Third Parties Can Raise Work for Hire Defense to Copyright Claims: Second Circuit | Practical Law

Third Parties Can Raise Work for Hire Defense to Copyright Claims: Second Circuit | Practical Law

In Urbont v. Sony Music Entertainment, the US Court of Appeals for the Second Circuit ruled that third parties to an alleged employer-employee relationship have standing to raise a "work for hire" defense to a copyright infringement claim.

Third Parties Can Raise Work for Hire Defense to Copyright Claims: Second Circuit

Practical Law Legal Update w-002-9568 (Approx. 3 pages)

Third Parties Can Raise Work for Hire Defense to Copyright Claims: Second Circuit

by Practical Law Intellectual Property & Technology
Published on 09 Aug 2016 • USA (National/Federal)
In Urbont v. Sony Music Entertainment, the US Court of Appeals for the Second Circuit ruled that third parties to an alleged employer-employee relationship have standing to raise a "work for hire" defense to a copyright infringement claim.
In Urbont v. Sony Music Entertainment, the US Court of Appeals for the Second Circuit affirmed in part and vacated in part the US District Court for the Southern District of New York's decision granting summary judgment to defendants in a copyright infringement action. In doing so, the Second Circuit ruled that the defendants, third parties to an alleged employer-employee relationship granting rights to the plaintiff, did have standing to raise a "work for hire" defense to the copyright claims ( (2d. Cir. July 29, 2016)).
Jack Urbont sued Sony Music Entertainment, Razor Sharp Records, and rapper Dennis Coles a.k.a. Ghostface Killah (collectively Sony), for infringing his copyright in the "Iron Man" theme song, featured in a 1960s television show by Marvel Comics. Sony asserted that Urbont did not own the copyright because the song was a work for hire, written by Urbont for Marvel in 1966.
Urbont said that Sony lacked standing to raise the work for hire defense because Marvel acquiesced to his ownership of the copyright by not challenging his commercial use of the composition. He argued that this barred the defendants from challenging his ownership of the copyright because a third party cannot challenge the validity of an undisputed copyright transfer under Section 204(a) of the Copyright Act (17 U.S.C. § 204(a)).
The district court determined that Sony had standing to challenge Urbont's copyright ownership under the work for hire doctrine.
On appeal, the Second Circuit agreed, holding:
  • Marvel was not a party to the suit and did not have a chance to clarify its position on Urbont's ownership.
  • The work for hire doctrine concerns ownership rights between employers, and employees or independent contractors, not copyright transfers like those covered by Section 204(a).
  • Section 204(a) is a statute of frauds provision designed to protect copyright holders from mistaken or fraudulent claims of oral licenses, and does not preclude a third party from challenging the validity of an underlying transfer of copyright ownership.
The court went on to:
  • Vacate the district court's grant of summary judgment to Sony on its work for hire defense because the district court ignored genuine issues of material fact about the copyright's ownership.
  • Affirm the district court's dismissal of Urbont's state law copyright claims because the composition was an accompaniment to an audiovisual work subject to preemption under Section 102(a)(6) of the Copyright Act, not a pre-1972 "sound recording" protected from preemption under the statute.