Donna Corbello v. Frankie Valli , 777 F.3d 1058 ( 2015 )

FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
DONNA CORBELLO, No. 12-16733
Plaintiff Appellant,
D.C. No.
v. 2:08-cv-00867-
RCJ-PAL
THOMAS GAETANO DEVITO,
Defendant,
and
FRANKIE VALLI; ROBERT J. GAUDIO;
MARSHALL BRICKMAN; ERIC S.
ELICE; DES MCANUFF; DSHT, INC.,
FKA Dodger State Holding
Theatricals, Inc.; DODGER
THEATRICALS, LTD.; JB VIVA
VEGAS, LP; MICHAEL S. DAVID;
JERSEY BOYS BROADWAY LIMITED
PARTNERSHIP; JERSEY BOYS
RECORDS LIMITED PARTNERSHIP;
SKUNK, INC.; GETTING HOME, INC.,
Defendants-Appellees.
2 CORBELLO V. VALLI
DONNA CORBELLO, No. 13-15826
Plaintiff-Appellant,
D.C. No.
v. 2:08-cv-00867-
RCJ-PAL
THOMAS GAETANO DEVITO,
Defendant,
OPINION
and
FRANKIE VALLI; ROBERT J. GAUDIO;
MARSHALL BRICKMAN; ERIC S.
ELICE; DES MCANUFF; DSHT, INC.,
FKA Dodger State Holding
Theatricals, Inc.; DODGER
THEATRICALS, LTD.; JB VIVA
VEGAS, LP; MICHAEL S. DAVID;
JERSEY BOYS BROADWAY LIMITED
PARTNERSHIP; JERSEY BOYS
RECORDS LIMITED PARTNERSHIP;
SKUNK, INC.; GETTING HOME, INC.,
Defendants-Appellees.
Appeal from the United States District Court
for the District of Nevada
Robert Clive Jones, District Judge, Presiding
Argued and Submitted
June 13, 2014—San Francisco, California
Filed February 10, 2015
CORBELLO V. VALLI 3
Before: Diarmuid F. O’Scannlain, Robert D. Sack *,
and Carlos T. Bea, Circuit Judges.
Opinion by Judge O’Scannlain;
Concurrence by Judge Sack
SUMMARY**
Copyright
The panel reversed the district court’s summary judgment
and vacated its assessment of costs against the plaintiff in a
copyright case involving the musical “Jersey Boys.”
Plaintiff Donna Corbello is the heir of Rex Woodard,
ghostwriter of an unpublished autobiography of Thomas
DeVito, a former member of the band the “Four Seasons.” In
1999 DeVito and another former band member, Nicholas
Macioci, executed an agreement granting two of their former
bandmates, Frankie Valli and Bob Gaudio, the exclusive right
to use aspects of their lives related to the Four Seasons,
including their biographies, in the development of a musical.
Applying New York law, the panel held that the 1999
agreement constituted a transfer of ownership of DeVito’s
derivative-work right in the autobiography, rather than a
*
The Honorable Robert D. Sack, Senior Circuit Judge for the U.S. Court
of Appeals for the Second Circuit, sitting by designation.
**
This summary constitutes no part of the opinion of the court. It has
been prepared by court staff for the convenience of the reader.
4 CORBELLO V. VALLI
nonexclusive license, to Valli and Gaudio. Distinguishing
Sybersound Records, Inc. v. UAV Corp., 517 F.3d 1137 (9th
Cir. 2008), the panel held that a co-owner of a copyright may
transfer that right without permission from his co-owner. The
panel held that because copyright co-owners must account to
one another for any profits earned by exploiting that
copyright, the district court erred in rejecting Corbello’s
claims for accounting and declaratory relief.
The panel also concluded that the defendants had failed
to establish the existence of a license as an affirmative
defense to Corbello’s copyright infringement claims. The
panel stated that its conclusion that the 1999 agreement
constituted a transfer of ownership of DeVito’s
derivative-work right would ordinarily preclude Corbello’s
infringement claims against Valli and Gaudio because a
co-owner of a copyright cannot be liable to another co-owner
for infringement. But a material issue of fact remained as to
whether the agreement’s reversionary clause later terminated
Valli and Gaudio’s ownership right. The panel held that a
grant of summary judgment was not appropriate on the
ground of an implied license based on DeVito’s conduct.
The panel reversed the district court’s grant of summary
judgment on Corbello’s claims for accounting, declaratory
relief, and copyright infringement and vacated the district
court’s assessment of costs against Corbello. It remanded the
case for further proceedings.
Concurring in the judgment, Judge Sack agreed that the
case must be remanded for further proceedings. He
disagreed, however, that the word “biographies” in the 1999
agreement unambiguously included the manuscript of the
autobiography ghost written by Woodard, and that the 1999
CORBELLO V. VALLI 5
agreement therefore transferred certain derivative rights in the
autobiography to Valli and Gaudio. Judge Sack would
conclude that the language in the agreement was ambiguous
under New York law. He also wrote that, even if the 1999
agreement unambiguously transferred DeVito’s interest in the
autobiography, Sybersound compels the conclusion that the
transfer effected only a nonexclusive, rather than an
exclusive, license to use the autobiography for the creation of
a musical.
COUNSEL
Gregory H. Guillot, Gregory H. Guillot, P.C., Dallas, Texas,
argued the cause and, along with Lawrence Kasten and
Robert H. McKirgan, Lewis and Roca, LLP, Phoenix,
Arizona, filed the briefs for the plaintiff-appellant.
Daniel M. Mayeda, Leopold, Petrich & Smith, P.C., Los
Angeles, California, argued the cause and, along with Samuel
S. Lionel and Maximiliano D. Couvillier III, Lionel, Sawyers
& Collins, filed the brief for the defendants-appellees.
OPINION
O’SCANNLAIN, Circuit Judge:
We must decide whether a contractual grant of the
exclusive right to use an individual’s “biographies” to create
a Broadway musical stage play also constitutes a transfer of
a copyright ownership interest in that individual’s
unpublished autobiography.
6 CORBELLO V. VALLI
I
A
In 1988, Rex Woodard, a lawyer, journalist, and “Four
Seasons” devotee, entered into a written agreement to
ghostwrite the autobiography (the “Work”) of Thomas
DeVito, one of the original members of the band (later known
as “Jersey Boys”). Pursuant to this agreement, Woodward
and DeVito would split the proceeds from publishing or
otherwise exploiting the manuscript. After completing the
Work but before securing publication, Woodward succumbed
to lung cancer in 1991. Unbeknownst to Woodward’s widow
and heir, Donna Corbello, DeVito had registered the Work
with the U.S. Copyright Office solely under his own name in
1991, four months before Woodward’s death.
