Marvel Characters, Inc. v. Kirby , 726 F.3d 119 ( 2013 )


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  •      11-3333-cv
    Marvel Characters, Inc. v. Kirby
    1                  UNITED STATES COURT OF APPEALS
    2                       FOR THE SECOND CIRCUIT
    3                         August Term, 2012
    4     (Argued: October 24, 2012           Decided: August 8, 2013)
    5                       Docket No. 11-3333-cv
    6              -------------------------------------
    7        MARVEL CHARACTERS, INCORPORATED, MARVEL WORLDWIDE,
    8                  INCORPORATED, MVL RIGHTS, LLC,
    9             Plaintiffs-Counter-Defendants-Appellees,
    10     WALT DISNEY COMPANY, MARVEL ENTERTAINMENT, INCORPORATED,
    11                  Counter-Defendants-Appellees,
    12                                 - v -
    13     LISA R. KIRBY, NEAL L. KIRBY, SUSAN N. KIRBY, BARBARA J.
    14                              KIRBY,
    15             Defendants-Counter-Claimants-Appellants.
    16              -------------------------------------
    17   Before: CABRANES, SACK, and CARNEY, Circuit Judges.
    18            Appeal by the defendants-counter-claimants from a
    19   judgment of the United States District Court for the
    20   Southern District of New York (Colleen McMahon, Judge)
    21   granting summary judgment in favor of the plaintiffs-
    22   counter-defendants on their claim for declaratory relief and
    23   denying the defendants-counter-claimants' cross-motion for
    24   summary judgment.   Plaintiffs-counter-defendants commenced
    1   this lawsuit in response to notices sent by the defendants-
    2   counter-claimants, the children of comic book artist Jack
    3   Kirby, purporting to terminate alleged assignments in
    4   certain of their father's works pursuant to
    5   section 304(c)(2) of the Copyright Act of 1976.   We conclude
    6   that: (1) the district court incorrectly determined that it
    7   had personal jurisdiction over Lisa and Neal Kirby; (2) Lisa
    8   and Neal Kirby were not indispensable parties to the action
    9   under Rule 19(b) of the Federal Rules of Civil Procedure;
    10   and (3) the district court correctly determined that the
    11   works at issue were "made for hire" under section 304(c),
    12   and that Marvel was therefore entitled to summary judgment.
    13            Affirmed in part; vacated in part.
    14                          R. BRUCE RICH (James W. Quinn, Randi
    15                          W. Singer, Gregory Silbert, on the
    16                          brief), Weil, Gotshal & Manges LLP,
    17                          New York, New York; David Fleischer,
    18                          Haynes and Boone, LLP, New York, New
    19                          York for Plaintiffs-Counter-
    20                          Defendants-Appellees and Counter-
    21                          Defendants-Appellees.
    22                          MARC TOBEROFF, Toberoff &
    23                          Associates, P.C., Malibu,
    24                          California, for Defendants-Counter-
    25                          Claimants-Appellants.
    26   SACK, Circuit Judge:
    27            This appeal requires us to revisit our case law
    28   applying the work-for-hire doctrine in the context of
    29   section 304 of the Copyright Act of 1976 (or, the "1976
    2
    1   Act"), 
    17 U.S.C. § 304
    .   Defendants-counter-claimants-
    2   appellants Lisa, Neal, Susan, and Barbara Kirby
    3   (collectively, the "Kirbys") are the children of the late
    4   Jack Kirby.   Kirby is considered one of the most influential
    5   comic book artists of all time.     At various times throughout
    6   his career, he produced drawings for Marvel Comics, a comic
    7   book publisher that has since grown into the multifaceted
    8   enterprise reflected in the case caption:     Marvel
    9   Characters, Inc., Marvel Worldwide, Inc., MVL Rights, LLC,
    10   and Marvel Entertainment, Inc. (collectively, "Marvel").        At
    11   issue here are the rights to drawings Kirby allegedly
    12   created between 1958 and 1963.
    13            The Kirbys appeal from the district court's grant
    14   of summary judgment to Marvel, which was based on the
    15   conclusion that all of the works at issue are "works made
    16   for hire" within the meaning of section 304(c), and that the
    17   Kirbys therefore have no rights to the works.     Two of the
    18   Kirbys, Lisa and Neal, also challenge the district court's
    19   conclusion that it had personal jurisdiction over them under
    20   New York's long-arm statute.     They further argue that they
    21   are indispensable parties under Rule 19(b) of the Federal
    22   Rules of Civil Procedure, such that their absence from this
    23   lawsuit (by virtue of the district court's lack of personal
    3
    1   jurisdiction over them) requires that the suit be dismissed
    2   in its entirety.
    3            We conclude that the district court was without
    4   personal jurisdiction over Lisa and Neal.     We therefore
    5   vacate the judgment as against them.     We also find, however,
    6   that Lisa and Neal are not indispensable parties to this
    7   lawsuit, and that the district court was correct in
    8   concluding that the works at issue are "works made for hire"
    9   under section 304(c).   We therefore affirm the judgment as
    10   to defendants Barbara and Susan.
    11                             BACKGROUND
    12            In this appeal from the grant of summary judgment,
    13   we view the evidence in the light most favorable to the
    14   nonmovants, the Kirbys for present purposes, and draw all
    15   reasonable inferences in their favor.     See, e.g., Singer v.
    16   Ferro, 
    711 F.3d 334
    , 339 (2d Cir. 2013).
    17            Jack Kirby
    18            Jack Kirby, born Jacob Kurtzberg in New York
    19   City's Lower East Side in 1917, began his career in the
    20   comic book business in the late 1930s.     In the summer of
    21   1940, a young woman named Rosalind moved into the apartment
    22   above his with her family.   The day they met, Kirby asked
    23   Rosalind if she "[w]ould like to see [his] etchings[.]"       She
    24   thought he wanted "to fool around"; he only wanted to show
    4
    1   her his drawings for a new comic book series called Captain
    2   America.    John Morrow, "Would You Like to See My Etchings?":
    3   Rosalind Kirby Interviewed (conducted Dec. 12, 1995), THE
    4   JACK KIRBY COLLECTOR, April 1996, at 6.    Kirby and "Roz" were
    5   married in 1942.    After Kirby's military service in World
    6   War II, the couple had four children: Susan, Neal, Barbara,
    7   and Lisa.
    8               Kirby's career in comic book illustration spanned
    9   more than half a century.    His influence was substantial.
    10   An obituary marking his death in 1994 quoted Joe Simon,
    11   Kirby's creative partner for fifteen years: "He brought the
    12   action drawing to a new level.      His style was imitated all
    13   over and still is today to a certain extent."       Jack Kirby,
    14   76; Created Comic Book Superheroes, N.Y. TIMES, Feb. 8, 1994,
    15   at D22.
    16               Kirby was prolific, too.     In 1951 alone, 308 pages
    17   of Kirby's work appeared in published comic books.       This
    18   output was typical for him in the years between 1940 and
    19   1978.
    20               Marvel Comics and Stan Lee
    21               Marvel was founded as Timely Comics in 1939 by one
    22   Martin Goodman.    In 1940, Marvel purchased the first ten
    23   issues of Captain America from Kirby and Joe Simon.       But
    5
    1   Kirby and Simon would soon move on to a competitor, DC
    2   Comics.     To replace them, Goodman hired one Stanley Lieber.
    3               Lieber would come to be known by his pen name,
    4   Stan Lee.     Lee is in his own right a towering figure in the
    5   comic book world, and a central one in this case.      He in
    6   effect directed Marvel from the early 1940s until sometime
    7   in the 1970s, serving, in his words, as "Editor," "Art
    8   Director" and "a staff writer."     Deposition of Stan Lee
    9   ("Lee Dep."), May 13, 2010, at 17, Joint App'x at 2437.        He
    10   continued to work for Marvel in one capacity or another at
    11   least to the day of his deposition testimony in this
    12   litigation.
    13               But in the 1940s and 50s, Marvel, hobbled by poor
    14   business decisions, was hardly a success story.1     In 1958,
    15   Kirby began producing drawings for Marvel once again.        And
    16   by 1961, its fortunes began to change.     That year, Marvel
    17   released the first issues of The Fantastic Four.      On its
    18   heels were releases of the first issues of some of Marvel's
    1
    Certainly not helping matters was a mid-1950s
    investigation by the United States Senate into comics' alleged
    corrupting influence on America's youth. On April 21, 1954, a
    subcommittee of the Senate Judiciary Committee held a televised
    hearing on the topic. Louis Menand, The Horror: Congress
    investigates the comics, THE NEW YORKER, Mar. 31, 2008, at 124.
    The venue was the United States Courthouse at 40 Foley Square in
    New York City -- named in 2001 the "Thurgood Marshall United
    States Courthouse" -- in which this opinion was prepared. 
    Id.
    6
    1   most enduring and profitable titles, including The
    2   Incredible Hulk, The X-Men, and Spider-Man.
    3               Kirby's Relationship with Marvel from 1958-1963
    4               This litigation concerns the property rights in
    5   262 works published by Marvel between 1958 and 1963.      Who
    6   owns these rights depends upon the nature of Kirby's
    7   arrangement with Marvel during that period.
    8               It is undisputed that Kirby was a freelancer,
    9   i.e., he was not a formal employee of Marvel, and not paid a
    10   fixed wage or salary.     He did not receive benefits, and was
    11   not reimbursed for expenses or overhead in creating his
    12   drawings.     He set his own hours and worked from his home.
    13   Marvel, usually in the person of Stan Lee, was free to
    14   reject Kirby's drawings or ask him to redraft them.      When
    15   Marvel accepted drawings, it would pay Kirby by check at a
    16   per-page rate.
    17               Despite the absence of a formal employment
    18   agreement, however, the record suggests that Kirby and
    19   Marvel were closely affiliated during the relevant time
    20   period.     Lee assigned Kirby, whom he considered his best
    21   artist, a steady stream of work during that period.      See Lee
    22   Dep. at 36, Joint App'x at 2456 ("I wanted to use Jack for
    23   everything, but I couldn't because he was just one guy.");
    7
    1   
    id. at 37
    , Joint App'x at 2457 ("So I said:      All right,
    2   forget it, Jack.     I will give [the Spider-Man strip] to
    3   somebody else.     Jack didn't care.   He had so much to do.");
    4   
    id. at 30
    , Joint App'x 2450 ("He got the highest [rate]
    5   because I considered him our best artist.").
    6            And Kirby seems to have done most of his work with
    7   Marvel projects in mind.     Although the Kirby children assert
    8   that their father could and did produce and sell his work to
    9   other publishers during those years, lists of Kirby's works
    10   cited by both parties establish that the vast majority of
    11   his published work in that time frame was published by
    12   Marvel (or Atlas Comics, as part of Marvel Comics Group).
    13            The specifics of Kirby and Marvel's creative
    14   relationship during this time period are less clear.
    15            According to Lee, at the relevant time, artists
    16   worked using what the parties call the "Marvel Method."        It
    17   was developed as a way to "keep a lot of artists busy" when
    18   Lee or another writer could not provide the artist with a
    19   completed script.     Lee Dep. at 21, Joint App'x at 2441.     The
    20   first step was for Lee to meet with an artist at a "plotting
    21   conference."     
    Id. at 39-40
    , Joint App'x at 2459-60.   Lee
    22   would provide the artist with a "brief outline" or
    23   "synopsis" of an issue; sometimes he would "just talk . . .
    8
    1   with the artist" about ideas.       
    Id. at 35
    , Joint App'x at
    2   2455.    The artist would then "draw it any way they wanted
    3   to."    
    Id. at 21
    , Joint App'x at 2441.     Then a writer, such
    4   as Lee, would "put in all the dialogue and the captions."
    5   
    Id.
         According to Lee, he "maintain[ed] the ability to edit
    6   and make changes or reject what the other writers or artists
    7   had created."     
    Id. at 22
    , Joint App'x at 2442.
    8               Lee testified that he worked this way with Kirby
    9   "for years":
    10               And Jack Kirby and I would, let's say
    11               when we did the Fantastic Four, I first
    12               wrote a synopsis of what I thought the
    13               Fantastic Four should be, who the
    14               characters should be, what their
    15               personalities were. And I gave it to
    16               Jack, and then I told him what I thought
    17               the first story should be, how to open
    18               it, who the villain should be, and how we
    19               would end it. And that was all. Jack
    20               went home and drew the whole thing. I
    21               put the dialogue in.
    22   
    Id. at 118
    , Joint App'x at 2538.
    23               Other evidence in the record, including some of
    24   Lee's own deposition testimony, indicates, however, that
    25   Kirby had a freer hand within this framework than did
    26   comparable artists.     For example, Lee explained that
    27   "instead of telling [Kirby] page by page" what to draw, Lee
    28   might simply tell him to "[d]evote five pages to this, five
    29   pages to that, and three pages to that."       
    Id. at 70
    , Joint
    9
    1   App'x at 2490.   Sometimes during plotting sessions, Kirby
    2   might "contribute something or he might say, 'Stan, let's
    3   also do this or do that.'"   
    Id. at 41
    , Joint App'x at 2461.
    4            It is beyond dispute, moreover, that Kirby made
    5   many of the creative contributions, often thinking up and
    6   drawing characters on his own, influencing plotting, or
    7   pitching fresh ideas.
    8            The Termination Notices
    9            The dispute before us began in September 2009,
    10   when the Kirbys served various Marvel entities with
    11   documents entitled "Notice of Termination of Transfer
    12   Covering Extended Renewal Term" (the "Termination Notices").
    13   The Termination Notices purport to exercise statutory
    14   termination rights under section 304(c)(2) of the Copyright
    15   Act of 1976, 
    17 U.S.C. § 304
    , with respect to 262 works in
    16   all.
    17            Each notice states an effective date sometime in
    18   the future, presumably between 2014 and 2019.   The effective
    19   dates are calculated according to section 304(c)'s timing
    20   provision, which states in relevant part that
    21   "[t]ermination . . . may be effected at any time during a
    22   period of five years beginning at the end of fifty-six years
    10
    1   from the date copyright was originally secured . . . ."      17
    
