TCA Television Corp. v. McCollum

839 F.3d 168

120 U.S.P.Q.2d 1248

TCA Television Corp., Hi Neighbor, Diana Abbott Colton, Plaintiffs–Appellants,

v.Kevin McCollum, Robert Askins, Does, ABC Companies, 1–10, Hand to God LLC, The Ensemble Studio Theater, Inc., Manhattan Class Company, Inc., Defendants–Appellees,Broadway Global Ventures, CMC, Morris Berchard, Mariano V. Tolentino, Jr., Stephanie Kramer, Lams Productions, Inc., Desimone Winkler, Joan Raffe, Jhett Tolentino, Timothy Laczynski, Lily Fan, Ayal Miodovnik, JAM Theatricals Ltd., Key Brand Entertainment Inc., Defendants.

Docket No. 16-134-cv

August Term, 2015

United States Court of Appeals, Second Circuit.

Argued: June 23, 2016

Decided: October 11, 2016

Jonathan D. Reichman (Jonathan W. Thomas, on the brief), Kenyon & Kenyon LLP, New York, New York, for Plaintiffs–Appellants.

Mark J. Lawless , Law Office of Mark J. Lawless, New York, New York, for Defendants–Appellees.

Before: Jacobs, Calabresi, Raggi, Circuit Judges.

Reena Raggi, Circuit Judge:

In this action for copyright infringement, plaintiffs, successors-in-interest to the estates of William “Bud” Abbott and Lou Costello, appeal from a judgment of dismissal entered in the United States District Court for the Southern District of New York (George B. Daniels, Jr., Judge ) in favor of defendants, who include the producers of Hand to God and the play's author, Robert Askins. See TCA Television Corp. v. McCollum, 151 F.Supp.3d 419 (S.D.N.Y. 2015). Plaintiffs assert that the district court erred in concluding from the amended complaint that defendants' use of a portion of the iconic Abbott and Costello comedy routine, Who's on First?, in Act I of Hand to God was so transformative as to establish defendants' fair use defense as a matter of law. See Fed. R. Civ. P. 12(b)(6). Defendants here not only defend the district court's fair use determination but also argue that affirmance is warranted, in any event, by plaintiffs' failure to plead a valid copyright interest. The district court rejected that argument. See TCA Television Corp. v. McCollum, 151 F.Supp.3d at 430–31.¹

For the reasons explained herein, we conclude that defendants' verbatim incorporation of more than a minute of the Who's on First? routine in their commercial production was not a fair use of the material. Nevertheless, we affirm dismissal because plaintiffs fail plausibly to allege a valid copyright interest.

I. Background

The following facts derive from plaintiffs' amended complaint, incorporated exhibits, and documents susceptible to judicial notice. See Goel v. Bunge, Ltd., 820 F.3d 554, 559 (2d Cir. 2016) (acknowledging that, on motion to dismiss, courts may consider documents appended to or incorporated in complaint and matters of which judicial notice may be taken); Island Software & Comput. Serv., Inc. v. Microsoft Corp., 413 F.3d 257, 261 (2d Cir. 2005) (stating that court may take judicial notice of copyright registrations). For purposes of this appeal, we presume these facts to be true. See Anschutz Corp. v. Merrill Lynch & Co., 690 F.3d 98, 102 (2d Cir. 2012).

A. Abbott and Costello's Who's on First? Routine

Abbott and Costello were a popular mid-Twentieth Century comedy duo. One of their routines, commonly referred to as Who's on First?(also, the “Routine”), has become a treasured piece of American entertainment history.² The Routine's humor derives from misunderstandings that arise when Abbott announces the roster of a baseball team filled with such oddly named players as “Who,” “What,” and “I Don't Know.” A rapid-fire exchange reveals that “who's on first” need not be a question. It can be a statement of fact, i.e., a player named “Who” is the first baseman. Later parts of the routine reveal, after similar comic misunderstandings, that a player named “What” is the second baseman, and one named “I Don't Know” is the third baseman.

B. Agreements Pertaining to Rights in the Routine

The parties cite various contracts and copyright filings spanning more than 40 years as relevant to claimed rights in the Routine.

