Gaiman, Neil v. McFarlane, Todd

In the
United States Court of Appeals
For the Seventh Circuit
____________
Nos. 03-1331, 03-1461
NEIL GAIMAN and MARVELS AND MIRACLES, LLC,
Plaintiffs-Appellees/Cross-Appellants,
v.
TODD MCFARLANE, et al.,
Defendants-Appellants/Cross-Appellees.
____________
Appeals from the United States District Court
for the Western District of Wisconsin.
No. 02-C-48—John C. Shabaz, Judge.
____________
ARGUED JANUARY 5, 2004—DECIDED FEBRUARY 24, 2004
____________
Before POSNER, KANNE, and ROVNER, Circuit Judges.
POSNER, Circuit Judge. Neil Gaiman brought suit under
the Copyright Act against Todd McFarlane and corporations
controlled by him that we can ignore, seeking a declaration
that he (Gaiman) owns copyrights jointly with McFarlane in
certain comic-book characters. Merchant v. Levy, 92 F.3d
51 (2d Cir. 1996); Zuill v. Shanahan, 80 F.3d 1366 (9th Cir.
1996); Shapiro, Bernstein & Co. v. Jerry Vogel Music Co., 161
F.2d 406 (2d Cir. 1946). He sought additional relief under
the Act, other provisions of federal law, and state law, as
2 Nos. 03-1331, 03-1461
well. The case was tried to a jury, which brought in a verdict
for Gaiman. The judge entered a judgment that declared
Gaiman to be the co-owner of the characters in question,
ordered McFarlane to so designate Gaiman on undistributed
copies in which these characters appear, provided modest
monetary relief in respect of Gaiman’s supplemental claim
for damages for breach of his right of publicity, and ordered
an accounting of the profits that McFarlane has obtained
that are rightfully Gaiman’s. The accounting is not yet
complete, and so the judgment is not final; McFarlane’s
appeal is therefore limited to the injunction requiring him to
acknowledge Gaiman’s co-ownership.
McFarlane contends that a reasonable jury would not have
rejected his statute of limitations defense and that in any
event two of the comic-book characters at issue are not
copyrightable. The parties agree that the alternative defense,
the defense of uncopyrightability, is strictly an issue for the
court. We have found only a handful of appellate cases
addressing the issue, and they are split. Matthew Bender &
Co. v. West Publishing Co., 158 F.3d 674, 681 (2d Cir. 1998),
and North Coast Industries v. Jason Maxwell, Inc., 972 F.2d
1031, 1035 (9th Cir. 1992), hold that copyrightability is a
mixed question of law and fact, at least when it depends (as
it usually does) on originality, and that it is therefore an
issue for the jury or other factfinder. But Yankee Candle Co.
v. Bridgewater Candle Co., 259 F.3d 25, 34 n. 5 (1st Cir. 2001),
and our own Publications Int’l, Ltd. v. Meredith Corp., 88 F.3d
473, 478 (7th Cir. 1996), along with a number of district
court cases, e.g., Collezione Europa U.S.A., Inc. v. Hillsdale
House, Ltd., 243 F. Supp. 2d 444, 451-52 (M.D.N.C. 2003);
Newton v. Diamond, 204 F. Supp. 2d 1244, 1253 (C.D. Cal.
2002), hold that copyrightability is always an issue of law.
Whether a particular work is copyrightable is fact-specific,
which argues against treating the question as one of law,
but tugging the other way is the concern that property
Nos. 03-1331, 03-1461 3
rights not be placed at the mercy of a jury. A nice issue, but
this is not an apt occasion on which to reexamine our
resolution of it in Publications Int’l.
Gaiman’s cross-appeal, in which he is joined by a com-
pany controlled by him, is from the dismissal of his aux-
iliary claim for breach of contract. The cross-appeal is con-
tingent on our reversing the copyright judgment, since
Gaiman seeks no additional relief on his contract claim; it’s
just a backstop to his copyright claim.
We need to do some stage setting. Gaiman and McFarlane
are both celebrated figures in the world of comic books, but
they play different though overlapping roles. Gaiman just
writes scripts; McFarlane writes scripts too, but he also
illustrates and publishes the comic books. In 1992, shortly
after forming his own publishing house, McFarlane began
publishing a series of comic books entitled Spawn, which at
first he wrote and illustrated himself. “Spawn,” more
precisely “Hellspawn,” are officers in an army of the
damned commanded by a devil named Malebolgia, who
hopes one day to launch his army against Heaven. The
leading character in the series is a man named Al Simmons,
who is dead but has returned to the world of the living as a
Hellspawn.
Al’s story is an affecting one. Born in a quiet neighbor-
hood outside of Pittsburgh, he was recruited by the CIA and
eventually became a member of an elite military unit that
guards the President. He saved the President from an
assassin’s bullet and was rewarded with a promotion to
lieutenant colonel. He was placed under the command of
Jason Wynn, who became his mentor and inducted him into
the sinister inner recesses of the intelligence community.
When Al began to question Wynn’s motives, Wynn sent two
agents, significantly named Chapel and Priest, to kill Al
with laser weapons, and they did, burning him beyond
4 Nos. 03-1331, 03-1461
recognition. Al was buried with great fanfare in Arlington
National Cemetery.
Now Al had always had an Achilles’ heel, namely that
he loved his wife beyond bearing and so, dying, he vowed
that he would do anything to see her again. Malebolgia took
him at his word (“would do anything” and returned Al to
Earth. But a deal with the devil is always a Faustian pact. Al
discovered that he was now one of Malebolgia’s handpicked
Hellspawn and had been remade (a full makeover, as we’ll
see) and infused with Hell-born energy.
Returned to Earth in his new persona, Al discovers
that his wife has remarried his best friend, who was able
to give her the child he never could. He absorbs the
blow but thirsts for revenge against Jason Wynn. He
bides his time, living with homeless people and ponder-
ing the unhappy fact that once he exhausts his Hell-born
energy he will be returned to Malebolgia’s domain and be-
come a slave in an army of the damned with no hope of
redemption. He must try somehow to break his pact with
the devil.
