Urbont v. Sony Music Entm't, No. 15-1778 (2d Cir. 2016)

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Justia Opinion Summary

Plaintiff, a composer and music producer, filed a copyright suit against Sony, Razor Sharp Records, and Dennis Coles, a/k/a Ghostface Killah, to enforce plaintiff's claimed ownership rights in the "Iron Man" theme song. The district court determined that plaintiff failed to present sufficient evidence to rebut the presumption that Marvel was, in fact, the copyright owner. Therefore, the district court dismissed plaintiff's New York common law claims for copyright infringement, unfair competition, and misappropriation on the basis that those claims were preempted by the Copyright Act, 17 U.S.C. 101 et seq. The court held that, although the district court properly determined that defendants had standing to raise a “work for hire” defense to plaintiff’s copyright infringement claim, the district court erred in concluding that plaintiff failed to raise issues of material fact with respect to his ownership of the copyright; the district court properly dismissed plaintiff’s state law claims as preempted by the Copyright Act; the court vacated the district court’s summary judgment ruling with respect to plaintiff’s Copyright Act claim and remanded for further proceedings; and the court affirmed the district court's dismissal of plaintiff's state law claims.

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15 1778 cv Urbont v. Sony Music Entertainment 15-1778-cv Urbont v. Sony Music Entertainment 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 31 32 33 34 35 36 37 38 39 40 41 UNITED STATES COURT OF APPEALS FOR THE SECOND CIRCUIT August Term, 2015 (Submitted: March 24, 2016) Decided: July 29, 2016) Docket No. 15-1778-cv ________________________________________________________________ ________ JACK URBONT, Plaintiff-Appellant, - v.SONY MUSIC ENTERTAINMENT, INDIVIDUALLY, D/B/A EPIC RECORDS, RAZOR SHARP RECORDS, LLC, Defendants-Appellees, DENNIS COLES, A/K/A GHOSTFACE KILLAH, Defendant.* ________________________________________________________________ Before: JACOBS, HALL, and LYNCH, Circuit Judges. Appeal from the judgment of the United States District Court for the Southern District of New York (Buchwald, J.) granting Defendants-Appellees’ motions for summary judgment on plaintiff’s federal copyright claim and his related state law claims. We hold that the district court erred in determining that plaintiff failed to raise genuine issues of material fact with respect to his federal copyright infringement claim but that the court properly granted summary judgment to the appellees on plaintiff’s state law claims. The judgment is therefore AFFIRMED in part and VACATED and REMANDED in part. * The Clerk of Court is respectfully directed to amend the caption to conform to the above. 1 15 1778 cv Urbont v. Sony Music Entertainment 1 2 3 4 5 6 7 8 9 10 11 12 13 Richard S. Busch, King & Ballow, Nashville, TN, and Elliot Schnapp, Gordon, Gordon & Schnapp PLLC, New York, NY, for Plaintiff-Appellant. Marc S. Reiner, Hand Baldachin & Amburgey LLP, New York, NY, for Defendants-Appellees. HALL, Circuit Judge: In this copyright case, Plaintiff-Appellant Jack Urbont 14 brought suit to enforce his claimed ownership rights in the 15 “Iron Man” theme song against what he alleges is infringement by 16 Defendants 17 Records, 18 proceedings 19 Records 20 arguing that the Iron Man theme song was a “work for hire” 21 created at the instance and expense of Marvel Comics (“Marvel”). 22 The district court agreed, and it determined that Urbont failed 23 to present sufficient evidence to rebut the presumption that 24 Marvel was, in fact, the copyright owner. 25 Urbont’s New York common law claims for copyright infringement, Sony and Music Dennis below, challenged Entertainment Coles, a/k/a Ghostface Defendants-Appellees Urbont’s ownership 1 (“Sony”), Sony of Razor Killah.1 and the Razor Sharp In the Sharp copyright by The court dismissed Coles failed to participate in discovery during the proceedings below, and as a result the district court entered judgment against and imposed sanctions on him. (See Memorandum and Order, ECF No. 53.) Coles did not participate in the summary judgment motion and he is not a party to this appeal. 2 15 1778 cv Urbont v. Sony Music Entertainment 1 unfair competition, and misappropriation on the basis that those 2 claims were preempted by the Copyright Act. 3 We hold that although the district court properly 4 determined that the appellees had standing to raise a “work for 5 hire” defense to the plaintiff’s copyright infringement claim, 6 the court erred in concluding that Urbont failed to raise issues 7 of material fact with respect to his ownership of the copyright. 8 We further conclude that the district court properly dismissed 9 Urbont’s state law claims as preempted by the Copyright Act. We 10 thus vacate the district court’s summary judgment ruling with 11 respect 12 further proceedings consistent with this opinion. We affirm the 13 district court’s ruling dismissing Urbont’s state law claims. to 14 plaintiff’s Copyright Act claim and remand for I. Facts and Procedural History 15 Urbont is a composer and music producer who has written 16 theme songs for many well-known television shows. 17 Urbont wrote theme songs for various characters in the Marvel 18 Super 19 including 20 “Iron Man” theme song at issue in this case. 21 opening and closing songs for the series. 22 he offered to write the music for the series after being put in 23 touch with Marvel producer Stan Lee by a mutual friend. 24 to Heroes this television Captain show America, introduction, (“Marvel Hulk, Urbont was 3 Thor, series” or In 1966, “series”)— Sub-Mariner, and the He also composed According to Urbont, unfamiliar with the Prior Marvel 15 1778 cv Urbont v. Sony Music Entertainment 1 characters, and he had not previously written music that could 2 be 3 submissions. 4 source material and information about the characters. 5 Urbont “looked over the material [and] absorbed the nature of 6 the character,” A. 118, he composed the Iron Man superhero theme 7 and presented it to Lee, who accepted the work as written. 8 is undisputed that the sound recording of the Iron Man theme 9 song 10 used was for the series. Lee agreed to hear Urbont’s He provided Urbont with comic books to use as never released as an independent audio After It recording without a visual component. 11 In his deposition testimony, Urbont claims that his offer 12 to compose the theme music for the Marvel series was contingent 13 on his retaining ownership rights in the work. 14 follows: 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 31 He explained as I was not hired when I wrote the songs. I wrote the songs on spec[ulation] hoping that [Marvel] would use them. But the ownership of the material, as it always has been when I create material that I'm not being hired directly for as opposed to let's say my writing a pilot for MGM or Paramount, and my relationship is spelled out prior to my writing a single note. When it is not that type of situation, I own the material and I’m thrilled to be able to get it into the project, but I own it. It’s a firm condition of the way I’ve operated. And [Marvel] was aware of it. A. 93-94. 