Urbont v. Sony Music Entm't

• Decision Date: 29 July 2016
• Docket Number: August Term, 2015,Docket No. 15-1778-cv
• Parties: Jack Urbont, Plaintiff-Appellant, v. Sony Music Entertainment, Individually, d/b/a Epic Records, Razor Sharp Records, LLC, Defendants-Appellees, Dennis Coles, a/k/a Ghostface Killah, Defendant.
• Court: U.S. Court of Appeals — Second Circuit

831 F.3d 80

119 U.S.P.Q.2d 1619

Jack Urbont, Plaintiff-Appellant,

v. Sony Music Entertainment, Individually, d/b/a Epic Records, Razor Sharp Records, LLC, Defendants-Appellees,Dennis Coles, a/k/a Ghostface Killah, Defendant.^*

Docket No. 15-1778-cv

August Term, 2015

United States Court of Appeals, Second Circuit.

Submitted: March 24, 2016

Decided: July 29, 2016

Richard S. Busch, King & Ballow, Nashville, TN, and Elliot Schnapp, Gordon, Gordon & Schnapp PLLC, New York, NY, for Plaintiff-Appellant.

Marc S. Reiner, Hand Baldachin & Amburgey LLP, New York, NY, for Defendants-Appellees.

Before: JACOBS, HALL, and LYNCH, Circuit Judges.

HALL

, Circuit Judge:

In this copyright case, Plaintiff-Appellant Jack Urbont brought suit to enforce his claimed ownership rights in the “Iron Man” theme song against what he alleges is infringement by Defendants Sony Music Entertainment (“Sony”), Razor Sharp Records, and Dennis Coles, a/k/a Ghostface Killah.¹ In the proceedings below, Defendants-Appellees Sony and Razor Sharp Records challenged Urbont's ownership of the copyright by arguing that the Iron Man theme song was a “work for hire” created at the instance and expense of Marvel Comics (“Marvel”). The district court agreed, and it determined that Urbont failed to present sufficient evidence to rebut the presumption that Marvel was, in fact, the copyright owner. The court dismissed Urbont's New York common law claims for copyright infringement, unfair competition, and misappropriation on the basis that those claims were preempted by the Copyright Act.

We hold that although the district court properly determined that the appellees had standing to raise a “work for hire” defense to the plaintiff's copyright infringement claim, the court erred in concluding that Urbont failed to raise issues of material fact with respect to his ownership of the copyright. We further conclude that the district court properly dismissed Urbont's state law claims as preempted by the Copyright Act. We thus vacate the district court's summary judgment ruling with respect to plaintiff's Copyright Act claim and remand for further proceedings consistent with this opinion. We affirm the district court's ruling dismissing Urbont's state law claims.

I. Facts and Procedural History

Urbont is a composer and music producer who has written theme songs for many well-known television shows. In 1966, Urbont wrote theme songs for various characters in the Marvel Super Heroes television show (“Marvel series” or “series”)—including Captain America, Hulk, Thor, Sub-Mariner, and the “Iron Man” theme song at issue in this case. He also composed opening and closing songs for the series. According to Urbont, he offered to write the music for the series after being put in touch with Marvel producer Stan Lee by a mutual friend. Prior to this introduction, Urbont was unfamiliar with the Marvel characters, and he had not previously written music that could be used for the series. Lee agreed to hear Urbont's submissions. He provided Urbont with comic books to use as source material and information about the characters. After Urbont “looked over the material [and] absorbed the nature of the character,” A. 118, he composed the Iron Man superhero theme and presented it to Lee, who accepted the work as written. It is undisputed that the sound recording of the Iron Man theme song was never released as an independent audio recording without a visual component.

In his deposition testimony, Urbont claims that his offer to compose the theme music for the Marvel series was contingent on his retaining ownership rights in the work. He explained as follows:

I was not hired when I wrote the songs. I wrote the songs on spec[ulation] hoping that [Marvel] would use them.

But the ownership of the material, as it always has been when I create material that I'm not being hired directly for as opposed to let's say my writing a pilot for MGM or Paramount, and my relationship is spelled out prior to my writing a single note. When it is not that type of situation, I own the material and I'm thrilled to be able to get it into the project, but I own it. It's a firm condition of the way I've operated. And [Marvel] was aware of it.

A. 93-94.

Further, Urbont claims that although Marvel was free to accept or reject Urbont's compositions, it did not have the right to modify them without Urbont's permission. Urbont composed, recorded, and produced the music for the series himself; although he needed money to cover his costs, he claims he was not “trying to get rich on the project,” A. 86, but simply wanted to get credit and exposure. Urbont asserts that Marvel did not pay him, even for costs, until after it accepted the work. He ultimately received a fixed sum of $3,000 for all the songs written for the series. Urbont did not have a written royalty agreement with Marvel, but he states that he later received royalties from BMI.