The early issues in the series were criticized for bad writ-
ing, so McFarlane decided to invite four top writers each to
write the script for one issue of Spawn. One of those invited
was Gaiman. He accepted the invitation and wrote the
script for Spawn issue No. 9. Their contract, made in 1992,
was oral. There was no mention of copyright, nor, for that
matter, of how Gaiman would be compensated for his work,
beyond McFarlane’s assuring Gaiman that he would treat
him “better than the big guys” did. The reference was to the
two leading comic book publishers, Marvel Comics (not to
be confused with Gaiman’s company, Marvels and Mira-
cles) and DC Comics, for which Gaiman and other writers
write on a “work made for hire” basis. 17 U.S.C. § 101. This
means that the publishers own the copyrights on their work.
Nos. 03-1331, 03-1461 5
§ 201(b).
It might seem that when McFarlane told Gaiman that
he would treat Gaiman “better than the big guys” did,
he just meant he’d compensate him more generously for
work made for hire. But McFarlane rightly does not argue
this. Gaiman’s work for him was not work made for hire.
It was neither (1) work created by an employee within
the scope of his employment nor (2) “a work specially
ordered or commissioned for use as a contribution to a
collective work, as a part of a motion picture or other audi-
ovisual work, as a translation, as a supplementary work, as
a compilation, as an instructional text, as a test, as answer
material for a test, or as an atlas, 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. There was no written agreement between Gaiman and
McFarlane, and Gaiman was not an employee of McFarlane.
Now it is true that a commissioned work not falling under
(2) may be deemed a work for hire under (1) if, for example,
the commissioning party pays the author a monthly stipend,
pays health and other fringe benefits during the time the
author works on the project, and exercises overall though
not necessarily daily supervision. See Community for Creative
Non-Violence v. Reid, 490 U.S. 730, 750-52 (1989); Saenger
Organization, Inc. v. Nationwide Ins. Licensing Associates, Inc.,
119 F.3d 55, 59-60 (1st Cir. 1997). The work for hire concept
isn’t limited to formal employment because a functionally
identical relationship can be created by skillful drafting of
contracts that purport to treat the (de facto) employee as an
independent contractor. The work for hire provision is not
unique in sensibly forgoing a definition of “employee” or
“employment” and by doing so empowering the courts to
define these terms from case to case on a practical rather
than formal basis, using the principles of agency law to
6 Nos. 03-1331, 03-1461
prevent evasion of the statutory purpose. E.g., Clackamas
Gastroenterology Associates, P.C. v. Wells, 123 S. Ct. 1673(2003); EEOC v. Sidley Austin Brown & Wood, 315 F.3d 696,
704-07 (7th Cir. 2002). But there is nothing to suggest that
Gaiman ever became a de facto employee of McFarlane.
And while Gaiman could have assigned to McFarlane his
copyright in any work he did under the oral contract,
copyright assignments must be in writing, 17 U.S.C. §
204(a); Schiller & Schmidt, Inc. v. Nordisco Corp., 969 F.2d 410,
413 (7th Cir. 1992), and there was no written assignment.
In his script for Spawn No. 9, Gaiman introduced three
new characters—Medieval Spawn (as he was later called by
McFarlane—Gaiman had not named it and in the issue he
is just referred to as a Spawn, with no further identifier),
Angela (no last name), and Count Nicholas Cogliostro.
Gaiman described, named, and wrote the dialogue for them,
but McFarlane drew them. Gaiman contends that he and
McFarlane are joint owners of the copyrights on the three
characters by reason of their respective contributions to joint
(indivisible) work. 17 U.S.C. § 101; Seshadri v. Kasraian, 130
F.3d 798, 803-04 (7th Cir. 1997); Erickson v. Trinity Theatre,
Inc., 13 F.3d 1061, 1067-72 (7th Cir. 1994); Thomson v. Larson,
147 F.3d 195, 199-205 (2d Cir. 1998). McFarlane concedes
Gaiman’s joint ownership of Angela, but not of the other
two; we postpone our consideration of the issue until we
have disposed of the statute of limitations defense, to which
we now turn. Evaluation of the defense requires us to
consider a chain of events running from 1992—when the
contract was made and Spawn No. 9, which states on its
inside cover that it is copyrighted by McFarlane (actually by
one of his companies, but that is immaterial), was pub-
lished—to 1999.
Spawn No. 9 was a huge success, selling more than a mil-
lion copies. McFarlane paid Gaiman $100,000 for his work
Nos. 03-1331, 03-1461 7
on it. Gaiman testified that this was about what he would
have expected to receive from DC Comics had he written
the script of Spawn No. 9 for that company as a work made
for hire.
Because Angela was a big hit with Spawn’s readers,
McFarlane asked Gaiman to do a “mini-series” of three
issues starring her, which he did. He also wrote several
pages for Spawn No. 26 to form a bridge to the Angela series.
Because Angela hadn’t appeared in Spawn Nos. 10 through
25, Gaiman was concerned that readers would not realize
that Angela was an offshoot of Spawn. McFarlane paid
Gaiman $3,300 for his contribution to Spawn No. 26 and
more than $30,000 (the exact amount is not in the record) for
the Angela series. Only one of these four issues (the second
Angela) contains a copyright notice; the notice is similar to
the one in Spawn No. 9.
The Angela series was first published in 1994. The fol-
lowing year, having created a toy company to manufacture
statuettes (“action figures”) of Spawn characters, one a
statuette of Medieval Spawn, McFarlane mailed Gaiman a
check for $20,000 designated as royalties, presumably on
sales of the statuette, though the record is unclear.
McFarlane subsequently licensed the publication of pa-
perback books that reprinted the comic books to which
Gaiman had contributed. The books carry a copyright notice
similar to the one in Spawn No. 9 and Angela No. 2 except
that it adds that “all related characters” are also copyrighted
by McFarlane. Besides inserting the copyright notices that
we’ve mentioned, McFarlane applied to the Register of
Copyrights for, and received, copyright registrations on
these issues and books.
In 1996, learning that McFarlane might sell his enterprise,
Gaiman decided that he needed the protection of a writ-
8 Nos. 03-1331, 03-1461
ten contract and he asked McFarlane for one. McFarlane
agreed to give him a written contract and also to pay him
royalties for a statuette of Angela that McFarlane’s toy com-
pany had manufactured and sold.
