District court overturns jury’s finding that creators of Broadway hit “Jersey Boys” infringed on autobiography of one of Four Seasons members, concluding that minimal use of unpublished work in musical constituted fair use.
Rex Woodard worked with Thomas Gaetano DeVito, a founding member of the musical group the Four Seasons, to write DeVito’s unpublished autobiography Tommy DeVito – Then and Now, which was later used in the development of the successful Broadway musical “Jersey Boys.” Woodard and DeVito agreed in 1988 that they would be considered co-authors of the autobiography and share equally in the profits. Before Woodard’s death in 1991, he and DeVito attempted to publish or otherwise exploit the autobiography but were unable to do so. Unbeknownst to Woodard’s widow and heir, Donna Corbello, DeVito had registered the manuscript with the U.S. Copyright Office in his name alone and had also granted an exclusive, irrevocable, perpetual, worldwide and assignable license to Four Seasons members Frankie Valli and Robert Gaudio to freely use and adapt certain materials, including the autobiography, to create a musical. Under the license, DeVito would get 20 percent of any royalties received by Valli and Gaudio in exploiting the autobiography. Valli and Gaudio later sublicensed to the eventual writers and producers of “Jersey Boys.”
Upon learning of the copyright and license, Corbello sued DeVito, Valli, Gaudio and 11 other defendants involved in the creation of “Jersey Boys” for copyright infringement, among other causes of action. Since Corbello’s initial filing of the lawsuit in 2007, the action has gone through numerous stages of litigation including five summary judgment motions and an appeal, which limited the issues and the number of defendants (read our previous summaries in the case here and here). Following a 15-day trial, but prior to the jury verdict, the district court mostly denied defendants’ motion for a judgment as a matter of law, but granted the motion in favor of Valli and Gaudio as to infringement and in favor of all defendants as to willful infringement. The jury then found that 1) DeVito did not grant the other defendants an implied nonexclusive license to use the autobiography to create “Jersey Boys”; 2) “Jersey Boys” infringed upon the autobiography; 3) the autobiography’s use in “Jersey Boys”did not constitute fair use; 4) 10 percent of the success of “Jersey Boys” was attributable to the infringement and 5) the remaining defendants were liable for direct infringement.
Defendants then filed three post-trial motions. First, DeVito asked the district court to vacate a previous order that he place his royalty earnings in escrow due to the fact that he had, at that point, settled with Corbello. As this motion was unopposed, the district court granted DeVito’s request without further elaboration. Second, defendants renewed their motion for judgment as a matter of law on the ground that their use of the autobiography in “Jersey Boys”constituted fair use. Third, defendants moved for a new trial, including on the issue of damages.
The district court undertook an exhaustive analysis of defendants’ fair use claim and determined that they were entitled to a judgment as a matter of law, holding that defendants’ use of the autobiography was fair use. Applying the four fair use factors, the district court found that the fourth factor, the effect on the potential market for the autobiography—which the district court described as the most important factor — weighed greatly in favor of defendants because the manuscript had no market value prior to the debut of “Jersey Boys,” as evidenced by unsuccessful attempts to publish it. Next, the district court determined that the first factor, purpose and character of the use of the autobiography in “Jersey Boys,” weighed against a finding of fair use because “Jersey Boys” was a commercial endeavor and the producers of the musical used the autobiography without paying the customary price.
The district court found that the second factor, the nature of the copyrighted work, weighed in favor of fair use because the autobiography had more of a foundation in factual occurrences than in creative expression. It noted that while unpublished works typically receive greater protection under this factor because an author should be able to control the initial exhibition of his expression, the autobiography was unpublished due to a lack of marketability and not because the authors had chosen not to publish it, and therefore this factor weighs in favor of fair use.
Finally, the district court analyzed the third fair use factor — the substantiality of the portion of the work used in relation to the work as a whole. After excluding similarities between the autobiography and “Jersey Boys” that were based on unprotected and noncopyrightable elements, the district court reviewed 12 similarities between the two works. It concluded that the amount of protectable material copied by “Jersey Boys” was very slight, amounting to less than 1 percent of the musical as a whole, which strongly weighted this factor in favor of fair use. As a final point, the district court also determined that “Jersey Boys” was transformative of the autobiography, because the book was meant to inform while the musical was meant to entertain its audience.
Turning to the third post-trial motion, the district court noted it had the power to grant a new trial if the verdict was against the clear weight of the evidence and granted defendants’ motion for a new trial on two grounds. It first held that the jury’s finding that 10 percent of the success of “Jersey Boys” was attributable to the copyrightable elements of the autobiography was unsupported by the evidence. Citing its earlier analysis of the substantiality fair use factor, the district court found the jury’s verdict to be out of line with its determination that less than 1 percent of protectable elements of the autobiography had been copied in “Jersey Boys.” Additionally, it held, much of the success of “Jersey Boys” was attributable to its stage production, the use of copyrighted music and promotional efforts, among other elements. Second, the district court also pointed out that the jury failed to focus on the relevant set of facts when it decided that DeVito had not granted an implied nonexclusive license, and that the jury’s finding went against the clear weight of the evidence, given DeVito’s attendance at the musical and his continued receipt of royalties from it. Even if defendants were not entitled to a judgment as a matter of law on the fair use issue, a new trial would be required on the implied nonexclusive license issue, said the district court.