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`11-3333-cv
`Marvel Characters, Inc. v. Kirby
`UNITED STATES COURT OF APPEALS
`FOR THE SECOND CIRCUIT
`August Term, 2012
`(Argued: October 24, 2012 Decided: August 8, 2013)
`Docket No. 11-3333-cv
`-------------------------------------
`MARVEL CHARACTERS, INCORPORATED, MARVEL WORLDWIDE,
`INCORPORATED, MVL RIGHTS, LLC,
`Plaintiffs-Counter-Defendants-Appellees,
`WALT DISNEY COMPANY, MARVEL ENTERTAINMENT, INCORPORATED,
`Counter-Defendants-Appellees,
`- v -
`LISA R. KIRBY, NEAL L. KIRBY, SUSAN N. KIRBY, BARBARA J.
`KIRBY,
`Defendants-Counter-Claimants-Appellants.
`-------------------------------------
`Before: CABRANES, SACK, and CARNEY, Circuit Judges.
`Appeal by the defendants-counter-claimants from a
`judgment of the United States District Court for the
`Southern District of New York (Colleen McMahon, Judge)
`granting summary judgment in favor of the plaintiffs-
`counter-defendants on their claim for declaratory relief and
`denying the defendants-counter-claimants' cross-motion for
`summary judgment. Plaintiffs-counter-defendants commenced
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`11-3333-cv
`Marvel Characters, Inc. v. Kirby
`UNITED STATES COURT OF APPEALS
`FOR THE SECOND CIRCUIT
`August Term, 2012
`(Argued: October 24, 2012 Decided: August 8, 2013)
`Docket No. 11-3333-cv
`-------------------------------------
`MARVEL CHARACTERS, INCORPORATED, MARVEL WORLDWIDE,
`INCORPORATED, MVL RIGHTS, LLC,
`Plaintiffs-Counter-Defendants-Appellees,
`WALT DISNEY COMPANY, MARVEL ENTERTAINMENT, INCORPORATED,
`Counter-Defendants-Appellees,
`- v -
`LISA R. KIRBY, NEAL L. KIRBY, SUSAN N. KIRBY, BARBARA J.
`KIRBY,
`Defendants-Counter-Claimants-Appellants.
`-------------------------------------
`Before: CABRANES, SACK, and CARNEY, Circuit Judges.
`Appeal by the defendants-counter-claimants from a
`judgment of the United States District Court for the
`Southern District of New York (Colleen McMahon, Judge)
`granting summary judgment in favor of the plaintiffs-
`counter-defendants on their claim for declaratory relief and
`denying the defendants-counter-claimants' cross-motion for
`summary judgment. Plaintiffs-counter-defendants commenced
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`this lawsuit in response to notices sent by the defendants-
`counter-claimants, the children of comic book artist Jack
`Kirby, purporting to terminate alleged assignments in
`certain of their father's works pursuant to
`section 304(c)(2) of the Copyright Act of 1976. We conclude
`that: (1) the district court incorrectly determined that it
`had personal jurisdiction over Lisa and Neal Kirby; (2) Lisa
`and Neal Kirby were not indispensable parties to the action
`under Rule 19(b) of the Federal Rules of Civil Procedure;
`and (3) the district court correctly determined that the
`works at issue were "made for hire" under section 304(c),
`and that Marvel was therefore entitled to summary judgment.
`Affirmed in part; vacated in part.
`R. BRUCE RICH (James W. Quinn, Randi
`W. Singer, Gregory Silbert, on the
`brief), Weil, Gotshal & Manges LLP,
`New York, New York; David Fleischer,
`Haynes and Boone, LLP, New York, New
`York for Plaintiffs-Counter-
`Defendants-Appellees and Counter-
`Defendants-Appellees.
`MARC TOBEROFF, Toberoff &
`Associates, P.C., Malibu,
`California, for Defendants-Counter-
`Claimants-Appellants.
