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TCA Television Corp. v. McCollum

United States District Court, S.D. New York

June 5, 2017





         The plaintiffs in this action, successors-in-interest to the estates of William "Bud" Abbott and Lou Costello (collectively, the "Abbott and Costello Successors") - who together became known as the comedy duo Abbott & Costello - claimed that the defendants, producers of the Tony-nominated play Hand to God (collectively, the "Hand to God Producers"), infringed the copyright in the comedy routine known as "Who's on First?" (also called the "Routine"). The defendants prevailed before the Second Circuit and now seek attorneys' fees pursuant to the Copyright Act's fee-shifting provision, 17 U.S.C. § 505 ("Section 505"). I recommend granting the motion and awarding the Hand to God Producers $50, 123.04 in attorneys' fees and costs.


         I will dispense with the details of the skit, the play, and the skit in the play, which are amply recounted elsewhere. See TCA Television Corp. v. McCollum ("TCA II"), 839 F.3d 168, 172-77 (2d Cir. 2016), cert. denied, ___ S.Ct. ___, 2017 WL 1408798 (U.S. 2017); TCA Television Corp. v. McCollum (“TCA I”), 151 F.Supp.3d 419, 426-32, 434-37 (S.D.N.Y. 2015). It should suffice here to say that two characters in Hand to God -- one a human, the other a puppet -- “perform, almost verbatim, a little over a minute of Who's on First? [sic]”[1] and that a video clip of that performance was included in promotional materials for the play. TCA II, 839 F.3d at 175-77 & n.8. The plaintiffs base their infringement claims on these uses.

         A. Performance History and Complaints

         Hand to God was first performed in workshop from late October 2011 until April 2012; it opened off-Broadway in mid-February 2014 and played until late March of that year. (First Amended Complaint (“Amended Complaint”), ¶ 59). Approximately one year later, on March 4, 2015, the play had its first performance on Broadway at the Booth Theatre. (Amended Complaint, ¶ 60). On April 13, 2015, counsel for plaintiff TCA Television Corp. as “the owner of various proprietary material related to the estate of Lou Costello, ” together with a representative of the estate of Abbott, sent a cease-and-desist letter to the Booth Theatre accusing the play of infringing on copyrights owned by the estates. (Letter of Greg S. Bernstein dated April 13, 2015, attached as Exh. 4 to Declaration of Mark J. Lawless dated Jan. 12, 2017 (“Lawless 1/12/17 Decl.”), at 1). On May 29, 2015, an attorney from the same firm, now acting as “litigation counsel for the successors in interest to the estates of Lou Costello and Bud Abbott, ” sent a letter to counsel for the defendants expressing the intent “to file a Complaint and Motion for Preliminary Injunction no later than June 4th unless the dispute is settled prior to that date.” (Letter of Marc J. Rachman dated May 29, 2015, attached as Exh. 5 to Lawless 1/12/17 Decl.), at 1).

         The Complaint was filed on June 4, 2015, as threatened. The original complaint named eighteen defendants -- sixteen individuals and entities identified as “producers” of Hand to God, along with the playwright and Key Brand Entertainment Inc., the owner of the website, which “feature[d] video clips of the infringing scene.” (Complaint, ¶¶ 9-26). The Complaint, which was filed the day before the 69th Annual Tony Awards ceremony, at which Hand to God was nominated for five awards, received some attention from the press. (Lawless 1/12/17 Decl., ¶ 6; Andrew R. Chow, “Hand to God” Play Sued by Abbott and Costello Heirs Over Use of “Who's on First?”, N.Y. Times, June 4, 2015, attached as Exh. 6 to Lawless 1/12/17 Decl.; Lawsuit Filed by Abbott & Costello Heirs Against Acclaimed Hand to God Play Claims Infringement of Famous “Who's on First?” Routine, Business Wire, June 5, 2015, attached as Exh. 7 to Lawless 1/12/17 Decl.).

