280 310 FEDERAL REPORTER, 3d SERIES

rather than simply limiting it, as did the ed summary judgment for transferee, and
preempted state statute in Aurora. The transferor appealed. The Court of Appeals,
rationale of Aurora squarely applies to McLaughlin, Circuit Judge, held that: (1)
this case, so that even if a general recourse prior settlement of authorship dispute did
to state law were appropriate, the particu- not bar transferor’s termination claim un-
lar statute upon which the district court der theories of res judicata or collateral
grounded its decision is preempted by the estoppel, and (2) transferor was statutorily
general maritime law. entitled to disavow concession made in set-
tlement agreement that books were works
CONCLUSION for hire.
For the foregoing reasons, we vacate the Reversed and remanded.
judgment of the district court and remand
the case to that court with instructions to
reinstate the maritime attachment ob- 1. Federal Courts O776
tained by Winter Storm and to retain jur- District court’s grant of summary
isdiction in the case in accordance with the judgment is reviewed de novo.
principles and practices of federal admiral-
2. Federal Civil Procedure O2544
ty law.
Party seeking summary judgment has
burden to demonstrate that no genuine

, issue of material fact exists. Fed.Rules

Civ.Proc.Rule 56(c), 28 U.S.C.A.

3. Federal Civil Procedure O2543

In determining whether genuine issue
MARVEL CHARACTERS, INC., of material fact exists, court ruling on
Plaintiff–Counter–Defendant– summary judgment motion must examine
Appellee, evidence in light most favorable to, and
draw all inferences in favor of, non-mov-
v. ant. Fed.Rules Civ.Proc.Rule 56(c), 28
Joseph H. SIMON, Defendant–Counter– U.S.C.A.
Claimant–Appellant.
4. Federal Civil Procedure O2470
Docket No. 02–7221. Summary judgment is improper if
United States Court of Appeals, there is any evidence in record that could
Second Circuit. reasonably support jury’s verdict for non-
moving party. Fed.Rules Civ.Proc.Rule
Argued: June 3, 2002. 56(c), 28 U.S.C.A.
Decided: Nov. 7, 2002.
5. Judgment O570(6)
Dismissal, with prejudice, arising out
Transferee of copyrights in comic of settlement agreement operates as final
books sought declaratory judgment that judgment for res judicata purposes.
transferor’s termination notice was invalid.
The United States District Court for the 6. Judgment O585(5), 739
Southern District of New York, Richard Prior judgment cannot be given effect
Conway Casey, J., 2002 WL 313865, grant- of extinguishing claims which did not then
 MARVEL CHARACTERS, INC. v. SIMON 281
Cite as 310 F.3d 280 (2nd Cir. 2002)

exist and which could not have been sued nate grant of copyright; stipulation of set-
upon in previous case. tlement did not contain any specific find-
ings on issue of authorship. 17 U.S.C.A.
7. Judgment O542
§ 304(c).
Res judicata does not bar subsequent
litigation when court in prior action could 12. Copyrights and Intellectual Property
not have awarded relief requested in new O47
action.
Settlement agreement, entered into
8. Judgment O585(5), 828.20(2) long after comic book’s creation, stipulat-
Settlement, and resulting dismissals, ing that book was created for hire, consti-
of prior federal and state court suits to tuted ‘‘any agreement to the contrary,’’
determine whether alleged author of comic within meaning of copyright statute autho-
books was entitled to renewal term, in rizing authors to terminate grants at end
which alleged author conceded that books of renewal term, notwithstanding any con-
were works for hire, was not res judicata trary agreements. 17 U.S.C.A.
barring alleged author’s subsequent claim § 304(c)(5).
that, upon expiration of renewal term, he See publication Words and Phras-
was, as author, entitled to terminate grant es for other judicial constructions
and definitions.
of copyright; termination right did not ex-
ist at time of prior action. 17 U.S.C.A. 13. Statutes O184, 190, 217.4
§ 304(c).
When language of statute is unambig-
9. Judgment O634 uous, judicial inquiry is complete; when
‘‘Collateral estoppel,’’ or issue preclu- terms of statute are ambiguous, however,
sion, prevents parties or their privies from court may seek guidance in legislative his-
relitigating in subsequent action issue of tory and purpose of statute.
fact or law that was fully and fairly litigat-
ed in prior proceeding.
See publication Words and Phras-
es for other judicial constructions
and definitions. Ethan Horwitz, Goodwin Procter LLP,
10. Compromise and Settlement O17(1) New York, NY (Kandis M. Kahn, on the
brief), Ross J. Charap, Moses & Singer
Where stipulation of settlement is un-
LLP, New York, NY, on the brief, Darby
accompanied by findings, it does not bind
& Darby PC, New York, NY, on the brief,
parties on any issue which might arise in
for Defendant–Counter–Claimant–Appel-
connection with another cause of action.
lant.
11. Judgment O654, 828.9(5), 828.20(2)
David Fleischer, Paul, Hastings, Janof-
Settlement, and resulting dismissals,
sky & Walker LLP, New York, NY (Jodi
of prior federal and state court suits to
A. Kleinick, on the brief), for Plaintiff–
determine whether alleged author of comic
Counter–Defendant–Appellee.
books was entitled to renewal term, in
which alleged author conceded that books Kay Murray, The Authors Guild, Inc.,
were works for hire, did not collaterally New York, NY, for Amici Curiae The Au-
estop alleged author from subsequently thors Guild, Inc.; The American Society of
claiming that, upon expiration of renewal Journalists and Authors; The American
term, he was, as author, entitled to termi- Society of Media Photographers, Inc.; The
282 310 FEDERAL REPORTER, 3d SERIES

