Plaintiff Jack Urbont (“Urbont”) brings this action against defendants Dennis Coles p/k/a Ghostface Killah, Sony Music Entertainment d/b/a Epic Records, and Razor Sharp Records, LLC (together with Sony Music Entertainment, “Sony”), alleging infringement of his rights to the musical composition and sound recording of the “Iron Man Theme.” Presently before the Court is Urbont’s motion for partial summary judgment against Sony, seeking a determination that Sony is liable for copyright infringement, unfair competition, and misappropriation, and Sony’s cross-motion for summary judgment, seeking dismissal of Urbont’s claims. For the reasons stated below, Urbont’s motion is denied and Sony’s motion is granted.
BACKGROUND
I. Factual Background
Urbont is a “lifelong songwriter, conductor, orchestrator and music producer,” who has contributed to musical productions in theater, film, radio, and television. Am. Cmplt. ¶¶ 5, 10. His work in television has been particularly extensive, with Urbont credited with developing themes for The Guiding Light, One Life to Live, and General Hospital, and music for shows such as All My Children, That 70s Show, Oprah, Rosie, and Live with Regis and Kathie Lee. Id. ¶ 11.
In his first foray into creating music for use in television, Urbont developed several theme songs for superhero characters featured in the 1966 television show, Marvel Super Heroes (the “Program”). Defs 56.1 ¶¶ 1, 14, 17; Urbont Deck ¶ 12. Urbont wrote theme songs for segments involving Captain America, Hulk, Thor, and SubMariner, as well as an opening song entitled “The Marvel Superheroes Have Arrived” and a closing song entitled “The Merry Marvel Marching Society.” Defs 56.1 ¶¶ 14-15. At issue in this litigation is the musical composition and sound recording of the “Iron Man Theme,” which served as the theme song for the “Iron Man” segment of the Program.
Urbont had not been familiar with any of the Marvel superheroes before he was introduced to the Program, and he had not previously written songs that could have been used by Marvel. Id. ¶¶ 9-10. Rather, after being put in touch with Marvel’s Stan Lee by a mutual friend, Urbont asked for the opportunity to be “the guy to do the songs for the series.” Tr. at 20. Willing to hear Urbont’s submissions, Marvel told Urbont which characters would be featured in the Program and provided him with comic books from which to source his composition. Defs 56.1 ¶ 12; Tr. at 31-32. After he “looked over the material[and] absorbed the nature of the character,” Ur-
After Marvel accepted his songs, Urbont informed Marvel that he had not yet been paid and that he needed money to pay for musicians and recording costs. Defs 56.1 ¶ 22; Tr. at 25-26. As a result, Urbont received the fixed sum of $3,000, which he subsequently used to create the sound recording by hiring musicians, renting a studio, and supervising the recording of the master recording. Defs 56.1 ¶23; Pi’s. 56.1 ¶ 6. This sound recording of the “Iron Man Theme” (the “Iron Man Recording”), which would play during the introduction to the Iron Man segment of the Program, was never released as a separate phonorecord or other audio recording without a visual component.
At the time of the songs’ development, Marvel and Urbont did not enter into a written agreement concerning a license for the use of the songs in the Program. Id. ¶ 28; Tr. at 49 (“I have no written agreement in my files, and I have no recollection of any written agreement”). Nor did Ur-bont enter into a royalty agreement with Marvel in connection with the show, although Urbont claims that he did later receive some royalty payments. Defs 56.1 ¶¶ 25; Tr. at 35.
Urbont alleges that he was issued a certificate of registration for the musical composition of the “Iron Man Theme” (“Iron Man Composition”) and that he filed a renewal notice for the composition in 1994. Pi’s 56.1 ¶¶ 3-4; Urbont Decl., Ex. 1. He has since licensed the Iron Man Composition for use in the Iron Man film and has licensed several other of his superhero themes. Pi’s 56.1 ¶¶ 9-10; Ur-bont Decl., Exs. 2-4.