After desultory negotiations, Gaiman’s lawyer wrote a
letter to McFarlane’s negotiator stating that Gaiman had
created the characters of Medieval Spawn, Angela, and
Cogliostro not as work for hire but “pursuant to the terms
of an oral agreement under which Mr. McFarlane agreed
that Mr. Gaiman would be compensated on the same terms
as set forth in Mr. Gaiman’s DC Comics Agreements dated
August 1, 1993.” This was a surprising interpretation of the
oral agreement, since in it McFarlane had promised to treat
Gaiman better than DC Comics treated him; but as nothing
turns on this interpretation we’ll ignore it. The letter goes on
to “demand” that McFarlane “immediately forward all
monies which are currently owed to Mr. Gaiman in accord-
ance with the terms of the DC Agreement.” We’ll call this
the demand letter.
Direct negotiations between Gaiman and McFarlane en-
sued. A tentative agreement was reached that McFarlane
would pay royalties on the statuettes on the same terms
as Gaiman would have gotten from DC Comics but that
Gaiman would exchange his rights in Medieval Spawn
and Cogliostro for McFarlane’s rights in another comic book
character, Miracleman. Once the exchange was made,
Gaiman would no longer receive royalties on Medieval
Spawn and Cogliostro.
For the rest of 1997 and 1998, McFarlane sent Gaiman
royalty checks totaling about $16,000, presumably on ac-
count of the statuettes and the paperback books, together
with royalty reports that referred to Gaiman as a “co-cre-
ator” of Medieval Spawn, Angela, and Cogliostro. On
February 14, 1999, however, Gaiman received a letter from
Nos. 03-1331, 03-1461 9
McFarlane announcing that McFarlane was “officially re-
scind[ing] any previous offers I have placed on the table.”
The letter offered Gaiman the following deal on a take-it-or-
leave-it basis: Gaiman would relinquish “all rights to
Angela” in exchange for “all rights to Miracle Man,” and
“all rights to Medieval Spawn and Cogliostro shall continue
to be owned by Todd McFarlane Productions."
The statement “all rights to Medieval Spawn and
Cogliostro shall continue to be owned by Todd McFarlane
Productions” was an unambiguous denial of Gaiman’s
copyright interest and therefore is the last date on which his
claim could have accrued and the three-year copyright
statute of limitations, 17 U.S.C. § 507(b), thus have begun to
run. This suit was brought in January of 2002—a month
short of three years after Gaiman’s receipt of McFarlane’s
letter. By the time of trial, Spawn was up to issue No. 120
and had spawned a large number of derivative works,
including posters, trading cards, clothing, the statuettes,
an animated series on HBO, video games, and a motion
picture. Many of these derivative works include all three
characters to which Gaiman contributed, so that the finan-
cial stakes in the case are considerable.
A minor wrinkle concerning the statute of limitations
defense is that Gaiman’s suit is not a suit for infringement.
Gaiman concedes that McFarlane also owns copyright in the
comic-book characters in issue. The claim rejected by
McFarlane is that Gaiman is a co-owner, along with
McFarlane. 17 U.S.C. § 201(a). As a co-owner, McFarlane
was not violating the Copyright Act by unilaterally publish-
ing the jointly owned work, but, as in any other case of
conversion or misappropriation, he would have to account
to the other joint owner for the latter’s share of the profits.
Zuill v. Shanahan, supra, 80 F.3d at 1369. When co-ownership
is conceded and the only issue therefore is the contractual,
10 Nos. 03-1331, 03-1461
or in the absence of contract the equitable, division of the
profits from the copyrighted work, there is no issue of
copyright law and the suit for an accounting of profits
therefore arises under state rather than federal law. Goodman
v. Lee, 78 F.3d 1007, 1013 (5th Cir. 1996); Oddo v. Ries, 743
F.2d 630, 633 and n. 2 (9th Cir. 1984); Mountain States
Properties, Inc. v. Robinson, 771 P.2d 5, 6-7 (Colo. App. 1988).
It is just like a suit to enforce a copyright license, which
arises under state law rather than under the Copyright Act.
Saturday Evening Post Co. v. Rumbleseat Press, Inc., 816 F.2d
1191, 1194-95 (7th Cir. 1987); T.B. Harms Co. v. Eliscu, 339
F.2d 823, 824, 828 (2d Cir. 1964) (Friendly, J.); cf. Interna-
tional Armor & Limousine Co. v. Moloney Coachbuilders,
Inc., 272 F.3d 912, 915-16 (7th Cir. 2001). And in that event
the applicable statute of limitations would be state rather
than federal.
But more is involved in this case. As in Zuill v. Shanahan,
supra, 80 F.3d at 1371, and also Merchant v. Levy, supra,92 F.3d at 56, and Goodman v. Lee, 815 F.2d 1030, 1031-32 (5th
Cir. 1987), Gaiman seeks a declaration that he is a co-owner,
which depends on whether his contribution to the comic-
book characters in question gave him a copyright interest.
That question, on the answer to which his entitlement to an
accounting and other relief depends, cannot be answered
without reference to the Copyright Act, and it therefore
arises under the Act. Smith v. Kansas City Title & Trust Co.,
255 U.S. 180, 199-202 (1921). As we said in Saturday Evening
Post Co. v. Rumbleseat Press, Inc., supra, 816 F.2d at 1194, “the
principle that disputes over the terms of copyright licenses
do not arise under federal law has an exception for cases
where establishing the plaintiff’s right will require interpret-
ing federal law.” One can imagine, if barely, a case in which,
though federal jurisdiction would lie because a copyright
issue was unavoidable, the heart of the case lay elsewhere
Nos. 03-1331, 03-1461 11
and a more suitable statute of limitations than the one in the
Copyright Act could be found. But this is not such a case.
The question whether Gaiman has a copyright is central,
and the Act’s three-year statute of limitations, which applies
to any suit arising under the Act, and not just to a suit for
infringement (for section 507(b) reads: “No civil action shall
be maintained under the provisions of this title unless it is
commenced within three years after the claim accrued”), is
therefore, as the parties agree, clearly applicable to this case.