Graphic Artists Guild; and The Society of cations and Timely Comics, Inc. (collective-
Children’s Book Writers and Illustrators. ly ‘‘Timely’’) published the first issue of the
now iconic Captain America Comics.
Before: KEARSE and McLAUGHLIN, Captain America, a.k.a. Steve Rogers, was
Circuit Judges, and HAIGHT, District an army-reject turned superhero who was
Judge.* charged with protecting America from all
McLAUGHLIN, Circuit Judge. enemies, especially Nazi spies. Author-
ship of the comic book was attributed to
This appeal requires us to examine the
Simon and Jack Kirby.
scope of the termination provision of the
Copyright Act of 1976 (the ‘‘1976 Act’’), 17 According to Simon, he created Captain
U.S.C. § 304(c). Section 304(c) grants au- America as an independent, freelance pro-
thors (or if deceased, their statutory heirs) ject before shopping it around to various
an inalienable right to terminate a grant in publishers. Although there was no writ-
a copyright fifty-six years after the origi- ten agreement between the parties, Simon
nal grant ‘‘notwithstanding any agreement contends that he sold the Captain America
to the contrary.’’ 17 U.S.C. § 304(c)(3),(5). story to Timely for a fixed page rate plus a
The termination provision, however, has twenty-five percent share of the profits of
one salient exception: copyright grants in the comic books. Simon also maintains
works created for hire cannot be terminat- that he created the second through tenth
ed. 17 U.S.C. § 304(c). issues of Captain America Comics on a
freelance basis, and orally assigned his
The question of first impression raised
interest in Captain America Comics and
here is whether a settlement agreement,
the Captain America character (collectively
entered into long after a work’s creation,
the ‘‘Works’’) to Timely.
stipulating that a work was created for
hire constitutes ‘‘any agreement to the During 1941, Timely published the sec-
contrary’’ under the 1976 Act. We conclude ond through tenth issues of Captain
that it does and, therefore, reverse. America Comics. Shortly after their pub-
lication, Timely applied for and received
BACKGROUND certificates of registration of the copy-
This being an appeal from a grant of rights for each issue of the Works. The
summary judgment to plaintiff Marvel Works were a tremendous success, and to
Comics, Inc. (‘‘Marvel’’), we view the depo- this day continue to generate substantial
sition testimony, affidavits, and documen- revenue for Marvel, Timely’s successor in
tary evidence in the light most favorable to interest.
defendant Joseph H. Simon, the non-mov-
ing party. Roge v. NYP Holdings, Inc., II. The Copyright Act of 1909
257 F.3d 164, 165 (2d Cir.2001). Under the Copyright Act of 1909 (the
‘‘1909 Act’’), in effect at the time of Si-
I. Publication of Captain America mon’s purported creation of Captain
Comics America and assignment to Timely, an au-
In December 1940, Martin and Jean thor was entitled to a copyright in his
Goodman, doing business as Timely Publi- work for twenty-eight years from the date

* The Honorable Charles S. Haight, Jr., United of New York, sitting by designation.
States District Judge for the Southern District
 MARVEL CHARACTERS, INC. v. SIMON 283
Cite as 310 F.3d 280 (2nd Cir. 2002)

of its publication. 17 U.S.C. § 24, re- and Weston Merch. Corp. (R. at 117).
pealed by Copyright Act of 1976, 17 U.S.C. Simon sought an accounting, damages, and
§ 101 et seq. Upon expiration of the first injunctive relief in the State Action. See
twenty-eight year term, the author could id.
renew the copyright for a second twenty- One year later, Simon filed a similar
eight year period (the ‘‘renewal term’’) action against the Goodmans and their af-
simply by applying to the United States filiates in the United States District Court
Copyright Office (‘‘Copyright Office’’). Id. for the Southern District of New York (the
The Supreme Court has noted that the ‘‘Federal Action’’). In this action, Simon
renewal term operated to ‘‘permit[ ] the sought a declaratory judgment that he, as
author, originally in a poor bargaining po- the author of the Works, had the sole and
sition, to renegotiate the terms of the exclusive right to the renewal term of the
grant once the value of the work has been copyright in the Works. See Complaint,
tested.’’ Stewart v. Abend, 495 U.S. 207, Joseph H. Simon v. Martin Goodman and
218–19, 110 S.Ct. 1750, 109 L.Ed.2d 184 Jean Goodman, individually and d/b/a
(1990); see also Woods v. Bourne Co., 60 Magazine Mgmt. Co. and Timely Comics,
F.3d 978, 982 (2d Cir.1995) (‘‘[Through the Inc. (R. at 142–48). He also sought injunc-
renewal term] Congress attempted to al- tive relief to prohibit the Goodmans from
leviate the problem of the inability of au- applying for renewal registrations of the
thors to know the true monetary value of Works. See id. Simon was represented
their works prior to commercial exploita- by counsel in the Prior Actions.
tion.’’). As the House committee which In both of the Prior Actions, the defen-
drafted the 1909 Act explained, ‘‘it should dants denied that Simon was the sole au-
be the exclusive right of the author to take thor of the Works. In the State Action,
the renewal term, and the law should be the defendants specifically argued that Si-
framed as is the existing law, so that he mon’s contributions to the Works were
could not be deprived of that right.’’ made as an ‘‘employee for hire.’’ See De-
H.R.Rep. No. 60–2222, at 14 (1909). fendants’ Answer and Counterclaims (R. at
136–39). In the Federal Action, the defen-
III. The Prior Actions dants asserted a counterclaim for a judg-
As the initial twenty-eight year term of ment declaring that Timely owned the
copyright in the Captain America Works copyrights in the Works and therefore Si-
neared its completion, Simon commenced mon should be enjoined from applying to
two separate lawsuits (the ‘‘Prior Actions’’) renew such copyrights. See Defendants’
against the Goodmans and their affiliates. Answer (R. at 150–55). While the Prior
In October 1966, Simon sued in New Actions were pending, Timely’s successor
York State Supreme Court (the ‘‘State Ac- in interest applied to the Copyright Office
tion’’) claiming that, because he was the for renewal of the copyrights in the Works.
author of the Works, the Goodmans’ ex- In November 1969, after two years of
ploitation of the Captain America charac- discovery, the parties to the Prior Actions
ter constituted unfair competition and mis- entered into a settlement agreement (the
appropriation of his state law property ‘‘Settlement Agreement’’). In the Settle-
rights. See Complaint, Joseph H. Simon ment Agreement, Simon acknowledged
v. Martin Goodman and Jean Goodman, that his contribution to the Works ‘‘was
individually and d/b/a Magazine Mgmt. done as an employee for hire of the Good-
Co., Krantz Films, Inc., R.K.O. Gen., Inc., mans.’’ (R. at 185). Pursuant to this Set-
284 310 FEDERAL REPORTER, 3d SERIES

