Who's On (The) Second (Circuit)... And Why Are They Screwing Up Copyright Law?

from the no,-he's-on-first dept

So, last year, we wrote about the ridiculous situation in which the heirs of Abbott and Costello had sued for copyright infringement over a broadway play, Hand to God. In that play, which is a dark drama, and not a comedy, about a puppeteer, there's a scene in which the puppeteer performs a bit of the famous "Who's On First?" routine with puppets. The district court wasted little time in dumping the lawsuit. As we detailed in our first post, the copyright issues here were already somewhat complex for a variety of reasons. The short version is that (1) lots of comedy teams performed the same basic act before Abbott & Costello, and (2) the "copyright" is not actually for the whole routine, but rather two separate performances in two separate movies, where Abbott & Costello did (different) versions of the act. It is true that Universal Pictures transferred whatever copyright interest it might have in those two scenes to the heirs of Abbott & Costello in 1984, but it was never clear what copyright they could actually claim in those particular scenes & whether or not it had been properly registered and renewed.

The district court sided with the producers of Hand to God based on fair use, skipping over the more thorny question of whether or not there was a copyright at all. Basically, the court (correctly) noted at the motion to dismiss stage that it needed to interpret things in the most favorable manner to the plaintiff, and thus it would just assume that the copyrights were valid, and said that even if the copyrights were valid, fair use would lead the case to be dismissed.

Astoundingly, the heirs of Abbott & Costello have appealed... and they've lost on appeal as well at the Second Circuit court of appeals. But... the reasoning of the appeals court is very different, and potentially dangerous. Basically, the court here says that there's no valid copyright (which is probably correct), but then for no good reason also concludes that if there were a valid copyright, this would not be fair use. This is bizarre on a number of levels, starting with the fact that once it's decided there's no valid copyright, there's no reason at all to also do a fair use analysis, and it may mean that the fair use analysis is effectively meaningless dicta -- but you can bet that others will make use of it in trying to undermine fair use in other cases, and the fair use analysis here is bad. Really bad. Laughably bad... and not laughable like the Abbott & Costello routine.

First, on the question of the copyright's validity. The court goes fairly deep into the wording of various contracts in determining who had the responsibility for renewing the copyright in question in the movies, and basically finds that Abbott & Costello did not actually transfer the copyright to the movie studios, and thus, the team (or their heirs) failed to renew the copyright as necessary in 1968 -- and thus, the act is in the public domain (this ignores, again, that the actual act predates the movies, and even predates Abbott & Costello, but whatever). The only mention of the fact that the act was performed previously was to toss aside the estate's claim that the act should be considered a "work made for hire" so that the copyright could have actually gone to the movie studio (so that it could later be transferred to the estate). Yet the judge points out that it can't be a work made for hire, since Abbott & Costello had already performed it earlier, so they didn't make it for the movie studio (I'm not sure this actually makes sense, since the copyright would be in the specific fixed work, but, again, this is getting deep into the weeds).

Either way, the end result is no copyright, and that's a good thing, even if the reasoning is a bit weird for why.

But the really problematic part of the ruling is the fair use stuff. Again, it's not at all clear why the court is looking at fair use at all, since it says there's no copyright anyway. But it does. And it does so badly. While the district court found the use in the play clearly transformative (taking a pure slapstick Vaudevillian comedy routine and putting it in a dark & disturbing play), the appeals court disagrees, basically saying that since the use is recognizable, it's not transformative:

Far from altering Who’s on First? to the point where it is “barely recognizable” within the Play... 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—becomes the triggering event for the puppet to assume an independent persona.

Defendants nevertheless maintain that using the Routine for such a “dramatic,” rather than comedic, purpose was transformative. Appellees’ Br. 18 (stating that Play’s use of Routine was “far cry” from original “comedy schtick”). The argument will not bear close scrutiny. 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.

