IP Law Daily Four Seasons band member’s autobiography not infringed by ‘Jersey Boys’ musical
Wednesday, September 9, 2020

Four Seasons band member’s autobiography not infringed by ‘Jersey Boys’ musical

By Thomas Long, J.D.

Because the copyright owner had held the book out as nonfiction, the "asserted truths" doctrine precluded the owner from later claiming copyright protection for facts contained in it.

The members of the pop music quartet The Four Seasons and the producers of the hit musical "Jersey Boys" were entitled to post-verdict judgment as a matter of law in their favor on copyright infringement claims brought by the widow of an author who assisted Four Seasons member Tommy DeVito in writing his autobiography, "Tommy DeVito—Then and Now," portions of which were used in the musical, the U.S. Court of Appeals in San Francisco has determined. A decision of the federal district court in Las Vegas was affirmed. The nonfiction biography was structured around historical facts and events that were not themselves copyrightable, the appellate court held. Although the copyright owner asserted during litigation that aspects of the work were actually fictional, the appellate court adopted an "asserted truths" doctrine precluding an author who holds a work out as being nonfiction from later claiming that elements of the work were invented and entitled to copyright protection. The only similarities between the autobiography and the musical consisted of historical facts, common phrases, and scenes-a-faire, or elements that were treated as facts in the autobiography and were thus unprotected by copyright (Corbello v. Valli, September 8, 2020, Berzon, M.).

In 2007, Donna Corbello, the widow and heir of author Rex Woodard, sued Tommy DeVito and others who were connected to the "Jersey Boys" musical. In the 1980s, Woodard conducted a series of interviews with DeVito, Frankie Valli, and others, in connection with an autobiography of DeVito that eventually was ghostwritten by Woodard but was never published. Woodard died in 1991, shortly after completing the book, and Corbello continued to seek publication of the autobiography. Valli and fellow Four Seasons member Bob Gaudio allowed a production company to use The Four Seasons name and the names, likenesses, and life stories of its band members for the creation of the musical "Jersey Boys." The musical debuted on Broadway in 2005 and ran for over 10 years, toured the country repeatedly, and was adapted as a movie in 2014.

DeVito acknowledged that he had given the writers and producers of "Jersey Boys" a copy of the autobiography to use in their research. Corbello contended that "Jersey Boys" was an unauthorized derivative work that was based on and infringed the book. Following numerous pretrial motions, an appeal, and a trial, a jury decided that "Jersey Boys" infringed Corbello’s copyright in the book. The jury also found that none of the use was fair use. DeVito moved for judgment as a matter of law.

The district court determined that the defendants were entitled to protection under the fair use defense, as a matter of law. All factors weighed in favor of a fair use finding except for the commercial nature of the challenged work. The significance of this factor was diminished by the transformative nature of the musical, in the district court’s view. The transformation in this case was both a change of purpose and a change of character. The musical's purpose was different from that of the autobiography when the script (most of which was not taken from the autobiography) was incorporated into musical performances using material in which the plaintiff had no copyright. The purpose of the autobiography was primarily to inform, whereas the purpose of the musical was primarily to entertain, the district court said. The district court also noted that much of the alleged infringement concerned unprotected elements of the work.

Corbello appealed. The Ninth Circuit affirmed on the ground that the musical did not infringe the autobiography. The appellate court did not reach the issue of fair use.

Infringement—similarity analysis. The appellate court made note of the basic principle that similarity only regarding unprotected elements of a work does not give rise to copyright infringement liability. Prior to trial, the district court conducted an extrinsic analysis of the similarities between the musical and the autobiography and, after filtering out unprotected elements, such as historical facts and ordinary phrases, concluded that there were 12 potentially protectable points of similarity that could be sent to the jury. In its post-trial order granting JMOL for the defendants, the district court decided that most of the 12 similarities were aspects of the book that were not protectable by copyright. The district court reached this conclusion in the course of examining the fair use defense. The appellate court decided that all 12 similarities considered by the jury were noninfringing, on the basis of either lack of copyright protection or the doctrine of copyright estoppel.

