Heroes For Hire No More: Rethinking The Presumption That Comic Books Qualify As A Work-Made-For-Hire Under The Copyright Act Of 1978

The crucial issue in these cases is determining whether the comic book creators were employees or otherwise creating the comics as a work made for hire (“WFH”). If the creators were employees or created the comics as a WFH, then the creators would be unable to terminate the transfer of ownership because the employer would be regarded as the creator of the work. In the majority of the cases mentioned above, the courts applied the “instance-and-expense” test that the Second Circuit adopted and applies to cases arising under the 1909 Copyright Act. As this test tends to be favorable to the person or entity that ultimately pays for the work, provided there was some prompting on its behalf to create the work, creators have a difficult time prevailing in these cases.

Not only did the 1976 Copyright Act (the “Act”) grant termination rights to work transferred prior to 1976, it also granted termination rights to those works created after 1978—so long as those works were not WFH. Notably, the Act also changed what types of creative works can be classified as a WFH. So far, there have not been any cases directly resolving the termination of an assignment of rights for a comic book created post-1978. It is my contention that most comic books produced today should not be considered works made for hire under the 1976 Copyright Act, and if they are, it would only apply to specific types of comic books.

A Brief History of Work Made For Hire

Prior to 1978, the Copyright Act of 1909 (the “1909 Act”) governed copyright law in the United States. Section 62 of the 1909 Act stated that “the word ‘author’ shall include an employer in the case of works made for hire.”⁷ However, the 1909 Act did not define what a WFH was, and courts devised their own tests for what constituted a WFH. As most comic book publishers at the time were based in New York, most of the cases were heard there and in the Second Circuit. The Second Circuit adopted the instant-and-expense test, which stated that if a work was created at the instance and expense of an employer, even if created by an independent contractor, then it was a WFH and belonged to the employer.⁸

Under the 1976 Copyright Act, however, a work can only be deemed a WFH if it was created by an employee or falls into one of nine specific categories. This is an important develoment as what can constitute a work-made-for-hire was significantly reduced form the 1909 Act. Under Section 101 of the Copyright Act, a WFH is defined as:

(1) a work prepared by an employee within the scope of his or her employment; or

(2) a work specially ordered or commissioned for use

(i) as a contribution to a collective work,

(ii) as a part of a motion picture or other audiovisual work,

(iii) as a translation,

(iv) as a supplementary work,

(v) as a compilation,

(vi) as an instructional text,

(vii) as a test,

(viii) as answer material for a test, or

(ix) 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.

In Community for Creative Non-Violence v. Reid, the U.S. Supreme Court addressed the scope of the work made for hire definition in §101 of the Copyright Act. The Court ruled that the phrase employee “should be understood in light of the general common law of agency.”⁹ In determining whether a sculpture was made by an independent contractor or during the scope of employment, the Court stated:

Among the other factors relevant to this inquiry are the skill required; the source of the instrumentalities and tools; the location of the work; the duration of the relationship between the parties; whether the hiring party has the right to assign additional projects to the hired party; the extent of the hired party’s discretion over when and how long to work; the method of payment; the hired party’s role in hiring and paying assistants; whether the work is part of the regular business of the hiring party; whether the hiring party is in business; the provision of employee benefits; and the tax treatment of the hired party. […] No one of these factors is determinative.¹⁰

In applying these categories to Reid, the Court found he was an independent contractor because he was in a skilled profession, supplied his own tools, worked from his own studios, was retained for a short period of time (2 months), CCNV had no right to assign additional projects to him, and other than the deadline, Reid had the freedom to determine when and how long to work.¹¹ Additionally, CCNV paid him a flat fee, and “did not pay payroll or Social Security taxes, provide any employee benefits, or contribute to unemployment insurance or workers’ compensation funds.”¹²