4 15 1778 cv Urbont v. Sony Music Entertainment 1 Further, Urbont claims that although Marvel was free to 2 accept or reject Urbont’s compositions, it did not have the 3 right 4 composed, 5 himself; although he needed money to cover his costs, he claims 6 he was not “trying to get rich on the project,” A. 86, but 7 simply wanted to get credit and exposure. 8 Marvel did not pay him, even for costs, until after it accepted 9 the work. to modify them recorded, without and Urbont’s produced the permission. music for Urbont the series Urbont asserts that He ultimately received a fixed sum of $3,000 for all 10 the songs written for the series. 11 royalty 12 received royalties from BMI. agreement with Marvel, Urbont did not have a written but he states that he later 13 Urbont admits there was no written agreement with Marvel 14 establishing that he owned the rights to the Iron Man theme 15 song. 16 that effect, described above. 17 issued 18 Copyright Office naming Urbont as the owner of the work, and 19 Urbont filed a renewal notice for the copyright in 1994. 20 renewing 21 Composition for use in the 2008 Iron Man movie starring Robert 22 Downey Jr., and he has licensed his Marvel series theme songs on 23 other occasions. 24 settlement He claims, however, that there was the oral agreement to a certificate the of copyright, In 1966, a music publisher was copyright Urbont has licensed by the the Iron U.S. Since Man Additionally, in 1995 Urbont entered into a agreement (“the Settlement”) 5 registration with New World 15 1778 cv Urbont v. Sony Music Entertainment 1 Entertainment, 2 (collectively, “Marvel”) after bringing suit against Marvel for 3 unauthorized use of the Iron Man composition and four other 4 Marvel series compositions. 5 agreed to release his claims and to license the works to Marvel. 6 The Settlement refers to Urbont as “renewal copyright owner of 7 the . . . Superhero Intros . . . and the Master Recordings 8 thereof” and refers to Marvel as “Licensee,” but it expressly 9 denies that Marvel faces “any liability to Owner.” 10 Ltd. and Marvel Entertainment Group, Inc. As part of the Settlement, Urbont A. 78. The appellees counter that Marvel did not share Urbont’s 11 understanding that he was the owner of the work. 12 in 13 Marvel series with a copyright notice “Copyright © 1967 Marvel 14 Comics Group.” 15 not released on that record, the parties agree that all of the 16 Marvel 17 agreement. 18 sought copyright registrations for the Iron Man segments of its 19 television program series, it did not reference any preexisting 20 copyrighted works that were incorporated into the program. 21 1967, Marvel series In released a recording S.P.A. 88-89. songs were of two They note that songs from the Although the Iron Man song was subject to the same ownership In addition, the appellees note that when Marvel 2000, known defendants as Dennis Ghostface Coles, Killah, the artist Razor Sharp popularly 23 Records produced and released an album named Supreme Clientele 24 that featured the Iron Man theme song on two tracks. and hop 22 6 Sony, hip It is 15 1778 cv Urbont v. Sony Music Entertainment 1 undisputed 2 Urbont to use those songs. 3 sometime in late 2009 or early 2010. 4 alleging that his copyright had been infringed. 5 parties 6 limitations. 7 that the entered defendants into an did not seek permission from Urbont became aware of the album agreement He contacted Sony in 2010, to toll Soon after, the the statute of Urbont filed a complaint on June 30, 2011, and an amended 8 complaint on August 29, 2011. 9 claim of copyright The Amended Complaint asserts a infringement under the Copyright Act, 17 10 U.S.C. § 101, et seq.,2 and claims under New York common law for 11 copyright 12 misappropriation. 13 Man composition, while his New York law claims are based on the 14 argument that the Iron Man theme song is, having been recorded 15 prior 16 protected under state law rather than under the Copyright Act. 17 See 18 preemption scheme for “sound recordings fixed before February 19 15, 1972”); see also 20 Inc., 4 N.Y.3d 540, 562–63 (2005) (explaining that New York 17 to infringement, 1972, U.S.C. unfair competition, and Urbont’s federal claim pertains to the Iron a § 301 sound recording (providing and exception therefore to would Copyright be Act’s Capitol Records, Inc. v. Naxos of Am., 2 Because the work at issue in this case was produced in 1966, the Copyright Act of 1909, Pub.L. No. 60–349, 35 Stat. 1075, governs Urbont’s copyright infringement claim. See Baldwin v. EMI Feist Catalog, Inc., 805 F.3d 18, 20 (2d Cir. 2015). 7 15 1778 cv Urbont v. Sony Music Entertainment 1 common law provides copyright protection to sound recordings not 2 otherwise protected by the federal Copyright Act). 3 Urbont moved for partial summary judgment. Appellees Sony 4 and Razor Sharp Records cross-moved for summary judgment. 5 Memorandum and Order, the district court denied Urbont’s motion 6 and granted the appellees’ motion. 7 Entm’t, 100 F. Supp. 3d 342 (S.D.N.Y. 2015). 8 first concluded that the appellees had standing to challenge 9 Urbont’s ownership of the copyright under the “work for hire” Id. at 348–50. In a See Urbont v. Sony Music The district court 10 doctrine. 11 song was a “work for hire” because it was composed at Marvel’s 12 “instance and expense,” id. at 350-52, and that Urbont had not 13 presented 14 sufficient to overcome the presumption that the work was for 15 hire. 16 Settlement was probative of the parties’ intent at the time the 17 composition was written. 18 Urbont’s 19 recording 20 “audiovisual work” subject to preemption under the Copyright Act 21 of 22 Urbont’s motion to reconsider its prior ruling. 23 Music Entm't, No. 11 CIV. 4516 NRB, 2015 WL 3439244 (S.D.N.Y. 24 May 27, 2015). evidence of Next, it determined that the Iron Man an ownership with Marvel The court rejected Urbont’s contention that the 1995 1976. state is law not Id. at a Id. at 353–54. claims on “sound recording” 355-56. the The Finally, it dismissed ground but district that the rather court Iron part later of Man an denied Urbont v. Sony Urbont appeals the district court’s ruling. 8 agreement 15 1778 cv Urbont v. Sony Music Entertainment 1 II. Discussion 2 Urbont contends that 3 determining that appellees, 4 ownership agreement between himself and Marvel, had standing to 5 challenge his 6 doctrine. He further argues that the district court overlooked 7 genuine issues of material fact that he raised as to his state 8 and federal copyright claims. 9 decision the ownership with respect the rights to district as court third under erred parties the “work to for in any hire” We affirm the district court’s the appellees’ standing and its 10 dismissal of Urbont’s state law claims. 11 grant of summary judgment in favor of appellees on Urbont’s 12 Copyright Act claim. 13 We reverse the court’s A. Standing 14 For purposes of the work for hire doctrine under the 1909 15 Copyright Act, “an ‘employer’ who hires another to create a 16 copyrightable work is the ‘author’ of the work for purposes of 17 the statute, absent an agreement to the contrary.” 18 Enters., Inc. v. Dumas, 53 F.3d 549, 554 (2d Cir. 1995) (citing 19 17 U.S.C. § 26 (1976) (repealed)). 