Lead Opinion
Opinion by Judge O’SCANNLAIN; Concurrence by Judge SACK.
OPINION
We must decide whether a contractual grant of the exclusive right to use an individual’s “biographies” to create a Broadway musical stage play also constitutes a transfer of a copyright ownership interest in that individual’s unpublished autobiography.
I
A
In 1988, Rex Woodward, a lawyer, journalist, and “Four Seasons” devotee, entered into a written agreement to ghostwrite the autobiography (the “Work”) of Thomas DeVito, one of the original members of the band (later known as “Jersey Boys”). Pursuant to this agreement, Woodward and DeVito would split the proceeds from publishing or otherwise exploiting the manuscript. After completing the Work but before securing publication, Woodward succumbed to lung cancer in 1991. Unbeknownst to Woodward’s widow and heir, Donna Corbello, DeVito had registered the Work with the U.S. Copyright Office solely under his own name in 1991, four months before Woodward’s death.
In 1999, DeVito and another former Four Seasons band member, Nicholas Macioci, executed an agreement (the “1999 Agreement”) with, two of their former bandmates, Frankie Valli and Bob Gaudio. Pursuant to this agreement, DeVito and Macioci granted to Valli and Gaudio the “exclusive right to use” “aspects of [their lives] related to The Four Seasons including, by way of example, [their] creative contributions, biographies, events in [their lives], names and likenesses (the ‘Materials’)” to develop a musical stage performance (the “Play”) about the “Four Seasons.” DeVito and Macioci further waived all claims in connection with the Materials, including any claim for violation of copyright.
After an abortive attempt to create the Play with an initial producer, Valli and Gaudio entered into a twenty-four page letter agreement dated May 1, 2004 (the “2004 Agreement”) to produce the Play
B
Corbello first discovered arrangements made by DeVito and his bandmates after she and her sister-in-law renewed their efforts to publish the Work on the eve of the “Jersey Boys” debut. Supposing that the Broadway musical might rekindle interest in the band, she approached DeVito who, after a month of correspondence, rejected her overtures, concluding that the Work was “not saleable.” In 2006, the success of “Jersey Boys” prompted Corbello and her sister-in-law to confirm the copyright in the Work in the hope of future exploitation, when they discovered that DeVito had already registered — solely in his own name — a manuscript virtually identical to the Work. Corbello subsequently filed a supplementary application with the U.S. Copyright Office to add Woodward as a coauthor and co-claimant of the Work, which prompted the Office to amend the certificate of registration to list Woodward and DeVito as coauthors of the Work and co-claimants thereto.
Based on such revelation, and further accounts from writers, actors, and others involved in the Play that attributed inspiration in part to the unpublished autobiography, Corbello .initially brought suit against DeVito for equitable accounting, declaratory judgment, and breach of contract. Valli’s divorce proceedings in 2008 brought to public light further documents, including the 1999 Agreement, regarding DeVito’s involvement in producing the Play. Corbello filed a Third Amended Complaint in May 2011, alleging twenty causes of action, including equitable accounting, declaratory judgment, and copyright infringement under both U.S. and foreign law, not only against DeVito but also against Valli and Gaudio, as well as the writers, directors, and producers of the Play and various related entities.
Corbello alleges 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. Corbello thus concludes that she, as legatee of Woodward’s joint copyright in the Work, deserves to share in the profits reaped by the various Appellees’ licensing and assignment, or infringement, as the case may be, of the underlying rights.
Facing dueling motions for summary judgment on several of the counts, the district court issued two orders, incorporated into the judgment from which Corbello here appeals, granting summary judgment to all Appellees on Corbello’s claims for equitable accounting, declaratory judgment, and copyright infringement. In so ruling, the district court concluded that (1) the 1999 Agreement constituted not an assignment of DeVito’s copyright
II
Corbello first contends that the 1999 Agreement constituted a transfer of DeVito’s copyright interest in the Work, rather than a selectively exclusive license, and that she, as the legatee of Woodward — a duly registered co-author and co-claimant of the Work — is therefore entitled to a portion of the proceeds resulting from Valli and Gaudio’s exploitation of that ownership interest.
“A co-owner of a copyright must account to other co-owners for any profits he earns from licensing or use of the copyright.” Oddo v. Ries,
The parties do not dispute that Corbello succeeded to her husband’s interest in the copyright of the Work. Thus, Corbello’s claims for declaratory relief and equitable accounting turn on whether DeVito effectively transferred some quantum of his copyright co-ownership interest to Appellees.