Urbont admits there was no written agreement with Marvel establishing that he owned the rights to the Iron Man theme song. He claims, however, that there was the oral agreement to that effect, described above. In 1966, a music publisher was issued a certificate of copyright registration by the U.S. Copyright Office naming Urbont as the owner of the work, and Urbont filed a renewal notice for the copyright in 1994. Since renewing the copyright, Urbont has licensed the Iron Man Composition for use in the 2008 Iron Man movie starring Robert Downey Jr., and he has licensed his Marvel series theme songs on other occasions. Additionally, in 1995 Urbont entered into a settlement agreement (“the Settlement”) with New World Entertainment, Ltd. and Marvel Entertainment Group, Inc. (collectively, “Marvel”) after bringing suit against Marvel for unauthorized use of the Iron Man composition and four other Marvel series compositions. As part of the Settlement, Urbont agreed to release his claims and to license the works to Marvel. The Settlement refers to Urbont as “renewal copyright owner of the ... Superhero Intros ... and the Master Recordings thereof” and refers to Marvel as “Licensee,” but it expressly denies that Marvel faces “any liability to Owner.” A. 78.

The appellees counter that Marvel did not share Urbont's understanding that he was the owner of the work. They note that in 1967, Marvel released a recording of two songs from the Marvel series with a copyright notice “Copyright © 1967 Marvel Comics Group.” S.P.A. 88-89. Although the Iron Man song was not released on that record, the parties agree that all of the Marvel series songs were subject to the same ownership agreement. In addition, the appellees note that when Marvel sought copyright registrations for the Iron Man segments of its television program series, it did not reference any preexisting copyrighted works that were incorporated into the program.

In 2000, defendants Dennis Coles, the hip hop artist popularly known as Ghostface Killah, Sony, and Razor Sharp Records produced and released an album named Supreme Clientele that featured the Iron Man theme song on two tracks. It is undisputed that the defendants did not seek permission from Urbont to use those songs. Urbont became aware of the album sometime in late 2009 or early 2010. He contacted Sony in 2010, alleging that his copyright had been infringed. Soon after, the parties entered into an agreement to toll the statute of limitations.

Urbont filed a complaint on June 30, 2011, and an amended complaint on August 29, 2011. The Amended Complaint asserts a claim of copyright infringement under the Copyright Act, 17 U.S.C. § 101, et seq. ,²

and claims under New York common law for copyright infringement, unfair competition, and misappropriation. Urbont's federal claim pertains to the Iron Man composition, while his New York law claims are based on the argument that the Iron Man theme song is, having been recorded prior to 1972, a sound recording and therefore would be protected under state law rather than under the Copyright Act. See 17 U.S.C. § 301 (providing exception to Copyright Act's preemption scheme for “sound recordings fixed before February 15, 1972”); see also

Capitol Records, Inc. v. Naxos of Am., Inc. , 4 N.Y.3d 540, 562–63, 797 N.Y.S.2d 352, 830 N.E.2d 250 (2005) (explaining that New York common law provides copyright protection to sound recordings not otherwise protected by the federal Copyright Act).

Urbont moved for partial summary judgment. Appellees Sony and Razor Sharp Records cross-moved for summary judgment. In a Memorandum and Order, the district court denied Urbont's motion and granted the appellees' motion. See Urbont v. Sony Music Entm't , 100 F.Supp.3d 342 (S.D.N.Y. 2015)

. The district court first concluded that the appellees had standing to challenge Urbont's ownership of the copyright under the “work for hire” doctrine. Id . at 348–50. Next, it determined that the Iron Man song was a “work for hire” because it was composed at Marvel's “instance and expense,” id . at 350–52, and that Urbont had not presented evidence of an ownership agreement with Marvel sufficient to overcome the presumption that the work was for hire. The court rejected Urbont's contention that the 1995 Settlement was probative of the parties' intent at the time the composition was written. Id . at 353–54. Finally, it dismissed Urbont's state law claims on the ground that the Iron Man recording is not a “sound recording” but rather part of an “audiovisual work” subject to preemption under the Copyright Act of 1976. Id . at 355–56. The district court later denied Urbont's motion to reconsider its prior ruling. Urbont v. Sony Music Entm't , No. 11 CIV. 4516 NRB, 2015 WL 3439244 (S.D.N.Y. May 27, 2015). Urbont appeals the district court's ruling.

II. Discussion

Urbont contends that the district court erred in determining that the appellees, as third parties to any ownership agreement between himself and Marvel, had standing to challenge his ownership rights under the “work for hire” doctrine. He further...