Ninth Circuit Renames Copyright Estoppel the Asserted Truths Doctrine

Yiwei Jiang1Yiwei Jiang is a staff member of The University of Chicago Law Review and a J.D. Candidate in the University of Chicago Law School Class of 2022. She received her B.S. in chemical engineering from the California Institute of Technology in 2018.

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A copyright ruling on the Broadway hit “Jersey Boys” paves the way for creators to make projects that are based on a true story. Copyright is a form of intellectual property protection that is grounded in the Patent and Copyright Clause of the U.S. Constitution. It protects any original work of authorship that is fixed in a tangible medium of expression, which includes works such as “poetry, novels, movies, songs, computer software, and architecture.” It does not protect “facts, ideas, systems, or methods of operation, although it may protect the way these things are expressed.” Copyright infringement occurs “when a copyrighted work is reproduced, distributed, performed, publicly displayed, or made into a derivative work without the permission of the copyright owner.”

What about a musical play that is substantially similar to a nonfiction autobiography? Has the play infringed upon the autobiography’s copyright? On one hand, an autobiography is copyrightable because it is an original work of authorship fixed in a tangible form. On the other hand, its contents are based on factual, real-life events. In Corbello v. Valli (9th Cir. 2020), the Ninth Circuit confronted this exact question.

I.  Background and Procedural History

The Four Seasons is a popular rock and roll band that achieved international success in the 1960s and 1970s. In 1990, the band was inducted into the Rock and Roll Hall of Fame. In 1988, band member Tommy DeVito partnered with Rex Woodard to cowrite an autobiography of DeVito that also chronicles the story of the Four Seasons. Woodard passed away in 1991 shortly after the autobiography was completed, and his widow, Donna Corbello, became his successor in interest to the autobiography.

Before Woodard’s death in 1991, DeVito registered the autobiography at the U.S. Copyright Office under his name only. Since DeVito’s copyright application was identical to the autobiography ghostwritten by Woodard with only minor exceptions, Corbello was eventually able to “secure recognition of Woodard as a co-author and co-claimant of the copyrighted [w]ork” in 2007.

Although the autobiography was never published, DeVito disseminated copies of the autobiography to writers and producers to help them develop the smash-hit Broadway musical Jersey Boys, which won four Tony Awards in 2006. In 2007, following the success of the musical, Corbello brought suit against fourteen defendants—DeVito, band members Frankie Valli and Bob Gaudio, and the writers, directors, and producers of Jersey Boys—for copyright infringement. Corbello argued that since she never gave her permission for the autobiography to be shared with the writers and producers, Jersey Boys was an unauthorized derivative work that infringed on the autobiography’s copyright.

At first, the district court granted summary judgement in favor of the defendants. On appeal, the Ninth Circuit reversed in part and remanded for further proceedings. On remand, the case proceeded to jury trial where the jury unanimously found that the musical had infringed the autobiography, use of the autobiography was not fair use, and 10% of the musical’s success was attributable to infringement of the autobiography. After the jury verdict, the district court granted the defendant’s motion for judgment as a matter of law, concluding that infringement concerned unprotected elements of the autobiography and that any infringement of protected elements constituted fair use. Corbello appealed.

On appeal, the central question was whether the musical had copied any of the autobiography’s protectable elements. The Ninth Circuit found that all the substantial similarities between the musical and the autobiography only reflected historical facts, which are not protectable by copyright as a matter of law. In addition to historical facts, other nonprotectable elements include ideas, common phrases, generic plot lines, writing styles, and “familiar stock scenes and themes that are staples of literature.”

The autobiography presented itself as a “straightforward historical account.” At the beginning of the book, the first-person narrator emphasizes his “candor” by describing the book as a “complete and truthful chronicle of the Four Seasons” that does not allow “bitterness to taint the true story.” Furthermore, in letters to potential publishers, Woodard and Corbello had both stressed that the autobiography “provided a behind-the-scenes factual look at the Four Seasons.”

As a result, the Ninth Circuit concluded that none of the musical’s similarities amounted to copyright infringement because they only involved elements that the autobiography presented as facts, and facts are not copyright protectable. In affirming the lower court’s ruling, the Ninth Circuit affirmed solely on the grounds that Jersey Boys did not infringe upon the autobiography; since Jersey Boys did not copy any protected elements of the autobiography, the Ninth Circuit did not reach the district court’s fair-use rationale.

Corbello argued that parts of the autobiography were heavily embellished by Woodard and entitled to the full protections of copyright as fiction and not fact. However, the Ninth Circuit found this argument lacking under the doctrine of copyright estoppel.

According to the doctrine of copyright estoppel, “elements of a work that are presented as fact are treated as fact.” An author who represents their work to be nonfiction cannot later claim during litigation that elements of their work were actually fiction and thus entitled to full copyright protection. In other words, the author is “estopped from claiming fictionalization” after expressly holding out their work as factual. This doctrine is strictly enforced. Even “dubious assertions of truthfulness can prevent an author from later claiming that part of a work is fiction.”

The doctrine of copyright estoppel has been employed by some district courts in the Ninth Circuit, discussed in Part V, infra, as well as by the Second and Seventh Circuits. The “copyright-grounded rationale” behind this principle is that “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.”