Unprotectable elements. The Ninth Circuit agreed with the district court’s description of the autobiography as "a work of historical fact, as recounted by DeVito with the assistance of Woodard’s writing skills." The creative aspects of the book related to its writing style and presentation, rather than character, plot, or setting. Neither Woodard nor DeVito claimed to have created characters, plot lines, settings, or other elements of the story. According to the appellate court, six similarities between the play and the autobiography failed the extrinsic test for substantial similarity because they involved unprotectable elements. These were, in brief, (1) the introduction of Tommy DeVito; (2) the introduction of the song "Sherry"; (3) the introduction of the song "Big Girls Don’t Cry"; (4) comparisons between The Four Seasons and The Beatles; (5) the introduction of the song "Dawn"; and (6) a description of the Four Seasons’ induction into the Rock and Roll Hall of Fame in 1990. All of these points of similarity involved only historical facts and ordinary phrases that were not protected by copyright.

Copyright estoppel—"asserted truths" doctrine. Under the doctrine of "copyright estoppel"—which had been employed by the Second and Seventh Circuits, as well as several district courts in the Ninth Circuit—elements of a work that are presented as fact are treated as fact, even if the party claiming infringement contends that the elements are actually fictional. "An author who holds their work out as nonfiction thus cannot later claim, in litigation, that aspects of the work were actually made up and so are entitled to full copyright protection," the Ninth Circuit panel explained.

However, in the court’s view, "estoppel" was not an apt descriptor for the doctrine because detrimental reliance was not an element, as was typically the case in an estoppel scenario. In addition, the doctrine at issue here did not require a showing that the copyright owner acted with an improper purpose. Accordingly, the court decided to refer to the rule as the "asserted truths" doctrine, reasoning that it was "the author’s assertions within and concerning the work that the account contained in the book is truthful that trigger its application."

The text of the autobiography explicitly represented it as being historically accurate, not historical fiction. The book’s narrator—DeVito—describes the work early on as the "complete and truthful chronicle of the Four Seasons." Woodard and Corbello both had repeatedly touted the factual nature of the work to potential publishers. The court rejected Corbello’s argument that the doctrine should not apply to unpublished works (such as the autobiography), pointing out that no case law supported this limitation. In the court’s view, the work’s "unequivocal representations of truthfulness" were "central to the manuscript’s claim to readers’ attention and appreciation." Those representations applied to the book as a whole, and its status as an unpublished work did not change this fact.

The asserted truths doctrine also applied to dialogue in the work that was represented as entirely truthful, the court said, explaining that "even dubious assertions of truthfulness can prevent an author from later claiming that part of a work is fiction." The court reasoned, "Requiring readers of purported nonfiction to investigate the accuracy of each quoted statement in a work that presents itself as completely true and accurate nonfiction would frustrate the pro-creation goals of copyright law."

The court concluded that the remaining six points of similarity failed the extrinsic test for substantial similarity because, whether or not actually factual, they involve—sometimes in combination with other nonprotected features—elements of the work held out as facts and so not protectable. These similarities involved (1) DeVito’s introduction of Valli to DeVito’s friend Mary Mandel, and Mary’s characterization; (2) DeVito’s intercession after Valli’s arrest; (3) a "Roman orgy" scene; (4) a fake murder staged in Valli’s car by attempted extortionists; and (5) and (6) dialogue surrounding the song title and subject matter of the song "Walk Like a Man."

Conclusion. "Given the Work’s emphatic representation that it is a nonfiction autobiography, the Play did not infringe on any of the protected expressive elements of the Work," the court said, "even if the writers of the Play ‘appropriated [Woodard’s] historical research.’" Therefore, the appellate court affirmed the district court’s grant of JMOL.

This case is No. 17-16337.

Attorneys: Todd Daniel Erb (Lewis Roca Rothgerber Christie LLP) for Donna Corbello. Maximiliano D. Couvillier III (Kennedy & Couvillier, PLLC) for Frankie Valli.

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