This seems like a very odd way to interpret transformative work -- and one at odds with a number of other cases, such as the Swatch v. Bloomberg case (also in the 2nd Circuit) that clearly states that "a secondary work can be transformative in function or purpose without altering or actually adding to the original work." That is, the purpose of the use is what matters. Bizarrely, this ruling tries to basically walk its way out of that in a footnote, saying that in that case, it only meant data and "not the creation of new artistic work." Huh? It also seems to go against the ruling in Bill Graham Archives v. Dorling Kindersley (again, in the 2nd Circuit) where reusing full concert posters in a book was declared fair use because it was for an aggregated book, rather than to advertise concerts. Again, it was using the work, but for a different manner. And that wasn't about data, but about new works of art.

Basically, this ruling seems to ignore existing precedent in its own court for no clear reason at all.

Also troubling is the analysis of "the nature of the work," stating that "an original comedy sketch created for public entertainment lies at the heart of copyright's intended protection." Except that's ridiculous -- and not the least because (as noted earlier) this was a classic vaudevillian act that was performed by many others first and eventually by Abbott & Costello. Furthermore, as we've discussed in detail in the past, there's quite a fair bit of "joke copying" in comedic circles, with individuals copying bits and routines from others, and it rarely has anything to do with copyright. Instead, various social norms generally are used to "police" this kind of activity, and lots of comedians admit that the power of an act is in the performance (delivery, comedic timing, flourishes, etc.) rather than in the idea of the joke itself. The idea that copyright is specifically necessary for a comedy routine is simply disproved by the history of comedy and comedic acts, especially at the time that Abbott & Costello were performing.

The court also rejected the district court's (correct) decision that there was no impact on the market of this use, since it would not usurp the market for Abbott & Costello's performance. The appeals court falls for a favorite claim of copyright holders, which other, smarter, courts have disregarded: it's the "but what about the possibility of licensing the work."

In so doing, however, the district court disregarded the possibility of defendants’ use adversely affecting the licensing market for the Routine

Other courts have rejected this kind of argument, because it would undermine this factor of fair use in every single case. This ruling kind of admits that, but then brushes it off, and notes that since there are lots of requests to license "Who's On First?" that this would impact the market. But it doesn't explain how.

Overall, none of this matters in this case, but it is troubling for potential future fair use cases, especially those in the Second Circuit, which has traditionally been really good on fair use cases.

Filed Under: abbott & costello, copyright, fair use, hand to god, public domain, second circuit, transformative, who's on first

Copyright Lawsuit Over 'Who's On First' Doesn't Get Past First Base

from the fair-use-and-the-public-domain dept

Earlier this year, we wrote about (yet another) ridiculous copyright lawsuit where the heirs of famous people think they must own something just because everything must be "owned." In this case, it was the heirs of Abbott & Costello, claiming copyright infringement because a Broadway play, Hand of God, uses a bit of the famed "Who's On First?" routine in the play. You probably know "Who's On First?" already, right? The history of this routine is incredibly complicated. It's arguable as to whether or not Abbott & Costello came up with it in the first place. Going back to the Vaudeville days, jokes like this got passed around over and over again, with each act putting its own spin on it, or just mimicking others. Abbott even performed a version of it before he teamed up with Costello. Some have long argued that the entire bit is clearly in the public domain.

But there are also differences between the text of the bit, and filmed versions of the bit. And some of the filmed versions are clearly in the public domain. But then, Abbott & Costello performed the bit in two different movies in the 1940s: One Night in the Tropics and The Naughty Nineties. Both of those films were produced by Universal Pictures, for whom Abbott and Costello were under contract. Universal held the copyrights on both films. In 1984, Universal transferred the copyrights on just the video clips of that bit to the heirs of Abbott & Costello, which is how those heirs now claim to hold the copyright on the bit itself. Except that's wrong. They just have the copyright on those two video clips from the movies. The story is complicated even more by the fact that prior to the 1976 Copyright Act, there was no copyright in sound recordings, meaning that the heirs of Abbott & Costello argued a common law copyright under New York's now defunct state copyrights.

In short: whether there's even a legitimate copyright here is a real mess -- but even the parts that do have copyright don't seem to apply to the Hand of God, which is a story involving a puppeteer, who at one point performs a bit of Who's on First with puppets. The play is a serious play, not a comedy and clearly no one's seeing that as an alternative to seeing any of the numerous Abbott & Costello recordings.