`
`SACK, Circuit Judge:
`This appeal requires us to revisit our case law
`applying the work-for-hire doctrine in the context of
`section 304 of the Copyright Act of 1976 (or, the "1976
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`Act"), 17 U.S.C. § 304. Defendants-counter-claimants-
`appellants Lisa, Neal, Susan, and Barbara Kirby
`(collectively, the "Kirbys") are the children of the late
`Jack Kirby. Kirby is considered one of the most influential
`comic book artists of all time. At various times throughout
`his career, he produced drawings for Marvel Comics, a comic
`book publisher that has since grown into the multifaceted
`enterprise reflected in the case caption: Marvel
`Characters, Inc., Marvel Worldwide, Inc., MVL Rights, LLC,
`and Marvel Entertainment, Inc. (collectively, "Marvel"). At
`issue here are the rights to drawings Kirby allegedly
`created between 1958 and 1963.
`The Kirbys appeal from the district court's grant
`of summary judgment to Marvel, which was based on the
`conclusion that all of the works at issue are "works made
`for hire" within the meaning of section 304(c), and that the
`Kirbys therefore have no rights to the works. Two of the
`Kirbys, Lisa and Neal, also challenge the district court's
`conclusion that it had personal jurisdiction over them under
`New York's long-arm statute. They further argue that they
`are indispensable parties under Rule 19(b) of the Federal
`Rules of Civil Procedure, such that their absence from this
`lawsuit (by virtue of the district court's lack of personal
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`jurisdiction over them) requires that the suit be dismissed
`in its entirety.
`We conclude that the district court was without
`personal jurisdiction over Lisa and Neal. We therefore
`vacate the judgment as against them. We also find, however,
`that Lisa and Neal are not indispensable parties to this
`lawsuit, and that the district court was correct in
`concluding that the works at issue are "works made for hire"
`under section 304(c). We therefore affirm the judgment as
`to defendants Barbara and Susan.
`BACKGROUND
`In this appeal from the grant of summary judgment,
`we view the evidence in the light most favorable to the
`nonmovants, the Kirbys for present purposes, and draw all
`reasonable inferences in their favor. See, e.g., Singer v.
`Ferro, 711 F.3d 334, 339 (2d Cir. 2013).
`Jack Kirby
`Jack Kirby, born Jacob Kurtzberg in New York
`
`City's Lower East Side in 1917, began his career in the
`comic book business in the late 1930s. In the summer of
`1940, a young woman named Rosalind moved into the apartment
`above his with her family. The day they met, Kirby asked
`Rosalind if she "[w]ould like to see [his] etchings[.]" She
`thought he wanted "to fool around"; he only wanted to show
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`her his drawings for a new comic book series called Captain
`America. John Morrow, "Would You Like to See My Etchings?":
`Rosalind Kirby Interviewed (conducted Dec. 12, 1995), THE
`JACK KIRBY COLLECTOR, April 1996, at 6. Kirby and "Roz" were
`married in 1942. After Kirby's military service in World
`War II, the couple had four children: Susan, Neal, Barbara,
`and Lisa.
`
`Kirby's career in comic book illustration spanned
`more than half a century. His influence was substantial.
`An obituary marking his death in 1994 quoted Joe Simon,
`Kirby's creative partner for fifteen years: "He brought the
`action drawing to a new level. His style was imitated all
`over and still is today to a certain extent." Jack Kirby,
`76; Created Comic Book Superheroes, N.Y. TIMES, Feb. 8, 1994,
`at D22.
`
`Kirby was prolific, too. In 1951 alone, 308 pages
`of Kirby's work appeared in published comic books. This
`output was typical for him in the years between 1940 and
`1978.
`
`Marvel Comics and Stan Lee
`Marvel was founded as Timely Comics in 1939 by one
`Martin Goodman. In 1940, Marvel purchased the first ten
`issues of Captain America from Kirby and Joe Simon. But
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`Kirby and Simon would soon move on to a competitor, DC
`Comics. To replace them, Goodman hired one Stanley Lieber.
`Lieber would come to be known by his pen name,
`Stan Lee. Lee is in his own right a towering figure in the
`comic book world, and a central one in this case. He in
`effect directed Marvel from the early 1940s until sometime
`in the 1970s, serving, in his words, as "Editor," "Art
`Director" and "a staff writer." Deposition of Stan Lee
`("Lee Dep."), May 13, 2010, at 17, Joint App'x at 2437. He
`continued to work for Marvel in one capacity or another at
`least to the day of his deposition testimony in this
`litigation.