    2 U.S.C. § 304
    (c)(3).
    3              Procedural History
    4              Marvel filed this lawsuit on January 8, 2010.    It
    5   sought a declaration that the Kirbys have no termination
    6   rights under section 304(c)(2), and that the Termination
    7   Notices are therefore ineffective.   Marvel's claim was
    8   premised on its contention that all of the works were "made
    9   for hire" by Jack Kirby for Marvel within the definition of
    10   section 304(c).
    11              On March 9, 2010, the Kirbys filed a motion to
    12   dismiss the complaint.   Lisa and Neal Kirby, residents of
    13   California, sought dismissal on the ground that they were
    14   not subject to personal jurisdiction in New York State.
    15   (The other Kirby siblings, Susan and Barbara, are residents
    16   of New York and do not contest personal jurisdiction.)      The
    17   Kirbys also argued that Lisa and Neal are indispensable to
    18   the action under Fed. R. Civ. P. 19, and that Marvel's
    19   entire suit must therefore be dismissed as against all
    20   parties.
    21              The district court denied the motion on April 14,
    22   2010.   Marvel Worldwide, Inc. v. Kirby, No. 10 Civ. 141,
    23   
    2010 WL 1655253
    , 
    2010 U.S. Dist. LEXIS 38701
     (S.D.N.Y. Apr.
    11
    1   14, 2010).   It concluded that it had personal jurisdiction
    2   over Lisa and Neal under New York's long-arm statute, and
    3   that the exercise of this jurisdiction was consistent with
    4   constitutional due process.    
    Id.
     at *3-*9; 2010 U.S. Dist.
    
    5 LEXIS 38701
    , at *7-*25.    It therefore did not reach the
    6   question of whether Lisa and Neal were indispensable
    7   parties.
    8              The Kirbys answered Marvel's complaint and
    9   asserted several counterclaims of their own.    Marvel moved
    10   to dismiss each of them.    On November 22, 2010, the district
    11   court granted the motion as to all but the Kirbys'
    12   counterclaim seeking a declaration that the Termination
    13   Notices were valid.   Marvel Worldwide, Inc. v. Kirby, 756
    
    14 F. Supp. 2d 461
     (S.D.N.Y. 2010).
    15              In early 2011, after discovery was complete, the
    16   parties cross-moved for summary judgment.    Marvel also moved
    17   to exclude some of the Kirbys' evidence, most notably the
    18   reports of the Kirbys' putative expert witnesses, John
    19   Morrow and Mark Evanier.
    20              On July 28, 2011, the district court granted
    21   Marvel's motions to exclude Morrow and Evanier's testimony,
    22   and granted Marvel's motion for summary judgment.    Marvel
    23   Worldwide, Inc. v. Kirby, 
    777 F. Supp. 2d 720
     (S.D.N.Y.
    12
    1   2011).   It relied upon case law in this Circuit applying the
    2   so-called "instance and expense test" to determine whether a
    3   work is "made for hire" under section 304(c).         
    Id.
     at 738-
    4   43.   The court concluded that undisputed facts in the record
    5   establish as a matter of law that the works at issue were
    6   made at Marvel's instance and expense, and were therefore
    7   works made for hire.    
    Id.
         This being so, the Kirbys had no
    8   termination rights, and their Termination Notices were
    9   ineffective.   The district court entered judgment
    10   accordingly on August 8, 2011.
    11             The Kirbys appeal.
    12                                 DISCUSSION
    13             I.   Personal Jurisdiction over Lisa and Neal Kirby
    14             We turn first to the issue of personal
    15   jurisdiction over Lisa and Neal Kirby.         Lisa and Neal are
    16   California residents.   They contend that the district court
    17   erred when it determined that New York State's long-arm
    18   statute provided a basis for jurisdiction over them in the
    19   Southern District of New York.         We review a district court's
    20   legal conclusions concerning its exercise of personal
    21   jurisdiction de novo, and its underlying factual findings
    22   for clear error.   D.H. Blair & Co., Inc. v. Gottdiener, 462
    
    23 F.3d 95
    , 103 (2d Cir. 2006).
    13
    1            A district court must have a statutory basis for
    2   exercising personal jurisdiction.   See Grand River
    3   Enterprises Six Nations, Ltd. v. Pryor, 
    425 F.3d 158
    , 165
    4   (2d Cir. 2005).   Because this is "a federal question case
    5   where a defendant resides outside the forum
    6   state, . . . [and the relevant] federal statute does not
    7   specifically provide for national service of process," PDK
    8   Labs, Inc. v. Friedlander, 
    103 F.3d 1105
    , 1108 (2d Cir.
    9   1997) (internal quotation marks omitted), we apply "the
    10   forum state's personal jurisdiction rules," 
    id.
        We
    11   therefore look to New York State law.
    12            We focus our attention on section 302(a)(1) of New
    13   York State's long-arm statute, 
    N.Y. C.P.L.R. § 302
    (a)(1),
    14   upon which the district court rested its jurisdiction, and
    15   which Marvel invokes here.   Section 302(a)(1) provides that
    16   "a court may exercise personal jurisdiction over any non-
    17   domiciliary . . . who in person or through an agent      . . .
    18   transacts any business within the state . . . ."   
    Id.
         We
    19   have recognized that for section 302(a)(1) to apply, "'it is
    20   essential . . . that there be some act by which the
    21   defendant purposefully avails [herself] of the privilege of
    22   conducting activities within the forum State, thus invoking
    23   the benefits and protections of its laws.'"   Beacon
    14
    1   Enterprises, Inc. v. Menzies, 
    715 F.2d 757
    , 766 (2d Cir.
    2   1983) (alteration in original) (quoting George Reiner and
    3   Co. v. Schwartz, 
    41 N.Y.2d 648
    , 650, 
    363 N.E.2d 551
    , 553,
    4   
    394 N.Y.S.2d 844
    , 846 (1977)).
    5               Under the facts of this case, the only acts that
    6   could potentially give rise to section 302(a)(1)
    7   jurisdiction over Lisa and Neal are the sending of the
    8   Termination Notices to Marvel in New York.      We conclude that
    9   this is an insufficient basis for personal jurisdiction.
    10               In Beacon Enterprises, supra, we applied section
    11   302(a)(1) in a declaratory judgment suit very similar to
    12   this one.     The defendant there, Mary Menzies, thought that
    13   the plaintiff, Beacon, was infringing her trademarks and
    14   copyrights in a line of weight-loss garments designed to
    15   emulate the effects of a sauna.       Beacon Enterprises, 715
    16   F.2d at 760.     Menzies sent a cease-and-desist letter to
    17   Beacon at its New York City headquarters, threatening
    18   litigation.     Id.   Upon receiving it, Beacon filed a suit in
    19   the United States District Court for the Southern District
    20   of New York, seeking a judgment declaring that its products
    21   did not infringe Menzies' intellectual property rights.         Id.
    22               We concluded that Menzies' mailing of the cease-
    23   and-desist letter into New York was insufficient to give
    15
    1   rise to personal jurisdiction over her under section
    2   302(a)(1).   Id. at 762, 766.    We pointed out that "New York
    3   courts have consistently refused to sustain section
    4   302(a)(1) jurisdiction solely on the basis of defendant's
    5   communication from another locale with a party in New York."
    6   Id. at 766 (collecting cases).       And we thought it "difficult
    7   to characterize Menzies' letter alleging infringement in an
    8   unspecified locale and threatening litigation in an
    9   unspecified forum as an activity invoking the 'benefits and
    10   protections' of New York law."       Id.
    11            In Ehrenfeld v. Bin Mahfouz, 
    9 N.Y.3d 501
    , 881
    
