     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