The Application of WFH to Comics

Comic books come in a variety of formats, and it is necessary to distinguish them here. Most comic books are released monthly (the “Monthly”). The Monthly is often a single issue consisting of approximately twenty to twenty-two pages of story, and it typically contains one story produced by a creative team consisting of a writer, artist, inker, colorist, and letterer. Sometimes the creative team might consist of fewer contributors as one person can assume multiple roles. For example, it is not uncommon for the writer, artist, and inker to all be the same person. Occasionally, an additional short story may be included and the page count of the book is increased accordingly. These monthly issues are often collected and subsequently released in a bound format. This bound format is called either a graphic novel or a trade paperback. For the purposes of this article, I will refer to collected monthlies as a trade paperback (the “TPB”). Another form of a graphic novel or comic book consists of a large-format bound book, often more than 48 pages, that we will refer to as an original graphic novel (the “OGN”). An OGN is an original work that contains one story, and it was not previously published serially. It will typically have a creative team similar to the Monthly. There are also a few publishers who publish anthologies (“Anthologies”) or digests (“Digests”). Anthologies typically include new works by multiple authors, and Digests will often reprint work in addition to one or two new stories by creative teams in one book.

In addition to the various types of physical books described above, there are a few different types of business models that also need to be mentioned. The publisher-owned model applies when the company publishing the comic book also wants to own all of the rights to book. The two most well-known using this method are Marvel and DC. There are publishers who published licensed comic book. These publishers use a well-known intellectual property from another medium, such as Firefly, Sonic the Hedgehog, or My Little Pony, and make comic books using them. Creator-owned publishers publish books where the creative team owns the copyrights to the work. Finally, there is a hybrid where the publisher and the creative team will both own the copyright to the work.

In determining whether a comic book can be considered a WFH, the same determination the Court used in Community for Creative Non-Violence v. Reid would apply to almost all comic book creators post 1978. Creators set their own schedules, work remotely from their own offices or studios, supply their own tools, and are only retained for short periods of time. While comic book companies are in the business of making comics, they do not have the right to assign more work to the creators, nor are they paying benefits, taxes, and other payments associated with traditional employment. The only comic book creators who might be considered as a employee under this definition would be those with an exclusive contract. If a creator has an exclusive contract, then they are promising to not work for another publisher in exchange for guaranteed compensation and, often, health benefits. With the exception of a comic book creator who has an exclusive contract with a publisher, under section (1) of the definition, comic book creators would not be classified as employees of comic book companies, and as such, comic book companies would not be categorized as the author of the work under this provision.

If a creator is not an employee, then the creator’s work on a comic book could be considered a WFH if it falls into one of the categories listed in section 2 of the definition. Of the listed works, there are two that comic books could potentially be classified as: a collective work or a compilation. A compilation is defined as “a work formed by the collection and assembling 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 authorship. The term ‘compilation’ includes ‘collective works’.”¹³ The Act defines a collective work as “a work, such as a periodical issue, anthology, or encyclopedia, in which a number of contributions, constituting separate and independent works in themselves, are assembled into a collective whole.”¹⁴

It should be noted from the definitions that a collective work is defined as a subset of a compilation. As mentioned in “Pre-Existing Confusion in Copyright’s Work-for-Hire Doctrine,”¹⁵ the inclusion of a collective work as a compilation creates a problem as to what is covered by the definition. As a compilation consists of “preexisting materials or of data,” the definition precludes newly created works from falling under the definition of a compilation. Reading the definition of a collective work alone, it would seem that commissioned works for a collective work would be subject to the WFH doctrine, if a collective work is a compilation, then the pre-existing requirement would foreclose any newly created contribution from ever being subject to the WFH doctrine. In the article, Nimmer argues that courts should either ignore “preexisting” as a requirement for compilations, or “interpret the term ‘contribution to a collective work’ to include ‘contribution to a yet to be assembled collective work[.]’”¹⁶ This author believes the two are meant to be separate works, with compilations consisting primarily of previously published or otherwise not copyrightable material and collective works consisting of primarily new material gathered together for the first time. However, a collective work can blur the line between the two as it may feature newly published works and previously published material. Nimmer’s approach to interpreting “contribution to a collective work” appears to be more in-line with the original intent for the two to be similar but separate.