And thus, even if there were a copyright there, it's pretty obviously fair use. The use is totally transformative and is used in a different way for a different purpose and doesn't take away from the market for Abbott & Costello's version in any way. And the ruling in the case finds easily for the play and against the heirs of Abbott & Costello, but, given all of the above, the ruling is a bit complex.

First, it rejects the idea that because Abbott & Costello performed the routine prior to those movies, the work was already "published" and in the public domain. It also rejects a variety of other arguments (some of them fairly compelling) that says the work is in the public domain. The court doesn't fully support the idea that the work is under copyright, but notes at this stage of the case (judging a motion to dismiss) it needs to judge the complaint in the light most favorable to the plaintiffs, and thus it accepts that the copyright is valid.

But then it says that the use here is clearly fair use, going through the usual four factors. On the first factor (the nature of the work) the court notes this one leans towards the heirs of Abbott & Costello, but also note this factor really isn't that important. On the second factor (the amount of the work), things again lean towards the heirs, even though the routine in the play is only a little over a minute long, consisting of a "hybrid" from the two movie versions of the bit: about 37 seconds from the 3 minute version of the bit in One Night in the Tropics and one minute and six seconds out of the nine minute version of the bit in The Naughty Nineties. The court notes that even though this is just a small part of the bit, the beginning of the bit (which is the part done in the play) is the most recognizable part, and thus substantial. Still, the court argues that this only "tips this factor slightly in favor" of the heirs.

The third factor (the impact on the market) weighs easily in favor of the play:

It is unlikely that a reasonable observer of the new work would find that Jason and his puppet's reenactment of the Routine could usurp the market for the original Abbott and Costello performance of the Routine.... 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...

And then we get to the big one: the fourth factor that is often used to tip the scales entirely, as it does here, and that's the "purpose and character" of the use. Here, the court rightly notes that the use is totally transformative:

Whereas the original Routine involved two actors whose performance falls in the vaudeville genre, Hand to God has only one actor performing the Routine in order to illustrate a larger point. The contrast between Jason's seemingly soft-spoken personality and the actual outrageousness of his inner nature, which he expresses through the sock puppet, is, among other things, a darkly comedic critique of the social norms governing a small town in the Bible Belt. Thus, Defendants' use of part of the Routine is not an attempt to usurp plaintiffs material in order to "avoid the drudgery in working up something fresh." ... Nor is the original performance of the Routine "merely repackaged or republished."...

Furthermore, Plaintiffs' contention that "the scene in the Play is performed ... for the same exact purpose-for audience laughs"- cannot defeat the transformative use argument.... While the Routine, as performed in the play, also results in comic relief for the audience, it does so for reasons different from why audiences found the original sketch humorous.... Tyrone, the sock puppet, breaks the "fourth wall" with the audience when he says to Jessica, "You'd know [Jason didn't make the Routine up] if you weren't so stupid," sharing with them an inside joke.... The audience laughs at Jason's lie, not, as Plaintiffs claim, simply the words of the Routine itself.... For the lie to be apparent, the play requires that the audience be able to recognize the original source of Jason's sock puppet performance.... This statutory factor, therefore, weighs strongly in favor of Defendants. "The more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use."

And that tips the scales and makes the use clearly fair use, leading to the case getting tossed. It's too bad the court didn't also make it clear the work is in the public domain, because it almost certainly is, but at least this is an overall victory against yet another attempt at overly abusive copyright claims by heirs.

Filed Under: abbott & costello, copyright, fair use, hand of god, public domain, who's on first

Abbott & Costello Heirs Sue Play For Briefly Using 'Who's On First?' Routine

from the culture-lockup dept

Abbott & Costello's Who's on First? routine is one of the most well-known comedy bits of the 20th century. There are a bunch of different variations on it, and they often changed things around when they performed it. Here's one famous performance of it: Of course, the history of the skit is a bit complicated with plenty of examples of similar skits being performed long before Abbott & Costello did their version. In fact, Abbott himself performed a version of it with someone else before teaming up with Costello. There have also been different debates over who actually wrote it -- which isn't that surprising given how many different versions there were and how others had performed similar skits.

And of course, this is how a normal creative process works, with experimenting and adjustments until it reaches a level that's entertaining. People build on each other's work, and they share and then change things around. But, in a world of copyright, that gets tricky. Milton Berle once claimed that "Who's on First" was in the public domain and that everyone, including himself, used to perform versions of it.

