Stark Victory: Sony Music Successfully Defends Iron Man Copyright Infringement Suit Based on Third-Party Work for Hire Challenge

When composer Jack Urbont brought suit for copyright infringement against rapper Dennis Coles (popularly known as Ghostface Killah), Urbont likely thought he had a straight-forward case. Urbont claimed that Coles’ had improperly sampled Urbont’s “Iron Man Theme” on Coles’ album, Supreme Clientele. Written for the Marvel television program Marvel Super Heroes, the Iron Man Theme served as the theme song for the “Iron Man” portion of the program. Urbont alleged that Coles, along with Sony Music Entertainment and Razor Sharp Records, infringed Urbont’s copyright in both the Iron Man musical composition and sound recording. In order to prove infringement, Urbont needed to demonstrate both ownership of a valid copyright, and copying of the original elements of his work. Urbont seemed to easily satisfy the first requirement: he owned both the initial and renewal copyright registrations in the Iron Man Theme musical composition and, as further proof of ownership, Urbont and Marvel had entered into a licensing agreement in which Urbont is referred to as the “owner,” and Marvel the “licensee,” of the work. According to Sony, however, Urbont composed the Iron Man Theme as a “work for hire,” placing copyright ownership in Marvel, and not Urbont. U.S. District Judge Naomi R. Buchwald agreed, undertaking an analysis focused on the original intent of Urbont and Marvel as to copyright ownership.

To determine whether the Iron Man Theme was created as a “work for hire,” the court applied the “instance and expense” test, as mandated by the 1909 Copyright Act (applicable to the Iron Man Theme, written in the 1960s). Analyzing the “instance” component of the test, the court found that the Iron Man Theme had been created at the instance of Marvel because it was developed to Marvel’s specifications and subject to Marvel’s approval. The court noted that Urbont had not composed the Iron Man Theme independently; after Urbont had pitched himself to Marvel, Marvel provided Urbont the source material from which to write the Iron Man Theme. The theme was therefore created with Marvel specifically in mind; Urbont would not have otherwise created the work. Moreover, Marvel retained the right to direct and supervise Urbont’s work, another component of the “instance” prong; the court found that Marvel retained the right to accept or reject Urbont’s compositions, and determined the compositions’ subject matter and scope insofar as Marvel had provided the source material on which the composition would be based.  The court next examined the “expense” prong, determining that the composition had been created at Marvel’s expense because it paid Urbont a fixed sum for his work.

Finding both prongs of the “instance and expense” test satisfied, the court next considered whether any agreements to the contrary existed between Marvel and Urbont. While Urbont could not recall any contemporaneous written agreement, he did note the existence of a 1995 settlement agreement between Urbont and Marvel providing Marvel with licensing rights from Urbont. According to Urbont, such agreement would make little sense if Marvel considered itself the copyright owner of the composition. The court assigned the agreement little weight, explaining, firstly, that a work-for-hire analysis should not turn on “after-the-fact” agreements; a settlement agreement entered into some thirty years after the work’s creation could provide only limited insight into the parties’ original intentions concerning copyright ownership. Secondly, the court explained, a settlement agreement, while resolving a dispute between parties, does not constitute an admission of liability; Marvel’s entering into a licensing agreement with Urbont did not necessarily reflect Marvel’s conclusion or concession that Urbont owns the copyright in the composition. Moreover, even if the agreement did in some way reflect Marvel’s belief or assumptions concerning copyright ownership, the court maintained that a licensing or settlement agreement should not supplant a court’s independent analysis of such ownership issues.

The court analogized to cases involving disputes between a licensor and licensee, noting that a licensee is not precluded from later challenging a licensor’s copyright ownership. The court then took this principle one step further: if a party’s decision to enter into a licensing agreement will not preclude that party from later claiming that copyright ownership never belonged to the licensor, that decision should similarly not serve to prevent a third party from claiming and proving the same. While Sony was not a party to the settlement agreement between Urbont and Marvel, the court nonetheless permitted Sony to challenge any admission or expression of copyright ownership expressed in the agreement.

While Urbont claimed that Sony should not be permitted to claim copyright ownership on behalf of Marvel because Marvel itself had not made such claim, the court found this point immaterial; the court noted that ownership is an essential element of a plaintiff’s infringement claim, a requirement that exists to protect defendants from overly constrictive creative limitations. Sony should not, according to the court, be precluded from challenging Urbont’s ownership simply because Marvel itself hadn’t brought such challenge.

Takeaway:

In arriving at its conclusion that Urbont created the Iron Man Theme as a work for hire, the court applied an expansive “instance and expense” test and rejected seemingly clear indicia of Marvel and Urbont’s original intention that Urbont owns the copyright in the work: Marvel had not attempted to register the composition; rather, both the initial and renewal registrations list Urbont as “author.” Similarly, the settlement agreement between the parties describes Urbont as “owner” of the composition and sound recording. Disregarding these facts, the court instead focused on recreating the parties’ original understanding of copyright ownership. Moreover, the court permitted Sony, a third party, to challenge ownership on behalf of Marvel, which was not a party to the proceedings and did not itself contest Urbont’s copyright ownership.