tlement Agreement, Simon assigned ‘‘any Congress extended the duration of copy-
and all right, title and interest he may rights then in their renewal terms for an
have or control or which he has had or additional nineteen years (the ‘‘extended
controlled in [the Works] (without warran- renewal term’’). See 17 U.S.C. § 304(b).
ty that he has had or controlled any such More significantly, however, the 1976 Act
right, title or interest)’’ to the Goodmans gave new protections to authors. It al-
and their affiliates. (R. at 179–80). The lowed authors to terminate the rights of a
parties to both actions filed stipulations grantee to whom the author had trans-
with the respective courts dismissing with ferred rights in the original work. See 17
prejudice ‘‘all claims and matters alleged, U.S.C. § 304(c); Woods, 60 F.3d at 982.
threatened, implied or set forth in any of This termination provision provides, in rel-
the pleadings filed by [Simon].’’ (R. at evant part:
188–91). In the case of any copyright subsisting
in either its first or renewal term on
IV. The Copyright Act of 1976 January 1, 1978, other than a copyright
The legislative purpose behind the 1909 in a work made for hire, the exclusive
Act’s renewal right—to provide authors a or nonexclusive grant of a transfer or
second chance to benefit from their license of the renewal copyright or any
works—was dealt a serious blow by the right under it, executed before January
Supreme Court’s decision in Fred Fisher 1, 1978, by any of the persons designat-
Music Co. v. M. Witmark & Sons, 318 ed [by statute], otherwise than by will, is
U.S. 643, 63 S.Ct. 773, 87 L.Ed. 1055 subject to termination under the follow-
(1943). See Woods, 60 F.3d at 982. In ing conditions:
Fisher Music, the Supreme Court ad- TTT
dressed the renewal rights in the ever-
(5) Termination of the grant may be
popular (not to mention mellifluous) song
effected notwithstanding any agreement
‘‘When Irish Eyes Are Smiling.’’ The
to the contrary, including an agreement
Court held that renewal rights were as-
to make a will or to make any future
signable by an author during the initial
grant.
copyright term, before the renewal right
vested. See id., 318 U.S. at 656–59, 63 17 U.S.C. §§ 304(c) and 304(c)(5) (empha-
S.Ct. 773. sis added). Section 304 further provides
that terminations may be ‘‘effected at any
Not surprisingly, after Fisher Music
time during a period of five years begin-
publishers began to insist that authors as-
ning at the end of fifty-six years from the
sign both their initial and renewal rights to
date copyright was originally secured.’’ 17
them in one transfer. The natural effect
U.S.C. § 304(c)(3).
of this, of course, was to eliminate the
author’s renewal right under the 1909 Act. V. The Proceedings Below
In 1976, Congress enacted a comprehen- In December 1999, recognizing an op-
sive revision of the Copyright Act. See portunity created by § 304(c) to reclaim
Pub.L. No. 94–553 (1976)(codified at 17 his copyright in the Works, Simon filed
U.S.C. §§ 101–810); see also Mills Music, Notices of Termination (the ‘‘Termination
Inc. v. Snyder, 469 U.S. 153, 159–62, 105 Notices’’) with the Copyright Office pur-
S.Ct. 638, 83 L.Ed.2d 556 (1985). Re- porting to terminate his transfers of the
sponding to the continual erosion of au- copyrights to Timely pursuant to § 304(c).
thors’ rights subsequent to the 1909 Act, In the Termination Notices, Simon claimed
 MARVEL CHARACTERS, INC. v. SIMON 285
Cite as 310 F.3d 280 (2nd Cir. 2002)

that he independently created the Captain the Prior Actions could not have resolved
America character and authored the first the question of whether Simon was enti-
issue in the Captain America comic book tled to termination rights, the district
series, and that he was ‘‘neither an em- court found that this claim was not barred
ployee for hire nor a creator of a work for by res judicata. See id. at *6–*7. The
hire.’’ district court also rejected Marvel’s argu-
Thereafter, Marvel—as Timely’s succes- ment that Simon is precluded from raising
sor in interest in all rights, title, and inter- the issue of authorship needed to support
est to the Works by virtue of a series of his claim that the Termination Notices are
assignments—commenced this action in valid. See id. In rejecting this argument,
the United States District Court for the the district court noted that the authorship
Southern District of New York (Casey, J.) issue was not fully and fairly litigated on
seeking a declaratory judgment that the the merits in the Prior Actions. See id.
Termination Notices were invalid and that The district court did, however, find that
Marvel remains the sole owner of the Simon’s counterclaim seeking a declaration
copyrights in the Works. Simon in turn that he is the author of the Works was
filed a counterclaim for a declaratory judg- barred by res judicata because this claim
ment that: (1) he is the sole author of the was resolved in Marvel’s favor under the
Works; (2) the Termination Notices are Settlement Agreement. See id. at *7. (Si-
valid; and (3) all copyrights in the Works mon does not appeal the district court’s
revert to him on the effective date of the ruling on this counterclaim.)
Notices of Termination. Turning to the merits of Marvel’s claims
After discovery, Marvel moved for sum- that the Termination Notices are invalid
mary judgment on its claim for a declara- and Marvel is the sole owner of the copy-
tion that Simon’s Termination Notices right in the Works, the district court held
were invalid. Marvel argued that it was that Marvel was entitled to summary judg-
entitled to summary judgment on three ment on these claims based on the plain
separate grounds: (1) equitable estoppel; language of the Settlement Agreement.
(2) res judicata; and (3) fundamental prin- The court found that Simon’s unambiguous
ciples of contract law. Each argument acknowledgment in the Settlement Agree-
was bottomed on the premise that the new ment that he created the Works ‘‘for hire’’
termination right granted to authors under prevented Simon from exercising the ter-
§ 304(c) of the 1976 Act did not apply to mination right under § 304(c).
Simon because the Settlement Agreement
This appeal followed.
expressly stated that he was not the au-
thor of the Works for copyright purposes.
DISCUSSION
The district court found that Marvel’s
equitable estoppel argument was meritless. I. Standard of Review
With respect to Marvel’s res judicata argu- [1] We review a district court’s grant
ment, the district court held that the ter- of summary judgment de novo. Republic
mination right at issue in this action was Nat’l Bank of New York v. Delta Air
‘‘an entirely new and wholly separate right Lines, 263 F.3d 42, 46 (2d Cir.2001).
from the renewal right’’ at issue in the
Prior Actions. Marvel Characters, Inc. v. [2] The standards governing summary
Simon, No. 00 Civ. 1393, 2002 WL 313865, judgment are well-settled. Summary
at *6 (S.D.N.Y. Feb. 27, 2002). Because judgment is appropriate only ‘‘if the plead-
286 310 FEDERAL REPORTER, 3d SERIES