    12 N.E.2d 830
    , 
    851 N.Y.S.2d 381
     (2007), the New York Court of
    13   Appeals, responding to a certified question from us,
    14   confronted a somewhat analogous fact pattern.       There, the
    15   defendant had obtained a default judgment against the
    16   plaintiff in English courts for the plaintiff's allegedly
    17   libelous statements.   
    Id. at 505
    , 
    881 N.E.2d at 832
    , 851
    18   N.Y.S.2d at 383.   The plaintiff brought suit in federal
    19   court in the Southern District of New York seeking a
    20   declaration that she could not be held liable for defamation
    21   under the circumstances of that case, and that the
    22   defendant's default judgment was therefore not enforceable
    23   against her in New York.   She argued that the "defendant
    16
    1   ha[d] transacted business in New York because he
    2   purposefully projected himself into the state to further a
    3   'foreign litigation scheme'" -- the libel suit in England --
    4   "designed to chill her speech."     Id. at 508, 
    881 N.E.2d at
    5   834, 
    851 N.Y.S.2d at 385
    .
    6             When the case came before us on appeal, we
    7   certified to the New York Court of Appeals the question
    8   whether section 302(a)(1) conferred jurisdiction in the
    9   circumstances presented.    
    Id. at 504
    , 
    881 N.E.2d at 831
    , 851
    10   N.Y.S.2d at 382; see Ehrenfeld v. Bin Mahfouz, 
    489 F.3d 542
    ,
    11   551 (2d Cir. 2007).    The Court of Appeals answered in the
    12   negative, reasoning:
    13             Here, none of defendant's relevant New
    14             York contacts have invoked the privileges
    15             or protections of our State's laws.
    16             Quite to the contrary, his communications
    17             in this state were intended to further
    18             his assertion of rights under the laws of
    19             England. As defendant points out –- and
    20             plaintiff does not dispute –- his
    21             prefiling demand letter and his service
    22             of documents were required under English
    23             procedural rules governing the
    24             prosecution of defamation actions. And
    25             in none of his letters to plaintiff did
    26             defendant seek to consummate a New York
    27             transaction or to invoke our State's
    28             laws.
    29   Ehrenfeld, 
    9 N.Y.3d at 509
    , 
    881 N.E.2d at 835
    , 
    851 N.Y.S.2d 30
       at 386.
    17
    1            Beacon Enterprises and Ehrenfeld point to the
    2   result of the jurisdictional inquiry here.
    3            Like the defendants in those cases, Lisa and Neal
    4   were not "present" in New York -- whether physically or
    5   through some other continuous contact2 -- in connection with
    6   the underlying dispute in this case.        This factor is not
    7   alone dispositive, of course.        Cf. Deutsche Bank Sec., Inc.
    8   v. Montana Bd. of Invs., 
    7 N.Y.3d 65
    , 71, 
    850 N.E.2d 1140
    ,
    9   1142, 
    818 N.Y.S.2d 164
    , 166-67 (2006) ("[P]roof of one
    10   transaction in New York is sufficient to invoke
    11   jurisdiction, even though the defendant never enters New
    12   York." (internal quotation marks omitted)).        It does,
    13   however, set this action apart from those the New York Court
    14   of Appeals has described as "the clearest sort of case[s] in
    15   which [New York] courts would have 302 jurisdiction," George
    16   Reiner & Co., Inc. v. Schwartz, 
    41 N.Y.2d 648
    , 652 (1977), a
    17   notion plainly grounded in constitutional principles of due
    2
    The New York Court of Appeals has recognized that an
    individual, although not physically present in the state, may
    still be present in the relevant sense through some "direct and
    personal involvement" in "sustained and substantial transaction
    of business." Parke-Bernet Galleries v. Franklyn, 
    26 N.Y.2d 13
    ,
    18, 
    256 N.E.2d 506
    , 508, 
    308 N.Y.S.2d 337
    , 340 (1970).
    Participation in an auction by phone is one example. 
    Id.
     Marvel
    does not allege such a connection in this case, and we do not
    perceive one in the record.
    18
    1   process developed by the federal courts in and since
    2   International Shoe Co. v. Washington, 
    326 U.S. 310
     (1945).
    3               Neither were Lisa and Neal's communications part,
    4   or in contemplation, of a course of business dealings with
    5   Marvel.     This distinguishes them from the sort of
    6   communications we found sufficient to confer section
    7   302(a)(1) jurisdiction in PDK Labs, a case relied upon by
    8   the district court, but distinguished in Ehrenfeld, 
    9 N.Y.3d 9
       at 510, 
    881 N.E.2d at 836
    , 851 N.Y.S.2d at 387.        In PDK
    10   Labs, we concluded that the defendant had "purposefully
    11   availed himself of the New York forum by using [his agent]
    12   in New York and apparently elsewhere for many years to
    13   advance his interest in his unique 'product' through
    14   soliciting funds and negotiating royalty agreements."           PDK
    15   Labs, 
    103 F.3d at 1111
    ; see also Hoffritz for Cutlery, Inc.
    16   v. Amajac, Ltd., 
    763 F.2d 55
    , 57 (2d Cir. 1985) (concluding
    17   that contract negotiated in part in New York, signed in
    18   Georgia and New York, and containing a New York forum
    19   selection clause constituted "transaction of business" in
    20   New York under section 302(a)(1)).     Here, by contrast, the
    21   Termination Notices bear no indication that the Kirbys were
    22   negotiating or cared to negotiate for or solicit Marvel's
    23   business.
    19
    1              Finally, and perhaps most importantly, the
    2   Termination Notices, like the letter in Beacon Enterprises
    3   and the communications in Ehrenfeld, asserted legal rights
    4   under a body of law other than New York's.      What the Kirby
    5   siblings seek to vindicate are purported termination rights
    6   under section 304(c) of the federal copyright laws; they
    7   seek no privilege or benefit conferred by New York State
    8   law.    Section 304(c)(4), moreover, states that termination
    9   rights "shall be effected by serving an advance notice in
    10   writing upon the grantee [of the initial assignment] or the
    11   grantee's successor in title."      The Termination Notices thus
    12   not only seek to vindicate rights under federal law, they
    13   also are a compulsory feature of that body of law.
    14              We think these factors foreclose the exercise of
    15   section 302(a)(1) jurisdiction in the circumstances of this
    16   case.    We conclude that a communication from out-of-state,
    17   required for the exercise of rights conferred under a
    18   federal statute, cannot alone constitute a purposeful
    19   availment of "the benefits and protections of [New York's]
    20   laws," at least where the only connection to New York is
    21   that the recipient's business headquarters has a New York
    22   address.
    20
    1            Marvel's principal argument to the contrary rests
    2   on the premise that the Termination Notices are self-
    3   executing, legally effective communications.        They are
    4   therefore different from the cease-and-desist letter at
    5   issue in Beacon Enterprises, Marvel contends, because there
    6   the notice did no more than advise the recipient of alleged
    7   infringement and threaten future litigation.
    8            To begin with, we doubt Marvel's is an entirely
    9   accurate characterization of the Termination Notices:          They
    10   are necessary to the exercise of the termination rights, but
    11   only the additional act of filing the notices with the
    12   Copyright Office consummates the legal act of termination.
    13   See 
    17 U.S.C. § 304
    (c)(4)(A).        In any event, Marvel does not
    14   explain why the notices' legal effect under federal
    15   copyright law renders the act of mailing them any more a
    16   "transaction of business" or a purposeful invocation of the
    17   benefits and protections of New York law than would be other
    18   communications.
    19            Marvel also points to the notices' effects on
    20   Marvel in New York, characterizing them as "target[ing] the
    21   center of gravity of Marvel's publishing business," and of
    22   having been "designed to disrupt and divert license fees
    23   from Marvel's New York-based business," leaving Marvel with
    21
    1   "no option but to protect its rights and those of its
    2   licensees."   Appellees' Br. at 47-48 & n.17.   These
    3   statements may well be essentially true, if perhaps a bit
    4   hyperbolic.   But the Court in Ehrenfeld rejected virtually
    5   identical arguments based on the alleged in-state effects of
    6   the English default judgment that the defendant had obtained
    7   in the defamation case against the plaintiff, and the in-
    8   state action that that judgment would compel.    See
    9   Ehrenfeld, 
    9 N.Y.3d at 511
    , 
    881 N.E.2d 830
    , 837, 851
    
