Property, intangible

a blog about ownership of intellectual property rights and its licensing

The Year Is the Key

I previously asked readers to “Name the Owner” of a copyrighted work. And the answer is: Urbont does not own the copyright* and the case is dismissed.

The key is that the work was created in 1966, so whether the Iron Man Theme was a work for hire is decided under the Copyright Act of 1909. Under the 1909 Act, a work would be owned by the commissioning party if it was prepared at the “instance and expense” of the commissioning party.

Whether the work was at the “instance” of Marvel depends on who induced the creation of the work. Urbont didn’t have any knowledge of the comic book characters and wouldn’t have created the theme song but for the potential use by Marvel, so it was prepared at Marvel’s instance.

It was also done at Marvel’s expense. A work will be at the commissioning party’s expense when the creator was paid a fixed sum. Royalties cut against a work for hire, but do not vitiate a finding of work for hire if there was also a fixed sum paid. The fundamental question is whether the creator bears the “full assumption of the risk of the loss of the project” and here, where Urbont was paid for the production, he didn’t have the financial risk.

Sealing the deal was the fact that the music was a derivative work of the comic book, which is likely to mean that a work is a work for hire.

The presumption of Marvel’s ownership could only be overcome with a contemporaneous agreement stating Urbont was instead the copyright owner, but there wasn’t one. Urbont claimed that the 1995 settlement agreement with Marvel was conclusive evidence that Urbont the owner, but it wasn’t strong enough to overcome the presumption. While it referred to Urbont as the “owner,”

First and foremost, a settlement is merely that: the resolution of a dispute between two parties. A settlement does not mean that the claim had merit or that it would have withstood scrutiny, and it is not a concession by a defendant that a claimant’s argument, legal or factual, has merit. Rather, pre-trial settlements are made for many reasons (one of them being to save money in the long run) and do not suggest liability on anyone’s part. Thus, the fact that Marvel entered into a licensing settlement with Urbont does not mean that Marvel has concluded or conceded that Urbont is the Composition’s owner, and it does not compel a finding that, contrary to our work-for-hire analysis, Urbont originally owned the Composition.

Further, an after-the-fact agreement cannot retroactively alter the ownership that inhered at the work’s creation. So, despite the registration and the licensing fees paid to Urbont, Marvel was the owner of the Iron Man Theme at creation. Be careful what you choose to litigate.

Urbont v. Sony Music Enter., No. 11 Civ. 4516(NRB) (S.D.N.Y. April 20, 2015).

*You also get points for saying “Marvel,” which is what the court said, although that is not necessarily true. Since Marvel is not a party, the court’s statements can only be understood as a determination of ownership at the time of the work’s creation, not the current ownership.

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