October 11, 2016 8:17am PT by Eriq Gardner

Abbott and Costello Heirs Lose Appeal Over Broadway Play's Use of "Who's on First" Routine

Joan Marcus

A production still from 'Hand to God'

'Hand of God' producers beat lawsuit — not because of fair use, but because the heirs haven't demonstrated ownership of a valid copyright.

On Tuesday, the Second Circuit Court of Appeals affirmed dismissal of a copyright lawsuit brought by the heirs of William "Bud" Abbott and Lou Costello against producers of the Tony Award-nominated play Hand to God. However, the appeals court didn't accept dismissal for the same reason the lawsuit was initially thrown out. And in coming to its decision, the 2nd Circuit raises the possibility that the world- famous comedy routine "Who's on First?" is no longer under copyright.
The lawsuit came in June 2015 while Hand to God, about a demonic hand puppet belonging to an introverted student in a religious small town, was enjoying a very successful run on Broadway. At issue was a scene where the the main character performs more than a minute of the "Who's on First?" sketch to impress a girl before later admitting that it is a "famous routine from the fifties."
A New York federal judge rejected the lawsuit with a finding that producers' exploitation of "Who's on First?" was a fair use in a play that served as a “darkly comedic critique of the social norms governing a small town in the Bible Belt."
That's not enough for Second Circuit judge Reena Raggi.
She writes in her opinion that the district court didn't explain how the purpose and character of "Who's on First?" was transformed by Hand to God and how the extensive copying was necessary to this purpose.
"[T]he focus of inquiry is not simply on the new work, i.e., on whether that work serves a purpose or conveys an overall expression, meaning, or message different from the copyrighted material it appropriates," the opinion states. "Rather, the critical inquiry is whether the new work uses the copyrighted material itself for a purpose, or imbues it with a character, different from that for which it was created. Otherwise, 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."
Raggi goes on to conclude that the play appeared to use "Who's on First?" without alteration so that the audience would recognize it as well as the main character's false claim for having created it.
"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," writes the appellate judge. "More than the Routine’s ability to capture audience attention is necessary to provide such justification."
Hand to God producer Kevin McCollum would be in trouble if the analysis stopped at the conclusion that the use of "Who's on First?" wasn't transformative, was too much and could have an adverse impact on licensing of the sketch, but the producers are saved by the failure of the heirs of Abbott and Costello to demonstrate ownership of a valid copyright on the comedy sketch.
The routine was first performed in the 1930s on radio, and the comedy duo signed a deal with Universal Pictures to license their work. Abbott and Costello performed "Who's on First?" in the 1940 film One Night in the Tropics, and an expanded version in the 1945 film The Naughty Nineties.
Abbott and Costello registered a copyright on their routine in 1944, but didn't renew it. For this lawsuit, the heirs relied on the copyright to One Night in the Tropics. In 1984, Universal quitclaimed the routine as performed in the film to the heirs' companies.
The problem is that the defendants argued that Universal didn't have the right to renew the copyright because only Abbott and Costello — as the authors — could.
The heirs responded that Abbott and Costello either assigned ownership or created the routine as a "work for hire" or that the routine merged into the film so as to support a single copyright, but Raggi says these theories have "no merit." Read the full opinion for her explanation.
As such, there's a strong possibility that the copyright has lapsed and "Who's on First?" is now in the public domain. The Second Circuit hasn't definitively made such a conclusion, but in a footnote, Raggi writes, "Because both parties seemingly concede that the Routine was protected from entering the public domain through at least Tropics’s initial copyright term, we need not determine whether Tropics’s publication automatically divested Abbott and Costello of their common law copyright and injected it into the public domain."