    10 N.Y.S.2d 381
    , 388.    Cf. Whitaker v. Am. Telecasting, Inc.,
    11   
    261 F.3d 196
    , 209 (2d Cir. 2001) (finding that "financial
    12   consequences in New York due to the fortuitous location of
    13   plaintiffs" are insufficient to confer jurisdiction under
    14   section 302(a)(3)).   We read Ehrenfeld strongly to suggest
    15   that we reject Marvel's arguments in this regard here.
    16            Finally, we are unpersuaded by Marvel's attempts
    17   to connect Lisa and Neal with New York through their
    18   relationship with other family members.   Appellees' Br. at
    19   51; see also Marvel Worldwide, Inc., 
    2010 WL 1655253
    , at *4-
    20   *5, 
    2010 U.S. Dist. LEXIS 38701
    , at *10-*12.    The problem
    21   with these arguments -- whether they seek to endow Lisa and
    22   Neal with their father's jurisdictional status, or to
    23   analyze their contacts with New York "collectively" with
    22
    1   their other siblings -- is that they identify no legal
    2   mechanism by which Jack's, Barbara's, or Susan's actions
    3   become those of Lisa or Neal.        Absent a bona fide agency
    4   relationship -- the existence of which no one has asserted -
    5   - there is no basis for imputing to Lisa and Neal actions by
    6   their father half a century ago, or coincident actions by
    7   their siblings who now live in New York and for that reason
    8   are subject to personal jurisdiction here.        Doing so would
    9   stretch the text of section 302 beyond the breaking point,
    10   see 
    N.Y. C.P.L.R. § 302
    (a) (referring to transaction of
    11   business "in person or through an agent").
    12               We conclude that the district court lacked
    13   personal jurisdiction over Lisa and Neal Kirby.        We
    14   therefore vacate the district court's judgment as against
    15   those two Kirbys.
    16               II.   Compulsory Joinder
    17               The Kirbys next argue that the absence of personal
    18   jurisdiction over Lisa and Neal requires vacatur of the
    19   judgment as against Barbara and Susan too.        They rely on
    20   Federal Rule of Civil Procedure 19: "Required Joinder of
    21   Parties."
    23
    1               A.   Federal Rule of Civil Procedure 19
    2               Rule 19 recognizes exceptional circumstances in
    3   which the plaintiff's choice of parties or forum must give
    4   way because of an absent party's interest in the outcome of
    5   the action or involvement in the underlying dispute.          See
    6   generally 7 CHARLES ALAN WRIGHT & ARTHUR R. MILLER, FEDERAL PRACTICE
    7   AND   PROCEDURE § 1602 (3d ed. 2008).   The Rule's principal
    8   provisions are divided into two subsections.        Subsection (a)
    9   protects certain parties by deeming them "required"; a party
    10   who is "required" according to the factors enumerated in
    11   subsection (a) is one whose participation is so desirable or
    12   important that the party must be joined so long as she or he
    13   is "subject to service of process" and joinder "will not
    14   deprive the court of subject-matter jurisdiction."         Fed. R.
    15   Civ. P. 19(a)(1).
    16               Subsection (b) addresses situations in which a
    17   party otherwise "required" under subsection (a) cannot be
    18   joined for some reason, for example (as in this case), want
    19   of personal jurisdiction.      In such circumstances, Rule 19(b)
    20   requires courts to consider whether, "in equity and good
    21   conscience," the party is one without whom the action
    22   between the remaining parties cannot proceed -- or, in the
    23   traditional terminology, whether the absent party is
    24
    1   "indispensable."   Fed. R. Civ. P. 19(b); see also CP
    2   Solutions PTE, Ltd. v. General Electric Co., 
    553 F.3d 156
    ,
    3   159 n.2 (2d Cir. 2009) (per curiam).
    4             We assume, for present purposes, that Lisa and
    5   Neal are "required" parties under Rule 19(a).      They are also
    6   parties whose joinder is not feasible, inasmuch as we
    7   conclude that they are not amenable to personal jurisdiction
    8   in the Southern District of New York, and they are unwilling
    9   to consent to suit within the jurisdiction.      The remainder
    10   of this discussion, then, centers on the effects of Rule
    11   19(b) on these proceedings.
    12             B.   Indispensability
    13             Because of the "flexible nature of Rule 19(b)
    14   analysis," we review a district court's decision under that
    15   rule for abuse of discretion.3      Universal Reinsurance Co.,
    16   Ltd. v. St. Paul Fire & Marine Ins. Co., 
    312 F.3d 82
    , 87 (2d
    3
    The standard of review applicable to Rule 19(b) is
    apparently the subject of a circuit split. See National Union
    Fire Ins. Co. v. Rite Aid of South Carolina, Inc., 
    210 F.3d 246
    ,
    250 n.7 (4th Cir. 2000) (recognizing the split and collecting
    cases); compare Universal Reinsurance Co., 
    312 F.3d at 87
     (abuse
    of discretion), with Keweenaw Bay Indian Community v. Michigan,
    
    11 F.3d 1341
    , 1346 (6th Cir. 1993) (abuse of discretion for Rule
    19(a), but de novo for Rule 19(b)). In Republic of Philippines
    v. Pimentel, 
    553 U.S. 851
     (2008), the Supreme Court passed on an
    opportunity to resolve the question, although it did suggest that
    the Rule's "in equity and good conscience" language "implies some
    degree of deference to the district court," 
    id. at 864
    .
    25
    1   Cir. 2002).   Here, however, the district court decided --
    2   mistakenly, as we have explained -- that it had personal
    3   jurisdiction over Lisa and Neal.        The court therefore had no
    4   occasion to apply Rule 19(b).
    5             It is ordinarily appropriate for us to vacate the
    6   judgment of a district court and remand the cause to it when
    7   matters committed to that court's discretion arise for the
    8   first time on appeal.       See CP Solutions, 
    553 F.3d at 161
    .
    9   But where a record is fully developed and it discloses that,
    10   in our judgment, only one possible resolution of such an
    11   issue would fall "within the permissible range of choices" -
    12   - in other words, where only one determination by the
    13   district court would be within its discretion –- there is no
    14   reason to remand.     
    Id.
        If we did and the court decided to
    15   the contrary, we would be duty bound to reverse in any event
    16   on the grounds of abuse of discretion.
    17             In this case, the parties have fully briefed the
    18   Rule 19(b) issue on appeal, and the facts are
    19   straightforward and undisputed.        Only one result, we think,
    20   is permissible.     We therefore resolve the issue in the first
    21   instance.4
    4
    There is some authority, albeit none from this Circuit,
    suggesting that a court of appeals may apply Rule 19 in the first
    instance when the issue arises for the first time on appeal.
    26
    1             Rule 19(b) sets forth four considerations that
    2   will ordinarily be among those relevant to the analysis of
    3   whether a party is "indispensable."     We have restated them
    4   as: "(1) whether a judgment rendered in a person's absence
    5   might prejudice that person or parties to the action, (2)
    6   the extent to which any prejudice could be alleviated, (3)
    7   whether a judgment in the person's absence would be
    8   adequate, and (4) whether the plaintiff would have an
    9   adequate remedy if the court dismissed the suit."      CP
    10   Solutions, 
    553 F.3d at 159
    .
    See, e.g., Fidelity & Casualty Co. v. Reserve Ins. Co., 
    596 F.2d 914
    , 918 (9th Cir. 1979) (considering indispensability in the
    first instance on appeal in deciding applicability of Fed. R.
    Civ. P. 21, which permits courts to add or drop parties to avoid
    dismissing an action); Anrig v. Ringsby United, 
    591 F.2d 485
    ,
    489-92 (9th Cir. 1978) (faulting the district court for failing
    to consider the dispensability of parties prior to dismissing the
    entire case, and proceeding to address the question in the first
    instance); see also Walsh v. Centeio, 
    692 F.2d 1239
    , 1241-42 (9th
    Cir. 1982) (discussing case law in analysis of applicable
    standard of review of dismissals under Rule 19(b)); Cloverleaf
    Standardbred Owners Ass'n, Inc. v. National Bank of Washington,
    
