Loyola University Chicago School of Law, JD 2023
The Walt Disney Company has filed multiple lawsuits in the hopes of retaining the copyright to some of their most popular Marvel superheroes, including the likes of blockbuster characters such as Spider-Man and Thor. While Marvel Entertainment, a subsidiary of The Walt Disney Company, has been in multiple long-term licensing deals to maintain the rights to these characters for many years, some of those are approaching a potential expiration date as the original artists and illustrators of these characters seek to reclaim their creative rights.
The real superhero origin story
Marvel has spent over a decade meticulously crafting the Marvel Cinematic Universe (MCU), creating one of the highest-grossing franchises of all time. However, many of the beloved superheroes that we have all come to know and love through the Marvel movies originated over half a century ago in Marvel comic books. For example, Iron Man, created by Stan Lee, Lawrence Lieber, Don Heck, and Jack Kirby, first appeared in a comic book in 1963.
In the spring of 2021, intellectual property attorney Marc Toberoff served Marvel with notices of copyright termination on behalf of five clients. These clients include comic writer and artist Lawrence Lieber (brother of the legendary Stan Lee), comic illustrators Steve Ditko and Don Heck, and the heirs of the writers Don Rico and Gene Colan. They are all seeking to reclaim the legal rights of the many Marvel characters that they had a hand in creating. The full list includes Spider-Man, Doctor Strange, Iron Man, Black Widow, Hawkeye, Falcon, Captain Marvel, Blade, Thor, and Ant-Man. These characters have all played major parts on-screen for Marvel since the beginning of the MCU and Blade is due to appear in a future Marvel project. Disney has subsequently sued to invalidate the copyright termination notices and retain the complete rights to these characters.
The reclamation attempts here come from a provision in the Copyright Act of 1976 that allows authors or their heirs to regain ownership of a product after a certain number of years if they sold the rights or entered into long-term licensing deals before 1976. This potentially allows these creators to cancel the transfer of copyrights and enables them to retain ownership of their original works.
Here, Disney is claiming that these characters were all created as “works for hire” for Marvel. This means that because the works were made by its employees in the scope of their employment, Marvel is the lawful copyright owner. This is because, under the Copyright Act, there are no termination rights for “works for hire” creations because in these scenarios, the employer is credited as the “author” for the purposes of copyright ownership.
Courts have historically applied the “instance and expense test” when determining whether a work was made for hire under the Copyright Act. Under this test, courts find a work made for hire when the motivating factor in producing the work was the employer who induced the creation, and that employer then has the right to direct and supervise the manner to which the writer performs their work. This test is fact-dependent and evaluated on a case-by-case basis.
This is not Disney’s first time wading into the murkiness of copyright complications. They ultimately won a case they had litigated for nearly two decades concerning a Winnie the Pooh rights-infringement. Disney has also garnered a reputation for being a bully when it comes to intellectual property rights, as they have consistently pushed the boundaries of infringement in more gray areas of the law. In fact, Disney’s persistence toward trying to extend various copyright terms led to a law derisively named the Mickey Mouse Protection Act (also known as the Copyright Term Extension Act).
Potential future implications
While this case focuses on a specific cluster of characters, its outcome could have widespread implications for many comic book creators whose characters have gone on to become large, financially successful properties on the screen. If the creators here are successful in their lawsuit and are able to terminate the copyright transfers, it could potentially cost Disney billions of dollars given the huge revenues from Marvel in recent years. We may not have to wait too long for an outcome in this case, however, as the termination notices indicated the creators’ intent to regain copyrights to some of the characters as soon as 2023.