BY:Neil J. Rosini, Michael I. Rudell
(Originally published in the Entertainment Law column in the New York Law Journal on February 26, 2016)
Sometimes a lawyer can’t just sit and watch a play. We note things, such as a substantial borrowing from a well-known comedy routine of Abbott and Costello in the critically acclaimed Broadway dark comedy, “Hand to God.” It’s a routine with iconic status. Time Magazine in 1999 named it “Best Comedy Routine of the Twentieth Century” –instantly recognizable from the line “Who’s on First?,” which was honored by the American Film Institute as one of the “100 Greatest Movie Quotes of All Time.” We ask ourselves: was that use cleared? If not, is it a non-infringing fair use? And if so, why?
In December, District Judge George B. Daniels held that although unauthorized, this borrowing was indeed a fair use and opined as to why.[i]
Bud Abbott and Lou Costello allegedly performed their “Who’s on First?” routine (the “Routine”) for the first time via live radio on March 24, 1938 during “The Kate Smith Hour.” It was then seen in two films: “One Night in the Tropics” (1940) and, in an expanded version, “The Naughty Nineties” (1945). In the Routine, Abbott tries to teach Costello about the “very peculiar names” given ball players, including “Who” playing first base, “What” on second base, and “Why” in left field. Costello’s learning is impeded when he fails to interpret the interrogative pronouns, adverbs and other parts of speech and expressions mentioned by Abbott, as proper nouns that identify the players. (For example, Abbott explains “Who’s on first” and Costello responds “What are you asking me for?”)
In “Hand to God,” according to the decision, the play’s “shy and repressed main character” named Jason, “finds a creative escape from his religious small-town life through his hand sock-puppet, named Tyrone.” Jason initially uses Tyrone for his church’s “Christian Puppet Ministry,” which his mother leads. During the course of the play, however, the puppet develops a life of its own “possibly due to demonic possession.” About 15 minutes into the play, Jason attempts to impress “his crush,” Jessica, by performing about 67 seconds of the Routine with Tyrone as Costello and Jason as Abbott. Jessica, who is impressed, asks Jason if he made up the dialogue himself and he takes credit. As the court observed, “[t]he audience is intended to recognize the famous Abbott and Costello sketch and find humor when Tyrone, the puppet, calls Jason a liar and tells Jessica that the sketch ‘is a famous routine from the Fifties’.” Tyrone then insults Jessica: “You’d know that if you weren’t so stupid” and reveals Jason’s feelings for her: “he thinks you’re hot.” So begins the exposure of Jason’s “darker side” and the puppet’s behavior only becomes more “outrageous and subversive” as the play proceeds.
The plaintiffs alleged that “Hand to God” used about 25% of the 1940 Routine and about 20% of the 1945 version.[ii]
Fair Use Analysis
Holding that fair use defeated the plaintiffs’ claim for copyright infringement, the court relied heavily on the “purpose and character of the use” in applying the Copyright Act’s four-part test.
As the court observed, the doctrine of fair use developed because Congress recognized “that giving authors total control over their own works might not always expand public knowledge, but in fact limit it.” Because Article I, Section 8 of the U.S. Constitution describes the purpose of copyright as “[t]o promote the Progress of Science and useful Arts,” fair use authorizes the public “to draw upon copyrighted materials without the permission of the copyright holder in certain circumstances.”
The process of “[d]etermining fair use is ‘an open-ended and context-sensitive inquiry’,” as the court noted. Section 107 of the Copyright Act requires the court to weigh at least four nonexclusive factors to determine whether a given use is fair. Each of first three factors addressed by the court in this case either were overshadowed by one or more of the other factors or favored the defendants.
The first factor in the court’s analysis, “the nature of the copyright work” — with creative works less susceptible to fair use treatment than factual works — favored the plaintiffs. The Routine not only was “clearly a creative work” but also had achieved “iconic status.” However, the factor was deemed less important in the overall fair use analysis relative to the other three factors. The second factor was “the amount and substantiality of the portion used in relation to the copyrighted work as a whole” in which “the larger the volume (or the greater importance of the original taken), the less likely the taking will qualify as a fair use.” The court found that the defendants’ use of more than “the introductory premise” of the Routine and the fact that “even only one line” – “Who’s on first?” – is instantly recognizable, tipped this factor “slightly” in the plaintiffs’ favor. But the “highly transformative nature of the new use” (discussed below) ultimately outweighed “this comparatively less important factor.”
