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District court dismisses plaintiffs’ claim of copyright infringement, finding that use of Abbott and Costello’s “Who’s On First?” routine in Broadway play “Hand to God” is transformative use and is protected by fair use doctrine.

In this lawsuit for copyright infringement, plaintiffs — the heirs of William “Bud” Abbott and Lou Costello — protested the use of the comedy duo’s iconic routine “Who’s On First?” in the defendants’ critically acclaimed Broadway comedy “Hand to God.” The play features a scene where the main character and his demonically possessed sock puppet recite one minute and seven seconds of the routine to impress a girl. The scene is also shown in the play’s promotional video. The defendants moved to dismiss the suit for failure to state a claim, arguing that plaintiffs failed to allege a continuous chain of title in the routine, that the routine has passed into the public domain and that their use of the routine constitutes fair use. While the district court found that plaintiffs had adequately pleaded that they possess a valid copyright in the routine, it concluded that defendants’ use of the routine in the play constitutes fair use and subsequently dismissed the suit.

Because the defendants conceded that they used part of the routine in the play, the district court devoted much of its initial analysis to whether plaintiffs had sufficiently alleged facts establishing that they owned a valid copyright in the routine. Over the defendants’ objections that the routine had fallen into the public domain, the district court found that plaintiffs had established a valid, continuous chain of title in the copyright of the routine. Because the routine and its early performances fall under the 1909 Copyright Act, the routine acquired statutory copyright protection when it was registered with the Copyright Office by Universal Pictures Co. after Abbott and Costello had assigned the company the rights to the routine in 1940. At that point, according to the district court, any and all common law copyrights to the routine were extinguished and pre-empted, closing the door on plaintiffs’ claims for copyright infringement under New York common law copyright. After various transactions and copyright term extensions affecting the statutory copyright, including when Universal quitclaimed “all rights, title, and interest, under copyright or otherwise” to a general partnership formed by the heirs of Abbott and Costello, the district court found that plaintiffs did indeed hold ownership in a valid copyright to the underlying work.

The court next turned to defendants’ argument that their use of the routine in the play qualifies as a fair use. In weighing the four fair use factors, the district court first examined the nature of the underlying work, finding that the “Who’s On First?” routine is clearly creative, iconic and deserving of copyright protection. Second, the district court looked at how much of the underlying work was used in the play. While the district court noted that defendants used portions of the routine that are “instantly recognizable,” tipping this factor slightly against a finding of fair use, it also noted that the “highly transformative nature of the new use ultimately outweighs this comparatively less important factor.” Third, the district court examined the effect of the defendants’ use on the potential market for the underlying work. This factor applies primarily to the market for the original work and not the derivative market of missed licensing fees for the original work, according to the district court, and it was therefore unlikely that the use of the routine in the play would usurp the market for the original routine.

Finally, the district court looked at the purpose and character of defendants’ secondary use. The district court gave little value to the fact that the play is a for-profit venture, noting that the U.S. Supreme Court has “discounted the force of commerciality in applying a fair use analysis.” Instead, the district court focused on whether the new work is transformative of the original in that it “adds something new, with a further purpose or different character, altering the first with new expression, meaning or message.” Significantly, the court determined that the tone of the new performance of the routine is “markedly” different, and that “Hand to God” uses the routine “to create context and a background for the ever more sinister character development of Tyrone, the alter ego sock puppet,” thus creating “new aesthetics and understandings about the relationship between horror and comedy that are absent from Abbott and Costello’s performances of the Routine …” The court also stated that while the original “Who’s On First?” routine is a vaudeville performance by two people, the defendants’ play alters the routine by having it performed by a single character and his sock puppet to create “a darkly comedic critique of the social norms governing a small town in the Bible Belt.” The court concluded the play’s “highly transformative” use of the routine in the play weighed strongly in favor of a fair use finding, and thus that plaintiffs’ complaint “doesn’t get past first base.”