Who Owns Superman?

Auric D. Steele

The phrase “Superman Returns” has special meaning for the heirs of Superman’s creators, who have filed notice, pursuant to 17 U.S.C. § 304(c) and (d), to terminate the original transfer of copyright and claim ownership of all rights in the character.

The Man of Steel as originally drawn by Joe Shuster in the 1930s

This story has been vigorously covered by comic book fan sites and publications during the past decade. It has been mentioned on reputable IP sites and in copyright casebooks and yet it was conspicuously absent from the mainstream media during the promotional blitz for the recent Superman film, Superman Returns.

This story involves provisions of the Copyright Act, which are intended to operate as safety nets for authors who have signed away all their rights in a work. These provisions offer authors, or their estates, the opportunity to reclaim the copyrights in works that were originally transferred under the 1909 Copyright Act. The impact of these provisions is significant to the ownership of one of the most valuable pieces of intellectual property of all time.

Siegel and Shuster

The history of copyright is replete with examples of unfair dealing, deception, and betrayal by publishers against authors. Few of these stories are as compelling as the plight of Jerry Siegel and Joe Shuster, the two Cleveland teenagers who created Superman in 1933 while still in high school and inadvertently signed away all rights in their creation in 1938 for a grand total of $130. The details of how this controversy played out over the subsequent decades is far too complicated to explain here. Suffice it to say that Siegel and Shuster tried unsuccessfully to regain ownership of Superman through U.S. copyright law. However, they were successful in receiving some additional compensation through state contract litigation in the 1940s. Then, in the 1970s, as a way to quell a public relations backlash, DC Comics parent company, Warner Communications (now Time Warner), agreed to pay the then destitute and bitter Siegel and Shuster modest pensions and to resume giving them credit, on screen and in print, as the creators of Superman.

Jerry Siegel and Joe Shuster both died during the 1990s.

The Superman Copyrights were created under the 1909 Copyright Act, which provided for a fixed term of twenty-eight years and one optional renewal term of an additional twenty-eight years. Under the 1976 Copyright Act, all such subsisting copyrights were automatically extended to last a total of seventy-five years. They were extended again in 1998 with the enactment of the Sonny Bono Copyright Term Extension Act (“CTEA”) to last for a total of ninety-five years. Barring any more extensions of the duration of copyright protection, Superman, at least in his original form, will enter the public domain in 2033.

The Copyright Act provides that “the exclusive or non-exclusive grant of a transfer or license of the renewal copyright or any right under it, executed before January 1, 1978 . . . . . is subject to termination.” 17 U.S.C. § 304(c). Section 304(c)(2) explains how this provision works when an author is dead and provides that the author’s widow, children, or executor may file a notice of termination on the author’s behalf. Section 304(c)(3) explains that termination must take place within a five-year window beginning fifty-six years from the date of the original transfer. Section 304(c)(4) explains the formalities of serving and filing the notice upon the grantee or the grantee’s successor in title, and section 304(c)(5) provides that “[t]ermination of the grant may be effected notwithstanding any agreement to the contrary . . .” In essence, this last provision overrides a prior transfer or relinquishment of rights by contract, no matter how thoroughly or completely those rights were relinquished.

An additional five-year window of opportunity for termination of copyright transfer was added as part of the CTEA for copyrights that were in their renewal term at the time the CTEA was enacted and whose original opportunity for termination had expired. 17 U.S.C. § 304(d). This section also provides that termination “may be effected at any time during a period of 5 years beginning at the end of 75 years from the date copyright was originally secured.”

Jerry Siegel’s wife and daughter are the beneficiaries of his right of termination under the Copyright Act. Joe Shuster had no children and was unmarried at the time of his death. His nephew, as executor of his estate, holds Shuster’s right of termination under the Copyright Act.

For clarification, it should be noted that there are two separate copyrights at issue, and, as mentioned above, two separate five-year windows of opportunity in which to effectuate termination of a copyright transfer. Additionally, there are two separate estates with rights of termination in only fifty percent each of the copyrights in question.

Two separate copyrights
The transfer of rights in all the elements of the original Superman material took effect in 1938. In previous litigation, however, it was determined that the character of Superboy was distinct and separate from Superman and, therefore, not covered by the Superman copyright. The transfer of rights in the Superboy character and all related elements took effect as part of a settlement following Siegel and Shuster’s partial victory in state contract litigation in 1948. The New York state court ruled that the publisher had acted illegally when it published the previously rejected Superboy Comics material without compensating or giving attribution to Siegel while he was serving in the U.S. Army during World War II. This material included the setting of Superman’s hometown of Smallville, as well as additional characters currently featured on the Warner Brothers Television series of the same name.

