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No. 16-

In the

Supreme Court of the United States

On PetitiOn fOr a Writ Of CertiOrari tO the United StateS COUrt Of aPPealS fOr the SeCOnd CirCUit

A(800) 274-3321 • (800) 359-6859

PETITION FOR A WRIT OF CERTIORARI

272467

TCA TELEVISION CORP., HI NEIGHBOR, DIANA ABBOTT COLTON,

Petitioners,v.

KEVIN MCCOLLUM; 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.; ENSEMBLE STUDIO THEATRE

INC.; MCC THEATER; ROBERT ASKINS; HAND TO GOD LLC; ABC COMPANIES,

Respondents.

Jonathan D. ReIchman

Jonathan W. thomas

anDReWs KuRth Kenyon LLPOne BroadwayNew York, New York 10004(212) 908-6256

Counsel for Petitioners

April 18, 2017 *Counsel of Record

LouIs P. PetRIch*LeoPoLD, PetRIch & smIth, P.c.2049 Century Park East, Suite 3110Los Angeles, California 90067(310) [email protected]

i

QUESTION PRESENTED

The case concerns the effect of the renewal of the unitary copyright in a motion picture under the 1909 Act. Until the Opinion below, the Copyright Office policy adopted by the Second and Ninth Circuits, held that a motion picture was a unitary work that acquired a unitary copyright that included all material incorporated in it and first published by the publication of the movie. Failure to renew the movie copyright injected into the public domain all previously unpublished material. Timely renewal of the movie copyright renewed everything first published by the movie. The Opinion below held that such incorporated material could acquire copyright protection but would not be renewed by renewal of the movie copyright unless it was created specifically for the movie.

This case therefore presents the question, under the 1909 Act, whether material that was incorporated into, and first published by, a movie to become protected by the movie copyright is not protected by renewal of the movie copyright unless such material was created specifically for the movie.

ii

PARTIES TO THE PROCEEDINGS

The petitioners herein, plaintiffs/appellants below, are TCA Television Corp., Hi Neighbor, and Diana Abbott Colton (collectively “Petitioners”).

The respondents herein, defendants/appellees below, are Kevin McCollum, 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.; Ensemble Studio Theatre Inc.; MCC Theater; Robert Askins; Hand To God LLC; and ABC Companies (collectively “Respondents”).

iii

CORPORATE DISCLOSURE PURSUANT TO RULE 29.6

Petitioner TCA Television Corp., a California corporation, hereby confirms that (i) it has no parent corporation, and (ii) no publicly held company owns ten percent (10%) or more of its stock.

Petitioner Hi Neighbor, a Cali fornia general partnership, hereby confirms that (i) it has no parent corporation, and (ii) no publicly held company owns ten percent (10%) or more of its stock.

iv

TABLE OF CONTENTS

Page

QUESTION PRESENTED . . . . . . . . . . . . . . . . . . . . . . . i

PARTIES TO THE PROCEEDINGS . . . . . . . . . . . . . . ii

CORPORATE DISCLOSURE PURSUANT TO RULE 29.6. . . . . . . . . . . . . . . . . . . . . . iii

TABLE OF CONTENTS. . . . . . . . . . . . . . . . . . . . . . . . . iv

TABLE OF APPENDICES . . . . . . . . . . . . . . . . . . . . . vii

TABLE OF CITED AUTHORITIES . . . . . . . . . . . . . . ix

PETITION FOR A WRIT OF CERTIORARI. . . . . . . .1

OPINIONS BELOW. . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1

JURISDICTION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1

STATUTORY PROVISIONS INVOLVED . . . . . . . . . . .1

INTRODUCTION. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .2

STATEMENT OF THE CASE . . . . . . . . . . . . . . . . . . . .3

REASONS FOR GRANTING THE PETITION. . . . . .9

v

Table of Contents

Page

I. THE SECOND CIRCUIT’S OPINION IS PLAINLY INCORRECT, CONFLICTS WITH SEVERAL DECISIONS OF VARIOUS COURTS OF APPEAL AND PRACTICES OF THE COPYRIGHT OFFICE, AND ANNOUNCES A NEW RULE TOO L ATE FOR RIGHTS HOLDERS TO SATISF Y – THUS RESULTING IN A FORFEITURE OF

VALUABLE COPYRIGHT RIGHTS . . . . . . . . .9

A. The Acquisition And Renewal Of Copy r ight s I n T he “ Rout i ne” Were Governed By The Copyright

Act Of 1909 . . . . . . . . . . . . . . . . . . . . . . . . . . .11

B. Under The 1909 Act, A Federal Copyright Was Secured Either By Publication With A Notice Affixed Or By Registration; Unpublished, Un r e g i s t e r e d M a t e r i a l F i r s t Published By Incorporation Into A Movie Obtained Copyright Protection

Under the Movie Copyright . . . . . . . . . . . . .12

1. The 1909 Act Renewal Provisions Applicable To ”Contributions” To Periodicals Or Composite Work s A re D i f ferent t ha n Provisions Governing Material Incorporated Into and First

Published By Movies . . . . . . . . . . . . . . .13

vi

Table of Contents

Page

2. A Different Rule Has Governed The Renewal Of Material First Published By Incorporation Into Motion Picture Works Because A Movie

Is Treated As A Unitary Work . . . . . .20

II. T H E QU E S T ION P R E S E N T E D IS CRITICALLY IMPORTANT TO THE HOLDERS OF RIGH TS IN COPYRIGHTABLE MATERIAL FIRST PUBLISHED AND INCORPORATED INTO A MOTION PICTURE BETWEEN 1923 AND 1963, AN IMPORTANT QU EST ION OF FEDER A L L AW THAT HAS NOT BEEN, BUT SHOULD

BE, SETTLED BY THIS COURT . . . . . . . . . .34

CONCLUSION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .35

vii

TABLE OF APPENDICES

Page

A PPENDIX A — JUDGMENT OF THE UNITED STATES COURT OF APPEALS FOR THE SECOND CIRCUIT, FILED

OCTOBER 11, 2016. . . . . . . . . . . . . . . . . . . . . . . . . . . .1a

A PPEN DI X B — OPI N ION OF T H E UNITED STATES COURT OF APPEALS F O R T H E S E C O N D C I R C U I T ,

DATED OCTOBER 11, 2016 . . . . . . . . . . . . . . . . . . . .3a

A P P E N D I X C — M E M O R A N D U M DE C I S ION A N D OR DER OF T H E UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF NEW

YORK FILED DECEMBER 16, 2015 . . . . . . . . . . .53a

A P P E N DI X D — O R D E R O F T H E UNITED STATES COURT OF APPEALS FOR THE SECOND CIRCUIT, DATED

DECEMBER 20, 2016 . . . . . . . . . . . . . . . . . . . . . . . .85a

APPENDIX E — FEDERAL STATUTES . . . . . . . .87a

A PPENDIX F — LETTER FROM THE UNITED STATES COPYRIGHT OFFICE T O EDW IN KOM EN, ES Q . , FILED

JULY 31, 2015 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .100a

A P PEN DI X G — F I R S T A M EN DED COMPLAINT OF THE UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF NEW YORK , FILED

JUNE 8, 2015 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 117a

viii

Table of Appendices

Page

EXHIBIT 1 TO APPENDIX G . . . . . . . . . . . . . . . SA1



ix

TABLE OF CITED AUTHORITIES

Page

Cases

16 Casa Duse, LLC v. Merkin, 791 F.3d 247 (2d Cir. 2015) . . . . . . . . . . . .25, 26, 27, 28

Abend v. MCA, Inc., 863 F.2d 1465 (9th Cir. 1988). . . . . . . . . . . . . . . passim

Ashcroft v. Iqbal, 556 U.S. 662 (2009). . . . . . . . . . . . . . . . . . . . . . . . . . 7, 16

Batjac Prods., Inc. v. Goodtimes Home Video Corp.,

160 F.3d 1223 (9th Cir. 1998). . . . . . . . . . . . . . . . . . . .22

Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007) . . . . . . . . . . . . . . . . . . . . . . . . . . . .7

Classic Film Museum, Inc. v. Warner Bros., Inc.,

597 F.2d 13 (1st Cir. 1979) . . . . . . . . . . . . . . . . . . . . . .22

Faulkner v. National Geographic Society, 211 F. Supp. 2d 450 (S.D.N.Y. 2002) . . . . . . . . 17, 19, 20

Faulkner v. National Geographic Society, 220 F. Supp. 2d 237 (S.D.N.Y. 2002). . . . . . . 18, 28, 34

Ferris v. Frohman, 223 U.S. 424 (1912) . . . . . . . . . . . . . . . . . . . . . . . . . .4, 29

x

Cited Authorities

Page

G. Ricordi & Co. v. Paramount Pictures, Inc., 189 F. 2d 469 (2d Cir. 1951) . . . . . . . . . . . . . . . . . .21, 27

Garcia v. Google, Inc., 786 F.3d 733 (9th Cir. 2015) (en banc) . . . . . . . . .25, 27

Goodis v. United Artists Television, Inc., 278 F. Supp. 122 (S.D.N.Y. 1968) . . . . . . . . . . . . . .9, 32

Goodis v. United Artists Television, Inc., 425 F.2d 397 (2d Cir. 1970) . . . . . . . . . . . . . . .14, 32, 33

Harris Custom Builders, Inc. v. Hoffmeyer, 92 F.3d 517 (7th Cir. 1996) . . . . . . . . . . . . . . . . . . . . . .22

Husbands, Copyright Office Board of Appeals Letter, Control No. 10-600-754-2(C), 5/14/2002 . . . . . passim

Richlin v. Metro-Goldwyn-Mayer Pictures, Inc., 531 F.3d 962 (9th Cir. 2008) . . . . . . . . . . . . . .24-25, 29

Roy Export Co. Establishment of Vaduz, Liechtenstein v. Columbia Broad. Sys. Inc.,

672 F.2d 1095 (2d Cir. 1982) . . . . . . . . . . . . . . . . . . . .22

Russell v. Price, 612 F.2d 1123 (9th Cir. 1979). . . . . . . . . . . . . . . . . . . .21

xi

Cited Authorities

Page

Self-Realization Fellowship Church v. Ananda Church of Self Realization,

206 F.3d 1322 (9th Cir. 2000) . . . . . . . . . . . . . . . . 17, 18

Shapiro, Bernstein & Co. v. Bryan, 123 F.2d 697 (2d Cir. 1941) . . . . . . . . . . . . . . . . . . . . .14

Shoptalk, Ltd. v. Concorde-New Horizons Corp., 168 F.3d 586 (2d Cir. 1999) . . . . . . . . . . . . . . . . . .13, 22

Silverman v. CBS, Inc., 632 F.Supp. 1344 (S.D.N.Y 1980), aff’d in part, vacated in part, 870 F.2d 40 (2d Cir. 1989) . . . . . . . .29

Stewart v. Abend, 495 U.S. 207 (1990) . . . . . . . . . . . . . . . . . . . 11, 14, 21, 33

TCA Television Corp. v. McCollum, 151 F.Supp. 3d 419 (S.D.N.Y 2015) . . . . . . . . . . . . . . . .9

TCA Television Corp. v. McCollum, 839 F.3d 162 (2d Cir. 2016) . . . . . . . . . . . . . . . . . . . . . .1

Ward v. National Geographic Society, 208 F. Supp. 2d 429 (S.D.N.Y. 2002). . . . . . . . . . . . . .20

xii

Cited Authorities

Page

Statutes

Copyright Act of 1909, 28 U.S.C. § 1, et seq. (repealed 1977)

28 U.S.C. § 3 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . passim

28 U.S.C. § 5 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1, 11, 21

28 U.S.C. § 5 (l) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1, 11

28 U.S.C. § 5 (m) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1, 11

28 U.S.C. § 9 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1, 11, 22

28 U.S.C. § 11 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1, 11

28 U.S.C. § 23 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .11, 13

28 U.S.C. § 24 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1, 11

Copyright Act of 1976, 28 U.S.C. § 101, et seq.

28 U.S.C. § 101 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .6

28 U.S.C. § 102(a). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .26

28 U.S.C. § 106 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .5

28 U.S.C. § 107 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .7, 9

xiii

Cited Authorities

Page

28 U.S.C. § 201(c) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .18

28 U.S.C. § 201(d). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .18

28 U.S.C. § 201(d)(1) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .6

28 U.S.C. § 201(d)(2) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .6

28 U.S.C. § 302 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .27

28 U.S.C. § 304(a)(1) & (2). . . . . . . . . . . . . . . . . . . . passim

28 U.S.C. § 304(b) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .12

28 U.S.C. § 501(a) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .6, 18

28 U.S.C. § 1331 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1

28 U.S.C. § 1254(1). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1

28 U.S.C. § 1338(a). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1

Pub. L. No. 102-307, 106 Stat. 264 (June 26, 1992) . . . .13

37 Stat. 488 (1912) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .21

Fed. R. Civ. Proc. 12(b)(6) . . . . . . . . . . . . . . . . . . . . . . . . .7

xiv

Cited Authorities

PageLegislative History

B. Ringer, Renewal of Copyright (1960) reprinted as Copyright Law Revision Study No. 31, prepared for the Senate Committee on the Judiciary,

86th Cong., 2d Sess. (1961) . . . . . . . . . . . . . . . . . .16, 18

H.R. Rep. No. 94-1476, 94th Cong., 2d sess. (1976) . . . . . . . . . . . . . . . . . . . . . . . . . . . .11, 28

H.R. Rep. No. 2222, 60th Cong., 2d Sess. (1909) . . . . . . . . . . . . . . . . . . . . . . . . .12, 15, 16

S. Rep. No. 94-473, 94th Cong., 1st sess. 117-118 (1975) . . . . . . . . . . . . . . . . . . . . . . . . .11

S. Rep. No. 102-194, 102d Cong., 1st Sess. 4 (1991) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .12

Scholarly Authorities

Melville & David Nimmer, Nimmer On Copyright (2016)

Vol. 1:

§ 4.01 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .27

§ 4.01[B] . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .12, 13

§ 4.08 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .29

xv

Cited Authorities

Page

Vol. 2:

§ 7.12[C][1] . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .22

Vol. 3:

§ 9.01 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .10

§ 9.03 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14, 16

§ 9.03[B] . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .16

§ 9.05[C][1][c] . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .10

§ 10.01[A]. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .15

§ 10.02[A] . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .28

§ 12.02[B][1] . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .6

1

PETITION FOR A WRIT OF CERTIORARI

Petitioners respectfully petition for a writ of certiorari to review the judgment of the United States Court of Appeals for the Second Circuit.