ings, depositions, answers to interrogato- 153–54, 99 S.Ct. 970, 59 L.Ed.2d 210

ries, and admissions on file, together with (1979).
the affidavits TTT show that there is no We apply federal law in determining the
genuine issue as to any material fact and preclusive effect of a federal judgment,
that the moving party is entitled to a PRC Harris, Inc. v. Boeing Co., 700 F.2d
judgment as a matter of law.’’ Fed. 894, 896 n. 1 (2d Cir.1983), and New York
R.Civ.P. 56(c); see also Celotex Corp. v. law in determining the preclusive effect of
Catrett, 477 U.S. 317, 322–23, 106 S.Ct. a New York State court judgment, Migra
2548, 91 L.Ed.2d 265 (1986). The party v. Warren City Sch. Dist. Bd. of Educ., 465
seeking summary judgment has the bur- U.S. 75, 81, 104 S.Ct. 892, 79 L.Ed.2d 56
den to demonstrate that no genuine issue (1984); see also 28 U.S.C. § 1738 (imple-
of material fact exists. Adickes v. S.H. menting the Full Faith and Credit Clause
Kress & Co., 398 U.S. 144, 157, 90 S.Ct. of the United States Constitution). The
1598, 26 L.Ed.2d 142 (1970); Gallo v. Pru- parties agree that there is no discernible
dential Residential Servs. L.P., 22 F.3d difference between federal and New York
1219, 1223–24 (2d Cir.1994). law concerning res judicata and collateral
estoppel. See, e.g., Pike v. Freeman, 266
[3, 4] In determining whether a genu-
F.3d 78, 90 n. 14 (2d Cir.2001). Therefore,
ine issue of material fact exists, a court
we see no need to undertake a separate
must examine the evidence in the light
analysis of the preclusive effect of the Fed-
most favorable to, and draw all inferences
eral and State Actions.
in favor of, the non-movant, in this case
Simon. Matsushita Elec. Indus. Co. v. On this appeal, Marvel contends that
Zenith Radio Corp., 475 U.S. 574, 587, 106 there is no meaningful distinction between
S.Ct. 1348, 89 L.Ed.2d 538 (1986); Wein- the authorship issue raised in the Prior
stock v. Columbia Univ., 224 F.3d 33, 41 Actions and the termination right at issue
(2d Cir.2000). Summary judgment is im- in this case. Therefore, according to Mar-
proper if there is any evidence in the vel, res judicata bars Simon from asserting
record that could reasonably support a that he is the author of the Works in order
jury’s verdict for the non-moving party. to exercise his termination right under
Pinto v. Allstate Ins. Co., 221 F.3d 394, § 304(c). In contrast, Simon argues that
398 (2d Cir.2000). the district court was correct in finding
that neither res judicata nor collateral es-
toppel barred him from asserting that he
II. The Preclusive Effect of the Prior
was the Works’ author because the factual
Actions
issue of authorship was never fully and
Determining the preclusive effect of the fairly litigated in the Prior Actions and is
Prior Actions requires an analysis of the quite different from his present claim to
common law doctrines of res judicata and termination rights in the Works. Simon is
collateral estoppel. These related but dis- correct.
tinct doctrines operate to prevent parties
from contesting matters that they have A. Res judicata
had a full and fair opportunity to litigate, [5–7] Under the doctrine of res judica-
thereby conserving judicial resources and ta, or claim preclusion, a final judgment on
protecting parties from the expense and the merits of an action precludes the par-
vexation of multiple lawsuits. See, e.g., ties or their privies from relitigating
Montana v. United States, 440 U.S. 147, claims that were or could have been raised
 MARVEL CHARACTERS, INC. v. SIMON 287
Cite as 310 F.3d 280 (2nd Cir. 2002)