In 1999, DeVito and another former Four Seasons band
member, Nicholas Macioci, executed an agreement (the
“1999 Agreement”) with two of their former bandmates,
Frankie Valli and Bob Gaudio. Pursuant to this agreement,
DeVito and Macioci granted to Valli and Gaudio the
“exclusive right to use” “aspects of [their lives] related to The
Four Seasons including, by way of example, [their] creative
contributions, biographies, events in [their lives], names and
likenesses (the ‘Materials’)” to develop a musical stage
performance (the “Play”) about the “Four Seasons.” DeVito
and Macioci further waived all claims in connection with the
Materials, including any claim for violation of copyright.
After an abortive attempt to create the Play with an initial
producer, Valli and Gaudio entered into a twenty-four page
letter agreement dated May 1, 2004 (the “2004 Agreement”)
to produce the Play with another production company.
CORBELLO V. VALLI 7
Pursuant to this agreement, Valli and Gaudio granted the right
to use the band, the band’s music, and the band members’
names, likenesses, and life stories. In exchange for these
rights, Valli and Gaudio would receive certain specified
advances and royalties calculated as a percentage of gross
box-office receipts from future productions. While the
contract was printed on the letterhead of Dodgers Theatricals,
Ltd., and reserved a space on the signature page for that same
entity, the text of the agreement defines a different entity,
Dodger Stage Holding Theatricals, Inc., as the “Producer.”
Pursuant to the 1999 Agreement, Valli and Gaudio were to
distribute—and did in fact so distribute—a portion of any
such payments received to DeVito. The musical “Jersey
Boys,” produced pursuant to this Agreement, opened on
Broadway in late 2005 to popular and critical acclaim, and
has enjoyed continued international success.
B
Corbello first discovered arrangements made by DeVito
and his bandmates after she and her sister-in-law renewed
their efforts to publish the Work on the eve of the “Jersey
Boys” debut. Supposing that the Broadway musical might
rekindle interest in the band, she approached DeVito who,
after a month of correspondence, rejected her overtures,
concluding that the Work was “not saleable.” In 2006, the
success of “Jersey Boys” prompted Corbello and her sister-in-
law to confirm the copyright in the Work in the hope of future
exploitation, when they discovered that DeVito had already
registered—solely in his own name—a manuscript virtually
identical to the Work. Corbello subsequently filed a
supplementary application with the U.S. Copyright Office to
add Woodward as a coauthor and co-claimant of the Work,
which prompted the Office to amend the certificate of
8 CORBELLO V. VALLI
registration to list Woodward and DeVito as coauthors of the
Work and co-claimants thereto.
Based on such revelation, and further accounts from
writers, actors, and others involved in the Play that attributed
inspiration in part to the unpublished autobiography, Corbello
initially brought suit against DeVito for equitable accounting,
declaratory judgment, and breach of contract. Valli’s divorce
proceedings in 2008 brought to public light further
documents, including the 1999 Agreement, regarding
DeVito’s involvement in producing the Play. Corbello filed
a Third Amended Complaint in May 2011, alleging twenty
causes of action, including equitable accounting, declaratory
judgment, and copyright infringement under both U.S. and
foreign law, not only against DeVito but also against Valli
and Gaudio, as well as the writers, directors, and producers of
the Play and various related entities.
Corbello alleges that the Play constitutes, at least in part,
a “derivative work” of the DeVito autobiography, the right to
create which resides exclusively in the copyright-holders of
the underlying work, and their lawful successors, assignees,
and licensees. Corbello thus concludes that she, as legatee of
Woodward’s joint copyright in the Work, deserves to share in
the profits reaped by the various Appellees’ licensing and
assignment, or infringement, as the case may be, of the
underlying rights.
Facing dueling motions for summary judgment on several
of the counts, the district court issued two orders,
incorporated into the judgment from which Corbello here
appeals, granting summary judgment to all Appellees on
Corbello’s claims for equitable accounting, declaratory
judgment, and copyright infringement. In so ruling, the
CORBELLO V. VALLI 9
district court concluded that (1) the 1999 Agreement
constituted not an assignment of DeVito’s copyright interest
in, but rather a “selectively exclusive license” to use, the
Work; (2) the 1999 Agreement, the 2004 Agreement, and
DeVito’s subsequent conduct sufficiently licensed Appellees
to use the Work in developing the Play; and (3) because
United States law governs whether the Appellees possessed
a valid license to use the Work, Corbello’s claims for
copyright infringement under foreign law must also fail.
Corbello timely appealed, disputing all of these conclusions
as well as the district court’s taxation of costs against her.1
II
Corbello first contends that the 1999 Agreement
constituted a transfer of DeVito’s copyright interest in the
Work, rather than a selectively exclusive license, and that she,
as the legatee of Woodward—a duly registered co-author and
co-claimant of the Work—is therefore entitled to a portion of
the proceeds resulting from Valli and Gaudio’s exploitation
of that ownership interest.
“A co-owner of a copyright must account to other co-
owners for any profits he earns from licensing or use of the
copyright.” Oddo v. Ries, 743 F.2d 630, 633 (9th Cir. 1984).
Copyright law considers both exclusive licenses and
assignments to be “transfer[s] of copyright ownership.”
17 U.S.C. § 101. The statute enumerates various rights that
copyright owners hold, including the right “to prepare
derivative works based upon the copyrighted work.” Id.
§ 106(2). Copyright owners may transfer “[a]ny of the
exclusive rights comprised in a copyright, including any
1
We have jurisdiction pursuant to 28 U.S.C. § 1291.
10 CORBELLO V. VALLI
subdivision of any of the rights specified by section 106,” id.
§ 201(d)(2), so long as the transfer is evidenced by a signed
writing, id. § 204(a).
The parties do not dispute that Corbello succeeded to her
husband’s interest in the copyright of the Work. Thus,
Corbello’s claims for declaratory relief and equitable
accounting turn on whether DeVito effectively transferred
some quantum of his copyright co-ownership interest to
Appellees.
