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By Tony Dutra
April 21 — Jack Urbont's 1966 “Iron Man Theme” for a TV show was a work for hire and an audiovisual work, defeating his federal and state copyright infringement claims against rapper Ghostface Killah, the U.S. District Court for the Southern District of New York ruled April 20.
The court held that a settlement agreement with Marvel—reached in 1995—did not confirm Urbont's rights in a way that would bar the rap artist and his distributor, Sony, from contesting ownership.
The court confined Section 204 of the Copyright Act, 17 U.S.C. §204, to “the validity of copyright transfers” between claimants, and refused to extend it to alleged infringers.
The settlement agreement also was insufficient evidence to overcome the presumption that, as of the date of the composition, Marvel had commissioned the work.
The court's further conclusion that Urbont's work did not qualify as a pre-1972 “sound recording” doomed his state law claim.
It said, “where, as here, a soundtrack was created purely for incorporation into an audiovisual work, it is protected by the audiovisual copyright unless reproduced separately.”
Urbont began his extensive work writing music for TV shows by volunteering himself to Marvel's Stan Lee as “the guy to do the songs for the series” Marvel Super Heroes. Marvel identified the characters of interest and gave him comic books for background.
Marvel accepted Urbont's theme song for Iron Man without change and gave him $3,000 to create the recording, without any documentation memorializing the agreement.
Urbont filed a lawsuit against Marvel Entertainment Group Inc., but the parties settled quickly. Marvel paid $90,000 for exclusive rights to use the composition for certain purposes, but otherwise the agreement refers to Urbont as “Owner” and to Marvel as “Licensee.”
In 2000, Dennis Coles, known by his stage name Ghostface Killah, released “Supreme Clientele,” an album whose first and last tracks sampled the Iron Man Theme. Urbont sued Coles and Sony under federal law for the composition and under state law as to the recording.
Judge Naomi Reice Buchwald found Urbont's claims related to pre-2007 sales time barred (Urbont v. Sony Music Entm't, 863 F. Supp. 2d 279, 2012 BL 78109 (S.D.N.Y. 2012)), but the case proceeded in all other respects. Both parties moved for summary judgment.
Urbont first argued that Sony lacked standing to challenge ownership pursuant to Section 204. The court distinguished precedents related to transfer of ownership of copyrights, which was not at issue here.
“Section 204 is a narrow statute-of-frauds provision, which was created primarily for the benefit of the copyright holder,” the court said.
It would apply in the instant case only if a contest over the “technicality of memorialization” was at issue, according to the court.
Here, though, “where defendants seek to raise a meaningful challenge to the plaintiff's infringement claim by positing ownership in a third party, the seeming absence of a dispute between the putative owners should not forestall such a challenge.”
The court's determination of whether Urbont's composition was a work for hire was driven by the “instance and expense” test of Martha Graham Sch. & Dance Found., Inc. v. Martha Graham Ctr. of Contemporary Dance, Inc., 380 F.3d 624, 634-35, 72 U.S.P.Q.2d 1143 (2d Cir. 2004).
As to the “instance” prong: The composition “was developed to Marvel's specifications and for Marvel's approval,” and Marvel retained the “right to direct and supervise the manner in which work is created,” even if it did not exercise that right when it accepted Urbont's composition without modification.
The “expense” prong also went against Urbont because he was paid a fixed sum for the work.
That set the presumption of a work for hire, which Urbont could rebut “only by evidence of an agreement to the contrary contemporaneous with the creation of the works,” per Marvel Characters, Inc. v. Kirby, 726 F.3d 119, 143, 107 U.S.P.Q.2d 1813 (2d Cir. 2013).
The 1995 settlement agreement did not contradict the presumption of a work for hire, primarily because it was not reflective of what the parties agreed to in 1966, the court ruled.
For example, Marvel may well have settled for $90,000 simply to avoid the litigation costs, and despite the labels naming the parties to the settlement, there was no acknowledgement within the agreement that Urbont was the copyright owner, the court noted.
“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,” the court said.
It concluded that “only an agreement dating back to the work's creation would be able to accurately shed light on in whom the copyright vested at that time; by contrast, a settlement some thirty years after the work's creation can provide only limited insight into what the parties originally intended, no less in whom the copyright initially vested as a result of their actions.”
Copyrights in sound recordings, in contrast to compositions, were not covered by federal copyright law until the Copyright Act of 1976, which set Feb. 15, 1972, as the cut-off date.
The problem for Urbont here was that the court determined that there was no protected sound recording.
Section 101 defines sound recording as “not including the sounds accompanying a motion picture or other audiovisual work.”
The court said that “ ‘accompanying sounds,' including motion picture or television soundtracks, are included instead in the definition of ‘audiovisual works,' ” also in Section 101.
After reviewing the legislative history, the court concluded that “infringement of a soundtrack, or of ‘the sound portion of a copyrighted television program,' will constitute infringement of an ‘audiovisual work,' unless the infringer has copied a phonorecord reproduction (which could be deemed a separate ‘sound recording') rather than the original visual-accompanying sounds.”
Thus characterizing the recording here as an audiovisual work,” the court concluded that Urbont's state copyright-related claims were preempted by federal copyright law.
The court thus granted summary judgment in favor of Sony.
Urbont was represented by King & Ballow, Nashville. Sony was represented by Hand Baldachin & Amburgey LLP, New York.
To contact the reporter on this story: Tony Dutra in Washington at firstname.lastname@example.org
To contact the editor responsible for this story: Anandashankar Mazumdar at email@example.com
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