Siegel v. Time Warner Inc.

496 F.Supp.2d 1111

Joanne SIEGEL and Laura Siegel Larson, Plaintiffs, v. TIME WARNER INC., Warner Communications Inc., Warner Bros. Entertainment Inc., Warner Bros. Television Production Inc., and D.C. Comics, Defendants.

No. CV-04-8776-SGL(RZX).

No. CV-04-8000-SGL (RZx).

United States District Court, C.D. California.

July 27, 2007.

COPYRIGHT MATERIAL OMITTED

Marc Toberoff, Nicholas Calvin Williamson, Rafael Gomez-Cabrera, Marc Toberoff Law Offices, Los Angeles, CA, for Plaintiffs.

Michael Bergman, Anjani Mandavia, Adam Beriah Hagen, Weissmann Wolff Bergman Coleman Grodin & Evall, Beverly Hills, CA, James D. Weinberger, Roger L. Zissu, Fross Zelnick Lehrman & Zissu, Patrick T. Perkins, Perkins Law Offices, Cold Spring, NY, for Defendants.

ORDER GRANTING DEFENDANTS' MOTION FOR RECONSIDERATION

LARSON, District Judge.

This case is the latest chapter in the continuing saga over who owns the copyright to "Superboy," the youthful persona of the iconic comic book super hero "Superman," spanning from the golden age of print media comics to the present-day revolution in digital media. Like the entire spectrum of graphics media technology, the law governing ownership rights to copyrights has changed dramatically, and it is precisely these changes in the law that bring this case to this Court.

Although the story of how Superman and later Superboy came into being has become the stuff of legend among comic book fans, the Court will recite it once more for those unfamiliar with the tale.

Jerome Siegel and Joseph Shuster are Superman's creators. In 1933, Siegel conceived of the idea of a comic strip featuring a character who is sent to Earth from a distant planet and, with superhuman powers, performs daring feats for the public good. Siegel named his character "Superman." Siegel discussed his idea with Shuster, an artist, and together they crafted a comic strip consisting of several weeks worth of material (both dialogue and artwork, some of the latter being completely "inked in" and ready for publication, and some consisting of no more than black-and-white pencil drawings) suitable for newspaper syndication embodying that idea. The two shopped the character around for a number of years to numerous publishers but were unsuccessful in having it published. In the meantime, Siegel and Shuster penned other comic book strips at their artist studio in Cleveland, Ohio, and sold them for publication, most notably "Slam Bradley" and "The Spy" to Nicholson Publishing Co., who purchased their material for resale to Detective Comics. When Nicholson folded shop in 1937, Detective Comics acquired some of its magazine properties, including the comic book strips penned by Siegel and Shuster.

The two entered into an agreement with Detective Comics on December 4, 1937, whereby they agreed to furnish some of the existing comic strips for the next two years and further agreed "that all of these products and work done by [them] for [Detective Comics] during said period of employment shall be and become the sole and exclusive property of [Detective Comics] and [Detective Comics] shall be deemed the sole creator thereof...." The agreement further provided that any new or additional features by Siegel and Shuster were to be submitted first to Detective Comics, who was given the initial option (to be exercised within sixty days after submission) to publish the material. Soon thereafter Detective Comics became interested in publishing Siegel and Shuster's now well-traveled Superman idea (but in an expanded 13-page comic book format), the interest eventually culminating with Superman's release in April, 1938, in the first volume of Action Comics, a new comic magazine issued by Detective Comics. The Superman comic strip became an instant success and Superman's popularity continues to endure to this day as his depiction has been transferred to varying media formats.

On March 1, 1938, before Superman's publication, Siegel and Shuster assigned to Detective Comics "all [the] good will attached ... and exclusive right[s]" to Superman in exchange for $130. This assignment in ownership rights was later confirmed in a September, 22, 1938, employment agreement in which Siegel and Shuster acknowledged that Detective Comics was "the exclusive owners" of not only the other comic strips they had penned earlier for Nicholson (and continued to pen for Detective Comics) but Superman as well; that they would continue to supply the art work and storyline (or in the parlance of the trade, the "continuity") for said comics at varying per page rates depending upon the comic in question (Superman being paid at the highest rate offered of $10 per page) for the next five years; that Detective Comics had the "right to reasonably supervise the editorial matter" of those existing comic strips; that Siegel and Shuster would not furnish "any art or copy ... containing the ... characters or continuity thereof or in any wise similar" to said comic strips to a third party; and Detective Comics would have the right of first refusal (to be exercised within a six week period after the comic's submission) with respect to any future comic strip creations conceived by Siegel or Shuster:

In the event you shall do or make any other art work or continuity suitable for use as comics or comic strips, you shall first give us the right to first refusal thereof by submitting said copy and continuity ideas to us. We shall have the right to exercise that option for six weeks after submission to us at a price no greater than offered to you by any other party.