1. Abbott and Costello's Agreements with UPC

a. The July 1940 Agreement

Abbott and Costello first performed Who's on First? in the late 1930s, notably on a 1938 live radio broadcast of The Kate Smith Hour. The Routine was published for purposes of federal copyright law when Abbott and Costello performed a version of it in their first motion picture, One Night in the Tropics(“Tropics”).³

The team appeared in Tropics pursuant to a July 24, 1940 contract (the “July Agreement”) with Universal Pictures Company, Inc. (“UPC”). The July Agreement guaranteed Abbott and Costello a minimum of five weeks' work at a pay rate of $3,500 per week. In turn, Abbott and Costello (the “Artists”) agreed to grant UPC (the “Producer”) certain rights and to furnish it with certain items. We reproduce the relevant text here, adding bracketed signals and highlighting to distinguish various provisions:

[1] The Artists expressly give and grant to the Producer the sole and exclusive right to photograph and/or otherwise reproduce any and all of their acts, poses, plays and appearances of any and all kinds during the term hereof, and [2] further agree [a] to furnish to the Producer, without charge to it, the material and routines heretofore used and now owned by the Artists for use by the Producer in the photoplay in which they appear hereunder and for which the Producer shall have the exclusive motion picture rights, and [b] to record their voices and all instrumental, musical and other sound effects produced by them, and [c] to reproduce and/or transmit the same, either separately or in conjunction with such acts, poses, plays and appearances as the Producer may desire, and further [3] give and grant to the Producer solely and exclusively all rights of every kind and character whatsoever in and to the same, or any of them, perpetually, including as well the perpetual right to use the names of the Artists and pictures or other reproductions of the Artists' physical likenesses, and recordations and reproductions of the Artists' voices, in connection with the advertising and exploitation thereof.

J.A. 168–69.

b. The November 1940 Agreement

On November 6, 1940, only days before Tropics's public release, Abbott and Costello entered into a new multi-year/multi-picture agreement with UPC (the “November Agreement”).⁴ That contract terminated the July Agreement without prejudice to, among other things, UPC's “ownership ... of all rights heretofore acquired,” including those “in or to any ... material furnished or supplied by the Artists.” Id. at 162. In the November Agreement, Abbott and Costello agreed “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 acknowledged that “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.” Id. at 129. Abbott and Costello agreed that they would “not use or license, authorize or permit the use of any of the material and/or routines” so referenced “in connection with motion pictures” by others than UPC for specified times. Id. Nevertheless, they reserved the right to use materials and routines created by them (without the assistance of UPC writers) “on the radio and in personal appearances.” Id. at 129–30.

2. UPC Registers a Copyright for Tropics

In November 1940, UPC registered a copyright for Tropics with the United States Copyright Office, which it renewed in December 1967. See id. at 36, 39–40.

3. UPC Uses an Expanded Version of the Routine in The Naughty Nineties and Registers a Copyright for that Movie

In 1945, Abbott and Costello performed an expanded version of Who's on First? in another movie for UPC, The Naughty Nineties. That version maintains the core of the Routine—with “Who” on first base, “What” on second, and “I Don't Know” on third—but several new players take the field: left fielder “Why,” center fielder “Because,” pitcher “Tomorrow,” catcher “Today,” and shortstop “I Don't Care.”

In June 1945, UPC registered a copyright for The Naughty Nineties with the United States Copyright Office, which it renewed in 1972. See id. at 37, 41–42; Am. Compl. ¶ 45.⁵

4. The 1944 Copyright Registration for “Abbott and Costello Baseball Routine”

In April 1944, a work entitled “Abbott and Costello Baseball Routine” was registered with the Copyright Office “in the name of Bud Abbott and Lou Costello, c/o Writers War Board.” J.A. 114. The certificate indicates that this “Baseball Routine” was published on “March 13, 1944” in “ ‘Soldier Shows,’ No. 19.” Id.⁶ The record suggests that this registration was not renewed, prompting the Copyright Office to conclude that the work had entered the public domain in 1972, and, on that ground, to reject a 1984 application for a derivative work registration filed by the children of Abbott and Costello based on the 1944 registration.

5. The 1984 Quitclaim Agreement

Plaintiffs do not rely on the 1944 registration to support their copyright claim here. Rather, they claim to have succeeded to UPC's copyright interests in the Routine as performed in Tropics and The Naughty Nineties based on a quitclaim agreement dated March 12, 1984 (the “Quitclaim”).

In the Quitclaim, which was subsequently recorded with the Copyright Office, UPC's successor-in-interest, Universal Pictures (“Universal”), granted Abbott & Costello Enterprises (“A & C”), a partnership formed by the heirs of Abbott and Costello,⁷ “any and all” of Universal's rights, title, and interest in the Routine. Id. at 45. Universal stated that it did so relying upon A & C's representation that it was “a partnership composed of the successors in interest to the late Bud Abbott and Lou Costello” and, therefore, “the owner of copyright in and to the...