A
Pursuant to the 1999 Agreement, DeVito “grantfed] to [Valli and Gaudio] the exclusive right to use and incorporate the Materials in one or more theatrical productions, and any and all ancillary and subsidiary exploitations thereof.” As defined in the Agreement, “Materials” includes, inter alia, DeVito’s “biographies.” The 1999 Agreement also contains a provision by which DeVito agreed to “waive any claim in connection with the Materials or Works including ... any claim that the Works ... violate any right of ... copyright.”
Despite concluding that the Agreement’s inclusion of “biographies” in the definition of “Materials” sufficiently included the Work so as to grant Valli and Gaudio an exclusive license to use it in producing the Play, the district court nevertheless found that the Work fell outside of the Agreement’s use of “biographies” for the purpose of transferring ownership of a copyright interest in the Work. We are not persuaded by the district court’s interpretation.
The 1999 Agreement is governed by New York law. Under New York law, a contract is unambiguous if “on its faee[, it] is reasonably susceptible of only one meaning.” Greenfield v. Philles Records, Inc.,
Nor are we persuaded by Appellees’ argument that “biography,” as used in the 1999 Agreement, refers not to documented life histories, but rather to the general story of one’s life. First, this definition, even when offered by dictionaries, takes a subsidiary position to the more common definition of a documented history. See Oxford English Dictionary (3rd. ed.2010) (third and final listed definition); cf. Merriam-Webster’s Collegiate Dictionary (10th ed.1998) (“an account of the life of something (as an animal, a coin, or a building)”) (third and final listed definition). Moreover, under New York law, courts may not choose to interpret a contractual provision so as to render another term superfluous. See Sayers v. Rochester Telephone Corp. Supp. Mgmt. Pension Plan,
Further, to read “biographies” as Appellees urge would largely defeat the overarching purpose of the Agreement. Under New York law, courts should consider individual contract provisions in light of “the entirety of the agreement in the context of the parties’ relationship and circumstances.” In re Riconda,
Pursuant to the 1999 Agreement, DeVito granted Valli and Gaudio the “exclusive right to use” his “biographies,” unambiguously including the Work, to create a play. Such play constitutes a “derivative work,” the right to create which resides in each copyright holder of the underlying work and may be transferred by that holder to a third party.
B
Appellees argue that our precedent, Sybersound Records, Inc. v. UAV Corp.,
Copyright “is a creature of statute, and the only rights that exist under copyright law are those granted by statute.” Silvers v. Sony Pictures Entm’t, Inc.,
We had several occasions prior to Sybersound to interpret § 201(d)’s .broad language authorizing the alienability of copyrights. In Bagdadi v. Nazar, we explained, “[i]t is important to note that the various rights included in a copyright are divisible and that ‘any of the exclusive rights comprised in a copyright ... may be transferred ... and owned separately.’”
Sybersound dealt with a plaintiffs standing to sue for owned the copyright to nine songs.
We held that when one co-owner independently attempts to grant an exclusive license of a particular copyright interest, that licensee — in this case, Sybersound — does not have standing to sue alleged third-party infringers. Id. at 1146. After all, one co-owner, acting independently, “may not limit the other co-owners’ independent rights to exploit the copyright.” Id. Such a conclusion stems from the self-evident principle that a joint-owner cannot transfer more than he himself holds; thus, an assignment or exclusive license from one joint-owner to a third party cannot bind the other joint-owners or limit their rights in the copyright without their consent. In other words, the third party’s right is “exclusive” as to the assigning or licensing co-owner, but not as to the other co-owners and their assignees or licensees. As such, a third-party assignee or licensee lacks standing to challenge the attempted assignments or licenses of other copyright owners.
The Sybersound court grounds this venerable principle of copyright law deeply in the statutory text, citing the definition of a “transfer of ownership” as including an assignment or license of any of the “exclusive rights comprised in a copyright ... but not including a non exclusive license,” id. (quoting 17 U.S.C. § 101), and a provision that permits subdivision and alienation of “[a]ny of the exclusive rights com-' prised in a copyright,” id. (quoting 17 U.S.C. § 201(d)). But the Court’s emphasis on the word “exclusive” in these provisions cannot mean that only sole owners possess “exclusive” rights, as such a rule would run directly contrary to another well-settled principle of copyright law: the right of one joint-owner to sue third-party infringers without joining any of his fellow co-owners, a right Sybersound itself expressly recognizes. See id. at 1145 (noting that “co-owners may bring suit for copyright infringement without joining other co-owners” (citing Davis v. Blige,
Moreover, such a limitation would contradict the principle of the free transferability of copyright ownership interests — a
Therefore, Sybersound presents no obstacle to DeVito’s exclusive transfer of his derivative-work right to Valli and Gaudio under the 1999 Agreement. Because the Agreement unambiguously transfers DeVito’s derivative-work right to Valli and Gaudio, and 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.
