Tca Television Corp. v. Kevin Mccollum, the Ensemble Studio Theatre, Inc.

TCA TELEVISION CORP., HI NEIGHBOR, and DIANA ABBOTT COLTON, Plaintiffs, v. KEVIN MCCOLLUM, THE ENSEMBLE STUDIO THEATRE, INC.,MANHATTAN CLASS COMPANY INC., ROBERT ASKINS, HAND TO GOD LIMITED LIABILITY COMPANY,and DOES and ABC COMPANIES 1-10, Defendants.

15 Civ. 4325 (GBD) (JCF)

UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK

June 5, 2017

REPORT AND RECOMMENDATION

TO THE HONORABLE GEORGE B. DANIELS, U.S.D.J.:

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.

Background

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 Broadway.com, 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 Handto 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 toAmended 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 connectionwith 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'sperformance 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...