Abbott and Costello were a popular mid\u2010Twentieth Century comedy duo. One of their routines, commonly referred to as \u201cWho\u2019s on First?\u201d, has become a treasured piece of American entertainment history.<\/p>\n
<\/p>\n
Abbott and Costello first performed \u201cWho\u2019s on First?\u201d in the late 1930s, notably on a 1938 live radio broadcast of The Kate Smith Hour. The Routine was published for purposes of federal copyright law when Abbott and Costello performed a version of it in their first motion picture, \u201cOne Night in the Tropics\u201d. The team appeared in Tropics pursuant to a July 24, 1940 contract with Universal Pictures Company, Inc. The agreement guaranteed Abbott and Costello a minimum of five weeks\u2019 work at a pay rate of $3,500 per week. In turn, Abbott and Costello agreed to grant UPC certain rights and to furnish it with certain items.<\/p>\n
On November 6, 1940, only days before Tropics\u2019s public release, Abbott and Costello entered into a new multi\u2010year\/multi\u2010picture agreement with UPC. That contract terminated the July Agreement without prejudice to, among other things, UPC\u2019s \u201cownership . . . of all rights heretofore acquired,\u201d including those \u201cin or to any . . . material furnished or supplied by the Artists.\u201d<\/p>\n
In the November Agreement, Abbott and Costello agreed \u201cto furnish and make available to the Producer all literary and dramatic material and routines heretofore used by the Artists either on the radio or otherwise and now owned by the Artists,\u201d and acknowledged that \u201cthe Producer shall have the right to use said material and routines to such extent as the Producer may desire in connection with any photoplay in which the Artists render their services hereunder and in connection with the advertising and exploitation of such photoplay.\u201d<\/p>\n
Abbott and Costello agreed that they would \u201cnot use or license, authorize or permit the use of any of the material and\/or routines\u201d so referenced \u201cin connection with motion pictures\u201d by others than UPC for specified times. Nevertheless, they reserved the right to use materials and routines created by them (without the assistance of UPC writers) \u201con the radio and in personal appearances.\u201d<\/p>\n
After the death of Abbott and Costello their heirs formed partnership Abbott and Costello Enterprises, this in its turn concluded with Universal Pictures quitclaim agreement dated March 12, 1984. Universal stated that it did so relying upon A & C\u2019s representation that it was \u201ca partnership composed of the successors in interest to the late Bud Abbott and Lou Costello\u201d and, therefore, \u201cthe owner of copyright in and to the Routine.\u201d A & C dissolved in 1992, with 50% of its assets transferred to TCA Television Corporation, a California entity owned by Lou Costello\u2019s heirs, and the other 50% divided evenly between Bud Abbott\u2019s heirs, Vickie Abbott Wheeler and Bud Abbott, Jr. Wheeler would later transfer her 25% interest to a California partnership, Hi Neighbor, and Abbott, Jr. would transfer his 25% interest to Diana Abbott Colton.<\/p>\n
The heirs through press coverage learned that the play \u201cHand to God\u201d incorporated part of the Who\u2019s on first routine in one of its \u201ckey scenes, without license or permission\u201d. They have sent cease and desist letter, but did not receive required result. Failure to comply with that request prompted lawsuit. In lawsuit plaintiffs alleged that the play infringed their copyright in routine by using its first part.<\/p>\n
The court concluded that defendants\u2019 entitlement to a fair use defence was not so clearly established on the face of the amended complaint. The challenged use of piece of routine does not appear to fit within any of statutory categories for fair use. Nevertheless, the district court concluded<\/a> that defendants\u2019 use was \u201ctransformative,\u201d indeed, so \u201chighly transformative\u201d as to be \u201cdeterminative\u201d of fair use.<\/p>\n The district court explained that by having a single character perform the Routine, the Play\u2019s authors were able to contrast \u201cJason\u2019s seemingly soft-spoken personality and the actual outrageousness of his inner nature, which he expresses through the sock puppet.\u201d This contrast was \u201ca darkly comedic critique of the social norms governing a small town in the Bible Belt.\u201d 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\u2019 extensive copying of a famous comedy routine was necessary to this purpose, much less how the character of the Routine was transformed by defendants\u2019 use.