Supreme Court Won't Take 'Who's on First' Copyright Case

Defendants' attorney, New York solo practitioner Mark J. Lawless, said in an email about the Supreme Court's decision not to review the case: “The principle has now been confirmed that someone who licenses rights to a movie studio in a preexisting discrete work isn't unwittingly giving the movie studio all of his rights just because the material appears in a movie.”

Lawless was referring to the October 2016 decision by the U.S. Court of Appeals for the Second Circuit that the case failed because the plaintiffs hadn't pleaded a valid copyright interest, despite the fact that the appearance of the routine — which Time magazine said was the best comedy sketch of the 20th Century — in Hand to God wasn't fair use of the material. TCA Television Corp. v. McCollum, 839 F.3d 168.

Southern District of New York Judge George B. Daniels had decided use of the “Who's on First” routine was a transformative fair use, by noting: “Although Plaintiffs contend that Defendants' use of the Routine does not 'add[] anything materially new or provide[] a different aesthetic,' and claim that the actor playing Jason 'merely re-enact[s] the [R]outine as Abbott and Costello performed it,' the tone of the new performance is markedly different. Hand to God uses the Routine to create context and 'a background for the ever more sinister character development of Tyrone.” The district judge then found: “It is the performance through the anti-hero puppet, Tyrone, that, according to Defendants, creates new aesthetics and understandings about the relationship between horror and comedy that are absent from Abbott and Costello's performances of the Routine.”

But Second Circuit Judge Reena Raggi rejected the defense argument that the use of the routine was for dramatic rather than comedic purposes, because it was used as a theatrical device with little significance to the story outside of setting up the scene. For more, see, “'Who's on First': The Fair Use 'Transformative' Factor Controversy,” in our December 2016 issue.

Abbott and Costello had performed the routine in 1938 on the The Kate Smith Hour radio show. “Who's on First” was initially “published” under copyright law in the 1940 movie One Night in the Tropics in which the comedy team appeared. Universal renewed the film's copyright in 1967. The TCA plaintiffs said that Abbott and Costello's heirs received rights in the skit from Universal Pictures Corp. (UPC) in 1984. But the routine had been separately registered for Abbott and Costello in the U.S. Copyright Office in 1944, though not renewed in 1972 as required at that time for continued copyright protection.

Affirming dismissal of the case on the copyright ownership issue, the Second Circuit explained: “Abbott and Costello furnished UPC with their routines for a limited purpose: use in any movies in which the team appeared under the respective agreements. This is unmistakably the language of an exclusive, limited-use license, not the assignment of copyright.”

The appeals court concluded: “In sum, because plaintiffs fail plausibly to allege that (1) Abbott and Costello assigned their common law copyright [as an unpublished work] in Who's on First? to UPC; (2) the Routine, as appropriated by defendants in Hand to God, was first created for UPC as a work-for-hire; or (3) the Routine so merged with the UPC movies in which it was performed as to become a unitary whole, we conclude that plaintiffs did not plead their possession of a valid copyright in the Routine, as required to pursue their infringement claim.”

The TCA petitioners had argued in their cert petition about the circuit court's interpretation: “The Second Circuit announced a new rule of eligibility for copyright renewal under the 1909 [Copyright] Act, applied retroactively to a 1940 work — i.e., that the previously unpublished material did not become part of the movie's unitary copyright for renewal purposes unless it was created solely for the movie. Nothing in the 1909 Act supports such a judge-made rule.”

Jonathan Reichman, an Andrews Kurth Kenyon partner who represents the plaintiffs, did not return a call seeking comment on the high court's decision.

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P.J. D'Annunzio is Federal Courts Reporter for The Legal Intelligencer, the Philadelphia-based ALM sibling of Entertainment Law & Finance. Stan Soocher is Editor-in-Chief of Entertainment Law & Finance and a tenured Associate Professor of Music & Entertainment Studies at the University of Colorado's Denver Campus.

First the copyright infringement case over the use of Abbott and Costello's “Who's on First” routine in a Broadway play was dismissed by a New York federal judge. Then it rounded the U.S. Court of Appeals for the Second Circuit, but was tagged out again. Now, in its third at bat, the lawsuit struck out with the U.S. Supreme Court declining to review the case.

