Marvel Comics Defeat Employees Copyright Claim

As those works included Spiderman, the Hulk and X Men, which are now the subject of Hollywood blockbusters, it was a claim of some commercial significance.

 

The employee was Mr Jack Kirby, who had died in 1994. After Marvel merged with Disney in 2009, his estate sought to reclaim the copyright in all of his work created between 1958 and 1963. But the Federal Court rejected the claim on the US principle of "work for hire" enshrined in their Copyright Act 1909. This is the principle that where work is done in return for pay, the copyright is owned by the employer. That is an exception to the usual principle that the creator, or author, owns the copyright.

 

Similar principles apply in the UK. The law of copyright is set out in the Copyright, Designs Patents Act 1988. A cartoon character is a literary work in which copyright subsists. The first owner of the copyright is the author. But, there is an exception for works created "in the course of employment" when the copyright is owned by the employer. So creative individuals working for an employer need to realise that, unless agreed otherwise, the copyright in the works they develop in the course of their employment will be owned by the employer. That can even extend to work carried out at home and out of hours.

 

It can even extend to works created by an employee prior to the commencement of his employment. This was illustrated in Burrows v Smith & Crush Digital Media Ltd (2010) EWHC 22 in which Nelsons represented a games designer seeking to protect the copyright and confidential information in ideas he had developed before he began working for a games design company (Circle Studio Ltd). After he had begun work, he introduced some ideas and concepts he had developed prior to his employment. One of them, Trax Trix, was felt worth working on. It was developed into a game known as Train Tracks.

 

After Circle Studio Ltd went into liquidation, the intellectual property rights in various games, including Train Tracks, was purchased by Crush Digital Media Ltd. They approached various publishers with the game. Mr Burrows objected on the grounds that as the concept and design documents were produced by him whilst he was self employed, he retained those rights. It was accepted that those rights had been licensed to Circle Studio Ltd, but argued that any licence would have automatically terminated upon its liquidation.

 

The Court however disagreed. Mr Justice Norris said that: "Mr Burrows voluntarily and without the imposition of any express conditions used work that he had previously completed for the purpose of performing the tasks required for the fulfillment of his current duties as an employee. If that has to be put into a legal category for the purposes of the application of the law of copyright, then it would most naturally be viewed as an assignment - a unilateral act requiring no agreement on the part of the recipient."

 

So in other words, by introducing and developing work created prior to his employment (without imposing any conditions), he all the potentially valuable intellectual property rights to the employer.

 

The claim based on confidential information also failed.  An employee sharing ideas for which he was paid to produce could not import an obligation of confidence on his employer. This was especially so as that point was not made expressly clear at the time the idea was shared.

 

So whilst an internationally successful comic franchise and a computer game as yet unknown seem to be worlds apart, they have much in common. Intellectual property rights in computer games, like cartoons, can have huge commercial value. Arguments over who owns those rights are always likely, but the moral is clear. The intellectual property rights in works you are employed to produce are likely to be owned by the employer. So can the rights in works you developed before your employment even began. If you want to retain your intellectual property rights, that must be addressed before you even share the idea. 

Written by Stewart Vandermark, a Director specialising in Intellectual Property matters. 

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