20 Playboy This Court has not explicitly decided whether a third party 21 to an alleged employer-employee 22 raise a “work for hire” defense to copyright infringement. 23 Psihoyos v. Pearson Educ., Inc., 855 F. Supp. 2d 103, 117 n.7 24 (S.D.N.Y. 2012) (“Courts have 9 relationship not dealt has with standing this to See issue 15 1778 cv Urbont v. Sony Music Entertainment 1 extensively, but the few decisions to address the issue at all 2 have generally found that a defendant does have standing to 3 challenge 4 implicitly permitted the use of the “work for hire” doctrine 5 defensively by third-party infringers to refute a plaintiff’s 6 alleged ownership of a copyright. 7 Spiegel, Inc., 738 F.2d 548, 551-53 (2d Cir. 1984), abrogated on 8 other grounds by Cmty. for Creative Non-Violence v. Reid, 490 9 U.S. 730 (1989)3; see also Easter Seal Soc. for Crippled Children 10 & Adults of La., Inc. v. Playboy Enters., 815 F.2d 323, 333 (5th 11 Cir. 1987) (explaining that “[t]he ‘work for hire’ issue in 12 Aldon 13 third-party infringer to dispute the validity of the plaintiff's 14 copyright”). 15 third-party infringer “does have the right to assert a [work- 16 for-hire] defense.” 17 903 F.2d 1486, 1490 (11th Cir. 1990). ownership Accessories on arose this as a basis.”). We have, however, See Aldon Accessories Ltd. v. defensive tactic adopted by a The Eleventh Circuit has explicitly held that a M.G.B. Homes, Inc. v. Ameron Homes, Inc., 18 The Ninth Circuit, on the other hand, has rejected third- 19 party standing under the “work for hire” doctrine, at least 20 where both potential owners of the copyright are parties to the 21 lawsuit and the issue of ownership is undisputed as between 3 In our Aldon Accessories decision, the parties had not specifically challenged the alleged third-party infringer’s standing to invoke the “work for hire” doctrine, and the Court did not rule on that issue. 10 15 1778 cv Urbont v. Sony Music Entertainment 1 them. Jules Jordan Video, Inc. v. 144942 Canada Inc., 617 F.3d 2 1146, 1157 (9th Cir. 2010). In Jules, the panel reasoned, inter 3 alia, that the purpose of the “work for hire” doctrine is “to 4 establish ownership of a work as between a commissioning party 5 or 6 employee on the other.” 7 unusual and unwarranted to permit third parties . . . to invoke 8 [the ‘work for hire’ doctrine] to avoid a suit for infringement 9 when there is no dispute between the two potential owners, and employer on the one hand and the commissioned 617 F.3d at 1157. or Thus, “[i]t would be 10 both are plaintiffs to the lawsuit.” 11 third-party 12 copyright infringement by invoking 17 U.S.C. § 204(a), a statute 13 of frauds provision requiring contemporaneous memorialization of 14 a copyright transfer, and it considered the reasoning behind 15 that doctrine to be equally applicable in the “work for hire” 16 context. 17 Dev. Grp., Inc., 70 F.3d 96, 99 (11th Cir. 1995)). infringers are not Id. party permitted The panel noted that to avoid suit for Id. (citing Imperial Residential Design, Inc. v. Palms 18 Urbont asserts that the appellees lack third-party standing 19 because there is no evidence that Marvel, which is not a party 20 to this lawsuit, has ever challenged his claim to ownership of 21 the copyright. 22 the copyright and licensing of the composition, he contends, 23 Marvel has acquiesced in his commercial use of the composition. 24 Therefore, just as third parties are not permitted to challenge By failing to challenge Urbont’s registration of 11 15 1778 cv Urbont v. Sony Music Entertainment 1 the validity of an otherwise-undisputed copyright transfer under 2 Section 204(a), Urbont argues that the appellees should not be 3 permitted to challenge the validity of his copyright on the 4 basis that the Iron Man theme song was a “work for hire” when 5 Marvel itself has not done so. 6 Undergarment Co., 697 F.2d 27, 36 (2d Cir. 1982) (holding with 7 respect to § 204(a) that where “the copyright holder appears to 8 have no dispute with its licensee . . . it would be anomalous to 9 permit a third party infringer to invoke this provision against 10 the licensee”), superseded by rule on other grounds as stated in 11 Keeling v. Hars, 697 F.2d 27 (2d Cir. 2015); accord Barefoot 12 Architect, Inc. v. Bunge, 632 F.3d 822, 830 (3d Cir. 2011) (“At 13 least 14 transferee 15 little reason to demand that a validating written instrument be 16 drafted 17 event.”). 18 where there regarding and signed is no the Cf. Eden Toys, Inc. v. Florelee dispute ownership between of a contemporaneously facts of Ninth there is transferring As an initial matter, the 20 significantly distinguishable, as both potential owners of the 21 copyright 22 dispute between them with respect to ownership rights.4 plaintiffs Circuit’s the and 19 were the copyright, with We are unpersuaded by this argument. transferor to the 4 decision lawsuit and in Jules there are was no See Indeed, the individual plaintiff in that case was the sole shareholder, director, and officer of the entity plaintiff, and 12 15 1778 cv Urbont v. Sony Music Entertainment 1 Jules, 617 F.3d at 1157. 2 party to the lawsuit and has not had the opportunity to clarify 3 its position with respect to ownership of the copyright.5 Thus, 4 unlike 5 dispute 6 Urbont’s 7 moreover, 8 interpreting Section 204 do not support the outcome he seeks— 9 preclusion of the appellees’ standing to challenge the validity in Jules, Urbont’s it is thus copyright characterization we Here, by contrast, Marvel is not a agree with uncertain whether Marvel would Even assuming that ownership. of Marvel’s position the district court is that correct, the cases 10 of his copyright. 11 for 12 holders from persons mistakenly or fraudulently claiming oral 13 licenses.” copyright Section 204(a), a statute of frauds provision transfers, was designed to “protect copyright Eden Toys, 697 F.2d at 36; see also Lyrick Studios, exercised complete control over the entity. 1156. 5 Jules, 617 F.3d at The question of whether Marvel was required to be joined as a party under Fed. R. Civ. P. 19 does not appear to have been raised at any time during the litigation below. Joinder may be required, however, in cases where the determination of copyright ownership has the potential to prejudice an individual that is not a party to the suit and the requirements of Fed. R. Civ. P. 19 are met. See, e.g., Marvel Characters, Inc. v. Kirby, 726 F.3d 119, 132–35 (2d Cir. 2013) (noting that joinder of “required” parties is compulsory under Fed. R. Civ. P. 19, but permitting action to proceed on basis that parties not feasible to joinder were not “indispensable”); Eden Toys, Inc., 697 F.2d at 36-37 (holding that it would be appropriate for district court to join an employer in a lawsuit where it was possible that the employer owned some of the rights infringed by the defendant); 9 Causes of Action 2d 65 (1997) (“If the court deems it appropriate, it may require the joinder of any person having or claiming an interest in the copyright.”). 13 15 1778 cv Urbont v. Sony Music Entertainment 1 Inc. v. Big Idea Prods., Inc., 420 F.3d 388, 394 (5th Cir. 2 2005)(“[C]ourts are hesitant to allow an outside infringer to 3 challenge 4 transfer.”). 