In 1995, Urbont entered into a settlement agreement (the “Settlement”) with New World Entertainment, Ltd. and Marvel Entertainment Group, Inc. (collectively, “Marvel”), following Urbont’s commencement of a suit against Marvel for unauthorized use of the Iron Man Composition and four other superhero compositions. Pi’s 56.1 ¶ 11; Urbont Decl., Ex. 6. Marvel had sought registration for the Iron Man segments of the Program but had not made reference in its application to any preexisting copyrighted works incorporated in the Program. Defs 56.1 ¶ 31. The Settlement releases Urbont’s claims against Marvel and grants Marvel exclusive rights to use the compositions in synchronization with the .Program in exchange for payment of $90,000. Urbont Decl., Ex. 6. Throughout, the Settlement refers to Urbont as “Owner” and to Marvel as “Licensee,” and it describes Urbont “as renewal copyright owner of the [Iron Man Composition] and the Master Recording[] thereof.” Id. However, at no point in the Settlement does Marvel explicitly state that Urbont is the owner of the works or quitclaim any rights. Nor, as Urbont admits, does the Settlement constitute or include any transfer or assignment of rights. See Tr. at 85. The Settlement also expressly states that it does not constitute or contain any admission of liability.
In 2000, Coles, a hip-hop artist popularly known as “Ghostface Killah,” produced a solo album entitled Supreme Clientele. Defs 56.1 ¶ 43. Urbont alleges that Coles “copied verbatim” the sound recording and musical composition of the “Iron Man Theme” on the first and last tracks of Supreme Clientele, titled “Intro” and
II. Procedural Background
Urbont filed a complaint on June 30, 2011, and an amended complaint on August 29, 2011. The Amended Complaint asserts claims for copyright infringement under the Copyright Act, 17 U.S.C. § 101 et seq., as well as claims under New York common law for copyright infringement, unfair competition, and misappropriation. The federal claim pertains only to the Iron Man Composition, while the state law claims pertain only to the Iron Man Recording.
On August 5, 2011, Sony moved to dismiss Urbont’s federal claims for sales pri- or to May 2007 and his state law claims as time-barred. On March 27, 2012, we issued an opinion granting in part and denying in part the motion. We held that the injury rather than the discovery rule determined the accrual of infringement claims under the Copyright Act.
On January 14, 2015, Urbont moved for partial summary judgment against Sony, and Sony cross-moved for summary judgment on February 17, 2015. The motions were fully briefed on March 31, 2015.
DISCUSSION
I. Cross-Motions for Summary Judgment
Summary judgment is appropriate when “the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a). The “mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment;” rather, “the requirement
When cross-motions for summary judgment are made, the standard is the same as that for individual motions for summary judgment. Morales v. Quintel Entm’t, Inc.,
II. Urbont’s Federal Copyright Act Claims
Federal “[c]opyright infringement is established by proving ‘ownership of a valid copyright’ and ‘copying of constituent elements of the work that are original.’ ” Boisson v. Banian, Ltd.,
Here, Urbont asserts that he is the owner of a valid copyright in the Iron Man Composition because there is an initial registration that lists him as “author” and a renewal registration that lists him as owner. Sony, however, challenges Ur-bont’s ownership by asserting that the Iron Man Composition was made as a “work for hire” and is therefore owned by Marvel, for whom Urbont created the composition.
A. Sony’s Standing to Challenge Ur-bont’s Ownership
As an initial matter, Urbont seeks to forestall Sony’s challenge by arguing that Sony, as a third-party infringer which does not itself claim ownership of the Iron Man Composition, lacks standing to dispute Urbont’s ownership. Specifically, Urbont argues that Sony is precluded from claiming that Marvel is the owner of the Iron Man Composition because Marvel itself has not claimed ownership, but rather, according to Urbont, has acknowledged Urbont as the Composition’s owner in the Settlement.
However, these cases fail to support the conclusion — preclusion of any challenge to his ownership — that Urbont seeks here. For one, such preclusion has occurred solely in the context of Section 204 challenges to the validity of copyright transfers. See, e.g., Eden Toys,
More importantly, the logic underlying preclusion in the Section 204 context does not support preclusion of all ownership challenges, as Urbont would have us hold. Section 204 is a narrow statute-of-frauds provision, which was created primarily for the benefit of the copyright holder. See Eden Toys,
Finally, while “[c]ourts have not dealt with this issue extensively,” decisions addressing “the question whether Defendants have standing, as third parties to the purported employer-employee relationship, to raise a ‘work for hire’ defense” “have generally found that a defendant does have standing to challenge ownership on this basis.” Psihoyos v. Pearson Educ., Inc.,
As a result, we find that Sony is not precluded from arguing that the Iron Man Composition is a work for hire owned by Marvel rather than Urbont, and we address this argument below.