It is helpful to look at how the Copyright Office has interpreted the definitions to apply to works. Some examples of compilations the Copyright Office has identified include:

• “A directory of the best services in a geographic region
• A list of the best short stories of 2011
• A collection of sound recordings of the top hits of 2004
• A book of greatest news photos
• A website containing text, photos, and graphics
• An academic journal containing articles on a particular topic
• A newspaper comprised of articles by different journalists
• A catalog comprised of text and photographs”¹⁷

The Copyright Office has also provided guidance on collective works. Examples of a collective work include:

• “A newspaper, magazine, or other periodical containing multiple articles, illustrations, and photographs
• An anthology containing multiple poems, short stories, or essays
• An online encyclopedia containing multiple articles, entries, or postings on various topics
• An album containing multiple sound recordings that embody multiple musical works
• A DVD containing a motion picture, theatrical trailers, deleted scenes, and audio commentary from the director”¹⁸
• The Copyright Office has also stated that the following are not collective works:
• “A single unified work that contains separate parts or elements, such as a novel consisting of multiple chapters a song with melody, harmony, and rhythm a drawing in pencil and ink a carpet design of overlapping figures and colors an architectural work or technical drawing with multiple illustrations of the same object an illustrated children’s book created by one author
• A unified work created by multiple authors, such as a musical with script, music, and lyrics by two or more authors a motion picture with screenplay, soundtrack, directing, acting, cinematography, costume design, visual effects, or other production elements contributed by multiple authors a children’s book created by a writer and illustrator in collaboration with each other a textbook
• A single contribution to a collective work”¹⁹

Furthermore, both the Copyright Office and courts have looked to the following language in analyzing collective works:

[bq]By definition, a collective work must contain “a number of contributions.” A work that contains “relatively few separate elements” does not satisfy this requirement, such as a work containing a single contribution, a composition that merely consists of words and music, a publication that merely combines a single work with illustrations or front matter, or a publication that merely contains three one-act plays. H.R. REP. NO. 94-1476, at 122, reprinted in 1976 U.S.C.C.A.N. at 5737; S. REP. NO. 94-473, at 105. As a general rule, a contribution that is “incorporated in a ‘collective work’ must itself constitute a ‘separate and independent’ work.” H.R. REP. NO. 94-1476, at 122, reprinted in 1976 U.S.C.C.A.N. at 5737; S. REP. NO. 94-473, at 105. In other words, a contribution must be an original work of authorship that is eligible for copyright protection under Section 102(a) of the Copyright Act, regardless of whether that contribution is currently protected or whether the copyright in that contribution has expired.²⁰

When reviewing the types of work categorized as a compilation or a collective work, some defining characteristics start to appear. Both require a separate work created by multiple authors that are brought together into one work. For compilations, the works usually consist of pre-existing works or contributions that might not otherwise be copyrightable. For collective works, the work consists of multiple, separately copyrightable works.

Nimmer on Copyright appears to suggest an expansive view of what can be considered a collective work. In discussing the limitations on what can be considered a collective work in the House Report, Nimmer states, “There is no explanation for this limitation; it is apparently founded on the assumption that the originality involved in such limited selection and arrangement is too minimal to warrant copyright.”²¹ Nimmer also appears to suggest that joint works and collective works are not necessarily exclusive categories, and goes on to say that “a joint work consisting of interdependent parts is like a collective work in that both instances involve assembling of the works of several different authors into a collective whole.”²² Nimmer further states that “the selection and arrangement necessary to support a collective work copyright means that the respective contributions are no more ‘unintegrated and disparate’ than are the contributions to a joint work consisting of interdependent parts.”²³ Overall, the criticism appears to stem from the difficulties in categorizing works and how some works could have multiple categories applied to them, but it would lead to works being categorized as collective works that are clearly not meant to be, such as films and novels that have any contribution from someone other than the author.²⁴ Nevertheless, the Act provided categories of works that can be subject to WFH, and the House Report provides some guidance on what types of works the drafters considered for each category.

At first glance, a comic book would appear to be a collective work. Many are periodicals, particularly Monthlies. They also appear to be created by multiple authors. However, upon further examination, it becomes less obvious.

A comic book story is a joint work or unified work. There are often contributions from multiple individuals that are brought together to form one work. The separate contributions from each individual are not enough to qualify it as a collective work. In discussing the difference between a joint work and a collective work, the House Report noted that a collective work is not a joint work because the “elements of merger and unity are lacking.”²⁵ For a collective work, “the key elements are assemblage or gathering of ‘separate and independent works * * * into a collective whole.’”²⁶ A comic book story, without more, would not be a collective work.

