April 20, 2015 – The Southern District of New York knocked out copyright infringement claims brought by Jack Urbont, composer of the “Iron Man Theme” (referred to here as the “Theme” or the “Composition”) arising out of rapper and Wu-Tang Clan member Ghostface Killah’s sampling of the Theme on two tracks of his album Supreme Clientele.
Urbont is an accomplished “songwriter, conductor, orchestrator and music producer” who has worked in film, radio, theater, and television. His television credits include music for (among other shows) One Life to Live, General Hospital, That 70s Show, and Oprah. Before writing music for any of those shows, though, Urbont was introduced Stan Lee of Marvel Comics by a mutual friend. This friend knew Marvel was planning a cartoon series featuring its superhero characters and who thought Urbont “would be a good guy to do the songs for the series.”
Lee apparently agreed. He told Urbont which characters would be featured in the series and gave him comic books to use as inspiration for his compositions. Before this time, Urbont had not been familiar with the characters or the comics in which they appeared. Urbont wrote opening and closing songs for the 1966 television series Marvel Super Heroes, as well as theme songs for segments of the show featuring Captain America, the Hulk, Thor, Sub-Mariner, and – as you have probably guessed by now – Iron Man. Urbont presented his work to Lee for approval. Although Marvel had the right to reject Urbont’s songs, Marvel accepted each one as written.
After Marvel accepted the songs, Urbont notified Marvel that he had not been paid for his work and that he needed money to pay for musicians and recording costs. Marvel gave him $3,000, which he used to create the master recordings. (The recording of the Iron Man Theme was never released on a record or in any form other than as an audiovisual work, i.e., as part of the television show. This fact caused the court to dismiss Urbont’s claims concerning infringement of his rights in the sound recording. That aspect of the decision, while interesting, is beyond the scope of this post.).
Urbont registered his copyright in the Composition and filed a renewal notice for the composition in 1994. He later licensed the Composition for use in the Iron Man films.
Urbont also sued Marvel and New World Entertainment, alleging unauthorized use of the Composition and four other superhero themes. A settlement was reached in 1995. The settlement released Urbont’s claims and granted Marvel rights to use the compositions in exchange for $90,000. The settlement agreement refers to Urbont as the “Owner” of the composition and to Marvel as “Licensee,” but it doesn’t include any admission of liability by Marvel, or an express admission by Marvel that Urbont owns the rights in the works.
Enter Ghostface Killah and his solo album Supreme Clientele, released in 2000 on Epic Records, an imprint of Sony Music Entertainment. Ghostface Killah sampled the Iron Man Theme and dialog that accompanied it on the television show in the album’s first and last tracks, called “Intro” and “Iron’s Theme – Conclusion” respectively.
Urbont – apparently not a hip hop fan – discovered the alleged infringement in late 2009 or early 2010. He sued in a case captioned Urbont v. Sony Music Entertainment. On cross motions for summary judgment, the court held that Marvel – and not Urbont – owned the composition, and Urbont therefore could not assert infringement claims against Sony and Ghostface Killah.
More specifically, even though Urbont was the registered copyright holder, the court found that the I Composition (and, presumably Urbont’s other works for Marvel) was a “work for hire”, and as such Marvel was the true copyright owner.
Because the Composition was written before 1978, the issue was governed by the Copyright Act of 1909. Under that Act, a “copyright belongs to the person at whose instance and expense the work was created … whether the work was created by a traditional employee or an independent contractor.”
In evaluating whether a work was made at the “instance” of someone other than the work’s creator (referred to here as a “hiring party”), courts consider whether the hiring party “induced the creation” or was the “motivating factor” in producing the work. As explained by the Urbont court, “if the hiring party took the initiative in engaging the artist or if the artist would not have created the work but for the hiring party’s assignment to do so, then the work is made at the hiring party’s instance.”
Courts also consider whether the hiring party had a right to direct and supervise the artist’s work. The hiring party need not have actually exercised this right; the existence of the right is evidence that the work was made at the hiring party’s instance.
Courts will find a work was made at the hiring party’s expense if the artist was paid a fixed sum for his work. In making this inquiry, the courts examine “whether the [artist] bore the full assumption of the risk of loss on the project. If he did not, as where he receives a sum certain from the [hiring party], then the project has occurred at the [hiring party’s] expense. “
Finally, although courts differ on whether they view this fact as relating to the “instance” element or the “expense” element, a work is more likely to have been made for hire where the work “is necessarily derivative of the employer’s preexisting work.”
The Urbont court found that all of these factors supported a finding that the Theme was a work for hire. First, the composition was “developed to Marvel’s specifications and for Marvel’s approval” – that is, it was created at Marvel’s instance and under Marvel’s control. Urbont’s works “were hardly self-directed projects in which he hoped Marvel, as one of several potential publishers, might have an interest.” To the contrary, Marvel dictated the subject matter of the works, and Urbont had not previously been working on superhero theme music – he began his project only after being introduced to, and provided source materials by, Stan Lee.
Second, the Composition was clearly created at Marvel’s expense: Urbant received the fixed sum of $3,000 for his work. Thus, the instance and expense test was met.
Once Ghostface Killah and Sony established that the instance and expense criteria had been satisfied, the court presumed that the composition was a work for hire. That presumption could only be overcome with “evidence of an agreement to the contrary contemporaneous with the creation of the works.”
Urbont had no evidence of an agreement entered into around the same time he wrote the Iron Man Theme providing that he owned the work and/or that the work was not a work for hire. The only agreement Urbont could point to that, in his view, demonstrated his and Marvel’s intentions with respect to ownership of the Theme was the 1995 settlement agreement. Urbont argued that the settlement agreement referred to him as the “Owner” and that the agreement granted Marvel a license to use the Composition – neither of which would have made sense if Marvel had believed itself to own the copyright.
The court was not convinced. It first noted that the settlement agreement represented a compromise to resolve a dispute; that Marvel decided it made more economical sense to enter into a so-called settlement license with Urbont rather than to engage in protracted litigation does not mean Marvel conceded that Urbont owned the Composition. Further, the work for hire doctrine focuses on the parties’ roles and actions at the time the work was created. As such, a settlement agreement drafted thirty years after the Composition was written had limited relevance to the inquiry before the court. The result: A win for Ghostface Killa.
Note that, had the Composition been created after Copyright Act of 1976 took effect, the outcome would likely have been different. The definition of “work for hire” under the 1976 Act is far narrower than the definition under the 1909 Act. Under current law, a work is only “for hire” if (1) it was made by an employee (rather than an independent contractor, partner, etc.) in the course of his employment; or (2) the work falls into one of nine specific categories (such as “a contribution to a collective work,” “an instructional text,” or “an atlas”) and the parties “expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.” So, under current law, Sony and Ghostface Killah would’ve faced a steep uphill battle proving Marvel owned the Composition.