• Assignment or License?

    by  • January 19, 2012 • copyright

    I last wrote about the licensing rights of a joint copyright owner as discussed in Corbello v. DeVito. The same case also had two agreements that the court needed to construe before deciding who owned what rights in the copyright.

    Plaintiff Corbello is the widow and heir of Rex Woodard, who wrote an authorized biography about Tommy DeVito, a member of the Four Seasons musical group. It was never published. Corbello alleges that DeVito provided the book to the producers of the Broadway musical Jersey Boys and the show is a derivative work of the book.  Corbello brought a number of claims against DeVito and various entities related to the production, including for copyright infringement and an equitable accounting.

    Woodard had entered into a brief letter agreement with DeVito over the rights to the book:
                                         December 1, 1988

    Mr. Tommy DeVito
    [street address]
    Las Vegas, Nevada [zip code]

    Dear Tommy:

    I am making progress on the taped interviews we did. You suggested that I prepare a written memorandum of our arrangement for future reference. I will do so by this letter.

    I agreed to write your authorized biography based on the recorded interviews you gave me, plus any other relevant information which would benefit the book. You and I will be shown as co-authors, with you receiving first billing. I will do all of the actual writing, but you will have absolute and exclusive control over the final text of this book.

    We have further agreed that we will share equally in any profits arising from this book, whether they be in the form of royalties, advances, adaptations fees, or whatever. This agreement will be binding upon our heirs, both as to obligations and benefits, in the event one or both of us should die.

    If this letter accurately sets forth our agreement as you understand it, sign the enclosed photocopy where indicated and return it to me in the enclosed self-addressed, stamped envelope. Keep this original letter in your own file.

    Thank you for asking me to work with you on this project. I look forward to working with you over the next several months.

    Sincerely,

    [signed] Rex Woodard

    Rex Woodard

    RW/ml
    Enclosures

    APPROVED:

    [signed] Tommy DeVito

    TOMMY DEVITO

    The first question was whether DeVito was a joint copyright owner of the book or Corbello, as Woodard’s heir, owned the copyright in its entirety. The agreement between Woodard and DeVito doesn’t say; it says that Woodard and DeVito would share equally in any profits but that doesn’t necessarily mean that DeVito was a copyright owner. “If the Work were Woodard’s alone under the law of copyright, the Letter Agreement would still constitute an assignment of 50% of Woodard’s rights to receive profits from the Work, i.e., a partial assignment of royalties, but it would not appear to constitute a partial transfer of copyright.” Nevertheless, Corbello had admitted that DeVito was closely involved in editing the book, so the court found that DeVito was a co-author since he contributed non-de minimis creative edits. Corbello therefore wasn’t the sole owner of the work but only a joint owner, which meant that  DeVito had the rights of an owner to grant a license for the production of Jersey Boys.

    But what kind of license in the book did DeVito give? DeVito had granted extensive rights to his co-band members Frankie Valli and Robert Gaudio to exploit undefined “Materials,” thus:

    In consideration of the foregoing payments, you grant to us the exclusive right to use and incorporate the Materials in one or more theatrical productions, and any and all ancillary and subsidiary exploitations thereof including, without limitation, cast albums, motion picture and televised versions, merchandise and/or other works…. You hereby consent to any such use and agree that the Works may be exploited throughout the world in all media now existing and later devised, and you further acknowledge that you shall not receive any compensation for the use of the Materials or in connection with any of the Works other than the compensation expressly set forth herein. The rights granted by you to us hereunder shall continue in perpetuity if the rights in the Play have merged with each other pursuant to the production contract between us and the initial commercial producer.

    ….

    The rights granted to us herein are irrevocable and not subject to rescission or injunction under any circumstances.

    A transfer of copyright ownership doesn’t have to say “transfer” or “assign,” but simply must indicate an intent to effect an outright transfer of the copyright. The court found that the above language in the Valli-Gaudio agreement was expansive enough to demonstrate an intent to assign the copyright, with one not-so-minor problem – the agreement didn’t describe what the “Materials” consisted of. Valli and Gaudio testified that at the time they entered into the agreement they didn’t know the book manuscript existed and, indeed, had never seen it until their depositions in 2011. Hence,

    the Valli/Gaudio License was not a transfer of copyright from DeVito to Valli and Gaudio, because although the instrument purported to give exclusive rights in the Materials irrevocably and perpetually, it did not sufficiently identify the Work to transfer DeVito’s 50% ownership of copyright in the Work to Valli and Gaudio. At best, the instrument is ambiguous with respect to intent to transfer copyright, and the parol evidence indicates that there was no intent to transfer copyright, particularly as Valli and Gaudio appear not to have known specifically about the Work itself at the time they entered into the Valli/Gaudio License with DeVito.

    The court therefore found that it was DeVito, not Valli and Gaudio, who owed Corbello a duty of accounting for her ratable share of the profits realized for the use of the book. That’s not as easy as it might sound, though; DeVito had provided a number of “Materials” and so there remains a question of fact about what percentage of DeVito’s royalties under the license is attributable to the book and what percentage is attributable to other works or assistance DeVito provided under the license.

    There’s even more to this decision if you’re interested: some juicy details about DeVito’s claim that he alone authored the book and some elucidation on supplemental registration – who can make it and how it’s indexed with respect to the original registration.

    Corbello v. DeVito, Civ. No. 2:08-cv-00867 (D. Nev. Oct. 27, 2011).

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