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Media Alerts - TCA Television Corp. v. McCollum - Second Circuit
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October 13, 2016
  TCA Television Corp. v. McCollum - Second Circuit
Headline: Second Circuit Holds that Broadway's "Hand of God" Appropriation of "Who's on First?" Routine Was Not Fair Use, But Affirms Dismissal of Copyright Infringement Action on Alternative Invalidity Ground.

Areas of Law: Intellectual Property; Copyright Law

Issue(s) Presented: Whether the defendants' verbatim use of a portion of Abbot and Costello's iconic comedy routine "Who's on First?" in the Broadway produced play "Hand of God" qualified as a non-infringing fair use. Whether plaintiffs' had a valid copyright on "Who's on First?"

Brief Summary: In light of the unauthorized use by defendants, the playwright and producers of the dark comedic Broadway play "Hand of God" of a verbatim portion of the iconic comedy sketch "Who's on First?," the successors in interest to the estates of William "Bud" Abbott and Lou Costello - plaintiffs herein - commenced an action for copyright infringement in the Southern District of New York, claiming both federal and common law copyright infringement. Upon defendants' Rule 12(b)(6) motion, the district court dismissed the complaint determining that, as a matter of law, defendants' use of the routine constituted a non-infringing fair use of the material. On plaintiffs appeal from this ruling, the Second Circuit concluded that defendants' unauthorized appropriation of "Who's on First?" was not fair use, but, nevertheless, affirmed the judgment below finding that plaintiffs had failed to plead a valid copyright interest. Judgment of dismissal in favor of defendants affirmed.

To read the full opinion, please visit:

Extended Summary:
Plaintiffs, successors-in-interest to the estates of William "Bud" Abbott and Lou Costello (the "Artists"), claim to be owners of the copyright to the comedy routine in issue here, "Who's on First?" (also the "Routine") - a treasured piece of American entertainment history, derived from the humorous misunderstandings which take place when a roster of a baseball team is filled with oddly named players such as "Who," "What," and "I Don't Know." "Who's on First?" was first performed in the late 1930s on a live radio broadcast, and was published, for purposes of federal copyright law, when Abbott and Costello performed a version of it in their first motion picture, "One Night in the Tropics ("Tropics") produced by Universal Pictures Company, Inc. ("UPC"). Abbott's and Costello's work with UPC was pursuant to contractual agreements including one executed in November 1940 (the "November Agreement,") days before the release of Tropics which encompassed a multi-year/multi-picture bargain. The contract gave UPC the right to use Abbott's and Costello's materials and routines in connection with any photoplay in which the Artists appeared. However, the Artists expressly reserved the right to use materials and routines created by them, without the assistance of UPC writers, on the radio and in personal appearances. Additionally, in November 1940, UPC registered a copyright for Tropics with the United States Copyright Office, which it timely renewed in December 1967.

Thereafter, in 1945, Abbott and Costello performed an expanded version of "Who's on First?" in another UPC movie, "The Naughty Nineties." That expanded version, while maintaining the core of the Routine - with "Who" on first base, "What" on second, and "I Don't Know" on third - , further included several new players. Here too, UPC registered a copyright for "The Naughty Nineties," and timely renewed it in 1972. Independently, in April 1944, Abbott and Costello also registered with the Copyright Office a work entitled "Abbott and Costello Baseball Routine," indicating that it had been published in March 1944 in "Soldier Shows." This work, however, was never renewed, and entered the public domain in 1972. Finally, in March 1984, a quitclaim agreement (the "Quitclaim") was entered into between Universal Pictures ("Universal") - successor-in-interest of UPC - and Abbott & Costello Enterprises ("A&C), a partnership formed by the heirs of Abbott and Costello, under which all of Universal's rights, title and interest in the Routine were granted by Universal to A&C. Thereafter, A&C dissolved in 1992, with 50% of its assets being transferred to TCA Television Corporation, a California entity owned by Lou Costello's heirs; and the remaining 50% evenly to Bud Abbot's heirs and later transferred to the remaining plaintiffs in the present action.

The defendants include the author and producers of the successful off-Broadway play "Hand to God," a dark comedy set in small-town Texas, in which the main character, a young man, communicates through a hand puppet, which becomes his evil persona. After success off-Broadway, in the spring of 2015 the play opened for previews on Broadway, incorporating, without license or permission, part of the Routine in one of its key scenes. In that scene, which takes place approximately 15 minutes into the play, "Jason," the lead character, in an attempt to impress "Jessica," his romantic interest, performs almost verbatim, a little over a minute of "Who's on First?" At the end of Jason's performance, Jessica asks whether Jason had come up with the routine by himself. Jason's dishonest answer in the affirmative inevitably induces audience laughter, given the familiarity of this iconic routine.

After learning about the unauthorized use of the Routine through press coverage and online promotional materials, and receiving no response to a letter to cease and desist, plaintiffs filed the underlying action in June 2015 in the United States District Court for the Southern District of New York, claiming federal and common law copyright infringement. Defendants moved to dismiss advancing that: plaintiffs did not hold a valid copyright; or, in any event the Routine was in the public domain; and "Hand to God's incorporation of the Routine was sufficiently transformative to qualify as a permissible fair use, not prohibited infringement. The district court granted defendants' motion to dismiss concluding that defendants' use of the Routine in "Hand to God" was a highly transformative and non-infringing fair use. The instant appeal followed.