Ill
The district court granted summary judgment in favor of Appellees with respect to Corbello’s infringement claims based on its finding that Valli and Gaudio held a license to use the Work in the production of the Play. See Worldwide Church of God v. Phila. Church of God, Inc.,
A
Our conclusion that the 1999 Agreement constituted a transfer of ownership of DeVito’s derivative-work right in the Work to Valli and Gaudio would ordinarily preclude Corbello’s infringement claims against Valli and Gaudio, as “[a] co-owner of a copyright cannot be liable to another co-owner for infringement of the copyright.” Oddo v. Ries,
The Agreement provided that the rights granted therein would continue perpetually either (i) if they merged with the Play pursuant to a contract with an initial producer or (ii) pursuant to a contract into which Valli and Gaudio might enter with a second producer within two years of the initial producer’s rights lapsing.
B
Appellees argue alternatively that DeVito’s conduct resulted in a grant to them of an implied nonexclusive license to use th.e Work, effective regardless of the reversionary clause in the 1999 Agreement. In support of their argument, they cite DeVito’s delivery of the Work to the writers of the Play with the apparent intention that they would use the Work to create the Play, along with DeVito’s attendance at performances of, and acceptance of royalty checks from, the Play.
While we may consider delivery of a copyrighted object as “a relevant factor” to determine the existence of an implied license, Asset Marketing Sys., Inc. v. Gagnon,
Here, DeVito’s intentions in delivering the Work to the writers are unclear at best. Appellees did not ask DeVito to create the Work. In fact, the creation of the Work long predated any specific effort on DeVito’s part to parlay his life into a Broadwáy musical. Cf. Gagnon,
• In light of such contradictory facts regarding DeVito’s intent in delivering the Work, the district court’s grant of summary judgment on the ground of an implied license — to the extent it rested on such a ground — was inappropriate.
rv
Relying on its conclusion that the 1999 Agreement constituted a license of DeVito’s copyright interest, rather than a transfer of ownership, the district court granted summary judgment to Appellees on Corbello’s claims of infringement under foreign law. Because we here conclude that the Agreement instead constituted a transfer of ownership, summary judgment on such foreign law grounds must be reversed as well.
V
Corbello appeals the district court’s assessment of costs against her. Because we reverse the district court’s grant of summary judgment, we vacate the award of costs and remand for reconsideration after other proceedings on remand. See, e.g., Cusano v. Klein,
VI
We reverse the district court’s grant of summary judgment in favor of Appellees, vacate its assessment of costs against Corbello, and remand for further proceedings consistent with this opinion. We award costs on appeal to Corbello as the substantially prevailing party. See Fed. R.App. P. 39(a)(4) (“[I]f a judgment is affirmed in part, reversed in part, modified, or vacated, costs are taxed as the court orders.”).
REVERSED IN PART, VACATED IN PART, AND REMANDED.
Notes
. We have jurisdiction pursuant to 28 U.S.C. § 1291.
. The fact that Macioci may never have had a written biography, the rights to which he could have transferred via the 1999 Agreement, is perfectly in keeping with such a goal. The ability to use freely a written biography, if such biography existed, would help Valli and Gaudio create a Play chronicling the history of the band and its members. The fact that one of the band members may not have actually had such a biography does not negate the fact that, had he had such a biography, it would have assisted Valli and Gaudio in their goal of developing the Play.
. Despite the concerns expressed by the concurrence, including the Work in the definition of "biographies” does not restrict DeVito from exercising those other statutory rights of copyright ownership identified in 17 U.S.C. § 106 (assuming, of course, that DeVito has not independently transferred those rights to third parties). See infra, at 1069-71 (Sack, J., concurring). The Agreement simply restricts DeVito from alone using the Work to create a theatrical production.
. The six statutorily created rights created by 17 U.S.C. § 106 include the right:
"(1) to reproduce the copyrighted work in copies or phonorecords;
(2)to prepare derivative works based upon the copyrighted work;
(3) to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending;
(4) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly;
(5) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly; and
(6) in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission.”