OPINIONS BELOW

The Second Circuit’s opinion is reported at 839 F.3d 162 and is reproduced at App. 3a-52a. The Second Circuit affirmed a judgment of dismissal by the Southern District of New York (Daniels, J.) The district court’s opinion is reported at 151 F. Supp. 3d 419 and is reproduced at App. 53a-84a.

JURISDICTION

The jurisdiction of the district court was invoked under 28 U.S.C. § 1331 (general federal question jurisdiction) and § 1338(a) (infringement of a federal copyright). The United States Court of Appeals for the Second Circuit entered judgment on October 11, 2016, App. 1a-2a, and denied Petitioners’ timely petition for a panel and/or en banc rehearing on December 20, 2016. App. 85a-86a. On March 7, 2017, Justice Ginsburg extended the time for filing this petition to and including April 19, 2017. This Court has jurisdiction under 28 U.S.C. § 1254(1).

STATUTORY PROVISIONS INVOLVED

Sections 3, 5, 7, 9, 11 and 24 of the 1909 Copyright Act, 28 U.S.C. §§ 3, 5, 7, 9, 11 and 24 (repealed 1977) are reproduced at App. 87a-92a. Sections 102(a), 107, 201(d), 302(a) 304(a) & (b) and 501(a) of the 1976 Copyright Act,

2

28 U.S.C. §§ 102(a), 107, 201(d), 302(a) 304(a) & (b) and 501(a) are reproduced at App. 92a-98a.

INTRODUCTION

The Second Circuit’s Opinion (App. 3a-52a) conflicts with decisions of the Supreme Court, prior Second and Ninth Circuit precedents, as well as established Copyright Office policy regarding the renewal of copyright in previously unpublished material that secured copyright protection before 1978 by its incorporation into a published motion picture. Until this case, under the 1909 Act, the first authorized publication of previously unpublished copyrightable material incorporated into a movie simultaneously extinguished any common law copyright protection and invested statutory or federal copyright protection in that material as part of a unitary copyright owned by the owner of the movie’s copyright --- without regard to whether it was created specifically for inclusion in the movie. The Opinion below held for the first time that material incorporated into a movie and protected by a unitary movie copyright was not protected by that renewal copyright because it was not created specifically for inclusion into the movie. The Opinion thus raises a question of exceptional jurisprudential importance warranting review.

Prior decisions of the Second Circuit and of other Courts of Appeal, as well as a published Copyright Office decision (approved by the Second and Ninth Circuits) have held that under the 1909 Act1, the first publication of

1. Copyright protection for a movie first published as late as 1963 and timely renewed will endure through 2058. Section 304(a)(1), App. 95a-98a.

3

unpublished material by its incorporation into a published movie (e.g., the Abbott and Costello Routine here) simultaneously extinguished any common law copyright protection and invested statutory or federal copyright protection in that material as part of a unitary copyright owned and controlled by the owner of the movie copyright. Prior decisions of Second and Ninth Circuits Courts of Appeal as well as Copyright Office policy adopted by the courts held that a renewal of a unitary movie copyright necessarily renews federal copyright in all previously unpublished material incorporated in it with the consent of the common law copyright owner, because the movie copyright (unlike the copyright in a composite work, such as a periodical) is a unitary copyright covering all material not previously protected by federal copyright. The Opinion departs from and conflicts with those precedents by creating a rule that such material is not renewed by the renewal of the movie copyright unless the material was created specifically for the movie. There is an overriding need for national uniformity in the interpretation of the effect of renewal on copyright interests in previously unpublished material published for the first time by incorporation into motion pictures under the 1909 Act.

STATEMENT OF THE CASE

1. The Parties. Petitioners are heirs or the companies of heirs of Bud Abbott and Lou Costello, the authors of the iconic “Who’s On First” comedy skit.

Respondents are the producers and investors in a Broadway play entitled “Hand To God,” (the “Play”). The Play quotes from the skit without license.

4

2. The Facts. Abbott and Costello were a popular mid-Twentieth Century comedy duo. One of their routines, commonly referred to as “Who’s on First?” (the “Routine”) was described by the Court of Appeals in the Opinion as “a treasured piece of American entertainment history.” 839 F.3d at 172, App. 5a. The Routine’s humor derives from Costello’s misunderstandings 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” is not a question, but a statement of fact, i.e., a player named “Who” is the first baseman, “What” is the second baseman, and a player named “I Don’t Know” is the third baseman.

Abbott and Costello first performed the Routine in the late 1930s, notably on a 1938 live radio broadcast of “The Kate Smith Hour.” App. 6a, 124a. Performance does not constitute “publication.” Ferris v. Frohman, 223 U.S. 424, 434-35 (1912). The Routine was first published for purposes of federal copyright law when Abbott and Costello performed a version of it in their first motion picture appearance, in One Night in the Tropics (“Tropics movie”), which movie was published. Their appearance in the 1940 Tropics movie was pursuant to a July 24, 1940 contract (the “July Agreement”) with Universal Pictures Company, Inc. (“UPC”) whereby they (“Artists”) granted to UPC:

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 … further agree to furnish to [UPC] … the material and

5

routines heretofore used and now owned by the Artists for use by [UPC] in the photoplay in which they appear hereunder and for which [UPC] shall have the exclusive motion picture rights….

App. 7a. On November 6, 1940, days before the public release of the Tropics movie, Abbott and Costello entered into a new agreement with UPC that terminated the July Agreement without prejudice to UPC’s “ownership … of all rights heretofore acquired,” including those “in or to any… material furnished or supplied by the Artists.” The Artists reserved the right to use materials and routines created by them (without the assistance of UPC writers) “on the radio and in personal appearances.” App. 8a-9a.

In November of 1940, UPC registered a copyright for Tropics with the U.S. Copyright Office, which it timely renewed in December 1967. App. 9a, 126a: First Amended Complaint (“FAC”) ¶ 44, Supp. Appx. 1. In 1945, Abbott and Costello performed an expanded version of the Routine incorporated into another movie for UPC, The Naughty Nineties (“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 with additional players: left fielder “Why,” center fielder “Because,” pitcher “Tomorrow,” catcher “Today,” and shortstop “I Don’t Care.” App. 9a. In June 1945, UPC registered a copyright for Nineties with the U.S. Copyright Office, which UPC timely renewed in 1972. App.10a, Supp. Appx. 2, 5-6.

Lou Costello died in 1959; Bud Abbott died in 1974. App. 11a & n. 7.

6

On January 1, 1978, the Copyright Act of 1976, 17 U.S.C. §§ 101 et seq. (the “1976 Act”), became effective. Section 201(d)(1) provided that “ownership of a copyright may be transferred in whole or in part by means of conveyance …” Section 201(d)(2) provided that any “of the exclusive rights comprised in a copyright, including any subdivision of any of the rights specified by section 106, may be transferred as provided by clause (1) and owned separately.” App. 94a.

By a Quitclaim agreement dated March 12, 1984 (the “Quitclaim”) with UPC’s successor-in-interest, Universal Pictures (“Universal”). Universal granted to Abbott & Costello Enterprises (“A & CE”), a partnership formed by the comedy team’s heirs, “any and all” of Universal’s rights, title and interest in the Routine, reserving to Universal the right to continue use of the Routine as recorded in the Tropics and Nineties. App. 11a-12a, Supp. Appx. SA7-9.2 A & CE dissolved in 1992, with 50% of its assets transferred to Petitioner TCA Television Corporation, a California entity owned by Lou Costello’s heirs, and the other 50% divided evenly between Bud Abbott’s heirs, Vickie Abbott Wheeler and Bud Abbott, Jr. Wheeler later transferred her 25% interest to a California partnership, Petitioner Hi Neighbor, and Abbott Jr. transferred his 25% interest to Petitioner Diana Abbott Colton. FAC ¶ ¶ 49-52, App. 127a-128a.

2. Standing to sue in this case required Petitioners to allege that Respondents infringed “an exclusive right under a copyright” owned by Petitioners. 17 U.S.C. § 501(a). App. 98a. 3 M. & D. Nimmer, Nimmer On Copyright, §12.02[B][1] at 12-66.22 to 112-66.22(1) (2016)(“Nimmer”).

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Pet it ioners ’ a mended compla i nt descr ibed Respondents’ Play as a “dark comedy about an introverted student in religious, small-town Texas who finds a creative outlet and a means of communication through a hand puppet, wh[ich] turns into his evil or devilish persona.” After two successful off-Broadway runs, the Play opened to critical acclaim on Broadway in the spring of 2015. App. 12a. When Petitioners learned that the Play incorporated part of the Routine in one of its key scenes without license or permission, they sent Respondents a cease and desist letter, and thereafter filed a civil action on June 4, 2015 in the Southern District of New York. App. 12a, 17a. Petitioners’ amended complaint alleged, among other things, an infringement of copyright in the Routine as first published in the Tropics movie. App. 118a-141a.

Respondents filed a motion under Fed. R. Civ. Proc. 12(b)(6) asserting that Petitioners did not hold a valid copyright in the Routine; that the Routine was in the public domain; and that the Play’s use of the Routine was sufficiently transformative that the use was a “fair use” under 17 U.S.C. § 107. App. 17a.

The district court applied this Court’s direction that to survive a motion to dismiss “a complaint must contain sufficient factual matter, accepted as true, to ‘state a claim to relief that is plausible on its face.’” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007). The district court also referred to writings attached to the amended complaint or incorporated by reference including matters such as federal copyright registrations of which a district court may take judicial notice. App. 55a-56a.

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The district court granted the Respondents’ motion on December 17, 2015. App. 17a. The court held that Petitioners had sufficiently alleged that the Routine was protected by copyright and that Petitioners had standing to sue:

Because as much of the 1938 Routine as was disclosed in the motion picture was published when the motion picture was published, and because the law treats motion pictures as unitary works, the copyrights in One Night [in the Tropics] and The Naughty Nineties that UPC registered “merged” the Routine with the films. See 16 Casa Duse, LLC v. Merkin, 791 F.3d 247, 257-58 (2d Cir. 2015) (holding that because ‘[f ]ilmmaking is a collaborative process typically involving artistic contributions from large numbers of people,” statutory copyright in the film itself could be undermined if “copyright subsisted separately in each of their contributions to the completed film” (citing Richlin [v. Metro-Goldwyn-Mayer Pictures, Inc.,] 531 F.3d at 975 (“A motion picture is a work to which many contribute, however, those contributions ultimately merge to create a unitary whole.”))); see also Garcia v. Google, Inc., 786 F.3d 733, 743 (9th Cir. 2015) (“Untangling the complex, difficult-to-access, and often thousands of standalone copyrights [in a film] is a task that could tie the distribution chain in knots.”). Thus, Plaintiffs have sufficiently alleged a continuous chain of title encompassing the Routine.

9

TCA Television Corp. v. McCollum, 151 F.Supp. 3d at 431; App. 70a. (bracketed material and emphasis added). Nevertheless, the district court granted the motion to dismiss on the ground that Respondents’ use was a fair use, excused by section 107 of the 1976 Act. App. 70a-83a.

On appeal, the Court of Appeals for the Second Circuit affirmed the dismissal of the amended complaint but reversed the reasoning of the district court. The Court of Appeals determined that the use of the Routine in the Play was not “transformative” and not a fair use, App. 17a-39a, but that Petitioners lacked standing to sue because the copyright in the Routine as incorporated in the Tropics movie was not renewed by renewal of the movie copyright, and thus the Routine had fallen into the public domain on January 1, 1968. App. 39a-52a. Petitioners’ petition for a panel and/or en banc rehearing was denied. App.85a-86a.

REASONS FOR GRANTING THE PETITION

I. THE SECOND CIRCUIT’S OPINION IS PLAINLY INCORRECT, CONFLICTS WITH SEVERAL DECISIONS OF VARIOUS COURTS OF APPEAL AND PRACTICES OF THE COPYRIGHT OFFICE, AND ANNOUNCES A NEW RULE TOO LATE FOR RIGHTS HOLDERS TO SATISFY– THUS RESULTING IN A FORFEITURE OF VALUABLE COPYRIGHT RIGHTS

The Opinion below dismissed the copyr ight infringement claim on the grounds that although the alleged use of the Routine by Respondents/Defendants’ Play of the Routine was not a “fair use” under section 107, the amended complaint failed sufficiently to allege

10

that Petitioners had ownership of a valid copyright. By its Opinion, the Second Circuit announced a new rule of eligibility for copyright renewal under the 1909 Act, applied retroactively to a 1940 work – i.e., that the previously unpublished material did not become part of the movie’s unitary copyright for renewal purposes unless it was created solely for the movie. Nothing in the 1909 Act supports such a judge-made rule. The Opinion directly conflicts with decisions of the Second and Ninth Circuit Courts of Appeals and by the Copyright Office, which conflict will encourage forum shopping and create confusion about the enforceability of unpublished works first published and incorporated into motion pictures between 1923 and 1977.3

More than most areas of copyright law, the question of duration and renewal requires an historical perspective. Successive lengthening of the period of protection leaves works subject to disparate terms, depending on when they were created in relation to the schemes later adopted during the period of their protection.

3 M. & D. Nimmer, Nimmer On Copyright (“Nimmer”), § 9.01 at 9-4 (2016).

3. Although the Copyright Renewal Act of 1992, amended 17 U.S.C. § 304(a)(1) & (2), automatically renews copyrights first “secured” from 1964 through 1977, the Opinion below begs the question as to what material in a movie is renewed and who owns those renewal rights; according to the Opinion, even an automatic renewal will leave for future litigation whether the movie’s renewal copyright covers some or all incorporated material. 1976 Act, as amended, §§ 304(a)(2)(A)(i) & (304)(a)(2)(B)(i). See 3 Nimmer, § 9.05[C][1][c].

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A. The Acquisition And Renewal Of Copyrights In The “Routine” Were Governed By The Copyright Act Of 1909

This case involves both the 1909 and the 1976 Copyright Acts. Any acquisition and renewal of copyrights in so much of the Routine as was incorporated into the movies was governed by the 1909 Act. 17 U.S.C. §§ 3, 5, 7, 9, 11, and 24 (repealed 1977). Stewart v. Abend, 495 U.S. 207, 212 (1990). The duration of the movie copyright was governed initially by the 1909 Act which afforded protection for an initial 28 year term, and upon application for an additional 28 year term. 1909 Act, § 23 (renumbered § 24 when codified in 1947). App. 91a-92a. The 1976 Act, 17 U.S.C. §§ 304(a)(1) & (2) extended the terms of copyrights existing as of December 31, 1977 for an additional 39 years, for a total of 75 years. App. 95a-98a.

The 1976 Act abolished the renewal provision for works created after 1977 because it was:

(o)ne of the worst features of the present [1909 Act] copyright law ….

A substantial burden and expense, this unclear and highly technical requirement results in incalculable amounts of unproductive work. In a number of cases it is the cause of inadvertent and unjust loss of copyright.

