     15‐1778‐cv 
     Urbont v. Sony Music Entertainment 

     15-1778-cv
     Urbont v. Sony Music Entertainment

 1                             UNITED STATES COURT OF APPEALS
 2                                 FOR THE SECOND CIRCUIT
 3
 4                                         August Term, 2015
 5
 6       (Submitted:      March 24, 2016)                    Decided: July 29, 2016)
 7
 8                             Docket No. 15-1778-cv
 9       ________________________________________________________________
10                                    ________
11
12                                            JACK URBONT,
13
14                                          Plaintiff-Appellant,
15
16                                               - v.-
17
18         SONY MUSIC ENTERTAINMENT, INDIVIDUALLY, D/B/A EPIC RECORDS, RAZOR SHARP
19                                      RECORDS, LLC,
20
21                                         Defendants-Appellees,
22
23                            DENNIS COLES, A/K/A GHOSTFACE KILLAH,
24
25                                            Defendant.*
26
27   ________________________________________________________________
28
29   Before:
30   JACOBS, HALL, and LYNCH, Circuit Judges.
31
32        Appeal from the judgment of the United States District
33   Court for the Southern District of New York (Buchwald, J.)
34   granting Defendants-Appellees’ motions for summary judgment on
35   plaintiff’s federal copyright claim and his related state law
36   claims.   We hold that the district court erred in determining
37   that plaintiff failed to raise genuine issues of material fact
38   with respect to his federal copyright infringement claim but
39   that the court properly granted summary judgment to the
40   appellees on plaintiff’s state law claims.       The judgment is
41   therefore AFFIRMED in part and VACATED and REMANDED in part.

     *
       The Clerk of Court is respectfully directed to amend the
     caption to conform to the above.
                                                   1
      
     15‐1778‐cv 
     Urbont v. Sony Music Entertainment 

 1
 2                                         Richard   S.  Busch,   King  &   Ballow,
 3                                         Nashville, TN, and Elliot Schnapp,
 4                                         Gordon, Gordon & Schnapp PLLC, New
 5                                         York, NY, for Plaintiff-Appellant.
 6
 7                                         Marc   S.  Reiner,    Hand   Baldachin   &
 8                                         Amburgey   LLP,   New    York,   NY,   for
 9                                         Defendants-Appellees.
10
11   HALL, Circuit Judge:
12
13          In    this     copyright       case,   Plaintiff-Appellant         Jack    Urbont

14   brought suit to enforce his claimed ownership rights in the

15   “Iron Man” theme song against what he alleges is infringement by

16   Defendants        Sony      Music      Entertainment      (“Sony”),      Razor     Sharp

17   Records,      and    Dennis      Coles,    a/k/a   Ghostface      Killah.1        In   the

18   proceedings         below,     Defendants-Appellees        Sony    and    Razor    Sharp

19   Records      challenged         Urbont’s      ownership    of     the    copyright      by

20   arguing that the Iron Man theme song was a “work for hire”

21   created at the instance and expense of Marvel Comics (“Marvel”).

22   The district court agreed, and it determined that Urbont failed

23   to present sufficient evidence to rebut the presumption that

24   Marvel was, in fact, the copyright owner.                       The court dismissed

25   Urbont’s New York common law claims for copyright infringement,




     1
       Coles failed to participate in discovery during the proceedings
     below, and as a result the district court entered judgment
     against and imposed sanctions on him.        (See Memorandum and
     Order, ECF No. 53.) Coles did not participate in the summary
     judgment motion and he is not a party to this appeal.


                                                   2
      
     15‐1778‐cv 
     Urbont v. Sony Music Entertainment 

 1   unfair competition, and misappropriation on the basis that those

 2   claims were preempted by the Copyright Act.

 3           We    hold      that      although         the     district        court    properly

 4   determined that the appellees had standing to raise a “work for

 5   hire” defense to the plaintiff’s copyright infringement claim,

 6   the court erred in concluding that Urbont failed to raise issues

 7   of material fact with respect to his ownership of the copyright.

 8   We further conclude that the district court properly dismissed

 9   Urbont’s state law claims as preempted by the Copyright Act.                                We

10   thus vacate the district court’s summary judgment ruling with

11   respect      to    plaintiff’s         Copyright         Act     claim   and     remand    for

12   further proceedings consistent with this opinion. We affirm the

13   district court’s ruling dismissing Urbont’s state law claims.

14                            I. Facts and Procedural History

15           Urbont is a composer and music producer who has written

16   theme songs for many well-known television shows.                                   In 1966,

17   Urbont wrote theme songs for various characters in the Marvel

18   Super     Heroes      television        show   (“Marvel          series”    or     “series”)—

19   including       Captain       America,     Hulk,         Thor,    Sub-Mariner,       and   the

20   “Iron Man” theme song at issue in this case.                             He also composed

21   opening and closing songs for the series.                          According to Urbont,

22   he offered to write the music for the series after being put in

23   touch with Marvel producer Stan Lee by a mutual friend.                                   Prior

24   to   this     introduction,           Urbont   was       unfamiliar      with    the   Marvel

                                                    3
      
     15‐1778‐cv 
     Urbont v. Sony Music Entertainment 

 1   characters, and he had not previously written music that could

 2   be     used     for     the     series.    Lee     agreed   to    hear    Urbont’s

 3   submissions.           He provided Urbont with comic books to use as

 4   source material and information about the characters.                       After

 5   Urbont “looked over the material [and] absorbed the nature of

 6   the character,” A. 118, he composed the Iron Man superhero theme

 7   and presented it to Lee, who accepted the work as written.                     It

 8   is undisputed that the sound recording of the Iron Man theme

 9   song     was    never      released   as   an    independent     audio   recording

10   without a visual component.

11          In his deposition testimony, Urbont claims that his offer

12   to compose the theme music for the Marvel series was contingent

13   on his retaining ownership rights in the work.                   He explained as

14   follows:

15                    I was not hired when I wrote the songs. I
16                  wrote the songs on spec[ulation] hoping that
17                  [Marvel] would use them.   But the ownership
18                  of the material, as it always has been when
19                  I create material that I'm not being hired
20                  directly for as opposed to let's say my
21                  writing a pilot for MGM or Paramount, and my
22                  relationship is spelled out prior to my
23                  writing a single note. When it is not that
24                  type of situation, I own the material and
25                  I’m thrilled to be able to get it into the
26                  project, but I own it.         It’s a firm
27                  condition of the way I’ve operated.      And
28                  [Marvel] was aware of it.
29
30                  A. 93-94.
31



                                                4
      
     15‐1778‐cv 
     Urbont v. Sony Music Entertainment 

 1           Further, Urbont claims that although Marvel was free to

 2   accept or reject Urbont’s compositions, it did not have the

 3   right     to    modify      them       without       Urbont’s      permission.            Urbont

 4   composed,       recorded,        and       produced    the       music    for     the     series

 5   himself; although he needed money to cover his costs, he claims

 6   he was not “trying to get rich on the project,” A. 86, but

 7   simply wanted to get credit and exposure.                           Urbont asserts that

 8   Marvel did not pay him, even for costs, until after it accepted

 9   the work.        He ultimately received a fixed sum of $3,000 for all

10   the songs written for the series.                     Urbont did not have a written

11   royalty      agreement       with      Marvel,       but    he   states     that     he     later

12   received royalties from BMI.

