Case 2:21-cv-07624-DMG-KES Document 1 Filed 09/24/21 Page 1 of 7 Page ID #:1
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` DANIEL M. PETROCELLI (S.B. #97802)
`dpetrocelli@omm.com
`MOLLY M. LENS (S.B. #283867)
`mlens@omm.com
`DANIELLE FEUER (S.B. #324174)
`dfeuer@omm.com
`O’MELVENY & MYERS LLP
`1999 Avenue of the Stars, 8th Floor
`Los Angeles, California 90067
`Telephone: (310) 553-6700
`Facsimile:
`(310) 246-6779
`
`KENDALL TURNER (S.B. #310269)
`kendallturner@omm.com
`O’MELVENY & MYERS LLP
`1625 I Street NW
`Washington, DC 20006
`Telephone: (202) 383-5300
`Facsimile:
`(202) 383-5414
`Attorneys for Plaintiff
`Marvel Characters, Inc.
`
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
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`MARVEL CHARACTERS, INC.,
`Plaintiff,
`
`v.
`MICHELE HART-RICO and BUZ
`DONATO F. RICO III,
`Defendants.
`
`Case No. 2:21-CV-7624
`COMPLAINT FOR
`DECLARATORY RELIEF
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`Case 2:21-cv-07624-DMG-KES Document 1 Filed 09/24/21 Page 2 of 7 Page ID #:2
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`Plaintiff Marvel Characters, Inc. (“MCI”), initiates this proceeding against
`defendants Michele Hart-Rico (“Hart-Rico”) and Buz Donato F. Rico III (“Buz
`Rico”), under 28 U.S.C. §§ 2201, et seq., and the Copyright Act of 1976, 17 U.S.C.
`§§ 101, et seq. This Court has federal question subject matter jurisdiction pursuant
`to 28 U.S.C. §§ 1331 and 1338(a). For this action, MCI alleges as follows:
`NATURE OF THE ACTION
`Over its long history, MCI and its predecessors in interest (individually
`1.
`and collectively, “Marvel”) have engaged numerous writers and artists to contribute
`to Marvel’s comics. Donato Francisco Rico II (“Don Rico”), who started working
`for Marvel in or around 1949, is one such writer. Marvel assigned Don Rico stories
`to write, had the right to exercise creative control over his contributions, and paid
`him a per-page rate for his contributions. As a result, any contributions Don Rico
`made were at Marvel’s instance and expense, rendering his contributions work
`made for hire, to which the Copyright Act’s termination provisions do not apply.
`Nevertheless, defendants, who are heirs of Don Rico, have served a termination
`notice purportedly issued under that Act, in an invalid attempt to acquire certain
`rights to iconic Marvel comic book characters and stories published in 1964.
`In virtually identical circumstances, the Southern District of New
`2.
`York, as affirmed by the Second Circuit, granted Marvel summary judgment,
`finding that all of illustrator Jack Kirby’s contributions between 1958 and 1963
`were done at Marvel’s instance and expense and thus were works made for hire.
`Because termination rights do not exist for works made for hire, the Kirby heirs’
`termination notices—which covered the very same comic series that Hart-Rico and
`Buz Rico’s termination notice does—were held to be invalid and of no legal force
`or effect. See Marvel Worldwide, Inc. v. Kirby, 777 F. Supp. 2d 720 (S.D.N.Y.
`2011), aff’d in relevant part, 726 F.3d 119 (2d Cir. 2013).
`Similarly, the District Court for the District of Delaware held in In re
`3.
`Marvel Entertainment Grp., 254 B.R. 817 (D. Del. 2000), that contributions by an
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`Case 2:21-cv-07624-DMG-KES Document 1 Filed 09/24/21 Page 3 of 7 Page ID #:3
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`individual similarly situated during the same period at issue here were works made
`for hire. There, a writer claimed that he owned certain characters during Marvel’s
`bankruptcy proceedings. The district court rejected that claim, holding that all of
`the writer’s work was done at Marvel’s instance and expense and was thus work
`made for hire.