         Four days later, the Amended Complaint was filed against the same defendants, except that Key Brand Entertainment was replaced by Hand to God LLC, “a producer, advertiser and/or owner” of Hand to God. (Amended Complaint, ¶¶ 9-26). The Amended Complaint identifies the plaintiffs as “heirs to Abbott & Costello” who own valid copyrights in “Who's on First?” (Amended Complaint, ¶ 1), and reviews the history of the copyrights at issue. According to the Amended Complaint, the Routine was first performed in 1938 on a television show. (Amended Complaint, ¶ 32). It was “first published for the purposes of registration pursuant to the 1909 [Copyright] Act” in 1940 in the Universal Pictures Co. (“UPC”) film One Night in the Tropics, and an expanded version was later published in 1945 in the UPC film The Naughty Nineties. (Amended Complaint, ¶ 42). Pursuant to a work-for-hire agreement dated November 6, 1940 (the “November 1940 Agreement”), the rights to the performances in these two movies were granted to UPC, which registered each film in the year it was released. (Amended Complaint, ¶¶ 43-44; Copyrights dated Nov. 15, 1940, and June 29, 1945, attached as Exh. 1 to Amended Complaint). UPC timely renewed both copyrights (Amended Complaint, ¶ 45; Applications for Registration of a Claim to Renewal Copyright dated Dec. 7, 1967, and date illegible, attached as Exh. 2 to Amended Complaint), which, after amendments to the Copyright Act, resulted in protection for the works until 2035 and 2040. (Amended Complaint, ¶¶ 46-48). In 1984, Universal Pictures (“Universal”), a division of the successor to UPC, executed a quitclaim agreement with Abbott & Costello Enterprises (“ACE”), a partnership formed by the heirs of Abbott & Costello. (Amended Complaint, ¶ 50; Quitclaim dated March 12, 1984 (“1984 Quitclaim”), attached as part of Exh. 3 to Amended Complaint). That partnership was dissolved in 1992, and, through assignments and inheritance, each of the three plaintiffs in this action allegedly owned a percentage of the copyrights at the time the Amended Complaint was filed. (Amended Complaint, ¶¶ 54-57). The Amended Complaint also alleges a non-statutory -- that is, common law -- copyright in a radio performance of the routine in 1947. (Amended Complaint, ¶¶ 35, 101).

         B. Motion to Dismiss

         The defendants filed a motion to dismiss the Amended Complaint that (1) asserted that the Routine had fallen into the public domain and (2) advanced a fair use defense. The Hand to God Producers argued that “Who's on First?, ” originally performed in 1938, cannot have been a work-for-hire under the November 1940 Agreement, because it pre-existed that agreement, which “specifically excluded pre-existing comic routines . . . from work for hire status or other ownership by [UPC].” (Memorandum in Support of Defendants' Joint Motion to Dismiss the First Amended Complaint for Failure to State a Cause of Action (“Def. MTD Memo.”) at 14). They further cited the following provision from the November 1940 Agreement to support their position that UPC had “a mere license to incorporate the Routine in its movie” (Def. MTD Memo. at 7):

FIFTH: The Artists [Abbott and Costello] agree to furnish and make available to the Producer [UPC] all literary and dramatic material and routines heretofore used by the Artists either on the radio or otherwise and now owned by the Artists, and the Producer shall have 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 and in connection with the advertising and exploitation of such photoplay. . . . The Artists expressly agree that they will not use or license, authorize or permit the use of any of the material and/or routines referred to in this paragraph in or in connection with motion pictures for any person, firm or corporation other than the Producer, at any time prior to the termination of the employment of the Artists under this agreement or one year after the general release of the photoplay in which used, whichever is greater.
The Artists reserve the right to use on the radio and in personal appearances authorized under the terms of this agreement any material and routines referred to in this paragraph; provided, however, that such material and routines shall have been created or used by the Artists prior to the date of this agreement or created by the artists solely (or by writers employed by the Artists in connection with services other than motion pictures) during the term of this agreement . . . .