A
Pursuant to the 1999 Agreement, DeVito “grant[ed] to
[Valli and Gaudio] the exclusive right to use and incorporate
the Materials in one or more theatrical productions, and any
and all ancillary and subsidiary exploitations thereof.” As
defined in the Agreement, “Materials” includes, inter alia,
DeVito’s “biographies.” The 1999 Agreement also contains
a provision by which DeVito agreed to “waive any claim in
connection with the Materials or Works including . . . any
claim that the Works . . . violate any right of . . . copyright.”
Despite concluding that the Agreement’s inclusion of
“biographies” in the definition of “Materials” sufficiently
included the Work so as to grant Valli and Gaudio an
exclusive license to use it in producing the Play, the district
court nevertheless found that the Work fell outside of the
Agreement’s use of “biographies” for the purpose of
transferring ownership of a copyright interest in the Work.
We are not persuaded by the district court’s interpretation.
The 1999 Agreement is governed by New York law.
Under New York law, a contract is unambiguous if “on its
CORBELLO V. VALLI 11
face[, it] is reasonably susceptible of only one meaning.”
Greenfield v. Philles Records, Inc., 780 N.E.2d 166, 171
(N.Y. 2002). If a contract is unambiguous, the court may not
consider extrinsic evidence of the parties’ intent. Id. at 170.
In the context of the 1999 Agreement, the term
“biographies” is not ambiguous. Standard dictionary
definitions emphasize that biographies generally include both
a formal and substantial written component: a “biography” is
a “history of a person’s life” (the substance) that is “usually
written” (the form). MERRIAM-WEBSTER’S COLLEGIATE
DICTIONARY (10th ed. 1998); accord OXFORD ENGLISH
DICTIONARY (3rd ed. 2010) (“The process of recording the
events and circumstances of another person’s life, esp. for
publication . . . ; the documenting of individual life histories
. . . considered as a genre of writing or social history.”) (first
listed definition); id. (“A written account of the life of an
individual.”) (second listed definition). As an account of
DeVito’s life that has been reduced to writing, the Work, on
its face, qualifies under these straightforward definitions as a
“biography.”
Nor are we persuaded by Appellees’ argument that
“biography,” as used in the 1999 Agreement, refers not to
documented life histories, but rather to the general story of
one’s life. First, this definition, even when offered by
dictionaries, takes a subsidiary position to the more common
definition of a documented history. See OXFORD ENGLISH
DICTIONARY (3rd. ed. 2010) (third and final listed definition);
cf. MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY (10th ed.
1998) (“an account of the life of something (as an animal, a
coin, or a building)”) (third and final listed definition).
Moreover, under New York law, courts may not choose to
interpret a contractual provision so as to render another term
12 CORBELLO V. VALLI
superfluous. See Sayers v. Rochester Telephone Corp. Supp.
Mgmt. Pension Plan, 7 F.3d 1091, 1095 (2d. Cir. 1993); see
also Antonin Scalia & Bryan A. Garner, READING LAW: THE
INTERPRETATION OF LEGAL TEXTS 174–79 (2012) (discussing
surplusage cannon). Here, to read “biography” as referring
to DeVito’s general life story would do just that, as
“Materials” is defined to include not only biographies, but
also “creative contributions, . . . events in your life, names and
likenesses.” Thus, Appellees’ proposed definition cannot be
squared with New York’s rules governing proper contract
interpretation.
Further, to read “biographies” as Appellees urge would
largely defeat the overarching purpose of the Agreement.
Under New York law, courts should consider individual
contract provisions in light of “the entirety of the agreement
in the context of the parties’ relationship and circumstances.”
In re Riconda, 688 N.E.2d 248, 252 (N.Y. 1997). Here, as
the Agreement clearly states and uncontradicted by the
evidence in the record, the goal of the parties in executing the
Agreement was to develop a theatrical adaptation of their
own and their band’s own histories.2 DeVito cannot plausibly
claim to have retained his privilege as a copyright co-owner
to create derivative theatrical works of any biographical
manuscript he owns, yet surrendered exclusively to others his
generic “life story,” along with his name and likeness, to
2
The fact that Macioci may never have had a written biography, the
rights to which he could have transferred via the 1999 Agreement, is
perfectly in keeping with such a goal. The ability to use freely a written
biography, if such biography existed, would help Valli and Gaudio create
a Play chronicling the history of the band and its members. The fact that
one of the band members may not have actually had such a biography
does not negate the fact that, had he had such a biography, it would have
assisted Valli and Gaudio in their goal of developing the Play.
CORBELLO V. VALLI 13
create a play. Relinquishing one’s right to exploit creatively
his or her “life story,” while at the same time retaining a
corresponding right over one’s written biography, would be
a self-defeating endeavor. We decline to impute such an
incompatible purpose to the definition of “biographies” in the
1999 Agreement.
Pursuant to the 1999 Agreement, Devito granted Valli and
Gaudio the “exclusive right to use” his “biographies,”
unambiguously including the Work, to create a play. Such
play constitutes a “derivative work,” the right to create which
resides in each copyright holder of the underlying work and
may be transferred by that holder to a third party.3 Thus, in
granting this exclusive right to create, whether classified as
an exclusive license or an assignment, the 1999 Agreement
constitutes a transfer of ownership of Devito’s derivative-
work right in the Work to Valli and Gaudio.
B
Appellees argue that our precedent, Sybersound Records,
Inc. v. UAV Corp., 517 F.3d 1137 (9th Cir. 2008), prohibits
a co-owner of a copyright, such as DeVito, from transferring
that right without permission from his co-owner, in this
instance, Corbello. But that argument stretches Sybersound’s
holding too far.
3
Despite the concerns expressed by the concurrence, including the Work
in the definition of “biographies” does not restrict DeVito from exercising
those other statutory rights of copyright ownership identified in 17 U.S.C.
§ 106 (assuming, of course, that DeVito has not independently transferred
those rights to third parties). See infra, at 26–28 (Sack, J., concurring).
The Agreement simply restricts DeVito from alone using the Work to
create a theatrical production.
14 CORBELLO V. VALLI
Copyright “is a creature of statute, and the only rights that
exist under copyright law are those granted by statute.”
