Tweet
AN ANALYSIS OF THE ACTION #1 RULING
--------------------------------------------------------------------------------
by Tom Bondurant
As you-all know by now, Judge Stephen G. Larson of the United States District Court, Central District of California, has ruled in favor of Jerry Siegel’s widow and daughter, Joanne Siegel and Laura Siegel Larson, in their suit to reclaim Jerry Siegel’s rights to the Superman material contained in Action Comics #1. Pursuant to the Copyright Act of 1976, the Siegel heirs had sued Warner Bros. Entertainment, Time Warner, and DC Comics.
The Copyright Act of 1976 gave authors and their heirs “a chance to retain the extended renewal term in their work and then re bargain for it when its value in the marketplace was known.” (Opinion, p. 62.) In passing the Act, Congress’ intent (quoted by Judge Larson) was to address the “unequal bargaining position of authors, resulting in part from the impossibility of determining a work’s prior value until it has been exploited.” Id (citation omitted).
Accordingly, on April 3, 1997, the Siegel heirs delivered notices of termination to DC which covered various agreements entered into between Jerry Siegel and Joe Shuster, and DC and its predecessors (hereinafter just called “DC” for convenience). These agreements included the original 1938 assignment of rights, a 1948 stipulation which concerned subsequent litigation, and the 1975 agreement in which DC agreed to pay pensions to the two creators. Id. at 20. The central question of this litigation was whether those notices of termination were valid and enforceable.
However, because that question contained many smaller issues, Judge Larson’s opinion covers 72 pages, not including attachments (among them a color reproduction of the first Superman story from Action #1). The Judge observed that
although [the current case is] couched in terms of terminating the 1938 grant [of rights], [it] is in effect one for co ownership of the copyright in the Superman material contained in Action Comics, Vol. 1, because, if successful, plaintiffs would gain only a joint ownership interest in that material with DC Comics, owing to the fact that Shuster left no heirs who could simultaneously seek to terminate his half of the grant in the material.
Id at 54. As with his July 2007 opinion in the Superboy-related lawsuit, Judge Larson’s opinion here goes into considerable detail about the creation of Superman and the character’s progress from idea to potential newspaper strip to Action #1's cover feature. It’s an excellent summary which upon first reading might seem trivial, but it does bear significantly on the ruling.
It’s pretty well-known that the Superman story which Jerry Siegel and Joe Shuster shopped around was created for newspaper syndication. DC subsequently told the two that their four weeks’ worth of strips would have to be reformatted into a 13-page comic-book story. Id. at 9. Because the Copyright Act’s relevant termination provision doesn’t apply to “work for hire,” DC argued that the story’s expansion and revisions made it “work for hire,” at least in part. Judge Larson, quoting a prior ruling, rejected this argument:
In the case before us, Superman and his miraculous powers were completely developed long before the employment relationship was instituted. The record indicates that the revisions directed by the defendants were simply to accommodate Superman to a magazine format. We do not consider this sufficient to create the presumption that the [comic book] strip was a work for hire.
Id at 42 (quoting 508 F.2d at 914).
The Judge also ruled that the notices were not deficient for failing to list a related 1948 “consent judgment”; that the parties’ settlement negotiations (conducted off and on between 1997 and 2004) did not produce any enforceable agreement which would have resolved the Siegels’ claims; and that thanks to an agreement among the parties, the relevant statute of limitations had not run out before the current suit was brought. Id at 48-50, 57-62.
However, the ruling isn’t entirely favorable to the Siegel heirs. The Judge ruled that DC retains the rights to material contained on the cover of Action #1, because it used that cover in black-and-white ads in More Fun Comics and Detective Comics prior to Action #1's publication date (April 18, 1938). Id at 39-40. The Judge stated specifically that “defendants may continue to exploit the image of a person with extraordinary strength who wears a black and white leotard and cape.” Id at 40.
Of course, that still leaves a considerable amount of material for the Siegels, including “Superman’s name, his alter ego, his compatriots, his origins, his mission to serve as a champion
of the oppressed, [and] his heroic abilities in general,” and more particularly “the entire storyline from Action Comics, Vol. 1, Superman’s distinctive blue leotard (complete with its inverted triangular crest across the chest with a red ‘S’ on a yellow background), a red cape and boots, and his superhuman ability to leap tall buildings, repel bullets, and run faster than a locomotive.” Id at 40-41.