H.R. Rep. No. 94-1476, 94th Cong., 2d sess. 134 (“H.R. Rep. 94-1476”) (1976); S. Rep. No. 94-473, 94th Cong., 1st sess. 117-118 (1975) (Bracketed material added).

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The Copyright Renewal Act of 1992, amended 17 U.S.C. § 304(a)(1) & (2), automatically renews copyrights first “secured” in 1964 through 1977. Congress noted that

Because of its complexities, The Copyright Office, book and music publishers, authors, filmmakers and other copyright organizations criticized the registration renewal provision for being burdensome and unfair to thousands of copyright holders and heirs.

S. Rep. No. 102-194, 102d Cong. 1st Sess. 4 (1991).

In 1998, the Sonny Bono Copyright Term Extension Act extended every copyright still in its renewal term to afford “a copyright term of 95 years from the date copyright was originally secured.” 17 U.S.C. § 304(b). App. 98a.

B. Under The 1909 Act, A Federal Copyright Was Secured Either By Publication With A Notice Affixed Or By Registration; Unpublished, Unregistered Material First Published By Incorporation Into A Movie Obtained Copyright Protection Under the Movie Copyright.

Before the 1909 Act, federal copyright protection in the United States was obtained by registration or deposit in a U.S. District Court of the work before publication. H.R. Rep. No. 2222, 60th Cong. 2d Sess. at 10 (1909) (“H.R. Rep. No. 2222”).

Under the 1909 Act, works were initially protected by state-based common law until the work was “published” under authority of the author. 1 Nimmer, §4.01[B] at 4-5 to 4-7.

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Under the 1909 Act, a work obtained federal protection either by registration with the Copyright Office or by publication with a copyright notice affixed. 1909 Act, §§ 9, 11. H.R. Rep. No. 2222, at 9-11.

Under that Act, if publication occurred without a copyright notice attached, the work was injected into the public domain. Shoptalk, Ltd. v. Concorde-New Horizons Corp., 168 F.3d 586, 591-92 (2d Cir. 1999); 1 Nimmer, § 4.01[B] at 4-5.

Works could obtain a 28 year renewal term if a renewal application was filed with the Copyright Office in the 28th year of the first term. By reason of the Copyright Renewal Act of 1992, existing copyrights first secured from 1964 through 1977 were automatically renewed. Pub. L. No. 102-307, 106 Stat. 264 (June 26, 1992). Thus, timely renewal was an important requirement for works whose copyright protection was “secured” between 1909 and 1963. If timely renewed, the 1976 Act provided copyright protection for a total of 95 years. 17 U.S.C. § 304(a) (1) & (2). App. 95a-98a.

1. The 19 09 Act Renewal Provisions Applicable To ”Contributions” To Periodicals Or Composite Works Are Different than Provisions Governing Material Incorporated Into and First Published By Movies

Respondents argued in the district court that the copyright life of the Routine in this case was governed by the provisions of the 1909 Act, section 23 as enacted (renumbered section 24 in the 1947 codification), which

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created a separate rule for contributions, e.g., articles or photos, “to a periodical or to a cyclopedic or other composite work.” The 1909 Act did not define “composite work” but Judge Learned Hand suggested that it referred to works “to which a number of authors have contributed distinguishable parts, which they have not however ‘separately registered’.” Shapiro, Bernstein & Co. v. Bryan, 123 F.2d 697, 699 (2d Cir. 1941). However, as discussed, infra at 20-21, a motion picture has never been treated as a “composite work” under the Act.

If an article or photograph was separately copyrighted by publication with notice and later published in a periodical or published work, the periodical’s “blanket” copyright notice gave notice that all of its contents were protected by copyright, but the contribution did not enlarge the copyright of the periodical. 1909 Act, § 3, App. 87a. By contrast, if the (unregistered) contribution was first published with the consent of its author in a periodical, the blanket copyright notice of the periodical was deemed to trigger federal copyright of its entire contents. Goodis v. United Artists Television, Inc., 425 F.2d 397, 399-400 (2d Cir. 1970); Abend v. MCA, Inc., 863 F.2d 1465, 1468-70 (9th Cir. 1988) (expressly following the Second Circuit in Goodis), aff’d on other grounds, sub nom., Stewart v. Abend, 495 U.S. 207 (1990).

A blanket copyright notice in the name of the periodical’s name protected all contributions – not separately published beforehand with a notice affixed – and the periodical copyright would

protect all the copyrightable component parts of the work copyrighted, and all matter therein

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in which copyright is already subsisting, but without extending the duration or scope of such copyright. The copyright upon composite works or periodicals shall give to the proprietor thereof all the rights in respect thereto which he would have if the part were individually copyrighted under this Act.

1909 Act, § 3; H.R. Rep. No. 1222, at 9-10.

Early decisions held that the contribution to a periodical would obtain copyright protection and would not be injected into the public domain only if the contributor either created the contribution as a work for hire for the publisher or assigned the entire common law copyright to the publisher so that the publisher was its owner at the time of publication. See Goodis v. United Artists Television, Inc., 278 F. Supp. 122, 125 (S.D.N.Y. 1968). However, that rule – an extension of the judicially-created “indivisible copyright doctrine”4 – was abrogated on appeal by the Second Circuit Court of Appeals to provide copyright protection for the contribution so long as the publisher had any interest in the contribution’s copyright, such as periodical publication rights. Goodis, 425 F.2d at 400, reversing Goodis, 278 F. Supp. 122. The Ninth Circuit agreed in Abend, 863 F.2d at 1468-70, (expressly following the Second Circuit in Goodis), aff’d on other grounds, sub nom., Stewart v. Abend, 495 U.S. 207 (1990).

4. The indivisible copyright doctrine holds that it is impossible to “assign” anything less than the totality of rights commanded by copyright. A transfer of anything less was considered to be a “license.” 3 Nimmer, § 10.01[A] at 10-5.

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The rules for renewal of contributions to composite works have evolved since 1909. Section 23 of the 1909 Act as enacted (renumbered 24 in the 1947 codification), 3 Nimmer, § 9.03 at 9-9 n.6, gave publishers the “exclusive right to apply for the renewal term” because “the contributors to such a work might number hundreds and be scattered over the world, and it would be impossible for the proprietor of the work to secure their cooperation…” H.R. Rep. No. 2222, at 15. By the time the initial terms of copyright in post-1909 contributions were eligible for renewal, Congress was advised that periodicals were falling into the public domain because of a failure to renew the periodical’s copyright. In 1940, Congress amended section 23 (later renumbered 24) to allow the authors of the individual contributions themselves to seek renewal of their contributions apart from the entire periodical in which they first were published. See 3 Nimmer, § 9.03[B], at 9-17 to -23 & n. 67.14; B. Ringer, Renewal of Copyright (1960) reprinted as Copyright Law Revision Study No. 31, prepared for the Senate Committee on the Judiciary, 86th Cong., 2d Sess. 131-33, 148-49 (1961) (“Ringer”). Barbara Ringer (who later served as the Copyright Register) opined that the result of this amendment was to permit a renewal of a contribution by its author or by the publisher renewing the entire periodical. Ringer, at 148-49. The Nimmer treatise agrees. 3 Nimmer, § 9.03[B], at 21-22.

By reason of the 1940 amendment, the Ninth Circuit concluded that the copyright in such a contribution could be renewed either by the author of the contribution, Abend v. MCA, Inc., 863 F.2d 1465, 1468-70 (9th Cir. 1988) (expressly following the Second Circuit in Goodis), aff’d on other grounds, sub nom., Stewart v. Abend, 495 U.S.

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207 (1990),5 or by the publisher of the entire periodical, Self-Realization Fellowship Church v. Ananda Church of Self Realization, 206 F.3d 1322, 1329 (9th Cir. 2000)6 (“In Abend [863 F.2d at 1468-70], we recognized that the 1940 amendment granted a new renewal right in individual authors of magazine contributions…however, .. this new right did not extinguish the pre-existing right in the magazine publisher.”). (Bracketed matter added).

In Faulkner v. National Geographic Society, 211 F. Supp. 2d 450, 464-66 (S.D.N.Y. 2002), relied upon by Respondents here,7 District Judge Kaplan interpreted the 1940 legislative history to limit the right to renewal of contributions for periodicals to the individual contributors. Thus, the Faulkner court rejected the contributor’s argument that just as the publisher’s blanket copyright notice on initial publication gave copyright protection to the contribution to the individual author’s benefit, so a renewal of the entire periodical by the publisher would renew the contribution for the benefit of the individual author. Instead, the district court treated the matter as an attempted renewal by the wrong party. It held that the publisher’s renewal of the entire periodical did not renew copyright of the individual contribution, or, if it did, the renewal belonged solely to the proprietor and not the contributor. Of course, even that alternative holding

5. This writer argued on behalf of defendants in the Ninth Circuit and on behalf of petitioners in this Court.

6. This writer argued on behalf of plaintiff in the Ninth Circuit.

7. The Opinion below draws an analogy between the efficacy of the movie company’s renewal here and the renewal of the collective work by the publisher in Faulkner. App. 41a.

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could not prevent the proprietor from assigning sufficient exclusive rights to the contributor, as Universal did here to Petitioners predecessors in interest, so it could sue in its name. App. 11a-11b; 1976 Act, §§ 201(d), 501(a), App. 94a, 98a. On reconsideration, the Faulkner court refined its holding to prevent a publisher from effectively renewing copyright in an individual contribution to the periodical where “the proprietor of the collective work never had any ownership interest in the individual contributions in the first place.”8 Faulkner v. National Geographic Society, 220 F. Supp. 2d 237, 240 (S.D.N.Y. 2002).9

8. Section 201(c) of the 1976 Act (not applicable here) effected a change from the 1909 Act by expressly stating that contributions to a “collective work” would be considered to have copyrights separate and apart from the periodical in which they were published. H.R. Rep. No. 94-1476, at 123. This is so because under the 1976 Act a work is invested with a federal copyright as soon as it is fixed in a tangible medium of expression, section 102(a), whether or not published – whereas, under the 1909 Act, many contributions to periodicals first acquired federal copyright protection precisely because they were published in the periodical with the consent of the author.

9. Faulkner purported to rely in the decision in Self-Realization Fellowship Church v. Ananda Church of Self Realization, 206 F.3d 1322, 1329 (9th Cir. 2000) to support a rule that if the publisher initially obtained an assignment of common law copyright in the contribution, only the publisher could renew. However, the Ninth Circuit ruled that the publisher’s ownership of some interest in the contribution at the time of renewal was sufficient to give it a renewal right. It also construed the 1940 amendment to section 24 to grant “a new renewal right in individual authors” while acknowledging that “this new right did not extinguish the pre-existing right in the magazine publisher.” As Barbara Ringer (later the Copyright Register) had reported to Congress in 1960, Ringer, at 148, so long as a publisher still

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Faulkner concluded that “[s]ection 24 gave the right to renew as to a particular contribution either to the proprietor (assuming it had obtained an initial interest in the contribution … or the author, but not both.” Faulkner rejected a real-world practice where the owner of a contribution could grant the publisher some rights (e.g., magazine publication rights) in the copyright but reserve other interests in the copyright. See Goodis, supra, Abend, supra. Obviously, the Faulkner decision represented a resurrection of the indivisible copyright theory, repurposed to forfeit copyright protection for contributions at the time of renewal. The Faulkner court acknowledged – as required by the Second Circuit’s precedent in Goodis -- that the publisher had a sufficient copyright interest in the contribution so that the publisher’s blanket copyright conferred initial copyright protection on the contribution. 211 F. Supp. 2d 465-66. The Faulkner decision does not explain whether or how the publisher lost all copyright interests in the contribution over time. Instead, Faulkner represents a regressive reliance on the indivisible copyright doctrine, rejected by the Second Circuit in Goodis, and by the Ninth Circuit in Abend.10 It

owned any interest in the contribution at the time of renewal, that publisher could renew the contribution.

10. Earlier that year, Judge Kaplan decided another case where, Ward, an independent contractor contributed stories and photos to the National Geographic magazine which were covered by the magazine’s blanket copyright notice. Ward did not register any of these works during their initial copyright terms but did obtain renewal registrations for the pre-1978 works which the magazine challenged, claiming the works were made for hire. Judge Kaplan found a triable issue regarding the work for hire status of the contributions and noted that as to the contributions if the author “granted NGS only the right of first publication, then

20

seems fair to conclude that the 1940 Congress was acting to afford additional means to assure that copyrights would be renewed, not to devise traps to forfeit copyrights.

Although the Second Circuit’s erroneous Opinion below carefully avoided relying on the holding in Faulkner to explain its new rule regarding renewals of unitary copyrights in movies, it cited Faulkner to support an equivalence between a collective work and a movie. App. 41a. It applied the mistaken rationale of Faulkner, even though a movie is not a “composite” work and not subject to the special statutory and case law applicable to periodicals and other composite works. In this case, the Second Circuit has applied a ghost of the indivisible copyright doctrine.

2. A Different Rule Has Governed The Renewal Of Material First Published By Incorporation Into Motion Picture Works Because A Movie Is Treated As A Unitary Work

Motion pictures were never designated or treated as composite or periodical works under the 1909 Act. See Husbands, Copyright Office Board of Appeals Letter, Control No. 10-600-754-2(C), 5/14/2002, App. 105a-108a. (Exhibit 1 to Plaintiffs’ Memorandum of Law In Opposition to Defendants’ Motion To Dismiss, DI #61) (reproduced as App. F). Section 5 of the 1909 Act, as enacted, described “composite and cyclopaedic works” and “Periodicals” as classes of works which could claim

the Goodis rule may shelter him.” Ward v. National Geographic Society, 208 F. Supp. 2d 429, 448 & n. 119 (S.D.N.Y. 2002).

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copyright, but did not provide for “motion pictures.” App. 84a-85a. In 1912, Congress amended section 5 (l) and (m) to add “motion picture photoplays” and “motion pictures other than photoplays” as separate classes of works. 37 Stat. 488 (1912) (App. 90a-91a), later codified as 17 U.S.C. § 5 (repealed 1977).

If a contribution (e.g., a play, or musical work), was separately copyrighted before incorporation into a motion picture, that earlier work retained its separate copyright protection even if the derivative work motion picture copyright fell into the public domain for failure of renewal. Russell v. Price, 612 F.2d 1123, 1128-29 (9th Cir. 1979) (failure to renew the copyright in the movie adaptation of the play Pygmalion did not put underlying play into the public domain because the play held a pre-existing and separate federal copyright); G. Ricordi & Co. v. Paramount Pictures, Inc., 189 F. 2d 469, 471-72 (2d Cir. 1951) (failure to renew the copyright in a derivative work Play did not put the underlying but separately registered novel into the public domain). This Court approved these holdings in Stewart v. Abend, 495 U.S. 207, 235 (1990).

