Sony Answers Back

The last time I posted about Jack Urbont I described his motion for summary judgment. Sony recently replied to that motion and made their own motion for summary judgment presenting two basic arguments. First, Sony asserts that Mr. Urbont does not own the copyright to the Iron Man Theme because it was a work for hire and thus Marvel Comics owns it. Second, Sony asserts that the Iron Man Theme is not a "sound recording" under the Copyright Act of 1976 and thus Mr. Urbont's state law claims are preempted. In either event, Mr. Urbont lacks standing to sue, according to Sony.

In support of all this, Sony submitted a "counter-statement of material facts" to combat some of Mr. Urbont's assertions, a bunch of exhibits, and a declaration from one of their in-house lawyers. It's the same lawyer who said he didn't know that Robert Diggs is the RZA. Interestingly, his declaration says that he has "personal knowledge of the fact[]" that "Robert Diggs ... is also professionally known as 'RZA,' ...." I guess he learned that during or after his deposition.







Anyway, Sony's first argument goes like this: there's a test for whether a copyrighted work is a "work for hire," and facts surrounding the creation of the Iron Man Theme satisfy that test, so Marvel owns the copyright not Mr. Urbont. The only reason Mr. Urbont made the song (and six others--four more superhero themes and two generic Marvel-related ditties, more on them later), according to Sony, is because Marvel asked him to. He had no idea who any of these characters were before Marvel contacted him and send him some comics to read as background, and he would not have done so absent Marvel's offer to pay him to write the songs. Marvel paid Mr. Urbont a fixed sum of $3000 to write and record the song and Mr. Ubont did not retain any royalty rights. So far so good ... but then it gets a little murky.

Sony argues that Mr. Urbont can't rebut their argument that the Iron Man Theme is a work for hire. In support they note that there is no written agreement between Mr. Urbont and Marvel stating that he owns the copyright. This is true with respect to the 1966-ish timeframe when the songs were created for Marvel. But later, in 1995, Mr. Urbont entered into a "Settlement Agreement, Release and License" with New World Group and Marvel (Marvel was owned by New World at the time, Rupert Murdock later bought the whole shebang) for various superhero songs, including the Iron Man Theme.

The license agreement refers to Mr. Urbont as "Owner" and New World as "Licensee" and requires New World to pay $90,000 for a license to the various superhero songs. The license only allows New World to use the songs in conjunction with the cartoons. According to the license agreement, "Owner reserves all other rights of every kind and nature to use and to license others to use" the superhero songs.

This strikes me as strange. If the songs are a work for hire, why would Marvel license them from Mr. Urbont? They would already own them. The agreement is also stylized as a "settlement" so perhaps Marvel found it cheaper to pay Mr. Urbont than to litigate when he came after them for using the songs in the cartoons. But if that were the case, why didn't they take a license to all rights to the songs (or just buy them outright)? I guess it was a business decision to only use the songs with the cartoons, but it seems odd that a sophisticated publishing company like Marvel would own the copyright to something, but then pay someone else for a limited license to that work (and acknowledge the licensee as "Owner") without trying for more. The brief is redacted so maybe this would be clear upon reading the whole thing.

Perhaps most interesting is this part of the license agreement:

If this license agreement supersedes all previous agreements between the parties, does this mean that it makes Mr. Urbont the owner even if these songs originally were works for hire?

Also strange, for several reasons, is Sony's argument that Marvel owns the copyright because in 1967 Marvel released a record containing two of the non-superhero-specific songs written by Mr. Urbont: "The Merry Marvel Marching Society" and "The Marvel Super-Heroes Have Arrived." The record was distributed to members of Marvel's fan club, the Merry Marvel Marching Society. That isn't strange I guess. But I found the record on eBay for $99.99 and that's some strange shit to spend a hundo on. Seriously, would you pay a hundred bucks to listen to this?



Or this?



Sony asserts that this record is proof that Marvel owns the superhero songs because these two songs are from the group of seven Marvel asked Mr. Urbont to write. The record says "COPYRIGHT 1967 MARVEL COMICS GROUP" and it has the C-in-a-circle symbol on it. This is a strange assertion--I could print copies of "For Esme--With Love and Squalor" and write "COPYRIGHT 2015 ZMAN" on the books but that doesn't mean I really own the copyright. And if Marvel owned the copyright then, again, why did they take the limited license in 1995? Also strange--the 1995 license agreement does not mention these two songs, it only mentions the five superhero intros. So if these songs are related to the other five, why aren't these two included in the license? Perhaps the unredacted brief makes this clear.

The license agreement also references certain "master recordings" of the superhero songs as Schedule A to that agreement.

Schedule A isn't included in the copy attached to Mr. Urbont's brief though, and Sony alleges that they asked for but never received proof from Mr. Urbont that he owns any actual recordings of the Iron Man Theme (as opposed to, for example, sheet music for the song). Why hasn't Mr. Urbont produced these master recordings? Do any exist? If not, then how could Ghostface and RZA have copied them? Which segues into Sony's next argument.

Sony alleges that there is no recording of the Iron Man Theme separate and apart from the cartoon, therefore, the song is part of an audiovisual work and is not a "sound recording" for purposes of the Copyright Act. Here's the cartoon with the song on youtube. I'd embed it here but that seems like bad karma in light of the foregoing. In any event, it appears that RZA copied the song from a recording of the cartoon. Mr. Urbont even testified that this is probably what happened--he said that he has the "master recordings" and that no one copied those because they're in his apartment so RZA must have copied the song from a home video of the cartoon.

Sony argues that copying the sound from an audiovisual work does not constitute copyright infringement of a "sound recording," so Mr. Urbont's state law claims are preempted by the federal 1976 Act. You might say this is why people hate lawyers, but I think Sony is right here.

After reading briefs from both sides I'm confused. I wouldn't be surprised if Mr. Urbont wrote multiple Iron Man Themes and retained ownership of one and sold the other to Marvel, or something weird like that. That might explain the various other oddball documents in the record--apparently conflicting copyright renewal forms, documents reciting ownership by Urbont Music, by Jack Urbont Associates, by Mr. Urbont individually. Or maybe the facts are just confusing, at least as presented in the briefs.

I am, admittedly, a stupid guy, but the asserted facts in this case are too unclear for me to figure out exactly what happened. The preemption argument is stronger than the work for hire argument but even there, is it really clear what RZA copied from? So I don't think either side will win a motion for summary judgment--there's a genuine dispute.