Silvers v. Sony Pictures Entm’t, Inc., 402 F.3d 881, 883–84
(9th Cir. 2005) (en banc). Specifically, “[a] copyright
consists of a bundle of six statutorily created rights, currently
codified at 17 U.S.C. § 106.” Sybersound, 517 F.3d at 1145
n.3.4 While § 106 identifies what rights are included in a
copyright, § 201(d) describes how an owner can transfer a
4
The six statutorily created rights created by 17 U.S.C. § 106 include
the right:
“(1) to reproduce the copyrighted work in copies or
phonorecords;
(2) to prepare derivative works based upon the
copyrighted work;
(3) to distribute copies or phonorecords of the
copyrighted work to the public by sale or other transfer
of ownership, or by rental, lease, or lending;
(4) in the case of literary, musical, dramatic, and
choreographic works, pantomimes, and motion pictures
and other audiovisual works, to perform the
copyrighted work publicly;
(5) in the case of literary, musical, dramatic, and
choreographic works, pantomimes, and pictorial,
graphic, or sculptural works, including the individual
images of a motion picture or other audiovisual work,
to display the copyrighted work publicly; and
(6) in the case of sound recordings, to perform the
copyrighted work publicly by means of a digital audio
transmission.”
17 U.S.C. § 106.
CORBELLO V. VALLI 15
copyright and its component parts. See 17 U.S.C. § 201(d).
Section 201(d)(1) provides that “[t]he ownership of a
copyright may be transferred in whole or in part by any
means of conveyance or by operation of law[.]” Id.
§ 201(d)(1). And § 201(d)(2) states that “[a]ny of the
exclusive rights comprised in a copyright, including any
subdivision of the rights specified in section 106, may be
transferred as provided by [§ 201(d)(1)] and owned
separately.” Id. § 201(d)(2).
We had several occasions prior to Sybersound to interpret
§ 201(d)’s broad language authorizing the alienabilty of
copyrights. In Bagdadi v. Nazar, we explained, “[i]t is
important to note that the various rights included in a
copyright are divisible and that ‘any of the exclusive rights
comprised in a copyright . . . may be transferred . . . and
owned separately.’” 84 F.3d 1194, 1197 (9th Cir. 1996)
(citing 17 U.S.C. § 201(d)(2)). In Gardner v. Nike, Inc., we
added, “[s]ection 201(d)(1) enables the owner to transfer any
fraction of his or her ownership interest to another party,
thereby making that party a whole or joint owner.” 279 F.3d
774, 779 (9th Cir. 2002). And in Silvers v. Sony Pictures, an
en banc panel explained that the six component parts of a
copyright “may be chopped up and owned separately, and
each separate owner of a subdivided exclusive right may sue
to enforce that owned portion of an exclusive right, no matter
how small.” 402 F.3d at 887 (emphasis added). In short, we
made clear prior to Sybersound that copyrights are divisible
and that a copyright owner can freely transfer any portion of
his ownership interests in that copyright; after all, the plain
language of § 201(d) commands as much.
Sybersound dealt with a plaintiff’s standing to sue for
copyright infringement. In that case, several entities together
16 CORBELLO V. VALLI
owned the copyright to nine songs. 517 F.3d at 1144. One
such owner attempted to transfer to Sybersound the exclusive
right to use those songs for karaoke purposes. Id. at 1142.
Sybersound later filed a lawsuit against other third parties,
alleging those parties were infringing on Sybersound’s right
to use the songs for karaoke purposes. Id. at 1145.
We held that when one co-owner independently attempts
to grant an exclusive license of a particular copyright interest,
that licensee—in this case, Sybersound—does not have
standing to sue alleged third-party infringers. Id. at 1146.
After all, one co-owner, acting independently, “may not limit
the other co-owners’ independent rights to exploit the
copyright.” Id. Such a conclusion stems from the self-
evident principle that a joint-owner cannot transfer more than
he himself holds; thus, an assignment or exclusive license
from one joint-owner to a third party cannot bind the other
joint-owners or limit their rights in the copyright without their
consent. In other words, the third party’s right is “exclusive”
as to the assigning or licensing co-owner, but not as to the
other co-owners and their assignees or licensees. As such, a
third-party assignee or licensee lacks standing to challenge
the attempted assignments or licenses of other copyright
owners.
The Sybersound court grounds this venerable principle of
copyright law deeply in the statutory text, citing the definition
of a “transfer of ownership” as including an assignment or
license of any of the “exclusive rights comprised in a
copyright . . . but not including a non exclusive license,” id.
(quoting 17 U.S.C. § 101), and a provision that permits
subdivision and alienation of “[a]ny of the exclusive rights
comprised in a copyright,” id. (quoting 17 U.S.C. § 201(d)).
But the Court’s emphasis on the word “exclusive” in these
CORBELLO V. VALLI 17
provisions cannot mean that only sole owners possess
“exclusive” rights, as such a rule would run directly contrary
to another well-settled principle of copyright law: the right of
one joint-owner to sue third-party infringers without joining
any of his fellow co-owners, a right Sybersound itself
expressly recognizes. See id. at 1145 (noting that “co-owners
may bring suit for copyright infringement without joining
other co-owners” (citing Davis v. Blige, 505 F.3d 90, 99 (2d.
Cir. 2007))). After all, the copyright statute permits
infringement suits only if brought by owners of an “exclusive
right” against alleged violators of such “exclusive right.”
17 U.S.C. § 501 (emphasis added). If an “exclusive right”
could only be possessed by a sole owner of a copyright, a co-
owner would be unable to bring an infringement action to
protect his interest.
Moreover, such a limitation would contradict the principle
of the free transferability of copyright ownership interests—a
principle reflected in both the express language of § 201(d)
and our Circuit precedent, neither of which treat
transferability differently based on whether the original
copyright owner is a sole owner or a co-owner. See, e.g.,
Silvers, 402 F.3d at 887; Gardner, 379 F.3d at 779; Bagdadi,
84 F.3d at 1197.5 Thus, Sybersound merely imposes a
5
In fact, we have suggested quite the opposite. We implicitly held prior
to the Copyright Act of 1976 that a co-owner of a copyright can transfer
its interests in a copyright without the permission of the other co-owners.
See Piantadosi v. Loew’s Inc., 137 F.2d 534, 536–37 (9th Cir. 1943).
Because the Copyright Act of 1976 removed prior restrictions on dividing
and transferring the component parts of copyrights, see Gardner, 279 F.3d
at 777–79, it stands to reason that if co-owners could unilaterally and
severally transfer their copyright interests before 1976, co-owners could
do the same after 1976. Indeed, § 201(a) specifically contemplates the
existence of copyright co-owners. 17 U.S.C. § 201(a) (“The authors of a
18 CORBELLO V. VALLI
standing limitation on copyright assignees and licensees that
reflects the basic principle that one cannot give away more
than one’s share in a copyright—it need not, and should not,
be extended to limit a co-owner’s ability to transfer
unilaterally any exclusive copyright interests that he himself
possesses.