(Def. MTD Memo. at 14 (alterations in original); November 1940 Agreement, attached as Exh. A to Declaration of Mark J. Lawless dated July 7, 2015 (“Lawless 7/7/15 Decl.”), at 5-6). Indeed, the defendants revealed that Abbott and Costello themselves registered the script of a version of the Routine broadcast in 1944 -- a fact “not even alluded to in the [Amended] Complaint” -- which “debases any notion that [UPC] had acquired ownership of the text of the Routine under the [November] 1940 Agreement.” (Def. MTD Memo. at 7, 15; Certificate of Copyright Registration dated March 13, 1944 (“1944 Registration”), attached as Exh. B to Lawless 7/7/15 Decl.).

         Moreover, the 1984 Quitclaim “distinguish[es] the text of the Routine from its registered performances.” (Def. MTD Memo. at 15). Specifically, the 1984 Quitclaim notes that Universal retained rights under the November 1940 Agreement and a later 1964 agreement (which allowed UPC to use film footage of Abbott and Costello in a television documentary) to use (or continue to use) the pair's performance of “Who's on First?” in The Naughty Nineties and in any other “photoplays . . . produced by Universal” pursuant to any agreement between the studio and the duo or their successors-in-interest. (1984 Quitclaim at 1). And the quitclaim was executed “in reliance upon the representation by Jerome E. Weinstein, attorney for ABBOTT & COSTELLO ENTERPRISES” -- a partnership of the heirs of Abbott and Costello -- that the partnership was “the owner of copyright in and to the Routine.” (1984 Quitclaim at 2). In light of these facts, the Hand to God Producers contended that “Who's on First?” was “a pre-existing freestanding contribution to a collective work, licensed to [UPC] for inclusion in the work.” (Def. MTD Memo. at 15). The defendants thus argued that, while the registration of One Night in the Tropics protected the Routine during the initial copyright term, UPC, as “a mere licensee, ” could not “register renewal in the copyright when the time came in 1968”; rather, “only Abbott or the heirs to Costello [as owners of the copyright in the Routine] could exercise the renewal right.” (Def. MTD Memo. at 15-16). When they failed to do so, the Routine fell into the public domain. (Def. MTD Memo. at 17-18). The defendants' second major argument contended that, even if the plaintiffs owned the copyright in the routine, its appearance in Hand to God constituted fair use. (Def. MTD Memo. at 19-22).

         The plaintiffs countered that “[u]nder the terms of the November 1940 Agreement, Abbott & Costello granted UPC all rights in the existing versions of the Who's on First? [sic] routine in connection with the motion pictures that UPC produced, in which Abbott & Costello would perform.” (Plaintiffs' Memorandum of Law in Opposition to Defendants' Motion to Dismiss (“Pl. MTD Memo.”) at 6). Like the defendants, they pointed to the fifth provision of the agreement, but supplied different emphasis in order to bolster their position that the November 1940 Agreement was no mere license, but rather was an assignment of the copyright:

The Artists agree to furnish and make available to the Producer all literary and dramatic material and routines heretofore used by the Artists either on the radio or otherwise and now owned by the Artists, and the Producer shall have 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 and in connection with the advertising and exploitation of such photoplay. The Artists warrant that they know of no claims that the use of said material and routines or any part thereof as herein permitted will violate or infringe any copyright or any other right or rights of any other person, firm or corporation whatsoever.

(Pl. MTD Memo. at 6-7 (quoting November 1940 Agreement at 5)).

         The plaintiffs also cited the first section of the November 1940 Agreement, which is the work-for-hire provision:

[T]he Producer hereby engages and employs the Artists, severally and as a team . . . to render to the Producer their exclusive services as actors, performers and entertainers in the portrayal of such roles or parts as may be designated by the Producer in such photoplays as may be designated by the Producer, and further employs the Artists to render their services in consulting, advising, collaborating with and assisting the Producer in the preparation of stories and screen plays upon which such photoplays are to be based and in otherwise performing such services as may be required of them pursuant to the provisions of this agreement.

