THE LEGAL RAMIFICATIONS OF THE GHOST RIDER CASE

[Reginald Hudlin]

Stephen Bissette

ALERT, ALL COMICS CREATORS: With permission, I'm quoting key points my dear friend and own legal advisor/contract consultant (since 1992) Jean-Marc Lofficier raised on his posts to a Yahoo forum discussing Ty Templeton's cartoon concerning the Gary Friedrich v Marvel judgment. Jean-Marc succinctly notes WHY this judgment has changed EVERYTHING for anyone who has worked for Marvel, or what this judgment changes (probably irrevocably) about the landscape for all concerned:

"...with all due respect to Ty, he's talking (drawing?) out of his ass.

So to clarify again, here is what I thought is important to remember here:

1) This is the first time Marvel is using convention sales of copyrighted Marvel characters as a "weapon". They are of course perfectly entitled to do so, legally speaking. But it does mean that, from now on, all of you here who draw sketches of Marvel characters for money at conventions or sell sketchbooks containing pictures of Marvel characters are on notice that you might be sued (usually for triple the amount you made) should Marvel decide to go after you.

My legal advice to you guys is simple: STOP and destroy all sketchbooks for sale with copyrighted materials in it. I'm serious. You've just been put on notice by this case.

[Note: In a followup comment to a question on the matter of selling sketches/sketchbooks at conventions featuring Marvel characters, Jean-Marc added:]

If Disney and/or Marvel have a policy to deal with that sort of business, I would encourage anyone planning to sell sketches, etc. to contact them and obtain a waiver or a permission of some kind under that program.

Ivan is incorrect about one thing: Disney, if not Marvel, does have a full office staffed with para legals of young lawyers whose only job is to look for copyright/tm infringements and send C&D (cease & desist) letters. I have seen them. They don't do it for the money or to be a pain the the ass, they do it based on the legal theory that if you don't actively protect your (c)/tm, you run the risk of it being used against you as an affirmative defense in an infringement case.

Based on the GHOST RIDER case, it is, in my opinion, only a matter of time until Disney, now aware of the issue, sends one of their young attorneys with a stash of blank C&D letters at conventions and start handing them out to everyone selling Marvel sketches without authorization.

Receiving that letter will oblige you to hire a lawyer and even if Disney lets you off the hook (which they probably will), you might be out of a couple of grands by the time the process is over -- or you run the risk of being stuck with a $15K bill if you fight them.

Again, I emphasize: this is sound business practice for Disney; NOT doing it entails risks far greater than doing it. They have gone after children's nurseries before which had Mickey painted on their walls for the same exact legal reason. And that was far more time consuming and bad PR-wise that going after some comic book guys at artist's alleys.

It is only a matter of time.

So if they have a waiver/permission program as Ivan says, join it; if not, stop.

[Back to Jean-Marc's original, full post:]

2) Although there never was any serious dispute that Marvel owned whatever share of GR Gary Friedrich was claiming (personally, I'm not a mind reader but I think Friedrich was hoping for some kind of settlement), there remains two legal issues that Ty obviously didn't grasp:

2.1) When Moebius drew his SILVER SURFER with Stan Lee, he got royalties and he was still getting them when Starwatcher split in 2000. You will note that modern-day WFH agreements spell out that the money you're getting will be the sole compensation you will ever receive and you're not entitled to anything else. It is spelled out because if it is not, courts are at liberty to interpret the contract and decide whether or not you should be gettong something extra.

The back-of-the-check contract signed by Gary did transfer ownership of GR to Marvel, and the amount of that check was the consideration for publishing rights, but nowhere did it actually state (as it does today) that it was the ONLY consideration to which Gary might be entitled in the event of a film or a TV series. The Court could have easily decided that on the absence of that clause, Gary was owed something.