As a practical matter, though, the Judge did rule that the Siegel heirs aren’t entitled to a share of the foreign profits from Superman. (Foreign profits would be outside the scope of the federal Copyright Act.) Id at 63-66. The Judge also declined to award the Siegel heirs profits gained from “the use of Superman trademarks that ‘are purely attributable to [those] trademark rights,’
and from its use of unaltered pre termination derivative works.” Id at 68. If I read that correctly, it means the Siegel heirs won’t see any money from those S-shield decals you see on car windows.
Furthermore, the ruling states that “derivative works created during the grant (meaning up until the termination effective date) may continue to be exploited after termination.” Id. I take that to mean that DC can keep all of its profits from any such “unaltered” derivative works, which may include a wealth of material derived from the Action #1 story and produced from 1938 to the late 1990s. The Judge didn’t rule on the issue of “altered” material, which may include such things as a pre-termination story (from, say, the Weisinger era or even the Byrne issues) reworked in the past few years. Id at 67.
Finally, the Judge declined to rule on the issue of profits “made through DC Comics’ exploitation of the Superman copyright to that of its corporate siblings and parent who are licensees to that copyright’s movie and television rights.” Id at 24, 71. The Judge was concerned that the close relationships between DC and its corporate relatives may produce inequitable “sweetheart deals” which would require the court to step in; but he needed more evidence before ruling on those issues. Id at 71.
I can’t imagine that this represents the ultimate resolution of this case. The ruling anticipates a trial on the issue of profits generated by movie and TV adaptations of Superman. Following that, DC, Warner Bros., and Time Warner will almost certainly appeal. The Siegel heirs’ Superboy suit is still ongoing as well. However, this remains a significant victory for the Siegel heirs.
Tom Bondurant, who has been following this case since its early days, is an attorney in Germantown, TN, and a regular contributor to [email protected] Newsarama.
--------------------------------------------------------------------------------
by Tom Bondurant
As you-all know by now, Judge Stephen G. Larson of the United States District Court, Central District of California, has ruled in favor of Jerry Siegel’s widow and daughter, Joanne Siegel and Laura Siegel Larson, in their suit to reclaim Jerry Siegel’s rights to the Superman material contained in Action Comics #1. Pursuant to the Copyright Act of 1976, the Siegel heirs had sued Warner Bros. Entertainment, Time Warner, and DC Comics.
The Copyright Act of 1976 gave authors and their heirs “a chance to retain the extended renewal term in their work and then re bargain for it when its value in the marketplace was known.” (Opinion, p. 62.) In passing the Act, Congress’ intent (quoted by Judge Larson) was to address the “unequal bargaining position of authors, resulting in part from the impossibility of determining a work’s prior value until it has been exploited.” Id (citation omitted).
Accordingly, on April 3, 1997, the Siegel heirs delivered notices of termination to DC which covered various agreements entered into between Jerry Siegel and Joe Shuster, and DC and its predecessors (hereinafter just called “DC” for convenience). These agreements included the original 1938 assignment of rights, a 1948 stipulation which concerned subsequent litigation, and the 1975 agreement in which DC agreed to pay pensions to the two creators. Id. at 20. The central question of this litigation was whether those notices of termination were valid and enforceable.
However, because that question contained many smaller issues, Judge Larson’s opinion covers 72 pages, not including attachments (among them a color reproduction of the first Superman story from Action #1). The Judge observed that
although [the current case is] couched in terms of terminating the 1938 grant [of rights], [it] is in effect one for co ownership of the copyright in the Superman material contained in Action Comics, Vol. 1, because, if successful, plaintiffs would gain only a joint ownership interest in that material with DC Comics, owing to the fact that Shuster left no heirs who could simultaneously seek to terminate his half of the grant in the material.