    699 F.2d 1274
    , 1277 n.5 (D.C. Cir. 1983) (suggesting, in dicta,
    that a court of appeals may apply Rule 19 itself in "cases in
    which Rule 19 does not figure in a district court's decision but
    becomes an issue on appeal in conjunction with a jurisdiction or
    venue challenge pursued by one or more of several defendants").
    That we may (or ought to) do so is perhaps born of the
    notion that we have an independent equitable obligation to
    protect the interests of absentee parties. See MasterCard Int'l
    Inc. v. Visa Int'l Service Ass'n, Inc., 
    471 F.3d 377
    , 382-83 (2d
    Cir. 2006). Inasmuch as we conclude that there is indeed only
    one permissible outcome here, however, we need not rest our
    decision on this basis.
    27
    1            Applying these factors requires an understanding
    2   of the legal interests at stake, here the Kirbys'
    3   termination rights under section 304(c).     Central to the
    4   current discussion is paragraph (1) of section 304(c), and
    5   in particular the following provision:     "In the case of a
    6   grant executed by one or more of the authors of the work,
    7   termination of the grant may be effected, . . . if such
    8   author is dead, by the person or persons who . . . own and
    9   are entitled to exercise a total of more than one-half of
    10   that author's termination interest."     
    17 U.S.C. § 304
    (c)(1)
    11   (emphasis added); see also 
    id.
     § 304(c)(6)(C).
    12            The parties interpret this to mean that at least
    13   three of the four Kirbys -- "more than one-half" -- must
    14   "effect" termination of their father's assignment in order
    15   for any of them to realize their termination rights.
    16   Appellants' Br. at 21; Appellees' Br. at 55.     So, all seem
    17   to acknowledge, if Barbara and Susan Kirby are disabled by
    18   an adverse judgment in this suit from effecting termination,
    19   all four Kirbys lose.
    20            Under this interpretation of section 304(c)(1),
    21   which we assume without deciding is correct, several of the
    22   possible Rule 19(b) considerations are irrelevant.     Marvel
    23   cannot, and does not, complain that a judgment rendered in
    28
    1   Lisa and Neal's absence prejudices it in any way, because it
    2   should be satisfied by a judgment against Barbara and Susan
    3   that forecloses Lisa and Neal's rights too.    Nor can Barbara
    4   and Susan claim prejudice.    Any judgment here stands to
    5   reflect the full and fair adjudication of their rights under
    6   section 304(c).    And whatever the result, there is no risk
    7   that Barbara and Susan will somehow bear in full a legal
    8   obligation that is properly shared by their absent siblings.
    9   There is thus no prejudice to Marvel, Barbara, or Susan as
    10   "existing parties."    Fed. R. Civ. P. 19(b)(1).
    11               We also do not see how a judgment in this case
    12   could be crafted to alleviate any prejudice that may exist
    13   to absent parties Lisa and Neal.    See Fed. R. Civ. P.
    14   19(b)(2).    The judgment here will declare the existence vel
    15   non of Barbara and Susan's termination rights, and whatever
    16   the practical effect of this declaration, it can do no more
    17   or less.
    18               Finally, although we can hardly be confident that
    19   the absent parties in this case will accept a judgment as
    20   the last word in this dispute, we think that any judgment
    21   would be "adequate," Fed. R. Civ. P. 19(b)(3), in the sense
    22   of honoring the "public stake in settling disputes by
    23   wholes, whenever possible."    CP Solutions, 
    553 F.3d at
    160
    29
    1   (internal quotation marks omitted).       If Marvel wins against
    2   Barbara and Susan, the parties' interpretation of section
    3   304(c)(1) implies that the issue is resolved as to all
    4   Kirbys; if Barbara and Susan prevail, principles of issue
    5   preclusion would likely bar Marvel from relitigating the
    6   issue against Lisa and Neal.      See RESTATEMENT (SECOND) OF
    7   JUDGMENTS § 29 (1982).
    8             This leaves us with two factors to consider.          The
    9   first is potential prejudice to Lisa and Neal arising from
    10   their absence.    Fed. R. Civ. P. 19(b)(1).      They complain
    11   that by operation of section 304(c)(1)'s "more than one-
    12   half" requirement, they stand to have their legal rights
    13   finally determined in their absence.       Appellants' Br. at 21-
    14   22.   This argument appeals to our "'deep-rooted historic
    15   tradition that everyone should have his own day in court.'"
    16   See Richards v. Jefferson County, 
    517 U.S. 793
    , 798 (1996)
    17   (quoting 18 CHARLES ALAN WRIGHT, ARTHUR R. MILLER, EDWARD H. COOPER,
    18   FEDERAL PRACTICE AND PROCEDURE § 4449 (3d ed. 2008)).
    19             But the law in this context and elsewhere
    20   "'recognize[s] an exception to the general rule when, in
    21   certain limited circumstances, a person, although not a
    22   party, has his interests adequately represented by someone
    23   with the same interests who is a party.'"        Id. (quoting
    30
    1   Martin v. Wilks, 
    490 U.S. 755
    , 762 n.2 (1989)).     As we
    2   recognized in CP Solutions, the potential prejudice to an
    3   absent party under Rule 19(b) is mitigated where a remaining
    4   party "could champion [his or her] interest."     
    553 F.3d at
    5   160.   And prejudice to absent parties approaches the
    6   vanishing point when the remaining parties are represented
    7   by the same counsel, and when the absent and remaining
    8   parties' interests are aligned in all respects.     Id.;
    9   Prescription Plan Serv. Corp. v. Franco, 
    552 F.2d 493
    , 497
    10   (2d Cir. 1977).
    11             This lawsuit concerns a single legal issue in
    12   which Lisa's and Neal's interests are identical to Barbara's
    13   and Susan's.   The Kirbys have the same lawyer -- who we are
    14   sure was "no less vigorous in [his] advocacy," Prescription
    15   Plan Serv., 
    552 F.2d at 497
    , because he represented two
    16   Kirbys instead of four.     And we have been given no reason
    17   whatever to think that the proofs advanced by Barbara and
    18   Susan are materially different from those Lisa and Neal
    19   would have proffered.     We therefore see no practical
    20   prejudice to Lisa and Neal as a result of adjudicating this
    21   case in their absence.
    22             The other remaining consideration is whether
    23   Marvel "would have an adequate remedy if the action were
    31
    1   dismissed for non-joinder."    Fed. R. Civ. P. 19(b)(4).      As
    2   Marvel points out, because Lisa and Neal are not amenable to
    3   personal jurisdiction in New York, and because Barbara and
    4   Susan –- New York residents -- are, as far as the record
    5   reveals, not amenable to personal jurisdiction in
    6   California, the Kirbys might well be able to thwart a
    7   declaratory judgment suit brought by Marvel in a forum in
    8   either state.   Appellees' Br. at 56-57.    In light of the
    9   nearly non-existent showing of prejudice to any of the
    10   parties involved here, we see no reason to permit the Kirbys
    11   to withhold consent to any suit in which the forum or
    12   litigation posture are not to their liking.      See Provident
    13   Tradesmens Bank & Trust Co. v. Patterson, 
    390 U.S. 102
    , 109
    14   (1968) (recognizing a plaintiff's "interest in having a
    15   forum").
    16              We conclude, therefore, that the only
    17   determination that falls within the range of permissible
    18   decisions in the circumstances of this case is that Lisa and
    19   Neal are not indispensable parties, and that it was
    20   appropriate for the action against Barbara and Susan to have
    21   proceeded on its merits.5
    5
    There is an abstract question lurking in the background:
    Should a court apply the Rule to present circumstances, or
    instead to the circumstances as they were at the time the party
    32
    1             III.    Summary Judgment
    2             The remaining Kirbys -- Barbara and Susan --
    3   challenge the district court's grant of summary judgment in
    4   favor of Marvel.     "We review a district court's grant of
    5   summary judgment de novo.     In reviewing a summary judgment
    6   decision, we apply the same standards applied by the
    7   district court.    Under this standard, summary judgment may
    8   be granted only if 'there is no genuine dispute as to any
    9   material fact and the movant is entitled to judgment as a
    10   matter of law.'    [Fed. R. Civ. P. 56(a)].     In determining
    11   whether there is a genuine dispute as to a material fact, we
    12   must resolve all ambiguities and draw all inferences against
    13   the moving party."     Garcia v. Hartford Police Dep't, 706
    initially made its motion for dismissal under Rule 19(b)?
    Compare Universal Reinsurance Co., 
    312 F.3d at 89
     (noting, in a
    case in which Rule 19(b) issue did not arise until after first
    appeal and remand, that "[o]nce the district court has proceeded
    to final judgment, considerations of finality, efficiency, and
    economy become overwhelming, and federal courts are directed to
    salvage jurisdiction where possible" (internal quotation marks
    and citations omitted)), with Young v. Powell, 
    179 F.2d 147
    ,
    152 (5th Cir. 1950) (reviewing district court's Rule 19(b)
    analysis based on the "relief asked for" rather than the "relief
    granted" on the merits in order to prevent prejudice to the
    defendant). See generally 7 CHARLES ALAN WRIGHT & ARTHUR R. MILLER,
    FEDERAL PRACTICE AND PROCEDURE § 1609 (3d ed. 2008). We need not
    address it, though, because we conclude that under either
    approach, the result would be the same: Lisa and Neal are not
    indispensable parties.
    33
    
