The composer of the theme song used in the 1966 cartoon version of Marvel’s Iron Man won a minor victory today, with a federal appeals court ruling that Sony Music and rapper Ghostface Killah must face the composer’s claim that they violated his copyright by sampling the 50-year-old ditty without his permission.
Way back in 1966, Jack Urbont wrote a variety of theme songs for a series called The Marvel Super Heroes. The show featured tales of five different Marvel characters — including “The Invincible Iron Man” — each of whom got their own theme music, also written by Urbont.
The composer, who says he was introduced to Marvel bigwig Stan Lee by a mutual friend, never signed any sort of written agreement for his compositions, but was paid a total of $3,000 for the bundle of theme songs sold to the comics company.
What’s more, contends Urbont, Marvel understood that he retained the copyright on these songs, noting that he later received royalty payments in spite of never having signed a royalty agreement.
At the time, the U.S. Copyright Office listed Urbont as the owner of these songs, and he filed a renewal for that copyright in 1994. He has also successfully made licensing deals to have the Iron Man theme used in the 2008 movie version of the superhero’s story.
What Urbont didn’t agree to was Ghostface Killah’s use of the 1966 theme in the opening and closing tracks of his album Supreme Clientele, released in Feb. 2000.
The composer didn’t learn about the use of the theme music until nearly a decade later, ultimately filing a lawsuit in 2011.
Sony, however, argues that Urbont does not hold the copyright to the sampled theme song, claiming the music was written as a “work for hire.” The record company points to a recording — not of the Iron Man theme, but of other songs in that Marvel bundle penned by Urbont — released in 1969 which lists Marvel as the copyright holder.
Another point of contention involves a 1995 settlement between Urbont and Marvel over these theme songs. That settlement refers to Urbont as the “renewal copyright owner” of these songs and the related recordings, and also refers to Marvel as a “Licensee” of these works. However, the settlement notes that Marvel faces no liability.
To Urbont, this is an indicator that he is the rightful copyright owner. To Sony, it shows that Marvel disputes Urbont’s true ownership, as it neither explicitly acknowledges him as the rightful copyright holder nor does it transfer the copyright to either party.
Both sides asked the district court for summary judgment and in April 2015, the judge sided with Sony and Mr. Killah [PDF], agreeing that the music was written as a ” “work for hire” because it was composed at Marvel’s “instance and expense,” and because Urbont had not sufficiently demonstrated that Marvel considered him the copyright holder in 1966.
Urbont appealed, arguing that the district court had overlooked genuine issues of material fact bolstering his claim to ownership of the theme. This morning, the Second Circuit Court of Appeals agreed with the composer [PDF].
The appellate panel made no judgment about the validity of Urbont’s copyright claim but said the 1966 copyright registration and the subsequent successful renewal constitute “prima facie evidence of the
validity of the copyright.” It’s not definitive proof, but that’s not an issue to be determined at the summary judgment stage, explains the appeals court.
Regarding the “work for hire” factor, the district court had ruled that because Marvel picked the subject matter and scope of Urbont’s themes — and Marvel retained the right to accept or reject his submissions — Sony was correct in claiming that Urbont could have no copyright claim.
However, the appeals court points to other factors that the lower court did not address in its deliberations. For instance, Urbont claims that while Marvel could accept or reject his music, the company had no authority to alter it. Or the fact that the composer approached Stan Lee about writing the music, rather than having been hired by Marvel to do a specific task.
Additionally, according to Urbont, he recorded the themes at his own expense without any financial contribution from Marvel. If true, this could contribute to his argument that Urbont undertook this endeavor on his own.
Again, none of these are definitive proof that Urbont is the copyright owner — indeed, the court even noted that some factors not considered in the summary judgment seem to weigh in Sony’s favor — but they are “genuine issues of material fact remain as to whether the Iron Man composition was created at Marvel’s instance and expense.”
“We conclude that the district court erred in concluding that Urbont failed as a matter of law to produce evidence sufficient to rebut the presumption that Marvel owned the work,” explains the appeals court, later writing that “Urbont has raised genuine issues of material fact with respect to his claim of copyright infringement, and we vacate the district court’s grant of summary judgment in favor of” Sony and Ghostface Killah.
The case now goes back to the district court, where these issues can be resolved (or more likely quietly settled outside of the courtroom).