Therefore, Sybersound presents no obstacle to Devito’s
exclusive transfer of his derivative-work right to Valli and
Gaudio under the 1999 Agreement. Because the Agreement
unambiguously transfers Devito’s derivative-work right to
Valli and Gaudio, and copyright co-owners must account to
one another for any profits earned by exploiting that
copyright, the district court erred in rejecting Corbello’s
claims for accounting and declaratory relief.
III
The district court granted summary judgment in favor of
Appellees with respect to Corbello’s infringement claims
based on its finding that Valli and Gaudio held a license to
use the Work in the production of the Play. See Worldwide
Church of God v. Phila. Church of God, Inc., 227 F.3d 1110,
1114 (9th Cir. 2000) (“The existence of a license creates an
affirmative defense to a claim of copyright infringement.”).
We have concluded, however, that the 1999 Agreement
constituted a transfer of DeVito’s derivative-work interest in
the copyright, rather than a license. Therefore, Appellees
joint work are coowners of copyright in the work.”). Yet nothing in
§ 201(d) purports to authorize broad alienability to sole owners of a
copyright while simultaneously withholding that same right from co-
owners of a copyright.
CORBELLO V. VALLI 19
have necessarily failed to establish the existence of a license
as an affirmative defense to Corbello’s infringement action.
A
Our conclusion that the 1999 Agreement constituted a
transfer of ownership of DeVito’s derivative-work right in the
Work to Valli and Gaudio would ordinarily preclude
Corbello’s infringement claims against Valli and Gaudio, as
“[a] co-owner of a copyright cannot be liable to another co-
owner for infringement of the copyright.” Oddo v. Ries,
743 F.2d 630, 632–33 (9th Cir. 1984). But a material issue of
fact remains as to whether the Agreement’s reversionary
clause later terminated Valli and Gaudio’s ownership right,
resulting in the Appellees’ subsequent infringement upon
Corbello’s copyright interest.
The Agreement provided that the rights granted therein
would continue perpetually either (i) if they merged with the
Play pursuant to a contract with an initial producer or
(ii) pursuant to a contract into which Valli and Gaudio might
enter with a second producer within two years of the initial
producer’s rights lapsing.
Corbello argues that Valli and Gaudio did not execute the
2004 Agreement (the second production contract) within that
two-year period. Specifically, she points to evidence in the
record which suggests that the initial producer’s rights
expired on December 10, 2002, and that the 2004 Agreement,
though dated May 1, 2004, was not in fact fully executed
until October 27, 2005. If true, the reversionary clause of the
1999 Agreement would have terminated Valli and Gaudio’s
ownership right as of December 10, 2004, and any
subsequent exploitation by Appellees of the Work may have
20 CORBELLO V. VALLI
infringed upon Corbello’s copyright interest. Appellees
counter with testimony of Michael David, president of
Dodger Theatricals, which suggests that the parties to the
2004 Agreement may have reached an oral agreement prior
to December 10, 2004. In the face of such contradictory
evidence regarding whether the reversionary clause
terminated Valli and Gaudio’s derivative-work right, disputed
material facts preclude summary judgment as to Corbello’s
infringement claims based on Valli and Gaudio’s ownership
of the copyright interest.6
B
Appellees argue alternatively that DeVito’s conduct
resulted in a grant to them of an implied nonexclusive license
to use the Work, effective regardless of the reversionary
clause in the 1999 Agreement. In support of their argument,
they cite DeVito’s delivery of the Work to the writers of the
Play with the apparent intention that they would use the Work
to create the Play, along with DeVito’s attendance at
performances of, and acceptance of royalty checks from, the
Play.
6
The district court also held that 17 U.S.C. § 203(a)(4) required DeVito
to give Valli and Gaudio written notice before he could terminate their
rights via the reversionary clause. But § 203(a)(4) is inapplicable in this
case. The Ninth Circuit has held that when “the contract at issue is of a
definite duration, neither Section 203, nor any other provision of the
Copyright Act, governs [a copyright owner’s] right to terminate or rescind
the license [or assignment].” Scholastic Entm’t Inc. v. Fox Entm’t Grp.,
Inc., 336 F.3d 982, 988 (9th Cir. 2003). In light of the reversionary
clause, the 1999 Agreement was of definite duration, and therefore the
notice requirement of § 203 does not apply.
CORBELLO V. VALLI 21
While we may consider delivery of a copyrighted object
as “a relevant factor” to determine the existence of an implied
license, Asset Marketing Sys., Inc. v. Gagnon, 542 F.3d 748,
755 n.4 (9th Cir. 2008), the copyright statute forbids courts
from inferring a transfer of copyright or a license from mere
delivery of the material object in which the work is
embodied. 17 U.S.C. § 202. Rather, courts should focus
primarily on “the licensor’s objective intent at the time of the
creation and delivery of the software as manifested by the
parties’ conduct.” Gagnon, 542 F.3d at 756. For instance,
the Ninth Circuit “ha[s] held that an implied license is
granted when (1) a person (the licensee) requests the creation
of a work, (2) the creator (the licensor) makes that particular
work and delivers it to the licensee who requested it, and
(3) the licensor intends that the licensee-requestor copy and
distribute the work.” Gagnon, 542 F.3d at 754–55 (internal
quotation marks and footnote omitted).
Here, DeVito’s intentions in delivering the Work to the
writers are unclear at best. Appellees did not ask DeVito to
create the Work. In fact, the creation of the Work long
predated any specific effort on DeVito’s part to parlay his life
into a Broadway musical. Cf. Gagnon, 542 F.3d at 755
(finding an implied license when, among other things, the
licensor created the copyrighted work at the licensee’s
request). Moreover, DeVito specifically denied that he ever
licensed the Work to Appellees. DeVito initially provided the
Work to the writers for the purpose of providing background
information on DeVito’s friend, Raymond Gyp DeCarlo. In
doing so, DeVito gave explicit instructions that the writers
should not duplicate or circulate the Work and that the Work
should remain confidential, because DeVito wanted to
publish the Work in the future. The writers then returned the
Work to DeVito a mere few days later. DeVito’s apparent
22 CORBELLO V. VALLI
lack of familiarity with the content of the Work as reflected
in the Play further undercuts any potential connection
between his support of the Play and his support of the
Appellees’ use of the Work in its production. Finally, the
express provisions in the 1999 Agreement governing the use
of the Work further controvert any apparent expectation that
Valli and Gaudio might have had in otherwise using the
Work.
