Every “funny” uncle knows at least some of the classic “Who’s On First?” comedy routine made famous nearly 80 years ago by the duo of William “Bud” Abbott and Lou Costello. But can you repeat large chunks of the well-known baseball-themed bit verbatim in a Broadway show without violating copyright? Two courts have said yes you can, but for very different reasons.

Hand to God is a Tony-nominated comedy play that ran on Broadway for about a year before closing in Jan. 2016. In the play, a character uses a sock puppet to reenact about one minute of the Abbott and Costello routine to impress a woman, then lies to her about having created the bit.

In fact, the “Who’s On First?” was cooked up by Abbott and Costello in the 1930s, with the first noteworthy performance coming on a 1938 radio broadcast of the Kate Smith Hour. In Jan. 2015, the estates of the two performers sued Hand to God playwright Robert Askins and others, alleging copyright violation for using portions of the classic routine verbatim without permission.

Court One: It’s Fair Use

However, in Dec. 2015, a U.S. District Court judge in New York dismissed [PDF] the lawsuit, agreeing with the defendants that the use of the Abbott and Costello routine constituted a protected fair use.

The judge pointed out that Hand to God only uses about one minute’s worth of the original routine, which ran around three minutes. The text used in the play is also a hybrid of the language used in two different versions of the “Who’s on First?” routine. The judge said this reconfiguring of the bit should be considered “highly transformative.”

The District Court ruling also concluded that the existence of this text in a Broadway play did not diminish the licensing value of the copyrighted text.

“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,” explained the judge in 2015. “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.”

Court Two: No It’s Not

The plaintiffs appealed this ruling to the Second Circuit Court of Appeals, which yesterday came to a very different conclusion [PDF] — but the same net result.

The panel of three Second Circuit judges disagreed with the lower court on the issue of fair use, writing that “The district court did not explain how defendants’ extensive copying of a famous comedy routine was necessary… much less how the character of the Routine was transformed by defendants’ use.”

If you accept the lower court’s view that this is a fair use, said the panel, “any play that needed a character to sing a song, tell a joke, or recite a poem could use unaltered copyrighted material with impunity, so long as the purpose or message of the play was different from that of the appropriated material.”

Who’s Got The Copyright?

The real question, notes the Second Circuit, is whether the estates of Abbott and Costello can actually make a copyright claim at all on the “Who’s On First?” routine.

The duo performed the bit on the radio without ever registering it. Then after the routine (and the comedy team) appeared in the 1940 Universal film One Night in the Tropics, the movie studio registered a copyright for the movie.

In 1945, Abbott and Costello performed the bit again on film for Universal, in The Naughty Nineties. This time, the routine was expanded on, adding left fielder “Why,” center fielder “Because,” pitcher “Tomorrow,” catcher “Today,” and shortstop “I Don’t Care.” Once again, Universal registered a copyright for this movie. The two copyrights were renewed by Universal in 1967 and 1972, respectively.

Here’s that version of the routine:

In between the two movies, the comedy duo themselves registered a script titled “Abbott and Costello Baseball Routine.” However, this copyright was not renewed and the Copyright Office has since determined that it has fallen into the public domain.

After the Copyright folks rejected the estates’ attempt to register a derivative work based on the 1944 copyright, the estates entered into a quitclaim agreement with Universal, wherein the studio handed over the rights to the routine to a partnership formed by the two estates. Because of this agreement, claim the plaintiffs, they still have a copyright interest in the routine.

Not So Fast

To support their claim, the estates had pointed out Abbott and Costello’s agreements with Universal that allow the studio to use their routines in these movies. To the estates, this is evidence that the “Who’s On First?” bit should be considered a work for hire, meaning that Universal was the correct copyright holder and that this copyright transferred to the estates through the 1984 quitclaim agreement.

However, the Second Circuit panel saw it differently. To the judges, the duo’s contracts with Universal only show that the intent of the agreement was to allow the studio to use the routine, not for the studio to claim ownership and copyright of it.

The contract states that Universal has “the right to use said material and routines to such extent as the Producer may desire in connection with any photoplay in which the Artists render their services hereunder.”

“This is unmistakably the language of an exclusive, limited‐use license,” concluded the Second Circuit, “not the assignment of copyright.”

The appeals court points out that when the estates convinced Universal to agree to the quitclaim in 1984, the estates “represented that they owned the copyright in the Routine.”

But what about the fact that Universal copyrighted the two movies where the routine appeared –Doesn’t copyrighting the whole script cover everything? Not necessarily, explains the panel, pointing out that a copyrighted film may also contain within it other freestanding protected works, like songs, art, and clips from other movies or TV shows.

“‘Who’s on First?’ was such a freestanding work,” explains the ruling, again noting that the estates effectively asserted this very claim — that they owned the copyright on the routine itself, independent of the movies — when they reached the quitclaim agreement with Universal.

Additionally, the routine was not an integral part of either movie’s story, but performed as a freestanding routine — a bit that the comedy team had performed for years before these movies and would continue performing afterward.

Regarding the estates’ work for hire argument, the court says that the plaintiffs shoot themselves in the foot (legally speaking) by admitting that the routine was originally performed on the radio years before it ever appeared on film.

And even if the court were to accept that the amendments to the routine for The Naughty Nineties constituted a work for hire, the majority of the routine used in Hand to God comes from the earlier version that predates any film use of the bit.

In the end, the Second Circuit found that the estates failed to plausibly allege that Abbott and Costello had assigned their common law copyright in “Who’s on First?” to Universal; that the routine, as used in Hand to God, was first created for Universal as a work‐for‐hire; or that the routine’s copyright was merged with the copyright for the Universal movies.

“Accordingly, even though the district court erred in dismissing plaintiffs’ amended complaint based on defendants’ fair use of the appropriated material, we affirm dismissal based on plaintiffs’ failure plausibly to allege a valid copyright,” concludes the court.

If At First (Or Second) You Don’t Succeed…

While this is the second defeat for the estates’ copyright claim, it may not be the end of the road for this legal battle.

A lawyer representing the plaintiffs tells the Wall Street Journal’s Law Blog that the estates are considering asking for the case to be reheard by the entire Second Circuit.

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