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

Good comedy makes for bad dicta.

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world-of-abbott-and-costello-compilation-film-whos-on-first-skitSo, 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 wellat 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.

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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

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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.

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

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