The musical Jersey Boys depicts the history of a popular musical quartet, the Four Seasons (“the Band”), from its origins in Belleville, New Jersey, in the 1950s, to the Band’s induction into the Rock and Roll Hall of Fame in 1990. In the late 1980s, Band member Tommy DeVito partnered with Rex Woodard to write a book telling “the whole story” of The Four Seasons. The result of this partnership was an autobiography of DeVito (“the Work”), ghostwritten by Woodard and completed before the Play was developed.
The question is whether Four Seasons front man Frankie Valli and other defendants associated with Jersey Boys infringed Woodard’s copyright in the autobiography, now owned by Donna Corbello, Woodard’s surviving wife. After many years of litigation the district court granted judgment as a matter of law (“JMOL”) on the basis that much of the alleged infringement concerned unprotected elements of the Work, and that any infringement of protected elements was fair use.
The U.S. Copyright Office’s records, it turned out, indicated that shortly before Woodard’s death in 1991, DeVito had registered the Work solely under his own name. The copy deposited with DeVito’s copyright application was identical to the Work written by Woodard with two exceptions: the title page now excluded Woodard and changed the title, and a single page in Chapter 41 was missing. Corbello was eventually able, without DeVito’s cooperation, to secure recognition of Woodard as a coauthor and co-claimant of the copyrighted Work; Corbello’s copyright of the work was registered in 2007.
Around the same time, Corbello learned through news accounts that writers of the Play had had access to the Work while creating the production and that DeVito was profiting from the Play’s success. DeVito confirmed that he had provided a copy of the Work to individuals who were involved with developing the Play to use in their research.
In 2007, Corbello sued DeVito for breach of contract and an equitable accounting, among other claims. The operative third amended complaint listed fourteen defendants – band members DeVito, Frankie Valli, and Bob Gaudio, as well as writers, directors, and producers of the Play – and twenty causes of action, including various forms of copyright infringement. DeVito subsequently settled with Corbello and was not a party to appeal.
The district court issued summary judgment orders that, taken together, adjudicated most of the claims. The court first declared that the Work was a joint work, that Woodard was a co-owner, and that Corbello, as successor-in-interest to her husband, had a 50 percent interest in the Work. But the court then entered summary judgment in favor of all defendants other than DeVito and one producer of the Play based on its interpretation of a contract between DeVito, Valli, and Gaudio.
A panel of appeal court reversed in part. On remand, the district court granted summary judgment in part, holding that, while there was substantial similarity sufficient to avoid summary judgment at least with respect to “thin” copyright protection, most of the similarities were based on historical fact or ordinary phrases, and the similarities based on protectable material were insufficient to entitle the work to regular “thick” protection as a matter of law.
The case proceeded to trial. The jury found for Corbello on the contract issue, and, on the infringement claim, found that the Play infringed the Work, use of the Work was not fair use, and 10% of the success of the Play was attributable to infringement of the Work. The jury was not asked to calculate or award damages.
After the verdict, the district court granted the Defendant’s motion for JMOL as to fair use, denied Defendant’s motion for JMOL on other grounds, and granted a motion for a new trial on apportionment. The appeal followed. The appeal court reviewed the grant of judgment as matter of law de novo. The parties’ central disagreements in this case are whether the Play is substantially similar to the Work and whether the defendants copied any protectable portions of the Work.
The substantial-similarity test
“The substantial-similarity test contains an extrinsic and intrinsic component.” The extrinsic test requires a three-step analysis: (1) the plaintiff identifies similarities between the copyrighted work and the accused work; (2) of those similarities, the court disregards any that are based on unprotectable material or authorized use; and (3) the court must determine the scope of protection (“thick” or “thin”) to which the remainder is entitled “as a whole.”
Only if the extrinsic analysis succeeds does the so-called “intrinsic” analysis takes place. The intrinsic test “examines an ordinary person’s subjective impressions of the similarities between two works,” and involves questions of fact determined by the jury under instructions as to the level of protection applicable.
Applying this framework, the district court, before trial, conducted the extrinsic analysis and granted partial summary judgment for the defendants, concluding that much of the alleged infringement in this case involved either elements original to the Play or similarities between the Play and unprotected elements of the Work, such as “historical facts or ordinary phrases.” Twelve alleged similarities between the Work and the Play survived this initial review and went to the jury.
