Knowledge Library Jersey Boys creators may be liable for copyright infringement
IP Law
Wednesday, February 11, 2015

Jersey Boys creators may be liable for copyright infringement

Franki Valli, Bob Gaudi, and other individuals and entities that were associated with the Broadway musical Jersey Boys may have infringed the copyright to an unpublished autobiography of Thomas DeVito, a founding member and lead guitarist of the Four Seasons (the group on which the musical was based), the U.S. Court of Appeals in in San Francisco has decided (Corbello v. DeVito, February 10, 2015, O’Scannlain, D.). The judgment of the federal district court in Reno, Nevada, was reversed in part, vacated in part, and remanded for further proceedings. Judge Sack issued a concurring opinion.

The Ninth Circuit ruled that Thomas DeVito had transferred a copyright interest in his autobiography, a work that was ghostwritten by journalist Rex Woodward, when he and Nicholas Macioci granted their former bandmates Franki Valli and Bob Gaudio an “exclusive right to use” their “biographies.” Because a reversionary clause in the controlling agreement may have terminated the ownership rights of Valli and Gaudi (who subsequently allowed a production company to use the Four Seasons and the names, likenesses, and life stories of its band members for the creation of Jersey Boys), the defendants might have infringed the copyrights of Donna Corbello, Woodward’s widow and legatee, who claimed to be a “duly registered co-author and co-claimant” of the unpublished DeVito autobiography.

Because the district court had erroneously granted summary judgment to the defendants on the basis of a non-exclusive, implied license to Valli and Gaudio, the grant of summary judgment was reversed, the assessment of costs against Corbello was vacated, and the case was remanded for further proceedings.

Background. Based on various accounts from writers, actors, and other individuals who had attributed the inspiration for Jersey Boys, in part, to DeVito’s unpublished autobiography, Corbello sued DeVito for an equitable accounting, a declaratory judgment, and breach of contract. In an amended complaint, Corbello asserted twenty claims against DeVito, Valli, Gaudio, and the writers, directors, and producers of Jersey Boys. The amended complaint included copyright infringement claims under U.S. and foreign law.

Corbello’s arguments. Corbello alleged that the Jersey Boys musical was, at least in part, a “derivative work” that was based on DeVito’s unpublished autobiography. Because Jersey Boys was derivative, Corbello argued, the right to create the musical resided “exclusively” in the holders of the copyright to DeVito’s autobiography (Woodward and DeVito) and to their lawful successors, assignees, and licensees. According to Corbello, she—as the legatee of Woodward’s joint copyright in the unpublished work—deserved a share of the profits that the defendants had reaped by licensing and assigning, or (depending on the defendant) infringing, the underlying rights.

Trial court decision. The district court granted summary judgment to the defendants on Corbello’s claims for copyright infringement. It also granted summary judgment on her claims for an equitable accounting and declaratory relief. In doing so, the court concluded that: (1) DeVito’s agreement with Valli and Gaudio was a “selectively exclusive license” to use DeVito’s autobiography; it was not an assignment of DeVito’s copyright interest in it; (2) the agreement and DeVito’s conduct sufficiently licensed the defendants to use the autobiography in developing the Jersey Boys musical; and (3) because U.S. law governed whether the defendants possessed a valid license to use the autobiography, Corbello’s claims for copyright infringement under foreign law failed.

On appeal, Corbello challenged all of those conclusions. She also challenged the district court’s taxation of costs against her.

Ninth Circuit analysis. Applying New York law, the Ninth Circuit ruled that the co-owner of a copyright could transfer his interest in a protected work without any permission from the other co-owner. The court further held that the district court had erred when it rejected Corbello’s claims for an accounting (and for declaratory relief) because copyright co-owners had to account to one another for any profits that were earned by exploiting their copyright.

In addition, the Ninth Circuit found that the defendants had failed to establish the existence of a license as an affirmative defense to Corbello’s infringement claims. The court noted that DeVito’s transfer of ownership in his derivative-work right would ordinarily preclude Corbello’s infringement claims against Valli and Gaudio because the co-owner of a copyright could not be liable to another co-owner for copyright infringement. Nevertheless, a material issue of fact remained with respect to whether a reversionary clause in the agreement later terminated the ownership rights of Valli and Gaudio. The court thus ruled that a grant of summary judgment based on an implied license was not warranted.

Because the appellate court reversed the district court’s grant of summary judgment, the award of costs against Corbello was vacated and the issue was remanded for reconsideration after the remaining issues were addressed by the district court.

Concurrence. Second Circuit Judge Robert D. Sack, who was sitting by designation, agreed that the case should be remanded for further proceedings. Nevertheless, Judge Sack issued a separate opinion because he did not agree that: (1) the word “biographies” in DeVito’s agreement with Valli and Gaudio “unambiguously” included the manuscript of DeVito’s ghostwritten autobiography and (2) the agreement thus transferred certain derivative rights in the autobiography to Valli and Gaudio.

Ultimately, Judge Sack concluded that the agreement was ambiguous under New York law. However, even if the agreement had unambiguously transferred DeVito’s interest in the unpublished autobiography, the transfer merely effected a non-exclusive license to use the autobiography for the creation of a musical.

The case is Nos. 12-16733 and 13-15826

Attorneys: Gregory H. Guillot (Gregory H. Guillot, P.C.) for Donna Corbello. Daniel M. Mayeda (Leopold, Petrich & Smith, P.C.) for Thomas DeVito; Frankie Valli; Robert Gaudio; Marshall Brickman; Eric Elice; Des McAnuff; DSHT, Inc.; FKA Dodger State Holding Theatricals, Inc.; Dodger Theatricals, Ltd.; JB Viva Vegas, LP; Michael David; Jersey Boys Broadway Limited

Partnership; Jersey Boys Records Limited Partnership; Skunk, Inc.; and Getting Home, Inc.

Companies: DSHT, Inc.; FKA Dodger State Holding Theatricals, Inc.; Dodger Theatricals, Ltd.; JB Viva Vegas, LP; Jersey Boys Broadway Limited Partnership; Jersey Boys Records Limited Partnership; Skunk, Inc.; Getting Home, Inc.

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