`Kirby and In re Marvel Entertainment dictate the same result here. As
`4.
`with the artists in those cases, Marvel had the right to exercise creative control over
`Don Rico’s contributions and paid him a per-page rate for his work. As with the
`artists in those cases, when Don Rico worked for Marvel, he did so with the
`expectation that Marvel would pay him. And as with the artists in those cases, Don
`Rico never held the copyright in the famous Marvel characters and comics on
`which he worked; rather, Marvel does, as evidenced by the relevant copyright
`registration notices themselves. Marvel thus brings this declaratory relief action,
`pursuant to 28 U.S.C. § 2201, in response to defendants’ improper attempt to
`acquire Marvel’s intellectual property.
`PARTIES
`5. MCI is a Delaware corporation with its principal place of business in
`Burbank, California. MCI owns the intellectual property contained in the comic
`books and characters at issue.
`Upon information and belief, Michele Hart-Rico was the wife of Don
`6.
`Rico through the time of his death.
`Upon information and belief, Buz Rico was the son of Don Rico.
`7.
`JURISDICTION AND VENUE
`This is an action for declaratory relief brought under 28 U.S.C.
`8.
`§§ 2201, et seq., and under the Copyright Act of 1976, 17 U.S.C. §§ 101, et seq.
`This Court has federal question subject matter jurisdiction pursuant to 28 U.S.C.
`§§ 1331 and 1338(a).
`Upon information and belief, this Court has personal jurisdiction over
`9.
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`Case 2:21-cv-07624-DMG-KES Document 1 Filed 09/24/21 Page 4 of 7 Page ID #:4
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`defendant Hart-Rico because she is domiciled in Los Angeles, California.
`10. Upon information and belief, this Court has personal jurisdiction over
`defendant Buz Rico because he is domiciled in San Mateo, California.
`11. Upon information and belief, venue is proper in this Court pursuant to
`28 U.S.C. § 1391(b)(1) because both defendants are domiciled in California.
`Venue is also proper in this Court pursuant to 28 U.S.C. § 1391(b)(2) for the
`additional reason that a substantial part of the events giving rise to this action
`occurred in this District. Specifically, most if not all of the contributions by Don
`Rico were made in this District.
`ALLEGATIONS
`12. At all relevant times, Don Rico was engaged as a comic book writer by
`Marvel to contribute to various comic books (the “Works”).
`13. Any contributions Don Rico made were at Marvel’s instance and
`expense.
`14. Marvel editorial staff had the right to exercise creative control over
`Don Rico’s contributions, and Marvel paid Don Rico a per-page rate for his
`contributions. When Don Rico worked for Marvel, he did so with the expectation
`that Marvel would pay him.
`15. Don Rico did not obtain any ownership interest in or to any
`contributions he made.
`16. Marvel registered copyrights in and to the Works, which are
`copyrightable subject matter under the copyright laws of the United States. The
`Register of Copyrights recorded the registrations, as set forth in Exhibit 1 to this
`complaint. Marvel has complied in all relevant respects with all laws governing
`copyright.
`17. On or about June 10, 2021, Hart-Rico and Buz Rico served a notice of
`termination on Marvel. Hart-Rico and Buz Rico claim to have a sufficient interest
`in the Works to exercise purported rights of termination under the termination
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`Case 2:21-cv-07624-DMG-KES Document 1 Filed 09/24/21 Page 5 of 7 Page ID #:5
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`provisions of the Copyright Act, 17 U.S.C. § 304(c), and the regulations thereunder.
`18. The notice specifically seeks to “terminate all pre-January 1, 1978
`exclusive or non-exclusive grants of the transfer or license of the renewal
`copyright(s) in and to” certain “illustrated comic book stor[ies]” that were allegedly
`“authored or co-authored” by Don Rico and published by Marvel in 1964. The
`notice specifies an effective termination date of June 11, 2023.