B. ' The “Iron Man Composition” is a Work for Hire
i. The Work-for-Hire Standard
Under the 1909 Act,
First, in evaluating whether a work was made at the employer’s “instance,” courts consider whether “the motivating factor in producing the work was the employer who induced the creation.” Siegel v. Nat’l Periodical Publications, Inc.,
Courts also consider, as evidence of creation at the employer’s instance, whether the employer retained the right “to direct and supervise the manner in which the [artist] performs his work.” Dumas,
Second, in evaluating whether a work was made at the employer’s “expense,” the primary question before a court is whether the employee was paid a fixed sum. See Dumas,
Finally, though variously understood as an element of both “instance” and “expense” prongs, courts have suggested that an artist’s creation is likely to be a work for hire when it is necessarily derivative of the employer’s preexisting work. See Picture Music, Inc.,
ii. The “Iron Man Composition”
Here, both “instance” and “expense” prongs support a finding that the Iron Man Composition was made for hire.
First, the Iron Man Composition was created at Marvel’s instance because it was developed to Marvel’s specifications and for Marvel’s approval. As in Kirby, Ur-bont’s compositions “were hardly self-directed projects in which he hoped Marvel, as one of several potential publishers, might have an interest....”
Marvel also retained a right to direct Urbont’s work. Urbont presented his proposed themes to Lee, who “had the right to say I like it or I don’t like it, we’ll use it or we won’t use it.” Id. at 24. Although Marvel did not revise Urbont’s submissions, and Urbont asserts that Marvel was not entitled to modify them without his consent, Marvel did retain control over Urbont’s work insofar as it clearly retained the right to accept or reject the songs. Marvel also determined the subject matter and scope of Urbont’s compositions by first creating and then providing Urbont with the copyrighted material he would adapt and build on, likewise suggesting that Marvel retained control over Urbont’s creative output. See Picture Music, Inc.,
Second, the “Iron Man Composition” was created at Marvel’s expense because Urbont was paid the fixed sum of $3,000 for his work. Although Urbont did not receive a fixed salary and was not barred from undertaking other projects, these facts do not suffice to establish that a work is not made at an employer’s expense. See Picture Music, Inc. v. Bourne, Inc.,
Accordingly, we find that the Iron Man Composition was made at both Marvel’s instance and its expense and was therefore' made as a work for hire.
iii. The Settlement Agreement
Once the instance and .expense test has been met, “a presumption arises that the works in question were Vorks made for hire.’ ... This presumption can
Here, Urbont has provided no evidence of an agreement dating from the time of the Iron Man Composition’s creation to contradict the presumption that the Composition was a work for hire. See Tr. at 49 (“I have no written agreement in my files, and I have no recollection of any written agreement”). Rather, Urbont contends that the 1995 Settlement provides proof of Urbont’s ownership sufficient to overcome any such presumption. He notes that the Settlement consistently refers to Urbont as “Owner” and that it professes to bestow Marvel with licensing rights from Urbont, a transaction he claims would make little sense if Marvel considered itself the copyright owner. As such, Urbont argues, the Settlement provides conclusive evidence that Marvel believes — and the court should therefore also believe — that Urbont, rather than Marvel, is the owner of the Iron Man Composition.
However, we find the Settlement insufficient to overcome our conclusion that the Iron Man Composition was made for hire. First and foremost, a settlement is merely that: the resolution of a dispute between two parties. “[A] settlement does not mean that the claim had merit or that it would have withstood scrutiny,” Taylor v. First Med. Mgmt.,
Rather, case law within the copyright infringement context affirms that a licensing or settlement agreement should not supplant a court’s independent determination of copyright ownership. This principle can be seen, for instance, in the context of licensee estoppel: courts have repeatedly held that where two parties enter into a settlement or licensing agreement, the licensee is not estopped from later challenging the purported licensor’s ownership. See, e.g., Melchizedek v. Holt,
The conclusion that a settlement agreement should not bind a court’s determination of copyright ownership is even more persuasive where, as here, the parties to the settlement are not the same as the parties to the current litigation. Put differently, if a company’s decision to enter into a licensing agreement with a plaintiff will not prevent it from later proving that in fact the copyright was never the plaintiffs to license, that company’s decision surely should not serve to preclude a third party, which never entered into such an agreement, from proving the same.
