Donna Corbello v. Frankie Valli
777 F.3d 1058
| 9th Cir. | 2015Background
- In 1988 Rex Woodward agreed to ghostwrite Thomas DeVito’s autobiography (the "Work"); Woodward died in 1991 and his widow Donna Corbello later succeeded to his copyright interest.
- DeVito registered the Work in 1991 solely in his name; Corbello later secured an amended registration listing Woodward and DeVito as coauthors and co-claimants.
- In 1999 DeVito and Nicholas Macioci signed an agreement granting Frankie Valli and Bob Gaudio the "exclusive right to use" specified "Materials," defined to include "biographies," to develop a theatrical production about The Four Seasons (the 1999 Agreement).
- Valli and Gaudio later entered a 2004 production agreement; the musical Jersey Boys debuted on Broadway in 2005 and achieved commercial success.
- Corbello sued, alleging the Play was a derivative work of the Work and asserting claims for equitable accounting, declaratory relief, and copyright infringement; the district court granted summary judgment for defendants on those claims.
- The Ninth Circuit reviewed whether the 1999 Agreement transferred DeVito’s derivative-work copyright interest (ownership) in the Work or merely granted a license, and whether defendants retained rights under a reversion clause or by implied license.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the 1999 Agreement transferred DeVito’s copyright ownership (derivative-work right) in the ghostwritten autobiography or merely granted a license | Corbello: "biographies" in the 1999 Agreement unambiguously includes the written Work, effecting a transfer of DeVito’s derivative-work right | Appellees: "biographies" means general life story or summary; at most an exclusive license, not an ownership transfer | Court: "biographies" unambiguously covers the written Work and the Agreement transferred DeVito’s derivative-work right to Valli and Gaudio (transfer of ownership interest) |
| Whether Sybersound prevents a co-owner (DeVito) from transferring exclusive interests without co-owner consent | Corbello: DeVito could transfer his own derivative-work right and co-owners must account for profits | Appellees: Sybersound bars a unilateral transfer of an exclusive right by one co-owner | Court: Sybersound limits standing of assignees but does not bar a co-owner from transferring his own exclusive statutory interest; Sybersound does not defeat the transfer here |
| Whether defendants can assert a license defense (express or implied) to infringement | Corbello: No valid license if ownership was transferred; if transfer later reverted, defendants infringed | Appellees: 1999 and 2004 Agreements and conduct created an effective license; also implied license by delivery and conduct | Court: Because 1999 Agreement transferred ownership, defendants failed to establish an express license defense; genuine dispute of fact exists whether reversion occurred and whether any implied license was granted—summary judgment inappropriate on infringement claims |
| Whether foreign-law infringement claims and award of costs survive | Corbello: foreign claims valid if no valid U.S. license; challenges costs award | Appellees: U.S. law governs and license defense defeats foreign claims; district court correctly taxed costs | Court: Reversed summary judgment on foreign claims (because ownership transfer alters analysis) and vacated costs award pending remand |
Key Cases Cited
- Oddo v. Ries, 743 F.2d 630 (9th Cir. 1984) (co-owners must account to each other for profits from licensing/use)
- Sybersound Records, Inc. v. UAV Corp., 517 F.3d 1137 (9th Cir. 2008) (standing limits for assignees of purportedly exclusive rights granted by a single co-owner)
- Silvers v. Sony Pictures Entm’t, Inc., 402 F.3d 881 (9th Cir. 2005) (copyright rights are divisible and separately owned and enforceable)
- Bagdadi v. Nazar, 84 F.3d 1194 (9th Cir. 1996) (copyright rights are divisible and transferable)
- Gardner v. Nike, Inc., 279 F.3d 774 (9th Cir. 2002) (section 201(d) allows transfer of fractions of ownership interest)
- Worldwide Church of God v. Phila. Church of God, Inc., 227 F.3d 1110 (9th Cir. 2000) (existence of a license is an affirmative defense to infringement)
- Davis v. Blige, 505 F.3d 90 (2d Cir. 2007) (co-owners may sue for infringement without joining other co-owners)
- Asset Marketing Sys., Inc. v. Gagnon, 542 F.3d 748 (9th Cir. 2008) (factors for implied license; license inference depends on creator’s intent and conduct)
- Funky Films, Inc. v. Time Warner Entm’t Co., L.P., 462 F.3d 1072 (9th Cir. 2006) (substantial similarity/infringement analysis in derivative-work disputes)
- Cusano v. Klein, 264 F.3d 936 (9th Cir. 2001) (vacatur/remand of costs when judgment reversed)