Additionally, a comic book shares more in common with a motion picture or other audiovisual production than it does with the typical works cited as a compilations or collective works. A motion picture has contributions from screenwriters, directors, photographers, actors, editors, special effects, etc., that combine to create one work. The statute lists the categories of WFH-eligible works, and it includes motion pictures as a separate entry from compilations and collective works. It is not inappropriate to make the inference that the drafters did not consider a motion picture to be a compilation or collective work. Much like the standard comic book story, it is a joint, or unified, work.

A Monthly does not easily fit into the category of a collective work. As stated above, a Monthly comic book story is a unified work with contributions from multiple creators. As the House Reports states when describing what is a collective work: “A work that contains ‘relatively few separate elements’ does not satisfy this requirement, such as a work containing a single contribution, a composition that merely consists of words and music, a publication that merely combines a single work with illustrations or front matter, or a publication that merely contains three one-act plays.”²⁷ The Copyright Office does not categorize a unified work by multiple authors to be a collective work, and it specifically states that a “children’s book created by a writer and illustrator in collaboration with each other” is not a collective work. While there are differences between a typical children’s book and a comic book, the two are more closely related than a comic book and a typical magazine. A comic book story typically combines the works of a writer, artist, inker, colorist, letterer, etc., into a single unified work, whereas a typical magazine will have multiple articles, photographs, and graphics created by multiple authors.

A limited, unscientific analysis of some Monthly releases shows how few works are included in a monthly comic book. Action Comics #1035, published by DC Comics, has forty-four pages, inclusive of the front cover and back cover.²⁸ The comic book has thirteen pages of advertisements, and two stories. The first story consists of twenty-two pages, and the back-up story consisted of 8 pages. Different creative teams were responsible for the two stories. Superman: Son of Kal-El #3, also published by DC Comics, has thirty-six pages, inclusive of the front cover and back cover.²⁹ It has thirteen advertisements, and one story spanning twenty-two pages. The IDW published My Little Pony: Friendship is Magic #56 has thirty-six pages, of which twenty consists of the story and ten advertisements.³⁰ The Marvel-comics published Spider-Gwen: Gwenverse #1 has forty pages, consisting of thirty pages of story and eight advertisements.³¹ While there is no specific number mentioned for how many contributions are necessary for a work to be considered a collective work, the statement in the House Report that a book of three one-act plays is not sufficient to be considered a collective work³² suggests that more than three separate contributions must be included. Based on the aforementioned criteria, the sampling of Monthly comic books above would not be considered a collective work.

A difficult topic to address is how the inclusion of advertisements in a comic book affects the categorization of the work. While drafting the Act, Congress obviously felt that advertisements in collective works are a unique exception. Section 404 of the Act specifically requires a separate copyright notice to be included in a collective work for each “advertisement inserted on behalf of persons other than the owner of copyright in the collective work.”³³ Congress further noted, “Collective works, notably newspapers and magazines, are major advertising media, and it is common for the same advertisement to be published in a number of different periodicals.”³⁴ This appears to derive from a concern of how the copyright covers the work and whether it provides sufficient notice to infringers, and in my opinion, comes from recognizing that advertisements are secondary to the collective work, as evidenced by their use across many different publications. The House Report states, “The general copyright notice in a particular issue would not ordinarily protect the advertisements inserted in it, and relatively little advertising matter today is published with a separate copyright notice. The exception in section 404(a), under which separate notices would be required for most advertisements published in collective works, would impose no undue burdens on copyright owners and is justified by the special circumstances.”³⁵ The language the House Reports uses suggests that advertisements stand apart from the rest of the collective work. Furthermore, as noted in Gaiman v. McFarlane, discussed infra, the Copyright Office previously provided guidance that “a single copyright notice applicable to the collective work as a whole serves to indicate protection for all the contributions in the collective work, except for advertisements, regardless of the ownership of copyright in the individual contributions and whether they have been published previously.”³⁶ The current guidance from the Copyright Office recites the statutory language of Section 404.³⁷