`But in the 1940s and 50s, Marvel, hobbled by poor
`business decisions, was hardly a success story.1 In 1958,
`Kirby began producing drawings for Marvel once again. And
`by 1961, its fortunes began to change. That year, Marvel
`released the first issues of The Fantastic Four. On its
`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.
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`most enduring and profitable titles, including The
`Incredible Hulk, The X-Men, and Spider-Man.
`Kirby's Relationship with Marvel from 1958-1963
`This litigation concerns the property rights in
`262 works published by Marvel between 1958 and 1963. Who
`owns these rights depends upon the nature of Kirby's
`arrangement with Marvel during that period.
`It is undisputed that Kirby was a freelancer,
`i.e., he was not a formal employee of Marvel, and not paid a
`fixed wage or salary. He did not receive benefits, and was
`not reimbursed for expenses or overhead in creating his
`drawings. He set his own hours and worked from his home.
`Marvel, usually in the person of Stan Lee, was free to
`reject Kirby's drawings or ask him to redraft them. When
`Marvel accepted drawings, it would pay Kirby by check at a
`per-page rate.
`Despite the absence of a formal employment
`agreement, however, the record suggests that Kirby and
`Marvel were closely affiliated during the relevant time
`period. Lee assigned Kirby, whom he considered his best
`artist, a steady stream of work during that period. See Lee
`Dep. at 36, Joint App'x at 2456 ("I wanted to use Jack for
`everything, but I couldn't because he was just one guy.");
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`id. at 37, Joint App'x at 2457 ("So I said: All right,
`forget it, Jack. I will give [the Spider-Man strip] to
`somebody else. Jack didn't care. He had so much to do.");
`id. at 30, Joint App'x 2450 ("He got the highest [rate]
`because I considered him our best artist.").
`And Kirby seems to have done most of his work with
`Marvel projects in mind. Although the Kirby children assert
`that their father could and did produce and sell his work to
`other publishers during those years, lists of Kirby's works
`cited by both parties establish that the vast majority of
`his published work in that time frame was published by
`Marvel (or Atlas Comics, as part of Marvel Comics Group).
`The specifics of Kirby and Marvel's creative
`relationship during this time period are less clear.
`According to Lee, at the relevant time, artists
`worked using what the parties call the "Marvel Method." It
`was developed as a way to "keep a lot of artists busy" when
`Lee or another writer could not provide the artist with a
`completed script. Lee Dep. at 21, Joint App'x at 2441. The
`first step was for Lee to meet with an artist at a "plotting
`conference." Id. at 39-40, Joint App'x at 2459-60. Lee
`would provide the artist with a "brief outline" or
`"synopsis" of an issue; sometimes he would "just talk . . .
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`with the artist" about ideas. Id. at 35, Joint App'x at
`2455. The artist would then "draw it any way they wanted
`to." Id. at 21, Joint App'x at 2441. Then a writer, such
`as Lee, would "put in all the dialogue and the captions."
`Id. According to Lee, he "maintain[ed] the ability to edit
`and make changes or reject what the other writers or artists
`had created." Id. at 22, Joint App'x at 2442.
`Lee testified that he worked this way with Kirby
`"for years":
`And Jack Kirby and I would, let's say
`when we did the Fantastic Four, I first
`wrote a synopsis of what I thought the
`Fantastic Four should be, who the
`characters should be, what their
`personalities were. And I gave it to
`Jack, and then I told him what I thought
`the first story should be, how to open
`it, who the villain should be, and how we
`would end it. And that was all. Jack
`went home and drew the whole thing. I
`put the dialogue in.
`Id. at 118, Joint App'x at 2538.
`Other evidence in the record, including some of
`Lee's own deposition testimony, indicates, however, that
`Kirby had a freer hand within this framework than did
`comparable artists. For example, Lee explained that
`"instead of telling [Kirby] page by page" what to draw, Lee
`might simply tell him to "[d]evote five pages to this, five
`pages to that, and three pages to that." Id. at 70, Joint
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`App'x at 2490. Sometimes during plotting sessions, Kirby
`might "contribute something or he might say, 'Stan, let's
`also do this or do that.'" Id. at 41, Joint App'x at 2461.
`It is beyond dispute, moreover, that Kirby made
`many of the creative contributions, often thinking up and
`drawing characters on his own, influencing plotting, or
`pitching fresh ideas.