`19. The comic book title identified in the notice is Tales of Suspense. The
`notice purportedly terminates alleged grants of copyright interests in all characters,
`story elements, and “indicia” in the comic books issues, as well as “all material”
`allegedly “authored or co-authored by Donato Francisco Rico II . . . (in any and all
`medium(s), whenever created) that was reasonably associated with” these works
`and “registered with the United States Copyright Office and/or published within the
`termination time window, as defined by 17 U.S.C. § 304(c), and the” purported
`“effective date of this Notice of Termination.”
`20. A true and correct copy of this notice is attached hereto as Exhibit 2.
`COUNT I: ACTION FOR DECLARATORY RELIEF
`[As to the Validity of the Notice]
`21. Marvel repeats and realleges each allegation contained in paragraphs 1
`through 20 of this complaint as if fully set forth herein.
`22. Hart-Rico and Buz Rico have served Marvel with the termination
`notice described above. On information and belief, they have submitted the notice
`for recordation with the U.S. Copyright Office.
`23. The notice is invalid as a matter of law because the Works were
`created as works made for hire, and there are no termination rights for works made
`for hire. See 17 U.S.C. § 304(c).
`24. The Works were made for hire because they were created at Marvel’s
`instance and expense.
`25. Any contributions Don Rico made to the Works were done at the
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`Case 2:21-cv-07624-DMG-KES Document 1 Filed 09/24/21 Page 6 of 7 Page ID #:6
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`instance of Marvel’s editorial staff, who had the right to exercise creative control
`over Don Rico’s contributions.
`26. Any contributions Don Rico made to the Works were done at Marvel’s
`expense because Marvel paid Don Rico a per-page rate for his contributions, Don
`Rico made those contributions to the Works with the expectation that Marvel would
`pay him, and Don Rico did not obtain any ownership interest in or to his
`contributions.
`27. Marvel has a real and reasonable apprehension of litigation over any
`claim by Hart-Rico and Buz Rico that Marvel’s exploitation of the Works after the
`alleged termination dates infringes their purported rights.
`28. There now exists between the parties an actual and justiciable
`controversy concerning the validity of the termination notice and the respective
`rights of Marvel, on the one hand, and Hart-Rico and Buz Rico, on the other.
`29. A declaration is necessary and appropriate at this time in light of the
`purported effective termination dates and the ongoing exploitation of the Works and
`the development of new works derivative of the Works.
`30. Marvel has no adequate remedy at law.
`31. Accordingly, Marvel seeks, pursuant to 28 U.S.C. § 2201, a judgment
`from this Court that the notice is invalid and therefore that Marvel will not lose its
`copyright interests in the Works on the alleged termination dates.
`PRAYER FOR RELIEF
`WHEREFORE, Marvel prays for a judgment against Hart-Rico and Buz Rico
`as follows:
`A.
`B.
`C.
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`For a declaration that the termination notice is invalid;
`For Marvel’s attorneys’ fees and costs incurred; and
`For such other and further relief as the Court deems just and equitable.
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`Case 2:21-cv-07624-DMG-KES Document 1 Filed 09/24/21 Page 7 of 7 Page ID #:7
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`Dated: September 24, 2021
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`Respectfully Submitted,
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`O’MELVENY & MYERS LLP
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`By: /s/ Daniel M. Petrocelli
`Daniel M. Petrocelli
`
`Daniel M. Petrocelli
`dpetrocelli@omm.com
`Molly M. Lens
`mlens@omm.com
`Danielle Feuer
`dfeuer@omm.com
`1999 Avenue of the Stars, 8th Floor
`Los Angeles, California 90067
`Telephone: (310) 553-6700
`Facsimile: (310) 246-6779
`
`Kendall Turner
`kendallturner@omm.com
`1625 I Street NW
`Washington, DC 20006
`Telephone: (202) 383-5300
`Facsimile: (202) 383-5414
`
`Attorneys for Plaintiff Marvel
`Characters, Inc.
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