The High Court denied the plaintiffs TCA Television Corp., Hi Neighbor and Diana Abbott Colton's petition for a writ of certiorari, which claimed that the U.S. Court of Appeals for the Second Circuit was wrong to uphold the dismissal of the case against the creators of the play Hand to God.

The play, authored by Robert Askins, is the story of Jason, a shy and repressed boy with a satanic sock puppet named Tyrone. Jason performs segments of the legendary Abbott and Lou Costello comedy routine, slightly over a minute in all, to impress a girl in his very religious hometown. When Jason fibs that he made up the routine himself, Tyrone calls him out on the lie.

Defendants' attorney, New York solo practitioner Mark J. Lawless, said in an email about the Supreme Court's decision not to review the case: “The principle has now been confirmed that someone who licenses rights to a movie studio in a preexisting discrete work isn't unwittingly giving the movie studio all of his rights just because the material appears in a movie.”

Lawless was referring to the October 2016 decision by the U.S. Court of Appeals for the Second Circuit that the case failed because the plaintiffs hadn't pleaded a valid copyright interest, despite the fact that the appearance of the routine — which Time magazine said was the best comedy sketch of the 20th Century — in Hand to God wasn't fair use of the material. TCA Television Corp. v. McCollum , 839 F.3d 168.

Southern District of New York Judge George B. Daniels had decided use of the “Who's on First” routine was a transformative fair use, by noting: “Although Plaintiffs contend that Defendants' use of the Routine does not 'add[] anything materially new or provide[] a different aesthetic,' and claim that the actor playing Jason 'merely re-enact[s] the [R]outine as Abbott and Costello performed it,' the tone of the new performance is markedly different. Hand to God uses the Routine to create context and 'a background for the ever more sinister character development of Tyrone.” The district judge then found: “It is the performance through the anti-hero puppet, Tyrone, that, according to Defendants, creates new aesthetics and understandings about the relationship between horror and comedy that are absent from Abbott and Costello's performances of the Routine.”

But Second Circuit Judge Reena Raggi rejected the defense argument that the use of the routine was for dramatic rather than comedic purposes, because it was used as a theatrical device with little significance to the story outside of setting up the scene. For more, see, “'Who's on First': The Fair Use 'Transformative' Factor Controversy,” in our December 2016 issue.

Abbott and Costello had performed the routine in 1938 on the The Kate Smith Hour radio show. “Who's on First” was initially “published” under copyright law in the 1940 movie One Night in the Tropics in which the comedy team appeared. Universal renewed the film's copyright in 1967. The TCA plaintiffs said that Abbott and Costello's heirs received rights in the skit from Universal Pictures Corp. (UPC) in 1984. But the routine had been separately registered for Abbott and Costello in the U.S. Copyright Office in 1944, though not renewed in 1972 as required at that time for continued copyright protection.

Affirming dismissal of the case on the copyright ownership issue, the Second Circuit explained: “Abbott and Costello furnished UPC with their routines for a limited purpose: use in any movies in which the team appeared under the respective agreements. This is unmistakably the language of an exclusive, limited-use license, not the assignment of copyright.”

The appeals court concluded: “In sum, because plaintiffs fail plausibly to allege that (1) Abbott and Costello assigned their common law copyright [as an unpublished work] in Who's on First? to UPC; (2) the Routine, as appropriated by defendants in Hand to God, was first created for UPC as a work-for-hire; or (3) the Routine so merged with the UPC movies in which it was performed as to become a unitary whole, we conclude that plaintiffs did not plead their possession of a valid copyright in the Routine, as required to pursue their infringement claim.”

The TCA petitioners had argued in their cert petition about the circuit court's interpretation: “The Second Circuit announced a new rule of eligibility for copyright renewal under the 1909 [Copyright] Act, applied retroactively to a 1940 work — i.e., that the previously unpublished material did not become part of the movie's unitary copyright for renewal purposes unless it was created solely for the movie. Nothing in the 1909 Act supports such a judge-made rule.”

Jonathan Reichman, an Andrews Kurth Kenyon partner who represents the plaintiffs, did not return a call seeking comment on the high court's decision.

*****
P.J. D'Annunzio is Federal Courts Reporter for The Legal Intelligencer, the Philadelphia-based ALM sibling of Entertainment Law & Finance. Stan Soocher is Editor-in-Chief of Entertainment Law & Finance and a tenured Associate Professor of Music & Entertainment Studies at the University of Colorado's Denver Campus.