Id at 54. As with his July 2007 opinion in the Superboy-related lawsuit, Judge Larson’s opinion here goes into considerable detail about the creation of Superman and the character’s progress from idea to potential newspaper strip to Action #1's cover feature. It’s an excellent summary which upon first reading might seem trivial, but it does bear significantly on the ruling.
It’s pretty well-known that the Superman story which Jerry Siegel and Joe Shuster shopped around was created for newspaper syndication. DC subsequently told the two that their four weeks’ worth of strips would have to be reformatted into a 13-page comic-book story. Id. at 9. Because the Copyright Act’s relevant termination provision doesn’t apply to “work for hire,” DC argued that the story’s expansion and revisions made it “work for hire,” at least in part. Judge Larson, quoting a prior ruling, rejected this argument:
In the case before us, Superman and his miraculous powers were completely developed long before the employment relationship was instituted. The record indicates that the revisions directed by the defendants were simply to accommodate Superman to a magazine format. We do not consider this sufficient to create the presumption that the [comic book] strip was a work for hire.
Id at 42 (quoting 508 F.2d at 914).
The Judge also ruled that the notices were not deficient for failing to list a related 1948 “consent judgment”; that the parties’ settlement negotiations (conducted off and on between 1997 and 2004) did not produce any enforceable agreement which would have resolved the Siegels’ claims; and that thanks to an agreement among the parties, the relevant statute of limitations had not run out before the current suit was brought. Id at 48-50, 57-62.
However, the ruling isn’t entirely favorable to the Siegel heirs. The Judge ruled that DC retains the rights to material contained on the cover of Action #1, because it used that cover in black-and-white ads in More Fun Comics and Detective Comics prior to Action #1's publication date (April 18, 1938). Id at 39-40. The Judge stated specifically that “defendants may continue to exploit the image of a person with extraordinary strength who wears a black and white leotard and cape.” Id at 40.
Of course, that still leaves a considerable amount of material for the Siegels, including “Superman’s name, his alter ego, his compatriots, his origins, his mission to serve as a champion
of the oppressed, [and] his heroic abilities in general,” and more particularly “the entire storyline from Action Comics, Vol. 1, Superman’s distinctive blue leotard (complete with its inverted triangular crest across the chest with a red ‘S’ on a yellow background), a red cape and boots, and his superhuman ability to leap tall buildings, repel bullets, and run faster than a locomotive.” Id at 40-41.
As a practical matter, though, the Judge did rule that the Siegel heirs aren’t entitled to a share of the foreign profits from Superman. (Foreign profits would be outside the scope of the federal Copyright Act.) Id at 63-66. The Judge also declined to award the Siegel heirs profits gained from “the use of Superman trademarks that ‘are purely attributable to [those] trademark rights,’
and from its use of unaltered pre termination derivative works.” Id at 68. If I read that correctly, it means the Siegel heirs won’t see any money from those S-shield decals you see on car windows.
Furthermore, the ruling states that “derivative works created during the grant (meaning up until the termination effective date) may continue to be exploited after termination.” Id. I take that to mean that DC can keep all of its profits from any such “unaltered” derivative works, which may include a wealth of material derived from the Action #1 story and produced from 1938 to the late 1990s. The Judge didn’t rule on the issue of “altered” material, which may include such things as a pre-termination story (from, say, the Weisinger era or even the Byrne issues) reworked in the past few years. Id at 67.
Finally, the Judge declined to rule on the issue of profits “made through DC Comics’ exploitation of the Superman copyright to that of its corporate siblings and parent who are licensees to that copyright’s movie and television rights.” Id at 24, 71. The Judge was concerned that the close relationships between DC and its corporate relatives may produce inequitable “sweetheart deals” which would require the court to step in; but he needed more evidence before ruling on those issues. Id at 71.
I can’t imagine that this represents the ultimate resolution of this case. The ruling anticipates a trial on the issue of profits generated by movie and TV adaptations of Superman. Following that, DC, Warner Bros., and Time Warner will almost certainly appeal. The Siegel heirs’ Superboy suit is still ongoing as well. However, this remains a significant victory for the Siegel heirs.
Tom Bondurant, who has been following this case since its early days, is an attorney in Germantown, TN, and a regular contributor to [email protected] Newsarama.
Comment