Lack of Valid Copyright Throws Out “Who’s on First?” Copyright Claim

Abbott and Costello’s successors-in-interest sued the author and producers of the play Hand to God for copyright infringement. The play used a little over a minute of the Abbott and Costello “Who’s on First?” routine almost verbatim without authorization. The district court ruled that the use of the “Who’s on First?” routine in the play Hand to God was a fair use and not copyright infringement. My post Who’s on First? Copyright Infringement Question as Tangled as the Routine discusses the district court’s ruling.

On appeal, the Second Circuit held that the district court erred in ruling that the use of the routine in the play was a fair use. Nevertheless, the Second Circuit upheld the district court’s ruling in favor of the play’s author and producers on the alternative ground that Abbott and Costello’s successors-in-interest failed to plead a valid copyright interest. Since the play’s creators did not cross appeal the district court’s ruling that the Abbott and Costello successors-in-interest owned a valid copyright, the only issue on appeal was whether the district court correctly ruled that the use of the routine in the play was a fair use. The Second Circuit was obligated to rule on the fair use question before considering whether to uphold the district court’s ruling on an alternative theory. Had the Second Circuit affirmed the district court’s fair use analysis, the Second Circuit would not have considered the copyright validity question.

The Second Circuit did not discuss whether it was even appropriate for the district court to consider fair use on a Rule 12(b)(6) motion to dismiss for failure to state a claim. Fair use is an affirmative defense and is the defendant’s burden to prove, not the plaintiff’s. Fair use should not be decided on a motion to dismiss the plaintiff’s complaint for failure to state a claim. 

The use of the routine in the play was not a fair use.

These are the nonexclusive statutory factors courts consider when determining whether a particular use is a fair use:

  1. the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
  2. the nature of the copyrighted work;
  3. the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
  4. the effect of the use upon the potential market for or value of the copyrighted work.

17 U.S.C. §107.

First Factor: Purpose and Character of the Use

The district court ruled that the use of the routine in the play was highly transformative, such that the transformative use determined the fair use question. The Second Circuit disagreed.

The district court explained that by having a single character perform the Routine, the Play’s authors were able to contrast ‘Jason’s seemingly soft-spoken personality and the actual outrageousness of his inner nature, which he expresses through the sock puppet.’ This contrast was ‘a darkly comedic critique of the social norms governing a small town in the Bible Belt.’ This reasoning is flawed in that what it identifies are the general artistic and critical purpose and character of the Play. The district court did not explain how defendants’ extensive copying of a famous comedy routine was necessary to this purpose, much less how the character of the Routine was transformed by defendants’ use.

(Opinion pdf page 24).

A transformative use “adds something new, with a further purpose or different character, altering the first with new expression, meaning or message.” The new work must use the copyrighted material itself for a different purpose or imbue it with a different character than the original work. The work itself must somehow be changed and it is not enough to use the same work in a different context.

Consideration of whether the work is used for a commercial purpose is also part of the first factor. The Second Circuit ruled that the district court erred in discounting the play’s commercial character. In particular, advertising for the play featured the “Who’s on First?” routine, “conduct which reasonably qualifies as commercial exploitation weighing strongly against fair use.”

The Second Circuit ruled that this the first statutory factor weighs in favor of Abbott and Costello’s successors-in-interest.

Second Factor: Nature of the Copyrighted Work

Some works, such as works of fiction or fantasy, are closer to the core of intended copyright protection. Consequently, fair use is harder to establish for the works. The Second Circuit ruled that the “Who’s on First?” routine lies at the heart of copyright’s intended protection.

Defendants argue that their use was justified by the dramatic need to use an instantly recognizable ‘cultural’ touchstone in the relevant scene. But even assuming defendants’ professed dramatic need, they do not explain why the cultural touchstone had to be the Routine—or even a comedy sketch—as opposed to some other readily recognizable exchange, including those already in the public domain. Most troubling, even if defendants could justify their dramatic need to use a small, identifiable segment of the Routine, that does not justify having their characters perform, verbatim, some dozen variations on the Routine’s singular joke. As already noted, the purpose of such extensive use was to provoke audience laughter in exactly the same way as the Routine’s creators had done.

(Opinion pdf pages 38 -39).

The Second Circuit ruled that the second statutory factor weighs strongly against a fair use defense.

Third Factor: Amount and Substantiality of Use

Is the amount and substantiality of the portion used in relation to the copyrighted work as a whole reasonable in relation to the purpose of the copying? For this factor, courts consider both the quantity and the quality and importance of the materials used.

While the portion of the Routine copied by defendants takes less than two minutes to perform, it plainly reveals the singular joke underlying the entire Routine: that words understood by one person as a question can be understood by another as an answer. Moreover, defendants repeatedly exploit that joke through a dozen variations. This manifests substantial copying.

Even a substantial taking, however, can constitute fair use if justified. But, as already explained, defendants offer no persuasive justification for their extensive use of the Routine.

(Opinion pdf pages 41 – 42).

The Second Circuit ruled that the third statutory factor weighs strongly in favor of Abbott and Costello’s successors-in-interest.

Fourth Factor: Effect on Potential Market for the Copyrighted Work

This factor focuses on whether the secondary use usurps demand for the protected work by serving as a market substitute. The Second Circuit stated that although derivative markets, e.g., the licensing market, are not the principal focus of the fourth factor, derivative markets are still relevant. Courts should consider the challenged use’s impact on potential licensing revenues for traditional, reasonable or likely to be developed markets.

The Second Circuit ruled that the fourth statutory factor also weighs in favor of Abbott and Costello’s successors-in-interest.

Abbott and Costello’s successors-in-interest did not plausibly allege a valid copyright interest in the “Who’s on First?” routine.

The two elements of copyright infringement are 1) ownership of a valid copyright and 2) copying original elements of the work. Abbott and Costello’s successors-in-interest relied on a 1984 quitclaim agreement from Universal Pictures Company, Inc. (UPC) to establish their copyright ownership claim.

The Second Circuit ruled that Abbott and Costello’s successors-in-interest’s copyright assignment, work made for hire and merger of the routine in motion picture arguments all failed to plead a valid copyright claim. Although Abbott and Costello licensed their routine to UPC for use in motion pictures, the duo never assigned the copyright to UPC. So even though UPC quitclaimed its interest in the routine to Abbott and Costello’s successors in interest in 1984, UPC could not quitclaim an ownership interest it did not possess. In addition, UPC seemed to enter into the quitclaim agreement under the assumption that Abbott and Costello’s successors in interest owned the underlying copyright.

Abbott and Costello’s successors-in-interest relied on the copyright registration covering the routine by UPC for the movies One Night in the Tropics and The Naughty Nineties. However, the routine was a separate, freestanding piece that was independently copyrightable. Abbott and Costello performed their “Who’s on First?” routine for years before licensing it to UPC.  They continued to perform it while it was licensed to UPC. Abbott and Costello’s successors-in-interest could not rely on UPC’s copyright registrations for its movies to protect any copyright that existed in the “Who’s on First?” routine.

The Second Circuit affirmed the district court’s dismissal of the complaint for failure to plead a valid copyright.

This case is TCA Television Corp. v. McCollum, No. 16-134-cv, Second Circuit Court of Appeals.

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