5 the statute of frauds: “[j]ust as requiring a written contract 6 prevents 7 exclusion of fraudulent, perjured, or misremembered evidence, 8 requiring a writing for enforcement of a copyright assignment 9 enhances predictability and certainty of ownership by preventing 10 litigants from enforcing fictitious agreements through perjury 11 or the testimony of someone with a faulty memory.” 12 Architect, 13 omitted). the timing or technicalities of the copyright Section 204 thus furthers the ordinary purpose of enforcement 632 F.3d of a at nonexistent 828–29 obligation (internal through the Barefoot quotation marks 14 Unlike Section 204, which concerns the memorialization of 15 an ownership transfer, the “work for hire” doctrine guides the 16 determination 17 employees or independent contractors. 18 Inc. v. Kirby, 726 F.3d 119, 137-40 (2d Cir. 2013). 19 in a copyright infringement suit bears the burden of proving 20 ownership of the copyright, however, whether such ownership is 21 challenged by an ostensible employer or by a third party.6 of ownership rights 6 as between employers and See Marvel Characters, A plaintiff See Indeed, plaintiffs must prove ownership not only as an element of a copyright infringement claim, but also to assert their standing to bring suit. See Eden Toys, 697 F.2d at 32 (noting that only “(1) owners of copyrights, and (2) persons who have 14 15 1778 cv Urbont v. Sony Music Entertainment 1 Island Software & Computer Serv., Inc. v. Microsoft Corp., 413 2 F.3d 257, 260 (2d Cir. 2005) (noting that a “claim of copyright 3 infringement 4 plaintiff had a valid copyright in the work allegedly infringed” 5 (internal quotation marks omitted)). 6 have 7 ownership 8 Section 204 9 validity of 10 Barefoot Architect, 11 third-party defendant lacked standing to challenge plaintiff’s 12 ownership by assignment under Section 204, plaintiff “failed to 13 raise a triable issue of fact as to whether the alleged . . . 14 oral 15 (precluding challenge to validity of assignment under statute of 16 frauds, but remanding for district court to determine whether 17 underlying 18 parties under precluded third rights the the underlying ever 632 requires from those at occurred”); occurred). alleged of 831 Eden a frauds parties We that . . . challenging ownership F.3d proof the Indeed, even courts that statute permitted transfer an law parties under have transfer to federal to provision (holding thus employer-employee in challenge transfer. Toys, plaintiff’s See, that 697 conclude the e.g., although F.2d at 36 that third relationship have been granted exclusive licenses by owners of copyrights” have standing to sue for copyright infringement (citing 17 U.S.C. § 501(b)); see also ABKCO Music, Inc. v. Harrisongs Music, Ltd., 944 F.2d 971, 980 (2d Cir. 1991) (noting that third parties are not permitted to sue on a copyright holder’s behalf). Urbont’s reasoning could, therefore, lead to the anomalous result of permitting copyright infringement plaintiffs to proceed even where they may lack standing to sue simply because an employer has not challenged the validity of their copyright. 15 15 1778 cv Urbont v. Sony Music Entertainment 1 standing to raise a “work for hire” defense against a claim of 2 copyright infringement. 3 B. Copyright Act Claim 4 The district court granted summary judgment in favor of 5 appellees on Urbont’s 6 holding that the Iron Man composition was a “work for hire” and 7 that Urbont failed to raise triable issues of fact regarding an 8 alleged ownership agreement with Marvel. 9 court’s grant of summary judgment de novo, applying the same the claim, We review a district 11 Summary judgment is appropriate “only if ‘there is no genuine 12 dispute as to any material fact and the movant is entitled to 13 judgment as a matter of law.’” 14 56(a)). 15 court's function is not to weigh the evidence, make credibility 16 determinations 17 determine whether, drawing all reasonable inferences from the 18 evidence presented in favor of the non-moving party, a fair- 19 minded jury could find in the non-moving party's favor.” 20 v. 21 (internal citation omitted). of deciding or New a resolve York, 123 court. infringement standards “When district copyright 10 City as federal Kirby, F.3d at 135. Id. (quoting Fed. R. Civ. P. summary issues F.3d 726 judgment of 707, fact, 710-11 motion, but (2d a . . rather Cir. . to Beatie 1997) 22 To prove a claim of copyright infringement, a plaintiff 23 must show (1) ownership of a valid copyright and (2) copying of 24 constituent elements of the work that are original. 16 Boisson v. 15 1778 cv Urbont v. Sony Music Entertainment 1 Banian, Ltd., 273 F.3d 262, 267 (2d Cir. 2001). Urbont asserts 2 that he is the owner of a valid copyright to the Iron Man theme 3 song because he has produced a copyright registration from 1966 4 that lists him as “author,” A. 64, and a renewal registration 5 from 1995 that lists him as owner. 6 of registration made before or within five years after first 7 publication of the work constitutes prima facie evidence of the 8 validity of the copyright. 9 Am., Inc. v. GFI, 193 F.3d 92, 98 (2d Cir. 1999). Production of a certificate 17 U.S.C. § 410(c); see also Hamil However, “a 10 certificate of registration creates no irrebuttable presumption 11 of copyright validity,” and “where other evidence in the record 12 casts doubt on the question, validity will not be assumed.” 13 Estate of Burne Hogarth v. Edgar Rice Burroughs, Inc., 342 F.3d 14 149, 166 (2d Cir. 2003) (internal quotation marks and citation 15 omitted). 16 copyright ownership, “[t]he party challenging the validity of 17 the 18 contrary.” 19 Although the plaintiff bears the burden of proving copyright [registration] has the burden to prove the Hamil Am., Inc., 193 F.3d at 98. 1. The “Work for Hire” Doctrine 20 The 1909 Copyright Act mentions works for hire only in the 21 definition section of the statute, where it states that “[i]n 22 the interpretation and construction of this title . . . the word 23 ‘author’ shall include an employer in the case of works made for 17 15 1778 cv Urbont v. Sony Music Entertainment 1 hire.”7 2 definition, 3 copyrightable work is the ‘author’ of the work for purposes of 4 the statute, absent an agreement to the contrary.” 5 Enters., Inc., 53 F.3d at 554. 6 define “employer” or “author,” courts apply what is known as the 7 “instance 8 general rule, “[a] work is made at the hiring party's ‘instance 9 and expense’ when the employer induces the creation of the work 10 and has the right to direct and supervise the manner in which 11 the work is carried out.” 12 380 F.3d at 635); see also Siegel v. Nat'l Periodical Publs., 13 Inc., 508 F.2d 909, 914 (2d Cir. 1974) (explaining that work is 14 made for hire when the “motivating factor in producing the work 15 was the employer who induced the creation” (internal quotation 16 marks omitted)). 17 U.S.C. an and § 26 ‘employer’ expense (1976) who test.” (repealed). hires another “Under to this create a Playboy Because the statute does not Kirby, 726 F.3d at 137. As a Id. at 139 (quoting Martha Graham, 17 “‘Instance’ refers to the extent to which the hiring party 18 provided the impetus for, participated in, or had the power to 19 supervise the creation of the work.” 7 Kirby, 726 F.3d at 139. “The concept of ‘work made for hire’ remains in the 1976 Act, which defines the phrase to mean ‘a work prepared by an employee within the scope of his or her employment’ or, for certain types of works, ‘a work specially ordered or commissioned.’” Martha Graham Sch. & Dance Found., Inc. v. Martha Graham Ctr. of Contemporary Dance, Inc., 380 F.3d 624, 635 (2d Cir. 2004) (quoting 17 U.S.C. § 101)). 