`The Termination Notices
`The dispute before us began in September 2009,
`when the Kirbys served various Marvel entities with
`documents entitled "Notice of Termination of Transfer
`Covering Extended Renewal Term" (the "Termination Notices").
`The Termination Notices purport to exercise statutory
`termination rights under section 304(c)(2) of the Copyright
`Act of 1976, 17 U.S.C. § 304, with respect to 262 works in
`all.
`
`Each notice states an effective date sometime in
`the future, presumably between 2014 and 2019. The effective
`dates are calculated according to section 304(c)'s timing
`provision, which states in relevant part that
`"[t]ermination . . . may be effected at any time during a
`period of five years beginning at the end of fifty-six years
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`from the date copyright was originally secured . . . ." 17
`U.S.C. § 304(c)(3).
`Procedural History
`Marvel filed this lawsuit on January 8, 2010. It
`sought a declaration that the Kirbys have no termination
`rights under section 304(c)(2), and that the Termination
`Notices are therefore ineffective. Marvel's claim was
`premised on its contention that all of the works were "made
`for hire" by Jack Kirby for Marvel within the definition of
`section 304(c).
`On March 9, 2010, the Kirbys filed a motion to
`dismiss the complaint. Lisa and Neal Kirby, residents of
`California, sought dismissal on the ground that they were
`not subject to personal jurisdiction in New York State.
`(The other Kirby siblings, Susan and Barbara, are residents
`of New York and do not contest personal jurisdiction.) The
`Kirbys also argued that Lisa and Neal are indispensable to
`the action under Fed. R. Civ. P. 19, and that Marvel's
`entire suit must therefore be dismissed as against all
`parties.
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`The district court denied the motion on April 14,
`2010. Marvel Worldwide, Inc. v. Kirby, No. 10 Civ. 141,
`2010 WL 1655253, 2010 U.S. Dist. LEXIS 38701 (S.D.N.Y. Apr.
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`14, 2010). It concluded that it had personal jurisdiction
`over Lisa and Neal under New York's long-arm statute, and
`that the exercise of this jurisdiction was consistent with
`constitutional due process. Id. at *3-*9; 2010 U.S. Dist.
`LEXIS 38701, at *7-*25. It therefore did not reach the
`question of whether Lisa and Neal were indispensable
`parties.
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`The Kirbys answered Marvel's complaint and
`asserted several counterclaims of their own. Marvel moved
`to dismiss each of them. On November 22, 2010, the district
`court granted the motion as to all but the Kirbys'
`counterclaim seeking a declaration that the Termination
`Notices were valid. Marvel Worldwide, Inc. v. Kirby, 756
`F. Supp. 2d 461 (S.D.N.Y. 2010).
`In early 2011, after discovery was complete, the
`parties cross-moved for summary judgment. Marvel also moved
`to exclude some of the Kirbys' evidence, most notably the
`reports of the Kirbys' putative expert witnesses, John
`Morrow and Mark Evanier.
`On July 28, 2011, the district court granted
`Marvel's motions to exclude Morrow and Evanier's testimony,
`and granted Marvel's motion for summary judgment. Marvel
`Worldwide, Inc. v. Kirby, 777 F. Supp. 2d 720 (S.D.N.Y.
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`2011). It relied upon case law in this Circuit applying the
`so-called "instance and expense test" to determine whether a
`work is "made for hire" under section 304(c). Id. at 738-
`43. The court concluded that undisputed facts in the record
`establish as a matter of law that the works at issue were
`made at Marvel's instance and expense, and were therefore
`works made for hire. Id. This being so, the Kirbys had no
`termination rights, and their Termination Notices were
`ineffective. The district court entered judgment
`accordingly on August 8, 2011.
`The Kirbys appeal.
`DISCUSSION
`I. Personal Jurisdiction over Lisa and Neal Kirby
`We turn first to the issue of personal
`jurisdiction over Lisa and Neal Kirby. Lisa and Neal are
`California residents. They contend that the district court
`erred when it determined that New York State's long-arm
`statute provided a basis for jurisdiction over them in the
`Southern District of New York. We review a district court's
`legal conclusions concerning its exercise of personal
`jurisdiction de novo, and its underlying factual findings
`for clear error. D.H. Blair & Co., Inc. v. Gottdiener, 462
`F.3d 95, 103 (2d Cir. 2006).
