The GeeksverseLeaving Proof 72 | Ghost Writer: The Ins and Outs of Gary Friedrich Enterprises v. Marvel Enterprises

Leaving Proof 72 | Ghost Writer: The Ins and Outs of Gary Friedrich Enterprises v. Marvel Enterprises
Published on Monday, February 13, 2012 by

Last week, the U.S. District Court of the Southern District of New York rendered a decision in the counterclaim Marvel Characters, Inc. (MCI) filed against comics writer Gary Friedrich. The court’s decision was that Friedrich has to pay Marvel $17,000 in punitive damages and as part of a stipulation, he is permanently barred from using or appropriating the Ghost Rider trademark. This was a follow-up to the decision in Gary Friedrich Enterprises v. Marvel Enterprises, 08-cv-01533, rendered on 28 December 2011, where U.S. District Judge Katherine Forrest ruled in favour of the defendant (“Marvel Enterprises”), stating that Friedrich could not claim ownership of the Ghost Rider character nor is he entitled to any compensation from Marvel’s use and exploitation of the character subsequent to its creation apart from monies he had already received for his work writing stories featuring said character.

There has been the expected outcry online from the comics-reading community regarding the story, with Friedrich supporters “white knighting” on one side and Marvel apologists on the other, each littering the field of discussion with strawmen, unsupported claims, rumours, and getting into the usual fallacious arguments that reduce online discourse about legal issues to meaningless twaddle. All this heightened emotion surrounding the issue threatens to obscure the facts of the case and why the rulings turned out the way they did for Friedrich and Marvel. Today’s column will try to wade through the relevant issues, and hopefully present you the reader with a clear and unbiased summary of the legal proceedings, what the rulings were, and their implications for Friedrich and Marvel going forward.

 

What were Friedrich’s claims against Marvel?

Friedrich filed a lawsuit in April 2007 asserting copyright infringement

(i) against Marvel for ownership of the renewal rights in the Character and the Work; (ii) arising from unauthorized creation and profiting from the Ghost Rider film (against Marvel and the “Movie Defendants”); and (iii) for unauthorized use of the Work and Character in the creation of toys, video games and other products against Marvel and defendants Hasbro, Inc. and Take-Two Interactive Software, Inc.

What do those claims mean? Simply put, Friedrich is saying that he owns the renewal rights to Ghost Rider and that Marvel and its licensees Hasbro and Take-Two Interactive have committed copyright infringement by using the character, without Friedrich’s authorization, in the Ghost Rider film released in 2007 and in the creation of Ghost Rider toys, video games, and other products.

Friedrich’s case for ownership of Ghost Rider was built around the task of proving that the character was not a work-for-hire creation paid for by Marvel.

 

What was the decision on Friedrich’s claims?

After four years of legal deliberation, U.S. District Judge Katherine Forrest rendered the following ruling (emphasis added)

… the Court finds that it is unnecessary to reach the question of whether or not the Character and Work were created as works for hire: all of the briefing—and what would certainly amount to triable issues of fact on those questions—are irrelevant to the determination of the instant motions. This Court finds that there were at least two moments in time when Friedrich definitively conveyed by contract to Marvel all rights of whatever nature, including any renewal rights to the Character and the Work: (1) at the time of payment for the initial creation of the Character and Work in 1971 and 1972; and (2) in a separate contract signed in 1978 by Friedrich and Marvel Comics Group, a division of Cadence Industries Corporation. There is no triable issue of fact as to whether (a) in 1971, Friedrich conveyed any rights he may have had to both the Character and the Work to Marvel and (b) in 1978, he again conveyed to Marvel any rights he then had or could have in the future in the Character and the Work. Either one of those contractual transfers would be sufficient to resolve the question of ownership. Together, they provide redundancy to the answer that leaves no doubt as to its correctness.

Accordingly, Defendants’ motion for summary judgment is GRANTED and Plaintiffs’ motion for summary judgment is DENIED.

Forrest’s ruling can be broken down into two parts. The first part establishes that the question of “was Ghost Rider a work-for-hire product?” is irrelevant as it pertains to the the issue of the character’s ownership. The second and more important portion of her ruling is the conclusion that Marvel owns Ghost Rider, based on the evidence that there were at least “two moments in time” when Friedrich conveyed to Marvel any rights he might have had to the character as its creator or co-creator.