18 15 1778 cv Urbont v. Sony Music Entertainment 1 “Actual creative contributions or direction,” such as providing 2 specific instructions to direct the work’s completion, “strongly 3 suggest that the work is made at the hiring party's instance.” 4 Id.; see Playboy Enters., Inc., 53 F.3d at 556 (holding that 5 work was for hire based on Playboy’s specific instructions to 6 independent contractor); Yardley v. Houghton Mifflin Co., 108 7 F.2d 28, 30–31 (2d Cir. 1939) (explaining that customers who 8 solicited and paid for photographer’s services owned copyright 9 to the photographs taken). The right to direct and supervise 10 the manner in which the work is carried out, moreover, may be 11 enough to satisfy the “instance” requirement even if that right 12 is never exercised. 13 Martha Graham, 380 F.3d at 635. “The ‘expense’ component refers to the resources the hiring 14 party 15 “properly reward[] with ownership the party that bears the risk 16 with respect to the work’s success.” 17 One factor in this inquiry is the method of payment. 18 held that a hiring party’s payment of a sum certain in exchange 19 for 20 requirement, while payment of royalties generally weighs against 21 finding a “work for hire” relationship. 22 53 F.3d at 555. 23 looked for indicators of a traditional employment relationship, 24 such as “the hiring party’s provision of tools, resources, or an invests in the independent creation contractor’s the work,” in order to Kirby, 726 F.3d at 139–40. work satisfies the We have “expense” Playboy Enters., Inc., In addition, we have, at least in some cases, 19 of 15 1778 cv Urbont v. Sony Music Entertainment 1 overhead,” Kirby, 726 F.3d at 140, or the hired party’s “freedom 2 to engage in profitable outside activities without sharing the 3 proceeds 4 Bregman, Vocco & Conn, Inc., 375 F.2d 639, 643 (2d Cir. 1967). 5 “The absence of a fixed salary, however, is never conclusive, 6 nor is the freedom to do other work . . . .” 7 Inc. 8 (citation omitted). 9 v. with [the Bourne, Ultimately, of hiring Inc., 457 “[o]ur these party],” F.2d case Donaldson 1213, law principles. 1216 Publ’g v. Picture Music, (2d counsels Whether Co. the Cir. against instance 1972) rigid 10 application and 11 expense test is satisfied turns on the parties’ creative and 12 financial arrangement as revealed by the record in each case.” 13 Kirby, 726 F.3d at 140. 14 If the hiring party is able to satisfy the instance and 15 expense test it “is presumed to be the author of the work.” 16 Playboy Enters., Inc., 53 F.3d at 554. 17 overcome, however, by evidence of a contrary agreement, either 18 written or oral.” “That presumption can be Id. 19 2. Application of the Instance and Expense Test 20 The district court ruled that the Iron Man composition was 21 a “work for hire” as a matter of law. 22 the 23 because it was “developed to Marvel's specifications and for 24 Marvel's approval.” Iron Man composition was created at Marvel's Urbont, 100 F. Supp. 3d at 352. 20 The court determined that “instance” The court 15 1778 cv Urbont v. Sony Music Entertainment 1 noted that Urbont had no previous familiarity with the Marvel 2 superheroes and he created the work from source material that 3 was given to him by Stan Lee. Id. 4 the of 5 Marvel had the right to accept or reject his songs. 6 district court 7 Marvel’s “expense” 8 exchange for his work. 9 salary, subject was matter not and also scope concluded because barred Id. Further, Marvel determined Urbont’s that Urbont the compositions, work received was a and Id. The created at fixed sum in That Urbont did not receive a fixed from undertaking other projects, and 10 claimed to have received royalties were not sufficient in the 11 district court’s view to overcome the conclusion that the work 12 was created at Marvel’s expense. Id. 13 While the factors cited by the district court are clearly 14 probative of whether the work was for hire, there are other 15 factors that the district court did not explicitly consider. 16 Regarding the “instance” requirement, it appears beyond dispute 17 that Urbont created the Iron Man composition at the impetus of 18 Stan Lee and based on the characters of his television show. 19 Urbont testified, however, that he retained all of the creative 20 control over the project, as Lee was not permitted to modify the 21 work but only had the right to accept or reject it. 22 726 F.3d at 142 (holding work was for hire due in part to hiring 23 party’s 24 with “active its power involvement to reject in pages 21 the creative and Cf. Kirby, process, request that coupled they be 15 1778 cv Urbont v. Sony Music Entertainment 1 redone”); Picture Music, Inc. v. Bourne, Inc., 457 F.2d 1213, 2 1217 (2d Cir. 1972) (holding that work was for hire where hiring 3 party “had the power to accept, reject, or modify [the hired 4 party’s] work”). 5 Stan Lee, not the other way around, and he “wrote the songs on 6 spec[ulation] hoping [Marvel] would use them.” 7 according to Urbont, there was no prior working relationship 8 between Urbont and Marvel, nor was there was any guarantee that 9 Marvel would In addition, Urbont claims that he approached accept his work. Cf. Kirby, A. 94. 726 F.3d Thus, at 141 10 (noting evidence indicated that artist “did not work on ‘spec’ 11 (speculation),” thus supporting the conclusion that work was for 12 hire). 13 created at Marvel’s “instance.” 14 As These factors weigh against a finding that the work was for the expense factor, Urbont claims that he 15 independently recorded and produced the Iron Man theme song with 16 his own tools and resources, including a recording studio he 17 rented; he claims he was essentially paid only to cover his 18 costs, not to profit from the project. 19 140 (suggesting that “the hiring party’s provision of tools, 20 resources, or overhead may be controlling”); Martha Graham, 380 21 F.3d at 638 (holding that hired choreographer’s use of dance 22 center’s 23 dancers, “significantly aided [her] in her choreography, thereby 24 arguably satisfying the ‘expense’ component of the ‘instance and resources, including 22 Cf. Kirby, 726 F.3d at rehearsal space and student 15 1778 cv Urbont v. Sony Music Entertainment test”).8 1 expense’ 2 Urbont “b[ore] the risk with respect to the work’s success,” 3 Kirby, 726 F.3d at 140, although the fact that the Iron Man 4 composition “built on preexisting titles and themes that Marvel 5 had expended resources to establish,” id. at 143, would support 6 the opposite conclusion. 7 fixed sum of $3000, bolstering the conclusion that the work was 8 created 9 royalties, which would undermine that same conclusion. 10 at These Marvel’s factors support the inference that Finally, although Urbont was paid a expense, he also claims he received See id. at 140. 