The parties also rightly agree that the copyright statute of
limitations starts to run when the plaintiff learns, or should
as a reasonable person have learned, that the defendant was
violating his rights, Taylor v. Meirick, 712 F.2d 1112, 1117
(7th Cir. 1983), in this case by repudiating Gaiman’s owner-
ship of copyright. Aalmuhammed v. Lee, 202 F.3d 1227, 1230-
31 (9th Cir. 2000); Merchant v. Levy, supra, 92 F.3d at 53, 56;
Zuill v. Shanahan, supra, 80 F.3d at 1370-71. McFarlane claims
that Gaiman knew, or certainly should have known, no later
than 1997 when Gaiman’s lawyer wrote the demand letter
from which we quoted, that McFarlane was denying that
Gaiman had any copyright interest in the three charac-
ters—that McFarlane had in effect appropriated Gaiman’s
copyright interest. Actually McFarlane thinks that Gaiman’s
copyright claim accrued a lot earlier—in 1993 when Spawn
No. 9 was published with a copyright notice that did not
mention Gaiman. It doesn’t matter; if Gaiman’s claim
accrued before February 1999, the suit is untimely.
McFarlane’s argument, however, reflects a misunder-
standing of both the function of copyright notice and the
nature of the copyright in a compilation. The function of
copyright notice is to warn off copiers, 17 U.S.C. §§ 401(d),
405(b), 406(a); Fantastic Fakes, Inc. v. Pickwick International,
Inc., 661 F.2d 479, 486-87 (5th Cir. 1981); Fleischer Studios,
12 Nos. 03-1331, 03-1461
Inc. v. Ralph A. Freundlich, Inc., 73 F.2d 276, 277 (2d Cir.
1934), not to start the statute of limitations running. There
may be situations in which the notice just happens to put a
copyright owner on notice that someone is acting in dero-
gation of his rights. Remember that a claim inconsistent
with the copyright holder’s interest sets the statute running,
and in particular circumstances a notice indicating that the
defendant was the sole copyright holder might amount to
such a claim. Saenger Organization, Inc. v. Nationwide Ins.
Licensing Associates, Inc., supra, 119 F.3d at 66. But not when
the work is a compilation, as Spawn No. 9 plainly is. For it
contains, besides Gaiman’s contributions and goodness
knows who else’s, a letter-to-the-editors column containing
a number of signed letters from fans plus art work contrib-
uted by fans. As McFarlane concedes, the copyrights on
those letters and on the art work are owned by the fans and
his copyrighting the issue is not a claim to own their
copyrights.
The creator of a compilation is entitled to copyright it
as long as it’s a work “formed by the collection and assem-
bling of preexisting materials or of data that are selected,
coordinated, or arranged in such a way that the resulting
work as a whole constitutes an original work of author-
ship.” 17 U.S.C. § 101; see also § 103. The compiler’s copy-
right entitles him to reprint the contents of the compilation
in future editions of the compilation. 17 U.S.C. § 201(c); New
York Times Co. v. Tasini, 533 U.S. 483, 493-97 (2001). But all
the other rights of copyright remain in the authors of the
contributions, provided the contributions satisfy the criteria
of copyrightability. Therefore the compiler’s copyright
notice is not adverse to the contributors’ copyrights and so
does not put them on notice that their rights are being
challenged. On the contrary, “a single copyright notice
applicable to the collective work as a whole serves
to indicate protection for all the contributions in the col-
Nos. 03-1331, 03-1461 13
lective work, except for advertisements, regardless of the
ownership of copyright in the individual contributions and
whether they have been published previously.” United
States Copyright Office, Circular No. 3: Copyright Notice 3
(2004); see Sanga Music, Inc. v. EMI Blackwood Music, Inc., 55
F.3d 756, 759-60 (2d Cir. 1995); Abend v. MCA, Inc., 863 F.2d
1465, 1469 (9th Cir. 1988), aff’d under the name Stewart v.
Abend, 495 U.S. 207 (1990).
There is a close analogy to the doctrine of adverse pos-
session in the law of physical property. That doctrine
extinguishes the paper title if the property is occupied under
an adverse claim of right for the statutory period. If the
claim is not adverse, as where a tenant occupies the owner’s
property—or, even more to the point, where a cotenant
occupies property, because a joint copyright owner is a
cotenant, e.g., Zuill v. Shanahan, supra, 80 F.3d at 1370;
Childress v. Taylor, 945 F.2d 500, 505 (2d Cir. 1991)—the
statute of limitations does not begin to run. Howell v.
Bradford, 570 So. 2d 643, 645 (Ala. 1990) (per curiam);
Fantasia v. Schmuck, 395 S.E.2d 784, 786 (W. Va. 1990) (per
curiam); Evans v. Covington, 795 S.W.2d 806, 808 (Tex. App.
1990); Chicago, Peoria & St. Louis Ry. v. Tice, 83 N.E. 818, 819-
20 (Ill. 1908). No more does it begin to run when the claim
to the copyright is a compiler’s claim, because such a claim
is not adverse to the contributor’s copyright.
The copyright notices in the paperback books, how-
ever—notices that claim copyright for McFarlane in “all
related characters”—might seem to be an example of our
earlier point that there may be cases in which a copyright
notice denies a contributor’s copyright. But unless there is
a duty of authors to read the copyright pages of works con-
taining their copyrighted materials—and there is not—then
since as we said the purpose of copyright notice is not to
14 Nos. 03-1331, 03-1461
affect the time within which the victim of an infringement
can sue (which is why there is no duty of authors to study
copyright notices), the notice can affect the accrual of the
cause of action only if the victim reads it. The jury was
entitled to believe Gaiman’s testimony that he had never
seen the paperback books in which the suspicious notices
appeared.
In addition to the copyright notices, McFarlane registered
copyright on the issues and the books. But to suppose that
by doing so he provided notice to Gaiman of his exclusive
claim to the characters is again untenable. Authors don’t
consult the records of the Copyright Office to see whether
someone has asserted copyright in their works; and anyway
McFarlane’s registrations no more revealed an intent to
claim copyright in Gaiman’s contributions, as distinct from
McFarlane’s own contributions as compiler and illustrator,
than the copyright notices did. The significance of registra-
tion is that it is a prerequisite to a suit to enforce a copy-
right. More precisely, an application to register must be
filed, and either granted or refused, before suit can be
brought. 17 U.S.C. § 411(a). There is an interesting question,
left open in our recent decision in Chicago Bd. of Education v.
Substance, Inc., 354 F.3d 624, 631 (7th Cir. 2003), and unnec-
essary to decide in this case either, whether if registration is
granted by mistake the registrant may nonetheless sue. All
that is important in this case is that it is no more the purpose
of registration to start statutes of limitations running than it
is the purpose of the copyright notice itself to do so.