The principles underlying the “instance and expense” test also support limiting agreements capable of overcoming a court’s work-for-hire analysis to those dating from the work’s creation. The “instance and expense” test is designed to assess the parties’ historical relationship in order to determine in whom the copyright inhered at its creation. Cf. Twentieth Century Fox Film Corp. v. Entm’t Distrib.,
Finally, our conclusion that the Settlement does not as a matter of law suffice to rebut a determination that the Composition was made for hire is supported by a recent Second Circuit ease indicating that work-for-hire analyses should not turn on after-the-fact agreements. In Gary Friedrich Enterprises, LLC v. Marvel Characters, Inc.,
Thus, we find that the Settlement does not cause us to reconsider our determination under the “instance and expense” test that the Iron Man Composition is a work for hire. Accordingly, we find that Sony has established that Urbont is not the owner of the Iron Man Composition and we therefore dismiss Urbont’s federal claims.
III. Urbont’s State Law Claims
Urbont also seeks recovery from Sony under New York state law for copyright infringement, unfair competition, and misappropriation. Sony argues that these state law claims, each of which concerns only the Iron Man Recording, should be dismissed as preempted by the Copyright Act because the Iron Man Recording is not a “sound recording,” expressly excluded from the Copyright Act’s scope of preemption, but rather an “audiovisual work.” As set forth below, we agree and dismiss Urbont’s state law claims.
State laws within the general scope of federal copyright protection were preempted by the Copyright Act of 1976. See 17 U.S.C. § 301(a). However, by an exception to its general preemption provisions, the Copyright Act allows state laws to continue to protect “sound recordings fixed before February 15, 1972.” 17 U.S.C. § 301(c). “Sound recordings” are defined under the Act as “works that result from the fixation of a series of musical, spoken, or other sound, but not including the sounds accompanying a motion picture or other audiovisual work....” 17 U.S.C. § 101 (emphasis added). Rather, such “accompanying sounds,” including motion picture or television soundtracks, are included instead in the definition of “audiovisual works.” See 17 U.S.C. § 101 (defining , “audiovisual works” as “works that consist of a series of related images which are intrinsically intended to be shown by the use of machines, or devices such as projectors, viewers, or electronic equipment, together with accompanying sounds”) (emphasis added); id. (defining “motion pictures” as “audiovisual works consisting of a series of related images which, when shown in succession, impart an impression of motion, together with accompanying sounds”) (emphasis added). See also H.R.Rep. No. 94-1476 at 56 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5669 (“Sound tracks of motion pictures, long a nebulous area in American copyright law, are specifically included in the definition of ‘motion pictures,’ and excluded in the definition of ‘sound recordings.’”); cf. H.R.Rep. No. 92-487 (1971), reprinted in 1971 U.S.C.C.A.N. 1566, 1571 (“Thus, to take a specific example, if there is an unauthorized reproduction of the sound portion of a copyrighted television program fixed on video tape, a suit for copyright infringement could be sustained under section 1(a) of title 17 [of the 1909 Act, as a “motion picture,”] rather than under the provisions of this bill[, the 1972 Sound Recording Act, which created a copyright in sound recordings]....”) (emphasis added).
Legislative history does suggest that a soundtrack could constitute a “sound recording,” rather than an “audiovisual work,” if it is reproduced separately on a phonorecord. See H.R. REP. 94-1476, 64, 1976 U.S.C.C.A.N. 5659, 5677 (“The purely aural performance of a motion picture sound track, or of the sound portions of an audiovisual work, would constitute a performance of the ‘motion picture or other audiovisual work’; but, where some of the sounds have been reproduced separately on phonorecords, a performance from the phonorecord would not constitute perform-
Based upon the foregoing discussion, the Iron Man Recording must be deemed an “audiovisual work” and not a “sound recording,” because it was created purely to accompany the television show and does not exist apart from the accompanying te-levisuals. Urbont admits that the Iron Man Recording was not reproduced separately on a phonorecord and that defendants could only have copied it from the television program. See Pi’s Response to Defs Rule 56.1 Statement ¶26. He argues instead that he produced a master tape of the song and that this master tape constitutes a separate “sound recording” for which he can recover. However, all soundtracks — including motion picture soundtracks, expressly excluded from the definition of “sound recording” — necessarily involve master tapes. Were the existence of these master tapes enough to transform soundtracks into “sound recordings,” the exclusion of soundtracks from the definition of “sound recording” would serve little purpose.