There has not been much case law discussing the relevance of advertisements to the status of a collective work or compilation, and some of it can be conflicting. In Feist Publication v. Rural Telephone Service Co., the Supreme Court mentioned the inclusion of “foreward text, as well as original material in its yellow pages advertisements” as a factor weighing in favor of the work being subject to copyright.³⁸ In TransWestern Publishing Company v. Multimedia Marketing Associates, the Tenth Circuit grappled with the question of whether a telephone book had infringed the advertisements contained in a competing telephone book. In evaluating the ads, the court found that the evidence did not show that the book manufacturer contributed enough originality to the ads to find that they were protectable.³⁹ The court also discussed the question that if the ads were original creations, then the telephone book could be a collective work.⁴⁰ In Canfield v. Ponchatoula Times, the Fifth Circuit highlighted that advertisements should be treated differently than the rest of a collective work while evaluating a dispute over whether a newspaper was responsible for copyright infringement for publishing an ad on behalf of a client that was previously published in another newspaper.⁴¹ The court dismissed the plaintiff’s argument that it owned the copyright in the collective work and the advertisement at issue and should be allowed to enforce it even though it lacked a copyright notice pursuant to Section 404(a) because it “would make advertisements the equivalent of any other contribution to a collective work. However, the committee notes to section 404 make clear that Congress intended to sever advertisements from the rules governing other types of contributions to collective works, such as articles and literary or artistic creations.”⁴² The court further noted that Congress would not create an exception in one section of the act, here 404(a), and then negate it in a subsequent section, 404(b). In discussing ownership of advertisements, Nimmer on Copyright suggests that an advertisement could be considered a work-made-for-hire under the Act as a contribution to a collective work.⁴³ This was brought up in a discussion of whether, under the Act, the person commissioning the ad should own the work, or the newspaper or magazine who created the ad would be the owner. While this is an interesting thought experiment, and similar to the facts in Canfield, as a practical matter, the inclusion of advertising in a publication should not be determinative in whether a given work is a collective work.

While it is clear an advertisement can be a copyrighted work, advertisements are not integral to a collective work and are often re-used or interchangeable. For example, two comic books published by DC Comics in September 2021 shared multiple ads. Action Comics #1035 contained thirteen advertisements (twelve full page ads and one advertorial), and Superman: Son of Kal-El #3 also contained the same number of ads.⁴⁴ Of those thirteen ads, nine were shared between the two books, and they all promoted DC-related goods. The determination of whether a work is a collective work should be the specific works commissioned or gathered for the inclusion in the work. Further weighing against the advertisements being part of the collective work is the exclusion of ads from collected or digital versions of the comic book. Additionally, in many instances, the selection and insertion of advertising has limited originality.⁴⁵

While a TPB could be considered a compilation, an OGN would not. As stated previously, a TPB combines previously released Monthly comics into a soft paperback book. Since it is a collection of pre-existing works, it is possible it might fall under the category of a compilation. However, there are no guarantees a Monthly will be collected into a TPB, and it would be inappropriate that a Monthly could be a WFH based upon the possibility of being collected into a TPB sometime in the future. Furthermore, most TPB collections consist of stories created by the same creative team. So, while they may be separate entries in a longer story, they are often still the product of one creative team. An OGN is a unified, original work, and does not appear to fall into the category of either compilation or collective work.

There are few court cases that touch upon this topic. In Archie Comic Publications, Inc. v. DeCarlo, Archie Comics brought a lawsuit against the estate of Dan Decarlo. DeCarlo had worked for Archie Comics for decades and co-created many characters, including Josie and the Pussycats, Sabrina, and Cheryl Blossom, and contributed to numerous works. Archie Comics sought to have his contributions declared as works made for hire in order to settle ownership. It involved works created before 1978 and after. In its opinion discussing post-1978 works, the court notes that “comic strips arguably qualify as works for hire under the ‘contribution to a collective work’ eligible category.”⁴⁶ It further states that the Sabrina works at issue in this case “fall within the periodical categories covered by the 1976 Act” and were subject to a work for hire agreement.⁴⁷ The court also stated that the works DeCarlo created involving Sabrina after 1978 contained minimal original contributions and no new delineations to the property or character.⁴⁸ In addressing DeCarlo’s claims to the Josie and Cheryl characters, the court relies upon the assignment agreement to resolve the current ownership status, and states that termination notices that were filed were premature to analyze.⁴⁹

The court provided no further exploration or analysis of its claim that the disputed works fall within the enumerated WFH categories. The court was content to rely on the parties’ contract that stated the work was done as WFH and otherwise assigned all rights to Archie Comics. Furthermore, it declared some works to be WFH merely because it did not believe DeCarlo’s contributions to the work to be significant – a dubious statement. Finally, the court’s statement that comic strips “arguably” fall within the prescribed categories does not instill confidence that this analysis was given enough thought. There was no discussion as to whether the disputed works qualified as collective works or otherwise met the requirements necessary to allow a work created by an independent contractor to be deemed a WFH. Based on the sparse analysis given to whether the disputed comic books actually fall within the prescribed WFH categories, I believe it appropriate to not give much weight to this district court’s opinion.

