Abbott and Costello's classic comedy routine, best known as Who's On First?,[ref]Who's on First? by Abbott and Costello[/ref] was back in the spotlight this week as the centerpiece of an interesting ruling from the Second Circuit Court of Appeals.[ref]TCA Television Corp. v. McCollum 2016 WL 5899174[/ref] Unfortunately for the heirs of the great comedy duo, it was a good news, bad news joke: the Court ruled that fair use did not protect the verbatim copying of the comedy routine into a Broadway play, but ultimately the heirs failed to prove they owned the copyright to the routine, making the dismissal correct, albeit for the wrong reason.[ref]Id. at 2. All references are to the original pagination.[/ref] The trial Court had ruled that the use by the writers of the Broadway play Hand to God was "so transformative as to establish defendants' fair use defense as a matter of law" and rejected the argument that the heirs had failed to plead a valid copyright interest.[ref]Id. at 3 citing 151 F.Supp3d 419 Southern District Court for the Southern District of New York (2015)[/ref] The Court of Appeals reversed the District Court on both points. What makes the case compelling is that the Second Circuit had been the cutting edge sword for the "transformative use" test for determining fair use. Though this panel of the Court takes pains to state that it is not walking back the envelope pushing reasoning on display in cases like Cariou v. Prince,[ref]Marching Bravely Into the Quagmire: The Complete Mess that the "Transformative" Test Has Made of Fair Use[/ref] it does take the time to acknowledge the criticisms leveled at it by the Seventh Circuit in Kienitz v. Sconnie Nation LLC,[ref]766 F.3d 756, 759 (7th Cir.2014).[/ref] as well as respected copyright authority David Nimmer.[ref]McCollum at 30[/ref] It also appears to indeed "walk back" some of the expansive language that has been emanating from the Second Circuit. There is no dispute that the play copied the verbatim text of the first 33 lines of the iconic comedy routine. These lines are repeated, in the same order as the original, with no changes by the lead character of a play. He does so in his attempt to impress a girl he likes. When she laughs, he falsely tells her that he wrote the routine, which backfires on him, a turning point in the play.[ref]Id. at 14-17[/ref] The District Court held this scene "was ‘transformative,' indeed, so ‘highly transformative' as to be ‘determinative' of fair use."[ref]Id. at 24 citing 151 F.Supp3d at 434-435[/ref] Even more troubling was that this was done at the Motion to Dismiss stage, not summary judgement. "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.' (citation omitted) This contrast was ‘a darkly comedic critique of the social norms governing a small town in the Bible Belt.'"[ref]Id. at 24 citing 151 F.Supp3d at 436[/ref] This is where some common sense finally intrudes into the "transformative use" universe. The Second Circuit panel explained it thusly: "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."[ref]Id. at 24[/ref] "Far from altering Who's on First? to the point where it is "barely recognizable" within the Play, (citation omitted) defendants' use appears not to have altered the Routine at all. The Play may convey a dark critique of society, but it does not transform Abbott and Costello's Routine so that it conveys that message. To the contrary, it appears that the Play specifically has its characters perform Who's on First? without alteration so that the audience will readily recognize both the famous Routine and the boy's false claim to having created it. Indeed, it is only after Who's on First? is performed—at some length, almost verbatim, and with the Play's characters mimicking the original timing, tone, and delivery of Abbott and Costello—that the boy's lie about creating the classic Routine—no part of the Routine (sic)—becomes the triggering event for the puppet to assume an independent persona."[ref]Id. at 30-31[/ref] "[T]he focus of 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 from 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 that for which it was created. (citation omitted) Otherwise, any play that needed a character to sing a song, tell a joke, or recite a poem could use unaltered copyrighted material with impunity, so long as the purpose or message of the play was different from that of the appropriated material."[ref]Id. at 26 (emphasis added)[/ref] "The ‘dramatic' purpose served by the Routine in the Play appears to be as a ‘McGuffin,' that is, as a theatrical device that sets up the plot, but is of little or no significance in itself. To advance the plot of the Play, specifically, to have the puppet Tyrone take on a persona distinct from that of Jason, defendants needed Jason to lie about something and for Tyrone to call him on it. But the particular subject of the lie—the Routine—appears irrelevant to that purpose. Such unaltered use of an allegedly copyrighted work, having no bearing on the original work, requires justification to qualify for a fair use defense."