Intellectual Property and "Work for Hire"
(With thanks to co-author Matthew Goodison-Orr)
One of the biggest controversies in the production of comic books and other forms of intellectual property is the question of who owns it. In an earlier article I discussed the litigation between Todd McFarlane and Neil Gaiman. McFarlane claimed ownership over characters created by Gaiman. The question came down to whether Gaiman was “working for hire” or was a co-creator.
Normally, when creating a comic book (or other IP) each co- creator has an equal claim to the ownership of the “comic book property.” Each co-creator has the ability to claim partial or sole ownership (depending on the arrangement) of the copyrighted works.
However, this is not the case in a “work for hire” arrangement. Here, the copyright to that work is owned by the hiring party, not the artists who created it.
The typical scenario is that an artist is hired by a company, say DC or Marvel to work on one of their titles. These companies already own their IP, such as Superman or Spiderman, so that any work that the employee or contractor creates will belong to the publisher.
However, that doesn’t mean an artist is completely barred from access to royalties or other forms of copyright ownership. The law looks whether the artist was an employee or independent contractor before making a final decision and then the nature of the contract.
EMPLOYEES: Any copyrighted work created by employees within the scope of their employment is considered work for hire and is automatically owned by the hiring party.
INDEPENDENT CONTRACTOR: he/she must sign a written agreement explicitly stating that the work is a “work made for hire,” a “work for hire,” or a “work specially ordered or commissioned.” Without both the written and signed contract containing a clause that says any of the above “work for hire” phrases, the independent contractor’s work is not a work made for hire.
What happens when an artist creates new characters or is involved in the creation of new characters for someone else? It depends. As we saw in the McFarlane v. Gaiman case, without a written agreement, the court decided that they were co-creators.
Let’s jump from Superheroes to Archie Andrews. Archie Comics hired Dan DeCarlo as an independent contractor. All true Archie fans know that DeCarlo helped evolve Archie from his first 1940’s appearance to the iconic image we are all familiar with today.
DeCarlo is also generally recognized as the co-creator of Sabrina the Teenage Witch, Josie and the Pussycats and Cheryl Bloom. And this is where the controversy lay. DeCarlo sued several times claiming he owned the copyright contributions to his work. He lost every time. ACP v. DeCarlo, 258 F. Supp. 2d 315 (S.D.N.Y. 2003).
The court ruled that the works were “specially ordered or commissioned” as part of an agreement between an independent contractor (DeCarlo) and ACP. Further, there were no less than two agreements signed with ACP that expressly stated that DeCarlo’s copyrighted contributions were “work for hire.”
Indeed, ACP and DeCarlo had entered into several agreements over the years, and the thrust of them was all the same: DeCarlo was hired to create characters and work on existing ones. One agreement specifically stated:
ACP "desires to retain third parties to modify or otherwise work with the Existing Archie Works and/or the Existing Third Party Works ... on a work made for hire basis, to create modified comic strips and pages for its comic books (hereinafter the `Modified Works')," and
"[T]he Contractor [i.e., DeCarlo] desires to confirm the assignment to [ACP] of the Contractor's entire right, title and interest in and to whatever comic strips and pages for comic books the Contractor may have heretofore provided [ACP] in furtherance of this project and further desires to work with [ACP] in the future under the terms and conditions hereinafter expressed."[
The take away for creators/artists is to read the agreement and discuss it with an attorney before you sign.