Corbello v. Valli, No. 12-16733 (9th Cir. 2015)Annotate this Case
Rex Woodard entered into a written agreement to ghostwrite the autobiography (the "Work") of Thomas DeVito, one of the original members of the "Four Seasons" band later known as "Jersey Boys." After Woodward passed away, DeVito registered the Work with the U.S. Copyright Office solely under his own name in 1991. DeVito and another former "Four Seasons" band member, Nicholas Macioci, executed an agreement with two of their former bandmates, Frankie Valli and Bob Gaudio, which granted Valli and Gaudio the exclusive rights to use aspects of their lives to develop a musical stage performance (the "Play") about the "Four Seasons." Plaintiff, Woodward's widow, subsequently filed suit alleging that the Play constitutes, at least in part, a "derivative work" of the DeVito autobiography, the right to create which resides exclusively in the copyright-holders of the underlying work, and their lawful successors, assignees, and licensees. The court concluded that the 1999 Agreement constitutes a transfer of ownership of DeVito's derivative-work right in the Work to Valli and Gaudio; Sybersound Records, Inc. v. UAV Corp. presents no obstacle to DeVito's exclusive transfer of his derivative-work right to Valli and Gaudio under the 1999 Agreement; copyright co-owners must account to one another for any profits earned by exploiting that copyright; and, therefore, the district court erred in rejecting plaintiff's claims for accounting and declaratory relief. Further, defendants have necessarily failed to establish the existence of a license as an affirmative defense to plaintiff's infringement action. The court also concluded that summary judgment for defendants on plaintiff's claims of infringement under foreign law grounds must be reversed. Accordingly, the court reversed the district court's grant of summary judgment in favor of defendants, vacated its assessment of costs against plaintiff, and remanded for further proceedings.
Court Description: Copyright. The panel reversed the district court’s summary judgment and vacated its assessment of costs against the plaintiff in a copyright case involving the musical “Jersey Boys.” Plaintiff Donna Corbello is the heir of Rex Woodard, ghostwriter of an unpublished autobiography of Thomas DeVito, a former member of the band the “Four Seasons.” In 1999 DeVito and another former band member, Nicholas Macioci, executed an agreement granting two of their former bandmates, Frankie Valli and Bob Gaudio, the exclusive right to use aspects of their lives related to the Four Seasons, including their biographies, in the development of a musical. Applying New York law, the panel held that the 1999 agreement constituted a transfer of ownership of DeVito’s derivative-work right in the autobiography, rather than a 4 CORBELLO V. VALLI nonexclusive license, to Valli and Gaudio. Distinguishing Sybersound Records, Inc. v. UAV Corp., 517 F.3d 1137 (9th Cir. 2008), the panel held that a co-owner of a copyright may transfer that right without permission from his co-owner. The panel held that because copyright co-owners must account to one another for any profits earned by exploiting that copyright, the district court erred in rejecting Corbello’s claims for accounting and declaratory relief. The panel also concluded that the defendants had failed to establish the existence of a license as an affirmative defense to Corbello’s copyright infringement claims. The panel stated that its conclusion that the 1999 agreement constituted a transfer of ownership of DeVito’s derivative-work right would ordinarily preclude Corbello’s infringement claims against Valli and Gaudio because a co-owner of a copyright cannot be liable to another co-owner for infringement. But a material issue of fact remained as to whether the agreement’s reversionary clause later terminated Valli and Gaudio’s ownership right. The panel held that a grant of summary judgment was not appropriate on the ground of an implied license based on DeVito’s conduct. The panel reversed the district court’s grant of summary judgment on Corbello’s claims for accounting, declaratory relief, and copyright infringement and vacated the district court’s assessment of costs against Corbello. It remanded the case for further proceedings. Concurring in the judgment, Judge Sack agreed that the case must be remanded for further proceedings. He disagreed, however, that the word “biographies” in the 1999 agreement unambiguously included the manuscript of the autobiography ghost written by Woodard, and that the 1999 CORBELLO V. VALLI 5 agreement therefore transferred certain derivative rights in the autobiography to Valli and Gaudio. Judge Sack would conclude that the language in the agreement was ambiguous under New York law. He also wrote that, even if the 1999 agreement unambiguously transferred DeVito’s interest in the autobiography, Sybersound compels the conclusion that the transfer effected only a nonexclusive, rather than an exclusive, license to use the autobiography for the creation of a musical.