in that action. See Allen v. McCurry, 449 treatment as a unit conforms to the par-
U.S. 90, 94, 101 S.Ct. 411, 66 L.Ed.2d 308 ties’ expectations or business understand-
(1980). It is clear that a dismissal, with ing or usage.’’ Pike, 266 F.3d at 91 (inter-
prejudice, arising out of a settlement nal quotations omitted).
agreement operates as a final judgment
However, ‘‘[t]hat both suits involved es-
for res judicata purposes. See, e.g., Ne-
maizer v. Baker, 793 F.2d 58, 60–61 (2d sentially the same course of wrongful con-
Cir.1986). It is equally well settled, how- duct is not decisive.’’ Lawlor, 349 U.S. at
ever, that a prior judgment ‘‘cannot be 327, 75 S.Ct. 865 (internal quotations omit-
given the effect of extinguishing claims ted). For a single course of conduct may
which did not even then exist and which give rise to more than a single cause of
could not possibly have been sued upon in action for res judicata purposes. See id. at
the previous case.’’ Lawlor v. Nat’l 327–28, 75 S.Ct. 865.
Screen Serv. Corp., 349 U.S. 322, 328, 75 Although they spring from the same set
S.Ct. 865, 99 L.Ed. 1122 (1955). Likewise, of underlying facts, the claims at issue in
res judicata does not bar subsequent litiga- the Prior Actions and the claims asserted
tion when the court in the prior action in the current action are plainly distinct.
could not have awarded the relief request- In the Prior Actions, Simon claimed that
ed in the new action. See, e.g., Leather v. he was entitled to the renewal term of
Eyck, 180 F.3d 420, 425 (2d Cir.1999); copyright for the Works. In the present
Burgos v. Hopkins, 14 F.3d 787, 790 (2d suit, Simon claims that he is entitled to
Cir.1994); Davidson v. Capuano, 792 F.2d
terminate Marvel’s copyright in the Works
275, 278 (2d Cir.1986).
and obtain the extended copyright term by
Whether a claim that was not raised in virtue of § 304(c) of the 1976 Act. As the
the previous action could have been raised district court correctly recognized, neither
therein ‘‘depends in part on whether the the extended copyright term nor the ter-
same transaction or connected series of mination right existed at the time of the
transactions is at issue, whether the same Prior Actions. Indeed, the termination
evidence is needed to support both claims, right is an entirely new and wholly sepa-
and whether the facts essential to the sec- rate right than the renewal right. Hence,
ond were present in the first.’’ Woods v. the Prior Actions could not have resolved
Dunlop Tire Corp., 972 F.2d 36, 38 (2d the question of whether Simon was enti-
Cir.1992) (internal quotations omitted) tled to termination rights in the extended
(emphasis added). ‘‘Also dispositive to a copyright term. Nor could the Prior Ac-
finding of preclusive effect, is whether an tions have awarded the relief requested in
independent judgment in a separate pro- this action—the right to terminate the
ceeding would impair or destroy rights or
grant to Marvel and obtain the right to the
interests established by the judgment en-
extended copyright term—as that relief
tered in the first action.’’ Sure–Snap
was likewise unavailable at that time.
Corp. v. State Street Bank & Trust Co.,
948 F.2d 869, 874 (2d Cir.1991) (internal Marvel cites Precision Air Parts, Inc. v.
quotations omitted). To determine wheth- Avco Corp., 736 F.2d 1499 (11th Cir.1984),
er two actions arise from the same trans- and Hernandez v. City of Lafayette, 699
action or claim, ‘‘we look to whether the F.2d 734 (5th Cir.1983) for the proposition
underlying facts are related in time, space, that ‘‘[a] change in law TTT will only enable
origin, or motivation, whether they form a a party to re-litigate a claim where that
convenient trial unit, and whether their change could have affected the outcome of
288 310 FEDERAL REPORTER, 3d SERIES

the litigation.’’ Appellee’s Br. at 30. Mar- be to estop him collaterally from doing
vel also argues, correctly, that despite the so.
enactment of the 1976 Act, the 1909 Act
Id. at 202 n. 7 (emphasis in original); ac-
governs the authorship of the Works at
cord St. Pierre v. Dyer, 208 F.3d 394, 400–
issue here. See, e.g., Roth v. Pritikin, 710
01 (2d Cir.2000) (finding that even if the
F.2d 934, 937–39 (2d Cir.1983) (holding
plaintiff’s claims for damages were barred
that the 1976 Act’s ‘‘work for hire’’ provi-
by res judicata, ‘‘he is not necessarily pre-
sions—which differ from the 1909 Act—
cluded from proving [some of the underly-
are not to be applied retroactively). How-
ing issues of that claim] in connection
ever, it does not follow, as Marvel sug-
with’’ his claims for indemnification and
gests, that since the Works’ authorship
was at issue in the previous actions, Si- contribution).
mon’s termination claim is precluded here. [8] Applying Yoon’s reasoning here, it
While Simon’s assertion of authorship is is clear that Simon is not precluded from
the sine qua non of both his prior claim to claiming that he is the author of the Works
renewal rights and his present claim to for purposes of exercising the termination
termination rights, it is merely an issue right under § 304(c). While Simon would
that determines the viability of each claim. be precluded from claiming that he was
See Yoon v. Fordham Univ. Faculty & entitled to benefits flowing from the initial
Admin. Retirement Plan, 263 F.3d 196, twenty-eight year renewal period, that is
202 (2d Cir.2001). not his claim. He is claiming that he is
This Court’s reasoning in Yoon is in- entitled to terminate Marvel’s copyright in
structive. In that case, the plaintiff had the Works, a claim that did not exist when
previously litigated and defaulted on his the Prior Actions were settled. Therefore,
state court claim that he was entitled to the district court was correct that res judi-
his teaching salary. Thereafter, Yoon filed cata does not bar Simon from asserting
a suit in federal court claiming entitlement that the Termination Notices are valid.
to pension benefits under ERISA. The
district court granted the defendant’s mo- B. Collateral Estoppel
tion to dismiss, holding that Yoon’s ERISA
claim was barred on res judicata grounds. [9] Collateral estoppel, or issue preclu-
See id. at 198–200. On appeal, the defen- sion, prevents parties or their privies from
dant urged this Court to affirm the district relitigating in a subsequent action an issue
court’s decision because res judicata pre- of fact or law that was fully and fairly
vented Yoon from proving his entitlement litigated in a prior proceeding. See Bo-
to pension benefits. We rejected that ar- guslavsky v. Kaplan, 159 F.3d 715, 719–20
gument, explaining: (2d Cir.1998); see also Comm’r of Internal
[T]he fact that, because of res judicata, Revenue v. Sunnen, 333 U.S. 591, 598, 68
Yoon cannot raise the question of his S.Ct. 715, 92 L.Ed. 898 (1948) (‘‘Once a
right to salary for purposes of getting party has fought out a matter in litigation
salary (past, present, and future) does with the other party, he cannot later re-
not mean that he is barred from raising new that duel.’’). Collateral estoppel ap-
the question of his entitlement to salary plies when: ‘‘(1) the identical issue was
in order to establish a contractual basis raised in a previous proceeding; (2) the
for the payment of pensions. For to issue was actually litigated and decided in
deprive Yoon of the right to litigate the the previous proceeding; (3) the party had
issue of his entitlement to salary would a full and fair opportunity to litigate the
 MARVEL CHARACTERS, INC. v. SIMON 289
Cite as 310 F.3d 280 (2nd Cir. 2002)