In its post-trial order granting JMOL for Defendants, the district court concluded that most of the twelve remaining similarities were aspects of the Work not protectable by copyright. The court undertook this analysis as part of its conclusion that any infringement was fair use and did not explicitly frame its conclusions as rulings on infringement.
The appeal concluded that all twelve similarities the jury considered were not infringing, some under an analysis similar to that used in the district court’s order and others under what some courts have referred to as the doctrine of copyright estoppel. The appeal discussed each category in turn.
Application of the Extrinsic Test to Elements of the Work that Are Undisputedly Factual
The appeal first carefully examined whether the alleged copying or similarities are based on protectable elements of the copyrighted work. As the district court summarized, the Work is a work of historical fact, as recounted by DeVito with the assistance of Woodard’s writing skills.
The creative aspects of the Work do not generally concern things like character, plot, and setting, but rather writing style and presentation. Neither DeVito nor Woodard created or even claimed to have created any characters, plot lines, settings, etc.
Though the creative expression that is in the Work – the “writing style and presentation” – is protected by copyright, the assertedly historical elements are not. Each of the six similarities between the Play and the Work discussed below fails the extrinsic test for substantial similarity because each involves only non-protectable elements of the Work.
Tommy DeVito’s Introduction
Corbello alleged that description of DeVito is substantially similar to the one in the Play and so infringing. But DeVito is not a fictional character whose personality was created in the Work. This depiction of DeVito – as Corbello’s expert put it, his “voice, cool demeanor, and braggadocio” – is not original to the Work, and so not a protectable element. A character based on a historical figure is not protected for copyright purposes.
Introduction of the Song “Sherry”
Both the Play and the Work depict Bob Gaudio arriving late to a rehearsal excited about a new song he just wrote, “Sherry,” which – no surprise – became a major hit. As the district court concluded, the dialogues are completely different, as is DeVito’s initial reaction to the song. The only similarities are unprotectable historical facts: Gaudio wrote the song at the last minute, he was late to rehearsal, and the song was ultimately successful.
Introduction of the Song “Big Girls Don’t Cry”
Both the Play and the Work report that Crewe and Gaudio co-wrote the song. As the district court correctly concluded, the “only similarity is the unprotectable historical fact that the song was inspired by the Rhonda Fleming line.” That similarity does not include any protectable element of the Work.
Comparisons between the Four Seasons and the Beatles
The similarities between the Work’s allusions to the Beatles and the longer, more detailed and more evocative comparison in the Play are the words “social movement” and the unprotectable historical fact that the two music groups competed for record sales and chart placements. Even if the Work was the first to describe the Beatles as representing a “social movement” – which is neither proven nor disproven in the record – this concept is an idea unprotectable by copyright.
The expression of that idea could be protected if it was original to the Work, but use of the phrase “social movement” is all but inevitable in the presentation of that idea. The words “social movement” thus form an unprotectable common phrase describing an idea.
Introduction of the Song “Dawn”
It is an unprotectable historical fact that the Beatles and the Four Seasons generally competed for chart placement. That “Dawn” charted against songs by the Beatles is similarly an unprotectable historical fact. No protectable elements of the Work share any similarity with the “American Revolution” scene in the Play.
Description of the Rock and Roll Hall of Fame Induction Ceremony
Both the Play and the Work depict the Four Season’s induction into the Rock and Roll Hall of Fame in 1990. The Band’s members reunited at the induction ceremony and performed for the first time in many years. These historical events are not protectable by copyright.
The idea that band members performing together after many years apart would evoke the feeling of a time machine flows naturally from the plot premise of a band reuniting and is classic scenes-a-faire. And as the district court correctly ruled, the words “time machine” constitute an ordinary phrase and so is not protectable.
Application of the Extrinsic Test to Claimed Fictions Represented to be Facts—So-Called “Copyright Estoppel”
Under the doctrine, called the “copyright estoppel”, elements of a work presented as fact are treated as fact, even if the party claiming infringement contends that the elements are actually fictional. An author who holds their work out as nonfiction thus cannot later claim, in litigation, that aspects of the work were actually made up and so are entitled to full copyright protection.