2.2.) There is a famous case about singer Peggy Lee who won her suit against Disney for their reuse of her songs in LADY & THE TRAMP on video, because that medium didn't exist when she signed her original agreement with the Mouse, and contracts at that time didn't specify the now standard "and other media to be invented in the future". The Court chose to interpret that lack of specificity in favor of Peggy Lee. When Marvel sold the rights to GR to the studio which produced it, they likely sold the video, DVD and game rights. These media did not exist when Friedrich signed his back of the check contract which did not list any and all future media. Therefore, based on the Peggy Lee case, the Court could have found that Marvel didn't own those rights, and therefore couldn't resell them, or, as in the Peggy Lee case, simply that they owe the plaintiff some kind of percentage, that's all.

So it remains my contention that Marvel owes "something" to Friedrich (and Ploog as well) based not on the publishing, but purely on the disposition of the multimedia rights to GR. That the Judge decided otherwise is a tough break for creators, and unjust.

3) Which brings me to my next point, which is that documentary standards are being unfairly applied throughout the judicial system, and somehow mistakes always seem to favor the corporations, not the small guy. The enforceability of a contract depends on accurate documentation which must be produced in Court. If you have a mortgage, but the bank cannot produce your properly signed promissory note, then the court has the possibility of nullifying your mortgage. It's happened in a few rare cases, but more often than not, people have been thrown out of their homes despite banks being unable to produce a properly signed note.

In this case, has any of you seen the back of the check signed by Friedrich?
Was that check properly endorsed? Was there anything crossed out? Why should mistakes in documentation automatically benefit the corporations, and the little guy should be held to standards of evidence that the companies themselves don't respect? Why did the Judge assume that the paperwork was in order & automatically benefited Marvel? What I'm saying is, if people can lose their homes despite proper paperwork, well, then, Marvel could lose GR despite its paperwork. It's up to the Court.

So whether or not you feel any sympathy for Gary and his cause, this is another loss for the Little Guy which, in the greater scheme of things, impacts all of us."

[Battle]

From the article:

My legal advice to you guys is simple: STOP and destroy all sketchbooks for sale with copyrighted materials in it. I'm serious. You've just been put on notice by this case.

[Note: In a followup comment to a question on the matter of selling sketches/sketchbooks at conventions featuring Marvel characters, Jean-Marc added:]

If Disney and/or Marvel have a policy to deal with that sort of business, I would encourage anyone planning to sell sketches, etc. to contact them and obtain a waiver or a permission of some kind under that program.

Ivan is incorrect about one thing: Disney, if not Marvel, does have a full office staffed with para legals of young lawyers whose only job is to look for copyright/tm infringements and send C&D (cease & desist) letters. I have seen them. They don't do it for the money or to be a pain the the ass, they do it based on the legal theory that if you don't actively protect your (c)/tm, you run the risk of it being used against you as an affirmative defense in an infringement case.

This is so true.
What Disney is very, very good at is protecting thier properties.  

Now that Disney has part ownership over MARVEL characters , I've always wondered how that policy affected the old school comicbook artists that earn a modest living doing commissions for thier longtime fans.  

[Kristopher]

The Spirit of Vengeance

By Jim Shooter

Gary Friedrich sued Marvel over rights to Ghost Rider. Gary lost. Marvel sued Gary for unauthorized exploitation of their trademarked Ghost Rider property. Gary lost. He is obliged to pay Marvel $17,000.

The web is a-Blaze with controversy about the above. Lots of people, including many notable comic book creators, have weighed in with their thoughts and theories.

Most of them have a flawed understanding of intellectual property law, work-made-for-hire and the circumstances of Gary’s services to Marvel way back in the 1970’s.

There has been discussion, for instance, about whether or not the W4H acknowledgement on the backs of the checks Gary received for his services back then specified certain rights, or whether or not Gary crossed out certain parts, and what those things might mean.

There has been much vitriol hurled against big, mighty Marvel for suing little, helpless Gary. Doing so has been characterized as petty, vindictive and cruel. Some speculate that Marvel’s coming down on Gary was a deliberate warning to all others who might dare contest ownership of properties. A few defenders of Marvel pointed out that Gary sued them first, cost them a ton of money in legal fees and apparently, given the decision, was in the wrong.

Some people brought up the fact that Ghost Rider was created by more than one person and many people along the way have made significant contributions.