11 Considering all of these factors, we conclude that genuine 12 issues of 13 composition 14 Urbont’s assertion that he “was not hired when [he] wrote the 15 songs” but material was fact remain created instead “wrote at as to Marvel’s the 8 songs whether the instance and on Iron Man expense. spec[ulation] hoping In Playboy Enterprises, we dismissed as irrelevant to the “expense” requirement factors that may be used to show that an artist worked as an independent contractor, such as whether the artist worked his own hours, hired his own assistants, and paid his own taxes and benefits. 53 F.3d at 555. Instead, we found the “expense” requirement to be satisfied “where a hiring party simply pays an independent contractor a sum certain for his or her work.” Id. We later criticized the Playboy Enterprises decision’s exclusive focus on the method of payment, however, as “a rather inexact method of properly rewarding with ownership the party that bears the risk with respect to the work’s success.” Kirby, 726 F.3d at 140. Ultimately, we cautioned in that case against “rigid application” of the instance and expense test in favor of examining “the parties’ creative and financial arrangement as revealed by the record in each case.” Id. 23 15 1778 cv Urbont v. Sony Music Entertainment 1 [Marvel] would use them,” A. 94, distinguishes this case from 2 the arrangement between Marvel and an independently contracted 3 artist which we held in Kirby was work for hire. 4 explained that “that Marvel and Kirby had a standing engagement 5 whereby 6 specific Marvel universes.” 7 “[w]hen Kirby sat down to draw, . . . it was not in the hope 8 that Marvel or some other publisher might one day be interested 9 enough in them to buy, but with the expectation, established 10 through their ongoing, mutually beneficial relationship, that 11 Marvel would pay him.” 12 contrast, that he was “not being paid as a job to write the 13 songs,” A. 93, but rather “[a]ll [he] wanted to do was to make 14 sure that [his] costs were covered[,] [and he] would license 15 this 16 established working relationship or guarantee of payment. 17 Urbont explained, Marvel “had the right to like my songs or not 18 like my songs. 19 Marvel did not pay Urbont until after it had accepted the Iron 20 Man composition. 21 Kirby material Other was would to work for 23 uncontradicted 24 assessing the fit within Kirby, 726 F.3d at 142. drawings Thus, to use.” A. to Urbont contends, by 95. There They could have rejected my songs.” hire, further undermine including testimony appellees’ of that Urbont, summary 24 designed Id. at 142–43. [Marvel] factors 22 produce There, we the conclusion Marvel, which judgment no As A. 116. that according we was to the the must credit in motion, was not 15 1778 cv Urbont v. Sony Music Entertainment 1 permitted to modify the work without Urbont’s permission, that 2 Urbont 3 independent 4 royalties in addition to a fixed sum of payment. 5 these factors are sufficient to raise genuine issues of fact as 6 to whether the work was for hire. recorded 7 of and Marvel, produced and that the he composition claims to entirely have received Together, 3. Existence of a Contrary Ownership Agreement 8 As explained above, “once it is determined that a work is 9 made for hire, the hiring party is presumed to be the author of 10 the work.” Playboy Enters., 53 F.3d at 556. 11 contractor bears the burden by a preponderance of the evidence 12 of 13 agreement, 14 contemporaneously with the work.9 15 726 F.3d at 143. overcoming 16 this either presumption written or with oral, The independent evidence that was of a contrary entered into Id. at 554-55; see also Kirby, We conclude that the district court erred in concluding 17 that Urbont failed as a matter 18 sufficient to rebut the presumption that Marvel owned the work. 19 In so holding, the district court focused exclusively on the 9 of law to produce evidence The district court characterized the presumption that the work was made for hire as “almost irrebutable” and held Urbont’s claims to a “clear and convincing” burden of proof. Urbont, 100 F. Supp. 3d at 353. It is the law of this Circuit, however, that the plaintiff need only establish the existence of a contrary agreement by a preponderance of the evidence. Playboy Enters., Inc., 53 F.3d at 554–55. 25 15 1778 cv Urbont v. Sony Music Entertainment 1 1995 Settlement between the parties, reasoning that “the fact 2 that Marvel entered into a licensing settlement with Urbont does 3 not mean that Marvel has concluded or conceded that Urbont is 4 the Composition's owner,” and that the existence of a settlement 5 agreement 6 determination of copyright ownership. 7 at 353. 8 materially 9 reasons explained by the district court,10 Urbont offered other should not supplant a court’s independent Urbont, 100 F. Supp. 3d Even assuming that the Settlement agreement is not probative in support of position, understanding testimony 12 would own the rights to the Iron Man composition.11 13 judgment purposes, the district court was required to accept 14 Urbont’s testimony as credible. Urbont’s his the 11 shared chiefly for evidence Marvel his parties’ 10 that of the deposition understanding that he For summary Beatie, 123 F.3d at 710-11. In 10 The district court determined, moreover, that the Settlement did not suffice to rebut Marvel’s ownership based on our decision in Gary Friedrich Enterprises, LLC v. Marvel Characters, Inc., 716 F.3d 302, 316 (2d Cir. 2013), which held that the work for hire analysis should not turn on “after-thefact” agreements intended to retroactively alter the parties’ relationship. Urbont, 100 F. Supp. 3d at 354. Gary Friedrich Enterprises is not on point, however, as the parties attempted in that case to render a work for hire “ex post facto.” 716 F.3d at 316. In this case, by contrast, the 1995 Settlement was offered as evidence to corroborate the existence of an earlier ownership agreement between the parties. 11 In denying Urbont’s motion for reconsideration, the district court acknowledged that it had failed explicitly to consider his testimony that an agreement existed, but it continued to reject his claim to ownership “as unsupported by anything beyond selfserving testimony.” Urbont, 2015 WL 3439244, at *1. 26 15 1778 cv Urbont v. Sony Music Entertainment 1 addition, the district court did not consider evidence 2 corroborating the existence of the agreement, including, inter 3 alia, Urbont’s copyright registration in 1966, contemporaneously 4 with the alleged ownership agreement, and his subsequent renewal 5 of the registration in 1995; Urbont’s testimony that he received 6 royalties for performances of the Iron Man composition; and his 7 licensing of the Iron Man theme song for use in the 2008 Iron 8 Man movie. 9 conclude by a preponderance of the evidence that an ownership Based on this evidence, a reasonable jury could 10 agreement existed between Urbont and Marvel. 11 of Cromwell, Bd. of Educ., 243 F.3d 93, 101 (2d Cir. 2001) 12 (“[I]n order to defeat summary judgment, the nonmoving party 13 must offer enough evidence to enable a reasonable jury to return 14 a verdict in its favor”). 15 See Byrnie v. Town We thus conclude that Urbont has raised genuine issues of 16 material fact with 17 infringement, 18 summary judgment in favor of the appellees.12 and we respect vacate to the his claim district of court’s copyright grant of 19 20 12 Urbont contends, moreover, that he is entitled to summary judgment because the appellees failed to produce any evidence rebutting his evidence of an ownership agreement. The appellees have, however, produced evidence that Marvel did not share Urbont’s understanding of any such agreement, and, therefore, there remain questions of fact to be resolved. 