If an (unregistered) contribution was first published with the consent of its author in a motion picture, the publication of the movie was deemed to divest the contribution of its common law copyright11 and the blanket

11. Curiously, the Opinion below notes that 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 & Costello of their common law copyright and injected it into the public domain.” App. 40a & n.15. The suggestion puts the Opinion in conflict with

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copyright notice of the motion picture was deemed to afford federal copyright to its entire contents, including any previously uncopyrighted material. 2 Nimmer, § 7.12[C][1], at 7-94 & n. 31; 1909 Act, §§ 3, 9. App. 87a, 89a. If at the time for renewal the proprietor of the motion picture copyright failed to renew, then all previously uncopyrighted contributions which had been incorporated into the motion picture were deemed to be injected into the public domain for a failure to renew copyright. Classic Film Museum, Inc. v. Warner Bros., Inc., 597 F.2d 13, 14 (1st Cir. 1979) (failure to renew copyright in film A Star Is Born put the film and incorporated screenplay into the public domain); Harris Custom Builders, Inc. v. Hoffmeyer, 92 F.3d 517, 520 (7th Cir. 1996) (publication of previously unpublished and unregistered blueprint plans in a brochure which was published without proper notice put both the brochure and the blueprint plans into the public domain); Batjac Prods., Inc. v. Goodtimes Home Video Corp., 160 F.3d 1223, 1233-36 (9th Cir. 1998) (failure to renew copyright in film McClintock, put both the film and the incorporated parts of the screenplay into the public domain); Shoptalk, Ltd. v. Concorde-New Horizons Corp., 168 F.3d 586, 589-592 (2d Cir. 1999) (failure to

the major circuit decisions on point, including Goodis and Abend, supra. The Opinion cites Roy Export Co. Establishment of Vaduz, Liechtenstein v. Columbia Broad. Sys. Inc., 672 F.2d 1095, 1101-04 (2d Cir. 1982) in support of its statement. But Roy only held that the inclusion of film clips into a “collective work” of clips id. at 1102, did not have be treated as an “investive” publication to protect the film clips because the collective work was only “performed” (i.e., broadcast) and not “published,” i.e., it was not divestive of the film clips’ common law protection. Roy is inapt here as there can be no doubt that the Tropics and Naughty Nineties movies were “published.” Supp. Appx. SA1-SA6.

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renew copyright in the film Little Shop of Horrors injected into public domain so much of previously unpublished screenplay as was incorporated into the film).

The Copyright Office has maintained that under the 1909 Act contributors to a motion picture of previously uncopyrighted and unpublished material, such as a script, musical score, or other contributions by the “producer, director, camera operator, editor, screenplay writer, and other individuals” have no separate right to renew the copyright in those contributions – because movies are not periodicals or composite works. In Husbands, the Copyright Office affirmed its refusal to register a renewal claim by the heirs of the author of a screenplay that had been merged into the movie “Husbands”. The Office explained that it registered a renewal of the movie copyright but would not issue a separate renewal registration for the screenplay because it considered a motion picture to be a unified work of authorship for purposes of registration under the 1909 law. Husbands noted that the Office’s Compendium I (1973) describes a motion picture as

“ordinarily … embod[y]ing a large number of contributions, including those of the author of the story, author of the screenplay, director, editor, cameraman, individual producer, etc.” … In its administration of the 1909 Copyright Act, the Copyright Office did not consider the authorship of a motion picture to be a composite work, i.e., a work consisting of distinct and separable contributions which do not merge into a unitary whole.

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App. 106a. Id. at 107a, 110a. The Office noted that prior to publication of the “Husbands” movie, it was possible for the “Husbands” screenplay to have acquired a separate federal copyright by the act of registration. But because that did not occur

the Office, viewing the motion picture as an integrated entity, cannot now insert into the public record a claim to renewal rights owned by a party different than the owner of record of the rights in the integrated entity, i.e., in the motion picture as a whole.

App. 111a. So it is here. No part of the Routine was published or registered before a portion of it was performed and embedded into the 1940 Tropics movie.12 Abbott and Costello had no standing to renew a copyright in their embedded Routine; the renewal of the movie copyright renewed the integrated whole. As the Husbands’ decision confirmed, no renewal of the Routine separate from the renewal of the entire movie copyright would have been permitted. Neither the Husbands decision nor the copyright registration and renewal policy it states makes the distinction – made by the Opinion below -- as to whether contributions were or were not created expressly for the movie in which they were first published.

The Copyright Office’s position that a movie is an integrated whole has been adopted by the Second and Ninth Circuit Courts of Appeals. In Richlin v. Metro-

12. The same principle applies to the “new matter” added to that portion of the Routine first published in the 1945 movie The Naughty Nineties.

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Goldwyn-Mayer Pictures, Inc., 531 F.3d 962, 972-73 (9th Cir. 2008), the Ninth Circuit Court of Appeals held that renewal of the copyright for the movie The Pink Panther also renewed copyright for so much of the previously unpublished treatment and screenplay as was incorporated into the movie. The Richlin court relied on the Copyright Office’s Husbands’ opinion to reinforce the notion of a unified copyright. In Garcia v. Google, Inc., 786 F.3d 733, 741 (9th Cir. 2015) (en banc), the Court of Appeals approved the Copyright Office’s refusal to register a claim of copyright for an actor’s performance in a movie because “[f]or copyright registration purposes, a motion picture is a single integrated work…”.

In 16 Casa Duse, LLC v. Merkin, 791 F.3d 247, 257-58 (2d Cir. 2015), the Court of Appeal found “persuasive” the Copyright Office’s analysis that an individual who “intend[s] her contribution or performance to be ‘merged into inseparable or interdependent parts of a unitary whole…may assert a claim in joint authorship in the motion picture, but no sole authorship of her performance in a portion of the work.”).

The Second Circuit’s Opinion below, explained, App. 48a-49a, that it rejected Petitioners’ allegations that the movie company’s renewal of the movie copyright protected so much of the Routine as was incorporated into the Tropics film, because the Routine could have been separately published with notice or registered before its incorporation into the Tropics movie.

[A]s this court recently observed, “authors of freestanding works that are incorporated into a film... may copyright these `separate

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and independent works.’” 16 Casa Duse, LLC v. Merkin, 791 F.3d 247, 259 (2d Cir. 2015) (emphasis added) (quoting 17 U.S.C. § 101); see id. at 257 (noting that separate copyright may be necessary where motion picture incorporates `separate, freestanding pieces that independently constitute `works of authorship.”). Who’s on First? was such a freestanding work within Tropics. As already noted, plaintiffs acknowledged in the amended complaint that the Routine (1) was prepared and existed on its own for some years before it was performed in Tropics, see Am. Compl. ¶ 32; and (2) was performed independently from the films “thousands of times” on the radio and elsewhere, see id. at ¶ ¶ 34-35; see also J.A. 129 (stating in November Agreement that “Artists reserve the right to use on the radio and in personal appearances” all preexisting routines). The Quitclaim representation that plaintiffs’ predecessors-in-interest still owned the Routine’s copyright in 1984 is also at odds with the argument that the Routine had so merged with Tropics as to admit a single copyright owned by UPC.

Except for its confirmation that the constituent parts of a movie are covered by a unitary copyright, the Opinion’s reliance on the Casa Duse decision is inapt here. The Casa Duse decision concerned post-1977 works whose copyright was governed by the 1976 Act, which made “original works of authorship fixed in any tangible medium of expression” immediately protected by a separate federal copyright, without regard to publication. 17 U.S.C. § 102(a). This

27

was a monumental change from the 1909 Act’s reliance on “publication” as the trigger to attach federal copyright protection. 1 Nimmer, § 4.01, at 4-2 to -3 (“The concept of publication was of immense importance under the 1909 Act…due largely to the American dichotomy between common law and statutory copyright, wherein the act of publication constituted the dividing line between the two systems of protection.” (citations omitted). Thus, the material in Casa Duse was not just able to be separately copyrighted; by operation of law under the 1976 Act, it was protected by statutory copyright as soon as it was fixed in a tangible medium of expression. That would be analogous to a situation under the 1909 Act where the contribution to a movie had obtained federal copyright (by registration or publication with notice affixed) before its incorporation into a movie. See, e.g., G. Ricordi, and Russell v. Price, supra. The Casa Duse decision did not opine as to how contributions in a film were to be renewed because Casa Duse involved works created after 1977 and thus entitled only to a single term of copyright. 17 U.S.C. § 302, App. 95a. Casa Duse involved an ownership dispute between the financier/producer and the film’s director, and posed a different question of first impression:

May a contributor to a creative work whose contributions are inseparable from, and integrated into the work maintain a copyright interest in his or her contributions alone? We conclude that, at least on the facts of the present case, he or she may not.

791 F.3d at 254. The Casa Duse Court agreed with the reasoning of the recent en banc decision of the Ninth Circuit in Garcia v. Google, supra, in concluding that the

28

defendant film director did not obtain and does not possess a separate copyright in his directorial contributions to the finished film because a motion picture is a unitary work. 791 F.3d at 258-59. Neither Casa Duse nor the precedents of this Court, the Copyright Office or the Courts of Appeal support the new rule announced by the Second Circuit’s Opinion below.

Although Abbott and Costello’s Routine was protected by common law copyright while being performed (not published) on radio, when the time came to publish some portion of it, the authors elected to perform it themselves in the 1940 Tropics movie and to have that performance and the underlying text merged into the movie for its first publication. The fact that the Routine was incorporated into the movie made it inseparable and integrated. The initial unitary copyright for the 1940 Tropics movie governed and protected that contribution; nothing changed throughout that contribution’s copyright life in the 1940 Tropics movie to require that contribution to be renewed separately by Abbott and Costello or their heirs. The Second Circuit’s Opinion has simply attempted to import the Faulkner decision’s invocation of the indivisible copyright doctrine13 to defeat renewals of copyright in contributions to periodicals to the unitary copyright created for pre-1978 movies.

Notwithstanding the Opinion’s suggestion, that the “performance” of the Routine should matter, under the

13. This is even odder because section 201(d)(1)(a) of the 1976 Act was intended to put to rest the “indivisible copyright doctrine” which had been judicially modified before then. H.R. Rept. No. 94-1476, 94th Cong. 2d Sess. at 122. 3 Nimmer, § 10.02[A], at 10-19.

29

1909 Act, no matter how often the unpublished Routine might have been “performed” in a play14, on radio15 or otherwise, it was not published16 so as to divest it of common law copyright or to invest it with federal copyright protection.

The Opinion rejects Petitioners’ reliance on the Richlin decision as follows:

As for Richlin, the Ninth Circuit did not there hold, as plaintiffs contend, that an author is “not entitled to an independent copyright by reason of inclusion of his [story] treatment’s material in [a] motion picture.” Appellants’ Reply Br. 27-28 (emphasis in original). Rather, the court there assumed that plaintiffs’ story treatment was independently copyrightable when it held that plaintiffs had “failed to secure a federal copyright for it.” Richlin v. Metro-Goldwyn-Mayer Pictures, Inc., 531 F.3d at 976.

App. 49a-50a. The Opinion below misapprehends the difference between a treatment17 that could have been separately copyrighted before it is incorporated into a

14. Ferris v. Frohman, 223 U.S. 242, 424, 435-36 (1912).

15. Silverman v. CBS, Inc., 632 F.Supp. 1344, 1350, 1353-54 (S.D.N.Y 1980), aff’d in part, vacated in part, 870 F.2d 40 (2d Cir. 1989).

16. 1 Nimmer, § 4.08, at 4-46.2 to 4-49.

17. A “treatment” is a brief outline in prose describing the actions of a movie plot, indicating characters with little or no dialogue. See Richlin, 531 F. 3d at 964n. 1.

30

movie, as distinguished from a portion of a treatment that actually was first published in a movie, thereby extinguishing common law protection for that portion in return for federal copyright protection. Relying expressly and at length on the Copyright Office’s ruling in Husbands that an author of a contribution to a Movie could not separately renew the portion first published in that movie, the Richlin Court explained:

Because [the Treatment] was never invested with statutory copyright protection, there was no right to renew and, therefore, no renewal right to revert to the Richlin heirs.

Indeed, the Copyright Office has rejected the Richlin heirs’ theory that previously unpublished components of a motion picture receive independent statutory protection by virtue of incorporation into a motion picture.

531 F.3d at 974-75. The statement in the Opinion below that Richlin acknowledged that the treatment could have obtained a separate statutory copyright before it was embedded into the Movie misses the point. Of course, if that treatment or the Routine obtained separate statutory copyrights before they were incorporated into the Movie, they could be separately renewed. The Opinion, App. 50a, does not contradict Petitioners’ interpretation:

Thus, the [Richlin] court acknowledged that “publication of a motion picture with notice secures federal copyright protection for all of its component parts,” but observed “that does not mean that the component parts necessarily

31

each secure an independent federal statutory copyright.” Id. at 975-76. The movie’s publication protected so much of the treatment as was disclosed therein, but it “did not constitute publication of the Treatment ‘as such’ – i.e., as a work standing alone.” Id. at 973.

Richlin approved the Husbands approach by the Copyright Office and explained that so much of the treatment as was first published in the Pink Panther movie was merged into the unitary movie copyright, and for that reason the authors of the Richlin treatment had no copyrightable interest in that incorporated segment.

The publication of a portion of the treatment in the Pink Panther movie did not constitute publication of the entire treatment “as such.” For the same reason, publication of that part of the Routine selected for publication in the 1940 Tropics and 1945 Naughty Nineties movies did not constitute publication of the entire Routine “as such.” But the publication did invest the incorporated portion of the Routine with statutory protections as part of the unitary movie copyright.

The Opinion below attempts, at 60, App. 48a, to distinguish Richlin on the ground that the authors of the Richlin treatment “clearly intended” that the treatment “be merged into inseparable or interdependent parts of a unitary whole.” So did Abbott and Costello intend merger when they authorized the first publication of that part of their Routine incorporated into the movie – otherwise their permission to put the Routine in a movie would have injected it into the public domain. It is the intent to publish without injecting a work into the public domain

32

that is determinative. In fact, in Goodis, the Second Circuit explained why the “indivisible copyright doctrine” should not be employed to forfeit copyright protection of the contributor to a periodical in precisely these terms:

We unanimously conclude that where a magazine has purchased the right of first publication under circumstances which show that the author has no intention to donate his work to the public, copyright notice in the magazine’s name is sufficient to obtain a valid copyright on behalf of the beneficial owner, the author or proprietor.