(Pl. MTD Memo. at 7 (quoting November 1940 Agreement at 1)). This provision, they argued, “sets out the services that Abbott & Costello were expected to provide -- specifically, to help prepare the content of motion pictures, and to perform that content. Such content included a version of Who's on First? [sic], and as such, was prepared as a work-for-hire for UPC.” (Pl. MTD Memo. at 7). Consequently, under the Copyright Act of 1909, “UPC was considered the ‘author' of the version of Who's on First? [sic] that appeared in the 1940 Motion Picture for purposes of copyrighting the work.” (Pl. MTD Memo. at 7). Returning to the fifth provision, the plaintiffs contended that the reservation of rights merely allowed Abbott and Costello “to continue to use and perform, on the radio or in personal appearances, versions of Who's on First? [sic] that pre-dated the 1940 Agreement, or that were created separate and apart from the motion pictures produced by UPC thereunder.” (Pl. MTD Memo. at 8-9). Asserting that “[a] motion picture . . . is an integrated work, ” the Abbott and Costello Successors insisted, “[T]here can be no dispute that, until the 1984 execution of the Quitclaim Agreement, UPC was the sole owner of the federal copyright in [One Night in the Tropics] and [The Naughty Nineties] and was therefore the only party eligible to register or renew the Who's on First? [sic] routines contained therein.” (Pl. MTD Memo. at 9).

         The Abbott and Costello Successors then introduced an agreement from July 1940 -- not mentioned in the Complaint or the Amended Complaint because it was “discovered . . . after the filing of the Amended Complaint” (Pl. MTD Memo. at 10 n.7) -- to argue that, even if the Routine was not covered by the November 1940 Agreement, “alternatively, it certainly was covered” by the prior agreement, in which Abbott and Costello “g[a]ve and grant[ed] to [UPC] the sole and exclusive right to photograph and/or otherwise reproduce any and all of their acts”; “furnish[ed]” UPC with “the material and routines heretofore used and now owned by [Abbott and Costello] for use by [UPC] in the photoplay [One Night in the Tropics] . . . and for which [UPC] shall have exclusive motion picture rights”; and “g[a]ve and grant[ed] to [UPC] solely and exclusively all rights of every kind and character whatsoever in and to the same” (Pl. MTD Memo. at 10 (emphasis omitted) (quoting Agreement dated July 24, 1940 (“July 1940 Agreement”), attached as Exh. B to Declaration of Marc J. Rachman dated July 31, 2015, at 3-4)). Those rights survived the execution of the November 1940 Agreement. (Pl. MTD Memo. at 11).

         The plaintiffs stated that language in the 1984 Quitclaim that ACE was the owner of the copyright in the Routine refers to the common law copyright rather than statutory copyrights. (Pl. MTD Memo. at 11-12). Moreover, if UPC did not own the rights to the Routine, it would not have had the power to grant them to ACE, and “the [1984] Quitclaim [] would have been [] pointless.” (Pl. MTD Memo. at 12).

         The Abbott and Costello Successors asserted that these facts established that UPC was the only entity that could have renewed the copyright in One Night in the Tropics and consequently protect the Routine. (Pl. MTD Memo. at 12). They countered the defendants' position that “Who's on First?” was a freestanding contribution to a collective work merely licensed to UPC by arguing, again, that the movie was “an integrated work where the component elements are indivisible from each other, ” rather than a composite work. (Pl. MTD Memo. at 14). They then addressed the 1944 Registration, calling the defendants' argument that it registered the script of “Who's on First?” in the names of Abbott and Costello for a radio performance “utter speculation.” (Pl. MTD at 18).

         The Abbott and Costello Successors went on to oppose the defendants' argument that Hand to God's quotation of the Routine was fair use, and asserted that the 1947 radio performance “remain[ed] protected under common law copyright.”[2] (Pl. MTD Memo. at 20-25).