The second case to mention whether a comic book is a collective work is Gaiman v. McFarlane, which involves a dispute over copyright ownership in characters created in the comic Spawn. ⁵⁰ In discussing when a statute of limitations claim might begin, Judge Posner states that a comic book is “plainly” a compilation.⁵¹ Posner states that it is a compilation because it includes “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 contributed by fans.”⁵² Posner mentions this to show that McFarlane’s copyright notice in the work omitting Gaiman as a copyright owner would not necessarily put Gaiman on notice that his copyright ownership is being disputed. According to Posner, McFarlane’s copyright notice would apply to the entirety of the work, including the letters column and fan art to which McFarlane does not have a copyright interest.⁵³

Posner does not offer support for his declaration that the comic book in question is a compilation other than stating it is so because of the additional matter in it. This assertion is problematic for a few reasons. The first is that many Monthly comics do not have letter columns or other supplemental material added to them, and even if they did, it might not be enough to turn a Monthly into a collective work. Most Monthly comics consist primarily of the story being told and advertisements. The second is that Posner is giving too much weight to the addition of back matter to turn something that would otherwise not be a compilation into one. The inclusion of fan letters and fan art should not be enough to transform a work ineligible for status as a WFH into a product that is now a WFH. As the House Reports noted in discussing the requirements for a collective work, “[a] work that contains ‘relatively few separate elements’ does not satisfy this requirement, such as a work containing a single contribution, … , a publication that merely combines a single work with illustrations or front matter… .”⁵⁴ Third, Posner is analyzing a single comic while evaluating whether a statutory period for evaluating a copyright claim has run. While he has taken notice that this particular comic might be a compilation, he is not evaluating the comic as it relates to WFH. If he had done so, and had to engage with the question from that perspective, it is possible that he might have come to a different conclusion.

The Ramifications of Comic Books Not Being WFH

The determination of whether comic books can be considered WFH is important. Historically, comic book creators hired by publishers have been underpaid and overworked. The industry is notorious for poor working conditions.⁵⁵ If ownership of the copyright vests initially with the creators of the work, then it can change the dynamics of the industry as then creators can terminate any assignments pursuant to §203 of the 1976 Act. If a comic book is not a WFH, then the only way initial ownership of the work can vest with a comic book publisher is if those creating the comic book were employees or if the work is part of a collective work.

Publishers would have to decide if they are content to rely upon assignments that could be terminated, employ creative teams, work with creators with loan-outs or LLCs, or change their publishing plans to make works that clearly fall into one of the WFH categories. Each approach has positives and negatives.

Most publishers have language in their contracts stating that if a work is not a WFH, then the creators assign all rights to the publisher. Publishers could choose to continue relying upon this assignment to protect their rights. However, they do run the risk of a creator exercising termination rights after 35 years. The primary reason a creator would be likely to file for a termination is if the work in question contained a new character, a unique storyline, or a particularly compelling or valuable imagery. These contributions could have value for a creator if they can be exploited separately from the publisher’s other works, or, to be used as leverage to negotiate for additional consideration. However, for many comic books, terminating the assignment might not have much value for a creator. If the work did not create any new characters, a unique storyline, or unique art, then the creator would only be obtaining the rights to the comic in question. Since the creator does not own the rights to the characters the creator did not introduce, as the work would likely be considered a derivative work, obtaining the rights to the work would not accomplish much other than to deprive the publisher of some its rights. A creator would not be able to exploit the story involving characters the creator did not own or create. Another problem is that to file for termination, the majority of the joint authors must agree to do so;⁵⁶ if there are multiple contributors to the comic, all of them might not agree to terminate the assignment.