13           Urbont admits there was no written agreement with Marvel

14   establishing that he owned the rights to the Iron Man theme

15   song.      He claims, however, that there was the oral agreement to

16   that effect, described above.                    In 1966, a music publisher was

17   issued     a    certificate           of   copyright       registration         by   the     U.S.

18   Copyright Office naming Urbont as the owner of the work, and

19   Urbont filed a renewal notice for the copyright in 1994.                                    Since

20   renewing       the     copyright,          Urbont     has    licensed       the      Iron     Man

21   Composition for use in the 2008 Iron Man movie starring Robert

22   Downey Jr., and he has licensed his Marvel series theme songs on

23   other occasions.             Additionally, in 1995 Urbont entered into a

24   settlement         agreement           (“the     Settlement”)            with     New       World

                                                      5
      
     15‐1778‐cv 
     Urbont v. Sony Music Entertainment 

 1   Entertainment,           Ltd.         and     Marvel    Entertainment         Group,     Inc.

 2   (collectively, “Marvel”) after bringing suit against Marvel for

 3   unauthorized use of the Iron Man composition and four other

 4   Marvel series compositions.                     As part of the Settlement, Urbont

 5   agreed to release his claims and to license the works to Marvel.

 6   The Settlement refers to Urbont as “renewal copyright owner of

 7   the . . . Superhero Intros . . . and the Master Recordings

 8   thereof” and refers to Marvel as “Licensee,” but it expressly

 9   denies that Marvel faces “any liability to Owner.”                            A. 78.

10          The appellees counter that Marvel did not share Urbont’s

11   understanding that he was the owner of the work.                          They note that

12   in   1967,     Marvel      released         a   recording    of   two    songs    from   the

13   Marvel series with a copyright notice “Copyright © 1967 Marvel

14   Comics Group.”            S.P.A. 88-89.              Although the Iron Man song was

15   not released on that record, the parties agree that all of the

16   Marvel      series       songs         were     subject     to    the    same     ownership

17   agreement.         In addition, the appellees note that when Marvel

18   sought copyright registrations for the Iron Man segments of its

19   television program series, it did not reference any preexisting

20   copyrighted works that were incorporated into the program.

21          In    2000,      defendants          Dennis     Coles,     the   hip     hop    artist

22   popularly       known      as   Ghostface         Killah,    Sony,      and    Razor   Sharp

23   Records produced and released an album named Supreme Clientele

24   that featured the Iron Man theme song on two tracks.                                   It is

                                                      6
      
     15‐1778‐cv 
     Urbont v. Sony Music Entertainment 

 1   undisputed        that    the     defendants       did   not      seek   permission      from

 2   Urbont to use those songs.                   Urbont became aware of the album

 3   sometime in late 2009 or early 2010.                     He contacted Sony in 2010,

 4   alleging that his copyright had been infringed.                          Soon after, the

 5   parties        entered     into       an   agreement     to       toll   the    statute    of

 6   limitations.

 7           Urbont filed a complaint on June 30, 2011, and an amended

 8   complaint on August 29, 2011.                  The Amended Complaint asserts a

 9   claim     of     copyright      infringement        under     the    Copyright     Act,   17

10   U.S.C. § 101, et seq.,2 and claims under New York common law for

11   copyright             infringement,                unfair          competition,           and

12   misappropriation.              Urbont’s federal claim pertains to the Iron

13   Man composition, while his New York law claims are based on the

14   argument that the Iron Man theme song is, having been recorded

15   prior       to   1972,     a     sound     recording        and     therefore    would     be

16   protected under state law rather than under the Copyright Act.

17   See    17    U.S.C.      § 301        (providing    exception       to   Copyright    Act’s

18   preemption scheme for “sound recordings fixed before February

19   15, 1972”); see also                   Capitol Records, Inc. v. Naxos of Am.,

20   Inc., 4 N.Y.3d 540, 562–63 (2005) (explaining that New York




     2
       Because the work at issue in this case was produced in 1966,
     the Copyright Act of 1909, Pub.L. No. 60–349, 35 Stat. 1075,
     governs Urbont’s copyright infringement claim.    See Baldwin v.
     EMI Feist Catalog, Inc., 805 F.3d 18, 20 (2d Cir. 2015).
                                                    7
      
     15‐1778‐cv 
     Urbont v. Sony Music Entertainment 

 1   common law provides copyright protection to sound recordings not

 2   otherwise protected by the federal Copyright Act).

 3           Urbont moved for partial summary judgment.                      Appellees Sony

 4   and Razor Sharp Records cross-moved for summary judgment.                            In a

 5   Memorandum and Order, the district court denied Urbont’s motion

 6   and granted the appellees’ motion.                      See Urbont v. Sony Music

 7   Entm’t, 100 F. Supp. 3d 342 (S.D.N.Y. 2015).                     The district court

 8   first concluded that the appellees had standing to challenge

 9   Urbont’s ownership of the copyright under the “work for hire”

10   doctrine.        Id. at 348–50.            Next, it determined that the Iron Man

11   song was a “work for hire” because it was composed at Marvel’s

12   “instance and expense,” id. at 350-52, and that Urbont had not

13   presented        evidence         of   an    ownership    agreement       with   Marvel

14   sufficient to overcome the presumption that the work was for

15   hire.       The court rejected Urbont’s contention that the 1995

16   Settlement was probative of the parties’ intent at the time the

17   composition was written.                Id. at 353–54.      Finally, it dismissed

18   Urbont’s      state      law      claims    on   the   ground   that    the   Iron    Man

19   recording       is   not      a    “sound   recording”    but   rather    part   of    an

20   “audiovisual work” subject to preemption under the Copyright Act

21   of   1976.        Id.    at       355-56.     The    district   court    later   denied

22   Urbont’s motion to reconsider its prior ruling.                         Urbont v. Sony

23   Music Entm't, No. 11 CIV. 4516 NRB, 2015 WL 3439244 (S.D.N.Y.

24   May 27, 2015).          Urbont appeals the district court’s ruling.

                                                      8
      
     15‐1778‐cv 
     Urbont v. Sony Music Entertainment 

 1                                           II. Discussion

 2          Urbont       contends          that     the     district       court      erred     in

 3   determining         that     the      appellees,       as     third    parties     to     any