         C. The District Court Opinion

         The Honorable George B. Daniels, U.S.D.J., granted the defendants' motion, agreeing only with their fair use argument. Judge Daniels noted that, “[a]s a threshold matter, a federal infringement claim requires that Plaintiffs allege they possessed a valid copyright at the time of the alleged infringement.” TCA I, 151 F.Supp.3d at 426. He found that Abbott and Costello “retained common law copyright protection” of “Who's on First?” as performed on the radio in 1938; additionally, the November 1940 Agreement, which “furnish[ed] and ma[de] available to [UPC] all . . . routines heretofore used by [Abbot and Costello] . . . and now owned by [them]” in connection with UPC's later registration of the copyrights in One Night in the Tropics and The Naughty Nineties, “constitute[d] an implied assignment of the initial [common law] copyright from Abbott and Costello.”[3] Id. at 428-29 (quoting November 1940 Agreement). He discounted the 1944 Registration, saying “its existence does not render Plaintiffs' factual allegations implausible, ” because Abbott and Costello could have been mistaken about their ownership of the copyright. Id. at 429-30. The initial publication of “Who's on First?” within One Night in the Tropics, to which UPC held the copyright, “extinguished whatever common law copyright Abbott and Costello had in the unpublished version of the Routine.” Id. at 430. Finally, Judge Daniels held that

[b]ecause as much of the 1938 Routine as was disclosed in the motion picture was published when the motion picture was published, and because the law treats motion pictures as unitary works, the copyrights in One Night [in the Tropics] and The Naughty Nineties that UPC registered “merged” the Routine with the film.

Id. at 431. “Thus, Plaintiffs [] sufficiently alleged a continuous chain of title” over “Who's on First?” Id.

         Judge Daniels then analyzed the use of the routine in Hand to God applying the “four nonexclusive factors” of 17 U.S.C. § 107. See id. at 433-37. He found that the routine was “clearly a creative work” and that the proportion of the routine used was substantial; however, he also ruled that the use of the routine in Hand to God did not affect the market for the original and that, most importantly, its use in the play was transformative. See Id. He therefore found that the defendants were protected by the fair use doctrine and that the plaintiffs had failed to state a claim.[4]Id. at 437.

         D. Appellate Arguments

         The plaintiffs appealed the judgment, arguing that Judge Daniels misapplied the fair use factors. (Brief and Special Appendix for Plaintiffs-Appellants, attached as Exh. A to Declaration of Jonathan D. Reichman dated Feb. 9, 2017 (“Reichman Decl.”), at 16-18). The Hand to God Producers did not cross-appeal. Instead, they opposed the Abbott and Costello Successors' fair use argument and additionally contended that pursuant to the so-called “Right for Any Reason Rule, ”[5] the Second Circuit could affirm the District Court's judgment if it found that “no valid copyright exists for the text” of the Routine. (Brief for Defendants-Appellees (“Appellee Br.”), attached as Exh. B to Reichman Decl., at 8-10, 28-29). The Hand to God Producers argued that the district court's opinion was flawed “by three leaps of faith.” (Appellee Br. at 31). The first was that Abbott and Costello in 1940 signed away “all of their existing comedic birthright” to UPC in exchange for a possible multi-picture deal. (Appellee Br. at 31). The second was that Abbott and Costello “and their successors' lawyers continuously erred and betrayed” that agreement “by making separate filings in the Copyright Office reflecting [that] Abbott & Costello's copyright ownership of the text arose from their 1944 registration.” (Appellee Br. at 31). In support of this contention, the Hand to God Producers pointed out that Abbott and Costello's heirs “repeatedly referred to the 1944 registration” for the “A&C Baseball Routine” in “subsequent registrations for variations of the Routine.” (Appellee Br. at 32; see TCA II (No. 16-0134), Joint Appendix at 240, 242-43, 245). The third was “that the heirs' written representation to Universal Studio that they were ‘the owner[s] of copyright in and to the Routine, ' which was made to induce the Quitclaim . . ., actually referred to an extinguished common law copyright and not to federal copyright in the Routine itself.” (Appellee Br. at 31).

         The Hand to God Producers went on to argue that the Routine cannot have been a work made for hire under the November 1940 Agreement because it pre-existed that agreement; that the 1940 Agreements were not assignments of copyright, but rather licenses; and that there is no evidence of an oral or implied assignment as suggested by Judge Daniels. (Appellee Br. at 34-39). Thus, the copyright protection of the 1940 version of the Routine could not be extended by UPC through its renewal of the copyright to the film, but rather ...

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