In light of such contradictory facts regarding DeVito’s
intent in delivering the Work, the district court’s grant of
summary judgment on the ground of an implied license—to
the extent it rested on such a ground—was inappropriate.
IV
Relying on its conclusion that the 1999 Agreement
constituted a license of DeVito’s copyright interest, rather
than a transfer of ownership, the district court granted
summary judgment to Appellees on Corbello’s claims of
infringement under foreign law. Because we here conclude
that the Agreement instead constituted a transfer of
ownership, summary judgment on such foreign law grounds
must be reversed as well.
V
Corbello appeals the district court’s assessment of costs
against her. Because we reverse the district court’s grant of
summary judgment, we vacate the award of costs and remand
for reconsideration after other proceedings on remand. See,
e.g., Cusano v. Klein, 264 F.3d 936, 951 (9th Cir. 2001).
CORBELLO V. VALLI 23
VI
We reverse the district court’s grant of summary
judgment in favor of Appellees, vacate its assessment of costs
against Corbello, and remand for further proceedings
consistent with this opinion. We award costs on appeal to
Corbello as the substantially prevailing party. See Fed. R.
App. P. 39(a)(4) (“[I]f a judgment is affirmed in part,
reversed in part, modified, or vacated, costs are taxed as the
court orders.”).
REVERSED IN PART, VACATED IN PART, AND
REMANDED.
SACK, Senior Circuit Judge, concurring in the judgment:
I agree that we must remand this case to the district court
for further proceedings. I disagree, however, that the word
“biographies” in the 1999 Agreement unambiguously
includes the manuscript of the autobiography of DeVito ghost
written by Corbello’s decedent Woodard for DeVito (“the
Work”), completed some eight years earlier, and that the
1999 Agreement therefore transferred certain derivative
rights in the Work to the counter-parties to the Agreement –
Valli and Gaudio. First, I would conclude that the language
is ambiguous under New York law and remand on that basis
for the district court to decide as a matter of fact whether the
1999 Agreement included a transfer of rights with respect to
the ghost-written autobiography. But second, even if the
1999 Agreement unambiguously transfers DeVito’s interest
in the Work, I think Sybersound Records, Inc. v. UAV Corp.,
517 F.3d 1137 (9th Cir. 2008), compels us to conclude that
24 CORBELLO V. VALLI
the transfer effected only a nonexclusive, rather than an
exclusive, license to use the Work for “the creation of a
musical stage play.”
I
The majority offers a plausible – but not the only
plausible – reading of the language of the 1999 Agreement.
Because the language at issue “is susceptible to more than
one reasonable interpretation,” Brad H. v. City of New York,
17 N.Y.3d 180, 186, 951 N.E.2d 743, 746 (2011), I agree
with the district court that the 1999 Agreement is ambiguous
under New York law. I think the following account of why
the 1999 Agreement does not include the transfer of or
license in all or part of the Work is also reasonable:
The parties – DeVito/Nicholas “Massi” Macioci,1 on the
one side, and Valli/Gaudio on the other – entered into the
1999 Agreement to “authorize the creation of a musical stage
play based on the life and music of ‘The Four Seasons,’” the
singing group of which all four were members, and the story
of which ultimately was reflected in the highly successful
musical “Jersey Boys.” The 1999 Agreement explains that
“the authors of the play [anticipated by the 1999 Agreement]
may wish to use or incorporate certain aspects of your [i.e.,
DeVito’s and Macioci’s] life related to The Four Seasons
including, by way of example, your creative contributions,
biographies, events in your life, names and likenesses (the
1
Nicholas “Massi” Macioci, an early member of “The Four Seasons,”
was also a signatory to the 1999 Agreement. He died in 2000, Nick Massi,
Low Man in the Four Seasons, Dies at 73, N.Y. Times, Jan. 8, 2001,
http://www.nytimes.com/2001/01/08/national/08MASS.html, however,
and has no role in the current litigation.
CORBELLO V. VALLI 25
‘Materials’).” (Emphasis added). DeVito and Macioci
accordingly granted to Valli and Gaudio “the exclusive right
to use and incorporate the Materials in one or more theatrical
productions.”
In other words, Valli and Gaudio purchased from DeVito
and Macioci the right to use “certain aspects” of their lives,
a category that is then illuminated by several “example[s],”
including “biographies.” In this light, and taking the
document as a whole as we must, S. Rd. Assocs., LLC v. Int’l
Bus. Machs. Corp., 4 N.Y.3d 272, 277, 826 N.E.2d 806, 809
(2005), the term “biographies” is perhaps most naturally read
to refer to a “[p]ersonal history,” or “the events or
circumstances of a person’s life, viewed collectively.”
Oxford English Dictionary (3d ed. 2010), available at
www.oed.com/view/Entry/19219.2 “[B]iographies,” like
“names and likenesses,” may constitute aspects of both
DeVito’s and Macioci’s lives, rather than particular
recordings of their lives.3 This reading does not, as the
2
I would hesitate to give dispositive effect to the order in which
dictionary editors choose to rank their definitions, Maj. Op. at 11. Cf.
Mastrovincenzo v. City of New York, 435 F.3d 78, 107 (2d Cir. 2006)
(Sack, J., concurring in part and dissenting in part) (“I am generally
reticent to invoke dictionary definitions, at least in contexts perhaps
unforeseen by their [anonymous] writers.”). In any event, I note that the
first listed definition in Merriam-Webster’s refer to a biography as
“usually” written, suggesting that there are other appropriate uses of the
term. Merriam-Webster’s Collegiate Dictionary (11th ed. 2003),
available at http://www.merriam-webster.com/dictionary/biography.
3
It may be worth noting, in this connection, that as far as we are aware
there was no written Macioci biography or autobiography ever produced
the rights to which could have been included, although as a one-time
member of the group, he was likely mentioned in DeVito’s ghost-written
autobiography. Insofar as Macioci’s “biography” is concerned, then, it
26 CORBELLO V. VALLI
majority suggests, Maj. Op. at 11–12, threaten to offend the
canon against superfluity. “[T]he events or circumstances of
a person’s life, viewed collectively” are, by definition, distinct
from the events or circumstances themselves. A collective
viewing may entail characterizing events to form a trajectory
or story arc, rather than a mere collection of individual
events.