We are therefore led to question the suggestion in Saenger
Organization, Inc. v. Nationwide Ins. Licensing Associates, Inc.,
supra, 119 F.3d at 66, that registration provides constructive
notice of a claim of ownership. That would not, to repeat,
matter in a case such as this in which the registered work is
a compilation. But it probably wouldn’t matter in any case.
Nos. 03-1331, 03-1461 15
(We further note that there was actual as well as construc-
tive notice in Saenger.) For one thing, the court was wrong
to say that registration gives constructive notice. What the
Act actually says is that recording a document in the
Copyright Office gives constructive notice of the facts in the
document if the document identifies a registered work. 17
U.S.C. § 205(c). The purpose is to establish priority in the
event of disputes, in bankruptcy court or elsewhere, over
creditors’ rights. In re World Auxiliary Power Co., 303 F.3d
1120, 1125-27 (9th Cir. 2002); Broadcast Music, Inc. v. Hirsch,
104 F.3d 1163, 1165-67 (9th Cir. 1997); 3 Melville B. Nimmer
& David Nimmer, Nimmer on Copyright § 10.07 (2003). A
creditor who wants to know whether he can seize a debtor’s
copyright consults the register; a co-author does not.
There is also nothing in the demand letter that Gaiman’s
lawyer wrote McFarlane to indicate that Gaiman believed
McFarlane was denying Gaiman’s joint ownership of the
copyrights on the three characters. The issue of copyright
ownership is distinct from that of the copyright owner’s
entitlement to royalties when, as in this case, he is not the
publisher of the copyrighted work. The fact that the author
owns the copyright doesn’t determine how he and the
publisher will divide the income from the sale of copies of
the work. That is a matter of contract. Sometimes author and
publisher disagree over the meaning of their contract (and
it is the contract that will specify the division of income) or
whether the publisher is adhering to the contract in good
faith. Disagreement was especially likely here, where the
parties’ contract not only was oral but failed to specify the
division of income beyond what could be inferred from
McFarlane’s promise to treat Gaiman better than “the big
guys” (in particular, it seems, DC Comics) treated Gaiman.
The existence of a dispute over the terms of a publication
contract does not alert the author to a challenge to his copy-
16 Nos. 03-1331, 03-1461
right. Quite the contrary, it presumes that he owns the
copyright. If his work is in the public domain, the publisher
could publish it without the author’s permission, so would
hardly be likely to have promised to pay him for the “right”
to publish it—he would already have (along with the rest of
the world) the right to publish it. Sending the kind of
demand letter that Gaiman’s lawyer sent no more suggests
doubt about the legal basis for the demand than sending a
collection letter, of which the demand letter was a variant,
suggests doubt that the writer is entitled to the debt that he
is seeking to collect.
There was other evidence that right up until McFarlane’s
1999 letter, receipt of which clearly did start the statute
of limitations running, he acknowledged or at least didn’t
deny Gaiman’s ownership of copyrights in the three char-
acters. There was the reference in the royalty reports to
Gaiman’s being the “co-creater” of the characters, the fact
that McFarlane let pass without comment Gaiman’s claim in
the demand letter to have created the characters, and the
payment to Gaiman of royalties on the statuettes, payment
that would make most sense if they were derivative works
of copyrighted characters—with Gaiman the (joint) owner
of the copyrights. McFarlane argues that he could have
given Gaiman these royalties pursuant to contract, and he
points out that under Gaiman’s work for hire agreement
with DC Comics Gaiman received payments denominated
as “royalties” even though he had no copyrights. But
McFarlane also contends that DC Comics would not have
paid Gaiman royalties on the statuettes, so what would have
been Gaiman’s entitlement to such royalties from him
unless Gaiman had a copyright interest?
We have referred to statements and actions by McFarlane
that seem positively to acknowledge Gaiman’s copyrights,
and these sort of “lulling” comments might seem to suggest
Nos. 03-1331, 03-1461 17
an alternative basis for rejecting McFarlane’s statute of
limitations defense—the doctrine of equitable estoppel.
Hentosh v. Herman M. Finch University of Health Sciences/The
Chicago Medical School, 167 F.3d 1170, 1174 (7th Cir. 1999);
Singletary v. Continental Illinois National Bank & Trust Co., 9
F.3d 1236, 1241 (7th Cir. 1993); Buttry v. General Signal Corp.,
68 F.3d 1488, 1493 (2d Cir. 1995). But that is a tolling
doctrine, not an accrual doctrine, and tolling doctrines do
not automatically give a person the full statutory period for
suit. Cada v. Baxter Healthcare Corp., 920 F.2d 446, 452-53 (7th
Cir. 1990). Suppose the claim accrued in Year 1 and the
statute of limitations is three years, but because of lulling
comments by the violator the victim doesn’t learn of his
claim until Year 10. He cannot just sit on this haunches until
Year 13, because his claim did not accrue in Year 10; he
must sue as soon as it is feasible to do so.
Or so, at least, some cases hold. Shropshear v. Corporation
Counsel, 275 F.3d 593, 597-99 (7th Cir. 2001); Hi-Lite Products
Co. v. American Home Products Corp., 11 F.3d 1402, 1406-
07 (7th Cir. 1993) (Illinois law); Butler v. Mayer, Brown &
Platt, 704 N.E.2d 740, 745 (Ill. App. 1998). Others, distin-
guishing equitable estoppel, where the defendant is respon-
sible for the plaintiff’s delay, from equitable tolling, where
he is not, hold that in the former case though not the latter
the plaintiff can subtract the entire period of the delay
induced by the defendant, or in other words can extend the
statutory period by the full amount of the delay. Doe v. Blue
Cross & Blue Shield United of Wisconsin, 112 F.3d 869, 876 (7th
Cir. 1997); Ott v. Midland-Ross Corp., 600 F.2d 24, 32-33 (6th
Cir. 1979). At least one case takes a middle position: the
plaintiff is presumptively entitled to subtract the entire
period. Buttry v. General Signal Corp., supra, 68 F.3d at 1494.
We needn’t try to untangle this knot. For while Gaiman
waited the full statutory period (minus a month) to sue,
18 Nos. 03-1331, 03-1461
without an excuse that would entitle him to invoke a tolling
doctrine that requires due diligence, he doesn’t need an
excuse because the jury found that his claim did not accrue
more than three years before he sued.
