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Who’s On First, Who’s Got Ownership? Second Circuit Dismisses Suit Against Creators of “Hand to God”

Source: Grill IP patents news

Abbott-Costello-Second-Circuit-Dismissess-SuitEarlier this month, the Second Circuit rejected a fair use defense in a copyright action levied by the heirs to the comedic duo, Abbott and Costello. TCA TV Corp v. McCollum centers on the use of Abbott and Costello’s comedic sketch, “Who’s On First?” in the Broadway play “Hand to God.” The Circuit affirms the district court’s dismissal of the action, given that the plaintiffs had not adequately alleged copyright ownership following the duo’s failure to renew their registration.

    Comedians William “Bud” Abbott and Lou Costello initially performed their famous “Who’s On First?” comedy sketch back in 1938. The routine involves a fictional baseball team featuring players named “Who,” “What” and “I Don’t Know.” In accordance with a 1940 licensing agreement between the duo and Universal Pictures Company, Abbott and Costello performed “Who’s On First” in Universal’s film “One Night in the Tropics,” which was released and registered for copyright that same year. The routine also appeared in the 1945 motion picture “The Naughty Nineties,” which was registered by Universal in copyright and timely renewal. Ever since, Universal has timely renewed their copyright.

    In contrast, Abbott and Costello individually registered the routine for copyright in 1944, but did not renew it in a timely manner, thus transferring it into the public domain. In 1984, Universal transmitted all of its rights, title and interest in the sketch by quitclaim deed to a partnership created by the heirs of Abbott and Costello. The successors-in-interest to the duo’s heirs sued the author and producer of “Hand to God,” for copyright infringement. According to the plaintiffs, a scene in the play involves the recitation of the routine in an exchange between the main character and his sock puppet.

    The defendants sought a dismissal of the charge, arguing that the routine had entered the public domain and their inclusion of it in the play accords with fair use. While the plaintiffs had sufficiently pleaded ownership of a valid copyright in the skit, the district court also found the defendants’ use of it transformative, and hence protected according to the fair use doctrine. The defendants’ motion to dismiss was granted, and on appeal, the Second Circuit affirmed the decision but disagreed with the lower court’s rationale concerning ownership and fair use.

    The Second Circuit found that the defendants failed to establish fair use on the face of the complaint and its exhibits. Looking at the character and purpose of the use, the first of four traditional fair use factors, the Circuit determined that the inclusion of over a minute of the Abbott and Costello bit verbatim in “Hand to God” was not transformative. In determining this transformative characteristic, the Circuit mentioned, “the focus of the inquiry is not simply on the new work, i.e., on whether that work serves a purpose or conveys an overall expression, meaning, or message different form the copyrighted material it appropriates. Rather, the critical inquiry is whether the new work uses the copyrighted material itself for a purpose, or imbues it with a character, different from the one for which it was created.”

    The use of the sketch was not transformative, irrespective of the play’s whole plot, as it was done for the same humorous purpose as the Abbott and Costello original. Additionally, the Circuit viewed other fair use factors – the amount and substantiality of use, the nature of the copyrighted work, and its impact on potential markets – as favoring the plaintiffs.

    Despite these disagreements between the Circuit and lower court, the claim’s dismissal was still affirmed, with a rejection of the plaintiffs’ claim of ownership according to the 1984 quitclaim deed. The Circuit determined the that deed from Universal to the comedic duo’s heirs was invalid, as Universal did not own the routine’s copyright at the time the deed was conveyed. The plaintiffs’ arguments were refused on three points:

  1. The Circuit found that Abbot and Costello had not assigned ownership of the skit to Universal in their 1940 agreement, reasoning that those agreements solely constituted licenses, not assignments.
  2. The plaintiffs’ contention that the skit was a work-made-for-hire for “one Night in the Tropics” was rejected, since the routine was first developed in 1938, two years prior to the comedians’ agreement with Universal regarding the film.
  3. The routine was not “merged” into Universal’s copyrighted films, rendering the plaintiffs unable to rely on Universal’s copyright registrations, since it predated and was independent of Universal’s motion pictures.

The takeaway from this case is that should a work enter into a dubious state of copyright ownership at any point in registration, all arguments against its fair use are iffy at best. Plaintiffs should check the state of their copyright registration prior to filing any infringement suits.  

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