issue; and (4) the resolution of the issue turn, at length, to the issue of first impres-
was necessary to support a valid and final sion presented by this case: whether an
judgment on the merits.’’ Boguslavsky, agreement made subsequent to a work’s
159 F.3d at 720 (internal quotations omit- creation that declares that it is a work
ted). created for hire constitutes an ‘‘agreement
[10] Simon does not dispute that he to the contrary’’ under § 304(c)(5) of the
raised the issue of the Works’ authorship 1976 Act. The district court never ad-
in the Prior Actions; nor does he contest dressed this question. Instead, it simply
that, by virtue of the stipulations of dis- assumed that because Simon had conceded
missal filed in the Prior Actions, he did not in the unambiguous Settlement Agreement
prevail on that issue. However, where a that the Works were created for hire, he
stipulation of settlement is ‘‘unaccompa- could not now assert that he was the
nied by findings,’’ it does ‘‘not bind the Works’ author for purposes of exercising
parties on any issue TTT which might arise the termination right in this action. While
in connection with another cause of ac- the district court was undoubtedly correct
tion.’’ Lawlor, 349 U.S. at 327, 75 S.Ct. that the Settlement Agreement is not am-
865; see also Motrade v. Rizkozaan, Inc., biguous—a contention disputed by the am-
No. 95 Civ. 6545, 1998 WL 108013, at *5 ici curiae—this is not the relevant analysis
(S.D.N.Y. March 11, 1998) (‘‘To have a on this issue. Instead, we must analyze
preclusive effect on specific issues or facts, the legislative intent and purpose of
however, a voluntary dismissal also must § 304(c) of the 1976 Act to determine its
be accompanied by specific findings suffi- application to this case.
cient for a subsequent court to conclude Simon contends that the district court’s
that certain matters were actually decid-
failure to give effect to § 304(c)’s mandate
ed.’’).
that authors can terminate copyright
[11] Here, although the Settlement grants ‘‘notwithstanding any agreement to
Agreement contained detailed findings on the contrary’’ contravenes the legislative
the authorship issue, neither of the stipula- intent and purpose of § 304(c). Further,
tions filed in the Prior Actions contain any because Simon has submitted testimony
specific findings as to whether Simon au- that he was not in fact an employee for
thored the Works independently or wheth- hire when he created the Captain Marvel
er the Captain America character was cre- character, he maintains that a genuine is-
ated as a work for hire. Nor do the sue of material fact exists regarding Mar-
stipulations reference the Settlement vel’s claims that the Termination Notices
Agreement in any way. Therefore, the are invalid and it is the sole owner of the
stipulations do not collaterally estop Simon copyright in the Works. Marvel’s only
from litigating the issue of authorship un- response to Simon’s contentions is that if
derlying his termination claim in this ac- Simon’s reading of the statute is upheld,
tion. no litigation concerning a claim to author-
ship could ever be resolved by settlement.
III. Application of Section 304(c) of the We find Simon’s arguments persuasive and
1976 Act Marvel’s prediction unfounded.
[12] Having concluded that Simon is
not precluded from asserting that he is the [13] In order to determine the mean-
author of the Works for purposes of exer- ing of § 304(c), we apply the well estab-
cising his statutory termination right, we lished canons of statutory construction. In
290 310 FEDERAL REPORTER, 3d SERIES

interpreting a statute, we look first to the been made before the author had a fair
language of the statute itself. See, e.g., opportunity to appreciate the true value
Cmty. for Creative Non–Violence v. Reid, of his work product. That general pur-
490 U.S. 730, 739, 109 S.Ct. 2166, 104 pose is plainly defined in the legislative
L.Ed.2d 811 (1989); Auburn Housing history and, indeed, is fairly inferable
Auth. v. Martinez, 277 F.3d 138, 143 (2d from the text of § 304 itself.
Cir.2002). When the language of a statute Mills Music, 469 U.S. at 172–73, 105 S.Ct.
is unambiguous, ‘‘judicial inquiry is com- 638 (footnote omitted) (interpreting the de-
plete.’’ Connecticut Nat’l Bank v. Ger- rivative works exception to the termination
main, 503 U.S. 249, 254, 112 S.Ct. 1146, clause of § 304(c)). Furthermore, the leg-
117 L.Ed.2d 391 (1992). When the terms islative history of the termination provision
of a statute are ambiguous, however, we reflects Congress’s intent to protect au-
may seek guidance in the legislative histo- thors from unequal bargaining positions.
ry and purpose of the statute. See Novak See H.R.Rep. No. 94–1476, at 124 (1976),
v. Kasaks, 216 F.3d 300, 310 (2d Cir.2000). reprinted in 1976 U.S.C.C.A.N. 5659, 5740
In so doing, we must ‘‘construct an inter- (‘‘A provision of this sort is needed because
pretation that comports with [the statute’s] of the unequal bargaining position of au-
primary purpose and does not lead to ano- thors, resulting in part from the impossi-
malous or unreasonable results.’’ Con- bility of determining a work’s value until it
necticut v. United States Dep’t of the Inte- has been exploited.’’); see also Mills Mu-
rior, 228 F.3d 82, 89 (2d Cir.2000). sic, 469 U.S. at 173 n. 39, 105 S.Ct. 638.
Here, whether § 304(c)(5)’s phrase ‘‘any As these statements suggest, the clear
agreement to the contrary’’ includes a set- Congressional purpose behind § 304(c)
tlement agreement stating that a work was was to prevent authors from waiving their
created for hire is not clear from the text termination right by contract. Accord
of the statute itself. Generally speaking, Stewart, 495 U.S. at 230, 110 S.Ct. 1750
the Settlement Agreement is an agree- (‘‘The 1976 Copyright Act provides TTT an
ment to the contrary. But without more inalienable termination right.’’).
specific or compelling evidence from the When examining the legislative intent
text, we find it necessary to go beyond the and purpose of § 304(c), it becomes clear
mere text and consider the legislative in- that an agreement made after a work’s
tent and purpose of § 304(c) to ascertain creation stipulating that the work was cre-
the statute’s meaning. ated as a work for hire constitutes an
The Supreme Court has elucidated the ‘‘agreement to the contrary’’ which can be
intent and purpose behind the termination disavowed pursuant to the statute. Any
provision of the 1976 Act: other construction of § 304(c) would
The principal purpose of the amend- thwart the clear legislative purpose and
ments in § 304 was to provide added intent of the statute. If an agreement
benefits to authors. The TTT concept of between an author and publisher that a
a termination right itself, w[as] obvious- work was created for hire were outside the
ly intended to make the rewards for the purview of § 304(c)(5), the termination
creativity of authors more substantial. provision would be rendered a nullity; liti-
More particularly, the termination right gation-savvy publishers would be able to
was expressly intended to relieve au- utilize their superior bargaining position to
thors of the consequences of ill-advised compel authors to agree that a work was
and unremunerative grants that had created for hire in order to get their works
 MARVEL CHARACTERS, INC. v. SIMON 291
Cite as 310 F.3d 280 (2nd Cir. 2002)

