By Chike Eze
Generally, the author of a work owns the copyright in the work. However, an exception to the rule is that the employee or hiring party for whom the work was prepared is considered the owner of the work. The U.S. District Court for the Southern District of New York applied the “instance and expense” test in Urbont v. Sony Music Entertainment to determine whether the Iron Man Theme, created by Jack Urbont (“Urbont”) at Marvel’s request, was a work made for hire.
Urbont is a songwriter, conductor, and music producer. He has developed themes for several shows, including That 70s show, Oprah, and Rosie. A mutual friend put him in touch with Marvel about an opportunity to create character themes for the Marvel super heroes program. Marvel told Urbont about the characters that would be in the program. Marvel also provided the comic books from which Urbont sourced materials to create the Iron Man theme musical composition (“Iron Man Theme”) and other related themes. Urbont created the themes, including the Iron Man Theme, and he presented them to Marvel for approval. Marvel had the right to reject the works; however, Marvel accepted the works and paid Urbont $3,000. The parties did not sign a written assignment or license agreement. Urbont alleged that he registered the Iron Man Theme with the Copyright office and that he licensed it for use with the Iron Man film.
On June 30, 2011, Urbont sued hip-hop artist Dennis Coles (a.k.a “Ghostface Killah”) and Sony Music Entertainment alleging, inter alia, copyright infringement under the Copyright Act. Urbont alleged that Mr. Coles infringed his copyright by copying verbatim the Iron Man Theme soundtrack and musical composition. He further alleged that Sony, which released Coles’ album, has received substantial revenue from the distribution, reproduction, and display of the Iron Man Theme. Urbont moved for partial summary judgment against Sony, “seeking a determination that Sony is liable for copyright infringement,” inter alia. Sony cross-moved for summary judgment, seeking dismissal of Urbont’s claims on the ground that Marvel owns the Iron Man Theme because the work was made for hire.
In granting Sony’s motion and denying Urbont’s, the court held that Marvel is the owner of the Iron Man Theme because Urbont created it at Marvel’s “instance and expense,” therefore; the work was made for hire. With respect to the instance prong, the court found (1) that Marvel induced Urbont to create the Iron Man Theme and other related super hero themes; (2) that Marvel directed and supervised Urbont because Marvel had the right to reject Urbont’s work; and (3) that Marvel set the scope of Urbont’s work and provided the copyrighted material for him to adapt and build on. Next, the court found that Urbont created The Iron Man Theme at Marvel’s expense because Marvel paid a fixed sum of $3,000 for the work. The court reasoned that payment of a fixed sum to Urbont meant that Marvel (not Urbont) bore the full assumption of risk on the project. And therefore, the work occurred at Marvel’s expense.
The “instance and expense” test determines the owner of a copyrighted work by analyzing the conduct of the parties. The hiring party most likely owns the work if he induced the creation of the work, directed and supervised the work, and paid a fixed sum for the work. Such determination is equitable to the hired party who objectively was on notice that she was creating the work for the hiring party. Therefore, from an equitable standpoint, the court reached the right result in ruling that Marvel owns the copyright in the super hero themes.
Image source: needtoconsume.com.
Washington Journal of Law, Technology & Arts 