 4   ownership agreement between himself and Marvel, had standing to

 5   challenge       his      ownership      rights        under    the    “work      for    hire”

 6   doctrine.        He further argues that the district court overlooked

 7   genuine issues of material fact that he raised as to his state

 8   and federal copyright claims.                       We affirm the district court’s

 9   decision       with      respect      to      the    appellees’       standing    and     its

10   dismissal of Urbont’s state law claims.                        We reverse the court’s

11   grant of summary judgment in favor of appellees on Urbont’s

12   Copyright Act claim.

13                                                A. Standing

14          For purposes of the work for hire doctrine under the 1909

15   Copyright Act, “an ‘employer’ who hires another to create a

16   copyrightable work is the ‘author’ of the work for purposes of

17   the statute, absent an agreement to the contrary.”                                     Playboy

18   Enters., Inc. v. Dumas, 53 F.3d 549, 554 (2d Cir. 1995) (citing

19   17 U.S.C. § 26 (1976) (repealed)).

20          This Court has not explicitly decided whether a third party

21   to   an    alleged      employer-employee            relationship      has    standing     to

22   raise a “work for hire” defense to copyright infringement.                                 See

23   Psihoyos v. Pearson Educ., Inc., 855 F. Supp. 2d 103, 117 n.7

24   (S.D.N.Y.        2012)      (“Courts         have    not    dealt     with    this      issue

                                                     9
      
     15‐1778‐cv 
     Urbont v. Sony Music Entertainment 

 1   extensively, but the few decisions to address the issue at all

 2   have generally found that a defendant does have standing to

 3   challenge       ownership        on   this     basis.”).      We     have,   however,

 4   implicitly permitted the use of the “work for hire” doctrine

 5   defensively by third-party infringers to refute a plaintiff’s

 6   alleged ownership of a copyright.                   See Aldon Accessories Ltd. v.

 7   Spiegel, Inc., 738 F.2d 548, 551-53 (2d Cir. 1984), abrogated on

 8   other grounds by Cmty. for Creative Non-Violence v. Reid, 490

 9   U.S. 730 (1989)3; see also Easter Seal Soc. for Crippled Children

10   & Adults of La., Inc. v. Playboy Enters., 815 F.2d 323, 333 (5th

11   Cir. 1987) (explaining that “[t]he ‘work for hire’ issue in

12   Aldon     Accessories        arose    as   a    defensive   tactic    adopted   by   a

13   third-party infringer to dispute the validity of the plaintiff's

14   copyright”).          The Eleventh Circuit has explicitly held that a

15   third-party infringer “does have the right to assert a [work-

16   for-hire] defense.”              M.G.B. Homes, Inc. v. Ameron Homes, Inc.,

17   903 F.2d 1486, 1490 (11th Cir. 1990).

18           The Ninth Circuit, on the other hand, has rejected third-

19   party standing under the “work for hire” doctrine, at least

20   where both potential owners of the copyright are parties to the

21   lawsuit and the issue of ownership is undisputed as between


     3
        In our Aldon Accessories decision, the parties had not
     specifically challenged the alleged third-party infringer’s
     standing to invoke the “work for hire” doctrine, and the Court
     did not rule on that issue.
                                                    10
      
     15‐1778‐cv 
     Urbont v. Sony Music Entertainment 

 1   them.      Jules Jordan Video, Inc. v. 144942 Canada Inc., 617 F.3d

 2   1146, 1157 (9th Cir. 2010). In Jules, the panel reasoned, inter

 3   alia, that the purpose of the “work for hire” doctrine is “to

 4   establish ownership of a work as between a commissioning party

 5   or   employer       on    the    one    hand      and   the    commissioned   party    or

 6   employee on the other.”                617 F.3d at 1157.         Thus, “[i]t would be

 7   unusual and unwarranted to permit third parties . . . to invoke

 8   [the ‘work for hire’ doctrine] to avoid a suit for infringement

 9   when there is no dispute between the two potential owners, and

10   both are plaintiffs to the lawsuit.”                     Id.     The panel noted that

11   third-party        infringers         are   not     permitted    to   avoid   suit    for

12   copyright infringement by invoking 17 U.S.C. § 204(a), a statute

13   of frauds provision requiring contemporaneous memorialization of

14   a copyright transfer, and it considered the reasoning behind

15   that doctrine to be equally applicable in the “work for hire”

16   context.       Id. (citing Imperial Residential Design, Inc. v. Palms

17   Dev. Grp., Inc., 70 F.3d 96, 99 (11th Cir. 1995)).

18           Urbont asserts that the appellees lack third-party standing

19   because there is no evidence that Marvel, which is not a party

20   to this lawsuit, has ever challenged his claim to ownership of

21   the copyright.           By failing to challenge Urbont’s registration of

22   the copyright and licensing of the composition, he contends,

23   Marvel has acquiesced in his commercial use of the composition.

24   Therefore, just as third parties are not permitted to challenge

                                                    11
      
     15‐1778‐cv 
     Urbont v. Sony Music Entertainment 

 1   the validity of an otherwise-undisputed copyright transfer under

 2   Section 204(a), Urbont argues that the appellees should not be

 3   permitted to challenge the validity of his copyright on the

 4   basis that the Iron Man theme song was a “work for hire” when

 5   Marvel itself has not done so.                      Cf. Eden Toys, Inc. v. Florelee

 6   Undergarment Co., 697 F.2d 27, 36 (2d Cir. 1982) (holding with

 7   respect to § 204(a) that where “the copyright holder appears to

 8   have no dispute with its licensee . . . it would be anomalous to

 9   permit a third party infringer to invoke this provision against

10   the licensee”), superseded by rule on other grounds as stated in

11   Keeling v. Hars, 697 F.2d 27 (2d Cir. 2015); accord Barefoot

12   Architect, Inc. v. Bunge, 632 F.3d 822, 830 (3d Cir. 2011) (“At

13   least      where        there    is     no        dispute        between       transferor        and

14   transferee       regarding        the    ownership          of    a   copyright,         there   is

15   little reason to demand that a validating written instrument be

16   drafted      and     signed       contemporaneously               with     the      transferring

17   event.”).