The case for rejecting the statute of limitations defense
was not open and shut. Gaiman was an experienced author,
and may have smelled a rat early on. The jury could have
disbelieved his denial that he saw the “related characters”
copyright notices in the paperback books. And the fact that
he was content with compensation no greater than what he
received from DC Comics for work made for hire allows an
inference that the real deal between him and McFarlane was
that McFarlane would own the copyrights but pay Gaiman
as well as or better than DC Comics, which also owned the
copyrights on Gaiman’s work, did. If better, then maybe
paying him royalties on the statuettes was McFarlane’s
method of treating Gaiman better than DC Comics did. But
all this is just to say that it was a close case. We cannot say
that the jury was unreasonable to find that not until Febru-
ary of 1999 was Gaiman placed on notice that McFarlane
was denying that Gaiman had copyrights on the three
characters, and thus to reject the statute of limitations
defense.
But we must consider McFarlane’s alternative ground for
reversal—that Medieval Spawn and Cogliostro are not cop-
yrightable. (Partial reversal, actually, because McFarlane
concedes that Gaiman is a joint owner of Angela.) This
ground may seem inconsistent with McFarlane’s contention
that the “all related characters” copyright notice established
that he, not Gaiman, owned the copyrights on Medieval
Spawn and Cogliostro. If they were not copyrightable,
McFarlane had no copyright in them. In fact, it became
apparent at argument that McFarlane thinks that he owns
copyright on them but that Gaiman doesn’t. His theory
Nos. 03-1331, 03-1461 19
seems to be that they became copyrightable, after Spawn No.
9 was published, as a result of further work done on them
by him. We think they were copyrightable from the start,
and that Gaiman owns the copyrights jointly with
McFarlane. To explain this we must say more about the
characters, black and white pictures of whom we append to
this opinion. A detailed description of the characters may be
found, along with color pictures, at
http://spawn.home.sapo.pt/Characters.html.
McFarlane’s original Spawn, Al Simmons, was a tall fig-
ure clad in what looks like spandex (it is actually “a neural
parasite”) beneath a huge blood-red cloak, making him a
kind of malevolent Superman figure, although actually
rather weak and stupid. His face is a shiny plastic oval with
eyeholes but no other features. Gaiman decided to begin
Spawn No. 9 with a different Spawn, whom he called
“Olden Days Spawn.” He explained to McFarlane that
“[Olden Days] Spawn rides up on a huge horse. He’s wear-
ing a kind of Spawn suit and mask, although the actual
costume under the cloak is reminiscent of a suit of armour.”
McFarlane drew “Olden Days Spawn” as (in the words
of his brief) “essentially Spawn, only he dressed him as
a knight from the Middle Ages with a shield bearing the
Spawn logo.” To make him credibly medieval, Gaiman in
his script has Olden Days Spawn say to a damsel in ap-
parent distress, “Good day, sweet maiden.” The “damsel”
is none other than Angela, a “maiden” only in the sense of
making her maiden appearance in Spawn No. 9. Angela is in
fact a “warrior angel and villain” who, scantily clad in a
dominatrix outfit, quickly dispatches the unsuspecting
Olden Days Spawn with her lance.
We learn that this event occurred in the thirteenth century,
and the scene now shifts to the present day. Angela is
dressed as a modern professional woman. The Al Simmons
20 Nos. 03-1331, 03-1461
Spawn is lurking about in an alley and it is here that we
meet Count Cogliostro for the first time. McFarlane had
wanted a character who would be “basically. . . the wisened
[sic] sage that could sort of come down and give all the
information and assimilate it.” Gaiman interpreted this as
an instruction to create “a character who can talk to Spawn
and tell him a little bit more about what’s going on in the
background and can move the story along.” So he created
an “old man, who starts talking to Spawn and then telling
him all these sort of things about Spawn’s super powers that
Spawn couldn’t have known. And when you first meet him
[Cogliostro] in the alley you think he’s a drunken bum with
the rest of them, and then we realize no, he’s not. He’s some
kind of mysterious stranger who knows things.”
Gaiman further described Cogliostro in a draft of Spawn
No. 9 as “a really old bum, a skinny, balding old man,
with a grubby greyish-yellow beard, like a skinny santa
claus. He calls himself Count Nicholas Cagliostro” (later
spelled Cogliostro). In a brief scene, Cogliostro, drawn
by McFarlane as an old man with a long grey beard who
faintly resembles Moses—McFarlane had been dissatisfied
with Gaiman’s verbal description, which made Cogliostro
sound like a wino—explains to Simmons-Spawn some of the
powers of Hellspawn of which Simmons is unaware.
Cogliostro displays his mysterious wisdom by calling him
“Simmons,” to the latter’s bafflement—how could
Cogliostro have known? Angela then appears in her domi-
natrix costume, there is another duel, and she vanquishes
Simmons (whose powers are in fact unimpressive), but does
not kill him. He then blows himself up by accidentally
pushing the wrong button on Angela’s lance, which she had
left behind. Happily he is not killed—merely (it seems)
translated into another dimension—and will reappear in
subsequent issues of Spawn.
Nos. 03-1331, 03-1461 21
McFarlane makes two arguments for why Gaiman does
not have copyright in Medieval Spawn (the name that
McFarlane settled on for Olden Days Spawn) or Cogliostro.
The first is that all that Gaiman contributed was the idea for
the characters, and ideas are not copyrightable, only
expression is and the expression was due to McFarlane’s
drawing of the characters. It is true that people who con-
tribute merely nonexpressive elements to a work are not
copyright owners. As we said in Seshadri v. Kasraian, supra,130 F.3d at 803, “the assistance that a research assistant or
secretary or draftsman or helpfully commenting colleague
provides in the preparation of a scholarly paper does
not entitle the helper to claim the status of a joint author.”
There has to be some original expression contributed by
anyone who claims to be a co-author, and the rule (we’ll
consider an exception momentarily) is that his contribu-
tion must be independently copyrightable. E.g., Erickson
v. Trinity Theatre, Inc., supra, 13 F.3d at 1071; Aalmuhammed
v. Lee, supra, 202 F.3d at 1231; 1 William F. Patry, Copyright
Law and Practice 362-65 (1994). Had someone merely re-
marked to McFarlane one day, “you need a medieval
Spawn” or “you need an old guy to move the story for-
ward,” and McFarlane had carried it from there, and if later
a copyeditor had made some helpful editorial changes,
neither the suggester nor the editor would be a joint owner.
