By Joseph Arshawsky, J.D.
The members of the Four Seasons and the producers of the hit jukebox musical "Jersey Boys" were awarded post-verdict judgment as a matter of law (JMOL) because their use of the unpublished autobiography "Tommy DeVito—Then and Now" (the "Work") was fair use, the federal district court in Las Vegas has ruled. The court granted a new trial because the trial evidence did not support the jury’s finding that: (1) ten percent of the success of the play was attributable to protected elements that were copied from the Work and (2) Tommy DeVito did not grant an implied nonexclusive license to use the Work to create the musical. Finally, the court allowed Tommy DeVito to release his royalties from escrow (Corbello v. DeVito, June 14, 2017).
Works at issue. 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. Valli and Bob Gaudio allowed a production company to use The Four Seasons and the names, likenesses, and life stories of its band members for the creation of the musical "Jersey Boys," which had become a Broadway hit by late 2006. The writers and producers of "Jersey Boys" allegedly had access to the Work, and Woodard asserted that "Jersey Boys" was an unauthorized derivative work that was based on and infringed the Work. Woodard filed claims for copyright infringement in connection with productions of the musical in the United States, the United Kingdom, Canada, and Australia, and he sought an accounting of profits.
Following numerous pretrial motions, an appeal, and a trial, a jury found that "Jersey Boys" infringed plaintiff Donna Corbello’s copyright in the "Work." The jury also found that none of the use was fair use. Finally, the jury found that ten percent of the success of the "Jersey Boys" musical was attributable to the defendants’ infringement of the Work. Before the court was Defendants’ renewed motion for JMOL and their motion for new trial. In addition, DeVito asked the court to vacate part of a previous order requiring his royalty payments from the defendants to be placed in escrow because he had settled with the plaintiff. The court granted all of the motions, at least in part.
Fair use. The court examined the evidence under the four "fair use" factors that were established in 1985 by the U.S. Supreme Court in Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 560–61 (citing 17 U.S.C. §107). The court started with the most important fourth factor—the effect on the potential market for or value of the copyrighted work—and noted that Wooodward, DeVito, the plaintiff, and the plaintiff’s sister had been unable to find any company that was interested in publishing the Work, despite their various attempts to do so between 1990 and 2005, because interest in the Four Seasons was not great enough to make sales of the Work profitable. Under those circumstances, the fourth factor "greatly" favored a finding of fair use. To the extent the Work was possibly profitable today, it was "almost certainly only because of the play," which contained only a minimal percentage of the creative expression that was found in the Work. If anything, the play increased the value of the Work.
The first factor, commercial use, generally weighed against a finding of fair use, but the second factor, the biographical nature of the Work, favored fair use. The court acknowledged that the unpublished nature of a work normally weighed against a finding of fair use, but a work that was unpublished only because it was unpublishable (despite great effort) presented an atypical situation. That type of work was not available to the public because it was not commercially viable, the court explained. Because the unpublished nature of the Work in this case did not overshadow its biographical nature, the court found that the second factor favored fair use.
The court next considered the third "fair use" factor: the substantiality of the portion of the copyrighted work that was used in relation to the copyrighted work as a whole. The court reviewed in detail 12 similarities between the work and the musical. At most, the jury could have found about 145 creative words to have been copied from the Work to the play, whether as dialogue or creative descriptions of events. Those 145 words constituted about 0.2 percent of the approximately 68,500 words in the Work. This factor thus strongly favored a finding of fair use, at least where the "heart" of the Work was not infringed. Because the Work was biographical in nature, its "heart" consisted of unprotected facts. The court stressed that it was not saying that Woodward was not a good writer; it was merely saying that there was no evidence of any market for his writing "in-and-of-itself." He was not a known author. The "heart" of the Work—the aspect that was likely to attract buyers—was the unprotected historical information that was conveyed to Woodward by DeVito.
Finally, the more transformative the new work, the less significant the other factors (such as commercialism) would be. The transformation in this case was both a change of purpose and a change of character. The screenplay’s purpose was different from that of the Work when the script (most of which was not taken from the Work) was incorporated into musical performances using material in which the plaintiff had no copyright. The purpose of the Work was primarily to inform. The purpose of the musical, however, was primarily to entertain. The transformative nature of the use was therefore significant. To the extent that the character and purpose of the musical differed from the character and purpose of the Work, the importance of any factors that counseled against a finding of fair use were diminished. Ultimately, the court found that the defendants were entitled to a judgment of fair use as a matter of law, but it rejected other grounds for the renewed motion for JMOL.
New trial. The court granted a new trial because the verdict was against the clear weight of the evidence—specifically, the finding that ten percent of the success of the play was attributable to protected elements that were copied from the Work. The court also granted a motion for new trial on the issue of an implied license, which it admitted was due to the court’s own mistake.
The court granted DeVito’s unopposed motion to release funds from escrow.
The case is No. 2:08-CV-0867-RCJ-PAL.
Attorneys: Gregory H. Guillot (Gregory H. Guillot, PC) for Donna Corbello. Booker T. Evans, Jr. (Ballard Spahr LLP) for Thomas Gaetano DeVito.
MainStory: TopStory Copyright NevadaNews
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