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`A district court must have a statutory basis for
`exercising personal jurisdiction. See Grand River
`Enterprises Six Nations, Ltd. v. Pryor, 425 F.3d 158, 165
`(2d Cir. 2005). Because this is "a federal question case
`where a defendant resides outside the forum
`state, . . . [and the relevant] federal statute does not
`specifically provide for national service of process," PDK
`Labs, Inc. v. Friedlander, 103 F.3d 1105, 1108 (2d Cir.
`1997) (internal quotation marks omitted), we apply "the
`forum state's personal jurisdiction rules," id. We
`therefore look to New York State law.
`We focus our attention on section 302(a)(1) of New
`York State's long-arm statute, N.Y. C.P.L.R. § 302(a)(1),
`upon which the district court rested its jurisdiction, and
`which Marvel invokes here. Section 302(a)(1) provides that
`"a court may exercise personal jurisdiction over any non-
`domiciliary . . . who in person or through an agent . . .
`transacts any business within the state . . . ." Id. We
`have recognized that for section 302(a)(1) to apply, "'it is
`essential . . . that there be some act by which the
`defendant purposefully avails [herself] of the privilege of
`conducting activities within the forum State, thus invoking
`the benefits and protections of its laws.'" Beacon
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`Enterprises, Inc. v. Menzies, 715 F.2d 757, 766 (2d Cir.
`1983) (alteration in original) (quoting George Reiner and
`Co. v. Schwartz, 41 N.Y.2d 648, 650, 363 N.E.2d 551, 553,
`394 N.Y.S.2d 844, 846 (1977)).
`Under the facts of this case, the only acts that
`could potentially give rise to section 302(a)(1)
`jurisdiction over Lisa and Neal are the sending of the
`Termination Notices to Marvel in New York. We conclude that
`this is an insufficient basis for personal jurisdiction.
`In Beacon Enterprises, supra, we applied section
`302(a)(1) in a declaratory judgment suit very similar to
`this one. The defendant there, Mary Menzies, thought that
`the plaintiff, Beacon, was infringing her trademarks and
`copyrights in a line of weight-loss garments designed to
`emulate the effects of a sauna. Beacon Enterprises, 715
`F.2d at 760. Menzies sent a cease-and-desist letter to
`Beacon at its New York City headquarters, threatening
`litigation. Id. Upon receiving it, Beacon filed a suit in
`the United States District Court for the Southern District
`of New York, seeking a judgment declaring that its products
`did not infringe Menzies' intellectual property rights. Id.
`We concluded that Menzies' mailing of the cease-
`and-desist letter into New York was insufficient to give
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`rise to personal jurisdiction over her under section
`302(a)(1). Id. at 762, 766. We pointed out that "New York
`courts have consistently refused to sustain section
`302(a)(1) jurisdiction solely on the basis of defendant's
`communication from another locale with a party in New York."
`Id. at 766 (collecting cases). And we thought it "difficult
`to characterize Menzies' letter alleging infringement in an
`unspecified locale and threatening litigation in an
`unspecified forum as an activity invoking the 'benefits and
`protections' of New York law." Id.
`In Ehrenfeld v. Bin Mahfouz, 9 N.Y.3d 501, 881
`N.E.2d 830, 851 N.Y.S.2d 381 (2007), the New York Court of
`Appeals, responding to a certified question from us,
`confronted a somewhat analogous fact pattern. There, the
`defendant had obtained a default judgment against the
`plaintiff in English courts for the plaintiff's allegedly
`libelous statements. Id. at 505, 881 N.E.2d at 832, 851
`N.Y.S.2d at 383. The plaintiff brought suit in federal
`court in the Southern District of New York seeking a
`declaration that she could not be held liable for defamation
`under the circumstances of that case, and that the
`defendant's default judgment was therefore not enforceable
`against her in New York. She argued that the "defendant
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`ha[d] transacted business in New York because he
`purposefully projected himself into the state to further a
`'foreign litigation scheme'" -- the libel suit in England --
`"designed to chill her speech." Id. at 508, 881 N.E.2d at
`834, 851 N.Y.S.2d at 385.