18           We are unpersuaded by this argument.                          As an initial matter,

19   the     facts      of    the     Ninth       Circuit’s           decision      in    Jules       are

20   significantly distinguishable, as both potential owners of the

21   copyright       were      plaintiffs         to    the   lawsuit         and     there    was     no

22   dispute between them with respect to ownership rights.4                                          See


     4
       Indeed, the individual plaintiff in that case was the sole
     shareholder, director, and officer of the entity plaintiff, and
                                                       12
      
     15‐1778‐cv 
     Urbont v. Sony Music Entertainment 

 1   Jules, 617 F.3d at 1157.                    Here, by contrast, Marvel is not a

 2   party to the lawsuit and has not had the opportunity to clarify

 3   its position with respect to ownership of the copyright.5                                Thus,

 4   unlike     in    Jules,      it       is   thus    uncertain    whether       Marvel     would

 5   dispute      Urbont’s        copyright           ownership.         Even    assuming     that

 6   Urbont’s        characterization            of     Marvel’s    position       is    correct,

 7   moreover,       we    agree       with     the     district    court       that    the   cases

 8   interpreting Section 204 do not support the outcome he seeks—

 9   preclusion of the appellees’ standing to challenge the validity

10   of his copyright.            Section 204(a), a statute of frauds provision

11   for    copyright       transfers,          was    designed     to    “protect      copyright

12   holders from persons mistakenly or fraudulently claiming oral

13   licenses.”        Eden Toys, 697 F.2d at 36; see also Lyrick Studios,



     exercised complete control over the entity.                         Jules, 617 F.3d at
     1156.
     5
       The question of whether Marvel was required to be joined as a
     party under Fed. R. Civ. P. 19 does not appear to have been
     raised at any time during the litigation below. Joinder may be
     required, however, in cases where the determination of copyright
     ownership has the potential to prejudice an individual that is
     not a party to the suit and the requirements of Fed. R. Civ. P.
     19 are met.   See, e.g., Marvel Characters, Inc. v. Kirby, 726
     F.3d 119, 132–35 (2d Cir. 2013) (noting that joinder of
     “required” parties is compulsory under Fed. R. Civ. P. 19, but
     permitting action to proceed on basis that parties not feasible
     to joinder were not “indispensable”); Eden Toys, Inc., 697 F.2d
     at 36-37 (holding that it would be appropriate for district
     court to join an employer in a lawsuit where it was possible
     that the employer owned some of the rights infringed by the
     defendant); 9 Causes of Action 2d 65 (1997) (“If the court deems
     it appropriate, it may require the joinder of any person having
     or claiming an interest in the copyright.”).
                                                       13
      
     15‐1778‐cv 
     Urbont v. Sony Music Entertainment 

 1   Inc. v. Big Idea Prods., Inc., 420 F.3d 388, 394 (5th Cir.

 2   2005)(“[C]ourts are hesitant to allow an outside infringer to

 3   challenge        the     timing         or    technicalities       of     the     copyright

 4   transfer.”).           Section 204 thus furthers the ordinary purpose of

 5   the statute of frauds: “[j]ust as requiring a written contract

 6   prevents      enforcement          of   a    nonexistent    obligation      through     the

 7   exclusion of fraudulent, perjured, or misremembered evidence,

 8   requiring a writing for enforcement of a copyright assignment

 9   enhances predictability and certainty of ownership by preventing

10   litigants from enforcing fictitious agreements through perjury

11   or the testimony of someone with a faulty memory.”                                 Barefoot

12   Architect,        632       F.3d      at     828–29    (internal        quotation     marks

13   omitted).

14          Unlike Section 204, which concerns the memorialization of

15   an ownership transfer, the “work for hire” doctrine guides the

16   determination          of    ownership        rights   as   between       employers     and

17   employees or independent contractors.                       See Marvel Characters,

18   Inc. v. Kirby, 726 F.3d 119, 137-40 (2d Cir. 2013).                             A plaintiff

19   in a copyright infringement suit bears the burden of proving

20   ownership of the copyright, however, whether such ownership is

21   challenged by an ostensible employer or by a third party.6                              See


     6
       Indeed, plaintiffs must prove ownership not only as an element
     of a copyright infringement claim, but also to assert their
     standing to bring suit.   See Eden Toys, 697 F.2d at 32 (noting
     that only “(1) owners of copyrights, and (2) persons who have
                                                    14
      
     15‐1778‐cv 
     Urbont v. Sony Music Entertainment 

 1   Island Software & Computer Serv., Inc. v. Microsoft Corp., 413

 2   F.3d 257, 260 (2d Cir. 2005) (noting that a “claim of copyright

 3   infringement        under       federal       law    requires        proof    that . . .         the

 4   plaintiff had a valid copyright in the work allegedly infringed”

 5   (internal quotation marks omitted)).                            Indeed, even courts that

 6   have    precluded        third        parties       from      challenging       a   plaintiff’s

 7   ownership       rights      under       the     statute         of   frauds     provision        in

 8   Section      204     have       permitted       those         parties    to   challenge          the

 9   validity       of    the    underlying         ownership         transfer.           See,    e.g.,

10   Barefoot       Architect,        632     F.3d       at    831    (holding       that   although

11   third-party defendant lacked standing to challenge plaintiff’s

12   ownership by assignment under Section 204, plaintiff “failed to

13   raise a triable issue of fact as to whether the alleged . . .

14   oral     transfer        ever    occurred”);             Eden    Toys,    697       F.2d    at    36

15   (precluding challenge to validity of assignment under statute of

16   frauds, but remanding for district court to determine whether

17   underlying         transfer      occurred).              We   thus   conclude        that   third

18   parties       to    an      alleged      employer-employee               relationship        have



     been granted exclusive licenses by owners of copyrights” have
     standing to sue for copyright infringement (citing 17 U.S.C.
     § 501(b)); see also ABKCO Music, Inc. v. Harrisongs Music, Ltd.,
     944 F.2d 971, 980 (2d Cir. 1991) (noting that third parties are
     not permitted to sue on a copyright holder’s behalf). Urbont’s
     reasoning could, therefore, lead to the anomalous result of
     permitting copyright infringement plaintiffs to proceed even
     where they may lack standing to sue simply because an employer
     has not challenged the validity of their copyright.


                                                     15
      
     15‐1778‐cv 
     Urbont v. Sony Music Entertainment 

 1   standing to raise a “work for hire” defense against a claim of

 2   copyright infringement.

 3                                         B. Copyright Act Claim

 4          The district court granted summary judgment in favor of

 5   appellees       on    Urbont’s          federal      copyright     infringement      claim,

 6   holding that the Iron Man composition was a “work for hire” and

 7   that Urbont failed to raise triable issues of fact regarding an

 8   alleged ownership agreement with Marvel.                         We review a district

 9   court’s grant of summary judgment de novo, applying the same

10   standards       as    the     district        court.      Kirby,    726   F.3d    at    135.