<\/p>\n In sum, even if, as the district court concluded, Hand to God is a \u201cdarkly comedic critique of the social norms governing a small town in the Bible Belt,\u201d and even if the Play\u2019s purpose and character are completely different from the vaudevillian humor originally animating \u201cWho\u2019s on First?\u201d, that, by itself, does not demonstrate that defendants\u2019 use of the Routine in the Play was transformative of the original work.<\/p>\n The Play may convey a dark critique of society, but it does not transform Abbott and Costello\u2019s Routine so that it conveys that message. To the contrary, it appears that the Play specifically has its characters perform \u201cWho\u2019s on First?\u201d without alteration so that the audience will readily recognize both the famous Routine and the boy\u2019s false claim to having created it. Indeed, it is only after \u201cWho\u2019s on First?\u201d is performed \u2013 at some length, almost verbatim, and with the Play\u2019s characters mimicking the original timing, tone, and delivery of Abbott and Costello \u2013 that the boy\u2019s lie about creating the classic Routine \u2013 no part of the Routine \u2013 becomes the triggering event for the puppet to assume an independent persona.<\/p>\n Moreover, the Play appropriates the Routine\u2019s humor not incidentally, but extensively by having the characters perform some dozen of the original exchanges on the comic ambiguity of the words \u201cwho\u2019s on first.\u201d No new dramatic purpose was served by so much copying. The only purpose served by the extent of defendants\u2019 taking is identically comedic to that of the original authors, that is, to have two performers expand on a singular joke in order to generate increasing audience laughter. As the court has recognized, there is \u201cnothing transformative\u201d about using an original work \u201cin the manner it was made to be\u201d used. Defendants\u2019 use of the Routine, not briefly as the basis for a dramatic lie, but extensively for its original comedic effect, cannot be deemed transformative.<\/p>\n There is no question here that defendants\u2019 use of \u201cWho\u2019s on First?\u201d in Hand to God was for a commercial purpose. Plaintiffs also alleged that defendants not only used an unaltered and appreciable excerpt of the Routine in a commercial play but also featured the Routine in the Play\u2019s advertising, conduct which reasonably qualifies as commercial exploitation weighing strongly against fair use. To the extent defendants excessively copied from the Routine even within the Play, their advertising focus on the Routine\u2019s comic exchanges raises particular commercial exploitation concerns.<\/p>\n Thus, defendants\u2019 commercial use of the Routine was not transformative. Rather, it duplicated to a significant degree the comedic purpose of the original work. As such, the first statutory factor, far from weighing in defendants\u2019 favor, weighs in favor of plaintiffs.<\/p>\n The second statutory factor, \u201cthe nature of the copyrighted work,\u201d also weighs in plaintiffs\u2019 favor. Defendants argue that their use was justified by the dramatic need to use an instantly recognizable \u201ccultural\u201d touchstone in the relevant scene. But even assuming defendants\u2019 professed dramatic need, they do not explain why the cultural touchstone had to be the Routine \u2013 or even a comedy sketch \u2013 as opposed to some other readily recognizable exchange, including those already in the public domain. The purpose of such extensive use was to provoke audience laughter in exactly the same way as the Routine\u2019s creators had done.<\/p>\n In sum, because defendants\u2019 use of the Routine cannot be deemed transformative, and because the record is devoid of any persuasive justification for the extent of defendants\u2019 use, the creative nature of the Routine weighs strongly against a fair use defense.<\/p>\n 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.<\/p>\n The district court weighed this factor in defendants\u2019 favor, concluding that the Play\u2019s use of the Routine could not reasonably be expected to usurp the market for Abbott and Costello\u2019s original performance. In so doing, however, the district court disregarded the possibility of defendants\u2019 use adversely affecting the licensing market for the Routine. All four statutory factors weigh in favor of plaintiffs and against a defense of fair use.<\/p>\n Defendants asserted that Abbott and Costello\u2019s \u201cWho\u2019s on First?\u201d Routine fell into the public domain in 1968, when the initial copyright term for Tropics expired. Defendants concede that UPC\u2019s registration for that movie protected the Routine \u2013 first published therein \u2013 from entering the public domain through the term of that copyright, but they asserted that only Abbott and Costello, as the Routine\u2019s authors, could renew the copyright in that work \u2013 as distinct from Tropics \u2013 which the team failed to do.