While relying upon the assignment provision would be a possible solution for publisher-owned works, it poses a unique problem for licensed works. In most license agreements, the publisher grants the ownership of all works created under the license to the licensor. While the licensed-publisher can obtain assignments, they would be subject to termination. It could impact the licensor and licensee relationship, and it could limit the value or desirability of the licensor choosing to make licensed works. Sonic the Hedgehog provides an example here. In the mid-90s, Archie Comics produced licensed Sonic the Hedgehog comics. One of the writers, Ken Penders, created numerous unique characters. Penders later filed and received copyright applications for his work, and Archie Comics sued. Since Archie was unable to produce an authenticated work-for-hire agreement, Penders was able to maintain ownership of the characters he created, and Sega, the creator of Sonic, had to stop using the characters in other works.⁵⁷

If publishers wanted to make sure all of a creative team’s works are treated as WFH, they could employ the creative team. This would be a major change to the industry. Most creative teams have not been employees of the publisher. Publishers would have to make the necessary changes to implement short-term employment agreements. They would also have to determine the best way to comply with employment laws across the nation and, possibly, other countries. It is likely most publishers would want to avoid this option as they would not want to allow comic book artists, writers, etc. to be able to unionize. [Alternatively, publishers could choose to work with creators who use loan-out companies or who otherwise use their own company for business purposes. If the creator is an employee of their own company, then the work could be considered a WFH, and the subsequent assignment from the creator’s company to the publisher would not be terminable. However, this could severely limit the creators a publisher is able to work with.]

Publishers also could change their output. As mentioned previously, some publishers already produce Digests and Anthologies. A product with multiple stories created by multiple creative teams would likely be a collective work under the WFH law. This option would force publishers to re-evaluate their business models and product releases, but I believe it would be an appealing option for many publishers.

Finally, whether a comic book can be a WFH also impacts creator-owned works. In general, most creator-owned works involve shared ownership between the creators. However, there are still circumstances where one or more creators may want to own the work to the exclusion of any other contributors. If a comic book is not a WFH, and as most creator-owned works would be unlikely to be a collective work, then it would not be possible for a creator to obtain ownership other than through assignment.

Conclusion

Ideally, a comic book would be definitively categorized as either a WFH or not. However, under the current law, there are clearly scenarios where you could bend the definitions in the WFH statute to potentially have a comic book work be considered a WFH, but there are others where it would not. As I mentioned previously, a TPB could be considered a collective work or compilation subject to the WFH statute, but an OGN is likely not subject to being a WFH. Furthermore, a typical Monthly consisting of 22 pages of story might not be a collective work. However, does adding additional, separate stories make it a compilation or collective work? Does, as Posner suggest, having a letters column and fan art make it one? In the realm of comics, the WFH statute can be applied inconsistently, and that is problematic. Laws should be applied consistently, and creators should have certainty in the copyright ownership of their creative works.

The determination of whether comic books can be considered WFH is an important distinction for an industry that has seen its importance grow over the last two decades. As outlined above, it is likely that many comic books released today fail to qualify as a collective work and are not subject to the Act’s WFH provision.

Endnotes

1. 17 U.S.C. §304(c)(3).

2. Larson v. Warner Bros. Ent., Inc., No. 11-55863 (9th Cir. Jan. 10, 2013).

3. Marvel Characters, Inc. v. Simon, 310 F.3d 280 (2nd Cir. 2002).

4. Gary Friedrich Enters., LLC v. Marvel Characters, Inc., 716 F.3d 302 (2nd Cir. 2013).

5. Marvel Characters, Inc. v. Kirby, 726 F.3d 119, 125 (2nd Cir. 2013).

6. Dolmetsch, Chris, Disney Sues Comic Book Artists Over Marvel Superhero Rights, Bloomberg, https://www.bloomberg.com/news/articles/2021-09-24/disney-sues-comic-book-artists-over-marvel-superhero-rights (last visited April 2, 2022).

7. https://www.copyright.gov/history/1909act.pdf

8. Marvel Characters, Inc. v. Kirby, 726 F.3d 119, 137-39 (2nd Cir. 2013).

9. 490 U.S. 730, 741 (S.Ct. 1989).

10. 490 U.S. 730, 751-52 (internal citations omitted).

11. Id. at 752-53.

12. Id. at 753.

13. 17 U.S.C. §101.