In Hoehling v. Universal City Studios, Inc. (2d Cir. 1980), the Second Circuit found that copyright does not protect an author’s hypothesis that a crewmember on the Hindenburg sabotaged the airship to “please his lady friend, a suspected communist dedicated to exploding the myth of Nazi invincibility.” The Second Circuit reached this decision mainly because the book was “presented as a factual account, written in an objective, reportorial style,” noting that such interpretations of an historical event are not copyrightable as a matter of law.

Similarly, in Nash v. CBS, Inc. (7th Cir. 1990), the Seventh Circuit found that an author’s theory that John Dillinger was not killed by the FBI but instead retired out to the West Coast was not protected by the book’s copyright. The author did not portray his book and its companion works as fiction, which “makes all the difference.” The allegedly infringing television show only used facts as the author had depicted them. As such, the Seventh Circuit ruled that the show did not infringe on the author’s book.

After formally recognizing and adopting the doctrine of copyright estoppel, the Ninth Circuit renamed it the asserted truths doctrine “because it is the author’s assertions within and concerning the work that the account contained in the book is truthful that trigger its application.” As the Ninth Circuit explained, in its view, “estoppel” was not “an apt descriptor for the doctrine at work” for two main reasons:

First, the word “estoppel” is typically used to encompass “various equitable doctrines” that ordinarily include detrimental reliance as a required element. However, the “so-called [copyright] estoppel is created solely by [the author’s] affirmative action and representation that the work was factual.” As such, detrimental reliance is not an element of the doctrine of copyright estoppel.

Second, application of “estoppel” is often suggestive that “the party against whom estoppel is applied is in some way culpable.” However, evidence that the copyright holder acted with an “improper purpose” was not required to apply the doctrine of copyright estoppel against Corbello.

V.  Applying the Asserted Truths Doctrine to Unpublished Works

Corbello also argued that the asserted truths doctrine should not be applied because the autobiography 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 [autobiography] was unpublished.” Nonetheless, the Ninth Circuit found this “suggested limitation of the asserted truths doctrine to published works” unpersuasive.

There is no basis for Corbello’s suggested copyright limitation. The only case that somewhat supports her argument is an unpublished district court opinion2Garman v. Sterling Pub. Co., No. C-91-0882, 1992 WL 12561293, at *3 (N.D. Cal. Nov. 5, 1992). that characterized the doctrine as “normally applied to preclude a plaintiff who represented to the public that his work was factual from claiming in an infringement action that the work was fiction.” The Ninth Circuit interpreted the reference to “the public” as inclusive of “actual or intended readers of work, including works not mass produced for sale.” In addition, the representations can be made “only to a few actual readers, to future intended readers, or, upon publication, to the general public.”

There is similarly no support for Corbello’s suggested limitation in the doctrine’s copyright law foundations. The Ninth Circuit explained that “the suggested publication limitation appears to rest on the detrimental reliance and culpability concepts connected to the ‘estoppel’ locution.” However, the Court had already rejected the detrimental reliance and culpability requirements as “not pertinent” to the asserted truths doctrine when renaming the doctrine. Therefore, the autobiography’s express representations of truthfulness triggered application of the asserted truths doctrine; “publication alone is not dispositive of whether [the] doctrine applies.”

VI.  Applying the Asserted Truths Doctrine to Dialogue

The Ninth Circuit went on to clarify that “the asserted truths doctrine applies not only to the narrative but also to dialogue reproduced in a historical nonfiction work represented to be entirely truthful.” Even if the author was not personally present or unlikely to remember the exact quotations used, the asserted truths doctrine still applies to “purportedly accurate conversations.” The Second Circuit, for example, has applied this doctrine to “dialogue surrounding the death of Pope John Paul,” even under circumstances “where the author ‘could not possibly have been present to experience’ them.”

The autobiography professes to “accurately document conversations in which its co-author, DeVito, actually participated.” Therefore, the Ninth Circuit held that the asserted truths doctrine applied to the autobiography’s dialogue, in addition to its narrative.

VII.  Potential Ramifications of the Ninth Circuit’s Asserted Truths Doctrine

It is a fundamental concept of copyright law that facts are not protectable. Though not as well-known, the idea that authors of supposedly factual, nonfiction works cannot later claim that certain elements are actually fictional is hardly novel. Beyond merely changing the doctrine’s name, the Ninth Circuit is the first appellate court to weigh in on this matter in three decades. The Second Circuit decided Hoehling v. Universal City Studios, Inc. in 1980, and the Seventh Circuit decided Nash v. CBS, Inc. in 1990.

The Ninth Circuit has provided a particularly clear framework for courts to use when deciding which elements are protected by copyright in works that are based on real-life events. In addition to providing guidance for the courts, Corbello also provides guidance for authors of nonfiction works and other creators who would seek to use those works to further their own projects.

The Ninth Circuit’s decision clearly delineates the divide between copyright protectable and nonprotectable elements in the context of “based on a true story” works. This clarity allows nonfiction authors to better understand which portions of their works are protected; it also enables screenwriters, producers, and directors to use factual works and historical sources in developing projects that are “based on a true story” without fear of potential copyright infringement repercussions.

With such a clear-cut explanation of the asserted truths doctrine, there will hopefully be less copyright litigation by nonfiction authors against entertainment companies who have made adaptations over the same subject matter—an explanation that the Supreme Court’s recent denial of certiorari leaves intact.

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Yiwei Jiang is a staff member of The University of Chicago Law Review and a J.D. Candidate in the University of Chicago Law School Class of 2022. She received her B.S. in chemical engineering from the California Institute of Technology in 2018.

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