425 F. 2d at 399. In rejecting the argument that the indivisibility doctrine required a different result, the Second Circuit in Goodis wrote:

We are convinced, however, that the doctrine of indivisibility of copyright is a judge-made rule which relates primarily to the requisite interest needed to bring an infringement action….

….

We are loath to bring about the unnecessarily harsh result of thrusting the author’s product into the public domain when, as here, everyone interested in “Dark Passage” could see Curtis’ [the publisher’s] copyright notice and could not have believed there was any intention by Goodis to surrender the fruits of his labor.

33

Id., at 400. The Goodis court explained that the shift from obtaining copyright by registration – before 1909 – to obtaining copyright thereafter by publication with notice could “too often provide a trap for the unwary author who had assumed the publisher would attend to copyrighting the work in his behalf.” 425 F. 2d at 402.

Where the question is the interest needed to obtain copyright, we reiterate that the important considerations are the intention of the parties to obtain copyright and the adequacy of notice to the public; the characterization of the publisher as assignee or licensee is secondary.

Id., at 403. As noted supra, at 14-16, the Ninth Circuit agreed: Abend v. MCA, Inc., 863 F.2d 1465, 1468-70 (9th Cir. 1988) (expressly following the Second Circuit in Goodis), aff’d on other grounds, sub nom., Stewart v. Abend, 495 U.S. 207 (1990). The short story in the Abend case obtained its federal copyright protection even though the author gave the magazine publisher “the rights to magazine publication of the story and [the author] retained all other rights.” 495 U.S. at 211. The magazine’s blanket copyright invested the story with copyright protection.

The fact that Abbott and Costello reserved the right by contract to continue performing parts of their Routine outside of the movie does not change the fact that the Routine was first published and given federal copyright protection in the movie. There is no authority for the Opinion’s assumption that, because a pre-1978 work was “performed” before it was first published in a movie, it is injected into the public domain when the movie company alone renews the copyright in the unitary copyright.

34

The Second Circuit’s new rule excluding renewal of the copyright in the Routine because the Routine was not originated for use in the movie is unprincipled and not supported by any provision of the 1909 Act or case law or copyright policy.

II. THE QUESTION PRESENTED IS CRITICALLY IMPORTANT TO THE HOLDERS OF RIGHTS IN COPYRIGHTABLE MATERIAL FIRST PUBLISHED AND INCORPORATED INTO A MOTION PICTURE BETWEEN 1923 AND 1963, AN IMPORTANT QUESTION OF FEDERAL LAW THAT HAS NOT BEEN, BUT SHOULD BE, SETTLED BY THIS COURT

The new rule propounded by the Opinion below retroactively – that the authors of unpublished material first published in a motion picture must file separate renewal applications for renewal copyrights for works which first secured copyright protection between 1923 and 1963 – creates an unprincipled exception to the “unified copyright” theory of the Copyright Office, as adopted by the Ninth Circuit Court of Appeals and a prior Second Circuit opinion. It announced this new rule at a time when the holders of such rights can no longer comply. The Opinion’s ruling is expressly based on a decision that does not involve a pre-1978 work and thus did not involve the issue of renewal. Instead, the Opinion seems to import the rationale of the Faulkner decision that is based on rules regarding the renewal of copyrights in periodicals, not contributions to movies.

35

CONCLUSION

The 1909 Act moved from a system where federal copyright protection was initiated by registration, to a less cumbersome system where protection was triggered by “publication” with notice. Because of the vagaries of the term “publication,” the 1976 Act shifted the moment of protection to creation, “fixation in a tangible medium of expression.” In 1976 and again in 1989 copyright duration was extended. In the Copyright Renewal Act of 1992, renewal was made automatic to avoid forfeitures. All of these changes were intended to encourage and protect new works to entertain, to educate and to inform. Unlike the Opinion below, they were intended to remove traps for the unwary and to avoid forfeitures.

The Petition for a writ of certiorari should be granted.

Dated: April 18, 2017 Los Angeles, California

Respectfully submitted, Jonathan D. ReIchman

Jonathan W. thomas

anDReWs KuRth Kenyon LLPOne BroadwayNew York, New York 10004(212) 908-6256

Counsel for Petitioners

*Counsel of Record

LouIs P. PetRIch*LeoPoLD, PetRIch & smIth, P.c.2049 Century Park East,

Suite 3110Los Angeles, California 90067(310) [email protected]

APPENDIX

Appendix A

1a

APPENDIX A — JUDGMENT OF THE UNITED STATES COURT OF APPEALS FOR THE SECOND

CIRCUIT, FILED OCTOBER 11, 2016

UNITED STATES COURT OF APPEALS FOR THE SECOND CIRCUIT

Docket No. 16-134

At a Stated Term of the United States Court of Appeals for the Second Circuit, held at the Thurgood Marshall United States Courthouse, 40 Foley Square, in the City of New York, on the 11th day of October, two thousand and sixteen.

Before: Dennis Jacobs, Guido Calabresi, Reena Raggi, Circuit Judges.


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,

Appendix A

2a

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.

JUDGMENT

The appeal in the above captioned case from a judgment of the United States District Court for the Southern District of New York was argued on the district court’s record and the parties’ briefs. Upon consideration thereof,

IT IS HEREBY ORDERED, ADJUDGED and DECREED that the judgment of the district court is AFFIRMED.

For The Court:Catherine O’Hagan Wolfe,Clerk of Court

/s/ Catherine O’Hagan Wolfe

Appendix B

3a

APPENDIX B — OPINION OF THE UNITED STATES COURT OF APPEALS FOR THE SECOND

CIRCUIT, DATED OCTOBER 11, 2016


Docket No. 16-134-cv



—v.—








Defendants.

June 23, 2016, Argued October 11, 2016, Decided

Appendix B

4a

Before: JACOBS, CALABRESI, RAGGI, Circuit Judges.

OPINION

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

1. Defendants do not cross-appeal the district court’s denial of dismissal on the ground of copyright invalidity; rather, they argue it as an alternative ground for affirmance, even if plaintiffs’ fair use challenge prevails. In this opinion, we first address plaintiffs’ challenge to the fair use determination supporting dismissal because if we were to identify no error in that ruling there would be no need to consider defendants’ proposed alternative ground for affirmance.

Appendix B

5a

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

A bbott a nd Cost el lo were a popu la r m id-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

2. In 1999, Time magazine named the Routine the best comedy sketch of the Twentieth Century. See Am. Compl. ¶ 37; Best of the Century, Time, December 31, 1999, at 73.

Appendix B

6a

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

3. Viewing the facts in the light most favorable to plaintiffs, the district court discussed in some detail why (1) before Tropics’s release, the Routine was protected by common law copyright; and (2) the movie’s release could constitute “publication” of the Routine, extinguishing any common law right and requiring registration and deposit with the federal Copyright Office to claim any statutory

Appendix B

7a

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

copyright protection. See TCA Television Corp. v. McCollum, 151 F. Supp. 3d at 427-30.

Appendix B

8a

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

4. Plaintiffs’ amended complaint cites only the November Agreement with UPC as the relevant contract. See Am. Compl. ¶ 43. By the time that agreement was signed, however, Abbott and Costello presumably had already finished their work on Tropics—including any additions to the Routine reflected in that movie. Thus, it would appear that the team’s work on Tropics was pursuant to the July Agreement, discussed supra at I.B.1.a. The discrepancy does not affect our analysis here because, in the district court, defendants conceded that, at least for purposes of their motion to dismiss, the July Agreement had “in effect, been pleaded” by plaintiffs in support of their claim. Sept. 9, 2015 Hr’g Tr. 2-3.

Appendix B

9a

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,”

Appendix B

10a

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

5. By operation of the Sonny Bono Copyright Term Extension Act, Pub. L. No. 105-298, 112 Stat. 2827 (1998), the renewal term for Tropics will not expire until 2035 and that for The Naughty Nineties will not expire until 2040. See 17 U.S.C. § 304(b).

6. The George Mason University Libraries, in their “Guide to the John C. Becher Soldier Show Collection, 1940-1953,” indicates that “Soldier Shows” refers to entertainments “made by soldiers for soldiers,” with the object of “mass participation” to raise morale. J.A. 208-09. Because the record here is devoid of any information about either Soldier Shows generally or Soldier Shows, No. 19 in particular, we make no assumptions about the content of the material that is the subject of the 1944 copyright registration.

Appendix B

11a

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 Routine.” Id. at 46.

A & C dissolved in 1992, with 50% of its assets transferred to TCA Television Corporation, a California entity owned by Lou Costello’s heirs, and the other 50%

7. Bud Abbott died in 1974; Lou Costello died in 1959. See Bud Abbott, Straight Man to Lou Costello, Is Dead, N.Y. Times, April 25, 1974, at 42; Lou Costello, 52, Dies on Coast; Comic Had Teamed with Abbott, N.Y. Times, Mar. 4, 1959, at 31.

Appendix B

12a

divided evenly between Bud Abbott’s heirs, Vickie Abbott Wheeler and Bud Abbott, Jr. Wheeler would later transfer her 25% interest to a California partnership, Hi Neighbor, and Abbott, Jr. would transfer his 25% interest to Diana Abbott Colton. It is by operation of the Quitclaim and the referenced dissolution and transfer agreements that plaintiffs TCA Television, Hi Neighbor, and Colton now claim a copyright interest in Who’s on First?.

C. Hand to God

As described in the amended complaint, Hand to God (the “Play”) is “a dark comedy about an introverted student in religious, small-town Texas who finds a creative outlet and a means of communication through a hand puppet, wh[ich] turns into his evil or devilish persona.” Am. Compl. ¶ 58. After two successful off-Broadway runs, Hand to God opened to critical acclaim on Broadway in the spring of 2015. Through press coverage, plaintiffs learned that Hand to God incorporated part of the Routine in one of its “key scene[s],” without license or permission. Id. at ¶ 63. While the Play was still in previews for its Broadway opening, plaintiffs sent defendants a cease and desist letter. Defendants’ failure to comply with that request prompted this lawsuit.

1. The Relevant Scene

Plaintiffs allege that the Play infringes their copyright in the Routine by using its first part—that is, the part pertaining to first baseman “Who”—in Act I, Scene 2. In that scene, which occurs approximately 15 minutes into the Play, the lead character, “Jason,” and the girl with whom he is smitten, “Jessica,” have just emerged

Appendix B

13a

from the basement of their church, where they had been participating in a Christian puppet workshop. Jason tries to impress Jessica by using his sock puppet, “Tyrone,” to perform, almost verbatim, a little over a minute of Who’s on First?. Jason plays the Bud Abbott role, while Tyrone assumes Lou Costello’s character. 8

8. The Routine is used in the Play as follows:

JASON . . . . You wanna see something[?]

JESSICA Ummm.

JASON You’ll like it.

JESSICA Yeah?

JASON I think you’ll like it.

JESSICA Okay.

JASON Okay.

Jason slicks back his hair. Takes a deep breath and then says...

JASON Well Costello, I’m goin’ to New York with you. You know Buck Harris the Yankee[s’] manager gave me a job as coach as long as you’re on the team.

TYRONE Look Abbott, if you’re the coach, you must know all the players.

JASON I certainly do.

TYRONE Well I’ve never met the guys. So you’ll have to tell me their names and then I’ll know who’s playing on the team.

JASON Oh I’ll tell you their names, but you know it seems to me they give these ball players now-a-days very particular names.

Appendix B

14a

As he starts he’s a little aspergersy. As he goes on he gets more and more comfortable.

TYRONE You mean funny names?

JASON Well let’s see we have on the bags, Who’s on first, What’s on second, I don’t know is on third...

TYRONE That’s what I want to find out.

JASON I say Who’s on first, What’s on second, I don’t know’s on third.

TYRONE Are you the manager?

JASON Yes.

TYRONE You gonna be the coach too?

JASON Yes.

TYRONE And you don’t know the fellows’ names.

JASON Well I should.

TYRONE Then who’s on first?

JASON Yes?

TYRONE I mean the fellow’s name.

JASON Who.

TYRONE The guy on first.

JASON Who.

TYRONE The first baseman.

JASON Who.

TYRONE The guy playing . . .

Appendix B

15a

When Jason somewhat bashfully concludes the “Who” part of the Routine, Jessica compliments him by saying, “That’s really good,” and asks, “Did you come up with that all by yourself[?]” Suppl. App’x 21. When Jason answers, “Yes,” the audience laughs at what it recognizes as a lie.

Jason is really into it. Jessica is giggling a bit. But you can imagine him going into it all alone on a Saturday night.

JASON Who is on first.

TYRONE I’m askin[’] you who’s on first.

JASON That’s the man’s name.

TYRONE That’s whose name.

JASON Yes.

TYRONE Well go ahead and tell me.

JASON That’s it.

TYRONE That’s who?

JASON Yes.

Jason reaches a pause in the routine and looks out at her. He becomes aware of what he’s doing.

JESSICA What are you doing[?] Don’t stop.

JASON I . . .

He gets red.

JESSICA What?

JASON I can’t remember anymore.

Suppl. App’x 17-21 (emphases added).

Appendix B

16a

Id.; see Am. Compl. ¶ 64. The answer, however, triggers a different response from the puppet, which, seemingly of its own volition, calls Jason a “Liar,” and states that the comic exchange they just performed is “a famous routine from the [F]ifties.” Suppl. App’x 21. Jason corrects Tyrone, stating that the sketch is from the “Forties.” Id. Tyrone then insults Jessica, telling her that she would know the Routine’s origin if she “weren’t so stupid.” Id. Jason and Jessica each order Tyrone to “shut up” to no effect. Id. at 22. Instead, as the scene continues, Tyrone vulgarly divulges Jason’s physical desire for Jessica. Only after a seeming physical struggle with Tyrone is Jason able to remove the puppet from his hand and thereby end Tyrone’s outburst. Jason tries to apologize to Jessica, but she quickly exits, leaving Jason—in the words of the stage direction— “[d]efeated by what he ca[]n’t defeat.” Id. at 24.

The scene foreshadows darker and more disturbing exchanges between Jason and the puppet that will occur as the Play proceeds.

2. Promotional Materials

Plaintiffs allege that, in online promotional materials for the Play, defendants used a “video clip” of Jason and his puppet performing Who’s on First? to “stoke interest” in and sell tickets for the Play. Am. Compl. ¶¶ 69, 89. These promotional materials are not part of the court record.

Appendix B

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D. District Court Proceedings

On June 4, 2015, plaintiffs filed this action in the Southern District of New York, claiming both federal and common law copyright infringement. Defendants promptly moved to dismiss, arguing, inter alia, that (1) plaintiffs did not hold a valid copyright; (2) the Routine was in the public domain; and (3) Hand to God’s incorporation of the Routine was sufficiently transformative to qualify as a permissible fair use, not prohibited infringement.