The first “moment” was in 1971, when Friedrich cashed a check from Marvel for his freelance work on Marvel Spotlight #5 (where Ghost Rider first appeared in print) among other works. According to Friedrich’s own deposition, freelance checks from Marvel had printed on the back a statement that “said something about by signing over the check I gave over my rights to Magazine Management, Marvel, whoever“. Judge Forrest, in the discussion of the decision, states that “[t]he law is clear that when an individual endorses a check subject to a condition, he accepts that condition“.

The second instance was when Friedrich agreed in 1978 to grant to Marvel all rights to the Ghost Rider character in exchange for the possibility of future freelance work. The relevant language in the 1978 agreement between Friedrich and Marvel is as follows (emphasis added)

SUPPLIER [i.e., Friedrich] expressly grants to MARVEL forever all rights of any kind and nature in and to the Work, the rights to use SUPPLIER’s name in connection therewith and agrees that MARVEL is the sole and exclusive copyright proprietor thereof having all rights of ownership therein.

For their part, Friedrich’s counsel argued that the 1978 agreement granting Marvel the rights to Ghost Rider in perpetuity is invalid because Marvel never gave Friedrich any further freelance work. However, Judge Forrest points out in her discussion that Friedrich was unavailable to do freelance work for Marvel for reasons that had nothing to do with Marvel and everything to do with his personal circumstances: in a prior deposition, Friedrich testified that after signing the 1978 agreement, “he essentially disappeared for a year—he was an alcoholic and was riding in a truck with a friend for a period of time“. Furthermore, Judge Forrest notes that there is no evidence on record that Friedrich had made himself reasonably available to Marvel for freelance work or that he actively sought freelance work from Marvel after signing the 1978 agreement.

 

What were Marvel’s counterclaims against Friedrich?

In response to Friedrich’s claims, Marvel Characters, Inc. (MCI) filed counterclaims against the writer, asserting that he committed copyright infringement, trademark infringement, and violations of the Lanham Act relating to the Ghost Rider character.

I think it’s this counterclaim that has a segment of the comics-reading community in an uproar. Large publishers like Marvel and DC generally turn a blind eye to freelancers (such as Friedrich) and fans engaged in the unauthorized and small-scale sale and distribution of sketches, paintings, signed comics, etc. featuring their trademarked characters. In the overwhelming majority of cases, the relatively small amount of money changing hands in the “gray market” of the comics convention collectibles trade isn’t worth the cost of litigation, the loss of consumer goodwill, and the fracturing of the publisher’s relationships with the community of freelance writers and artists.

In this case however, Friedrich’s initiation of legal action against Marvel, Judge Forrest’s finding in favour of the defendant in the claims case, and the public nature of the reporting of the proceedings has placed Marvel in a position where it is obligated to file some manner of counterclaim lest it be accused of neglecting its responsibility to protect its copyright and trademark rights associated with the Ghost Rider character. The Lanham Act “places an affirmative duty upon a licensor of a registered trademark to take reasonable measures to detect and prevent misleading uses of his mark by his licensees or suffer cancellation of his federal registration“. Marvel’s failure to take enforcement action against Friedrich could contribute to their losing the Ghost Rider trademark registration due to what is called “failure to police”.

 

What was the decision on Marvel’s counterclaims?

Judge Forrest found in favour of the counterclaims plaintiff (Marvel Characters, Inc.) with regards to the copyright infringement counterclaim, awarding Marvel damages in the amount of $17,000. The dollar value of the damages is based on an estimate of the profits Friedrich earned from the sale and distribution of copyright-infringing material featuring the Ghost Rider character.

The counterclaims of trademark infringement and violations of the Lanham Act (i.e., false representation, false description, and false origin) were dismissed in exchange for a stipulation that permanently prevents Friedrich or persons acting on his behalf from manufacturing, reproducing, selling, and distributing copyrightable material featuring the character of Ghost Rider or a substantially similar derivative. Note that this stipulation does not prevent Friedrich from selling his autograph affixed to a Marvel-produced comic or other Marvel or Marvel-licensed product.

 

What does this all mean?

The ownership issue addressed in Forrest’s ruling in Gary Friedrich Enterprises v. Marvel Enterprises is, by and large, an open-and-shut case, given the weight of the evidence showing that Friedrich knowingly signed over to Marvel, in perpetuity, any and all rights he might have had to the Ghost Rider character.

