In Urbont v. Sony Music Entertainment, the Second Circuit held that, based on the evidence, a reasonable jury could find that a cartoon theme song written for Marvel Comics in the 1960s was not a “work for hire” and the composer, Jack Urbont, was the owner of the copyright. In reaching this conclusion, Urbont also held that a third-party has standing to raise a work for hire defense when accused of copyright infringement.
Federal copyright law gives the “author” of a work initial ownership of the copyright in that work. The general rule is that the author is the party who actually creates the work – that is, the person who translates an idea into a fixed, tangible expression. The exception to this general rule is a “work for hire” in which case the hiring party, not the creator, is the copyright owner. For example, if a company hires local newspaper to create advertisements, the company the copyright.
Congress first incorporated the work for hire doctrine into the Copyright Act of 1909. The 1909 Act provides that the word “author” shall include an “employer” in the case of works made for hire. The 1909 Act was repealed and superseded by the Copyright Act of 1976, but it remains effective for copyrighted works created before the Copyright Act of 1976 went into effect on January 1, 1978.
The 1909 Act does not define “employer” or “works made for hire,” so courts have giving meaning to the phrases. Since 1966, the Second Circuit has held that the copyright is owned by “the person at whose instance and expense the work is done.” Put another way, a work is made for hire when the “motivating factor in producing the work was the employer who induced the creation.” The Second Circuit applies the “instance and expense” test when applying the 1909 Act regardless of whether the party creating the work was a traditional employee or an independent contractor.
The instance and expense test is much maligned. One criticism is that the Second Circuit misinterpreted implied assignment cases as work for hire cases – that is, cases where the freelance authors initially owned the copyright and then implicitly assigned it to the hiring party. Another criticism is the test violates the cardinal rule of statutory construction that if words in a statute have a well-known meaning at common law then the words are presumed to have been used in that sense (unless the statute indicates otherwise). Under this approach, “employer” should be interpreted under the common law of agency, and works by freelance authors or independent contractors should not qualify as a work for hire.
The issue over how to determine a work for hire and who owns various works associated with Marvel Comics has been fiercely litigated for at least two reasons. First, the comics now involve multi-billion dollar franchises including X-Men, Thor, The Avengers, Captain America, Iron Man, and Hulk. Second, former producer and editor-in-chief Stan Lee used what became known as the “Marvel Method” to have the works created. Stan Lee would go to the artist with an idea, they would confer, and Stan Lee would leave it up to that person to create the product, which he would then accept or reject. “While the Marvel Method had its problems, it did have one major benefit: producing lots and lots of comic books.”
In 2014, many people hoped the Supreme Court would consider the validity of Second circuit’s instance and experience test when the Supreme Court was set to consider a case between Marvel Entertainment and Jack Kirby’s estate. Kirby was legendary comic book artist and writer who helped created X-Men, Thor, the Hulk, and the Fantastic Four. However, the case settled and petition was dismissed. The dismissal of the case was generally viewed as a disappointment to freelancers because Second Circuit’s instance and expense test remained controlling in the circuit for pre-1978 work.
Urbont is the latest copyright case to apply the instance and expense test and, perhaps surprisingly, favored the creator, Jack Urbont. In 1966, Urbont created a number of theme songs for a television series called Marvel Super Heroes including “Iron Man Theme.” In February 2000, rapper and Wu-Tang Clan member Ghostface Killah released his second studio album, Supreme Clientele, which used parts of the theme song in the album’s opener “Intro” and closer “Iron’s Theme – Conclusion” (Ghostface had debuted his solo career with Ghostface Killah debuted his solo-career with an album entitled Ironman in 1996.)
In 2011, Urbont sued Ghostface, Razor Sharp Records, and Sony Music Entertainment for copyright infringement under federal law. The District Court granted summary judgment against Urbont on the ground that Marvel was the copyright owner because the theme song was a “work for hire” as a matter of law.
The Second Circuit reversed. The court initially noted that a copyright registration from 1966 listed him as “author” of the song and a renewal registration from 1995 that listed him as owner. A certificate of registration made before or within five years after first publication of the work is prima facie evidence of the validity of the copyright. As a result, Sony had the burden to disprove the registration.
The follow evidence favored Urbont’s position that the song was not a work-for-hire. First, Urbont testified that he retained all of the creative control over the project. Lee was not permitted to modify the work and could only accept or reject the songs he composed. Second, Urbont approached Stan Lee, not the other way around, and he wrote the songs speculating or hoping that Marvel would use them. In other words, there was no prior working relationship between Urbont and Marvel, nor was there was any guarantee. Third, Urbont independently recorded and produced the Iron Man theme song with his own tools and resources, including a recording studio he rented. Urbont claimed he was essentially paid only to cover his costs, not to profit from the project. Fourth, Urbont received royalties although he not have a written royalty agreement.
These factors were enough for a jury to find that Urbont’s composition of the song was not made at the instance and expense” of Marvel even though Marvel (1) determined the subject matter and scope of Urbont’s compositions, (2) had the right to accept or reject his songs, and (3) gave him a fixed sum of $3,000 in return for the bundle of theme songs. Moreover, the fact that Urbont wrote the songs on the speculation or hope, rather than a guarantee or prior arrangement, distinguished the case from the Second Circuit’s decision in Kirby where “Marvel and Kirby had a standing engagement whereby Kirby would produce drawings designed to fit within specific Marvel universes.”
Finally, the Second Circuit reversed the District Court’s holding that if it was work for hire, Urbont had failed to produce evidence of an oral agreement that he would retain the rights to the song. Urbont had offered his deposition testimony that Marvel shared Urbont’s understanding that he would own the rights to the Iron Man composition and, on summary judgment, the district court was required to accept this testimony as credible.
 No. 15-1778 (2d Cir. July 29, 2016).
 See Cmty. for Creative Non-Violence v. Reid, 490 U.S. 730, 737 (1989).
 See Brattleboro Publ‘g Co. v. Winmill Publ’g Corp., 369 F.2d 565 (2d Cir. 1966);
 See generally Catherine L. Fisk, Authors at Work: The Origins of the Work-For-Hire Doctrine, 15 Yale J.L. & Human. 1 (2003).
 17 U. S. C. § 26 (repealed).
 In contrast, the 1976 Act defines “work made for hire.” See 17 U.S.C. § 101 (2012).
 Brattleboro Publ‘g Co. v. Winmill Publ’g Corp., 369 F.2d 565 (2d Cir. 1966); see also Picture Music, Inc. v. Bourne, Inc., 457 F.2d 1213 (2d Cir. 1972)
 Siegel v. Nat'l Periodical Publs., Inc., 508 F.2d 909, 914 (2d Cir. 1974).
 Alex S. Romagnoli & Gian S. Pagnucci, American Values, Culture, and the Canon of Superhero Literature at 103 (Rowman & Littlefield 2013).
 See Marvel Worldwide, Inc. v. Kirby, 777 F. Supp. 2d 720, 737 (S.D.N.Y. 2011), aff’d in part, vacated in part sub nom, Marvel Characters, Inc. v. Kirby, 726 F.3d 119 (2d Cir. 2013), cert. dismissed, 135 S. Ct. 42 (2014).
 Urbont also sued for copyright infringement, unfair competition, and misappropriation under state law. Ghostface (whose real name is Dennis Coles) failed to participate in discovery and, as a result, the district court entered judgment against and imposed sanctions on him. Only Sony and Razor Sharp Records appealed.
 See 17 U.S.C. § 410(c).
 Kirby, 726 F.3d at 142.