[ref]Id. at 31 (emphasis added)[/ref] "Defendants do not explain… why Jason's lie had to pertain to a cultural touchstone, as opposed to any obvious tall tale—e.g., inventing the Internet, traveling to Mars, out-swimming Michael Phelps."[ref]Id. at 39[/ref] "[E]ven 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."[ref]Id.[/ref] This is really the trenchant point of any "transformative use" analysis that most courts miss. What is so crucial to the new work that it had to use the worked borrowed from, and not something else? A lot of fair use cases would turn out the other way if this point was given closer analysis. The Court also held that:
  • Hand to God used Who's On First? for a commercial purpose and that the District Court erred in ruling that the transformative nature overcame the commercial purpose of Defendant's use.[ref]Id. at 35[/ref]
  • "Who's on First?, an original comedy sketch created for public entertainment, lies at the heart of copyright's intended protection." And thus the second factor "The Nature of the Work Used" also favored the Plaintiff.[ref]Id. at 37[/ref]
  • "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."[ref]Id. at 41[/ref] Which means that factor three, the "Amount and Substantiality of the Taking," "weighs strongly in favor of the Plaintiffs."[ref]Id.[/ref]
  • Derivative markets can be considered by a Court in determining "Market Harm," the fourth factor. Plaintiff's allegations of an "active" market for the licensing of the routine is sufficient to weight this factor in favor of the Plaintiff.
The Plaintiff's case runs upon the rocks, however, due to the unclear evolution of Who's On First? And murky contract language. Who's On First? was performed numerous times in the 1930's, most famously in 1938 on the Kate Smith Hour radio show. It was incorporated into two 1940's motion pictures, One Night in the Tropics,[ref]Id. at 6[/ref] and an expanded version of the routine appeared in The Naughty Nineties.[ref]Id. at 9[/ref] Here's where the case gets interesting. Originally, the routine revolved around three oddly named baseball players: Who (first base) What (second base) and I Don't Know (third base). Yet, in The Naughty Nineties this is now expanded to include Why (left field), Because (center field), Tomorrow (pitcher), Today (catcher) and I Don't Care (short-stop).[ref]Who's on First? by Abbott and Costello[/ref] For some reason, the right fielder is never given a name. Who's On First? was registered for copyright in 1944 by Abbott and Costello. However, it was not renewed, prompting the Copyright Office to conclude that it passed into the public domain in 1972.[ref]Id. at 9-10[/ref] Both One Night in the Tropics[ref]Id. at 6[/ref] and The Naughty Nineties were registered for copyright and had their copyrights renewed. The plaintiffs tried to claim that Abbott and Costello had assigned their copyrights in Who's On First? to the motion picture companies, who then assigned them back to the Plaintiffs. The problem is that the agreements don't really say that. They merely state that A&C "furnish" the rights in the material to the film company, who then has "exclusive motion picture rights" in the material.[ref]Id. at 7[/ref] Obviously, Hand to God is not a motion picture. The Plaintiffs also tried to claim Who's On First? was a  work for hire for the second motion picture, released in 1945. This theory fails in that the 1944 copyright registration shows Who's On First to be pre-existing material to The Naughty Nineties (1945) and thus fails the "instance and expense" test under the 1909 act, where a third party had to be the reason for the creation of the material.[ref]Id. at 55[/ref] Lastly, only the first portion of Who's On First? is incorporated into Hand of God. This is the material that would have been the subject of the 1944 registration, which sadly was not renewed. So, Who's On First? Ultimately, nobody. Maybe he's in right field? Too bad. They could have had some more fun with that: C: It's a deep shot to right field! A: Got it. C: So who catches the ball? A: Not from first base he's not. C: But there is a right fielder. A: Of course there is. C: And the person is… A: Nobody. C: Nobody catches the ball? A: Correct. C: So the batter is safe. A: No, he's not, he's out. C: But you said nobody caught the ball! A: Correct. C: So if nobody catches the ball, who gets the player out? A: Only if he thinks he can turn a double play. And for those of you who have never heard the original, enjoy! https://youtu.be/kTcRRaXV-fg