Black And White Entertainment, Inc. v. Marvel Entertainment, LLC
USDC SD NY May 2, 2022
The District Court for the Southern District of New York recently entered an order dismissing claims by Black and White Entertainment, Inc., doing business as Rah Muzic and Rah Records, against Sony Pictures Entertainment Inc., Sony Pictures Releasing Corporation, Sony Pictures Home Entertainment Inc., Columbia Pictures Industries, Inc., Marvel Entertainment LLC, and Tencent Pictures (USA) LLC. The claim alleged copyright infringement based on use of the song and recording Super Hyphy a/k/a Super Hyphie in the 2018 motion picture Venom.
The plaintiffs, music publishers, obtained a copyright registration for the song and sued the studios behind the picture. Also named as defendants were the song’s creators and authors, Charles K. Williams (“Keak da Sneak”) and Sultan H. Banks (“Traxamillion”). Under US copyright law, the creator of an original work is generally considered its author and the owner of the entire “bundle of rights” that make up copyright. The employer of a creator is considered the owner of works created during the employment, but the creators in this case were independent, not employees. Someone other than an independent creator, however, may be considered a work’s author when a work is created under the “Work Made for Hire” doctrine.“Works Made for Hire”
The “Work Made for Hire” doctrine applies where an independent creator’s work is specifically commissioned for use in specific projects, which include use in a film or television production. Critically for this case (and indie authors of all kinds of creative works, not just music), however, is the requirement that the client and the creator have a written agreement before the work is created. The contract must state that the work will be considered a “Work Made for Hire” for the client to be considered the author for copyright law purposes.
In the Venom case, the music publishers based their claim of copyright ownership on allegations that the song’s authors signed agreements conferring ownership. But they produced only an unsigned document, which is insufficient to prove a transfer of the copyright. The court spelled out the reasons that Mr. Williams and Mr. Banks (the “Authors”) never transferred their copyright in the song to Black and White in two paragraphs of its order dismissing the case:
First, the “Work Made for Hire” doctrine could not be used to support the music publisher’s claim because “neither of the Authors has ever signed or executed any agreement, note, memorandum or any other form of written instrument conveying, transferring or conferring copyright ownership over any sound recording or musical work to [Black and White], or to any of [Black and White]’s principals, owners, officers, directors, employees or agents”. Without a signed written contract, a work cannot be a “Work Made for Hire.”
Second, “neither of the Authors has ever been an employee of [Black and White] or any of its principals, owners, officers, directors, employees or agents for purposes of the Copyright Act . . . .” As independent creators, they owned the copyright in the song as of the moment it became fixed in a tangible medium (which usually means written down in one form or another). As a result, the court declared Black and White’s copyright registration in Super Hyphy null and void and ordered the Copyright Office to cancel it.
The lesson for indie film producers and music creators looking to collaborate on adding great music to compelling stories? Be sure that your production contracts for composers employed on our project are fully executed and include appropriate “Work Made for Hire” and copyright assignment sections. If you’re only acquiring rights to a single song or recording, be sure your film’s chain of title includes a written (and signed) license agreement.
Read the full decision here.
Questions about indie film chain of title, whether the “Work Made for Hire” doctrine applies to your project, or other copyright law issues? Contact DeepFocus Law at (503) 975-8298 or schedule an entertainment attorney consultation.
Still from the “Creature from the Black Lagoon” (1953),
Print Collection, State Library and Archives of Florida.