by Jeff Trexler
DC has cited its changes and additions to the Super-verse as grounds for reducing the Siegel heirs’s share of Superman material produced since 1999. A recent Variety article takes this even further, reporting thatNeil Gaiman’s success in winning co-ownership of Medieval Spawn provides legal precedent for giving DC complete ownership of the contemporary Superman, limiting the Siegels’ interest to the far less lucrative 1938 version of the character.
Does DC have strong legal grounds for splitting Superman between The Man of Tomorrow and The Man of Yesterday? Click below to see if Gaiman v. McFarlane is legal kryptonite for creators’ rights–or whether that’s just another misconceived retcon.
It would indeed be ironic if Neil Gaiman–who likened the Siegels’ landmark 2008 courtroom victory to his own–were to provide the basis for gutting the heirs’ financial stake in modern Superman material. But that’s not likely to happen. In fact, DC has a strong incentive not to rely on Gaiman as precedent for splitting Superman in two–namely, its arguments in the Superboy case.
Is Superboy Superman?
As I’ve noted previously, the most recent and resurrection of Superboy coincided with significant developments in the Siegel Superboy lawsuit. Perhaps, as some have argued, the events were completely unconnected, but one particularly salient aspect of the lawsuit appears to suggest otherwise: in 2005 DC did not merely lose co-ownership of Superboy. It lost the entire copyright.
This first Superboy termination ruling made the rather peculiar determination that Superboy and Superman were unrelated characters. Superboy was “not in reality Superman,” but was instead “a separate and distinct entity” created by Jerry Siegel apart from any Superman material. Pursuant to this finding, the Siegel heirs were able to reclaim the character, and the judge ordered a trial to determine whether any Time Warner projects violated the Siegels’ copyright.
DC’s ongoing exploitation of Superman became an immediate concern. The parties’ primary focus was Smallville, which DC steadfastly maintained had no connection to Superboy but was instead derived exclusively from Superman, as evidenced in part by the young Clark Kent’s not wearing the iconic Superman costume. The status of the character expressly named Superboy was a somewhat different matter–if DC had continued publishing comics with a character expressly named Superboy, there would have been a stronger basis for finding infringement.
But that’s not the end of this legal story. In a subsequent motion for review, DC was able to get the court to vacate this ruling and nullify the Siegels’ complete ownership of the Superboy copyright. According to DC, any apparent differences between Superman and his adolescent self were merely trivial variations on Superman’s distinctive traits. The judge left the issue open for further briefing, but even the Siegels conceded that Superboy was at most a separately copyrighted derivative work adapted from pre-existing Superman material.
Superboy, Superman and derivative works
The treatment of derivative works is crucial for understanding not just the Superboy copyright, but the Gaiman case and its relevance to Superman. A separately copyrightable derivative work does not give its owner an unbounded ownership interest–otherwise it would be too easy for a creator to postpone the end of a copyright term indefinitely by creating new works that include old material. Rather, the copyright in such a work “”>covers only the additions, changes or other new material appearing for the first time in the work. It does not extend to any preexisting material and does not imply a copyright in that material.”
Whether the court ultimately decides with DC or the Siegels in the Superboy case, the outcome is likely to be favorable to DC. Even if the court were to find that new elements characteristic of Superboy are sufficient to make him a separately copyrightable character–and that’s not at all certain–the separate character copyright in Superboy would not extend to previously published elements owned by the co-owners of Superman, presently the Siegels and DC. At the very least, DC gets a financial stake in Superboy through the character’s expression of pre-existing Superman material–an ownership interest that DC would lose were the court to use the differences between Superboy and Superman to justify splitting them into two completely unrelated characters.
The derivative works issue creates even greater complications in the Superman case. The termination of the infamous 1938 sale of Superman to Detective Comics, Inc. gave the Siegels co-ownership of previously created Superman material, and the remaining Shuster heir stands to recapture the other half in 2013. However, DC has added a considerable number of new elements to the Superman mythos since 1938. Not only does this raise serious questions as to the value of the Siegel’s ownership share, but it raises the distinct possibility that as of 2013 DC will not be able to create any new Superman material without getting a license from any of the co-owners of the preexisting material from which the modern Super-verse is derived.
This is the dilemma that the Gaiman case supposedly solves. According to the interpretation espoused in the Variety article and the student note on which it is based, the 2004 appellate court decision giving Gaiman co-ownership of Medieval Spawn established a radically new approach to derivative works, effectively erasing the copyright interest of the owner of the underlying preexisting material. Instead, the judge has the power to recognize a separately copyrighted derivative character as a property in which the author of the preexisting material has no ownership interest–which in the Superman case, means that the judge could give DC exclusive rights in the modern Superman while limiting the Siegel and Shuster heirs to the far less lucrative Superman material from 1938.
What the Gaiman case really means
Although this interpretation of the Gaiman case may be reassuring to Time Warner and other media conglomerates looking for ways to get around creators’ termination rights, it is not in fact what the court ruled. To see why, let’s take a closer look at what Neil Gaiman won.