<\/p>\n As the highlighted language in each agreement makes plain, 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\u2010use license, not the assignment of copyright. Other language in the November Agreement further confirms that Abbott and Costello granted UPC only a license to use their routines. Thus, the language of the July and November Agreements, by itself, clearly belies plaintiffs\u2019 claim that Abbott and Costello therein conveyed their common law copyright in the Routine to UPC.<\/p>\n The Routine was first performed in March 1938, more than two years before Abbott and Costello entered into the July and November Agreements with UPC. Insofar as Abbott and Costello had already performed \u201cWho\u2019s on First?\u201d in 1938, they plainly did not create the Routine at UPC\u2019s \u201cinstance and expense\u201d in 1940, as would be required for it to be a work\u2010for\u2010hire.<\/p>\n Finally, plaintiffs argued that even if their copyright ownership claim cannot rest on either an assignment or work\u2010for\u2010hire theory, it is plausible because \u201cso much of the Routine as was used in the Movies \u2018merged\u2019 with the Movies to become a \u2018unitary whole.\u2019\u201d Thus, the Routine was not separately registerable; rather it was protected by UPC\u2019s statutory registration and its renewal of the copyrights for movies using the Routine.<\/p>\n This argument also failed because \u201cauthors of freestanding works that are incorporated into a film . . . may copyright these \u2018separate and independent works.\u2019\u201d \u201cWho\u2019s on First?\u201d was such a freestanding work within Tropics. Plaintiffs acknowledged in the amended complaint that the Routine (1) was prepared and existed on its own for some years before it was performed in Tropics; and (2) was performed independently from the films \u201cthousands of times\u201d on the radio and elsewhere.<\/p>\n \u201cWho\u2019s on First?\u201d is a freestanding comedy routine performed by Abbott and Costello not only years before the first frame of Tropics was ever filmed but also for many years thereafter. Routine did not merge into UPC\u2019s films so as to avoid the need for its creators to renew the copyright.<\/p>\n Plaintiffs failed plausibly to allege that (1) Abbott and Costello assigned their common law copyright in \u201cWho\u2019s on First?\u201d to UPC; (2) the Routine, as appropriated by defendants in Hand to God, was first created for UPC as a work\u2010for\u2010hire; or (3) the Routine so merged with the UPC movies in which it was performed as to become a unitary whole, the court concluded that plaintiffs did not plead their possession of a valid copyright in the Routine, as required to pursue their infringement claim.<\/p>\n Even though the district court erred in dismissing plaintiffs\u2019 amended complaint based on defendants\u2019 fair use of the appropriated material, the appellate court affirmed dismissal based on plaintiffs\u2019 failure plausibly to allege a valid copyright. Dismissal<\/a> is warranted by plaintiffs\u2019 failure plausibly to plead ownership of a valid copyright. Their efforts to do so on theories of assignment, work\u2010for\u2010hire, and merger all fail as a matter of law.<\/p>\n","protected":false},"excerpt":{"rendered":" Abbott and Costello were a popular mid\u2010Twentieth Century comedy duo. One of their routines, commonly referred to as \u201cWho\u2019s on First?\u201d, has become a treasured piece of American entertainment history.<\/p>\n","protected":false},"author":1,"featured_media":0,"comment_status":"closed","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[5,6,17,1],"tags":[],"class_list":["post-825","post","type-post","status-publish","format-standard","hentry","category-copyright","category-intellectual-property","category-litigation","category-uncategorised","entry"],"_links":{"self":[{"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/posts\/825","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/users\/1"}],"replies":[{"embeddable":true,"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/comments?post=825"}],"version-history":[{"count":0,"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/posts\/825\/revisions"}],"wp:attachment":[{"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/media?parent=825"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/categories?post=825"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/tags?post=825"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}