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On Friday, the 2nd Circuit Court of Appeals gave Jack Urbont, composer of the “Iron Man Theme” on the 1960s television show The Marvel Super Heroes, another shot in a copyright dispute with Sony Music over sampling by rapper Ghostface Killah. The decision not only has something of interest for fans of Marvel comics and Wu Tang Clan, but also for those dealing with the complexity of ownership in entertainment.
Urbont, whose later musical work includes That 70’s Show, Oprah, 20/20 and The View, was asked by Marvel’s Stan Lee in the 1960s to create music for the television show, and after reviewing comic books and absorbing the nature of Marvel superheroes, he composed themes for the characters and presented it for Lee’s approval. After the songs were accepted, he received $3,000, which he used to record the music including the “Iron Man Theme.”
Decades later, Ghostface Killah sampled the “Iron Man Theme” on two tracks of the rapper’s second album, Supreme Clientele, leading to a copyright lawsuit that been ongoing for five years and a decision at the district court in favor of Sony that had much to chew on. The legal controversy has thus far turned not on what Ghostface Killah did, but whether Urbont owns his work and can sue.
The reason why Sony was initially granted victory in this case was that U.S. District Court judge Naomi Reice Buchwald determined that Urbont’s work on the song constituted a “work made for hire,” the same reason why Stephen Colbert might not own the “Stephen Colbert” character. The Marvel workplace was a highly collaborative one, and the judge accepted Sony’s contention that the “Iron Man Theme” came at Marvel’s “instance and expense.” The case followed other disputes where Marvel fought with former artists and writers in its stable over who owned intellectual property. Prior cases involved Ghost Rider creator Gary Friedrich and Jack Kirby, who contributed iconic work for such superhero characters as Spider-Man, X-Men, Captain America, Iron Man and Incredible Hulk.
But this case had one major quirk. Marvel wasn’t directly objecting to Urbont’s claim of ownership. Instead, it was Sony, Ghostface Killah’s record label. Urbont’s lawyer Richard Busch told the judge there’s never been a case before where “a third party infringer seek[s] a finding that a particular work is a work made for hire when there is no dispute between the supposed contractor and author.”
Second circuit judge Peter Hall begins the analysis in his opinion (read here) by taking up the issue of whether Sony has standing to present the contention that Urbont doesn’t own the “Iron Man Theme.” He disagrees with Urbont and concludes that Sony should be allowed to do this.
It’s “uncertain whether Marvel would dispute Urbont’s copyright ownership,” Hall writes. “Even assuming that Urbont’s characterization of Marvel’s position is correct, moreover, we agree with the district court that the cases … do not support the outcome he seeks — preclusion of the appellees‘ standing to challenge the validity of his copyright … A plaintiff in a copyright infringement suit bears the burden of proving ownership of the copyright … whether such ownership is challenged by an ostensible employer or by a third party.”
That said, the 2nd Circuit believes that the judge erred in granting summary judgment on the holding that the “Iron Man Theme” definitely was a “work for hire.”
Hall points to a 1966 copyright registration that listed Urbont instead of Marvel as the “author” as well as a 1995 renewal registration. While this doesn’t create an “irrebuttable presumption” of validity, continues the judge, it sets up a contestable issue between the parties. When that happens, Urbont and Sony will be fighting over whether, under the 2nd Circuit’s interpretation of the 1909 Copyright Act (a subject that came close to being heard by the Supreme Court in the Kirby dispute), Urbont’s work was really created under Marvel’s “instance and expense.”
Buchwald decided that the “Iron Man Theme” was created at Marvel’s “instance” because it was “developed to Marvel’s specifications and for Marvel’s approval.” She also decided that the composition was created at Marvel’s “expense” because Urbont received a fixed sum in exchange for his work.
“While the factors cited by the district court are clearly probative of whether the work was for hire, there are other factors that the district court did not explicitly consider,” writes Hall. “Regarding the ‘instance’ requirement, it appears beyond dispute that Urbont created the Iron Man composition at the impetus of Stan Lee and based on the characters of his television show. Urbont testified, however, that he retained all of the creative control over the project, as Lee was not permitted to modify the work but only had the right to accept or reject it …”
Hall adds, “As for the expense factor, Urbont claims that he independently recorded and produced the Iron Man theme song with his own tools and resources, including a recording studio he rented; he claims he was essentially paid only to cover his costs, not to profit from the project.”
Putting it all together, the 2nd Circuit concludes that genuine issues of material fact remain — which could eventually set up a trial discussing what happened at Marvel in the 1960s.
One other note from today’s opinion: The issue of pre-1972 sound recordings has been a hot one of late. (We recently wrote about what the 2nd Circuit certified in the Turtles case as well as how the controversy might impact legalities of music played at the Republican National Convention.)
The 2nd Circuit also comes to the conclusion today that Urbont’s state law claims for his own pre-1972 work are preempted by the Copyright Act. That might sound like a blockbuster for those paying attention to the controversial issue of why older recordings have been deemed by some judges to include public performance rights, but the precedential value of today’s opinion is highly mitigated by the unique facts involved in this case.
As Hall notes, “While Urbont may possess a ‘master tape,’ it is undisputed that prior to the release of the Supreme Clientele album in 2000, the sound recording of the Iron Man theme song was never released as an independent audio recording without a visual component … It is clear in this case that the allegedly infringing work could only have been copied form the audiovisual work, and therefore constitutes infringement of the audiovisual work.”
The appellate judge then nods to the legislative history when sound recordings began falling under federal copyright law in 1972, discussing the exclusions and ultimately concluding that the judge properly dismissed the state law claims. In other words, Sony got a tad lucky that audio recordings of soundtracks to 1960s TV shows weren’t a bigger phenomenon and that Ghostface Killah or his producer sampled in the fashion they did. Nevertheless, the copyright case is now remanded back to the district level and it moves forward.
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