    1 F.3d 120
    , 126-27 (2d Cir. 2013) (per curiam) (alteration,
    2   some citations, and internal quotation marks omitted).
    3            A.   Exclusion of Expert Testimony
    4            We address first the admissibility of the reports
    5   and testimony of Barbara and Susan's putative experts, John
    6   Morrow and Mark Evanier, who purported to offer historical
    7   perspective concerning the relationship between Marvel and
    8   Jack Kirby.   The district court ruled that the reports and
    9   testimony were inadmissible.     Marvel Worldwide, Inc., 777
    10   F. Supp. 2d at 729-30.     We review this decision for abuse of
    11   discretion.   Wills v. Amerada Hess Corp., 
    379 F.3d 32
    , 41
    12   (2d Cir. 2004).
    13            Federal Rule of Evidence 702 governs the
    14   admissibility of expert testimony.      It requires for
    15   admissibility, among other things, that "the expert's
    16   scientific, technical, or other specialized knowledge will
    17   help the trier of fact to understand the evidence or to
    18   determine a fact in issue."     Fed. R. Evid. 702(a).     In other
    19   words, "[e]xpert testimony must be helpful to the [trier of
    20   fact] in comprehending and deciding issues beyond the
    21   understanding of a layperson."       DiBella v. Hopkins, 
    403 F.3d 22
       102, 121 (2d Cir. 2005).
    34
    1              We have no doubt that a historian's "specialized
    2   knowledge" could potentially aid a trier of fact in some
    3   cases.   A historian could, for example, help to identify,
    4   gauge the reliability of, and interpret evidence that would
    5   otherwise elude, mislead, or remain opaque to a layperson.
    6   See generally Maxine D. Goodman, Slipping Through the Gate,
    7   60 BAYLOR L. REV. 824, 857 (2008) (commenting that a
    8   historian's task is "to choose reliable sources, to read
    9   them reliably, and to put them together in ways that provide
    10   reliable narratives about the past" (quoting MARTHA C. HOWELL
    11   & WALTER PREVENIER, FROM RELIABLE SOURCES: AN INTRODUCTION TO HISTORICAL
    12   METHODS 2 (2001))).    He or she might helpfully synthesize
    13   dense or voluminous historical texts.         
    Id.
       Or such a
    14   witness might offer background knowledge or context that
    15   illuminates or places in perspective past events.            See,
    16   e.g., Int'l Soc. for Krishna Consciousness, Inc. v. Barber,
    17   
    650 F.2d 430
    , 440 (2d Cir. 1981) ("In fact, one religious
    18   expert at trial remarked that the American movement is 'one
    19   of the most unusual examples of transfer of a cultural
    20   tradition across broad national and cultural barriers.'
    21   This evidence of historical longevity and theological
    22   consistency should not be ignored.").
    35
    1            But Morrow and Evanier do not bring their
    2   expertise to bear in any such way.   As the district court
    3   recognized, their reports are by and large undergirded by
    4   hearsay statements, made by freelance artists in both formal
    5   and informal settings, concerning Marvel's general practices
    6   towards its artists during the relevant time period.     See,
    7   e.g., Deposition of Mark Evanier, Dec. 6, 2010, at 18-21,
    8   Joint App'x at 957-59.   Drawing from these statements, they
    9   then speculate as to the motivations and intentions of
    10   certain parties, see, e.g., Expert Report of John Morrow at
    11   9, Joint App'x at 1152 ("I do not believe that Goodman, Lee,
    12   Marvel or the freelance artists, like Jack Kirby,
    13   . . . thought that the material they created was 'work made
    14   for hire' . . . ."), or opine on the credibility of other
    15   witnesses' accounts, see, e.g., Expert Report of Mark
    16   Evanier at 14, Joint App'x at 1105 ("I have great respect
    17   and personal affection for Stan Lee, but I disagree with the
    18   accounts he has sometimes given . . . .").
    19            Although the Rules permit experts some leeway with
    20   respect to hearsay evidence, Fed. R. Evid. 703, "a party
    21   cannot call an expert simply as a conduit for introducing
    22   hearsay under the guise that the testifying expert used the
    23   hearsay as the basis of his testimony."   Malletier v. Dooney
    36
    1   & Bourke, Inc., 
    525 F. Supp. 2d 558
    , 666 (S.D.N.Y. 2007).
    2   The appropriate way to adduce factual details of specific
    3   past events is, where possible, through persons who
    4   witnessed those events.    And the jobs of judging these
    5   witnesses' credibility and drawing inferences from their
    6   testimony belong to the factfinder.     See Nimely v. City of
    7   New York, 
    414 F.3d 381
    , 397-98 (2d Cir. 2005).      We therefore
    8   think the district court clearly did not abuse its
    9   discretion in declining to admit this evidence.
    10             B.   Termination Rights and Work Made for Hire
    11             We thus, at last, arrive at the merits of Marvel's
    12   summary judgment motion.    At issue is section 304(c) of the
    13   Copyright Act of 1976, which, insofar as bears on this
    14   litigation, provides:
    15             Termination of Transfers and Licenses
    16             Covering Extended Renewal Term. -- In the
    17             case of any copyright subsisting in
    18             either its first or renewal term on
    19             January 1, 1978, other than a copyright
    20             in a work made for hire, the exclusive or
    21             nonexclusive grant of a transfer or
    22             license of the renewal copyright or any
    23             right under it, executed before January
    24             1, 1978 . . . is subject to
    25             termination . . . .
    26   
    17 U.S.C. § 304
    (c).6
    6
    The termination right in section 304(c) applies only to
    transfers executed by the author prior to January 1, 1978.
    Section 203 governs termination of transfers of the rights to
    37
    1
    2             If the author is no longer alive, section
    3   304(c)(2) grants his or her termination rights to specified
    4   heirs.   See 
    id.
     § 304(c)(2)(B).    The provision "protect[s]
    5   the property rights of widows and children in copyrights" by
    6   granting them the power to undo earlier transfers and to
    7   enjoy the remainder of the copyright term.7    Larry Spier,
    8   Inc. v. Bourne Co., 
    953 F.2d 774
    , 778 (2d Cir. 1992).
    9             But section 304(c) provides that termination
    10   rights under that section do not exist with respect to
    11   "work[s] made for hire."   
    17 U.S.C. § 304
    (c).    Where a work
    12   is "made for hire," copyright law deems the employer to be
    13   the "author" for purposes of copyright ownership.     Copyright
    14   Act of 1909 § 62 (formerly codified at 
    17 U.S.C. § 26
    )
    15   ("[T]he word 'author' shall include an employer in the case
    works executed on or after January 1, 1978. See 
    17 U.S.C. § 203
    (a). We have cautioned that "Section 203 and Section 304
    are different provisions involving different rights." Larry
    Spier, Inc. v. Bourne Co., 
    953 F.2d 774
    , 779 (2d Cir. 1992).
    7
    Thirty-nine years, to be precise. Termination rights may
    be effected "during a period of five years beginning at the end
    of fifty-six years from the date copyright was originally
    secured, or beginning on January 1, 1978, whichever is later."
    
    17 U.S.C. § 304
    (c)(3). Under section 304, as amended by the
    Sonny Bono Copyright Term Extension Act, the full copyright term
    of the works at issue –- consisting of a 28-year initial term
    plus a 67-year renewal term –- is 95 years. See 
    17 U.S.C. § 304
    (a), (b). At stake here, then, is the 39 years that will be
    remaining on each of the works' copyright terms at the time they
    turn 56.
    38
    1   of works made for hire."); see also Copyright Act of 1976
    2   § 201(b), 
    17 U.S.C. § 201
    (b) ("In the case of a work made
    3   for hire, the employer or other person for whom the work was
    4   prepared is considered the author for purposes of this
    5   title . . . .").    The hired party, although "the 'author' in
    6   the colloquial sense," Shapiro, Bernstein & Co. v. Bryan,
    7   
    123 F.2d 697
    , 699 (2d Cir. 1941), therefore never owned the
    8   copyrights to assign.      It stands to reason, then, that there
    9   are no rights the assignment of which his or her heirs may
    10   now terminate.
    11              Marvel argues that all of the works at issue in
    12   this case fall into the category of "work made for hire."
    13              1.   The Instance and Expense Test.   To determine
    14   whether a work is "work made for hire" within the meaning of
    15   section 304(c), we apply case law interpreting that term as
    16   used in the 1909 Act, the law in effect when the works were
    17   created.   See Estate of Burne Hogarth v. Edgar Rice
    18   Burroughs, Inc., 
    342 F.3d 149
    , 156-63 (2d Cir. 2003).      This
    19   requires us to apply what is known as the "instance and
    20   expense test."
    21              a.   Origins.
    22              The origins of the instance and expense test were
    23   described at some length by Judge Newman's opinions in
    39
    1   Estate of Burne Hogarth v. Edgar Rice Burroughs, Inc.,
    2   supra, and Martha Graham School and Dance Foundation, Inc.
    3   v. Martha Graham Center of Contemporary Dance, Inc., 380
    
    4 F.3d 624
    , 633-36 (2d Cir. 2004).
    5              The test was developed from two lines of cases.
    6   One was our court-made work-for-hire jurisprudence.
    7   "Because the 1909 Act did not define 'employer' or 'works
    8   made for hire,' the task of shaping these terms fell to the
    9   courts."   Community for Creative Non-Violence v. Reid, 490
    
