Urbont v. Sony Music Entertainment
100 F. Supp. 3d 342
S.D.N.Y.2015Background
- Jack Urbont composed theme songs for Marvel’s 1966 TV series Marvel Super Heroes, including the “Iron Man Theme,” and supervised a studio recording paid for with a $3,000 fixed fee.
- No written agreement contemporaneous with creation memorialized copyright ownership or an express assignment; Urbont later obtained a registration and renewed it, and entered a 1995 settlement with Marvel that licensed Marvel synchronization rights for $90,000.
- In 2000, Ghostface Killah (Dennis Coles) released Supreme Clientele via Sony, which included tracks allegedly copying the Iron Man composition and recording; Urbont sued for federal copyright infringement (composition) and New York common-law claims (sound recording).
- Sony moved for summary judgment arguing (1) the Iron Man composition was a pre-1978 work made for hire owned by Marvel (defeating Urbont’s federal claim) and (2) the Iron Man recording is an audiovisual soundtrack, not a separable sound recording, so Urbont’s state-law claims are preempted.
- The Court held Sony entitled to summary judgment: the composition was a work for hire under the 1909 Act (instance and expense met), and the recording is part of an audiovisual work (preempting state-law claims). Urbont’s motion for partial summary judgment was denied.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Ownership of Iron Man composition | Urbont is the registered owner; settlement language calling him "Owner" shows ownership | Composition was created at Marvel’s instance and expense and is a pre-1978 work for hire owned by Marvel | Court: Work-for-hire; Sony prevails — Urbont not owner of composition |
| Effect of 1995 Settlement on ownership | Settlement’s references to Urbont as “Owner” rebut work-for-hire presumption | Settlement is a post hoc resolution and does not overcome contemporaneous work-for-hire presumption | Court: Settlement insufficient to rebut; contemporaneous agreement required |
| Sony’s standing to challenge ownership | Sony, as alleged infringer, lacks standing to dispute ownership between Urbont and Marvel | Third-party defendants may assert work-for-hire defense to challenge plaintiff’s ownership | Court: Sony has standing to raise work-for-hire defense |
| State-law claims for the Iron Man recording | Urbont: recording is a pre-1972 "sound recording" warranting state-law protection | Recording is an audiovisual soundtrack made to accompany the TV program and not a separable sound recording; federal preemption applies | Court: Recording is an audiovisual work; state-law claims preempted and dismissed |
Key Cases Cited
- Boisson v. Banian, 273 F.3d 262 (2d Cir. 2001) (elements of copyright infringement: ownership and copying of original elements)
- Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991) (originality required for copyright protection)
- Martha Graham Sch. & Dance Found., Inc. v. Martha Graham Ctr. of Contemporary Dance, Inc., 380 F.3d 624 (2d Cir. 2004) (instance-and-expense work-for-hire test under the 1909 Act)
- Marvel Characters, Inc. v. Kirby, 726 F.3d 119 (2d Cir. 2013) (artist’s works created pursuant to assignments were made at Marvel’s instance)
- Picture Music, Inc. v. Bourne, 457 F.2d 1213 (2d Cir. 1972) (instance and expense factors and relevance of employer control)
- Eden Toys, Inc. v. Florelee Undergarment Co., 697 F.2d 27 (2d Cir. 1982) (limitations on third-party use of §204 defense where transferor and transferee do not dispute transfer)
- Gary Friedrich Enterprises, LLC v. Marvel Characters, Inc., 716 F.3d 302 (2d Cir. 2013) (post hoc agreements cannot retroactively create work-for-hire under the 1909 Act)
- Playboy Enters., Inc. v. Dumas, 53 F.3d 549 (2d Cir. 1995) (employer as motivating factor and right to supervise informs work-for-hire inquiry)
- Hamil Am., Inc. v. GFI, 193 F.3d 92 (2d Cir. 1999) (registration presumption of copyright ownership)