On December 17, 2015, the district court granted defendants’ motion to dismiss. It declined to do so on either of the first two grounds argued by defendants, concluding that, at the 12(b)(6) stage, plaintiffs had “sufficiently alleged a continuous chain of title” to the Routine to survive dismissal. TCA Television Corp. v. McCollum, 151 F. Supp. 3d at 431. Instead, the court concluded that dismissal was warranted because defendants’ use of Who’s on First? in Hand to God was “highly transformative” and a non-infringing fair use. Id. at 434, 437.

This appeal followed.

II. Discussion

A. Dismissal Was Not Properly Based on Fair Use

1. Standard of Review

We review de novo a judgment of dismissal under Fed. R. Civ. P. 12(b)(6), accepting all factual allegations in the

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amended complaint and its incorporated exhibits as true and drawing all reasonable inferences in plaintiffs’ favor. See Concord Assocs., L.P. v. Entm’t Props. Tr., 817 F.3d 46, 52 (2d Cir. 2016). The challenged dismissal here is based on the district court’s determination that plaintiffs could not succeed on their copyright infringement claim because the Rule 12(b)(6) record established defendants’ fair use defense as a matter of law.

Our review of that decision is necessarily informed by certain basic copyright principles. First, the law affords copyright protection to promote not simply individual interests, but—in the words of the Constitution—“the progress of science and useful arts” for the benefit of society as a whole. U.S. Const. art I, § 8, cl. 8. As the Supreme Court has explained, copyright protection is based on the “economic philosophy . . . that encouragement of individual effort by personal gain is the best way to advance public welfare.” Mazer v. Stein, 347 U.S. 201, 219, 74 S. Ct. 460, 98 L. Ed. 630, 1954 Dec. Comm’r Pat. 308 (1954). In short, the “monopoly created by copyright . . . rewards the individual author,” but only “in order to benefit the public.” Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 546, 105 S. Ct. 2218, 85 L. Ed. 2d 588 (1985) (internal quotation marks omitted); see Fox Film Corp. v. Doyal, 286 U.S. 123, 127, 52 S. Ct. 546, 76 L. Ed. 1010 (1932) (“The sole interest of the United States and the primary object in conferring the monopoly lie in the general benefits derived by the public from the labors of authors.”).

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Second, and consistent with this public purpose, the law has long recognized that “some opportunity for fair use of copyrighted materials” is necessary to promote progress in science and art. Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 575, 114 S. Ct. 1164, 127 L. Ed. 2d 500 (1994); Iowa State Univ. Research Found., Inc. v. Am. Broad. Cos., 621 F.2d 57, 60 (2d Cir. 1980) (stating that fair use doctrine “permits courts to avoid rigid application of the copyright statute when, on occasion, it would stifle the very creativity which that law is designed to foster”). The doctrine of fair use, derived from common law, is now codified in the Copyright Act of 1976, Pub. L. No. 94-553, 90 Stat. 2541. See 17 U.S.C. § 107. That codification does not so much define “fair use” as provide a non-exhaustive list of factors to guide courts’ fair use determinations. This affords the doctrine a certain “malleability” that can challenge judicial application. 4 Melville B. Nimmer & David Nimmer, Nimmer on Copyright (hereinafter “Nimmer”) § 13.05, at 13-156 (Matthew Bender, rev. ed., 2016).

Courts most frequently address a proffered fair use defense at summary judgment. See, e.g., Blanch v. Koons, 467 F.3d 244, 250 (2d Cir. 2006) (explaining that court may resolve fair use question at summary judgment if there are no genuine issues of fact); see also Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. at 560 (stating that appeals court may decide fair use where “district court has found facts sufficient to evaluate each of the statutory factors”). Nevertheless, this court has acknowledged the possibility of fair use being so clearly established by a complaint as to support dismissal of a

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copyright infringement claim. See Cariou v. Prince, 714 F.3d 694, 707 (2d Cir. 2013) (granting defendant partial summary judgment on fair use and citing approvingly to Brownmark Films, LLC v. Comedy Partners, 682 F.3d 687 (7th Cir. 2012) (rejecting argument that fair use could not be decided on motion to dismiss)).

On de novo review here, we conclude that defendants’ entitlement to a fair use defense was not so clearly established on the face of the amended complaint and its incorporated exhibits as to support dismissal.

2. The Statutory Framework for Analyzing Fair Use

In the preamble to 17 U.S.C. § 107, Congress states that “the fair use of a copyrighted work . . . for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research is not an infringement of copyright.” As the words “such as” indicate, the listing is “illustrative and not limitative.” 17 U.S.C. § 101; see Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. at 561. Four nonexclusive factors—incorporating common law traditions—are properly considered in “determining whether the use made of a work in any particular case is a fair use.” 17 U.S.C. § 107. These statutory factors are as follows:

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

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(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.

Id.; see generally Folsom v. Marsh, 9 F. Cas. 342, 348, F. Cas. No. 4901 (C.C.D. Mass. 1841) (Story, J.) (explaining that common law courts “deciding questions of this sort” should “look to the nature and objects of the selections made, the quantity and value of the materials used, and the degree in which the use may prejudice the sale, or diminish the profits, or supersede the objects, of the original work”).

In reviewing the challenged determination of fair use in this case, we necessarily discuss these factors individually, at the same time that we heed the Supreme Court’s instruction that the factors must be viewed collectively, with their results “weighed together, in light of the purposes of copyright.” Campbell v. Acuff-Rose Music, Inc., 510 U.S. at 578.

a. Purpose and Character of the Use

(1) Transformative Use

The first statutory fair use factor considers the purpose and character of the secondary use. In this regard, the

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uses identified by Congress in the preamble to § 107—criticism, comment, news reporting, teaching, scholarship, and research—might be deemed “most appropriate” for a purpose or character finding indicative of fair use. Nimmer § 13.05[A][1][a], at 13-162; see Authors Guild v. Google, Inc., 804 F.3d 202, 215 (2d Cir. 2015) (noting that providing commentary or criticism on another’s work is “[a]mong the best recognized justifications for copying”).

The challenged use here does not appear to fit within any of these statutory categories. Nevertheless, the district court concluded that defendants’ use was “transformative,” indeed, so “highly transformative” as to be “determinative” of fair use. TCA Television Corp. v. McCollum, 151 F. Supp. 3d at 434-35. The district court explained that by having a single character perform the Routine, the Play’s authors were able to contrast “Jason’s seemingly soft-spoken personality and the actual outrageousness of his inner nature, which he expresses through the sock puppet.” Id. at 436. This contrast was “a darkly comedic critique of the social norms governing a small town in the Bible Belt.” Id. This reasoning is flawed in that what it identifies are the general artistic and critical purpose and character of the Play. The district court did not explain how defendants’ extensive copying of a famous comedy routine was necessary to this purpose, much less how the character of the Routine was transformed by defendants’ use.

The Supreme Court has stated that “the goal of copyright . . . is generally furthered by the creation of transformative works.” Campbell v. Acuff-Rose Music,

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Inc., 510 U.S. at 579.9 But how does a court decide “whether and to what extent the new work is ‘transformative’”? Id. Campbell instructs that a court properly considers “whether the new work merely supersedes the objects of the original creation, or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message.” Id. (emphases added) (alterations, citations, and internal quotation marks omitted).

As the highlighted language indicates, the focus of

9. The idea that “transformative” purpose could support fair use was put forth by our colleague, Judge Leval, in a seminal article, “Toward a Fair Use Standard.” See 103 Harv. L. Rev. 1105, 1111 (1990) (“[T]he question of justification turns primarily on whether, and to what extent, the challenged use is transformative. The use must be productive and must employ the quoted matter in a different manner or for a different purpose from the original. A quotation of copyrighted material that merely repackages or republishes the original is unlikely to pass the test . . . . If, on the other hand, the secondary use adds value to the original—if the quoted matter is used as raw material, transformed in the creation of new information, new aesthetics, new insights and understandings—this is the very type of activity that the fair use doctrine intends to protect for the enrichment of society.”).

Fair use is not limited to transformative works. See Campbell v. Acuff-Rose Music, Inc., 510 U.S. at 579. But because the only purpose found by the district court and relied on by defendants is the creation of a transformative work, in analyzing this factor, we necessarily focus on whether a finding of transformative purpose could be made as a matter of law on a Rule 12(b)(6) motion.

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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. 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. See id. 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.

In sum, even if, as the district court concluded, Hand to God is a “darkly comedic critique of the social norms governing a small town in the Bible Belt,” TCA Television Corp. v. McCollum, 151 F. Supp. 3d at 436, and even if the Play’s purpose and character are completely different from the vaudevillian humor originally animating Who’s on First?, that, by itself, does not demonstrate that defendants’ use of the Routine in the Play was transformative of the original work.

We made this point in Cariou v. Prince, 714 F.3d 694. There, the defendant, a self-styled “appropriation artist,” id. at 699, had taken plaintiff ’s copyrighted photographs—”serene and deliberately composed” portraits of Rastafarian men—and altered them to create “crude and jarring” collages, id. at 706. Defendant acknowledged that he had not used the photographs to “comment on” the original works. Id. at 707. Instead, both works had an underlying artistic purpose, but defendant stated that he had sought to change the original

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material “into something that’s completely different.” Id. (internal quotation marks omitted). Reversing a district court award of summary judgment in favor of plaintiff, this court ruled that, although commentary frequently constitutes fair use, it is not essential that a new creative work comment on an incorporated copyrighted work to be transformative. See id. at 706.10 Rather, “to qualify as a fair use” in the absence of such a different purpose, the new work “generally must alter the original with ‘new expression, meaning, or message.’” Id. (quoting Campbell v. Acuff-Rose Music, Inc., 510 U.S. at 579).11

10. Even if such commentary is not essential to fair use, it remains the case, even after Cariou, that commentary or criticism on another’s work is “[a]mong the best recognized justifications for copying” because such commentary or criticism is in the public interest and frequently requires quoting the copyrighted work to be effective. Authors Guild v. Google, Inc., 804 F.3d at 215; see Campbell v. Acuff-Rose Music, Inc., 510 U.S. at 580-81 (explaining that if new work “has no critical bearing on the substance or style of the original composition . . . the claim to fairness in borrowing from another’s work diminishes accordingly (if it does not vanish), and other factors, like the extent of its commerciality, loom larger”). Hand to God may be a “critique of the social norms governing a small town in the Bible Belt,” TCA Television Corp. v. McCollum, 151 F. Supp. 3d at 436, but defendants have not argued that it is a commentary or criticism of Who’s on First?. Thus, such transformative purposes do not justify defendants’ challenged use here.

11. In Swatch Group Management Services Ltd. v. Bloomberg L.P., 756 F.3d 73 (2d Cir. 2014), we stated in dictum that “a secondary work can be transformative in function or purpose without altering or actually adding to the original work.” Id. at 84 (internal quotation marks omitted). But that statement must be read in context. We were there discussing the fair use of data, not the creation of new artistic work as in Cariou. In the former context, we recognized

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Cariou concluded that the challenged artworks there satisfied this standard because they not only strove for “new aesthetics with creative and communicative results distinct from” that of the copyrighted material, but also gave the incorporated photographs “new expression,” thereby admitting a transformative purpose. Id. at 708. Indeed, where the defendant’s use so “heavily obscured and altered” the original photographs as to make them “barely recognizable” within the new work, the court ruled that transformative purpose (and ultimately fair use) was established as a matter of law. Id. at 710. But where lesser changes retained certain of the original work’s aesthetics, the court could not say “for sure” that their incorporation into the defendant’s works had “transformed [the original] work enough to render it transformative.” Id. at 711. As to those works, Cariou remanded for further proceedings. Id.

that “the need to convey information to the public accurately may in some instances make it desirable and consonant with copyright law for a defendant to faithfully reproduce an original work without alteration.” Id. That is not this case. Defendants used a verbatim portion of Who’s on First? in Hand to God. The unaltered use of such creative material within another creative work has a weaker claim to fair use protection. See Campbell v. Acuff-Rose Music, Inc., 510 U.S. at 579; Cariou v. Prince, 714 F.3d at 706; see also Nimmer § 13.05[A][2][a], at 13-187 (recognizing that “scope of fair use is greater when informational type works, as opposed to more creative products[,] are involved” because there is “greater license to use portions” of “work more of diligence than of originality or inventiveness” (internal quotation marks omitted)). For such an appropriation to be deemed “fair use,” the new creative work must either use the copyrighted work for a different purpose or imbue it with a different character, so as to alter the expression, meaning, or message of the original.

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Insofar as Cariou might be thought to represent the high-water mark of our court’s recognition of transformative works, it has drawn some criticism. See Kienitz v. Sconnie Nation LLC, 766 F.3d 756, 758 (7th Cir. 2014) (expressing skepticism as to Cariou’s approach and criticizing reliance on transformativeness as substitute for the statutory factors, which threatens to override the copyright owner’s exclusive right to prepare derivative works); see also Nimmer § 13.05[B][6], at 13.224.20 (stating with respect to Cariou: “It would seem that the pendulum has swung too far in the direction of recognizing any alteration as transformative, such that this doctrine now threatens to swallow fair use. It is respectfully submitted that a correction is needed in the law.”). We need not defend Cariou here, however, because our point is that even scrupulous adherence to that decision does not permit defendants’ use of Who’s on First? in Hand to God to be held transformative.

Far from altering Who’s on First? to the point where it is “barely recognizable” within the Play, Cariou v. Prince, 714 F.3d at 710, defendants’ use appears not to have altered the Routine at all. The Play may convey a dark critique of society, but it does not transform Abbott and Costello’s Routine so that it conveys that message. To the contrary, it appears that the Play specifically has its characters perform Who’s on First? without alteration so that the audience will readily recognize both the famous Routine and the boy’s false claim to having created it. Indeed, it is only after Who’s on First? is performed—at some length, almost verbatim, and with the Play’s characters mimicking the original timing, tone, and delivery of Abbott

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and Costello—that the boy’s lie about creating the classic Routine—no part of the Routine—becomes the triggering event for the puppet to assume an independent persona.

Defendants nevertheless maintain that using the Routine for such a “dramatic,” rather than comedic, purpose was transformative. Appellees’ Br. 18 (stating that Play’s use of Routine was “far cry” from original “comedy schtick”). The argument will not bear close scrutiny. 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.12 To advance the plot of the Play, specifically, to have the puppet Tyrone take on a persona distinct from that of Jason, defendants needed Jason to lie about something and for Tyrone to call him on it. But the particular subject of the lie—the Routine—appears irrelevant to that purpose. Such unaltered use of an allegedly copyrighted work, having no bearing on the original work, requires justification to qualify for a fair use defense. See Authors Guild v. Google, Inc., 804 F.3d at 215 (stating that “taking from another author’s work for the purpose of making points that have no bearing on the original may well be fair use, but the taker would need to show a justification”).