17 U.S.C. § 106.
. In fact, we have suggested quite the opposite. We implicitly held prior to the Copyright Act of 1976 that a co-owner of a copyright can transfer its interests in a copyright without the permission of the other co-owners. See Piantadosi v. Loew's Inc.,
. The district court also held that 17 U.S.C. § 203(a)(4) required DeVito to give Valli and Gaudio written notice before he could terminate their rights via the reversionary clause. But § 203(a)(4) is inapplicable in this case. The Ninth Circuit has held that when "the contract at issue is of a definite duration, neither Section 203, nor any other provision of the Copyright Act, governs [a copyright owner's] right to terminate or rescind the license [or assignment].” Scholastic Entm't Inc. v. Fox Entm’t Grp., Inc.,
Concurrence Opinion
Concurrence by JUDGE SACK.
concurring
in the judgment:
I agree that we must remand this case to the district court for further proceedings. I disagree, however, that the word “biographies” in the 1999 Agreement unambiguously includes the manuscript of the autobiography of DeVito ghost written by Corbello’s decedent Woodward for DeVito (“the Work”), completed some eight years earlier, and that the 1999 Agreement therefore transferred certain derivative rights in the Work to the counter-parties to the Agreement — Valli and Gaudio. First, I would conclude that the language is ambiguous under New York law and remand on that basis for the district court to decide as a matter of fact whether the 1999 Agreement included a transfer of rights with respect to the ghost-written autobiography. But second, even if the 1999 Agreement unambiguously transfers DeVito’s interest in the Work, I think Sybersound Records, Inc. v. UAV Corp.,
I
The majority offers a plausible — but not the only plausible — reading of the language of the 1999 Agreement. Because the language at issue “is susceptible to more than one reasonable interpretation,” Brad H. v. City of New York,
The parties — DeVito/Nicholas “Massi” Macioci,
In other words, Valli and Gaudio purchased from DeVito and Macioci the right to use “certain aspects” of their lives, a category that is then illuminated by several “example[s],” including “biographies.” In this light, and taking the document as a whole as we must, S. Rd. Assocs., LLC v. Int'l Bus. Machs. Corp.,
Another definition of the word “biography,” moreover, suggests that the parties did not necessarily intend to include the Work in the rights granted under 1999 Agreement. A “biography,” or “bio,” may (and in my experience in being asked for a “biography” or “bio” in connection with some panel discussion, moot court, or the like, very often does) refer to “a brief summary of a person’s life and work.” Oxford English Dictionary (3d ed.2010), available at www.oed.com/view/Entry/ 19187; see also, e.g., Doe v. Merck & Co.,
In the absence of the manifestation of a contrary intent among the parties, it may be preferable to apply either of the foregoing definitions, rather than those referring to written manuscripts, which might inappropriately enlarge the general category of “aspects of your life.” ‘When a particular class [i.e., “aspects of your life”] is spoken of, and general words [i.e., “biographies”] follow, the class first mentioned is to be taken as the most comprehensive.” Bers v. Erie R.R. Co.,
In short, the word “biographies” has here at least three plausible meanings, only one of which covers the Work. And the majority’s preferred reading is not the only one that makes sense. See Maj. Op. at 1063-64. The purpose of the 1999 Agreement was to facilitate the creation and production of a theatrical work based on DeVito’s or Macioci’s life story. Having transferred his right in a. single kind of derivative work, DeVito may well have sought to retain the right to publish or otherwise distribute other accounts of his life through books, film, or other media. Cf. 17 U.S.C. § 106 (listing, beside the right to prepare derivative works, the copyright owner’s rights to reproduce, distribute copies of, publicly perform, publicly display, or transmit the copyrighted work). If under these circumstances, however, DeVito creates a theatrical production based on his life, he runs afoul of the 1999 Agreement and may be liable to Valli and Gaudio.
In this context, leaving the Work outside the scope of the 1999 Agreement makes a great deal of practical sense. Having said nothing in the Agreement explicitly about the Work, which had been in existence for more than eight years, DeVito remained and remains free to do with his autobiography (subject of course to his obligations to the widow of Woodward, the person who actually wrote it) what people normally try to do with their memoirs (if anything): He can publish it, distribute copies, sell it,
I would, therefore, agree with the district court that the contract’s language is ambiguous. I think that court erred, however, in admitting extrinsic evidence to interpret the contract’s ambiguous language. The question of ambiguity is a question of law to be resolved by the court, but “[i]f there is ambiguity in the terminology used, [ ] and determination of the intent of the parties depends on the credibility of extrinsic evidence or on a choice among reasonable inferences to be drawn from extrinsic evidence, then such determination is to be made by the jury.” Hartford Accident & Indem. Co. v. Wesolowski,
II
Assuming, despite the foregoing discussion, that the 1999 Agreement does unambiguously include the Work (or were a jury to find the Agreement includes the Work despite the Agreement’s facial ambiguity), the question arises: What kind of interest in the Work does the 1999 Agreement transfer to Valli and Gaudio? The majority concludes that the Agreement confers an exclusive license or assignment. Maj. Op. at 1066. I think Sybersound Records, Inc. v. UAV Corp.,
In that case, TVT Music Publishing, a co-owner of the copyright of certain songs, attempted to make Sybersound, a karaoke record producer, the “exclusive assignee and licensee of TVT’s copyrighted interests for purposes of karaoke use, and also the exclusive assignee of the right to sue to enforce the assigned copyright interest.” Id. at 1142 (internal quotation marks omitted). The other original co-owners of the copyright, several record companies, did not join in granting rights to Sybersound. Id. at 1146. When other karaoke record producers used songs under license from TVT to Sybersound without Sybersound’s permission, Sybersound brought suit against the producers for infringement. Id. at 1142. This Circuit affirmed the district court’s dismissal of the complaint, concluding that Sybersound lacked standing to sue third-party infringers. Id. at 1146.