“Given an express representation that the work is factual, the case law indicates that the author will be estopped from claiming fictionalization, even if most readers would not believe the representation.”
Detrimental reliance is not an element of this doctrine, as “the so-called estoppel is created solely by plaintiff’s affirmative action and representation that the work was factual.” Application of estoppel concepts often suggests that the party against whom estoppel is applied is in some way culpable.
It would hinder, not “promote the progress of science and useful arts” to allow a copyright owner to spring an infringement suit on subsequent authors who “built freely” on a work held out as factual, contending after the completion of the copyrighted work, and against the work’s own averments, that the purported truths were actually fictions. Copyright protects the creative labor of authors; it does not protect authors’ post-completion representations about the lack of veracity of their own avowedly truthful work.
Here, the text of the Work explicitly represents its account as historically accurate, not historical fiction. Both Corbello’s husband and she herself sent potential publishers cover letters emphasizing that the Work provided a behind-the-scenes factual look at the Band. Consistent with those promises of truthfulness, the Work reads as a straightforward historical account and is presented as an autobiography, with DeVito listed as a co-author. So the Work was expressly and repeatedly held out as a factual account.
Corbello argued strenuously that the asserted truths doctrine cannot apply in this case because the Work was never published. She argued that only representations of truth made to the public trigger the asserted truths doctrine, and that there was no representation to the public because the Work was unpublished.
This passing reference to “the public,” does not suggest that publication is a prerequisite to the application of the asserted truths doctrine; “the public” could include actual or intended readers of work, including works not mass produced for sale.
Requiring readers of purported nonfiction to investigate the accuracy of each quoted statement in a work that presents itself as completely true and accurate nonfiction would frustrate the pro-creation goals of copyright law.
Each of the six similarities between the Play and the Work the appeal next discussed fail the extrinsic test for substantial similarity because, whether or not actually factual, they involve – sometimes in combination with other non-protected features – elements of the work held out as facts and so not protectable.
DeVito’s Introduction of Valli to Mary and Mary’s Characterization
As the district court correctly concluded, “the Play copied no creative expression from the Work in relation to Valli’s introduction to or relationship with Mary. The Play used its own creative expression in telling the story of Valli’s interest in Mary. The historical facts of these events are not protectable by copyright.” Facts presented in a historical work, “whether correct or incorrect,” may be used by subsequent authors without infringing.
DeVito’s Intercession After Valli’s Arrest
Both the Play and the Work relay a story about DeVito helping Valli after he was arrested. The only similarities are the unprotectable historical fact of intervention by DeVito on Valli’s behalf and Valli’s probation sentence. That Valli testified at his deposition that neither story is accurate does not change analysis. It is not protectable creative fiction. As the Work holds it out as true that DeVito helped Valli, that asserted fact is not copyright protectable.
The “Roman Orgy” Scene
Both the Work and the Play depict a party the record label threw for the Band during their first nationwide tour. As the district court correctly noted, that the party took place is an unprotectable historical event.
Fake Murder in Valli’s Car
The Work and the Play both depict an incident in which some men attempt to extort money from Valli after staging a fake murder in his car. The incident itself is an unprotectable historical event, and Valli himself has told the story many times, including to the writers of the Play. The only similar expression is the “asshole” line. That line alone is unprotected by copyright because the Work holds it out as historically accurate dialogue. The Play may have “taken facts and ordinary phrases from the Work, but it has not taken protected expression.”
The Dialogue Surrounding the Song Title and Subject Matter of the Song “Walk Like a Man”
The Work and the Play feature a similar portrayal of the origin of the title of the song “Walk Like a Man,” written by Gaudio. The parties do not dispute that conversation actually happened, so the event itself is not protectable. They do dispute whether the particular language used in the Work was original expression, rather than a report of what was actually said.
The dialogue is held out by the Work as a historically accurate depiction of a real conversation. The asserted facts do not become protectable by copyright even if, as Corbello now claims, all or part of the dialogue was made up.
Given the Work’s emphatic representation that it is a nonfiction autobiography, the Play did not infringe on any of the protected expressive elements of the Work, even if the writers of the Play “appropriated Woodard’s historical research.” As the similarities between the Play and the Work involve only elements of the Work not protected by copyright, the appeal affirmed the district court’s grant of JMOL.