Last month, the Broadway hit-musical Jersey Boys closed its doors after a spectacular eleven-year run. As someone who hails from the great state of New Jersey and who saw the show twice, I thought it was only appropriate to give Jersey Boys a formal send off. And what better way for a copyright lawyer to honor Jersey Boys than to write about two Jersey Boys-related copyright suits?
For those who may not know the premise of Jersey Boys, the show is based upon the rise and fall of the 1960s musical group The Four Seasons. The original incarnation of the group was comprised of New Jersey natives Frankie Valli, Bob Gaudio, Tommy DeVito, and Nick Massi. Initially known as The Four Lovers, the group struggled to take off, even bungling an audition at a bowling alley. According to the musical, at that point, the group renamed itself The Four Seasons, taking the name of that particular bowling alley. Maybe it was the name change, but The Four Seasons took off after that, releasing hits such as “Sherry,” “Walk Like a Man,” “Big Girls Don’t Cry,” “December 1963 (Oh, What a Night),” and “Can’t Take My Eyes Off You,” all of which are featured in Jersey Boys. For a variety of reasons, members of The Four Seasons came and left. Yet in 1990, the original members were inducted into the Rock and Roll Hall of Fame. Today, Frankie Valli remains the sole performer with Bob Gaudio as songwriter.
Jersey Boys depicts this history along with the turbulent dynamics of the group. Opening on Broadway on November 6, 2005, Jersey Boys received four Tony Awards, including Best Musical in 2006. In 2007, the show won a Grammy for Best Musical Show Album. In 2014, Warner Bros. released a film version which grossed around $65.2 million at the worldwide box office. And, after over 4,600 performances, Jersey Boys held its final Broadway performance on January 15, 2017. Now that you are sufficiently versed in Jersey Boys trivia, I bring you the show’s litigious history.
Is a seven-second video clip Fair Use?
At issue in SOFA Ent., Inc. v. Dodger Prod. was whether a portion of Jersey Boys infringes copyrights associated with The Ed Sullivan Show, the rights to which are now owned by SOFA Entertainment, Inc. (“SOFA”). The dispute began when the founder of SOFA attended a performance of Jersey Boys and realized that the musical, without SOFA’s permission, featured a clip of a 1966 recording of The Ed Sullivan Show. The video clip in question is a seven-second recording in which Ed Sullivan introduces The Four Seasons to American viewers, thus signaling the group’s rise to stardom.
SOFA sued the producers of Jersey Boys—Dodgers Prod., Inc. and Dodger Theatricals, Ltd. (collectively “Dodger”)—for copyright infringement. Dodger claimed the use of the clip constituted fair use and moved for summary judgment. “Fair use” is a legal doctrine that permits unlicensed, limited use of copyright-protected works in certain circumstances. Courts consider the following four factors in assessing a question of fair use: (i) purpose and character of the use; (ii) nature of the copyrighted work; (iii) the amount and substantiality of the portion used; and (iv) the extent to which the use harms the existing or future market for the original work. Here, the District Court determined the use of the clip constituted fair use. The Court even awarded Dodger $155,000 in attorneys’ fees, finding SOFA’s infringement claim objectively unreasonable. The Court determined that such an award would deter future lawsuits that might otherwise “chill the creative endeavors of others.” But not to be deterred, SOFA appealed the decision.
Unfortunately for SOFA, the Ninth Circuit Court of Appeals agreed with the District Court and held that Dodger’s use of the clip was indeed fair use. The Court found that all four factors weighed in Dodger’s favor. As to the first factor, the Court focused on the fact that Dodger used the clip as an “historical reference point,” demonstrating that The Four Seasons had “enduring prominence in American music.” The Court found that this use created a wholly new, transformative work. As to the remaining factors, the Court determined that the nature of the copyright was factual, that Dodger used a qualitatively and quantitatively small portion of the copyrighted work, and that the use does not disrupt the market for derivative works of The Ed Sullivan Show. Affirming the District Court’s award for attorneys’ fees and its reasoning, the Court concluded, “[t]his case is a good example of why the ‘fair use’ doctrine exists.”
Who owns the rights to Tommy Devito’s “Biography,” and were they infringed?
