A recent case out of the Second Circuit says “Yes. Third parties have standing to assert the defense that a copyright owner’s claim of ownership is erroneously based on Work Made for Hire (WMFH).”
Urbont v. Sony Music held that the defendant did have standing to challenge the validity of the WMFH ownership claim. Sony claimed that they owned music by virtue of WMFH; and Jack Urbont, defendant, challenged that WMFH status of ownership. This is noteworthy because it was Marvel, not Sony, who was the copyright claimant under a theory of WMFH. The music at issue was the theme song to the movie “IronMan.” Marvel was an unrelated party to Sony at the time that the work was created.
The defendant rested its claim on the premise that Marvel had no employees who were composers; and that music does not qualify for WMFH status under the nine categories of work.
The Second Circuit ruled that whether the work was indeed a WMFH was a relevant issue; and that defendants were entitled to raise the defense; and such a defense rested on facts that precluded summary judgment.
The opinion came down on July 29 of this year. Discussing it before now seemed premature as it wasn’t clear whether Sony was going to appeal. This week, Urbont is reported to be the prevailing party. Urbont v. Sony settled on confidential terms. There will be no further appeal.
Pro-tip take away: An assignment would have solved the problem. The nine narrow categories of WMFH applying to non-employees is increasingly being read narrowly. “Audio-visual works” are covered in one of the nine categories, but not just audio alone (namely music). To refresh your recollection, the nine categories listed in Section 101 of Title 17 of the copyright statute are:
- A contribution to a collective work (like a piece for a magazine, anthology or encyclopedia);
- A part of a motion picture or other audiovisual work;
- A translation;
- A supplementary work (like a foreword, afterword, bibliography, appendix, index or editorial notes);
- A compilation (like an anthology, database or anything that qualifies as a “collective work” from category 1 above);
- An instructional text (generally, any text that could go in a textbook);
- A test;
- Answer material for a test; and
- An atlas.
And even if your work falls into one of these nine categories, the statute states that there must also be a written agreement stating that it’s a “Work Made For Hire.” To be safe, the agreement should be signed before the work is created and signed by both parties.
Urbont v. Sony Music Entertainment Inc., Second Circuit July 29, 2016, 15-1778