    10 U.S. 730
    , 744 (1989).   Using Bleistein v. Donaldson
    11   Lithographing Co., 
    188 U.S. 239
    , 248 (1903) -- the Supreme
    12   Court's first encounter with the work-for-hire phenomenon --
    13   as a guidepost, our early cases focused principally on
    14   whether the work at issue was created within the scope of a
    15   traditional employment relationship.   See, e.g., Tobani v.
    16   Carl Fischer, Inc., 
    98 F.2d 57
    , 59 (2d Cir. 1938); Shapiro,
    17   Bernstein & Co., Inc. v. Bryan, 
    123 F.2d 697
    , 698-700 (2d
    18   Cir. 1941).   Work-for-hire doctrine thus served to identify
    19   which party within the traditional employment relationship
    20   was the statutory "author," and hence owned the copyright in
    21   the work from the time of creation.
    22              The second doctrine developed to address what was
    23   initially considered a separate issue under the 1909 Act:
    40
    1   rights in commissioned works created by independent
    2   contractors.   The issue in this situation, at least in the
    3   early cases, was not who the statutory author was –- the
    4   author was the independent contractor.   The issue was
    5   whether the hiring party nevertheless owned copyrights by
    6   way of the author's implied assignment of those rights; and,
    7   if so, whether the assignment applied to only the "original"
    8   copyright term, or to both the "original" term and an
    9   "expectancy" in the so-called "renewal" term.
    10            We addressed the first half of this issue in
    11   Yardley v. Houghton Mifflin Co., 
    108 F.2d 28
     (2d Cir. 1939).
    12   There we concluded that if a party "is solicited by a patron
    13   to execute a commission for pay, the presumption should be
    14   indulged that the patron desires to control the publication
    15   of copies and that the artist consents that he may, unless
    16   by the terms of the contract, express or implicit, the
    17   artist has reserved the copyright to himself."   
    Id. at 31
    .
    18   And in later cases, we seemed to answer the second half,
    19   limiting Yardley's presumption in favor of implied
    20   assignment to the original term.   See Estate of Burne
    21   Hogarth, 
    342 F.3d at 159
    ; Shapiro, Bernstein & Co. v. Jerry
    22   Vogel Music Co., 
    221 F.2d 569
    , 570 (1955).
    41
    1             The two doctrines first converged in Brattleboro
    2   Publishing Co. v. Winmill Publishing Corp., 
    369 F.2d 565
    ,
    3   567 (2d Cir. 1966).   That case concerned rights in the
    4   original term in an independent contractor setting -- like
    5   in Yardley -- but we nevertheless began our analysis by
    6   discussing traditional work-for-hire doctrine.      
    Id. at 567
    .
    7   We relied on Professor Melville Nimmer's copyright treatise,
    8   which we described as recognizing "a presumption in the
    9   absence of an express contractual reservation to the
    10   contrary, that the copyright shall be in the person at whose
    11   instance and expense the work is done."     
    Id.
     (emphasis
    12   added) (citing NIMMER ON COPYRIGHT 238 (1964)).   And we could
    13   "see no sound reason why these same principles are not
    14   applicable when the parties bear the relationship of
    15   employer and independent contractor."     
    Id. at 568
    .
    16             This discussion does not appear to have been
    17   necessary to the result inasmuch as the Court went on to
    18   resolve the case on the grounds of Yardley's presumption.
    19   
    Id.
       Just as curious was the Brattleboro Court's attribution
    20   of the phrase "instance and expense" to Professor Nimmer.
    21   The phrase is apparently not to be found in the cited
    22   passage on work-for-hire doctrine.     See MELVILLE B. NIMMER &
    23   DAVID NIMMER, NIMMER ON COPYRIGHT § 5.03 n.171b (Matthew Bender,
    42
    1   Rev. Ed. 2013).    It seems instead to be drawn from a Ninth
    2   Circuit opinion in an independent contractor case published
    3   the year before.    See Lin-Brook Builders Hardware v.
    4   Gertler, 
    352 F.2d 298
    , 300 (9th Cir. 1965); see generally
    5   Martha Graham, 380 F.3d at 634 n.17.
    6             But we effectively adopted the union of these two
    7   approaches in Picture Music, Inc. v. Bourne, Inc., 
    457 F.2d 8
       1213, 1216 (2d Cir. 1972), relying on both work-for-hire and
    9   implied assignment cases to conclude that an independent
    10   contractor's works were "made for hire," and therefore that
    11   the hiring party owned both the original and renewal term.
    12   
    Id. at 1216
    .   And when we next confronted the issue, in
    13   Playboy Enterprises, Inc. v. Dumas, 
    53 F.3d 549
    , 554 (2d
    14   Cir. 1995), we explained that "an independent contractor is
    15   an 'employee' and a hiring party an 'employer' for purposes
    16   of the [1909 Act] if the work is made at the hiring party's
    17   'instance and expense.'"8
    8
    Our approach has been criticized. See NIMMER ON COPYRIGHT
    § 9.03[D]. It was also called into question by language in
    Community for Creative Non-Violence v. Reid, 
    490 U.S. 730
    , 744
    (1989), which discussed some of our cases as background to
    interpreting the 1976 Act's somewhat different "work made for
    hire" provisions, 
    17 U.S.C. § 101
    . We nonetheless reaffirmed our
    adherence to the instance and expense test in cases turning on
    the interpretation of the 1909 Act's work-for-hire provisions in
    Estate of Burne Hogarth, 
    supra.
    43
    1            b.     General Principles
    2            We have stated as a general rule that "[a] work is
    3   made at the hiring party's 'instance and expense' when the
    4   employer induces the creation of the work and has the right
    5   to direct and supervise the manner in which the work is
    6   carried out."    Martha Graham, 380 F.3d at 635.   Our case law
    7   is, however, not so tidy.    To the extent we can distill from
    8   our prior cases a set of principles applicable here, they
    9   are these:
    10            "Instance" refers to the extent to which the
    11   hiring party provided the impetus for, participated in, or
    12   had the power to supervise the creation of the work.    Actual
    13   creative contributions or direction strongly suggest that
    14   the work is made at the hiring party's instance.    See, e.g.,
    15   Playboy Enterprises, Inc., 
    53 F.3d at 556
     (evidence that
    16   independent contractor "was given specific instructions for
    17   his early submissions to Playboy" suggested work for hire);
    18   Yardley, 
    108 F.2d at 30-31
     ("[W]here a photographer takes
    19   photographs of a person who goes or is sent to him in the
    20   usual course, and is paid for the photographs and for his
    21   services in taking them, the right of copyright is in the
    22   sitter or in the person sending the sitter to be
    23   photographed, and not in the photographer . . . .").
    44
    1            The "right to direct and supervise the manner in
    2   which the work is carried out," Martha Graham, 380 F.3d at
    3   635, moreover, even if not exercised, is in some
    4   circumstances enough to satisfy the "instance" requirement.
    5   It may be sufficient, for example, where the hiring party
    6   makes a particularly strong showing that the work was made
    7   at its expense, Scherr v. Universal Match Corp., 
    417 F.2d 8
       497, 501 (2d Cir. 1969) (noting "the overwhelming
    9   appropriation of [the hiring party's] funds, time and
    10   facilities to the project"), or where prior dealings between
    11   the parties on similar assignments, as part of an ongoing
    12   arrangement, have rendered fine-grained supervision
    13   unnecessary, Playboy Enterprises, Inc., 
    53 F.3d at
    556
    14   ("right to control" and exercise of control with respect to
    15   "certain characteristics" sufficient in light of earlier
    16   "specific assignments").
    17            But "inducement" or "control" alone can be
    18   incidental enough not to vest copyright ownership in the
    19   hiring party.   For example, in Siegel v. National Periodical
    20   Publications, Inc., 
    508 F.2d 909
    , 914 (2d Cir. 1974), we
    21   concluded that it was insufficient that the independent
    22   contractor "revise[d] and expand[ed] the Superman material
    23   at the request of the [hiring party]," because "Superman had
    45
    1   been spawned by the [independent contractor] four years
    2   before the relationship [with the hiring party] existed."
    3   Indeed, even in cases arising under traditional employment
    4   law, a work created "as a special job assignment" may not be
    5   a "work made for hire."   Shapiro, Bernstein & Co., 
    221 F.2d 6
       at 570.
    7             The "expense" component refers to the resources
    8   the hiring party invests in the creation of the work.     We
    9   have, at least in some cases, continued the tradition of
    10   treating the incidents of a traditional employment
    11   relationship as relevant to the analysis.    See, e.g., Martha
    12   Graham, 380 F.3d at 637-41.    We have, moreover, suggested
    13   that the hiring party's provision of tools, resources, or
    14   overhead may be controlling.   Id. at 638 ("It may well be
    15   that the resources of the Center –- notably, its rehearsal
    16   space and the dancers enrolled at the School –-
    17   significantly aided Graham in her choreography, thereby
    18   arguably satisfying the 'expense' component . . . .").     But
    19   cf. Playboy Enterprises, Inc., 
    53 F.3d at 555
     (finding that
    20   factors relevant to work for hire analysis under the 1976
    21   Act, like setting hours or providing tools, have "no bearing
    22   on whether the work was made at the hiring party's
    23   expense").
    46
    1              In other cases, however, we seem to have focused
    2   mostly on the nature of payment: payment of a "sum certain"
    3   suggests a work-for-hire arrangement; but "where the creator
    4   of a work receives royalties as payment, that method of
    5   payment generally weighs against finding a work-for-hire
    6   relationship."   Playboy Enterprises, Inc., 
    53 F.3d at 555
    .
    7   We note, though, that this distinction appears to be a
    8   rather inexact method of properly rewarding with ownership
    9   the party that bears the risk with respect to the work's
    10   success.   See Twentieth Century Fox Film Corp. v.
    11   Entertainment Distributing, 
    429 F.3d 869
    , 881 (9th Cir.
    12   2005) (noting that publisher took on "all the financial risk
    13   of the book's success"); see also Donaldson Publishing Co.
    14   v. Bregman, Vocco & Conn, Inc., 
    375 F.2d 639
    , 643 (2d Cir.
    15   1967) (finding relevant employee's "freedom to engage in
    16   profitable outside activities without sharing the proceeds
    17   with [the hiring party]").
    18              Our case law counsels against rigid application of
    19   these principles.   Whether the instance and expense test is
    20   satisfied turns on the parties' creative and financial
    21   arrangement as revealed by the record in each case.
    22              If the hiring party is able to satisfy the
    23   instance and expense test, it "is presumed to be the author
    47
    1   of the work," and the independent contractor can overcome
    2   the presumption only "by evidence of an agreement to the
    3   contrary."9    Playboy Enterprises, Inc., 
    53 F.3d at 556
    .
    4             2.   Application of the Instance and Expense Test
    5   in the Present Case.    Applying these principles to the facts
    6   in the record before us -- a challenging endeavor in some
    7   respects10 -- we conclude that the works were created at
    8   Marvel's instance and expense, and that Barbara and Susan
    9   have not adduced evidence of an agreement to the contrary
    9
    Marvel sees this as a formal "burden shifting framework."
    Under that framework, as Marvel conceives of it, the hiring party
    must "come forward with 'some credible evidence' that the Works
    were created at its instance and expense," from which showing
    "arises an 'almost irrebuttable presumption' that the Works were
    works made for hire." Appellees' Br. at 22 (citations omitted).
    Neither the "some credible evidence" statement –- a cherry-picked
    comment from a Ninth Circuit opinion, see Twentieth Century, 
    429 F.3d at
    877 –- nor the "almost irrebuttable presumption" language
    -- a Fifth Circuit opinion's description of our approach, noted
    in our opinion in Estate of Burne Hogarth, 
    342 F.3d at 158
    (quoting Easter Seal Society for Crippled Children & Adults of
    Louisiana, Inc. v. Playboy Enterprises, 
    815 F.2d 323
    , 327 (5th
    Cir. 1987)) -- is an accurate statement of our case law.
    10
    The facts underlying this dispute took place decades
    ago, and Jack Kirby is, of course, no longer alive to provide an
    account of his working relationship with Marvel during the
    relevant time period. This leaves us to reconstruct the