`When the case came before us on appeal, we
`certified to the New York Court of Appeals the question
`whether section 302(a)(1) conferred jurisdiction in the
`circumstances presented. Id. at 504, 881 N.E.2d at 831, 851
`N.Y.S.2d at 382; see Ehrenfeld v. Bin Mahfouz, 489 F.3d 542,
`551 (2d Cir. 2007). The Court of Appeals answered in the
`negative, reasoning:
`Here, none of defendant's relevant New
`York contacts have invoked the privileges
`or protections of our State's laws.
`Quite to the contrary, his communications
`in this state were intended to further
`his assertion of rights under the laws of
`England. As defendant points out –- and
`plaintiff does not dispute –- his
`prefiling demand letter and his service
`of documents were required under English
`procedural rules governing the
`prosecution of defamation actions. And
`in none of his letters to plaintiff did
`defendant seek to consummate a New York
`transaction or to invoke our State's
`laws.
`Ehrenfeld, 9 N.Y.3d at 509, 881 N.E.2d at 835, 851 N.Y.S.2d
`at 386.
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`Beacon Enterprises and Ehrenfeld point to the
`result of the jurisdictional inquiry here.
`Like the defendants in those cases, Lisa and Neal
`were not "present" in New York -- whether physically or
`through some other continuous contact2 -- in connection with
`the underlying dispute in this case. This factor is not
`alone dispositive, of course. Cf. Deutsche Bank Sec., Inc.
`v. Montana Bd. of Invs., 7 N.Y.3d 65, 71, 850 N.E.2d 1140,
`1142, 818 N.Y.S.2d 164, 166-67 (2006) ("[P]roof of one
`transaction in New York is sufficient to invoke
`jurisdiction, even though the defendant never enters New
`York." (internal quotation marks omitted)). It does,
`however, set this action apart from those the New York Court
`of Appeals has described as "the clearest sort of case[s] in
`which [New York] courts would have 302 jurisdiction," George
`Reiner & Co., Inc. v. Schwartz, 41 N.Y.2d 648, 652 (1977), a
`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.
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`process developed by the federal courts in and since
`International Shoe Co. v. Washington, 326 U.S. 310 (1945).
`Neither were Lisa and Neal's communications part,
`or in contemplation, of a course of business dealings with
`Marvel. This distinguishes them from the sort of
`communications we found sufficient to confer section
`302(a)(1) jurisdiction in PDK Labs, a case relied upon by
`the district court, but distinguished in Ehrenfeld, 9 N.Y.3d
`at 510, 881 N.E.2d at 836, 851 N.Y.S.2d at 387. In PDK
`Labs, we concluded that the defendant had "purposefully
`availed himself of the New York forum by using [his agent]
`in New York and apparently elsewhere for many years to
`advance his interest in his unique 'product' through
`soliciting funds and negotiating royalty agreements." PDK
`Labs, 103 F.3d at 1111; see also Hoffritz for Cutlery, Inc.
`v. Amajac, Ltd., 763 F.2d 55, 57 (2d Cir. 1985) (concluding
`that contract negotiated in part in New York, signed in
`Georgia and New York, and containing a New York forum
`selection clause constituted "transaction of business" in
`New York under section 302(a)(1)). Here, by contrast, the
`Termination Notices bear no indication that the Kirbys were
`negotiating or cared to negotiate for or solicit Marvel's
`business.
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`Finally, and perhaps most importantly, the
`Termination Notices, like the letter in Beacon Enterprises
`and the communications in Ehrenfeld, asserted legal rights
`under a body of law other than New York's. What the Kirby
`siblings seek to vindicate are purported termination rights
`under section 304(c) of the federal copyright laws; they
`seek no privilege or benefit conferred by New York State
`law. Section 304(c)(4), moreover, states that termination
`rights "shall be effected by serving an advance notice in
`writing upon the grantee [of the initial assignment] or the
`grantee's successor in title." The Termination Notices thus
`not only seek to vindicate rights under federal law, they
`also are a compulsory feature of that body of law.
`We think these factors foreclose the exercise of
`section 302(a)(1) jurisdiction in the circumstances of this
`case. We conclude that a communication from out-of-state,
`required for the exercise of rights conferred under a
`federal statute, cannot alone constitute a purposeful
`availment of "the benefits and protections of [New York's]
`laws," at least where the only connection to New York is
`that the recipient's business headquarters has a New York
`address.