What is not addressed in the ruling is the question of whether or not Friedrich had any rights to the character in the first place. Was Ghost Rider a work-for-hire creation that Marvel owned from the outset, or was the character originally owned by Friedrich owing to being its creator?

The credit for the creation of the character of Ghost Rider has always been a matter of dispute between Friedrich, editor Roy Thomas, and artist Mike Ploog, who illustrated Ghost Rider’s first appearance in Marvel Spotlight #5. Part of this dispute can be traced to the use of the “Marvel Method” of comics creation originally developed by Stan Lee. With the Marvel Method, the writer or the editor of a comic book (sometimes, this would be the same person) would craft a basic plot outlining the beginning, middle, and end of the story. This plot would then be sent to the artist (in some cases, the plot would be so brief that the writer could simply relay it verbally to the artist over the phone), who would draw the scenes as well as design any new characters that are not given sufficient description in the plot. Once the artwork is approved by the writer and editor, the writer then proceeds to write out the dialogue that will accompany the art.

Friedrich claims that he developed the idea for the plot and the Ghost Rider character design (including its distinct flaming skull appearance) independently before starting work on Marvel Spotlight #5, whereas Marvel claims that the plot for Marvel Spotlight #5 was assigned to Friedrich and that the Ghost Rider character and design were the product of a collaborative work-for-hire arrangement (both Friedrich and Marvel do agree that the comic was created using the Marvel Method). Then-editor Roy Thomas has also been quoted as saying that (emphasis added)

I had made up a character as a villain in Daredevil—a very lackluster character—called Stunt-Master… a motorcyclist. Anyway, when Gary Friedrich started writing Daredevil, he said, ‘Instead of Stunt-Master, I’d like to make the villain a really weird motorcycle-riding character called Ghost Rider’. He didn’t describe him

Gary wasn’t there the day we were going to design [Ghost Rider], Mike Ploog, who was going to be the artist, and I designed the character. I had this idea for the skull-head, something like Elvis’ 1968 Special jumpsuit, and so forth, and Ploog put the fire on the head, just because he thought it looked nice. Gary liked it, so they went off and did it.

Additionally, artist Mike Ploog has stated in a 1998 interview with Comic Book Artist magazine that

[Ghost Rider] was a Roy Thomas idea. Roy asked me if I wanted to do “Ghost Rider.” I thought, “Yeah! Horses! Get me away from these city scenes!” It wasn’t until two or three weeks later they called up and said, “Can you do some drawings of costumes and the motorcycle?” This was the first I’d heard about a motorcycle. So off I went; I did a bunch of drawings for the character, and off I went.

The credits box in Marvel Spotlight #5’s splash page (see below, right) indicates that the story was “conceived and written by” Friedrich, Mike Ploog is given a “drawn by” credit, and Roy Thomas has the rather vague and unusual credit of “aid and abetment“. Marvel Bullpen Bulletin articles that appeared in the spring and summer of 1972 also pointed out that Friedrich “dreamed [Ghost Rider] up“.

The question of whether or not Friedrich went to Marvel already armed with an independently-developed design for Ghost Rider will likely never be unequivocally settled. Judge Forrest passed on settling the question because it is ultimately irrelevant to the issue of ownership in this case, and that any attempts at navigating the creator morass would be a waste of the court’s time. Regardless, this hasn’t stopped some news outlets and observers from grossly misinterpreting the stipulations listed in the counterclaims civil judgment to mean that the court has arrived at the conclusion that Friedrich is not the creator or co-creator of Ghost Rider. The injunction simply bars Friedrich from using or appropriating the words “Ghost Rider” as a trademark and depending on the context of usage, this may or may not extend to barring him from referring to himself as the creator of Ghost Rider.

Will Marvel actually get the $17,000 levied against Friedrich in punitive damages? I don’t know. There’s anecdotal evidence that Friedrich is destitute, and the court can’t force Friedrich to give Marvel something he doesn’t have. If I were in Marvel’s place though, I’d just let the damages slide, particularly if it’s true that Friedrich is destitute. The courts have already definitively asserted Marvel’s ownership of the Ghost Rider character and they have that multimillion dollar budget Ghost Rider movie coming out this month. The whole affair has been an ugly, ugly thing for all concerned, and I think the best way for the parties to move past it is to just forget the punitive damages and let the story serve as a deterrent against future, ill-considered suits.

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