Merchant v.
Levy, 92 F.3d 51 (2d Cir. 1996), and Stone v. Williams, 970
F.2d 1043 (2d Cir. 1992), the alleged co-owners were
15
Marvel's extensive exploitation of Ghost Rider during
the initial term is irrelevant, as it would be merely consistent
with Friedrich's claims that he is the author and assigned only
the initial copyright term to Marvel.
- 38 -
charged with notice of their ownership claim once they knew
they were entitled to receive royalties, but the works in
both those cases were hit songs regularly played on the
radio. See Merchant, 92 F.3d at 52-53, 56 ("Why Do Fools
Fall in Love" by Frankie Lymon and the Teenagers); 16 Stone,
970 F.2d at 1046, 1048 (songs of Hank Williams). In
contrast, Marvel used the Ghost Rider copyright sparingly
and in non-obvious ways between 2001 and 2004. Cf. Zuill,
80 F.3d at 1370 (analogizing statute of limitations for
ownership claims to doctrine of adverse possession, which
requires an "express or implicit ouster" to put the owner
on notice); 3 Am. Jur. 2d Adverse Possession § 62 (2d ed.
supp. Feb. 2013) (explaining that "the possession of the
adverse claimant must be open and notorious"). During the
renewal period but before 2004, Marvel merely: published
six issues of a short-lived Ghost Rider comic book series
from August 2001 to January 2002; advertised a single Ghost
Rider toy in each of its 2003 and 2004 toy catalogs; and
used Ghost Rider for a cameo appearance in a video game
16
In Merchant, the jury decided when the alleged co-
owners should have been charged with knowledge of their claim.
See Merchant, 92 F.3d at 56.
- 39 -
entitled Spider-Man. There is a genuine dispute as to
whether a reasonably diligent person would have been put on
notice by this activity.
Marvel points out that its agreement to license a
Ghost Rider movie had been highly publicized since 2000 and
argues that this implicitly repudiated Friedrich's
ownership of the renewal copyright. We conclude that there
are genuine disputes of fact regarding whether these news
reports repudiated Friedrich's claim.
First, it is unclear whether this conduct even
occurred during the renewal term. Because the copyright
appears to have been first secured in 1972, the renewal
term would not have vested in Friedrich until January 1,
2001. See 17 U.S.C. § 304(a)(2)(A)(i); 3 Nimmer on
Copyright § 9.05[C][2] (explaining that the initial term
for a work first published on March 12, 1969 would end
December 31, 1997 -- at the end of the twenty-eighth
year -- and the renewal term would vest on January 1,
1998). Marvel entered the license agreement on May 15,
2000, before the initial term expired. Therefore, news of
- 40 -
that agreement would not necessarily have repudiated
Friedrich's ownership of the renewal term.
Second, it was not clear that Marvel would refuse
to pay royalties to Friedrich when the movie was released.
According to Merchant and Stone, an ownership claim is
triggered by knowledge of an entitlement to royalties that
are not being paid, rather than by mere knowledge of the
exploitation. See Merchant, 92 F.3d at 53, 56; Stone, 970
F.2d at 1048. Of course, in many cases, these two will go
hand-in-hand. For example, a co-owner is aware of his
claim of co-ownership from the moment the work is created,
see Merchant, 92 F.3d at 56, and thus learning that another
joint author is exploiting the work is sufficient notice
that royalties are due. Here, however, Friedrich alleges
primarily that he is sole author and alternatively that he
is a joint author.
As to his claim of sole authorship, Friedrich
would not have a right to royalties with respect to the
movie, but a claim for damages. But as explained above, it
is not clear that entering the agreement infringed
Friedrich's ownership rights as it may have occurred during
- 41 -
the initial term. With respect to the alternative co-
authorship claim, it is unclear whether the agreement
entitled Friedrich to any royalties before the movie was
released and began generating profits in 2007. Moreover,
there is evidence that Marvel did pay Friedrich royalties
when it reprinted Spotlight 5 in 2005, suggesting that
Marvel also might pay him royalties when the movie was
released. Hence, a jury could find that a reasonably
diligent person would not have known that Marvel was
exploiting Ghost Rider, without paying royalties, during
the renewal term but before April 4, 2004. Because there
are genuine disputes regarding whether Friedrich should
have known about Marvel's repudiation of his claim of
ownership, his claim is not untimely as a matter of law. 17
17
We also reject Marvel's arguments that Friedrich is
barred by the doctrines of laches, see New Era Publ'ns Int'l,
ApS v. Henry Holt & Co., 873 F.2d 576, 584-85 (2d Cir. 1989),
and equitable estoppel, see Veltri v. Bldg. Serv. 32B-J Pension
Fund, 393 F.3d 318, 326 (2d Cir. 2004). Marvel has not suffered
any "prejudice," New Era Publ'ns, 873 F.2d at 584, or
"injustice," Veltri, 393 F.3d at 326, warranting the invocation
of these equitable remedies. The loss of evidence and the
deterioration of key witnesses' memories are the products of the
twenty-eight year initial copyright term and the parties' joint
failure to properly document the ownership of the Ghost Rider
copyright at the time of its creation. Furthermore, Marvel was
on notice of a competing claim to the Ghost Rider renewal
- 42 -
C. Authorship and Work-for-Hire
On appeal, Friedrich also asks us to review the
district court's decision to deny his cross-motion for
summary judgment on the issue of authorship. Friedrich
contends that the record establishes as a matter of law
that he was the author, or at least a joi nt author, of the
Ghost Rider work.