Another definition of the word “biography,” moreover,
suggests that the parties did not necessarily intend to include
the Work in the rights granted under 1999 Agreement. A
“biography,” or “bio,” may (and in my experience in being
asked for a “biography” or “bio” in connection with some
panel discussion, moot court, or the like, very often does)
refer to “a brief summary of a person’s life and work.”
Oxford English Dictionary (3d ed. 2010), available at
www.oed.com/view/Entry/19187; see also, e.g., Doe v. Merck
& Co., 283 A.D.2d 543, 543, 725 N.Y.S.2d 356, 357 (2d
Dep’t 2001) (discussing a pharmaceutical company’s
educational brochure “which contained photographs and
biographies of HIV-positive individuals”); Charney v.
Sullivan & Cromwell LLP, 15 Misc. 3d 1128(A),
841 N.Y.S.2d 217 (N.Y. Sup. Ct. 2007) (discussing a law
firm website’s use of “biographies of [certain partners],
which list the partners’ clients and some of the deals they
have worked on”). This type of “brief summary,” which a
playwright might well draw upon, does not seem to me to
envision or require a manuscript of a detailed biography that
is hundreds of pages long.
In the absence of the manifestation of a contrary intent
among the parties, it may be preferable to apply either of the
would seem likely that “biography” meant the story of his life.
CORBELLO V. VALLI 27
foregoing definitions, rather than those referring to written
manuscripts, which might inappropriately enlarge the general
category of “aspects of your life.” “When a particular class
[i.e., “aspects of your life”] is spoken of, and general words
[i.e., “biographies”] follow, the class first mentioned is to be
taken as the most comprehensive.” Bers v. Erie R.R. Co.,
225 N.Y. 543, 546, 122 N.E. 456, 457 (1919) (internal
quotation marks omitted). Indeed, as a general matter, we
should be “extremely reluctant to interpret an agreement as
impliedly stating something which the parties have neglected
to specifically include.” Rowe v. Great Atl. & Pac. Tea Co.,
46 N.Y.2d 62, 72, 385 N.E.2d 566, 572 (1978).
In short, the word “biographies” has here at least three
plausible meanings, only one of which covers the Work. And
the majority’s preferred reading is not the only one that
makes sense. See Maj. Op. at 12–13. The purpose of the
1999 Agreement was to facilitate the creation and production
of a theatrical work based on DeVito’s or Macioci’s life
story. Having transferred his right in a single kind of
derivative work, DeVito may well have sought to retain the
right to publish or otherwise distribute other accounts of his
life through books, film, or other media. Cf. 17 U.S.C. § 106
(listing, beside the right to prepare derivative works, the
copyright owner’s rights to reproduce, distribute copies of,
publicly perform, publicly display, or transmit the
copyrighted work). If under these circumstances, however,
DeVito creates a theatrical production based on his life, he
runs afoul of the 1999 Agreement and may be liable to Valli
and Gaudio.
In this context, leaving the Work outside the scope of the
1999 Agreement makes a great deal of practical sense.
Having said nothing in the Agreement explicitly about the
28 CORBELLO V. VALLI
Work, which had been in existence for more than eight years,
DeVito remained and remains free to do with his
autobiography (subject of course to his obligations to the
widow of Woodard, the person who actually wrote it) what
people normally try to do with their memoirs (if anything):
He can publish it, distribute copies, sell it, read excerpts at
public events, license movies and audiobooks, and so on, all
without worrying about breaching the Agreement. However,
if and only if he attempts to create a play or other theatrical
work based on his manuscript, he would be hard-pressed to
do so without including events in his life, his life story, etc.
He might then be liable to Valli and Gaudio under the
Agreement for encroaching on the rights he gave them.
I would, therefore, agree with the district court that the
contract’s language is ambiguous. I think that court erred,
however, in admitting extrinsic evidence to interpret the
contract’s ambiguous language. The question of ambiguity
is a question of law to be resolved by the court, but “[i]f there
is ambiguity in the terminology used, [] and determination of
the intent of the parties depends on the credibility of extrinsic
evidence or on a choice among reasonable inferences to be
drawn from extrinsic evidence, then such determination is to
be made by the jury.” Hartford Accident & Indem. Co. v.
Wesolowski, 33 N.Y.2d 169, 172, 305 N.E.2d 907, 909
(1973). I would remand this case to the district court for trial.
II
Assuming, despite the foregoing discussion, that the 1999
Agreement does unambiguously include the Work (or were
a jury to find the Agreement includes the Work despite the
Agreement’s facial ambiguity), the question arises: What
kind of interest in the Work does the 1999 Agreement transfer
CORBELLO V. VALLI 29
to Valli and Gaudio? The majority concludes that the
Agreement confers an exclusive license or assignment. Maj.
Op. at 18. I think Sybersound Records, Inc. v. UAV Corp.,
517 F.3d 1137 (9th Cir. 2008), compels the conclusion,
however, that the Agreement would then confer a
nonexclusive license.4
In that case, TVT Music Publishing, a co-owner of the
copyright of certain songs, attempted to make Sybersound, a
karaoke record producer, the “exclusive assignee and licensee
of TVT’s copyrighted interests for purposes of karaoke use,
and also the exclusive assignee of the right to sue to enforce
the assigned copyright interest.” Id. at 1142 (internal
quotation marks omitted). The other original co-owners of
the copyright, several record companies, did not join in
granting rights to Sybersound. Id. at 1146. When other
karaoke record producers used songs under license from TVT
to Sybersound without Sybersound’s permission, Sybersound
brought suit against the producers for infringement. Id. at
1142. This Circuit affirmed the district court’s dismissal of
the complaint, concluding that Sybersound lacked standing to
sue third-party infringers. Id. at 1146.
I agree with the majority’s analysis of Sybersound except
to the extent it concludes that DeVito was legally capable of
transferring to Valli and Gaudio an exclusive license of any
kind or description. According to Sybersound, one co-owner
of a copyright cannot confer an exclusive license on a
licensee because she or he has no exclusive right to confer.
4
We are in accord, however, that the 1999 Agreement confers the right
to use the ‘Materials’ to create only one type of derivative work, a
theatrical production, Maj. Op. at 13; the only question is whether that
right is exclusive or nonexclusive.
