Ninth Circuit reverses and remands district court’s grant of summary judgment to members of “Four Seasons” music group and others involved in producing musical “Jersey Boys,” holding that agreement between band member Thomas DeVito and his bandmates constituted transfer of his right to created derivative works based on his co-authored autobiography, and that heir to autobiography’s co-author could sue producers of musical for accounting.

Rex Woodward, a “Four Seasons” devotee, entered into a written agreement in 1988 to ghostwrite the autobiography of Thomas DeVito, one of the original members of the “Four Seasons.” Under the agreement, Woodward and DeVito would split the proceeds from exploiting the autobiography. DeVito and another former member of the band, Nicholas Macioci, executed an agreement in 1999 that granted the other two former bandmates, Frankie Valli and Bob Gaudio, the exclusive right to use aspects of their lives relating to the “Four Seasons,” including their biographies, in the development of one or more musicals. Valli and Gaudio entered into an agreement to produce the musical “Jersey Boys,” which opened on Broadway in late 2005.

Corbello brought suit against Valli, Gaudio, and the writers, directors, and producers of “Jersey Boys,” asserting 20 causes of action including equitable accounting, declaratory judgment and copyright infringement under both U.S. and foreign law. Corbello alleged that the musical constituted a derivative work of the Woodward/DeVito autobiography. The district court granted summary judgment to the defendants on Corbello’s claims for equitable accounting, declaratory judgment and copyright infringement.

The Ninth Circuit reversed the district court’s grant of summary judgment, vacated the district court’s assessment of costs against Corbello, and remanded the case for further proceedings. First, the panel held that the 1999 agreement constituted a transfer of ownership of DeVito’s right to create derivative works from the Woodward/DeVito autobiography, not a nonexclusive license to Valli and Gaudio. Pursuant to the 1999 agreement, DeVito granted to Valli and Gaudio the “exclusive right to use and incorporate the Materials in one or more theatrical productions…” The term “Materials” includes DeVito’s “biographies.” The panel rejected the district court’s holding that the autobiography fell outside of the agreement’s use of “biographies” for the purpose of transferring ownership of a copyright interest. Rather, the Ninth Circuit held that the term “biographies” is not ambiguous, and that as an account of DeVito’s life that had been reduced to writing, the Woodward/DeVito work qualified as a “biography” under standard dictionary definitions. The panel also rejected the argument that it should apply the Ninth Circuit decision in Sybersound Records, Inc. v. UAV Corp. to prohibit a co-owner of copyright, such as DeVito, from transferring that right without permission from his co-owners. Because the 1999 agreement transferred DeVito’s derivative-work right to Valli and Gaudio, and copyright co-owners must account to one another for profits earned from exploitation of that copyright, the court held that the district court erred in rejecting Corbello’s claims for accounting and declaratory relief.

Second, the panel held that the defendants failed to establish the existence of a license as an affirmative defense to the copyright infringement claims. The court noted that, given that a co-owner of a copyright cannot be liable to another co-owner for copyright infringement, its holding that the 1999 agreement constituted a transfer of ownership of DeVito’s derivative work, and not a nonexclusive license, would ordinarily preclude Corbello from asserting infringement claims against Valli and Gaudio. The panel, however, found that a material issue of fact existed as to whether the 1999 agreement’s reversionary clause later terminated Valli and Gaudio’s ownership right. The defendants argued alternatively that DeVito’s conduct resulted in a grant of an implied nonexclusive license to use the autobiography, effective regardless of the reversionary clause in the 1999 agreement. However, the panel held that DeVito’s intentions in delivering the Woodward/DeVito autobiography to the writers were unclear at best, and that summary judgment was therefore not appropriate on the basis of an implied license.