A dreaded sunny day for Abbott & Costello heirs: play made fair use of Who's On First

TCA Television Corp. v. McCollum, No. 15 Civ. 4325 (S.D.N.Y. Dec. 17, 2105)

 

The “critically-acclaimed Broadway dark comedy, Hand to God,” used dialogue from the iconic comedy routine, Who’s On First? both in the play and in a promotional video for the play (which sadly, I can’t find online).  Claiming rights in the routine, plaintiffs, heirs of Abbott and Costello, sued for copyright infringement, and the court found fair use on the pleadings.

 

According to the complaint: Abbott and Costello first performed the Routine on March 24, 1938, as a live radio broadcast for The Kate Smith Hour. In November 1940, they signed a work-for-hire agreement with Universal Pictures Company that assigned to Universal “all the rights to the duo’s performances of Who’s On First in One Night and The Naughty Nineties.” One Night (1940) was the first publication for 1909 Act purposes; the Routine was then expanded in The Naughty Nineties in 1945.  These films were properly registered and renewed.  Universal then quitclaimed its interest in the Routine to the duo’s heirs (through a chain not relevant here).

 

Accepting all the allegations in the complaint as true, Abbott and Costello assigned their common law copyright in the Routine to UPC. UPC’s registration of the initial copyright in One Night was “therefore the first time that it obtained [statutory] copyright under the 1909 Act[,] upon UPC’s registration with the Copyright Office.” The publication of the Routine within the film then, under circuit precedent, extinguished the common law copyright in the unpublished version of the Routine.  “Because as much of the 1938 Routine as was disclosed in the motion picture was published when the motion picture was published, and because the law treats motion pictures as a unitary works, the copyrights in One Night and The Naughty Nineties that UPC registered ‘merged’ the Routine with the films.”  (Citing 16 Casa Duse, LLC v. Merkin, 791 F.3d 247, 257-58 (2d Cir. 2015) (holding that because “[f]ilmmaking is a collaborative process typically involving artistic contributions from large numbers of people,” statutory copyright in the film itself could be undermined if “copyright subsisted separately in each of their contributions to the completed film”).

 

In Hand to God, “Jason, the play’s shy and repressed main character, finds a creative escape from his religious small-town life through his hand sock-puppet, named Tyrone.”  Tyrone begins in Jason’s mother’s Christian Puppet Ministry, but “begins to develop a life of its own, possibly due to demonic possession.”  The use of the Routine is as follows:

 

About fifteen minutes into the play, Jason attempts to impress his crush, Jessica, by performing about one minute and seven seconds of the Routine, with Tyrone as Costello and Jason as Abbott. Impressed, Jessica asks Jason if he made up the dialogue himself, and he says “yes.” The audience is intended to recognize the famous Abbott and Costello sketch and find humor when Tyrone, the puppet, calls Jason a liar and tells Jessica that the sketch “is a ‘famous routine from the Fifties.”‘ The puppet proceeds to insult Jessica, saying, “You’d know that if you weren’t so stupid,” and then exposes Jason’s feelings for Jessica. (“It doesn’t matter because he thinks you’re hot.”). Providing a contrast with the soft-spoken Jason, the puppet Tyrone’s outrageous and subversive behavior escalates over the course of the play, and its post-Routine outburst provides a starting point for the gradual exposure of the darker side of Jason’s personality.

 

The nature of the work: creative and iconic, weighing in plaintiffs’ favor.  Amount taken: about one minute and seven seconds, while the Routine in One Night runs about three minutes and The Naughty Nineties goes almost nine minutes; the play uses a hybrid of the first thirty-seven seconds of One Night and the first minute and six seconds of The Naughty Nineties.  Because even one line, “Who’s on first?” is instantly recognizable, and the play uses more than that, the amount factor slightly favors the plaintiffs, though this factor is comparatively less important than transformativeness.  [Hey, if it’s a unitary work, how come we aren’t measuring amount by the percentages of the total films represented by the routine? Here, the qualitative part of the assessment probably remains similar, but chopping up works into parts has risks for fair use, which is one supporting justification for the ultimate holding in Garcia v. Google, cited by the court here.]

 

Effect on the market: alleged harm to the licensing market wasn’t enough; a reasonable observer wasn’t likely to find that Jason and his puppet’s reenactment of the Routine could usurp the market for the original Abbott and Costello performance. “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 is even a stronger statement of this market-enhancing conclusion than that in Google, I think.  Favors defendants.

 

The determinative factor, however, was transformativeness.  The use of the scene using the Routine in the promotional video (which might only have images from the scene, not dialogue, if it’s like others I looked at) showed a commercial purpose.  Defendants used that clip because it was representative of the plot, and also was specifically mentioned in many articles and reviews of the play.  But commerciality can be discounted in transformativeness cases.

 

Commentary isn’t necessary. The relevant distinction is whether the new work “merely ‘supersede[s] the objects’ of the original . . . or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning or message.” Creating “a distinct visual aesthetic and overall mood” for the audience is transformative.  Here, the tone of the new performance was “markedly different,” using the Routine to create a background for the increasingly sinister development of Tyrone’s character.  This creates a new understanding/aesthetic about the relationship between horror and comedy absent from Abbott & Costello’s performances.  Jason and his hand, rather than two actors, perform the Routine to contrast his seemingly soft-spoken personality and his inner nature, which isn’t the same purpose as the original. Though both performances evoke laughter, that doesn’t matter: the Routine provides comic relief in the play for reasons that differ from the humor of the original sketch.  Tyrone breaks the fourth wall when he tells Jessica that she should recognize the routine—he’s sharing an inside joke with the audience.  “The audience laughs at Jason’s lie, not, as Plaintiffs claim, simply the words of the Routine itself.”  And for the lie to be apparent, the original needs to be recognizable.