IP Law Daily Successful defense of ‘Who’s on First’ infringement suit nets attorney fees
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Wednesday, June 13, 2018

Successful defense of ‘Who’s on First’ infringement suit nets attorney fees

By Pamela C. Maloney, J.D.

The authors, producers, and theater company who had used dialogue from an Abbott and Costello routine known as "Who's on First?" in the Broadway play Hand to God were awarded $50,123.04 in attorney fees and costs by the federal district court in New York City for the successful defense of a copyright infringement claim filed by heirs of the famous comedy duo. Although there was no evidence that the heirs had an improper motive for instituting the infringement action, the objective unreasonableness of their claims, the frivolousness of their arguments, and considerations of compensation and deterrence supported an award of reasonable attorney fees and costs, the district court ruled in adopting the magistrate judge’s report and recommendations and in finding that the calculation of the fee award was appropriate (TCA Television Corp. v. McCollum, June 12, 2018, Daniels, G.).

The heirs of famed comedy duo Abbott and Costello brought a copyright infringement claim against Kevin McCollum, The Ensemble Theatre, Inc., Manhattan Class Company Inc., Robert Askins, and Hand to God LLC, among others, alleging that they had infringed on the heirs’ copyright by using dialogue from Abbott and Costello’s famous "Who's on First?" routine (the Routine) in the Broadway play Hand to God. Despite its disagreement with the district court’s determination that the verbatim incorporation of more than one minute of the famous routine into the play was a fair use of the material, the U.S. Court of Appeals for the Second Circuit affirmed the lower court’s dismissal of the infringement suit, holding that the heirs had failed to plausibly allege a valid copyright interest in the Routine. Following the U.S. Supreme Court’s refusal to grant the heirs’ petition for certiorari to review the Second Circuit’s decision, the defendants moved for attorney fees. Before the court was the magistrate’s report and recommendation that the defendants be awarded $50,123.04 in attorney fees and costs.

Objective unreasonableness. The heirs objected to the report’s finding that it was objectively unreasonable for them to argue that (1) their predecessors-in-interest had assigned the copyright in the comedy routine to Universal Pictures Company, Inc. (UPC), which had produced two films in which the Routine appeared; (2) the Routine was a "work-for-hire" produced for UPC; and (3) the Routine merged with one of the films—"One Night in the Tropics" —in which the Routine appeared. According to the heirs, the Second Circuit’s decision did not render invalid the district court’s finding that their copyright ownership claim was sufficient to withstand a dismissal motion.

However, a review of the Second Circuit’s decision supported the magistrate’s conclusion that the heirs’ theories as to their ownership of a valid copyright were objectively unreasonable. First, the two agreements and a separate quitclaim that arguably created an assignment of the copyright by the heirs merely furnished a license to UPC to use the Routine; it did not create a license to use. Second, the fact that the Routine pre-existed the agreements by more than two years undermined the heirs’ argument that it had been created as a "work-for-hire" and at the insistence of UPC. Finally, the fact that the Routine pre-existed the films and had been performed independently of those films countless times before their release also supported the magistrate’s finding that the heirs’ argument that the Routine was so merged with the films in which it was performed to become a unitary whole was objectively unreasonable, the district court concluded.

Frivolousness. For similar reasons, the district court found that the report’s conclusion that the heirs’ arguments before the Second Circuit that motion pictures were integrated works per se, that the Routine was a work-for-hire and that the Quitclaim granted UPC a license to the use the Routine were frivolous was not clearly erroneous. There was no precedent to support a finding that the films and the Routine formed an integrated work. According to the district court, the cited precedents undermined both the integrated work and the merger theory, thus rendering this argument frivolous. In addition, the continued assertion of the work-for-hire theory was rendered frivolous by the heirs’ admission that the Routine pre-existed the films. Finally, the heirs’ argument that the quitclaim related only to the common law copyright was both logically and legally impaired, thus making its continued assertion frivolous. It was not clear from the language of the quitclaim that it referred only to common law copyright rather than federal copyrights, and the quitclaim merely transferred whatever right or interest the heirs possessed in the Routine; it did not warrant that the heirs had any ownership interest in the Routine.

Deterrence and compensation. Based on the magistrate’s finding that the heirs’ claims were objectively unreasonable, the district court found no error in the magistrate’s conclusion that a fee award would promote the goal of deterrence by deterring heirs from bringing infringement claims when their claims of copyright ownership were weak. In addition, the fee award served to compensate the author, the producers, and the theater company for defending an action that should not have been brought in the first place. The district court also rejected the heirs’ claim that the magistrate failed to give full consideration to their claim of financial hardship, which was based on the argument that they relied on income generated by the Routine for financial support. According to the district court, the heirs failed to offer any documentation, such as income tax filings or balance sheets, to support this claim.

The case is No. 1:15-cv-04325-GBD-JCF.

Attorneys: Brandie Jill Lustbader (Davis & Gilbert LLP) and Edward Alvin Ruttenberg (Leopold, Petrich & Smith, PC) for TCA Television Corp. Mark Joseph Lawless (Mark J. Lawless, Attorney at Law) for Kevin McCollum.

Companies: TCA Television Corp.

MainStory: TopStory Copyright NewYorkNews

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