12. See 3 Oxford English Dictionary Additions Series 285 (1997) (defining “McGuffin” as “particular event, object, factor, etc., which . . . acts as the impetus for the sequence of events depicted, although often proving tangential to the plot it develops”); see also Merriam-Webster’s Collegiate Dictionary 744 (11th ed. 2003) (defining “MacGuffin” as “object, event, or character in film or story that serves to set and keep the plot in motion despite usu[ally] lacking intrinsic importance”).

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More than the Routine’s ability to capture audience attention is necessary to provide such justification. As the Supreme Court has cautioned, where a secondary use “has no critical bearing on the substance or style of the original composition, which the alleged infringer merely uses to get attention . . . , the claim to fairness in borrowing from another’s work diminishes accordingly (if it does not vanish).” Campbell v. Acuff-Rose Music, Inc., 510 U.S. at 580. Nor is a different conclusion warranted because defendants here place the unaltered Routine in a sharply different context from its original authors. See id. at 598 (Kennedy, J., concurring) (observing that courts should not afford fair use protection to persons who merely place characters from familiar copyrighted works into novel or eccentric settings).

The fact that, even as a McGuffin, the Routine is quite funny, also cannot justify its use in the Play. That humor is an achievement of the Routine’s creators, not of the playwright who takes advantage of it without transforming the Routine’s aesthetic. Moreover, the Play appropriates the Routine’s humor not incidentally, but extensively by having the characters perform some dozen of the original exchanges on the comic ambiguity of the words “who’s on first.” No new dramatic purpose was served by so much copying. Cf. Campbell v. Acuff-Rose Music, Inc., 510 U.S. at 589 (concluding that copying of song for parodic purpose was fair where it was not “excessive” in relation to that purpose as secondary user took only what was necessary to evoke original). The only purpose served by the extent of defendants’ taking is identically comedic to that of the original authors, that is, to have two performers expand on a singular joke in

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order to generate increasing audience laughter. As this court has recognized, there is “nothing transformative” about using an original work “in the manner it was made to be” used. On Davis v. Gap, Inc., 246 F.3d 152, 174 (2d Cir. 2001); see Ringgold v. Black Entertainment TV, 126 F.3d 70, 79 (2d Cir. 1997) (concluding that purpose factor favored copyright owner where defendant used “work for precisely a central purpose for which it was created”). Defendants’ use of the Routine, not briefly as the basis for a dramatic lie, but extensively for its original comedic effect, cannot be deemed transformative.

In sum, nothing in the 12(b)(6) record shows that the Play imbued the Routine with any new expression, meaning, or message. Nor does any new dramatic purpose justify defendants’ extensive copying of the Routine. Accordingly, the district court erred both in finding defendants’ use of the Routine transformative and in concluding, on that basis, that a fair use defense was established as a matter of law.13

(2) Commercial Purpose

The first statutory factor specifically instructs courts to consider whether copyrighted materials are used for

13. We note that even a correct finding of transformative use is not necessarily determinative of the first statutory factor, much less of fair use. See Authors Guild v. Google Inc., 804 F.3d at 218; Leval, Toward a Fair Use Standard, 103 Harv. L. Rev. at 1111 (recognizing that “existence of . . . transformative objective does not . . . guarantee success in claiming fair use” because “transformative justification must overcome factors favoring the copyright owner”).

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a commercial purpose or for a nonprofit educational purpose, the former tending “to weigh against a finding of fair use.” Campbell v. Acuff-Rose Music, Inc., 510 U.S. at 585 (internal quotation marks omitted). There is no question here that defendants’ use of Who’s on First? in Hand to God was for a commercial purpose. Nevertheless, the district court discounted that fact upon finding the use “highly transformative.” TCA Television Corp. v. McCollum, 151 F. Supp. 3d at 434-35; see Campbell v. Acuff-Rose Music, Inc., 510 U.S. at 579 (recognizing that “the more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use”). Because we here conclude that defendants’ use was not transformative, let alone “highly transformative,” we conclude that the district court erred in discounting Hand to God’s commercial character. See Campbell v. Acuff-Rose Music, Inc., 510 U.S. at 579-81.14

This conclusion applies with particular force here where plaintiffs allege that defendants not only used an unaltered and appreciable excerpt of the Routine in a commercial play but also featured the Routine in the

14. This court has sometimes assigned little weight to the commercial nature of a secondary use even absent a transformative purpose. See, e.g., Castle Rock Entm’t, Inc. v. Carol Publ’g Grp., Inc., 150 F.3d 132, 142 (2d Cir. 1998). But where, as here, defendants justify their use solely by reference to a transformative purpose, commercialism cannot automatically be discounted absent a finding of such purpose. See Blanch v. Koons, 467 F.3d at 254 (discounting commercial nature of secondary use only because new work was substantially transformative).

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Play’s advertising, conduct which reasonably qualifies as commercial exploitation weighing strongly against fair use. See id. at 585 (observing that use of copyrighted work “to advertise a product, even in a parody, will be entitled to less indulgence under the first factor of the fair use enquiry than the sale of a parody for its own sake”); American Geophysical Union v. Texaco Inc., 60 F.3d 913, 922 (2d Cir. 1994) (stating that fair use claim will not be sustained when secondary use can fairly be characterized as “commercial exploitation” (internal quotation marks omitted)); Consumers Union of U.S., Inc. v. Gen. Signal Corp., 724 F.2d 1044, 1049 (2d Cir. 1983) (observing that some infringement actions involve copying of creative expression for “purpose of having that precise form of expression advance someone else’s commercial interests—for example, using well-known copyrighted lines to attract attention to an advertisement”). Indeed, to the extent defendants excessively copied from the Routine even within the Play, their advertising focus on the Routine’s comic exchanges raises particular commercial exploitation concerns.

Thus, defendants’ commercial use of the Routine was not transformative. Rather, it duplicated to a significant degree the comedic purpose of the original work. As such, the first statutory factor, far from weighing in defendants’ favor, weighs in favor of plaintiffs.

b. Nature of Copyrighted Work

The second statutory factor, “the nature of the copyrighted work,” also weighs in plaintiffs’ favor. As the

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Supreme Court has observed, certain “works are closer to the core of intended copyright protection than others, with the consequence that fair use is more difficult to establish when the former works are copied.” Campbell v. Acuff-Rose Music, Inc., 510 U.S. at 586. Like the district court, we conclude that Who’s on First?, an original comedy sketch created for public entertainment, lies at the heart of copyright’s intended protection. See id. (recognizing that creative expression created for public dissemination is at core of “copyright’s protective purposes”); On Davis v. Gap, Inc., 246 F.3d at 175 (concluding that second factor favored plaintiff because copyrighted work was “in the nature of an artistic creation”). Thus, while the secondary user of noncreative information can more readily claim fair use based on the law’s recognition of “a greater need to disseminate factual works than works of fiction or fantasy,” Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. at 563; see Authors Guild v. Google, Inc., 804 F.3d at 220 & n.21 (explaining that factual works “often present well justified fair uses” because “there is often occasion to test the accuracy of, to rely on, or to repeat their factual propositions,” which “may reasonably require quotation”), the secondary user of a creative work must justify his use, usually by explaining the functional or creative rationale behind its quotation, see Pierre N. Leval, Toward a Fair Use Standard, 103 Harv. L. Rev. 1105, 1113 (1990) (explaining that, in considering whether quotation is fair, courts must consider utility of each challenged passage).

Defendants argue that their use was justified by the dramatic need to use an instantly recognizable “cultural” touchstone in the relevant scene. Appellees’ Br. 15.

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Defendants do not explain, however, why Jason’s lie had to pertain to a cultural touchstone, as opposed to any obvious tall tale—e.g., inventing the Internet, traveling to Mars, out-swimming Michael Phelps. See generally Leval, Toward a Fair Use Standard, 103 Harv. L. Rev. at 1111 (observing that court considering fair use must determine not only if justification for copying exists, but also “how powerful, or persuasive, is the justification”). But even assuming defendants’ professed dramatic need, they do not explain why the cultural touchstone had to be the Routine—or even a comedy sketch—as opposed to some other readily recognizable exchange, including those already in the public domain. Most troubling, even if defendants could justify their dramatic need to use a small, identifiable segment of the Routine, that does not justify having their characters perform, verbatim, some dozen variations on the Routine’s singular joke. As already noted, the purpose of such extensive use was to provoke audience laughter in exactly the same way as the Routine’s creators had done.

In sum, because defendants’ use of the Routine cannot be deemed transformative, and because the record is devoid of any persuasive justification for the extent of defendants’ use, the creative nature of the Routine weighs strongly against a fair use defense.

c. Amount and Substantiality of Use

The third statutory factor asks whether “‘the amount and substantiality of the portion used in relation to the copyrighted work as a whole’ . . . are reasonable in relation

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to the purpose of the copying.” Campbell v. Acuff-Rose Music, Inc., 510 U.S. at 586 (quoting 17 U.S.C. § 107(3)). In assessing this factor, we consider not only “the quantity of the materials used” but also “their quality and importance.” Id. at 587; see Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. at 565 (stating that “fact that a substantial portion of the infringing work was copied verbatim is evidence of the qualitative value of the copied material, both to the originator and to the plagiarist who seeks to profit from marketing someone else’s copyrighted expression”).

While acknowledging that the portion of the Routine used by defendants was “instantly recognizable” and “more than merely the ‘introductory premise,’” the district court decided—without explanation—that this factor tipped only “slightly” in plaintiffs’ favor in light of defendants’ transformative use. TCA Television Corp. v. McCollum, 151 F. Supp. 3d at 434. We reject the district court’s transformative use determination for reasons already explained. On de novo review, we further conclude that the third statutory factor weighs strongly in favor of plaintiffs.

While the portion of the Routine copied by defendants takes less than two minutes to perform, it plainly reveals the singular joke underlying the entire Routine: that words understood by one person as a question can be understood by another as an answer. Moreover, defendants repeatedly exploit that joke through a dozen variations. This manifests substantial copying. See Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. at 548, 565-

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66 (concluding that third factor favored plaintiffs where defendants copied approximately 300 words verbatim in light of “expressive value of the excerpts”); Castle Rock Entm’t v. Carol Publ’g Grp., Inc., 955 F. Supp. 260, 269 (S.D.N.Y. 1997) (citing Harper & Row as support for proposition that copying even few words of challenged work can constitute substantial taking if it amounts to taking heart of original work), aff’d, 150 F.3d 132 (2d Cir. 1998).

Even a substantial taking, however, can constitute fair use if justified. See Authors Guild, Inc. v. HathiTrust, 755 F.3d 87, 98 (2d Cir. 2014) (acknowledging that some purposes require copying entirety of copyrighted work); see also Leval, Toward a Fair Use Standard, 103 Harv. L. Rev. at 1123 (explaining that, under third factor, “an important inquiry is whether the selection and quantity of the material taken are reasonable in relation to the purported justification”). But, as already explained, defendants offer no persuasive justification for their extensive use of the Routine. Cf. Authors Guild, Inc. v. HathiTrust, 755 F.3d at 98 (stating that “crux” of third factor inquiry is whether “no more was taken than necessary” (internal quotation marks omitted)).

d. Effect on Potential Market for Copyrighted Work

The final statutory factor considers “the effect of the use upon the potential market for or value of the copyrighted work,” 17 U.S.C. § 107(4), focusing on whether the secondary use usurps demand for the protected

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work by serving as a market substitute, see Campbell v. Acuff-Rose Music, Inc., 510 U.S. at 592 (stating that role of courts is to distinguish between “biting criticism that merely suppresses demand and copyright infringement, which usurps it” (alterations and internal quotation marks omitted)). In weighing this factor, a court properly looks to “not only the extent of market harm caused by the particular actions of the alleged infringer, but also whether unrestricted and widespread conduct of the sort engaged in by the defendant would result in a substantially adverse impact on the potential market for the original.” Id. at 590 (alteration and internal quotation marks omitted).

The district court weighed this factor in defendants’ favor, concluding that the Play’s use of the Routine could not reasonably be expected to usurp the market for Abbott and Costello’s original performance. See TCA Television Corp. v. McCollum, 151 F. Supp. 3d at 434-35. In so doing, however, the district court disregarded the possibility of defendants’ use adversely affecting the licensing market for the Routine. See id. at 434 (citing Cariou v. Prince, 714 F.3d at 708 (stating that fourth factor “does not focus principally on the question of damage to [a] derivative market”)).

While derivative markets are not the principal focus of the fourth inquiry, that does not mean that they are irrelevant. See Campbell v. Acuff-Rose Music, Inc., 510 U.S. at 593 (recognizing that evidence of substantial harm to derivative market would weigh against fair use). A court considering fair use properly identifies and weighs

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relevant harm to the derivative market for a copyrighted work, which market includes uses that creators of original works might “license others to develop.” Id. at 592; see American Geophysical Union v. Texaco Inc., 60 F.3d at 929 (“[T]he impact on potential licensing revenues is a proper subject for consideration in assessing the fourth factor.”).

To be clear, in assessing harm posed to a licensing market, a court’s focus is not on possible lost licensing fees from defendants’ challenged use. See American Geophysical Union v. Texaco Inc., 60 F.3d at 929 n.17 (explaining that fourth factor would always favor copyright owner if courts focused on loss of potential licensing fees from alleged infringer); see also Leval, Toward a Fair Use Standard, 103 Harv. L. Rev. at 1124 (“By definition every fair use involves some loss of royalty revenue because the secondary user has not paid royalties.”). Rather, a court properly considers the challenged use’s “impact on potential licensing revenues for traditional, reasonable, or likely to be developed markets.” American Geophysical Union v. Texaco Inc., 60 F.3d at 930; accord Swatch Grp. Mgmt. Servs. Ltd. v. Bloomberg L.P., 756 F.3d 73, 91 (2d Cir. 2014).

Plaintiffs here alleged the existence of a traditional—and active—derivative market for licensing the Routine. See Am. Compl. ¶¶ 40, 81-83 (alleging that plaintiffs receive “regular” requests to license Who’s on First?, which they frequently grant). Further, they alleged market harm. See id. at ¶ 83 (alleging that defendants’ unlicensed use of Who’s on First? negatively affected commercial market

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for future licensing). Accepting these allegations as true at this stage of the litigation, we conclude that this factor weighs in favor of plaintiffs. See On Davis v. Gap, Inc., 246 F.3d at 175-76 (concluding that fourth factor favored copyright owner where defendants’ taking caused both loss of royalty revenue and “diminution of [owner’s] opportunity to license to others who might regard [owner’s] design as preempted by [defendant’s] ad”).

