Transformative Use of Copyrighted Material Is Highly Transformative

June 28, 2017
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In our previous blog article, we explored the concept of fair use and how courts determine whether the use of copyrighted material is permitted without the rightsholder’s permission under the Constitution’s statute.

One way to decide whether the fair use law applies is to determine whether the third party engaged in the transformative use of the copyrighted material. New York’s active Second Circuit Court recently ruled on two applicable cases, elucidating the intricacies of fair use.

Who’s on First?

The Second Circuit decided a very interesting matter about the use of the classic “Who’s on first?” routine by the legendary comedy duo Abbott and Costello. TCA Television Corp. v. McCollum, 839 F.3d 168 (2d Cir. 2016).

This familiar routine revolved around the interplay of baseball players oddly named as Who, What, and I Don’t Know. Abbott and Costello would go back and forth in an exasperated attempt to understand the situation, asking questions like “Who’s on first,” which was a statement and not a question-you get the idea.

Hand to God is a stage play that included the “Who’s on first?” routine described above, but with a sock puppet telling it. The producers of the play saw the Abbott and Costello routine as something that was commonly known, and they also thought that the way that they used it-as a critique of the social norms governing a small town in the Bible Belt-would suffice and justify their use of the routine.

And the District Court agreed with them. However, the Court of Appeals for the Second Circuit reversed that decision, holding that it was not transformative use because:

  • The play did not add any new elements, expressions, meaning or message to the classic bit.

  • The retelling of the “Who’s on first?” bit portrayed in Hand to Godexhausted the entire routine.

  • Hand to God‘s use of the routine was commercial in nature.

  • The use did affect a derivative market for a license for the routine.

  • “Who’s on first?” has been largely licensed by others.

What is perhaps most interesting about this case-and further evidence of the wisdom in hiring counsel to protect your intellectual property-is that Hand to God still (sort of) won! In a later decision, the court found that Abbott and Costello’s heirs had no legal standing to sue for infringement. It appears that after their initial 1944 copyright, Abbott and Costello never renewed it.