11   Summary judgment is appropriate “only if ‘there is no genuine

12   dispute as to any material fact and the movant is entitled to

13   judgment as a matter of law.’”                       Id. (quoting Fed. R. Civ. P.

14   56(a)).         “When      deciding       a   summary    judgment      motion,    a . .    .

15   court's function is not to weigh the evidence, make credibility

16   determinations          or     resolve        issues     of   fact,     but   rather      to

17   determine whether, drawing all reasonable inferences from the

18   evidence presented in favor of the non-moving party, a fair-

19   minded jury could find in the non-moving party's favor.”                             Beatie

20   v.   City     of     New     York,      123   F.3d     707,   710-11   (2d    Cir.     1997)

21   (internal citation omitted).

22          To prove a claim of copyright infringement, a plaintiff

23   must show (1) ownership of a valid copyright and (2) copying of

24   constituent elements of the work that are original.                           Boisson v.

                                                     16
      
     15‐1778‐cv 
     Urbont v. Sony Music Entertainment 

 1   Banian, Ltd., 273 F.3d 262, 267 (2d Cir. 2001).                Urbont asserts

 2   that he is the owner of a valid copyright to the Iron Man theme

 3   song because he has produced a copyright registration from 1966

 4   that lists him as “author,” A. 64, and a renewal registration

 5   from 1995 that lists him as owner.              Production of a certificate

 6   of registration made before or within five years after first

 7   publication of the work constitutes prima facie evidence of the

 8   validity of the copyright.             17 U.S.C. § 410(c); see also Hamil

 9   Am., Inc. v. GFI, 193 F.3d 92, 98 (2d Cir. 1999).                   However, “a

10   certificate of registration creates no irrebuttable presumption

11   of copyright validity,” and “where other evidence in the record

12   casts doubt on the question, validity will not be assumed.”

13   Estate of Burne Hogarth v. Edgar Rice Burroughs, Inc., 342 F.3d

14   149, 166 (2d Cir. 2003) (internal quotation marks and citation

15   omitted).         Although the plaintiff bears the burden of proving

16   copyright ownership, “[t]he party challenging the validity of

17   the    copyright        [registration]    has   the   burden   to    prove   the

18   contrary.”        Hamil Am., Inc., 193 F.3d at 98.

19                               1. The “Work for Hire” Doctrine

20          The 1909 Copyright Act mentions works for hire only in the

21   definition section of the statute, where it states that “[i]n

22   the interpretation and construction of this title . . . the word

23   ‘author’ shall include an employer in the case of works made for



                                              17
      
     15‐1778‐cv 
     Urbont v. Sony Music Entertainment 

 1   hire.”7      17     U.S.C.      §     26   (1976)     (repealed).             “Under   this

 2   definition,         an    ‘employer’       who      hires     another    to      create     a

 3   copyrightable work is the ‘author’ of the work for purposes of

 4   the statute, absent an agreement to the contrary.”                                 Playboy

 5   Enters., Inc., 53 F.3d at 554.                      Because the statute does not

 6   define “employer” or “author,” courts apply what is known as the

 7   “instance       and      expense      test.”   Kirby,       726   F.3d   at    137.    As   a

 8   general rule, “[a] work is made at the hiring party's ‘instance

 9   and expense’ when the employer induces the creation of the work

10   and has the right to direct and supervise the manner in which

11   the work is carried out.”                  Id. at 139 (quoting Martha Graham,

12   380 F.3d at 635); see also Siegel v. Nat'l Periodical Publs.,

13   Inc., 508 F.2d 909, 914 (2d Cir. 1974) (explaining that work is

14   made for hire when the “motivating factor in producing the work

15   was the employer who induced the creation” (internal quotation

16   marks omitted)).

17            “‘Instance’ refers to the extent to which the hiring party

18   provided the impetus for, participated in, or had the power to

19   supervise the creation of the work.”                        Kirby, 726 F.3d at 139.


     7
       “The concept of ‘work made for hire’ remains in the 1976 Act,
     which defines the phrase to mean ‘a work prepared by an employee
     within the scope of his or her employment’ or, for certain types
     of works, ‘a work specially ordered or commissioned.’”    Martha
     Graham Sch. & Dance Found., Inc. v. Martha Graham Ctr. of
     Contemporary Dance, Inc., 380 F.3d 624, 635 (2d Cir. 2004)
     (quoting 17 U.S.C. § 101)).


                                                    18
      
     15‐1778‐cv 
     Urbont v. Sony Music Entertainment 

 1   “Actual creative contributions or direction,” such as providing

 2   specific instructions to direct the work’s completion, “strongly

 3   suggest that the work is made at the hiring party's instance.”

 4   Id.; see Playboy Enters., Inc., 53 F.3d at 556 (holding that

 5   work was for hire based on Playboy’s specific instructions to

 6   independent contractor); Yardley v. Houghton Mifflin Co., 108

 7   F.2d 28, 30–31 (2d Cir. 1939) (explaining that customers who

 8   solicited and paid for photographer’s services owned copyright

 9   to the photographs taken).                The right to direct and supervise

10   the manner in which the work is carried out, moreover, may be

11   enough to satisfy the “instance” requirement even if that right

12   is never exercised.            Martha Graham, 380 F.3d at 635.

13           “The ‘expense’ component refers to the resources the hiring

14   party       invests     in    the     creation   of     the    work,”   in    order   to

15   “properly reward[] with ownership the party that bears the risk

16   with respect to the work’s success.”                  Kirby, 726 F.3d at 139–40.

17   One factor in this inquiry is the method of payment.                           We have

18   held that a hiring party’s payment of a sum certain in exchange

19   for    an    independent        contractor’s     work    satisfies      the   “expense”

20   requirement, while payment of royalties generally weighs against

21   finding a “work for hire” relationship.                       Playboy Enters., Inc.,

22   53 F.3d at 555.              In addition, we have, at least in some cases,

23   looked for indicators of a traditional employment relationship,

24   such as “the hiring party’s provision of tools, resources, or

                                                 19
      
     15‐1778‐cv 
     Urbont v. Sony Music Entertainment 

 1   overhead,” Kirby, 726 F.3d at 140, or the hired party’s “freedom

 2   to engage in profitable outside activities without sharing the

 3   proceeds       with      [the   hiring       party],”      Donaldson       Publ’g     Co.    v.

 4   Bregman, Vocco & Conn, Inc., 375 F.2d 639, 643 (2d Cir. 1967).

 5   “The absence of a fixed salary, however, is never conclusive,

 6   nor is the freedom to do other work . . . .”                               Picture Music,

 7   Inc.    v.    Bourne,       Inc.,      457    F.2d    1213,    1216    (2d     Cir.    1972)

 8   (citation omitted).