The third factor was “the effect of the use upon the potential market for or value of the copyrighted work.” The plaintiffs argued that the defendants’ use without paying fees diminished “its potential licensing and royalty market.” But the court held that this factor does not focus principally on damage to the derivative market of the Routine, and that a responsible observer of the new work would not likely 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.” On the contrary, “[d]efendants’ 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.” This factor weighed in favor of the defendants.
This brought the court to the “determinative statutory factor” and “heart of the fair use inquiry”: “the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes.” The court broke down this factor into two sub-questions: First, was the defendants’ use of the Routine a commercial use? The court answered affirmatively because the user stood to profit from use of the Routine without paying licensing fees – not only in the play but also by highlighting the Routine in a video clip to promote the play and sell tickets. This sub-factor therefore weighed against fair use, but “the Supreme Court has discounted the force of commerciality in applying a fair use analysis, noting ‘no man but a blockhead ever wrote, except for money’” (an unattributed quote from Samuel Johnson, the 18th century British author, linguist and lexicographer).
Thus the court came to the core of its fair use analysis, which it characterized as “the heart of the ‘purpose and character’ inquiry” (that is, the heart of the heart of the entire fair use analysis): “whether the new work ‘merely “supersede[s] the objects” of the original … or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning or message.’” Is “the use of the original …‘transformative’ … based on a ‘reasonable perception’ of the new work”? Was the use “productive” and did it “employ the quoted matter in a different manner or for a different purpose from the original”?
By implication, the court answered all in the affirmative. The fact that there was no commentary on the original made no difference, citing Second Circuit precedent: “[t]he law imposes no requirement that a work comment on the original or its author in order to be considered transformative.” The court also rejected the plaintiffs’ contention that the defendants’ use of the Routine did not add anything “materially new” or provide a “different aesthetic”; it seemed to the plaintiffs that the actor playing Jason “merely re-enact[s] the [R]outine as Abbott and Costello performed it.”
But the court found that the “tone of the new performance is markedly different.” The play “uses the Routine to create context and ‘a background for the ever more sinister character development of Tyrone, the alter-ego sock puppet’” (quoting from the defendants’ memorandum). The court accepted the defendants’ argument that the performance through the anti-hero puppet created “new aesthetics and understandings about the relationship between horror and comedy” which were foreign to performances of the Routine by Abbott and Costello. Further, the original Routine involved a vaudevillian performance by two actors, “Hand to God has only one actor performing the Routine in order to illustrate a larger point.” The court found that the “contrast between Jason’s seemingly soft-spoken personality and the actual outrageousness of his inner nature” expressed through the sock puppet, is, among other things “a darkly comedic critique of the social norms governing a small town in the Bible Belt”.
The plaintiffs also argued unsuccessfully that the scene in the play was performed for the same exact purpose as the Routine, namely “for audience laughs”. The court acknowledged that the Routine, as performed in the play, “also results in comic relief for the audience” but found it did so “for reasons different from why audiences found the original sketch humorous.” In the play, the sock puppet “breaks the ‘fourth wall’” by telling Jessica “You’d know [Jason didn’t make the Routine up] if you weren’t so stupid,” sharing an inside joke with the audience, which “laughs at Jason’s lie, not, as [p]laintiffs claim, simply the words of the Routine itself.” The lie would not be apparent but for the audience’s ability “to recognize the original source of Jason’s sock puppet performance.” The statutory factor thereby weighed strongly in the defendants’ favor, making other factors, like commercialism, less significant.
Judge Daniels concluded: “the Complaint doesn’t get past first base.”
By allowing a substantial, unauthorized use of an iconic comedy routine in a new play, this decision is an emphatic addition to a series of recent decisions that expand fair use in the visual and performing arts by deeming uses “transformative.” The pendulum may have swung so far in this direction that it will be difficult to slow or reverse, but the plaintiffs have filed a notice of appeal.
[i] TCA v. McCollum, 15 Civ. 4325, NYLJ 1202745485885, (SDNY, December 17, 2015).
[ii] The decision also discusses an “implied assignment” by Abbot and Costello of common law copyright in the Routine to Universal Pictures, which was supported by a contract between the parties followed by registration of the films containing the Routine by Universal Pictures. Owing principally to this assignment, the plaintiffs sufficiently alleged a continuous chain of title.