And it gets even trickier the more you look, because it appears that some of the filmed versions are in the public domain allowing them to be shared anywhere.

But, of course, nowadays we live in a world where absolutely everything must be "owned" and the various heirs of Abbott & Costello insist that they own the rights to "Who's on First," and anyone who wants to do anything with it must license it from them first.

And thus, they are now suing the playwright and producers of a new popular Broadway play Hand to God that apparently includes a brief scene where one of the characters tries to impress another character by performing a version of Who's on First? with puppets.

In the lawsuit, they trace the somewhat circuitous path of the copyright itself. It was originally held by Universal Pictures Co. after the act appeared in Universal's One Night in the Tropics film in 1940, and then again in The Naughty Nineties in 1945. It notes that Abbott & Costello had a work for hire agreement with the studio, giving up all the rights to the act. Those copyrights have been renewed and extended thanks to changes in copyright law. However, in 1984 Universal transferred the copyright of just those scenes back to the heirs of Abbott & Costello. The heirs admit that the sound recordings did not have a federal copyright, but they do say that under NY state law, they have a "common law" copyright in the sound recordings -- and that's helped along by that recent ruling against Sirius XM concerning common law copyrights in NY.

Still, that raises a bunch of questions. While they may hold the copyright in those specific performances, given that the act was done way before that, do they really hold the copyright in the entire "Who's on First?" script? It seems like a very strong argument can be made that they do not.

On top of that, if there actually is a copyright claim here, it seems like the fair use defense is a fairly strong one as well.

According to the NY Times article:

The federal lawsuit, filed in the Southern District of New York, is claiming copyright infringement against the playwright Robert Askins, the producers and the promoters. The estate said cease-and-desist requests were sent after the play opened on Broadway in April, and it is seeking damages and lawyers’ fees.

“ ‘Hand to God’ is using ‘Who’s on First’ not just to get laughs from the audience but also to get people to buy tickets,” a lawyer for Abbott and Costello’s heirs, Marc Rachman, said in a statement.

This is, clearly, an attempt to end-run around a fair use defense, but I don't think it works. I don't know what that line even means about "not just to get laughs." No one is going to this play as a substitute for going to see Abbott & Costello perform the skit. People are going to the play because it's getting great reviews and is funny -- not because of the use of the skit, which is being performed not because of the inherent humor in the skit itself, but rather as a sort of cultural touchstone, referencing the famous skit. In the past, this would be what was known as an homage. Today, the lawyers and copyright maximalists call it infringement. But here, it seems pretty clear that it's transformative, as the use is for a very different purpose (and, of course, done in a different way, involving a hand puppet, which is key to the plot of the play).

Beyond that, the actual complaint seems to undermine their own argument:

The scene takes place only about fifteen minutes into the one hour and forty-five minute play, and is one of the lighter moments of the production, without which the much darker tone of the rest of the play would be very difficult for the audience to handle. It is this purely comedic scene featuring Who's On First?, conterbalanced with the more dramatic and serious themes of the play which are developed later on, that has allowed the play to garner both commercial success and wide audience appeal as a "dark comedy."

But, by saying that, they're basically admitting to the transformative nature here. It's not being used as Abbott & Costello intended, as a vaudevillian slapstick, but rather as a set piece in a much larger, much darker piece. Also, who the hell are they to claim that the play would be "very difficult for the audience to handle." How is that their position to say?

And the legal precedents don't look good for the heirs either. A couple years ago, we wrote about the play Jersey Boys winning its lawsuit, allowing it to use a clip from the Ed Sullivan show thanks to fair use, noting that the use of the clip was clearly not a "replacement" for the original. Same here. And, just a couple months ago, another off-Broadway play was victorious in arguing fair use in using the premise of the TV show Three's Company to create its own parody show. Thus, it seems that judges are recognizing that plays can make use of fair use to use elements of cultural touchstones in order to create their own enterntainment.

Either way, I'm sure plenty of lawyers will be able to bill tons of hours as this creates a huge legal mess, rather than just celebrating a moment of American cultural history.

Filed Under: abbott & costello, copyright, fair use, hand of god, who's on first