 9          Ultimately,          “[o]ur      case        law     counsels       against     rigid

10   application         of     these      principles.         Whether    the    instance        and

11   expense test is satisfied turns on the parties’ creative and

12   financial arrangement as revealed by the record in each case.”

13   Kirby, 726 F.3d at 140.

14          If the hiring party is able to satisfy the instance and

15   expense test it “is presumed to be the author of the work.”

16   Playboy Enters., Inc., 53 F.3d at 554.                       “That presumption can be

17   overcome, however, by evidence of a contrary agreement, either

18   written or oral.”           Id.

19                    2. Application of the Instance and Expense Test

20          The district court ruled that the Iron Man composition was

21   a “work for hire” as a matter of law.                       The court determined that

22   the    Iron    Man       composition     was    created       at    Marvel's   “instance”

23   because it was “developed to Marvel's specifications and for

24   Marvel's approval.”             Urbont, 100 F. Supp. 3d at 352.                 The court

                                                    20
      
     15‐1778‐cv 
     Urbont v. Sony Music Entertainment 

 1   noted that Urbont had no previous familiarity with the Marvel

 2   superheroes and he created the work from source material that

 3   was given to him by Stan Lee.                      Id.      Further, Marvel determined

 4   the    subject      matter       and    scope      of      Urbont’s    compositions,          and

 5   Marvel had the right to accept or reject his songs.                                    Id.    The

 6   district       court      also    concluded        that     the    work       was   created    at

 7   Marvel’s       “expense”         because    Urbont         received       a    fixed    sum    in

 8   exchange for his work.                Id.   That Urbont did not receive a fixed

 9   salary,      was    not    barred      from     undertaking         other      projects,      and

10   claimed to have received royalties were not sufficient in the

11   district court’s view to overcome the conclusion that the work

12   was created at Marvel’s expense.                     Id.

13          While the factors cited by the district court are clearly

14   probative of whether the work was for hire, there are other

15   factors that the district court did not explicitly consider.

16   Regarding the “instance” requirement, it appears beyond dispute

17   that Urbont created the Iron Man composition at the impetus of

18   Stan Lee and based on the characters of his television show.

19   Urbont testified, however, that he retained all of the creative

20   control over the project, as Lee was not permitted to modify the

21   work but only had the right to accept or reject it.                                 Cf. Kirby,

22   726 F.3d at 142 (holding work was for hire due in part to hiring

23   party’s      “active      involvement         in     the    creative      process,      coupled

24   with     its    power      to     reject      pages        and    request      that    they    be

                                                     21
      
     15‐1778‐cv 
     Urbont v. Sony Music Entertainment 

 1   redone”); Picture Music, Inc. v. Bourne, Inc., 457 F.2d 1213,

 2   1217 (2d Cir. 1972) (holding that work was for hire where hiring

 3   party “had the power to accept, reject, or modify [the hired

 4   party’s] work”).            In addition, Urbont claims that he approached

 5   Stan Lee, not the other way around, and he “wrote the songs on

 6   spec[ulation] hoping [Marvel] would use them.”                      A. 94.     Thus,

 7   according to Urbont, there was no prior working relationship

 8   between Urbont and Marvel, nor was there was any guarantee that

 9   Marvel      would    accept      his   work.     Cf.   Kirby,   726   F.3d   at    141

10   (noting evidence indicated that artist “did not work on ‘spec’

11   (speculation),” thus supporting the conclusion that work was for

12   hire).      These factors weigh against a finding that the work was

13   created at Marvel’s “instance.”

14          As     for     the      expense    factor,      Urbont   claims      that    he

15   independently recorded and produced the Iron Man theme song with

16   his own tools and resources, including a recording studio he

17   rented; he claims he was essentially paid only to cover his

18   costs, not to profit from the project.                   Cf. Kirby, 726 F.3d at

19   140 (suggesting that “the hiring party’s provision of tools,

20   resources, or overhead may be controlling”); Martha Graham, 380

21   F.3d at 638 (holding that hired choreographer’s use of dance

22   center’s       resources,         including     rehearsal   space     and    student

23   dancers, “significantly aided [her] in her choreography, thereby

24   arguably satisfying the ‘expense’ component of the ‘instance and

                                                22
      
     15‐1778‐cv 
     Urbont v. Sony Music Entertainment 

 1   expense’      test”).8          These     factors       support    the     inference     that

 2   Urbont “b[ore] the risk with respect to the work’s success,”

 3   Kirby, 726 F.3d at 140, although the fact that the Iron Man

 4   composition “built on preexisting titles and themes that Marvel

 5   had expended resources to establish,” id. at 143, would support

 6   the opposite conclusion.                  Finally, although Urbont was paid a

 7   fixed sum of $3000, bolstering the conclusion that the work was

 8   created       at    Marvel’s          expense,     he    also     claims     he   received

 9   royalties, which would undermine that same conclusion.                             See id.

10   at 140.

11          Considering all of these factors, we conclude that genuine

12   issues     of      material     fact     remain     as     to    whether    the   Iron   Man

13   composition         was    created       at   Marvel’s          instance    and   expense.

14   Urbont’s assertion that he “was not hired when [he] wrote the

15   songs”     but     instead      “wrote     the     songs    on    spec[ulation]     hoping


     8
       In Playboy Enterprises, we dismissed as irrelevant to the
     “expense” requirement factors that may be used to show that an
     artist worked as an independent contractor, such as whether the
     artist worked his own hours, hired his own assistants, and paid
     his own taxes and benefits. 53 F.3d at 555. Instead, we found
     the “expense” requirement to be satisfied “where a hiring party
     simply pays an independent contractor a sum certain for his or
     her work.”   Id.   We later criticized the Playboy Enterprises
     decision’s exclusive focus on the method of payment, however, as
     “a rather inexact method of properly rewarding with ownership
     the party that bears the risk with respect to the work’s
     success.” Kirby, 726 F.3d at 140. Ultimately, we cautioned in
     that case against “rigid application” of the instance and
     expense test in favor of examining “the parties’ creative and
     financial arrangement as revealed by the record in each case.”
     Id.
                                                   23
      
     15‐1778‐cv 
     Urbont v. Sony Music Entertainment 

 1   [Marvel] would use them,” A. 94, distinguishes this case from

 2   the arrangement between Marvel and an independently contracted

 3   artist which we held in Kirby was work for hire.                                There, we

 4   explained that “that Marvel and Kirby had a standing engagement

 5   whereby      Kirby     would     produce    drawings       designed     to     fit    within

 6   specific Marvel universes.”                     Kirby, 726 F.3d at 142.                 Thus,

 7   “[w]hen Kirby sat down to draw, . . . it was not in the hope

 8   that Marvel or some other publisher might one day be interested

 9   enough in them to buy, but with the expectation, established

10   through their ongoing, mutually beneficial relationship, that

11   Marvel would pay him.”                Id. at 142–43.             Urbont contends, by

12   contrast, that he was “not being paid as a job to write the

13   songs,” A. 93, but rather “[a]ll [he] wanted to do was to make

14   sure that [his] costs were covered[,] [and he] would license

15   this    material       to    [Marvel]      to    use.”     A.    95.      There      was    no

16   established working relationship or guarantee of payment.                                   As

17   Urbont explained, Marvel “had the right to like my songs or not

18   like my songs.              They could have rejected my songs.”                      A. 116.