I agree with the majority’s analysis of Sybersound except to the extent it concludes that DeVito was legally capable of transferring to Valli and Gaudio an exclusive license of any kind or description. According to Sybersound, one co-owner of a copyright cannot confer an exclusive license on a licensee because she or he has no exclusive right to confer. Sybersound,
The facts of Sybersound are in an important respect indistinguishable from those before us. Here, as in Sybersound, a single co-owner (here, DeVito; there, TVT) of a particular interest attempted to grant an exclusive license to use a particular part of the co-owner’s derivative work right (here, the right to create a derivative theatrical work; there, the right to create a derivative karaoke record) to third parties (here, Valli and Gaudio; there, Sybersound). Here, as in Sybersound, the single co-owner attempted to effect this transfer without the consent of the other co-owner(s) (here, Corbello; there, the record companies).
Sybersound seems to me to mean that the transfer from DeVito to Valli and Gaudio, like the transfer from TVT to Sybersound, effected a nonexclusive license. DeVito, like TVT, “succeeded only in transferring what [he] could under 17 U.S.C. § 201(d), a non-exclusive license.” Sybersound,
Commentators have expressed some dissatisfaction with this aspect of Sybersound’s holding.
Ill
In sum, then, I would decide that the contract is ambiguous as to whether the Work is included within the Materials. Because the contract is ambiguous, the district court erred by determining the meaning of the contract on the basis of parol evidence at summary judgment. I would therefore remand to the district court for further proceedings. But it would vastly simplify matters, I think, if in that case the district court first decided the defendants’ summary judgment motion arguing that Jersey Boys does not infringe the Work as a matter of law in any event, see, e.g., Funky Films, Inc. v. Time Warner Entm’t Co., L.P.,
Even if the 1999 Agreement unambiguously included the Work, as the majority conclude, I would decide that DeVito granted Valli and Gaudio only a nonexclusive license to use the Work toward a theatrical production. Corbello’s accounting action properly lies, then, against DeVito, not Valli and Gaudio, and the latter action must be rejected.
. Nicholas "Massi” Macioci, an early member of "The Four Seasons,” was also a signatory to the 1999 Agreement. He died in 2000, Nick Massi, Low Man in the Four Seasons, Dies at 73, N.Y. Times, Jan. 8, 2001, http:// www.nytimes.com/2001/0 l/08/national/08 MASS.html, however, and has no role in the current litigation.
. I would hesitate to give dispositive effect to the order in which dictionary editors choose to rank their definitions, Maj. Op. at 1062. Cf. Mastrovincenzo v. City of New York,
.It may be worth noting, in this connection, that as far as we are aware there was no written Macioci biography or autobiography ever produced the rights to which could have been included, although as a one-time member of the group, he was likely mentioned in DeVito's ghost-written autobiography. Insofar as Macioci’s "biography” is concerned, then, it would seem likely that "biography” meant the story of his life.
. We are in accord, however, that the 1999 Agreement confers the right to use the 'Materials’ to create only one type of derivative work, a theatrical production, Maj. Op. at 1064; the only question is whether that right is exclusive or nonexclusive.
. For criticism of Sybersound, see Amaretto Ranch Breedables v. Ozimals Inc.,
. The majority correctly observes that the circuit's pr^-Sybersound precedent supports the conclusion "that copyrights are divisible and that a copyright owner can freely transfer any portion of his ownership interests in that copyright.'' Maj. Op. at 1064. But Sybersound reasoned that those ownership interests are limited in the case of a co-owner, who "is not the exclusive owner” of the copyright and thus can transfer only a nonexclusive license. Sybersound,
.I would reject the district court's apparently newly coined term "selectively exclusive license.” The court’s description of the practical effects of DeVito's failed attempt to transfer an exclusive license seems to me correct under Sybersound. But, under the prin