Not long thereafter, on November 30, 1938, Siegel pitched the idea to Detective Comics of serializing a comic concerning the exploits of Superman as a young man. Siegel called his character "Superboy." As Siegel explained the synopsis for the new comic strip:

Superboy ... would relate the adventures of Superman as a youth.... I'd like the strip to have a large number of pages, such as 13 so that I could develop it as well as Superman.... Tho the strip would feature super-strength, it would be very much different from the Superman strip inasmuch as Superboy would be a child and the type of adventures very much different. There'd be lots of humor, action, and the characters would be mainly children of about 12-years rather than adults. Also, inasmuch as this strip will probably be used as a newspaper feature, I should think that you would want to own all rights to it by having it first appear in your magazine.

Detective Comics, by a letter dated December 2, 1938, effectively declined to publish Siegel's proposed Superboy comic. Siegel later re-pitched the idea in December, 1940, through the submission of a lengthy script containing the storyline and dialogue for the proposed comic strip's first release or releases that fleshed out in greater detail the outlines of the Superboy story arch. Detective Comics again effectively declined to publish Superboy.

Siegel entered the United States Army in July, 1943, to serve his country during World War II. In December, 1944, while Siegel was stationed abroad, Detective Comics published, without notice to Siegel and without his consent, an illustrated five-page comic strip entitled "Superboy" appearing as one among many other comics strips in the body of volume 101 of its magazine More Fun Comics. The illustrations for the first Superboy comic strip were done by Shuster at the direction of Detective Comics. When Detective Comics published volume 101 to More Fun Comics it also secured a copyright in all the contents of the same under Copyright Registration No. B653651. Thereafter Detective Comics continued to publish (and Shuster for a period of time continued to illustrate) "Superboy" comic strips, first in its serialized magazine More Fun Comics, then in Adventure Comics, and eventually as a stand-alone feature in the self-titled comic book Superboy.

Detective Comics' publication of Superboy increased an already growing rift between the parties predicated largely upon Siegel and Shuster's conclusion that Detective Comics had not paid them their fair share of profits generated from the exploitation of their Superman creation, as well as the profits generated from characters like Superboy, which had his roots in the original Superman character. As a result, in 1947, Siegel and Shuster brought an action against Detective Comics' successor, National Periodical Publications, Inc., in New York Supreme Court, Westchester County, seeking to annul and rescind their previous agreements with Detective Comics as void for lack of mutuality and consideration. As part of the suit Siegel argued that Detective Comics had no right to publish his "Superboy" creation.

Towards that end, the third cause of action in the New York state court complaint asserted that the release of the Superboy comic strip in More Fun Comics, no. 101, "was based entirely upon the synopsis submitted" by Siegel to Detective Comics, "and contained in detail the same characters, incidents and plot" in the synopsis. (Defs' App. of Docs. in Supp. Mot. Recons., Ex. 7 at ¶ 30). The complaint further alleged that Detective Comics' publication of Superboy was done "without the consent of" and without payment to Siegel. (Defs' App. of Docs. in Supp. Mot. Recons., Ex. 7 ¶¶ 31, 33). These points were important as the third cause of action averred that Siegel's Superboy submissions belonged to him alone in light of Detective Comics' failure to exercise its, right of first refusal under the parties' September, 1938, contract. (Defs' App. of Docs. in Supp. Mot. Recons., Ex. 7 ¶¶ 28-29). Essentially, the third cause of action pled that Detective Comics had stolen Siegel's Superboy idea. (Defs' App. of Docs. in Supp. Mot. Recons., Ex. 7 ¶ 31 (averring that Detective Comics' publication of Superboy "use[d] and was based upon the conception and idea as submitted in writing and detail by the plaintiff, SIEGEL")).

In the alternative, the fourth...