27 15 1778 cv Urbont v. Sony Music Entertainment 1 C. State Law Claims 2 Finally, Urbont claims that the district court erred in 3 dismissing his New York law claims for copyright infringement, 4 unfair competition, and misappropriation. 5 held that the Iron Man recording is not a “sound recording” 6 protected from preemption by the Copyright Act of 1976, but 7 rather an accompaniment to an “audiovisual work” that is subject 8 to preemption under 17 U.S.C. § 102(a)(6). The district court 9 One of the goals of the Copyright Act of 1976 was to create 10 a “national, uniform copyright law by broadly pre-empting state 11 statutory 12 Creative 13 § 301(a)). 14 claims asserting rights equivalent to those protected within the 15 general scope of the statute. 16 provides an exception to its preemptive scope, however, in the 17 case of “sound recordings fixed before February 15, 1972,” which 18 remain subject to protection under state statutes or common law. 19 Id. § 301(c). 20 and common-law Non-Violence, copyright 490 U.S. regulation.” at 740 Cmty. (citing 17 for U.S.C. Accordingly, the Copyright Act preempts state law 17 U.S.C. § 301(a). The statute The Act defines “sound recordings” as “works that result 21 from the fixation 22 sounds, 23 picture or other audiovisual work, regardless of the nature of 24 the but not material of a series including objects, the such musical, sounds as 28 of spoken, accompanying disks, tapes or a or other motion other 15 1778 cv Urbont v. Sony Music Entertainment 1 phonorecords, in which they are embodied.” 2 “Audiovisual works,” by contrast, are “works that consist of a 3 series of related images which are intrinsically intended to be 4 shown by the use of machines, or devices such as projectors, 5 viewers, 6 sounds . . . .” 7 pre-1972 sound recording because a “separate sound recording . . 8 . was made and exists wholly apart from the creation of the 9 audiovisual works in question” as embodied in the “form of a or electronic Id. equipment, 17 U.S.C. § 101. together with accompanying Urbont argues that he holds rights in a 10 master tape” which he still possesses. 11 while Urbont may possess a “master tape,” it is undisputed that 12 prior to the release of the Supreme Clientele album in 2000, the 13 sound recording of the Iron Man theme song was never released as 14 an independent audio recording without a visual component. 15 legislative history of the 1976 Act states that “[t]he purely 16 aural performance of a motion picture sound track, or of the 17 sound 18 performance of the ‘motion picture or other audiovisual work’; 19 but, where some of the sounds have been reproduced separately on 20 phonorecords, 21 constitute 22 work.” 23 this case that the allegedly infringing work could only have portions a of an audiovisual performance performance of from the work, the motion would picture But The constitute phonorecord H.R. Rep. No. 94-1476, at 64 (1976). 29 Appellant’s Br. 46. or would a not audiovisual It is clear in 15 1778 cv Urbont v. Sony Music Entertainment 1 been copied from the audiovisual work, and therefore constitutes 2 infringement of the audiovisual work. 3 Implicit in Urbont’s argument is the idea that because 4 copyright inheres at the moment of creation, he has a separate 5 copyright in the sound recording of the Iron Man theme song, 6 because it was recorded and fixed in a master tape prior to 7 being incorporated into the audiovisual work. 8 language of the statute does not resolve this issue, there are 9 two reasons why we find this argument unpersuasive. While the plain First, at 10 the moment of creation, when the song was recorded and embodied 11 in a master tape, it was intended to be a part of a larger 12 audiovisual work, as it was recorded in Munich only after Marvel 13 accepted the work and agreed that it would be a part of the 14 audiovisual work. 15 song was recorded before it was combined with the visual portion 16 of the work, this is true of nearly all sound tracks. If 17 Urbont’s an 18 audiovisual work would be preempted by the 1972 Act, save for 19 those 20 component. 21 Congress’s intent to broadly preempt state law protections by 22 creating 23 Creative Non-Violence, 490 U.S. at 740. theory few that A. 119. was are This a Second, while it is true that the correct, then recorded narrow “national, audio simultaneously interpretation uniform 30 no copyright does portion with not law.” the of visual mesh Cmty. with for 15 1778 cv Urbont v. Sony Music Entertainment 1 Urbont’s contention that he composed and recorded the Iron 2 Man theme song “without ever viewing the television program, and 3 without interaction from anyone associated with the television 4 show,” Appellant’s Br. 46, is belied by his own testimony that 5 the work was created at the impetus of, and based on source 6 material from, Stan Lee, someone clearly associated with the 7 television program. 8 that he would own the Iron Man sound recording separate and 9 apart from the television program, but the existence of any such 10 agreement is irrelevant to determining whether the recording is 11 a “sound recording” or part of an “audiovisual work” as defined 12 in the statute. Urbont further asserts that Marvel agreed 13 Finally, Urbont argues that if the Iron Man sound recording 14 is considered to be part of the audiovisual work, then Marvel 15 would have no reason to obtain a license from Urbont to use the 16 theme song. 17 Act, however, which created a copyright in sound recordings, 18 indicates 19 works from the definition of “sound recording,” Congress “d[id] 20 not intend to limit or otherwise alter the rights that exist 21 currently in such works,” such as Urbont’s rights to the Iron 22 Man composition. 23 example, “there is an unauthorized reproduction of the sound 24 portion of a copyrighted television program fixed on video tape, Legislative history to the 1972 Sound Recording that in excluding tracks audiovisual H.R. Rep. No. 92-487, at 6 (1971). 31 accompanying If, for 15 1778 cv Urbont v. Sony Music Entertainment 1 a suit for copyright infringement could be sustained under [the 2 1909 Act] rather than under the provisions of [the 1972 Sound 3 Recording Act], and this would be true even if the television 4 producer had licensed the release of a commercial phonograph 5 record incorporating the same sounds.” Id. 6 We conclude, therefore, that the Iron Man recording is not 7 a separate sound recording but rather part of an audiovisual 8 work for purposes of preemption under the Copyright Act, and the 9 district court properly dismissed Urbont’s state law claims on 10 this basis. 11 IV. Conclusion 12 For the foregoing reasons, we VACATE the district court’s 13 grant of summary judgment in favor of appellees on Urbont’s 14 federal Copyright Act claim. 15 his 16 competition, 17 proceedings consistent with this opinion. 18 its own costs on appeal. state law and claims for We AFFIRM the court’s dismissal of copyright misappropriation. 32 We infringement, REMAND for unfair further Each party shall bear