Marvel’s suit against Gary raised another, related issue. There has been debate about whether or not artists selling sketches of characters owned and in most cases trademarked by the various publishers constitutes infringement.

And more. You get the drift.

I’m not a lawyer, but for over nine years, as Editor in Chief at Marvel, I was obliged to represent Marvel’s legal position to creators with regard to their work. I worked closely with Marvel’s house counsel and outside counsel. I attended an intellectual property law seminar. I was called upon to give depositions in several cases. In more recent years, I have served four times as an expert witness on cases involving IP issues. I know a good bit about the subject.

I don’t know all the particulars of the Ghost Rider suits, so I won’t attempt to pontificate on those, specifically. I will offer a few general thoughts:

1.  Doing work-made-for-hire means that you are selling your services, not whatever results from the services you perform. No rights need be specified, though for belt-and-suspenders purposes, they often are. What was on the back of the checks, crossed out or otherwise, is probably of no significance. Even if there was no legend on the back of the checks, it probably wouldn’t change anything. In those days, before the copyright law of 1976 took effect (January 1, 1978), nothing needed to be signed to effect a work-made-for-hire situation. The arguments would more likely be about whether or not the services rendered were a contribution to a “collective work,” was the W4H policy of the employer consistent, was the work done under the direction and control of the employer…and more.

2.  Speculating about Marvel’s motives seems like a road to nowhere. From the outside, Marvel’s suit against Gary looks to me like one of those defend-the-trademark things. If you know someone is violating your trademark and you don’t do anything about it, you may lose your trademark. You must take action. You can’t pretend to take action. No “just kidding, we don’t really want the money.” I believe that a judge would frown upon that. You have to at least look like you’re serious. That said, is it possible that Marvel will show a little compassion and never bother to collect, or in some other way let Gary skate. Could be. We’ll see.

While I was at Marvel, several times when someone violated our trademarks, I convinced the upstairs bosses to give the infringer, if he or she wasn’t truly evil, a retroactive license for a dollar.  Our marks were protected, they weren’t hurt, all was well.

The best known of those instances was when Dave Sim did a parody of Wolverine in an issue of Cerebus—which sold so well that he did it for another three issues. Parody is protected. Once is okay.  Four times constitutes infringement. But Sim wasn’t an evil guy. We liked him. We intended to do business with him.  So we handled it reasonably, I think.

The difference here, it seems to me, is this: When litigation is going on everything done or said by either side may and likely will be forged into a weapon for the other side. Being generous might be seen as a tacit admission that the other side has a point.

3.  Multiple creators tends to lend credence to the collective work argument. I’m willing to be corrected on this if I’m wrong, but I believe that I coined the tagline “Spirit of Vengeance” back when I briefly wrote the Ghost Rider. I’m not expecting a check in the mail for that anytime soon. I wonder if Mike Friedrich ever got a nickel for coming up with the Bat-moniker “Dark Knight?”

4.  Selling sketches of trademarked characters at conventions and elsewhere…now there’s an interesting situation. Collectively, a vast amount of money must be made that way. To my knowledge, the publishers haven’t ever taken notice. But, I guarantee, it’s on the radar now.

One person said that as long as it’s a private transaction between an artist and a collector, no harm no foul. To that person, I’d suggest setting up a booth at the San Diego Comic Con and selling sketches of Mickey, Donald and Goofy. See what happens. Disney once succeeded in preventing Carl Barks from selling paintings of Uncle Scrooge and fellow Ducks, though later, I think, they worked out a license deal. And Disney owns Marvel now. Hmm….

I think the business of selling sketches is just about to blow up like Krakatoa.

Once again for the record, I believe that the comic book industry has always treated creators unfairly. It should have been different all along the way. It should be different now. But, it was the way it was and it is the way it is.

Here’s the kicker. I believe that the publishers would be wise to rectify the injustices of the past as best as can be done, and to install enlightened policies going forward. I honestly think that would lead to far more great things being created, far greater profits in the long term…and far fewer lawsuits right away.

http://www.jimshooter.com/