published. In effect, such an interpreta- tionship between the parties, rather than
tion would likely repeat the result wrought the language of their agreements, in deter-
by the Fred Fisher decision and provide a mining authorship of the work. See, e.g.,
blueprint by which publishers could effec- Donaldson Pub. Co. v. Bregman, Vocco &
tively eliminate an author’s termination Conn, Inc., 375 F.2d 639, 640–42 (2d Cir.
right. We conclude that Congress includ- 1967) (holding that a composer’s work was
ed the ‘‘notwithstanding any agreement to not created as a work for hire for defen-
the contrary’’ language in the termination dant even though his contract with defen-
provision precisely to avoid such a result. dant provided him with a drawing account
This view finds support in Nimmer on during his ‘‘employment’’); see also Mur-
Copyright: ray v. Gelderman, 566 F.2d 1307, 1310–11
The parties to a grant may not agree (5th Cir.1978) (holding that a writer was
that a work shall be deemed one made not the ‘‘author’’ of a book produced by the
‘‘for hire’’ in order to avoid the termi- defendant even though she expressly con-
nation provisions if a ‘‘for hire’’ relation- tracted for ‘‘exclusive control’’ of its con-
ship TTT does not in fact exist between tents).
them. Such an avoidance device would Additionally, this Court has looked to
be contrary to the statutory provision agency law to determine whether a work is
that ‘‘[t]ermination of the grant may be created ‘‘for hire’’ under the 1909 Act. See
effected notwithstanding any agreement Aldon Accessories Ltd. v. Spiegel, Inc., 738
to the contrary.’’ TTT [I]t is the rela- F.2d 548, 552 (2d Cir.1984). And under
tionship that in fact exists between the agency law, ‘‘[t]he manner in which the
parties, and not their description of that parties designate the relationship is not
relationship, that is determinative. controlling, and if an act done by one
3 Melville B. Nimmer & David Nimmer, person in behalf of another is in its essen-
Nimmer on Copyright § 11.02[A][2] (2000 tial nature one of agency, the one is the
ed.) (footnote omitted). This reading of agent of such other notwithstanding that
the statute also explains why copyright he or she is not so called. Conversely, the
grants in works created for hire are not mere use of the word ‘agent’ by parties in
subject to termination. See 17 U.S.C. their contract does not make one an agent
§ 304(c). Under the 1909 Act, the statuto- who, in fact, is not such.’’ 3 Am.Jur.2d
ry author of a work created for hire was Agency § 19 (2002) (footnotes omitted).
the employer-publisher. See, e.g., 17 Contrary to Marvel’s dire prediction
U.S.C. § 26 (repealed 1976); Cmty. for about an expansive interpretation of
Creative Non–Violence, 490 U.S. at 743–44 § 304(c), we believe that parties will still
& n. 9, 109 S.Ct. 2166. Because an employ- be able to resolve their authorship dis-
er-publisher does not face the same poten- putes by settlement. If parties intend to
tial unequal bargaining position as an indi- preclude any future litigation regarding
vidual author, it follows that an employer- authorship by settling their claims, they
publisher does not need the same protec- need only comply with the requirements of
tions as an individual author. collateral estoppel by filing a detailed stip-
This reading of § 304(c) is also consis- ulation of settlement, complete with suffi-
tent with the way in which courts have cient factual findings on authorship, with
interpreted the 1909 Act’s ‘‘work for hire’’ the court. Furthermore, when the rela-
provision. Courts engaging in such an tionship between parties has deteriorated
analysis have focused on the actual rela- to the point of litigation, presumably all
292 310 FEDERAL REPORTER, 3d SERIES

