IP Law Daily Dismissal of copyright infringement claims over satiric play’s use of ‘Who’s on First?’ affirmed
Tuesday, October 11, 2016

Dismissal of copyright infringement claims over satiric play’s use of ‘Who’s on First?’ affirmed

By Peter Reap, J.D., LL.M.

The heirs of famed comedy duo Abbott and Costello failed to plausibly allege a valid copyright interest in the famous Abbot & Costello "Who’s on First" comedy routine, the U.S. Court of Appeals in New York City has ruled. Therefore, although the appellate court disagreed with a district court’s determination that the verbatim incorporation of more than one minute of the famous routine by the authors and producers of the Broadway play Hand to God (the "Play") into their play was a fair use of the material, the appeals court affirmed dismissal of the infringement suit (TCA Television Corp. v. McCollum, October 11, 2016, Raggi, R.).

Ownership. The routine and the films that published it—One Night in the Tropics ("One Night") and The Naughty Nineties—were created before January 1, 1978. Therefore, the works were subject to the 1909 Copyright Act. The 1909 Act provided for an initial 28-year term from the date of publication, with a renewal term of an additional 28 years if certain conditions regarding notice were met. Abbott and Costello’s earlier radio and vaudeville performances of the routine did not constitute "publication" for copyright purposes. Therefore, Abbott and Costello retained common-law copyright protection of the routine, as performed for the first time in 1938 on the Kate Smith Hour radio program.

In 1940, Abbott and Costello allegedly signed a work-for-hire agreement with Universal Pictures Company, Inc. (UPC), assigning to UPC all the rights of the duo’s performances of "Who’s On First?" in the film One Night. In 1945, the duo expanded the routine in the movie The Naughty Nineties. UPC obtained copyright registrations for One Night in 1940 and The Naughty Nineties in 1945 and timely renewed those copyrights. The copyrights that UPC had registered "merged" the routine with the films, the court said. According to the plaintiffs, statutory amendments extended the duration of protection given to the routine as performed in the two movies until 2035 and 2040, respectively.

The plaintiffs asserted that, on March 12, 1984, Universal Pictures, a division of UPC’s successor, Universal City Studios, Inc., quitclaimed all rights in the "Who’s On First" performances in the two films to a general partnership formed by the duo’s heirs. The quitclaim assignment was recorded with the Copyright Office.

Fair use. The defendants conceded that they had used part of the routine in their play Hand to God, but they asserted a fair use defense. In the play, the main character, a shy and repressed teenager named Jason, finds a creative escape from his religious small-town life through his sock puppet named Tyrone. Tyrone takes on a darkly humorous "life" of its own as an outrageous and subversive foil for Jason. About 15 minutes into the play, Jason attempts to impress a girl by performing about one minute and seven seconds of the routine, with Tyrone as Costello and Jason as Abbott. Tyrone makes various comedic "asides," insulting Jason for trying to deceive the girl that the routine was his own creation.

The play ran for one hour and 55 minutes. The version of "Who’s On First?" in One Night ran about three minutes; the version in The Naughty Nineties lasted almost nine minutes. The play used a hybrid of the first 37 seconds of the One Night version and the first minute and six seconds of the version from The Naughty Nineties.

District court decision. In the district court’s view, the heirs plausibly established a continuous chain of title encompassing the routine. As to the issue of fair use, although the play used a relatively small amount of the routine, more than merely the "introductory premise" of the routine was used, and even a single line—"Who’s on first?"—was instantly recognizable, the district court said. The nature of the copyrighted work and the portion of the work used therefore weighed slightly in favor of the plaintiffs. However, the transformative of the nature of the new use outweighed these factors and was determinative, the district court held. The routine was not merely repackaged or republished. Furthermore, the play’s use of part of the routine was not likely to harm the routine’s potential licensing and royalty market, in the court’s opinion.

Second Circuit—no fair use. Nothing in the record showed that the Play imbued the Who’s on First Routine (the "Routine") with any new expression, meaning, or message, the Second Circuit opined. Nor did any new dramatic purpose justify the defendants’ extensive copying of the Routine. The defendants’ commercial use of the Routine was not transformative under the first of the four factors used to assess fair use. Rather, it duplicated to a significant degree the comedic purpose of the original work, the Second Circuit reasoned.

As to the second factor—the nature of the copyrighted work—this factor also favored the plaintiffs. Because the record was devoid of any persuasive justification for the extent of defendants’ use, the creative nature of the Routine weighed strongly against a fair use defense.

The third fair use factor, the amount and substantiality of the use, weighed strongly in favor of the plaintiffs, the appellate court held. While the portion of the Routine copied by the defendants takes less than two minutes to perform, it plainly reveals the singular joke underlying the entire Routine. Moreover, the defendants repeatedly exploited that joke through a dozen variations. Finally, as to the fair use factor assessing the affect on the potential market for the copyrighted work, the lower court erred in finding that this factor favored the defendants. The plaintiffs alleged the existence of a traditional—and active—derivative market for licensing the Routine and they also alleged market harm, the court noted.

Second Circuit—failure to plead valid copyright. In rejecting the defendants’ copyright invalidity challenge, the district court thought that "[t]he contract language, together with UPC’s subsequent registration of the copyrights" for Tropics and The Naughty Nineties, might admit a finding of "implied assignment of the initial copyright from Abbott and Costello."

That conclusion was flawed in two respects, the appellate court ruled. First, the July and November Agreements clearly expressed the parties’ intent for Abbott and Costello to license the use of, not to assign copyrights in, their existing comedy routines for use in UPC movies in which the team appeared. Second, and requiring no further discussion in the face of clear contract language, UPC’s registration (and renewal) of copyrights in its movies says nothing about what Abbott and Costello intended to convey in the two agreements.

The plaintiffs maintained that, even if the July and November Agreements cannot be construed to have assigned copyrights, they are work-for-hire agreements. That argument was defeated by the plaintiffs’ own allegation that the Routine was first performed in March 1938, more than two years before Abbott and Costello entered into the July and November Agreements with UPC, the appellate court explained. Insofar as Abbott and Costello had already performed Who’s on First? in 1938, they plainly did not create the Routine at UPC’s "instance and expense" in 1940, as would be required for it to be a work-for-hire.

Finally, the appeals court rejected the plaintiffs’ argument that even if their copyright ownership claim cannot rest on either an assignment or work-for-hire theory, it is plausible because "so much of the Routine as was used in the Movies ‘merged’ with the Movies to become a ‘unitary whole.’" This argument failed because authors of freestanding works that are incorporated into a film may copyright these separate and independent works.

In sum, because the plaintiffs failed to plausibly to allege that: (1) Abbott and Costello had assigned their common law copyright in Who’s on First? to UPC; (2) the Routine, as appropriated by the defendants in Hand to God, was first created for UPC as a work-for-hire; or (3) the Routine so merged with the UPC movies in which it was performed as to become a unitary whole, the plaintiffs did not plead their possession of a valid copyright in the Routine, as required to pursue their infringement claim.

The case is No. 16-134-cv.

Attorneys: Jonathan D. Reichman (Kenyon & Kenyon LLP) for TCA Television Corp., Hi Neighbor, and Diana Abbott Colton. Mark J. Lawless (Law Office of Mark J. Lawless) for Keith McCollum and Broadway Global Ventures.

Companies: TCA Television Corp.; Hi Neighbor; Broadway Global Ventures

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