Another Jersey Boys case, Corbello v. DeVito, revolves around an unpublished, autobiography of band member Tommy DeVito, jointly written by DeVito and journalist Rex Woodward. DeVito and Woodward worked on the manuscript from 1988 to 1991, when Woodward unexpectedly passed away. In 2005, Woodward’s wife, Donna Corbello, sought to publish the manuscript on the eve of Jersey Boys’ Broadway premier, hoping the rekindled interest in the group would promote sales. To her surprise, Corbello discovered that DeVito had already registered the work with the U.S. Copyright Office and had not acknowledged Woodward’s involvement. Corbello, claiming to have inherited Woodward’s rights as a joint author, sued DeVito and demanded an accounting of profits from the autobiography. Later, Corbello allegedly discovered that DeVito had provided the manuscript to several individuals involved in the production of Jersey Boys. Accordingly, she expanded her lawsuit to allege that the Broadway production was based on the manuscript, and she added as defendants Dodger, the writers and producers of the show, and band members Frankie Valli and Bob Gaudio.
Two main issues lay at the heart of this dispute. The first issue revolved around the definition of “biography.” In 1999, DeVito had granted to Valli and Gaudio, via a written agreement, the rights to his “biography” for use in a theatrical performance. If the term “biography” included the specific autobiographical manuscript prepared by DeVito and Woodward, then Corbello as heir to Woodward had standing to demand an accounting of the profits from that written agreement. In 2011, the Ninth Circuit concluded that the term “biography” did indeed include the unpublished autobiography, noting that “biography” is not an ambiguous term but refers to a “history of a person’s life” that is “usually written.” Therefore, Devito owed Corbello some of the profits from the written agreement.
The second issue was whether the play infringed on the manuscript. One might think that this second issue would have been disposed of by the Court’s ruling on the written contract. After all, if those involved with the play had contractual permission to use the “biography” manuscript, then the only real issue would be divvying up the fruits of the contract between the joint authors of the written work. But there was a snag. Although the contract’s assignment of rights was valid in 1999, it contained a clause that caused the rights granted to revert back to the manuscript’s authors if they were not exercised within a certain time period. Here, Valli and Gaudio did not secure a producer for the show until 2005, and the Court found that this extended timeline may have triggered the reversionary clause. Therefore, any subsequent use of the work (i.e., writing the Jersey Boys’ script) may have infringed the copyright in the manuscript despite the written agreement. The Ninth Circuit therefore remanded the question of infringement for further proceedings.
The infringement issue was heard during a month-long trial in the Nevada District Court beginning October 31, 2016. During the course of the trial, the Court dismissed all claims against Valli and Gaudio individually, because there was no evidence that either saw the unpublished autobiography prior to the litigation. Of course, the show must go on, and so the trial continued against Dodger and the other defendants.
The defendants argued that, although the writers and director of the play received the unpublished work, they used it for research purposes only, along with numerous other sources. Additionally, the defendants argued that many of the claimed similarities between the manuscript and the play were historical facts, which are not copyrightable. But the jury disagreed. On November 28, 2016, after three days of deliberation, the jury returned its verdict in favor of Corbello, finding the defendants directly infringed upon her late husband’s work. The jury also found that the defendants’ infringement contributed to 10% of the show’s success.
The story continues
Will there be another act to this drama? Most likely. A little over a month ago, the defendants filed a motion for a new trial. We will have to wait to see what happens when the final curtain falls on this dramatic dispute. Though it is uncertain whether Ms. Corbello can claim 10% of Jersey Boys’ success, at least the defendants can rest easy knowing that a clip of the Ed Sullivan Show will continue to air during the first act while the show is on tour.
And that brings me to my final point: if you are longing to see Jersey Boys but feel you missed your chance, never fear. The show is currently touring the United States and will be touring the United Kingdom through 2018.
Huge Seasons fan, as was Woodward, who would still be younger than me if alive. Attended their performances 3 times in the 60’s. Own 7 of their LPs/CDs and numerous 45s. Also seen the musical & the movie multiple times. But have been following this case for some time and Woodward’s heirs are definitely entitled to a fair amount. As much as I liked DeVito as the early driving force of the band, he WAS shady when young and maintained some of those aspects later in life, as with his failure to acknowledge Woodward’s contribution.