19   Marvel did not pay Urbont until after it had accepted the Iron

20   Man composition.

21          Other     factors       further     undermine      the    conclusion      that      the

22   work    was     for    hire,     including       that    Marvel,    according        to    the

23   uncontradicted         testimony      of    Urbont,      which     we   must   credit       in

24   assessing       the     appellees’       summary        judgment    motion,       was      not

                                                     24
      
     15‐1778‐cv 
     Urbont v. Sony Music Entertainment 

 1   permitted to modify the work without Urbont’s permission, that

 2   Urbont       recorded          and    produced          the        composition           entirely

 3   independent        of    Marvel,      and   that       he    claims      to    have     received

 4   royalties in addition to a fixed sum of payment.                                        Together,

 5   these factors are sufficient to raise genuine issues of fact as

 6   to whether the work was for hire.

 7                   3. Existence of a Contrary Ownership Agreement

 8            As explained above, “once it is determined that a work is

 9   made for hire, the hiring party is presumed to be the author of

10   the work.”         Playboy Enters., 53 F.3d at 556.                           The independent

11   contractor bears the burden by a preponderance of the evidence

12   of   overcoming         this    presumption           with    evidence         of   a    contrary

13   agreement,        either       written      or    oral,       that       was    entered      into

14   contemporaneously with the work.9                     Id. at 554-55; see also Kirby,

15   726 F.3d at 143.

16          We conclude that the district court erred in concluding

17   that    Urbont      failed      as    a   matter       of    law    to    produce        evidence

18   sufficient to rebut the presumption that Marvel owned the work.

19   In so holding, the district court focused exclusively on the


     9
       The district court characterized the presumption that the work
     was made for hire as “almost irrebutable” and held Urbont’s
     claims to a “clear and convincing” burden of proof. Urbont, 100
     F. Supp. 3d at 353.    It is the law of this Circuit, however,
     that the plaintiff need only establish the existence of a
     contrary agreement by a preponderance of the evidence. Playboy
     Enters., Inc., 53 F.3d at 554–55.


                                                      25
      
     15‐1778‐cv 
     Urbont v. Sony Music Entertainment 

 1   1995 Settlement between the parties, reasoning that “the fact

 2   that Marvel entered into a licensing settlement with Urbont does

 3   not mean that Marvel has concluded or conceded that Urbont is

 4   the Composition's owner,” and that the existence of a settlement

 5   agreement          should       not          supplant    a     court’s       independent

 6   determination of copyright ownership.                        Urbont, 100 F. Supp. 3d

 7   at 353.         Even assuming that the Settlement agreement is not

 8   materially         probative          of   the    parties’    understanding     for    the

 9   reasons explained by the district court,10 Urbont offered other

10   evidence      in    support      of        his   position,   chiefly   his    deposition

11   testimony       that     Marvel        shared     Urbont’s    understanding     that   he

12   would own the rights to the Iron Man composition.11                          For summary

13   judgment purposes, the district court was required to accept

14   Urbont’s testimony as credible.                    Beatie, 123 F.3d at 710-11.          In


     10
        The district court determined, moreover, that the Settlement
     did not suffice to rebut Marvel’s ownership based on our
     decision   in  Gary    Friedrich  Enterprises,  LLC   v.  Marvel
     Characters, Inc., 716 F.3d 302, 316 (2d Cir. 2013), which held
     that the work for hire analysis should not turn on “after-the-
     fact” agreements intended to retroactively alter the parties’
     relationship.   Urbont, 100 F. Supp. 3d at 354.   Gary Friedrich
     Enterprises is not on point, however, as the parties attempted
     in that case to render a work for hire “ex post facto.”      716
     F.3d at 316. In this case, by contrast, the 1995 Settlement was
     offered as evidence to corroborate the existence of an earlier
     ownership agreement between the parties.
     11
        In denying Urbont’s motion for reconsideration, the district
     court acknowledged that it had failed explicitly to consider his
     testimony that an agreement existed, but it continued to reject
     his claim to ownership “as unsupported by anything beyond self-
     serving testimony.” Urbont, 2015 WL 3439244, at *1.
                                                      26
      
     15‐1778‐cv 
     Urbont v. Sony Music Entertainment 

 1   addition,        the      district       court        did   not   consider    evidence

 2   corroborating the existence of the agreement, including, inter

 3   alia, Urbont’s copyright registration in 1966, contemporaneously

 4   with the alleged ownership agreement, and his subsequent renewal

 5   of the registration in 1995; Urbont’s testimony that he received

 6   royalties for performances of the Iron Man composition; and his

 7   licensing of the Iron Man theme song for use in the 2008 Iron

 8   Man movie.           Based on this evidence, a reasonable jury could

 9   conclude by a preponderance of the evidence that an ownership

10   agreement existed between Urbont and Marvel.                      See Byrnie v. Town

11   of Cromwell, Bd. of Educ., 243 F.3d 93, 101 (2d Cir. 2001)

12   (“[I]n order to defeat summary judgment, the nonmoving party

13   must offer enough evidence to enable a reasonable jury to return

14   a verdict in its favor”).

15          We thus conclude that Urbont has raised genuine issues of

16   material        fact      with        respect    to     his   claim   of     copyright

17   infringement,          and    we      vacate    the    district   court’s    grant   of

18   summary judgment in favor of the appellees.12

19

20


     12
        Urbont contends, moreover, that he is entitled to summary
     judgment because the appellees failed to produce any evidence
     rebutting his evidence of an ownership agreement. The appellees
     have, however, produced evidence that Marvel did not share
     Urbont’s understanding of any such agreement, and, therefore,
     there remain questions of fact to be resolved.
                                                     27
      
     15‐1778‐cv 
     Urbont v. Sony Music Entertainment 

 1                                         C. State Law Claims

 2          Finally, Urbont claims that the district court erred in

 3   dismissing his New York law claims for copyright infringement,

 4   unfair competition, and misappropriation.                                 The district court

 5   held that the Iron Man recording is not a “sound recording”

 6   protected from preemption by the Copyright Act of 1976, but

 7   rather an accompaniment to an “audiovisual work” that is subject

 8   to preemption under 17 U.S.C. § 102(a)(6).

