Who’s on First? Copyright Infringement Question as Tangled as the Routine

The creators of the dark comedy play Hand to God included in their play dialogue from Who’s on First?, the iconic comedy routine created by Abbott and Costello.  Abbott and Costello’s heirs sued Kevin McCollum and others involved in creating Hand of God for copyright infringement.  McCollum and the other defendants argued that the heirs failed to allege a continuous chain of title to the routine, that the routine passed into the public domain and that the Hand of God creators made fair use of the routine.  The district court agreed that the plaintiffs did not sufficiently allege a copyright infringement claim and granted the defendants’ motion to dismiss for failure to state a claim.

The plaintiff must make facially plausible factual allegations in the complaint.  Speculative and conclusory allegations are not considered.

A copyright infringement plaintiff must allege ownership of a valid copyright and copying of the work’s original elements.  The district court decided this case under the 1909 Act, since the routine was created and published before January 1, 1978, the effective date of the Copyright Act of 1976.

The district court ruled that Abbott and Costello’s heirs sufficiently alleged a continuous chain of title encompassing the routine, satisfying the copyright ownership allegation requirement.

Under the 1909 Act, state common law copyright provided protection until first publication.  Thereafter the work was entitled to an initial twenty-eight-year term of statutory copyright, provided that adequate statutory notice was given at publication, or appropriate registration and deposit were made.  In the absence of adequate statutory notice at publication, a work was injected into the public domain.  If adequate statutory notice was given, then application for renewal made during the last year of the initial term extended the copyright for a renewal term of twenty-eight additional years.

(Opinion pdf page 4).

Abbott and Costello first performed the routine on The Kate Smith Hour radio show in 1938.  That performance was not a publication for copyright purposes and did not strip Abbott and Costello of their common law copyright ownership of the routine.  Abbott and Costello assigned Universal Pictures Company their copyrights in 1940.  Universal included the routine in its movies One Night in the Tropics and The Naughty Nineties

Publication occurs when by consent of the copyright owner, the original or tangible copies of a work are sold, leased, loaned, given away, or otherwise made available to the general public.

(Opinion pdf page 11).

The release of One Night in the Tropics and The Naughty Nineties constituted publications of derivative works of the routine.  The routine merged with the motion pictures to create unitary works.  Universal timely renewed its copyrights in the two pictures.  In 1984, Universal quitclaimed all rights in the Who’s on First? performances in the two movies to Abbott and Costello’s heirs.

The plaintiffs must also allege facts indicating that the defendants copied original elements of the work.  The defendants admitted copying part of the routine.  The district court ruled in defendants’ favor and dismissed the complaint based on its fair use analysis.  The district court thereby converted fair use, an affirmative defense, into a burden to be met by the plaintiff in the complaint.

The nonexclusive fair use factors are:

  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.

1.  The Nature of the Copyrighted Work

The district court focused on the creative nature of the original work in ruling that this factor weighs in favor of the plaintiffs.  The district court also indicated that this factor is less important than the other three factors.

2.  The Amount and Substantiality of the Portion Used in Relation to the Copyrighted Work

The play Hand to God runs for one hour and fifty-five minutes. According to Plaintiffs, the play uses about one minute and seven seconds of the Routine.  The Routine performed in One Night runs about three minutes, while The Naughty Nineties performance lasts almost nine minutes.  Defendants use a hybrid of the first thirty-seven seconds of One Night and the first minute and six seconds of the Routine as performed in The Naughty Nineties. While Plaintiffs argue that the amount taken is substantial, the number of minutes used is not the only consideration when assessing the third factor.  The fact that that even only one line of the play, “Who’s on first?” is instantly recognizable, and that Defendants use more than merely the introductory premise of the Routine, tips this factor slightly in favor of the Plaintiffs. However, the highly transformative nature of the new use ultimately outweighs this comparatively less important factor.

(Opinion pdf pages 17 – 18).

3.  The Effect of the Use Upon the Potential Market for or Value of the Copyrighted Work

Plaintiffs’ argue that Defendants’ use of part of the Routine without paying any fees diminishes its’ potential licensing and royalty market.  However, this factor applies mainly to the market for the original work.  It is unlikely that a reasonable observer of the new work would find that Jason and his puppet’s reenactment of the Routine could usurp the market for the original Abbott and Costello performance of the Routine. Furthermore, Defendants’ transformative use of the Routine could arguably broaden the market for the original work, as it exposes a new audience of viewers to the work of the classic American comedy duo.  This factor, therefore, weighs in favor of the defendants.

(Opinion pdf pages 18 – 19).

4.  The Purpose and Character of the Allegedly Infringing Use

This was the determinative factor in the district court’s fair use analysis.  The district court discussed whether the new work is transformative, adding new expression, meaning or message.  This factor weighed strongly in defendant’s favor.

Whereas the original Routine involved two actors whose performance falls in the vaudeville genre, Hand to God has only one actor performing the Routine in order to illustrate a larger point. The contrast between Jason’s seemingly soft-spoken personality and the actual outrageousness of his inner nature, which he expresses through the sock puppet, is, among other things, a darkly comedic critique of the social norms governing a small town in the Bible Belt. Thus, Defendants’ use of part of the Routine is not an attempt to usurp plaintiff’s material in order to avoid the drudgery in working up something fresh. Nor is the original performance of the Routine merely repackaged or republished.

(Opinion pdf page 22).

This case is TCA Television Corp. v. Kevin McCollum, No. 15 Civ. 4325 (GBD) U.S. District Court, Southern District of New York.

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