Copyright Co-owner May Unilaterally Transfer Any Owned Exclusive Copyright Interest

The U.S. Court of Appeals for the Ninth Circuit clarified its prior ruling in Sybersound v. UAV, and held that a copyright co-owner may unilaterally transfer any exclusive copyright interest he or she possesses.  Corbello v. DeVito, Case No. 12-16733 (9th Cir., Feb. 10, 2015) (O’Scannlain, J.) (Sack, J., sitting by designation, concurring).

The issue in the case was whether an agreement for Thomas DeVito and Nicholas Macioci to transfer exclusive rights to their former bandmates, Franki Valli and Bob Gaudio, to use facets of their lives related to the band in the development of a musical, Jersey Boys, constituted a transfer of DeVito’s antedated copyright interest in his autobiography written by a ghostwriter.  If it did, the second issue was if the ghostwriter’s heir, Donna Corbello, would be entitled to a portion of the proceeds of sales of the autobiography.

The 9th Circuit relied on New York law and held that the agreement unambiguously stated the term “biography” in the agreement, which plainly included the autobiography drafted by the ghostwriter.  Thus, the 9th Circuit held that the agreement was a transfer of ownership of derivative-work rights in the autobiography, rather than a nonexclusive license.

The 9th Circuit distinguished Sybersound v. UAV, which held that under § 201(d) of the Copyright Law (17 USC), a co-owner of a copyright may transfer any of the exclusive rights comprised in a copyright without permission from his co-owner.  The 9th Circuit clarified that Sybersound exemplified the basic principle that one can only give away as much as one’s share in a copyright, but Sybersound was not intended to be interpreted as a limitation to a co-owner’s ability to unilaterally transfer any exclusive copyright interests that he possesses.

Thus, the 9th Circuit reasoned, 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.

Judge Sack concurred that the case should be remanded but disagreed that the term “biographies” unambiguously included the autobiography, and that the agreement only transferred certain derivative rights in the autobiography.  Judge Sack also disagreed with the majority’s interpretation of Sybersound, arguing that the transfer created a non-exclusive license, meaning that Corbello’s sole accounting remedy lies against DeVito, the co-owner.