 9          One of the goals of the Copyright Act of 1976 was to create

10   a “national, uniform copyright law by broadly pre-empting state

11   statutory       and     common-law          copyright            regulation.”        Cmty.    for

12   Creative       Non-Violence,              490   U.S.        at    740     (citing    17    U.S.C.

13   § 301(a)).          Accordingly, the Copyright Act preempts state law

14   claims asserting rights equivalent to those protected within the

15   general scope of the statute.                     17 U.S.C. § 301(a).               The statute

16   provides an exception to its preemptive scope, however, in the

17   case of “sound recordings fixed before February 15, 1972,” which

18   remain subject to protection under state statutes or common law.

19   Id. § 301(c).

20          The Act defines “sound recordings” as “works that result

21   from    the    fixation       of      a    series      of    musical,      spoken,    or   other

22   sounds,       but   not     including           the    sounds       accompanying      a    motion

23   picture or other audiovisual work, regardless of the nature of

24   the     material         objects,          such        as        disks,    tapes     or     other

                                                       28
      
     15‐1778‐cv 
     Urbont v. Sony Music Entertainment 

 1   phonorecords, in which they are embodied.”                       17 U.S.C. § 101.

 2   “Audiovisual works,” by contrast, are “works that consist of a

 3   series of related images which are intrinsically intended to be

 4   shown by the use of machines, or devices such as projectors,

 5   viewers,      or    electronic         equipment,    together    with       accompanying

 6   sounds . . . .”            Id.        Urbont argues that he holds rights in a

 7   pre-1972 sound recording because a “separate sound recording . .

 8   . was made and exists wholly apart from the creation of the

 9   audiovisual works in question” as embodied in the “form of a

10   master tape” which he still possesses.                     Appellant’s Br. 46.        But

11   while Urbont may possess a “master tape,” it is undisputed that

12   prior to the release of the Supreme Clientele album in 2000, the

13   sound recording of the Iron Man theme song was never released as

14   an independent audio recording without a visual component.                            The

15   legislative history of the 1976 Act states that “[t]he purely

16   aural performance of a motion picture sound track, or of the

17   sound     portions        of     an    audiovisual    work,    would    constitute      a

18   performance of the ‘motion picture or other audiovisual work’;

19   but, where some of the sounds have been reproduced separately on

20   phonorecords,         a    performance        from   the    phonorecord       would   not

21   constitute         performance         of   the   motion   picture     or   audiovisual

22   work.”       H.R. Rep. No. 94-1476, at 64 (1976).                    It is clear in

23   this case that the allegedly infringing work could only have



                                                   29
      
     15‐1778‐cv 
     Urbont v. Sony Music Entertainment 

 1   been copied from the audiovisual work, and therefore constitutes

 2   infringement of the audiovisual work.

 3           Implicit       in    Urbont’s      argument      is    the   idea       that   because

 4   copyright inheres at the moment of creation, he has a separate

 5   copyright in the sound recording of the Iron Man theme song,

 6   because it was recorded and fixed in a master tape prior to

 7   being incorporated into the audiovisual work.                             While the plain

 8   language of the statute does not resolve this issue, there are

 9   two reasons why we find this argument unpersuasive.                                First, at

10   the moment of creation, when the song was recorded and embodied

11   in a master tape, it was intended to be a part of a larger

12   audiovisual work, as it was recorded in Munich only after Marvel

13   accepted the work and agreed that it would be a part of the

14   audiovisual work.             A. 119.       Second, while it is true that the

15   song was recorded before it was combined with the visual portion

16   of the work, this is true of nearly all sound tracks.                                       If

17   Urbont’s        theory      was       correct,    then    no    audio     portion      of   an

18   audiovisual work would be preempted by the 1972 Act, save for

19   those     few       that    are   recorded       simultaneously          with    the   visual

20   component.            This    narrow       interpretation         does    not     mesh    with

21   Congress’s intent to broadly preempt state law protections by

22   creating        a    “national,         uniform       copyright      law.”        Cmty.     for

23   Creative Non-Violence, 490 U.S. at 740.



                                                      30
      
     15‐1778‐cv 
     Urbont v. Sony Music Entertainment 

 1          Urbont’s contention that he composed and recorded the Iron

 2   Man theme song “without ever viewing the television program, and

 3   without interaction from anyone associated with the television

 4   show,” Appellant’s Br. 46, is belied by his own testimony that

 5   the work was created at the impetus of, and based on source

 6   material from, Stan Lee, someone clearly associated with the

 7   television program.              Urbont further asserts that Marvel agreed

 8   that he would own the Iron Man sound recording separate and

 9   apart from the television program, but the existence of any such

10   agreement is irrelevant to determining whether the recording is

11   a “sound recording” or part of an “audiovisual work” as defined

12   in the statute.

13          Finally, Urbont argues that if the Iron Man sound recording

14   is considered to be part of the audiovisual work, then Marvel

15   would have no reason to obtain a license from Urbont to use the

16   theme song.           Legislative history to the 1972 Sound Recording

17   Act, however, which created a copyright in sound recordings,

18   indicates       that     in    excluding   tracks   accompanying   audiovisual

19   works from the definition of “sound recording,” Congress “d[id]

20   not intend to limit or otherwise alter the rights that exist

21   currently in such works,” such as Urbont’s rights to the Iron

22   Man composition.            H.R. Rep. No. 92-487, at 6 (1971).        If, for

23   example, “there is an unauthorized reproduction of the sound

24   portion of a copyrighted television program fixed on video tape,

                                                31
      
     15‐1778‐cv 
     Urbont v. Sony Music Entertainment 

 1   a suit for copyright infringement could be sustained under [the

 2   1909 Act] rather than under the provisions of [the 1972 Sound

 3   Recording Act], and this would be true even if the television

 4   producer had licensed the release of a commercial phonograph

 5   record incorporating the same sounds.”                 Id.

 6          We conclude, therefore, that the Iron Man recording is not

 7   a separate sound recording but rather part of an audiovisual

 8   work for purposes of preemption under the Copyright Act, and the

 9   district court properly dismissed Urbont’s state law claims on

10   this basis.

11                                         IV. Conclusion

12          For the foregoing reasons, we VACATE the district court’s

13   grant of summary judgment in favor of appellees on Urbont’s

14   federal Copyright Act claim.                 We AFFIRM the court’s dismissal of

15   his     state      law     claims      for    copyright      infringement,    unfair

16   competition,         and     misappropriation.         We     REMAND   for   further

17   proceedings consistent with this opinion.                    Each party shall bear

18   its own costs on appeal.




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