14. Id.

15.David Nimmer, Peter S. Menell, & Diane McGimsey, December 2002 (SSRN –find published?); 50 J.Copyright Soc’y 399 (2003)

16. Id at 26.

17. Circular 14: Copyright in Derivative Works and Compliations.

18. https://copyright.gov/eco/help-collective-work.html

19. Id.

20. Compendium of U.S. Copyright Practices, Ch. 500, pages 29-30, (3^rd Ed. 2021).

21. Nimmer on Copyright, §3.03[A], page 3-10.1 (Dec. 2021 supplement).

22. Nimmer on Copyright, §6.05, page 6-13 (Dec. 2021 supplement).

23. Nimmer on Copyright, §6.05, page 6-13 (Dec. 2021 supplement).

24. See Nimmer on Copyright, §6.05, pages 6-13 – 6-15 (Dec. 2021 supplement).

25. H.R. REP. NO. 94-1476, at 120.

26. Id.

27. H.R. REP. NO. 94-1476, at 122

28. Action Comics No. 1035, DC Comics, published September 28, 2021 (November 2021).

29. Superman: Son of Kal-El No. 3, DC Comics, published September 21, 2021 (November 2021).

30. My Little Pony: Friendship is Magic No. 56, IDW Publishing, published July 12, 2017 (July 2017).

31. Spider-Gwen: Gwenverse No. 1, Marvel Worldwide, Inc., published March 9, 2022 (May 2022).

32. H.R. REP. NO. 94-1476, at 122

33. 17 U.S.C. §404(a).

34. H.R. REP. NO. 94-1476, at 146.

35. Id.

36. Gaiman v. McFarlane, 360 F.3d 644, 654 (7^th Cir. 2004), citing U.S. Copyright Office, Circular no. 3, Copyright Notice 3 (2004).

37. See U.S. Copyright Office, Circular 3, Copyright Notice, https://www.copyright.gov/circs/circ03.pdf (last visited April 30, 2022; Compendium of U.S. Copyright Office Practices, 3^rd Ed., Chapter 2207.2 (2021) https://www.copyright.gov/comp3/chap2200/ch2200-notice.pdf (last visited April 30, 2022).

38. 499 U.S. 340, 361 (1991).

39. 133 F.3d 773, 781 (10^th Cir. 1998).

40. Id. At 779-80.

41. Canfield v. Ponchatoula Times, 759 F.2d 493, 497 (5^th Cir. 1985).

42. Id. At 497.

43. Nimmer on Copyright, §2A.08[H][1], FN634, page 2A-133 (Dec. 2021 Supplment?).

44. Action Comics No. 1035, DC Comics, published September 28, 2021 (November 2021), Superman: Son of Kal-El No. 3, DC Comics, published September 21, 2021 (November 2021).

45. See Nimmer on Copyright, §3.03[A], page 3-10.1 (Dec. 2021 supplement); see also Feist Publications, Inc. v. Rural Telephone Service, Co., Inc., 499 U.S. 340, 357-358 (1991)(discussing requirement of originality necessary for a compilation to be eligible for copyright).

46. Archie Comics Publications, Inc. v. DeCarlo, 258 F.Supp.2d 315, 333 FN112 (SDNY 2003).

47. Id. at 334

48. Id. at 333.

49. Id. at 334. FN121

50. Gaiman v. McFarlane, 360 F.3d 644 (7^th Cir. 2004).

51. Id. at 653.

52. Id.

53. Id.

54. H.R. REP. NO. 94-1476, at 122

55. See, for example, Aaron Couch, Marvel and DC’s Shut-up Money: Comic Creators Go Public Over Pay, The Hollywood Reporter (July 16, 2021) https://www.hollywoodreporter.com/movies/movie-news/marvel-and-dcs-shut-up-money-comic-creators-go-public-over-pay-1234983043/ (last visited April 30, 2022).

56. 17 U.S.C. §203(1)(a).

57. Bobby Schroeder, How a Legal Dispute Wiped Hundreds of Sonic the Hedgehog Characters from Existence, Intelligencer (Feb. 11, 2020), https://nymag.com/intelligencer/2020/02/the-lawsuit-that-reshaped-sonic-the-hedgehog-comics.html (last visited April 30, 2022).