Cf. Erickson v. Trinity Theatre, Inc., supra, 13 F.3d at 1064,
1071-72. Otherwise almost every expressive work would be
a jointly authored work, and copyright would explode.
But where two or more people set out to create a character
jointly in such mixed media as comic books and motion
pictures and succeed in creating a copyrightable character,
it would be paradoxical if though the result of their joint
labors had more than enough originality and creativity to be
copyrightable, no one could claim copyright. That would be
peeling the onion until it disappeared. The decisions that
22 Nos. 03-1331, 03-1461
say, rightly in the generality of cases, that each contributor
to a joint work must make a contribution that if it stood
alone would be copyrightable weren’t thinking of the case
in which it couldn’t stand alone because of the nature of the
particular creative process that had produced it.
Here is a typical case from academe. One professor has
brilliant ideas but can’t write; another is an excellent writer,
but his ideas are commonplace. So they collaborate on an
academic article, one contributing the ideas, which are not
copyrightable, and the other the prose envelope, and unlike
the situation in the superficially similar case of Balkin v.
Wilson, 863 F. Supp. 523 (W.D. Mich. 1994), they sign as
coauthors. Their intent to be the joint owners of the copy-
right in the article would be plain, and that should be
enough to constitute them joint authors within the meaning
of 17 U.S.C. § 201(a). This is the valid core of the Nimmers’
heretical suggestion that “if authors A and B work in
collaboration, but A’s contribution is limited to plot ideas
that standing alone would not be copyrightable, and B
weaves the ideas into a completed literary expression, it
would seem that A and B are joint authors of the resulting
work.” 1 Nimmer & Nimmer, supra, § 6.07, p. 6-23; see also
1 Patry, supra, at 365-66.
The contents of a comic book are typically the joint work
of four artists—the writer, the penciler who creates the art
work (McFarlane), the inker (also McFarlane, in the case of
Spawn No. 9, but it would often be a different person from
the penciler) who makes a black and white plate of the art
work, and the colorist who colors it. The finished product is
copyrightable, yet one can imagine cases in which none of
the separate contributions of the four collaborating artists
would be. The writer might have contributed merely a stock
character (not copyrightable, as we’re about to see) that
achieved the distinctiveness required for copyrightability
Nos. 03-1331, 03-1461 23
only by the combined contributions of the penciler, the
inker, and the colorist, with each contributing too little to
have by his contribution alone carried the stock character
over the line into copyright land.
McFarlane’s second argument against the copyrightability
of Medieval Spawn and Cogliostro appeals to the confus-
ingly named doctrine of “scènes à faire” (literally “scenes
for action,” a theatrical term meaning the climactic scene in
a play or opera, which is not the legal meaning). Related to
the fundamental idea-expression dichotomy that we’ve
already mentioned, the doctrine teaches that “a copyright
owner can’t prove infringement by pointing to features of
his work that are found in the defendant’s work as well but
that are so rudimentary, commonplace, standard, or
unavoidable that they do not serve to distinguish one work
within a class of works from another.” Bucklew v. Hawkins,
Ash, Baptie & Co., 329 F.3d 923, 929 (7th Cir. 2003); see also
Reed-Union Corp. v. Turtle Wax, Inc., 77 F.3d 909, 913-14 (7th
Cir. 1996); Atari, Inc. v. North American Philips Consumer
Electronics Corp., 672 F.2d 607, 616-17 (7th Cir. 1982);
Williams v. Crichton, 84 F.3d 581, 587-89 (2d Cir. 1996). If
standard features could be used to prove infringement, not
only would there be great confusion because it would be
hard to know whether the alleged infringer had copied the
feature from a copyrighted work or from the public domain,
but the net of liability would be cast too wide; authors
would find it impossible to write without obtaining a
myriad of copyright permissions.
A stock character is a stock example of the operation of
the doctrine, e.g., Cavalier v. Random House, Inc., 297 F.3d
815, 824-25 (9th Cir. 2002); Williams v. Crichton, supra, 84
F.3d at 588-89, and a drunken old bum is a stock character.
Walker v. Time Life Films, Inc., 784 F.2d 44, 50 (2d Cir. 1986).
If a drunken old bum were a copyrightable character,
24 Nos. 03-1331, 03-1461
so would be a drunken suburban housewife, a gesticu-
lating Frenchman, a fire-breathing dragon, a talking cat, a
Prussian officer who wears a monocle and clicks his heels,
a masked magician, Rice v. Fox Broadcasting Co., 330 F.3d
1170, 1175-76 (9th Cir. 2003), and, in Learned Hand’s mem-
orable paraphrase of Twelfth Night, “a riotous knight who
kept wassail to the discomfort of the household, or a vain
and foppish steward who became amorous of his mistress.”
Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d
Cir. 1930). It would be difficult to write successful works
of fiction without negotiating for dozens or hundreds of
copyright licenses, even though such stereotyped characters
are the products not of the creative imagination but of
simple observation of the human comedy.
McFarlane argues that even as dolled up by the penciler,
the inker, and the colorist, Cogliostro is too commonplace to
be copyrightable. Gaiman could not copyright a character
described merely as an unexpectedly knowledgeable old
wino, that is true; but that is not his claim. He claims to be
the joint owner of the copyright on a character that has a
specific name and a specific appearance. Cogliostro’s age,
obviously phony title (“Count”), what he knows and says,
his name, and his faintly Mosaic facial features combine to
create a distinctive character. No more is required for a
character copyright. DC Comics Inc. v. Reel Fantasy, Inc., 696
F.2d 24, 25, 28 (2d Cir. 1982) (Batman, though assumed
rather than actually determined to be copyrightable); Walt
Disney Productions v. Air Pirates, 581 F.2d 751, 753-55 (9th
Cir. 1978) (Mickey Mouse et al.); Detective Comics v. Bruns
Publications, 111 F.2d 432, 433-34 (2d Cir. 1940) (Superman);
Fleischer Studios, Inc. v. Ralph A. Freundlich, Inc., supra,
73 F.2d at 278 (Betty Boop). As long as the character is
distinctive, other authors can use the stock character out of
which it may have been built without fear (well, without too
much fear) of being accused as infringers.