In addition, authority supports our conclusion that where, as here, a soundtrack was created purely for incorporation into an audiovisual work, it is protected by the audiovisual copyright unless reproduced separately. See Traicoff v. Digital Media, Inc.,
Thus, we find that the Iron Man Recording constitutes an “audiovisual work” rather than a “sound recording,” and consequently that Urbont’s state law infringement claims concerning the Recording are consequently preempted by the Copyright Act of 1976. Sony is therefore entitled to summary judgment and Urbont’s state law claims are dismissed.
CONCLUSION
For the reasons stated above, Sony’s motion for summary judgment is granted
SO ORDERED.
Notes
. This background is derived from the following sources: (1) the amended complaint filed August 29, 2011 ("Am. Cmplt.”); (2) Plaintiffs Notice of Undisputed Facts in Support of Jack Urbont’s Motion for Summary Judgment ("Pi’s 56.1”); (3) the Declaration of Jack Ur-bont ("Urbont Deck”) and exhibits attached thereto; (4) Defendants’ Statement of Material Facts Pursuant to Local Rule 56.1(a) in Support of Defendants’ Motion for Summary Judgment and Counter-Statement of Material Facts Pursuant to Local Rule 56.1(b) in Opposition to Plaintiff’s Motion for Summary Judgment ("Def's 56.1”); (5) Defendants’ Opposition to Plaintiffs' Statement of Facts Pursuant to Local Rule 56.1; (6) the Declaration of G. Wade Leak in Support of Motion for Summary Judgment, and exhibits attached thereto; (7) the Declaration of Marc S. Reiner in Support of Motion for Summary Judgment, and exhibits attached thereto, including the transcript of Urbont’s deposition ("Tr.”); (8) Plaintiff’s Response to Defendant's Rule 56.1 Statement; and (9) the Declaration of Andrew Coffman, and exhibits attached thereto.
. As a result, to the extent that the Iron Man Recording was copied, Urbont concedes that it must have been copied from an audiovisual work. Id. ¶ 26.
. This distinction arises because the Copyright Act does not currently apply to sound recordings created prior to February 15, 1972. See Capitol Records, Inc. v. Naxos of Am., Inc.,
. Following our decision, the Second Circuit in Psihoyos v. John Wiley & Sons, Inc.,
. In addition, on March 28, 2012, Coles filed a motion to dismiss for insufficient service of process, challenging Urbont’s attempted service on Coles through Coles’s business manager. On May 4, 2012, we held that the service on Coles had been ineffective, but that Urbont could subsequently serve Coles by publication notice. After a period of discovery, Coles's counsel withdrew on February 6, 2014, and Coles ceased to participate in the litigation, causing Urbont to move for sanctions against Coles. We granted this motion for sanctions against Coles on November 6, 2014, ordering Coles to pay Urbont the sum of $3,758.58 and entering judgment against Coles.
. Sony also argues that inconsistencies in Ur-bont’s assertions as to who owns and controls the Iron Man Composition undermine his claim of ownership. Because we conclude that the Iron Man Composition is a work for hire, we do not reach this argument.
. We note that, as discussed later, we do not accept Urbont’s implicit conclusion here that the Settlement demonstrates Marvel’s agreement that Urbont owns the Composition and its relinquishment of any dispute regarding, or claim to, its ownership. See infra II.B.iii.
. Because the Iron Man Composition was created before 1978, it is governed by the 1909 Act and the case law construing that statute. See Playboy Enterprises, Inc. v. Dumas,
. Indeed, it is not difficult to imagine reasoning that would lead Marvel to conclude that entering into a modest settlement — $90,000 for claims involving five different works — was preferable to engaging in a costly dispute requiring a detailed exploration of the events of thirty years prior.