    arrangement through (1) the deposition testimony of Stan Lee,
    whose credibility the Kirbys contest; (2) the depositions and
    declarations of other comic book artists who worked for Marvel at
    various times, but likely under different arrangements from
    Kirby's; (3) the depositions of the Kirby children, who have
    little direct knowledge; and (4) some documentary evidence
    concerning Kirby's contributions to or creation of some of the
    works.
    48
    1   contemporaneous with the creation of the works.     We
    2   therefore conclude that the district court was correct to
    3   award summary judgment in favor of Marvel.
    4            a.   Instance.
    5            The evidence, construed in favor of the Kirbys,
    6   establishes beyond dispute that the works in question were
    7   made at Marvel's instance.
    8            Although Jack Kirby was a freelancer, his working
    9   relationship with Marvel between the years of 1958 and 1963
    10   was close and continuous.    Stan Lee considered Kirby to be
    11   Marvel's best artist, Lee Dep. at 30, Joint App'x at 2450,
    12   an assessment reinforced by the admiration of Kirby by his
    13   contemporaries, see Deposition of Lawrence Lieber ("L.
    14   Lieber Dep."), Jan. 7, 2011, at 104-05, Joint App'x at 1530-
    15   31; Deposition of John Romita ("Romita Dep."), Oct. 21,
    16   2010, at 75-76, Joint App'x at 360-61.    Lee "wanted to use
    17   Jack for everything," Lee Dep. at 36, Joint App'x at 2456,
    18   and Kirby appears to have been kept busy with assignments
    19   from Marvel, id. at 37, Joint App'x at 2457.
    20            Marvel published the great majority of Kirby's
    21   work during these years -- 1958 through 1963.     There are
    22   indications in the record that artists did customarily work
    23   with more than one publisher during the relevant time
    49
    1   period, see, e.g., L. Lieber Dep. at 74-75, Joint App'x at
    2   1521-22, and a handful of Kirby's works between 1958 and
    3   1963 were not published by Marvel, see Excerpt of JACK KIRBY
    4   CHECKLIST (Two Morrows Gold ed. 2008), Joint App'x at 1751-
    5   62.   But it is beyond dispute that most of Kirby's work
    6   during this period was published by Marvel and for
    7   established Marvel titles.   Id.
    8             Understood as products of this overarching
    9   relationship, Kirby's works during this period were hardly
    10   self-directed projects in which he hoped Marvel, as one of
    11   several potential publishers, might have an interest;
    12   rather, he created the relevant works pursuant to Marvel's
    13   assignment or with Marvel specifically in mind.   Kirby's
    14   ongoing partnership with Marvel, however unbalanced and
    15   under-remunerative to the artist, is therefore what induced
    16   Kirby's creation of the works.
    17             Marvel also played at least some creative role
    18   with respect to the works.   Kirby undoubtedly enjoyed more
    19   creative discretion than most artists did under the "Marvel
    20   Method," a fact Lee readily admits.   Lee Dep. at 70, Joint
    21   App'x at 2490.   But the only evidence on the issue indicates
    22   that he did not work on "spec" (speculation) -- that is, he
    23   worked within the scope of Marvel's assignments and titles.
    50
    1   Id. at 48, Joint App'x at 2468; Deposition of Neal Kirby,
    2   June 30, 2010, at 167-68, Joint App'x at 1592-93.       There is
    3   no disputing, moreover, that Marvel had the power to reject
    4   Kirby's pages and require him to redo them, or to alter
    5   them, a power it exercised from time to time.      Id. at 234-
    6   35, Joint App'x at 1599-1600; Deposition of Susan Kirby,
    7   Oct. 25, 2010, at 37, Joint App'x at 1607.      And there is
    8   evidence that Kirby collaborated with Lee with respect to
    9   many of the works.    Lee Dep. at 118, Joint App'x at 2538.
    10               Marvel's inducement, right to supervise, exercise
    11   of that right, and creative contribution with respect to
    12   Kirby's work during the relevant time period is more than
    13   enough to establish that the works were created at Marvel's
    14   instance.
    15               The Kirbys' attempts to avoid this conclusion are
    16   unsuccessful.    Their argument is that the "right to
    17   supervise" referred to in our case law requires a legal,
    18   presumably contractual, right.      Appellants' Br. at 42-45.
    19   We find no hint of this requirement in our case law applying
    20   the instance and expense test.      Nor do the Kirbys provide a
    21   principled reason why Marvel's active involvement in the
    22   creative process, coupled with its power to reject pages and
    23   request that they be redone, should not suffice.
    51
    1             The Kirbys also point to factual disputes over who
    2   actually created the characters, plots, and other concepts
    3   in Marvel's comic books during the relevant time period,
    4   mostly in an attempt to discredit Lee and find fault in the
    5   district court's reading of the record.     Appellants' Br. at
    6   33-35.   Questions of who created the characters are mostly
    7   beside the point.     That Marvel owes many of its triumphs to
    8   Kirby is beyond question.     But the hired party's ingenuity
    9   and acumen are a substantial reason for the hiring party to
    10   have enlisted him.     It makes little sense to foreclose a
    11   finding that work is made for hire because the hired artist
    12   indeed put his exceptional gifts to work for the party that
    13   contracted for their benefit.
    14             b.   Expense.
    15             Whether the Works were created at Marvel's expense
    16   presents a more difficult question.     We ultimately find
    17   ourselves in agreement with the district court and in favor
    18   of Marvel here too.
    19             The facts underlying the expense component are not
    20   in dispute.    Marvel paid Kirby a flat rate per page for
    21   those pages it accepted, and no royalties.     It did not pay
    22   for Kirby's supplies or provide him with office space.        It
    23   was free to reject Kirby's pages and pay him nothing for
    52
    1   them.    The record contains anecdotal evidence that Marvel
    2   did in fact reject Kirby's work or require him to redo it on
    3   occasion, if less often than it did the work of other
    4   artists, but with what frequency is unclear.
    5              Marvel argues that its payment of a flat rate for
    6   Kirby's pages is all that matters.        It relies on our
    7   suggestion in Playboy Enterprises, 
    53 F.3d at 555
    , that "the
    8   'expense' requirement [is] met where a hiring party simply
    9   pays an independent contractor a sum certain for his or her
    10   work."    Because, Marvel argues, it paid Kirby a sum certain
    11   when it accepted his pages -- irrespective of whether the
    12   pages required edits or additions, were ultimately
    13   published, or were part of a comic book that was a
    14   commercial success -- it took on the risk of financial loss.
    15              The Kirbys urge us to focus not on the risk Marvel
    16   took at the time it purchased the pages, but on the risk
    17   Kirby took when he set out to create them.        Until Marvel
    18   purchased Kirby's pages, they point out, Kirby had
    19   undertaken all of the costs of producing the drawings --
    20   time, tools, overhead -- and shouldered the risk that Marvel
    21   would reject them, leaving him in the lurch.        Marvel's
    22   purely contingent payment, they argue, thus acted more like
    23   a royalty than a sum certain.        Appellants' Br. at 36-42.
    53
    1            This argument might give us pause if Kirby's
    2   relationship with Marvel comprised discrete engagements with
    3   materially uncertain prospects for payment, or, indeed, if
    4   he undertook to create the works independent of Marvel.      But
    5   there is no evidence of which we are aware to either effect.
    6   The evidence suggests instead that Marvel and Kirby had a
    7   standing engagement whereby Kirby would produce drawings
    8   designed to fit within specific Marvel universes that his
    9   previously purchased pages had helped to define.     When Kirby
    10   sat down to draw, then, it was not in the hope that Marvel
    11   or some other publisher might one day be interested enough
    12   in them to buy, but with the expectation, established
    13   through their ongoing, mutually beneficial relationship,
    14   that Marvel would pay him.   And the record makes clear that
    15   in the run of assignments, this expectation proved
    16   warranted.
    17            Kirby's completed pencil drawings, moreover, were
    18   generally not free-standing creative works, marketable to
    19   any publisher as a finished or nearly finished product.
    20   They built on preexisting titles and themes that Marvel had
    21   expended resources to establish -- and in which Marvel held
    22   rights -- and they required both creative contributions and
    23   production work that Marvel supplied.   That the works are
    54
    1   now valuable is therefore in substantial part a function of
    2   Marvel's expenditures over and above the flat rate it paid
    3   Kirby for his drawings.
    4            In the final analysis, then, the record suggests
    5   that both parties took on risks with respect to the works'
    6   success –- Kirby that he might occasionally not be paid for
    7   the labor and materials for certain pages, and Marvel that
    8   the pages it did pay for might not result in a successful
    9   comic book.     But we think that Marvel's payment of a flat
    10   rate and its contribution of both creative and production
    11   value, in light of the parties' relationship as a whole, is
    12   enough to satisfy the expense requirement.
    13            c.     Agreement to the Contrary.
    14            Because Marvel has satisfied the instance and
    15   expense test, a presumption arises that the works in
    16   question were "works made for hire" under section 304(c).
    17   This presumption can be overcome only by evidence of an
    18   agreement to the contrary contemporaneous with the creation
    19   of the works.
    20            The Kirbys' showing in this regard consists mostly
    21   of negative or elliptical inferences concerning the parties'
    22   agreement at the time.     For example, they point to a 1975
    23   assignment executed by Jack Kirby that purported to transfer
    55
    1   interests in certain works to Marvel (but also averred that
    2   all of his work was for hire), which they say suggests the
    3   parties' understanding that Marvel did not already own the
    4   rights.     Appellants' Br. at 48.    They also call to our
    5   attention evidence that indicates that Marvel paid Kirby
    6   during the relevant time periods with checks that contained
    7   a legend with assignment, instead of work-for-hire,
    8   language.     Id. at 47.
    9               This evidence is not enough to enable the Kirbys
    10   to survive the motion for summary judgment.       Anderson v.
    11   Liberty Lobby, Inc., 
    477 U.S. 242
    , 252 (1986) ("The mere
    12   existence of a scintilla of evidence in support of the [non-
    13   movant's] position will be insufficient; there must be
    14   evidence on which the jury could reasonably find for the
    15   [non-movant]."); Bickerstaff v. Vassar Coll., 
    196 F.3d 435
    ,
    16   448 (2d Cir. 1999) ("[A]n inference is not a suspicion or a
    17   guess." (internal quotation marks omitted)).       It is all too
    18   likely that, if the parties thought about it at all, Kirby's
    19   assignments at the time he was paid or later were
    20   redundancies insisted upon by Marvel to protect its rights;
    21   we decline to infer from Marvel's suspenders that it had
    22   agreed to give Kirby its belt.
    23                                 * * *
    56
    1            In sum, the district court made no error, in our
    2   view, in determining as a matter of law that the works were
    3   made at Marvel's instance and expense, and that the parties
    4   had no agreement to the contrary.      The remaining Kirbys,
    5   Barbara and Susan, are therefore without termination rights
    6   under section 304(c), and the district court properly
    7   granted Marvel's motion for summary judgment as to them.
    8                             CONCLUSION
    9            For the foregoing reasons, we vacate the district
    10   court's judgment as against Lisa and Neal Kirby and remand
    11   with instructions to the district court to dismiss the
    12   action against them for want of personal jurisdiction.         We
    13   affirm the judgment in favor of Marvel as against Barbara
    14   and Susan Kirby.   Each party shall bear his, her, or its own
    15   costs.
    57
    

Document Info

Docket Number: Docket 11-3333-cv

Citation Numbers: 726 F.3d 119

Judges: Cabranes, Carney, Sack

Filed Date: 8/8/2013

Precedential Status: Precedential

Modified Date: 8/7/2023

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