Corbello v. Valli

An implied license, which may be effective regardless of a reversionary clause in a contractual agreement, may be inferred from the objective intent of the licensor, as well as those others involved, at the time of the creation and delivery of the work.

Rex Woodard entered into a contract to be the ghostwriter for the autobiography of Thomas DeVito, an original member of the “Four Seasons” band. According to the agreement, all proceeds would be shared between Woodard and DeVito. After DeVito registered the piece with the U.S. Copyright Office, Woodward died. In 1999, DeVito gave the exclusive right to use aspects of his life, creative contributions, and the like to Frankie Valli and Bob Gaudio, two former bandmates, waiving any future copyright infringement claims. Valli and Gaudio thereafter entered into a contract to create a Broadway musical (“the Play”) about the rise to fame of the band. Due to the success of the play, Woodward’s widow, Donna Corbello, filed a supplementary action with the U.S. Copyright Office to add her husband as a co-author to unpublished work, while also suing DeVito, Valli, and Gaudio, for copyright infringement, alleging that the Play was a “derivative work” from Woodward’s labor. The district court did not agree, and Corbello appealed. The Ninth Circuit decided whether a contract to grant exclusive rights to an individual’s biographies is also a transfer of a copyright ownership interest in an unpublished biography. The panel noted that the fact remained as to whether the 1999 contract’s reversionary clause terminated the ownership rights of Valli and Gaudio. To determine this, the panel, under Asset Marketing Sys., Inc. v. Gagnon, focused on the “licensor’s objective intent at the time of the creation and delivery of the software as manifested by the parties’ conduct,” which may create an implied license. The panel found, however, that DeVito’s intentions were unclear, and that the district court’s grant of summary judgment in favor of this contention was unfounded. REVERSED IN PART, VACATED IN PART, AND REMANDED.