## Facts

- Jack Kirby created 262 comic-book works for Marvel-affiliated publishers between 1958 and 1963, contributing to characters and stories later central to Marvel’s catalog.
- Kirby worked as a freelancer paid a flat, per-page rate; Marvel bore publication and commercial risk and retained control over approval, revisions, and use.
- After Kirby’s death, his children (statutory heirs) served notices in 2009–2010 seeking to terminate prior grants under 17 U.S.C. § 304(c) and reclaim copyright interests.
- Marvel filed a declaratory judgment action in the Southern District of New York asserting the works were “works made for hire” for § 304(c) purposes and therefore not terminable.
- The district court granted summary judgment to Marvel, ruling the works were made for hire and that the heirs had no termination rights.
- On appeal, two heirs (Lisa and Neal) also challenged personal jurisdiction in New York, arguing their only relevant New York contact was sending termination notices to Marvel entities there.

## Issues

1. Whether the 1958–1963 Kirby works were “works made for hire” for purposes of 17 U.S.C. § 304(c), under the Second Circuit’s pre-1978 “instance and expense” test, thereby barring statutory termination.
2. Whether New York courts had personal jurisdiction over two out-of-state heirs based primarily on their sending termination notices into New York.
3. If personal jurisdiction was lacking over those heirs, whether they were indispensable parties under Fed. R. Civ. P. 19(b) requiring dismissal of the action.

## Decision

- The court held the district court lacked personal jurisdiction over Lisa and Neal Kirby and vacated the judgment as to them.
- The court held Lisa and Neal were not indispensable parties under Rule 19(b), so the action could proceed without them.
- Applying the “instance and expense” test, the court held the works were “made for hire” under § 304(c) and affirmed judgment for Marvel against the remaining heirs (Barbara and Susan).
- Result: vacated in part (as to Lisa and Neal) and affirmed in part (as to Barbara and Susan).

## Legal Principles

- For pre-1978 works litigated under § 304(c), the Second Circuit applies the “instance and expense” test to determine work-for-hire status.
- “Instance” is satisfied where the commissioning party is the motivating factor in the work’s creation and exercises control (including assignment, supervision, and a right to reject or require changes).
- “Expense” is satisfied where the commissioning party pays for the work (including flat per-page payments) and bears the financial risk of publication and exploitation.
- Once “instance and expense” are shown, work-for-hire status is presumed absent an agreement to the contrary; the party opposing the presumption must produce evidence of a rights-reserving agreement.
- Sending statutory termination notices into a forum state, without additional forum-directed conduct, is insufficient to establish personal jurisdiction under New York’s long-arm statute.
- When personal jurisdiction is absent as to some claimants, Rule 19(b) does not require dismissal if meaningful relief can be granted among existing parties and the risk of prejudice or inconsistent obligations can be managed.

## Conclusion

The Second Circuit held that Kirby’s 1958–1963 Marvel-related comic-book works were created at Marvel’s instance and expense and, absent an agreement reserving rights to Kirby, were works made for hire under § 304(c), defeating termination for the heirs properly before the court; it nonetheless vacated the judgment as to two heirs for lack of personal jurisdiction and allowed the case to proceed without them under Rule 19(b).


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