Use of 'Who's on First?' in Play Not Transformative

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By Anandashankar Mazumdar

Oct. 12 — A Broadway play's use of part of Abbott and Costello's “Who's on First?” routine was not transformative, but a copyright infringement claim over it should still be dismissed, the U.S. Court of Appeals for the Second Circuit ruled Oct. 11 ( TCA Television Corp. v. McCollum , 2016 BL 338060, 2d Cir., Docket No. 16-134-cv, 10/11/16 ).

A federal trial court should not have found the routine's use in “Hand to God” to be fair use at the motion to dismiss stage of a copyright infringement proceeding, the appeals court said. However, the claim should be dismissed because the plaintiff—a company owned by Lou Costello's heirs—did not establish that it held the copyright interest in the comedy bit, it said.

In late 2015, the U.S. District Court for the Southern District of New York ruled that two characters' recitation of a big chunk of the comedy routine in the play was “highly transformative” and protected as fair use (244 PTD, 12/21/15).

The appeals court's lengthy opinion took the opportunity to compare the case to other rulings in a way that could help outline the limits of the transformative use doctrine.

Source Material:

TCA Television Corp. v. McCollum

Complaint: June 4, 2015

District Court Opinion: Dec. 17, 2015

Fair Use Creates Exceptions

The fair use doctrine, included in the Copyright Act of 1976, 17 U.S.C. §107, creates exceptions to copyright law for a range of uses, such as criticism, news reporting and educational purposes.

The transformative use doctrine was incorporated into the fair use analysis in a case over 2 Live Crew's 1989 parody recording of the Roy Orbison hit “Oh, Pretty Woman.” Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 29 U.S.P.Q.2d 1961 (1994) (47 PTCJ 413, 426, 3/10/94).

In 2013, the Second Circuit ruled that controversial artist Richard Prince's use of a photographer's images of Rastafarians was transformative, a ruling that the court itself acknowledged had “drawn some criticism.” Cariou v. Prince, 714 F.3d 694, 106 U.S.P.Q.2d 1497 (2d Cir. 2013) (81 PTD, 4/26/13).

The court said that Cariou “might be thought to represent the high-water mark of our court's recognition of transformative works,” but this case didn't rise to that level.

The court emphasized that the portion of “Who's on First?” used in the play failed to use “the copyrighted material itself for a purpose” or to imbue “it with a character, different from that for which it was created.”

By contrast, 2 Live Crew changed the character of “Oh, Pretty Woman” from a typical love ballad to raunchy and explicit. In the case of Richard Prince, the court said, he “heavily obscured and altered” Patrick Cariou's photographs “as to make them ‘barely recognizable' within the new work.”

But Case Still Dismissed

However, the performance of “Who's on First?” in “Hand to God” “appears not have altered the Routine at all,” the court said. It was performed “at some length, almost verbatim, and with the Play's characters mimicking the original timing, tone, and delivery of Abbott and Costello.”

To the extent there was humor in the performance, that was in the routine's original text—not a function of how it was used in the play, the court said. At the motion to dismiss stage of the lawsuit, there was nothing in the record to show that play “imbued the Routine with any new expression, meaning, or message,” it said.

Some of the other factors in the fair use test might have been better cleared up after a trial, the court said, but that consideration was rendered moot by the finding that the plaintiff, TCA Television Corp., could not establish that it actually owned the rights in the comedy routine. So the court still affirmed dismissal of the copyright infringement claim.

Judge Reena Raggi issued the court's ruling, which was joined by Judges Dennis Jacobs and Guido Calabresi

Kenyon & Kenyon LLP represented TCA Television. The Law Office of Mark J. Lawless represented McCollum.

To contact the reporter on this story: Anandashankar Mazumdar in Washington at

To contact the editor responsible for this story: Mike Wilczek at

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