Nos. 03-1331, 03-1461 25
We are mindful that the Ninth Circuit denied copy-
rightability to Dashiell Hammett’s famously distinctive
detective character Sam Spade in Warner Bros. Pictures, Inc.
v. Columbia Broadcasting System, Inc., 216 F.2d 945 (9th
Cir. 1954). That decision is wrong, though perhaps under-
standable on the “legal realist” ground that Hammett was
not claiming copyright in Sam Spade—on the contrary, he
wanted to reuse his own character but to be able to do so he
had to overcome Warner Brothers’ claim to own the copy-
right. The Ninth Circuit has killed the decision, see Olson v.
National Broadcasting Co., 855 F.2d 1446, 1452 and n. 7 (9th
Cir. 1988); Walt Disney Productions v. Air Pirates, supra, 581
F.2d at 755 and n. 11, though without the usual obsequies,
but even if the decision were correct and were binding
authority in this circuit, it would not rule this case. The
reason is the difference between literary and graphic
expression. The description of a character in prose leaves
much to the imagination, even when the description is de-
tailed—as in Dashiel Hammett’s description of Sam Spade’s
physical appearance in the first paragraph of The Maltese
Falcon: “Samuel Spade’s jaw was long and bony, his chin
a jutting v under the more flexible v of his mouth. His nos-
trils curved back to make another, smaller, v. His yellow-
grey eyes were horizontal. The v motif was picked up again
by thickish brows rising outward from twin creases above
a hooked nose, and his pale brown hair grew down—from
high flat temples—in a point on his forehead. He looked
rather pleasantly like a blond satan.” Even after all this, one
hardly knows what Sam Spade looked like. But everyone
knows what Humphrey Bogart looked like. A reader of
unillustrated fiction completes the work in his mind; the
reader of a comic book or the viewer of a movie is passive.
That is why kids lose a lot when they don’t read fiction,
even when the movies and television that they watch are
aesthetically superior.
26 Nos. 03-1331, 03-1461
Although Gaiman’s verbal description of Cogliostro may
well have been of a stock character, once he was drawn and
named and given speech he became sufficiently distinctive
to be copyrightable. Gaiman’s contribution may not have
been copyrightable by itself, but his contribution had ex-
pressive content without which Cogliostro wouldn’t have
been a character at all, but merely a drawing. The expressive
work that is the comic-book character Count Nicholas
Cogliostro was the joint work of Gaiman and McFarlane—
their contributions strike us as quite equal—and both are
entitled to ownership of the copyright.
Medieval Spawn may seem to present a closer case
than Cogliostro so far as copyrightability is concerned, be-
cause he has no name in Spawn No. 9. In fact he has never
been named—“Medieval Spawn” is a description, not a
proper name. But the Lone Ranger doesn’t have a proper
name either (at least not one known to most of his audi-
ence—actually he does have a proper name, John Reid), so
that can’t be critical. A more telling objection to copyright-
ability is that the identifier, “Medieval Spawn,” was added
by McFarlane in subsequent issues of Spawn to which
Gaiman did not contribute. Only his costume and manner
of speech, together with the medieval background, distin-
guish him in Spawn No. 9 from other Hellspawn.
But that is enough expressive content for copyrightability,
because Spawn itself (the original Spawn, né Al Simmons)
is not a stock character (McFarlane would have a heart
attack if we said he was). Spawn is copyrightable, and the
question is simply whether Medieval Spawn is sufficiently
distinct from Spawn also to be copyrightable as a derivative
work. 17 U.S.C. §§ 101, 103; Lee v. A.R.T. Co., 125 F.3d 580,
581-82 (7th Cir. 1997); Gracen v. Bradford Exchange, 698 F.2d
300, 305 (7th Cir. 1983); Entertainment Research Group, Inc. v.
Nos. 03-1331, 03-1461 27
Genesis Creative Group, Inc., 122 F.3d 1211, 1219-20 (9th Cir.
1997); Woods v. Bourne Co., 60 F.3d 978, 990 (2d Cir. 1995).
The purpose of requiring that a derivative work to be
copyrightable be significantly different from the copy-
righted original is twofold: to avoid the confusion that
would be created if two indistinguishable works were
copyrighted, Pickett v. Prince, 207 F.3d 402, 405 (7th Cir.
2000); Gracen v. Bradford Exchange, supra, 698 F.2d at 304;
Entertainment Research Group, Inc. v. Genesis Creative Group,
Inc., supra, 122 F.3d at 1220, and to prevent a copyright
owner from extending his copyright beyond the statutory
period by making an identical work as the statutory period
was nearing its end, calling it a derivative work, and copy-
righting it. Lee v. A.R.T. Co., supra, 125 F.3d at 581-83. These
are really one point rather than two, since the second ploy
would work only because a copier would find it difficult to
prove that he had copied the expired original rather than
the unexpired derivative work. Just suppose that the
copyright on Work A expires in 2000 and the copyright on
B in 2020, and in 2001 someone produces a work indistin-
guishable from either and claims that he is copying A, not
B, and so is not an infringer, and the owner of the unexpired
copyright on B replies no, it’s B you’re copying.
That is no problem here. A Spawn who talks medieval
and has a knight’s costume would infringe Medieval
Spawn, and if he doesn’t talk medieval and doesn’t look like
a knight then he would infringe Spawn.
To summarize, we find no error in the district court’s
decision, and since the decision gave Gaiman all the relief
he sought, there is no need to consider the cross-appeal.
AFFIRMED.
28 Nos. 03-1331, 03-1461
APPENDIX:
SPAWN, MEDIEVAL SPAWN, ANGELA, AND COUNT
NICHOLAS COGLIOSTRO
Nos. 03-1331, 03-1461 29
SPAWN
30 Nos. 03-1331, 03-1461
MEDIEVAL SPAWN
Nos. 03-1331, 03-1461 31
ANGELA
32 Nos. 03-1331, 03-1461
COGLIOSTRO
Nos. 03-1331, 03-1461 33
A true Copy:
Teste:
_____________________________
Clerk of the United States Court of
Appeals for the Seventh Circuit
USCA-02-C-0072—2-24-04