Urbont v. Sony Music Entertainment, 831 F.3d 80

Background

Jack Urbont composed theme songs (including an "Iron Man" theme) for the 1966 Marvel Super Heroes TV series; he claims an oral agreement with Marvel that he retained ownership and later registered and renewed the copyright in his name.
Urbont recorded and produced the music himself, claims Marvel only had the right to accept or reject (not modify) the work, and says he received $3,000 plus later royalties and licensing income (including a 2008 film license).
Marvel credited some 1967 Marvel releases as © Marvel Comics Group; Marvel later entered a 1995 settlement with Urbont describing him as a "renewal copyright owner" and Marvel as Licensee, but denied liability.
In 2000 Ghostface Killah (Dennis Coles), Sony, and Razor Sharp used the Iron Man theme on an album without Urbont’s permission; Urbont sued in 2011 for federal copyright infringement and related New York state claims.
The district court granted defendants’ summary judgment, finding the composition was a work for hire and dismissing state claims as preempted; the Second Circuit affirmed standing to raise a work-for-hire defense, vacated summary judgment on the federal claim, and affirmed dismissal of state claims.

Issues

Issue	Plaintiff's Argument	Defendant's Argument	Held
Third-party standing to assert "work for hire" defense	Urbont: defendants lack standing because Marvel (alleged employer) never disputed his ownership	Defendants: third-party infringers may challenge plaintiff’s ownership via work-for-hire	Court: third parties have standing to assert work-for-hire as a defense to ownership claims
Whether the Iron Man composition was a "work for hire" under the 1909 Act (instance & expense)	Urbont: he wrote on spec, retained creative control, recorded independently, and was paid only after acceptance; genuine issues of fact exist	Defendants: Marvel provided characters/specs, had right to accept/reject, and paid a fixed sum—weighs in favor of work-for-hire	Court: genuine disputes of material fact exist on instance and expense; summary judgment on this ground was improper
Whether Urbont produced sufficient evidence of a contemporaneous contrary ownership agreement to rebut the presumption of employer authorship	Urbont: his deposition, 1966 registration, royalties, licensing, and the 1995 Settlement corroborate an ownership agreement	Defendants: Settlement and post hoc evidence insufficient; Marvel’s actions suggest it did not share Urbont’s understanding	Court: Urbont submitted enough evidence that a reasonable jury could find an ownership agreement; district court erred in granting summary judgment against him
Whether Urbont’s New York state claims survive (sound recording v. audiovisual work; preemption)	Urbont: recorded a separate master tape pre-1972 and thus holds state-law protection for the sound recording	Defendants: the recording was made for and as part of an audiovisual work and has been released only with visuals; claims are preempted	Court: recording is part of an audiovisual work and preempted under the 1976 Act; state claims were properly dismissed

Key Cases Cited

Playboy Enters., Inc. v. Dumas, 53 F.3d 549 (2d Cir. 1995) (work-for-hire presumption and overcoming it by agreement)
Marvel Characters, Inc. v. Kirby, 726 F.3d 119 (2d Cir. 2013) (instance-and-expense test and factual analysis re: Marvel commissions)
Martha Graham Sch. & Dance Found., Inc. v. Martha Graham Ctr. of Contemporary Dance, Inc., 380 F.3d 624 (2d Cir. 2004) (instance/expense factors and right to supervise)
Eden Toys, Inc. v. Florelee Undergarment Co., 697 F.2d 27 (2d Cir. 1982) (Section 204 and third-party challenges to transfers)
Jules Jordan Video, Inc. v. 144942 Canada Inc., 617 F.3d 1146 (9th Cir. 2010) (narrow view rejecting third-party standing in certain contexts)
Barefoot Architect, Inc. v. Bunge, 632 F.3d 822 (3d Cir. 2011) (statute-of-frauds rationale and evaluating whether an oral transfer occurred)
Hamil Am., Inc. v. GFI, 193 F.3d 92 (2d Cir. 1999) (burden on challenger of a registration)