By Peter Reap, J.D., LL.M.
The federal district court in New York City erred in dismissing composer Jack Urbont’s claim against Sony Music Entertainment, Dennis Coles—a hip-hop artist popularly known as "Ghostface Killah"—and Razor Sharp Records for federal copyright infringement relating to his "Iron Man" theme song, the U.S. Court of Appeals in New York City has decided. In determining that the song was a "work for hire" created at the instance and expense of Marvel comics, the lower court erred in concluding that Urbont failed to raise issues of material fact with respect to his ownership of the copyright. Thus, the grant of summary judgment to the defendants on the federal copyright infringement claim was vacated and remanded for further proceedings (Urbont v. Sony Music Entertainment, July 29, 2016, Hall, P.).
Federal copyright infringement claim. The district court granted summary judgment in favor of the defendants on Urbont’s federal copyright infringement claim, holding that the Iron Man composition was a "work for hire" and that Urbont failed to raise triable issues of fact regarding an alleged ownership agreement with Marvel. Because the Copyright Act does not define "employer" or "author," courts apply what is known as the "instance and expense test," the appellate court noted. As a general rule, "[a] work is made at the hiring party's ‘instance and expense’ when the employer induces the creation of the work and has the right to direct and supervise the manner in which the work is carried out." Marvel Characters, Inc. v. Kirby, 726 F.3d 119, 139 (2d Cir. 2013).
The court determined that the Iron Man composition was created at Marvel's "instance" because it was "developed to Marvel's specifications and for Marvel's approval." While the factors cited by the district court were clearly probative of whether the work was for hire, there were other factors that the district court did not explicitly consider, the Second Circuit observed. Regarding the "instance" requirement, it appears beyond dispute that Urbont created the Iron Man composition at the impetus of Stan Lee and based on the characters of his television show.
Urbont testified, however, that he retained all of the creative control over the project, as Lee was not permitted to modify the work, but only had the right to accept or reject it. In addition, Urbont claimed that he approached Stan Lee, not the other way around, and he "wrote the songs on spec[ulation] hoping [Marvel] would use them." These factors weighed against a finding that the work was created at Marvel’s "instance," the Second Circuit held.
As for the expense factor, Urbont claimed that he independently recorded and produced the Iron Man theme song with his own tools and resources, including a recording studio he rented; he claimed he was essentially paid only to cover his costs, not to profit from the project. These factors supported the inference that Urbont "b[ore] the risk with respect to the work’s success." Finally, although Urbont was paid a fixed sum of $3000, bolstering the conclusion that the work was created at Marvel’s expense, he also claimed that he received royalties, which would undermine that same conclusion. Considering all of these factors, genuine issues of material fact remained as to whether the Iron Man composition was created at Marvel’s instance and expense, the court ruled.
Furthermore, the district court erred in concluding that Urbont failed as a matter of law to produce evidence sufficient to rebut the presumption that Marvel owned the work. Urbont offered evidence, chiefly, his deposition testimony that Marvel shared Urbont’s understanding that he would own the rights to the Iron Man composition, that the district court failed to consider. A reasonable jury could conclude by a preponderance of the evidence that an ownership agreement existed between Urbont and Marvel.
The case is No. 15-1778-cv.
Attorneys: Richard S. Busch (King & Ballow) for Jack Urbont. Marc S. Reiner (Hand Baldachin & Amburgey LLP) for Sony Music Entertainment.
Companies: Sony Music Entertainment
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