Because we have jurisdiction over the grant of
summary judgment, we have the discretion to review the
otherwise unappealable order denying Friedrich's cross-
motion for summary judgment. See Barhold v. Rodriguez, 863
F.2d 233, 237 (2d Cir. 1988). Although we have already
decided to vacate the judgment in favor of Marvel, we
exercise our discretion to review this portion of the
district court's order in the interests of judicial
economy. See id. As with the grant of summary judgment,
we review the district court's denial de novo, but this
time we construe the record in favor of Marvel, "the party
copyright since at least 2004 and chose to proceed with the
production and release of two Ghost Rider movies, including one
produced entirely after this lawsuit was filed.
- 43 -
against whom summary judgment is sought." Mullins, 653
F.3d at 113 (quotation omitted).
1. Applicable Law
The Copyright Act protects "original works of
authorship fixed in any tangible medium of expression ," but
not ideas. 17 U.S.C. § 102; see H.R. Rep. No. 94-1476, at
57 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5670
(indicating 1976 Act did not change "the basic dichotomy
between expression and idea" embodied in the 1909 Act) .
The author of a work owns the copyright in that work, 18
unless it was a "work made for hire," in which case "the
employer or other person for whom the work was prepared is
considered the author for purposes of this title." 17
U.S.C. § 201(a), (b); see also Cmty. for Creative Non-
Violence, 490 U.S. at 743-44 (citing 1909 Copyright Act
§ 62).
Although the 1976 Act requires the parties to
execute an express agreement that a work is "made for
18
If the work is a "joint work," that is "a work
prepared by two or more authors with the intention that their
contributions be merged into inseparable or interdependent parts
of a unitary whole," then the authors are co-owners of the
copyright. 17 U.S.C. §§ 101, 201(a).
- 44 -
hire," see 17 U.S.C. § 101, works created prior to 1978 are
governed by the 1909 Copyright Act, Martha Graham Sch., 380
F.3d at 633-34. That Act did not require an express
agreement; instead, "[t]he copyright belong[ed] to the
person at whose 'instance and expense' the work was
created." Id. at 634-35. "A work is made at the hiring
party's 'instance and expense' when the employer induces
the creation of the work and has the right to direct and
supervise the manner in which the work is carried out,"
even if that right is never exercised. Id. at 635.
2. Application
We agree with the district court that there are
genuine disputes of material fact that preclude granting
summary judgment on the issue of authorship. While
Friedrich points to evidence that would demonstrate that he
was the sole author or a joint author of the work, Marvel
has presented evidence supporting the following
contradictory account of the creation of Ghost Rider:
Marvel had published comic books starring a cowboy
named Ghost Rider since 1966. In 1971, Friedrich was
working on an issue of Daredevil when he approached Thomas
- 45 -
with an idea, not a written proposal, for a motorcycle-
riding villain named Ghost Rider. Thomas thought the
character was better suited as a superhero in his own comic
book and arranged a meeting with Lee. Lee authorized the
comic book, deciding Ghost Rider's alter ego would be named
"Johnny Blaze," even though both Friedrich and Thomas
disliked that name. Friedrich began writing Ghost Rider's
origin story only after this meeting. Thomas and Ploog
scheduled a meeting to design the character, but Friedrich
failed to attend that meeting and did not provide any
instruction on what Ghost Rider should look like
beforehand. Therefore, Ploog modeled the new character
after the original cowboy, incorporating Thomas's idea for
an Elvis-like leather jump suit and a skull head, and then
spontaneously drawing flames to frame the skull. The rest
of the book was produced according to the "Marvel method,"
with Marvel retaining editorial control throughout and
paying all costs, including a page rate for Friedrich's
contributions as a freelance writer.
When construed in Marvel's favor, the record
reveals that Friedrich had nothing more than an
- 46 -
uncopyrightable idea for a motorcycle-riding character when
he presented it to Marvel because he had not yet fixed the
idea into a tangible medium. See 17 U.S.C. § 102(b). A
jury could find that Marvel then "induce[d] the creation
of" the flaming-skulled superhero Ghost Rider and Spotlight
5, and had "the right to direct and supervise the manner in
which the work [was] carried out." Martha Graham Sch., 380
F.3d at 635. Under this version of the facts, Thomas, a
Marvel employee, was the one who decided that Ghost Rider
should be a superhero in his own comic book. Lee, the head
of Marvel, commissioned the work by authorizing the comic's
production. Ghost Rider's appearance and origin story
developed through the collaborative efforts of Friedrich,
Thomas, Lee, and Ploog, all of whom were paid by Marvel.
If accepted as true, a jury could easily conclude from
these facts that Ghost Rider was a "work made for hire" and
thus that Marvel was the sole statutory author.
Accordingly, we affirm the district court's denial of
Friedrich's motion for summary judgment.
- 47 -
CONCLUSION
We conclude that the district court erred in
granting summary judgment because the Agreement is
ambiguous and there are genuine disputes of material fact
regarding the parties' intent to assign renewal rights in
that Agreement, the timeliness of Friedrich's ownership
claim, and the authorship of the work. Accordingly, the
judgment is VACATED and the case is REMANDED for trial.
- 48 -