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Who's On First? - Fair Use Decision in "Hand to God" Infringement Suit

By Barry Werbin

This case involves the hit off-Broadway show "Hand to God" (with a run time of one hour and 55 minutes), which incorporated a little over a minute of Abbott & Costello's famous Who's on First comedic routine as part of a sketch featuring the lead character in the show and his hand puppet. The same scene had also been incorporated into a promotional video to commercially promote the show and sell tickets.

The original routine had been performed by the comedic duo in different lengths in two Abbott & Costello films, One Night and The Naughty Nineties, for three minutes and almost nine minutes, respectively. After a long assessment of the plaintiffs' standing to sue and ownership of the copyrights in Who's on First, Judge Daniels upheld the show producer's fair use defense.

The court found that the first Section 107 factor, the nature of the copyrighted work, favored the plaintiffs because the original routine was a creative work, although the court viewed this factor as having less importance in light of the other factors.

The discussion about quantitative and qualitative proportionality under the third Section 107 factor is interesting, because the court found that while the minute plus segment used in the show was not insignificant, such use only "slightly" tipped the fair use scale in favor of the plaintiffs in light of the "highly transformative nature of the new use [that] ultimately outweighs this comparatively less important factor."

On the effect of the use on the potential market (4th factor), although the plaintiffs argued that they lost licensing and royalty revenues, the court found this only relevant to the market for the original work. Here, the court found it "unlikely that a reasonable observer of the new work would find that [this] reenactment of the Routine could usurp the market for the original Abbott and Costello performance of the Routine," also noting that the transformative use of the routine could arguably "broaden the market for the original work" by exposing it to an entirely new generation.

Finally, as for the second statutory factor assessing the purpose and character of the use, the court found this to be a transformative use, consistent with Cariou v. Prince, 714 F.3d 694 (2d Cir. 2013), cert. denied, 134 S. Ct. 618 (2013). The court emphasized that the Second Circuit had done away with any requirement that a use had to "comment" on an original work to warrant fair use protection. Despite the overt commercial use of the routine in the promotional video for the show, the court found this did not undermine the fair use defense because the Supreme Court had made it clear in Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994), that commercial use did not preclude a Section 107 defense, and that here "the for-profit secondary use [in the promo video] is not determinative...."

Applying the Second Circuit's transformative use test and assessing whether the show's use of the routine "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," the court found that "the tone of the new performance is markedly different" than the original routine. In particular, while the original Abbot & Costello work was a two-man vaudeville comedy sketch, the use of the work in "Hand to God" "has only one actor performing the Routine in order to illustrate a larger point. The contrast between [the lead character's] seemingly soft-spoken personality and the actual outrageousness of his inner nature, which he expresses through the sock puppet, is, among other things, a darkly comedic critique of the social norms governing a small own in the Bible Belt."

Despite the routine's performance in the show nevertheless getting audience laughs, the court did not find that this defeated the transformative use argument. According to the court, the humor evoked from use of the skit in the show does not derive from Who's on First itself being funny, but for different reasons based upon an inside joke in the show's own dialogue involving the exposure of a lie by the main character. The court thus found that this statutory factor "weighs strongly in favor of Defendants."

This is one case where you'd probably need to see the show itself to make an informed assessment. Use of the skit in a commercial promotional video to promote sales, however, does raise some fair use eyebrows, as the selection of that specific content out of nearly two hours of total show content was likely done specifically because of the fame associated with the Who's on First skit itself.

Post Cariou, we likely will be seeing more district court decisions applying an even broader scope of transformative use, as this is the path now clearly defined in the Second Circuit.

The decision is available here:Whos on First decision.pdf

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This page contains a single entry from the blog posted on December 21, 2015 7:15 PM.

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