Two Separate Windows of Opportunity
The widow and daughter of Jerry Siegel filed a Notice of Termination sometime during the first window of opportunity for the original 1938 transfer of copyright. (1938 + 56 = 1992). Presumably, this made them owners of fifty percent of the Superman character for the remainder of the copyright term. No action was taken by the Shuster estate during this time. Representatives of Time Warner began negotiations with the Siegels to share future profits from the now co-owned property which had already earned the corporation more than one billion dollars in profits and generated many millions each year. While these negotiations were going on, the CTEA was enacted, making the property more valuable by extending the term of protection an additional twenty years. Negotiations have since broken down, and the Siegels have filed suit in federal court to enforce their rights.

The Shuster Estate Completes the Termination
Joe Shuster’s nephew, Mark Peary, has now filed notice as executor of his uncle’s estate that the remaining fifty percent of the original copyright transfer will terminate in 2013. This is at the beginning of the second window of opportunity provided for by Section 304(d) of the Copyright Act (1938 + 75 = 2013), and will provide for fifty percent ownership for the final twenty years of copyright protection. Both Peary and the Siegels filed notices of termination of transfer of the copyright in the Superboy character and all related elements in 2004 (1948 + 56 = 2004) during the first window of opportunity for this termination. According to an article in IP Frontline and several other sources, these notices were ruled to be effective by the Federal Judge currently hearing the case in the Central District of California.

To recap: if the Siegel’s termination is effective, Time Warner currently owns only fifty percent of the Superman character and all original elements of the Superman story. This is occurring at a time when the media giant is exploiting this property on the grandest possible scale. If the termination of the transfer of the Superboy copyright is fully effective, Time Warner owns no rights in that property at this time. As was stated earlier, this separate copyright includes components of the back-story of Superman, and several elements of the television show Smallville, which is currently in its sixth season of production.

Derivative Works
Termination of copyright transfer under Section 304 does not affect derivative works created during the period of the grant. Specifically, Section 304(c)(6)(A) provides that “[a] derivative work prepared under authority of the grant before its termination may continue to be utilized under the terms of the grant after its termination, but this privilege does not extend to the preparation after the termination of other derivative works based upon the copyrighted work covered by the terminated grant.” This means that no accounting is owed to the estates of Siegel and Shuster for past or future profits generated by derivative works created during the grant period. Rights in works such as the 1950s television series, the Christopher Reeve movies, and all the comics and cartoon programs created during the grant period do not revert to the estates of Siegel and Shuster under this provision. These works are protected by separate copyrights which Time Warner will retain until they expire. They will therefore not enter the public domain in 2033 along with the Superman character.

Trademark Law
Unlike copyright, trademark protection does not expire after a term of years. In fact, it can remain in effect perpetually as long as the user of the mark follows certain procedures set out by law, continues to use its mark in commerce, and takes steps to protect its exclusive use of the mark. Trademark law deals with commerce, and, unlike copyright, its purpose is to protect the consumer rather than the creator of a product. This is an oversimplification, but to fully explain the potential impact of trademark law on the ownership of the Superman character is far beyond the scope of this article. It is undeniable that Time Warner has registered many marks related to the Superman property. It has used these marks extensively in commerce, and it has vigorously protected its rights to exclusively use these marks under trademark law. Apart from copyright, trademark law enhances the ability of Time Warner to prevent competitors from producing Superman related products and could significantly limit the options of the estates of Siegel and Shuster to go into business with a competing company.

As stated above, this case is currently in active litigation in the Federal District Court for the Central District of California. The Brand will continue to follow this story as it develops and report any settlements or decisions as they occur.

For more information, see the following:
Matt Brady, Inside the Siegel/DC Battle for Superman, http://www.newsarama.com/DC/Superman/Intro.htm

Caroline H. Rockafellow, Superman and Copyright Termination, http://www.ipfrontline.com/depts/article.asp?id=10567&deptid=3

Ralph S. Brown & Robert C. Denicola, Copyright: Unfair Competition and Related Topics Bearing on the Protection of Works of Authorship 536 (9th ed., Foundation Press 2005).

Siegel v. National Periodical Pub., 364 F. Supp. 1032 (S.D.N.Y 1973).

Siegel v. National Periodical Pub., 508 F.2d 909 (2d Cir. 1974). This case overruled the lower court decision which stated that Superman was a work for hire, but affirmed its ruling that Siegel and Shuster, by signing away “all” rights in the Superman character had transferred rights in the renewal term under the 1909 Act.