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`Marvel's principal argument to the contrary rests
`on the premise that the Termination Notices are self-
`executing, legally effective communications. They are
`therefore different from the cease-and-desist letter at
`issue in Beacon Enterprises, Marvel contends, because there
`the notice did no more than advise the recipient of alleged
`infringement and threaten future litigation.
`To begin with, we doubt Marvel's is an entirely
`accurate characterization of the Termination Notices: They
`are necessary to the exercise of the termination rights, but
`only the additional act of filing the notices with the
`Copyright Office consummates the legal act of termination.
`See 17 U.S.C. § 304(c)(4)(A). In any event, Marvel does not
`explain why the notices' legal effect under federal
`copyright law renders the act of mailing them any more a
`"transaction of business" or a purposeful invocation of the
`benefits and protections of New York law than would be other
`communications.
`Marvel also points to the notices' effects on
`Marvel in New York, characterizing them as "target[ing] the
`center of gravity of Marvel's publishing business," and of
`having been "designed to disrupt and divert license fees
`from Marvel's New York-based business," leaving Marvel with
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`"no option but to protect its rights and those of its
`licensees." Appellees' Br. at 47-48 & n.17. These
`statements may well be essentially true, if perhaps a bit
`hyperbolic. But the Court in Ehrenfeld rejected virtually
`identical arguments based on the alleged in-state effects of
`the English default judgment that the defendant had obtained
`in the defamation case against the plaintiff, and the in-
`state action that that judgment would compel. See
`Ehrenfeld, 9 N.Y.3d at 511, 881 N.E.2d 830, 837, 851
`N.Y.S.2d 381, 388. Cf. Whitaker v. Am. Telecasting, Inc.,
`261 F.3d 196, 209 (2d Cir. 2001) (finding that "financial
`consequences in New York due to the fortuitous location of
`plaintiffs" are insufficient to confer jurisdiction under
`section 302(a)(3)). We read Ehrenfeld strongly to suggest
`that we reject Marvel's arguments in this regard here.
`Finally, we are unpersuaded by Marvel's attempts
`to connect Lisa and Neal with New York through their
`relationship with other family members. Appellees' Br. at
`51; see also Marvel Worldwide, Inc., 2010 WL 1655253, at *4-
`*5, 2010 U.S. Dist. LEXIS 38701, at *10-*12. The problem
`with these arguments -- whether they seek to endow Lisa and
`Neal with their father's jurisdictional status, or to
`analyze their contacts with New York "collectively" with
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`their other siblings -- is that they identify no legal
`mechanism by which Jack's, Barbara's, or Susan's actions
`become those of Lisa or Neal. Absent a bona fide agency
`relationship -- the existence of which no one has asserted -
`- there is no basis for imputing to Lisa and Neal actions by
`their father half a century ago, or coincident actions by
`their siblings who now live in New York and for that reason
`are subject to personal jurisdiction here. Doing so would
`stretch the text of section 302 beyond the breaking point,
`see N.Y. C.P.L.R. § 302(a) (referring to transaction of
`business "in person or through an agent").
`We conclude that the district court lacked
`personal jurisdiction over Lisa and Neal Kirby. We
`therefore vacate the district court's judgment as against
`those two Kirbys.
`II. Compulsory Joinder
`The Kirbys next argue that the absence of personal
`jurisdiction over Lisa and Neal requires vacatur of the
`judgment as against Barbara and Susan too. They rely on
`Federal Rule of Civil Procedure 19: "Required Joinder of
`Parties."
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`A. Federal Rule of Civil Procedure 19
`Rule 19 recognizes exceptional circumstances in
`which the plaintiff's choice of parties or forum must give
`way because of an absent party's interest in the outcome of
`the action or involvement in the underlying dispute. See
`generally 7 CHARLES ALAN WRIGHT & ARTHUR R. MILLER, FEDERAL PRACTICE
`AND PROCEDURE § 1602 (3d ed. 2008). The Rule's principal
`provisions are divided into two subsections. Subsection (a)
`protects certain parties by deeming them "required"; a party
`who is "required" according to the factors enumerated in
`subsection (a) is o
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