The Second Circuit's de novo review of the dismissal found error in the district court's finding of fair use as a matter of law. Citing earlier decisions, the court recognized the well-established principle that some opportunity for fair use of copyrighted materials is necessary to promote the Constitutional purpose of progress in science and art. The nonexclusive factors for a clearly established fair use defense, the court noted, have been codified under 17 U.S.C. ยง107, as follows: 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. These factors, the court noted, must be viewed collectively, with their results weighed together.

The Second Circuit found that all four statutory factors weighed in favor of plaintiffs and against a defense of fair use. First, the court found that the defendants' use of the Routine did not appear to fit within any of the statutory categories identified as "most appropriate" for a purpose or character finding indicative of fair use - criticism, comment, news reporting, teaching, scholarship, and research. The court concluded that the district court's reasoning was flawed by identifying only a general artistic and critical purpose and character of the play as a "darkly comedic critique" of the social norms in a small religious town, but failing to explain how defendants' extensive copying was necessary to accomplish such purpose, or how the character of the Routine was transformed by defendants' use. The court noted that challenged works which satisfied the transformative purpose standard are those where a defendant's use of a work has so "heavily obscured and altered" the original work as to make it "barely recognizable" within the new work. In this case, the court found defendants' use of the Routine fell short of this standard, as the used portion was included unaltered. Therefore, the court concluded, such use could not be held to be transformative.

Even when such unaltered uses could be considered fair use when they bore no relationship to the original work, a justification is, the court noted, nevertheless necessary to qualify for a fair use defense. In this case, defendants used the original work for the same central purpose for which it was created - a comedy. Thus, the court found that defendants fell short of satisfying the justification threshold inasmuch as more than the Routine's ability to capture audience attention was necessary to provide a proper justification for defendants' extensive copying of it. Additionally, the court found that defendants' extensive use of the Routine further qualified as commercial exploitation weighing strongly against fair use.

As to the nature of the copyrighted work, the court also found it weighed in favor of plaintiffs herein, inasmuch as the Routine, being an original comedy sketch created for public entertainment, lay at the heart of copyright's intended protection. Moreover, the court rejected defendants' justification that they needed to use an instantly recognizable "cultural" touchstone in the relevant scene. Likewise, looking to the amount and substantiality of the portion of the appropriated material used, the court found that it weighed strongly in favor of plaintiffs because, although it took less than two minutes to perform, it nevertheless constituted the heart of the original work, by revealing the singular joke underlying the entire Routine. Finally, the court found that the district court had erred in concluding that the play's use of the Routine could not reasonably be expected to usurp the market for Abbott and Costello's original performance because the district court had failed to consider the challenged use's "impact on potential licensing revenues for traditional, reasonable, or likely to be developed markets." Since plaintiffs had alleged the existence of a traditional and active derivative market for licensing the Routine, the court also found this factor weighed in plaintiffs' favor.

Notwithstanding the foregoing analysis, the court concluded that the complaint must nevertheless be dismissed because plaintiffs plausibly failed to plead ownership of a valid copyright in the Routine. The court found that contractual agreements with UPC clearly expressed the parties' intent for Abbott and Costello to merely license the use of, and not to assign copyrights in, their existing comedy routines for use in UPC movies in which the Artists appeared. The court found the contract language to be clear and unambiguous, and concluded that Abbott and Costello furnished UPC with their routines for a limited purpose, their use in any movies in which the Artists appeared under the respective agreements. The court also rejected plaintiffs' argument that the Routine was a work made for hire and, thus, should survive by virtue of UPC's timely renewal of the registration of Tropics, finding that the Routine was prepared several years prior to the contracts, and therefore it could not be said to have been made at UPC's instance and expense.

Finally, the Court was not persuaded by plaintiffs' alternative argument under the merger doctrine that, because so much of the Routine was used in the movies, the material "merged" with them making part of the whole protected by UPC's statutory registration and the timely renewal of the copyrights for movies using the Routine. The Court noted that the Routine had been prepared and existed on its own for some years before it was performed in Tropics, and that it had been performed independently from the films thousands of times on the radio and elsewhere. Therefore, the Court concluded that this merger argument must fail.

In conclusion, although rejecting the defendants' fair use defense, the Court nevertheless affirmed the dismissal of the complaint finding it warranted by plaintiffs' failure plausibly to plead ownership of a valid copyright.

To read the full opinion, please visit:

Panel: Circuit Judges Jacobs, Calabresi and Raggi

Argument Date: 06/23/2016

Date of Issued Opinion: 10/11/2016

Docket Number: 16-134-cv

Decided: Affirmed

Case Alert Author: Gloria Mejia-Repp

Jonathan D. Reichman, Kenyon & Kenyon LLP, New York, New York, for Plaintiffs-Appellants; Mark J. Lawless, Law Office of Mark J. Lawless, New York, New York, for Defendants-Appellees.

Author of Opinion:
Judge Reena Raggi

Case Alert Circuit Supervisor: Professor Elyse S. Diamond

    Posted By: Elyse Diamond @ 10/13/2016 07:32 AM     2nd Circuit  

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