The dispute over the ownership of Medieval Spawn arose from a situation that other writers and artists would do well to avoid–working together without a written agreement. In this instance, Gaiman wrote and Todd McFarlane drew a character now known as Medieval Spawn who proved to have substantial market value long after his first appearance in Spawn #9. According to McFarlane, though, he owed Gaiman nothing for any subsequent use, since Medieval Spawn ostensibly had no copyrightable characteristics apart from those already present in McFarlane’s preexisting copyrighted character, Spawn. The court, in a 2004 opinion by noted conservative jurist Richard Posner, disagreed–it found that Medieval Spawn had differed from the original Spawn in several distinct ways, including visual appearance, manner of speaking, historic setting and alter ego, which was clearly not not twentieth-century CIA agent Al Simmons. Accordingly, the court affirmed that Medieval Spawn was a separately copyrightable derivative work co-owned by both of its creators.
In keeping with established copyright doctrine governing derivative works–and described in cases expressly cited by Posner as legal authority in his opinion–the Medieval Spawn copyright covered the distinct new elements not drawn from the preexisting copyrighted character, Spawn. Gaiman’s legal right to incorporate these elements in a new derivative work was implicit in his agreement with his co-creator McFarlane, who was also Spawn’s creator and the owner of the Spawn copyright.
According to the latest court filings a settlement is still being negotiated, but the various court rulings in the case establish that Gaiman’s co-ownership interest as the Medieval Spawn’s co-creator gives him a clear financial stake in any profits that Medieval Spawn generated. Because he and McFarlane had not specified otherwise in a written agreement, under the default rule for joint ownership the profits are to be divided equally. This extends not just to the direct exploitation of Medieval Spawn in comics, statues and other material, but to the character’s own separately copyrighted derivative works–principally Dark Ages Spawn, which, despite its distinct elements, was substantially similar to the preexisting material that Gaiman co-created.
Medieval Spawn’s legal status as a derivative work, however, makes the question of Gaiman’s right to use the character somewhat more complex, once again in no small measure due to the lack of a written agreement delineating any terms. The 50/50 split of the profits does not automatically give Gaiman an unfettered right to use Medieval Spawn, as if he were, like Jerry Siegel or Joe Shuster, the joint owner of a wholly original work. Because Medieval Spawn is a derivative work, the separate copyright in the character extends only to such material as is new to the character. Any elements drawn from the pre-existing Spawn material remain the property of the initial creator–that is, Todd McFarlane–and as such arguably can be used only with McFarlane’s permission as a sublicensee. It is conceivable that a court could infer that Gaiman has an express or implicit license for ongoing independent use from the circumstances of the character’s co-creation, but such an inference is not required by law.
This may sound unusual, but it is actually a quite common legal problem, particularly in the software industry and other businesses that license works for specialized adaptation. For example, consider the following scenario based on an actual court ruling in the same appellate circuit as the Siegel lawsuits. Company X licenses a copyrighted photo and substantially alters it for use in the company’s advertising. After a specified period of time, the underlying license expires. Even though the alterations may be sufficiently distinct as to make Company K the co-owner of a separately copyrightable derivative work, Company K legally cannot re-use the altered photo without getting a new license from the photographer who created the pre-existing image.
And this is where things get particularly interesting–because in the Superman case, DC is Company X.
What Gaiman means for Superman
As it stands, the Gaiman case DID NOT establish a clear precedent for depriving the Siegel and Shuster heirs of their rights in contemporary derivative works by arbitrarily splitting Superman into two separate characters. Moreover, Gaiman does not give judges the authority, as some have suggested, to use DC’s derivative Superman material as the basis for giving the company an unfettered right to create new Superman works as co-owner after Siegel and Shuster heirs recapture the entirety of the original copyright in 2013. The law on both fronts is well established, both in precedent and in the Copyright Act–copyright owners of preexisting material have exclusive rights to create or to authorize derivative works, and the former owner of a terminated copyright interest does not have the right to produce new post-termination derivative works without a license.
If DC’s lawyers are relying on the relaunch, changes in powers or any other variant in Superman’s characterization as the basis for establishing that the contemporary Super-verse has no intrinsic ties to the Siegel and Shuster material, it’s a strategy that has little chance of success. Such differences may reduce the amount of any payout to the heirs in apportioning post-termination profits, but they have littl chance of erasing the incontrovertible connections between the past and present Superman universe, from Clark Kent, Lois Lane, and the super-strong do-gooder from Krypton to recurring narrative themes that apparently will continue through the relaunch and beyond.
Nonetheless, even if the parties do not settle and it looks like the Shuster heir will succeed in recapturing the remaining 50% of the original Siegel and Shuster Superman material in 2013, there are ways for DC to try to minimize the potential damage. Not only would DC continue to have the right to continue to sell copies of items created between 1938 and the 2013 termination date, the company would likely challenge any new works by the heirs that call to mind the Superman with which we are familiar, on the grounds that such material would infringe on the copyrighted elements that DC will continue to own. There are arguments to counter such legal action, but the fight would no doubt be expensive.
Ultimately, though, perhaps the most effective way outside of settlement for DC to limit the damage from 2013 would be to persuade a higher court to overturn the Siegels’ landmark 2008 victory. It’s a strategy that worked with Superboy, and it could happen with Superman as well.
In my next post, I’ll explain how DC just might be able to win.
[Jeff Trexler is a lawyer and consultant and a comics fan who writes frequently about how legal matters pertain to comics.]