parties are represented by counsel. Ac- words or conduct.’’ Kosakow v. New Ro-
cordingly, the need to protect ‘‘ill-advised’’ chelle Radiology Assocs., P.C., 274 F.3d
authors from publishers or other more so- 706, 725 (2d Cir.2001). Under federal law,
phisticated entities—the policy concern un- applicable because Marvel’s claim involves
derlying § 304(c)—is no longer present. a federal statute, a party can be estopped
In sum, we hold that an agreement from pursuing a claim where: (1) the party
made subsequent to a work’s creation makes a misrepresentation of fact to an-
which retroactively deems it a ‘‘work for other party with reason to believe that the
hire’’ constitutes an ‘‘agreement to the con- other party will rely on it; (2) the other
trary’’ under § 304(c)(5) of the 1976 Act. party relies on the misrepresentation to
Therefore, Simon is not bound by the his detriment. See id.
statement in the Settlement Agreement Marvel’s estoppel argument is unpersua-
that he created the Works as an employee sive for three reasons. First, the doctrine
for hire. Because Simon has proffered of equitable estoppel does not supersede
admissible evidence that he did not create § 304(c). It is plain that § 304(c) neces-
the Works as an employee for hire, the sarily contemplates the likelihood that
district court’s grant of summary judg- long-dormant copyright ownership issues
ment to Marvel was erroneous. It will be will be awakened and litigated once the
up to a jury to determine whether Simon original fifty-six year copyright term ex-
was the author of the Works and, there- pires. In fact, Congress’s goal in provid-
fore, whether he can exercise § 304(c)’s ing authors with this termination right was
termination right. See, e.g., Medforms, to enable them to reclaim long lost copy-
Inc. v. Healthcare Mgmt. Solutions, Inc., right grants. As the district court correct-
290 F.3d 98, 110 (2d Cir.2002) (noting that ly recognized, virtually every copyright
authorship is a jury question). holder could fashion a similar equitable
estoppel argument in response to an au-
IV. Equitable Estoppel thor’s legitimate exercise of his termi-
Marvel’s final contention is that Simon is nation rights. See Marvel Characters,
barred by the doctrine of equitable estop- Inc., 2002 WL 313865, at *4. Permitting
pel from asserting that he is the author of such an exception, however, would contra-
the Works. Marvel argues that if it knew vene the plain language, intent, and pur-
that Simon would disavow the Settlement pose of § 304(c).
Agreement’s admission that the Works Second, Marvel’s argument ignores the
were created for hire, it would have pro- fact that the termination right did not
ceeded to trial in the Prior Actions and come into existence until 1978, the effec-
called both Martin Goodman and Jack Kir- tive date of the 1976 Act. Therefore, it is
by as witnesses. As these two men have specious to argue that Simon should be
since died, Marvel contends that Simon estopped from raising a claim that did not
should not now be able to raise the issue of come into existence until almost a decade
his authorship of the Works in this action. after the Settlement Agreement.
We find Marvel’s argument unpersuasive. Finally, Marvel cannot establish detri-
The doctrine of equitable estoppel can ment for equitable estoppel purposes.
be raised ‘‘where the enforcement of the Marvel has received the full economic ben-
rights of one party would work an injustice efit of the Works’ twenty-eight year re-
upon the other party due to the latter’s newal term. Even if a jury concludes that
justifiable reliance upon the former’s Simon is the Works’ author and can there-
 MATTEL, INC. v. BARBIE–CLUB.COM 293
Cite as 310 F.3d 293 (2nd Cir. 2002)

fore terminate Marvel’s copyright in the box.Com, Coolmatchbox.Com, Ilovem-

Works, Marvel can continue to exploit ev- atchbox.Com, Imatchbox.Com,
ery Captain America property created pri- Matchboxintros.Com, Matchboxon-
or to the effective date of termination. line.Com, Ourmatchbox.Com, My-
See Mills Music, 469 U.S. at 173, 105 S.Ct. matchbox.Com, Matellsoftware.Com,
638 (noting that pre-termination derivative Matellsoftware.Net, Matellsoft-
works may continue to be utilized under ware.Org, Mattels.Com, Mattle.Net,
the terms of the terminated grant). Mastertheuniverse.Com, See–And–See.
Accordingly, Simon is not equitably es- Com, Seensay.Net, Seensee.Net, Ty-
topped from raising his purported author- coltd.Com, Viewermaster.Com, View-
ship of the Works in this action. masters.Net, Barbie21century.Com,
and Mattle.Com, Defendants–Appel-
lees.
CONCLUSION
Docket No. 01–7680.
For the foregoing reasons, the judgment
of the district court is REVERSED. We United States Court of Appeals,
hereby REMAND this action to the dis- Second Circuit.
trict court for further proceedings not in-
consistent with this opinion. Argued: July 17, 2002.
Decided: Nov. 7, 2002.

, Trademark owner brought in rem ac-

tion against various domain names, alleg-
ing violation of Anticybersquatting Con-
sumer Protection Act (ACPA). The United
MATTEL, INC., Plaintiff–Appellant, States District Court for the Southern Dis-
trict of New York, Cote, J., 2001 WL
v. 436207, dismissed for lack of jurisdiction,
BARBIE–CLUB.COM, Barbie21.Com, and appeal was taken. The Court of Ap-
Barbieborza.Com, Barbiedoll–A.Com, peals, Sotomayor, Circuit Judge, ruling on
Barbiegallery.Com, Barbiej.Com, Bar- an issue of first impression in the Circuit,
biepchome.Com, Barbiesecrets.Com, held that in rem jurisdiction was exclusive-
Captainbarbie.Com, Missbarbie.Com, ly in judicial district in which registrar,
Princessbarbie.Com, Quierokillerbar- registry, or other domain-name authority
bies.Com, Quierobarbie.Com, Thebar- that registered or assigned disputed do-
bie.Com, Thebarbys.Com, Casinohot- main name was located.
wheel.Com, Casinohotwheels.Com, Affirmed.
Hotwheelcasino.Com, Hotwheelscasi-
no.Com, Thehotwheelcasino.Com,
Hotwheelscafe.Com, Hotwheelscana- 1. Trade Regulation O350.1
da.Com, Hotwheelshome.Com, Hot- Anticybersquatting Consumer Protec-
wheelspchome.Com, Hotwheelsu- tion Act (ACPA) provides for in rem juris-
sa.Com, Hotwheelsweb.Com, Ourhot- diction against domain name only in judi-
wheels.Com, Coolhotwheels.Com, Ilo- cial district in which registrar, registry, or
vehotwheels.Com, Ihotwheels.Com, other domain-name authority that regis-
Hotwheelswanted.Com, Buymatch- tered or assigned disputed domain name is