A recent Second Circuit opinion has revived songwriter Jack Urbont’s copyright infringement claim against Sony Music Entertainment, Razor Sharp Records, and rapper Dennis Coles (popularly known as Ghostface Killah). Urbont had brought suit in 2011 against Coles, along with Sony and Razor Sharp, alleging that Coles had improperly sampled Urbont’s “Iron Man Theme” (“Theme”) on Coles’ album, Supreme Clientele. Urbont had written the Iron Man Theme for the 1960s television program “Marvel Super Heroes.” Sony argued—and the district court agreed—that Urbont had written the Theme as a work for hire; accordingly, the district court determined that it was Marvel, and not Urbont, who owned copyright rights in the Theme.
Under the 1909 Copyright Act—applicable to the Iron Man Theme Song because it was written in the 1960s—a work for hire analysis requires application of the “instance and expense test,” which determines whether the work at issue was created at the instance and expense of a hiring party. Analyzing the “instance” component of the test, the district court had determined that the Theme had been created at the instance of Marvel because it was developed to Marvel’s specifications and subject to Marvel’s approval. According to the district court, Urbont would not have otherwise created the work had Marvel not hired Urbont and provided the source material from which to write the Theme. Moreover, the district court had found that the composition had been created at Marvel’s expense because it paid Urbont a fixed sum for his work. The district court concluded that Urbont had not presented evidence sufficient to overcome the presumption that the Theme was a work for hire.
On appeal, however, the Second Circuit highlighted certain factors that the district court had not explicitly or fully considered. Urbont testified, for instance, that he had approached Marvel and had written the Theme “on spec,” hoping (with no guarantee) that Marvel would use it—not because he had been instructed by Marvel to write the composition. While no written agreement existed between the parties, according to Urbont, his offer to compose the theme music for the Marvel series was contingent on his retaining ownership rights in his compositions. Urbont also explained that while Marvel had the option to accept or reject his compositions, any modifications to the compositions would require Urbont’s permission. The Second Circuit observed that Urbont’s copyright registrations appeared to corroborate these claims: the Theme’s 1966 copyright registration listed Urbont as the owner, and Urbont filed a renewal notice for the copyright in 1994. The following year, Urbont entered into a settlement agreement with Marvel, pursuant to which Urbont licensed the Theme to Marvel. The settlement agreement refers to Urbont as the “copyright owner” of the Theme, and Marvel as a “licensee.” Finally, Urbont claimed that he had independently recorded and produced the Theme with his own resources, and not Marvel’s, supporting the inference that Urbont bore the financial risk with respect to the Theme’s success.
In light of these additional facts, the Second Circuit determined that genuine issues of fact remained as to whether the Theme was created at Marvel’s “instance and expense.” The appeals court also indicated that the district court had improperly disregarded Urbont’s testimony regarding the original intent of the parties with respect to copyright ownership. At this stage of the proceedings (i.e., the summary judgment stage), the panel explained, the district court was required to accept Urbont’s testimony as credible, particularly because several corroborating factors could be identified, including the 1995 settlement agreement, and Urbont’s copyright registrations.
As the Second Circuit’s decision makes clear, application of the “instance and expense” test in connection with copyrighted works that fall under the purview of the 1909 Copyright Act ultimately turns on consideration of a specific factual record, one that must be fully and thoughtfully considered. Urbont’s infringement suit now returns to the district court, which must—consistent with the Second Circuit’s instructions—undertake a more thorough analysis of all facts relevant to copyright ownership of the Iron Man Theme Song.