30 CORBELLO V. VALLI
Sybersound, 517 F.3d at 1146 (“[U]nless all the other
co-owners of the copyright joined in granting an exclusive
right to Sybersound, TVT, acting solely as a co-owner of the
copyright, could grant only a nonexclusive license to
Sybersound because TVT may not limit the other co-owners’
independent rights to exploit the copyright.”) This
conclusion may be in tension with other elements of
copyright law, as the majority avers, Maj. Op. at 17–18, but
courts and commentators appear to be in universal agreement
that Sybersound stands for the proposition that “a co-owner
of a copyright cannot unilaterally alienate [its] share of the
intellectual property and instead can ‘only grant a
nonexclusive license’ to a third party.” Brownmark Films,
LLC v. Comedy Partners, 800 F. Supp. 2d 991, 996 (E.D.
Wis. 2011) (quoting Sybersound, 517 F.3d at 1146), aff’d on
other grounds, 682 F.3d 687 (7th Cir. 2012); see also, e.g.,
Amaretto Ranch Breedables v. Ozimals Inc., 907 F. Supp. 2d
1080, 1084 (N.D. Cal. 2012) (similarly reading Sybersound).
The facts of Sybersound are in an important respect
indistinguishable from those before us. Here, as in
Sybersound, a single co-owner (here, DeVito; there, TVT) of
a particular interest attempted to grant an exclusive license to
use a particular part of the co-owner’s derivative work right
(here, the right to create a derivative theatrical work; there,
the right to create a derivative karaoke record) to third parties
(here, Valli and Gaudio; there, Sybersound). Here, as in
Sybersound, the single co-owner attempted to effect this
transfer without the consent of the other co-owner(s) (here,
Corbello; there, the record companies).
Sybersound seems to me to mean that the transfer from
DeVito to Valli and Gaudio, like the transfer from TVT to
Sybersound, effected a nonexclusive license. DeVito, like
CORBELLO V. VALLI 31
TVT, “succeeded only in transferring what [he] could under
17 U.S.C. § 201(d), a non-exclusive license.” Sybersound,
517 F.3d at 1146. This application of Sybersound does not
“limit a co-owner’s ability to transfer unilaterally any
exclusive copyright interests that he himself possesses.” Maj.
Op. at 18. It does no more than recognize that DeVito had no
exclusive copyright interest in the derivative-work right to a
theatrical production to transfer in the first place. Therefore,
Valli and Gaudio had a nonexclusive license, and Corbello’s
sole accounting remedy lies against DeVito. See 2 William
F. Patry, Patry on Copyright § 5.9 (2014) (“Where only one
joint author grants a nonexclusive license, the nongranting
joint author may not obtain an accounting from the
nonexclusive licensee since that licensee is not a joint
copyright owner. Instead, the nongranting joint author must
obtain the accounting from the granting joint author.”).
Commentators have expressed some dissatisfaction with
this aspect of Sybersound’s holding.5 As a three-judge panel,
we of course are bound by circuit precedent.6 Miller v.
Gammie, 335 F.3d 889, 899 (9th Cir. 2003) (en banc). Nor
5
For criticism of Sybersound, see Amaretto Ranch Breedables v.
Ozimals Inc., 907 F. Supp. 2d 1080, 1084 (N.D. Cal. 2012) (citing III
Goldstein on Copyright § 15.5 (3d ed. 2011); 4 Nimmer on Copyright
§ 6.10[A][2][d] (rev. ed. 2012); 2 Patry on Copyright § 5:103 (2012)), in
which it was noted that the district court there had to, as we must, follow
Sybersound nonetheless.
6
The majority correctly observes that the circuit’s pre-Sybersound
precedent supports the conclusion “that copyrights are divisible and that
a copyright owner can freely transfer any portion of his ownership
interests in that copyright.” Maj. Op. at 15. But Sybersound reasoned that
those ownership interests are limited in the case of a co-owner, who “is
not the exclusive owner” of the copyright and thus can transfer only a
nonexclusive license. Sybersound, 517 F.3d at 1146.
32 CORBELLO V. VALLI
can we ignore the substantial similarity between the facts of
Sybersound and those of this case. We are, in my view,
required to treat Valli and Gaudio’s copyright interest as a
nonexclusive license.7 Just as this Court rejected
Sybersound’s claim against those who used karaoke versions
of songs contrary to Sybersound’s purported exclusive right
to do so because the purported licensor (TVT) had no right to
grant such exclusive use to Sybersound in the first place, we
should reject the plaintiff’s accounting claim against Valli
and Gaudio.
III
In sum, then, I would decide that the contract is
ambiguous as to whether the Work is included within the
Materials. Because the contract is ambiguous, the district
court erred by determining the meaning of the contract on the
basis of parol evidence at summary judgment. I would
therefore remand to the district court for further proceedings.
But it would vastly simplify matters, I think, if in that case
the district court first decided the defendants’ summary
judgment motion arguing that Jersey Boys does not infringe
7
I would reject the district court’s apparently newly coined term
“selectively exclusive licence.” The court’s description of the practical
effects of DeVito’s failed attempt to transfer an exclusive license seems
to me correct under Sybersound. But, under the principle of numerus
clausus, I would avoid risking the creation of a new form of copyright
interest. See Thomas W. Merrill & Henry E. Smith, Optimal
Standardization in the Law of Property: The Numerus Clausus Principle,
110 Yale L.J. 1, 3–4 (2000). If we were to fully describe the transaction
between DeVito and Valli and Gaudio, which we need not do in this case,
I think that transaction is better described in terms of an already existing
form of copyright interest (a nonexclusive license), plus a contract-based
promise by DeVito not to re-license the same rights to anyone else.
CORBELLO V. VALLI 33
the Work as a matter of law in any event, see, e.g., Funky
Films, Inc. v. Time Warner Entm’t Co., L.P., 462 F.3d 1072,
1076–77 (9th Cir. 2006), an issue which it previously avoided
by granting summary judgment on contract grounds, Corbello
v. DeVito, 844 F. Supp. 2d 1136, 1154–55 (D. Nev. 2012).
That might be the end of the matter as far as “Jersey Boys”
Valli and Gaudio are concerned irrespective of the difficult
issues that the majority and we address here.
Even if the 1999 Agreement unambiguously included the
Work, as the majority conclude, I would decide that DeVito
granted Valli and Gaudio only a nonexclusive license to use
the Work toward a theatrical production. Corbello’s
accounting action properly lies, then, against DeVito, not
Valli and Gaudio, and the latter action must be rejected.