Primary Holding

In Urbont v. Sony Music Entertainment, the Second Circuit held that a reasonable jury could find that a cartoon theme song written for Marvel Comics in the 1960s was not a “work for hire” and the composer, Jack Urbont, was the owner of the copyright based on the evidence before it. The court also held that a third-party has standing to raise a work-for-hire defense when accused of copyright infringement.

Facts

In 1966, Jack Urbont created a number of theme songs for a television series called Marvel Super Heroes including “Iron Man Theme.” In February 2000, rapper and Wu-Tang Clan member Ghostface Killah released his second studio album, Supreme Clientele, which used parts of the theme song in the album’s opener “Intro” and closer “Iron’s Theme – Conclusion” (Ghostface had debuted his solo career with Ghostface Killah debuted his solo-career with an album entitled Ironman in 1996.)

In 2011, Urbont sued Ghostface, Razor Sharp Records, and Sony Music Entertainment for copyright infringement under federal law. The District Court granted summary judgment against Urbont on the ground that Marvel was the copyright owner because the theme song was a “work for hire” as a matter of law.

The Second Circuit reversed. The court initially noted that a copyright registration from 1966 listed him as “author” of the song and a renewal registration from 1995 that listed him as owner. A certificate of registration made before or within five years after first publication of the work is prima facie evidence of the validity of the copyright. As a result, Sony had the burden to disprove the registration.

The following evidence favored Urbont’s position that the song was not a work-for-hire. First, Urbont testified that he retained all of the creative control over the project. Lee was not permitted to modify the work and could only accept or reject the songs he composed. Second, Urbont approached Stan Lee, not the other way around, and he wrote the songs speculating or hoping that Marvel would use them. In other words, there was no prior working relationship between Urbont and Marvel, nor was there was any guarantee. Third, Urbont independently recorded and produced the Iron Man theme song with his own tools and resources, including a recording studio he rented. Urbont claimed he was essentially paid only to cover his costs, not to profit from the project. Fourth, Urbont received royalties although he not have a written royalty agreement.

These factors were enough for a jury to find that Urbont’s composition of the song was not made at the instance and expense” of Marvel even though Marvel (1) determined the subject matter and scope of Urbont’s compositions, (2) had the right to accept or reject his songs, and (3) gave him a fixed sum of $3,000 in return for the bundle of theme songs. Moreover, the fact that Urbont wrote the songs on the speculation or hope, rather than a guarantee or prior arrangement, distinguished the case from the Second Circuit’s decision in Kirby where “Marvel and Kirby had a standing engagement whereby Kirby would produce drawings designed to fit within specific Marvel universes.”

Finally, the Second Circuit reversed the District Court’s holding that if it was work for hire, Urbont had failed to produce evidence of an oral agreement that he would retain the rights to the song. Urbont had offered his deposition testimony that Marvel shared Urbont’s understanding that he would own the rights to the Iron Man composition and, on summary judgment, the district court was required to accept this testimony as credible.

Case Commentary

Urbont is the latest copyright case to apply the instance and expense test and, perhaps surprisingly, favored the creator, Jack Urbont. Background on the instance and expense test is as follows.

Federal copyright law gives the “author” of a work initial ownership of the copyright in that work. The general rule is that the author is the party who actually creates the work – that is, the person who translates an idea into a fixed, tangible expression. The exception is a “work for hire” in which case the hiring party, not the creator, is the copyright owner. For example, if a company hires local newspaper to create advertisements, the company owns the copyright, not the newspaper.

Congress first incorporated the work for hire doctrine into the Copyright Act of 1909. The 1909 Act provides that the word “author” shall include an “employer” in the case of works made for hire. The 1909 Act was repealed and superseded by the Copyright Act of 1976, but it remains effective for copyrighted works created before the Copyright Act of 1976 went into effect on January 1, 1978.

The 1909 Act does not define “employer” or “works made for hire,” so courts have giving meaning to the phrases. Since 1966, the Second Circuit has held that the copyright is owned by “the person at whose instance and expense the work is done.” Put another way, a work is made for hire when the “motivating factor in producing the work was the employer who induced the creation.” The Second Circuit applies the “instance and expense” test when applying the 1909 Act regardless of whether the party creating the work was a traditional employee or an independent contractor.

The instance and expense test is much maligned. One criticism is that the Second Circuit misinterpreted implied assignment cases as work for hire cases – that is, cases where the freelance authors initially owned the copyright and then implicitly assigned it to the hiring party. Another criticism is the test violates the cardinal rule of statutory construction that if words in a statute have a well-known meaning at common law then the words are presumed to have been used in that sense (unless the statute indicates otherwise). Under this approach, “employer” should be interpreted under the common law of agency, and works by freelance authors or independent contractors should not qualify as a work for hire.

The issue over how to determine a work for hire and who owns various works associated with Marvel Comics has been fiercely litigated for at least two reasons. First, the comics now involve multi-billion dollar franchises including X-Men, Thor, The Avengers, Captain America, Iron Man, and Hulk. Second, former producer and editor-in-chief Stan Lee used what became known as the “Marvel Method” to have the works created. Stan Lee would go to the artist with an idea, they would confer, and Stan Lee would leave it up to that person to create the product, which he would then accept or reject. “While the Marvel Method had its problems, it did have one major benefit: producing lots and lots of comic books.”

In 2014, many people hoped the Supreme Court would consider the validity of Second circuit’s instance and experience test when the Supreme Court was set to consider a case between Marvel Entertainment and Jack Kirby’s estate. Kirby was legendary comic book artist and writer who helped created X-Men, Thor, the Hulk, and the Fantastic Four. However, the case settled and petition was dismissed. The dismissal of the case was generally viewed as a disappointment to freelancers because Second Circuit’s instance and expense test remained controlling in the circuit for pre-1978 work.

Unless the Supreme Court considers this case, or a similar one, the instance and expense test will continue to control in the Second Circuit. It should be noted, however, that the court's application in Urbont favored the creator, Jack Urbont.

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