In sum, on the 12(b)(6) record, all four statutory factors weigh in favor of plaintiffs and against a defense of fair use. Because, at this stage of the proceeding, defendants have identified no other equitable factors as here relevant to the fair use analysis, we conclude that the dismissal of plaintiffs’ amended complaint on the ground of fair use was error. Nevertheless, for reasons explained in the next section of the opinion, we conclude that dismissal was warranted because plaintiffs did not plausibly allege a valid copyright interest in the Routine.

B. Dismissal for Failure To Plead a Valid Copyright

Defendants argue that, even if we reject dismissal on the basis of a fair use defense, we should affirm because plaintiffs fail plausibly to plead ownership of a valid copyright in the Routine. See Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S. Ct. 1282, 113 L. Ed. 2d 358 (1991) (identifying two elements of infringement: (1) ownership of valid copyright and (2) copying original elements of work). Defendants assert that Abbott and Costello’s Who’s on First? Routine fell

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into the public domain in 1968, when the initial copyright term for Tropics expired. Defendants concede that UPC’s registration for that movie protected the Routine—first published therein—from entering the public domain through the term of that copyright, see Shoptalk, Ltd. v. Concorde-New Horizons Corp., 168 F.3d 586, 592 (2d Cir. 1999), but they assert that only Abbott and Costello, as the Routine’s authors, could renew the copyright in that work—as distinct from Tropics—which the team failed to do.15

In disputing this challenge, plaintiffs argue that UPC had the right to renew the copyright in the Routine because (1) Abbott and Costello assigned ownership of their common law copyright in the Routine to UPC in either the July or November Agreement, (2) the Routine as published in Tropics was a “work for hire” owned by UPC, and (3) the Routine merged into Tropics so as to support a single copyright. Plaintiffs maintain that, under any of these theories, UPC’s renewal of the Tropics copyright also maintained copyright protection for the Routine, so that they now hold a valid copyright in that work by virtue of UPC’s transfer of its rights in the Routine in the Quitclaim.

15. 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. See Roy Export Co. Establishment of Vaduz, Liechtenstein v. Columbia Broad. Sys., Inc., 672 F.2d 1095, 1101-02 (2d Cir. 1982).

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We identify no merit in any of the theories relied on by plaintiffs to support their copyright claim and, accordingly, we affirm dismissal of the amended complaint for failure to plead a valid copyright.

1. Copyright Assignment

In rejecting defendants’ copyright invalidity challenge, the district court thought that “[t]he contract language, together with UPC’s subsequent registration of the copyrights” for Tropics and The Naughty Nineties, might admit a finding of “implied assignment of the initial copyright from Abbott and Costello.” TCA Television Corp. v. McCollum, 151 F. Supp. 3d at 429; see Nimmer § 10.03[B][2], at 10-56.2(6) (explaining that pre-1978 assignment of common law copyright could be effectuated orally or implied from conduct). The conclusion is flawed in two respects. First, as detailed in this section, the July and November Agreements clearly express the parties’ intent for Abbott and Costello to license the use of, not to assign copyrights in, their existing comedy routines for use in UPC movies in which the team appeared. Second, and requiring no further discussion in the face of clear contract language, UPC’s registration (and renewal) of copyrights in its movies says nothing about what Abbott and Costello intended to convey in the two agreements because UPC would have taken such action to protect its independent movie rights in any event. See generally Faulkner v. Nat’l Geographic Soc’y, 220 F. Supp. 2d 237, 239 (S.D.N.Y. 2002) (noting that under 1909 Copyright Act, proprietor of collective work had right to renew copyright in collective work itself).

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Turning then to the agreements, we note at the outset that neither contract has a choice of law provision. Thus, the controlling law would be the contract’s “center of gravity,” which typically is the place of contracting or performance. Lazard Freres & Co. v. Protective Life Ins. Co., 108 F.3d 1531, 1539 (2d Cir. 1997) (internal quotation marks omitted). The July Agreement was executed in New York with expected performance in California. The November Agreement was also to be performed in California and may have been executed there, where UPC was located and Abbott and Costello were then completing Tropics. Any uncertainty on the latter point is irrelevant, however, because New York and California law both instruct that contracts must be interpreted according to the mutual intent of the parties at the time the contract was formed. See Welsbach Elec. Corp. v. MasTec N. Am., Inc., 7 N.Y.3d 624, 629, 859 N.E.2d 498, 825 N.Y.S.2d 692, 695 (2006); AIU Ins. Co. v. Superior Court, 51 Cal. 3d 807, 821, 274 Cal. Rptr. 820, 799 P.2d 1253, 1264 (1990). Both states recognize that the best evidence of the parties’ intent is the language used in their contract. See Brad H. v. City of New York, 17 N.Y.3d 180, 185, 951 N.E.2d 743, 928 N.Y.S.2d 221, 224 (2011); AIU Ins. Co. v. Superior Court, 51 Cal. 3d at 822, 799 P.2d at 1264. Thus, where contract language is clear and unambiguous, courts will enforce an agreement according to its terms, without looking outside the four corners of the document. See Brad H. v. City of New York, 17 N.Y.3d at 185, 928 N.Y.S.2d at 224; AIU Ins. Co. v. Superior Court, 51 Cal. 3d at 822, 799 P.2d at 1264.

The July Agreement employing Abbott and Costello for “one feature photoplay,” J.A. 165, states that the team

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would furnish UPC with “routines heretofore used and now owned by 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,” id. at 169 (emphases added). The longer-term November Agreement similarly states that the team would furnish UPC with all “routines heretofore used by the Artists either on the radio or otherwise and now owned by the Artists,” and that UPC would “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.” Id. at 129 (emphases added). As the highlighted language in each agreement makes plain, Abbott and Costello furnished UPC with their routines for a limited purpose: use in any movies in which the team appeared under the respective agreements.16 This is unmistakably the language of an exclusive, limited-use license, not the assignment of copyright. See Compendium of Copyright Office Practices § 12.2.1 (1973) (stating that license is “exclusive or non-exclusive grant of permission to use a copyrighted work for certain purposes”).

A clause in the July Agreement granting UPC “all rights of every kind and character whatsoever in and

16. Plaintiffs acknowledged as much in the district court when they argued that the agreements’ language “represented a clear grant of rights to UPC in all previous acts and routines created by Abbott and Costello . . . if used in any motion pictures produced by UPC in which Abbott & Costello provided their services.” Pls.’ Mem. Opp. Mot. Dismiss at 7, TCA Television Corp. v. McCollum, No. 15-cv-4325 (GBD), ECF No. 61 (emphasis added).

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to the same . . . perpetually” warrants no different conclusion. J.A. 169. This language appears in the same sentence as that quoted in the preceding paragraph and, thus, “all rights . . . in and to the same” can only be understood to reference UPC’s motion picture rights, not the team’s common law copyright in its routines.17 Indeed, in the November Agreement, wherein the team grants UPC the right to photograph and reproduce their “acts,” the “perpetual” right “to use the same” is expressly granted “only in connection with the photoplays in which the Artists appear hereunder and in connection with the advertising and exploitation thereof.” Id. at 127. The November Agreement states that “the Producer shall not have the right to use the Artists’ names or likenesses or reproductions of their voices in radio broadcasts (except as hereinafter expressly permitted) independent of . . . motion picture productions or in commercial tie-ups.” Id. at 128.

Other language in the November Agreement further confirms that Abbott and Costello granted UPC only a license to use their routines. The team therein agreed “that they w[ould] not use or license, authorize or permit the use of any of the material and/or routines” furnished to UPC under the agreement “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 later.” Id. at 129. The fact that the Agreement limits Abbott and Costello’s ability to use or

17. See supra p. 173 (quoting relevant sentence in July Agreement in full).

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license specified material (i.e., material created before the agreements) only “in connection with motion pictures,” and only for a limited time, plainly indicates the parties’ understanding that the team retained ownership of the copyright in their pre-agreement material and granted UPC only a license. See P.C. Films Corp. v. MGM/UA Home Video Inc., 138 F.3d 453, 456 (2d Cir. 1998) (explaining that under 1909 Copyright Act, “transfer of anything less than the totality of rights commanded by copyright was automatically a license rather than an assignment [of] the copyright”).

Thus, the language of the July and November Agreements, by itself, clearly belies plaintiffs’ claim that Abbott and Costello therein conveyed their common law copyright in the Routine to UPC. That conclusion is reinforced by the very Quitclaim on which plaintiffs’ claimed ownership of the Who’s on First? copyright depends. To secure the Quitclaim of UPC’s interests in the Routine (then held by its successor, Universal), plaintiffs’ predecessors-in-interest therein represented that they owned the copyright in the Routine. In short, the parties to the Quitclaim understood Abbott and Costello not to have transferred, but to have retained, ownership of the Routine’s copyright.

Accordingly, plaintiffs cannot state a plausible infringement claim based on a 1940 transfer of copyright ownership from Abbott and Costello to UPC in either the July or November Agreement. The record does not support such assignment.18

18. Because the agreements cannot be construed to effect an assignment of the Routine’s copyright to UPC, we need not decide

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2. Work Made for Hire

Plaintiffs maintain that, even if the July and November Agreements cannot be construed to have assigned copyrights, they are work-for-hire agreements. They argue that UPC, “[a]s the author under a work-for-hire agreement of the films . . . , properly registered its copyright in these two films with the Copyright Office, and thereafter timely renewed their copyright registrations.” Appellants’ Br. 9; see Estate of Burne Hogarth v. Edgar Rice Burroughs, Inc., 342 F.3d 149, 156-57 (2d Cir. 2003) (explaining that, under 1909 Copyright Act, employer was legal author and, therefore, had renewal rights).

The argument is defeated by plaintiffs’ own allegation—which we must accept as true—that the Routine was first performed in March 1938, more than two years before Abbott and Costello entered into the July and November Agreements with UPC. See Am. Compl. ¶ 32. Insofar as Abbott and Costello had already performed Who’s on First? in 1938, they plainly did not create the Routine at UPC’s “instance and expense” in 1940, as would be required for it to be a work-for-hire. Playboy Enters., Inc. v. Dumas, 53 F.3d 549, 554 (2d Cir. 1995) (stating that work is considered “for hire” when made at hiring party’s instance and expense, i.e., “when the motivating factor in producing the work was the employer who induced the creation” (internal quotation marks omitted)); see also

whether they further conveyed the Routine’s renewal rights. See Corcovado Music Corp. v. Hollis Music, Inc., 981 F.2d 679, 684 (2d Cir. 1993) (recognizing strong presumption against conveyance of renewal rights).

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Urantia Found. v. Maaherra, 114 F.3d 955, 961 (9th Cir. 1997) (“An employment (or commissioning) relationship at the time the work is created is a condition for claiming renewal as the proprietor of a work made for hire.” (internal quotation marks omitted)).

Plaintiffs seek to avoid this conclusion by noting defendants’ (1) concession—at least for purposes of their motion to dismiss—that new material was added to the Routine for Tropics, see TCA Television Corp. v. McCollum, 151 F. Supp. 3d at 431; and (2) failure to establish “the contents, language or scope of protectable expression of the 1938 radio broadcast,” Appellants’ Reply Br. 22. We are not persuaded.

On review of a motion to dismiss, courts must draw all reasonable inferences in plaintiffs’ favor. Even applying that principle here, it is not plausible to infer that the Routine, as performed in 1938, did not already contain the initial series of exchanges about a person named “Who” playing first base for the simple reason that there is no Routine without at least that part. Further, because that is the part of the Routine appropriated in Hand to God, plaintiffs must plausibly allege a valid copyright in that material, regardless of later additions. Thus, to the extent plaintiffs’ copyright claim rests on a theory of work-for-hire, it was their burden to plead facts showing that the appropriated parts of the Routine had not existed in the 1938 iteration of Who’s on First?, but were first created for Tropics so as to be covered by the copyright and copyright renewal of that movie. See Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. at 361 (stating that to establish

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infringement claim, plaintiff must demonstrate, among other things, ownership of valid copyright).

3. Merger of Routine in Motion Pictures

Finally, plaintiffs argue that even if their copyright ownership claim cannot rest on either an assignment or work-for-hire theory, it is plausible because “so much of the Routine as was used in the Movies ‘merged’ with the Movies to become a ‘unitary whole.’” See Appellants’ Reply Br. 28. Thus, the Routine was not separately registerable; rather it was protected by UPC’s statutory registration and its renewal of the copyrights for movies using the Routine.

This argument also fails because, as this court recently observed, “authors of freestanding works that are incorporated into a film . . . may copyright these ‘separate and independent works.’” 16 Casa Duse, LLC v. Merkin, 791 F.3d 247, 259 (2d Cir. 2015) (emphasis added) (quoting 17 U.S.C. § 101); see id. at 257 (noting that separate copyrights may be necessary where motion picture incorporates “separate, freestanding pieces that independently constitute ‘works of authorship’”). Who’s on First? was such a freestanding work within Tropics. As already noted, plaintiffs acknowledged in the amended complaint that the Routine (1) was prepared and existed on its own for some years before it was performed in Tropics, see Am. Compl. ¶ 32; and (2) was performed independently from the films “thousands of times” on the radio and elsewhere, see id. at ¶¶ 34-35; see also J.A. 129 (stating in November Agreement that “Artists reserve

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the right to use on the radio and in personal appearances” all preexisting routines). The Quitclaim representation that plaintiffs’ predecessors-in-interest still owned the Routine’s copyright in 1984 is also at odds with the argument that the Routine had so merged with Tropics as to admit a single copyright owned by UPC.

Neither Garcia v. Google, Inc., 786 F.3d 733 (9th Cir. 2015) (en banc), nor Richlin v. Metro-Goldwyn-Mayer Pictures, Inc., 531 F.3d 962 (9th Cir. 2008), relied on by plaintiffs, is to the contrary. In Garcia, the Ninth Circuit reversed a panel decision holding that an actor’s five-second contribution to a movie was sufficiently creative to entitle her to register a copyright in her performance. The en banc court explained that “[t]reating every acting performance as an independent work” would be a “logistical and financial nightmare.” Garcia v. Google, Inc., 786 F.3d at 743. This case is not analogous. While the screen actor’s performance there was so “integrated into” the filmed work as to be “inseparable from” it, see 16 Casa Duse, LLC v. Merkin, 791 F.3d at 254, Who’s on First? is a freestanding comedy routine performed by Abbott and Costello not only years before the first frame of Tropics was ever filmed but also for many years thereafter. Thus, the concerns at issue in Garcia are not present here.

As for Richlin, the Ninth Circuit did not there hold, as plaintiffs contend, that an author is “not entitled to an independent copyright by reason of inclusion of his [story] treatment’s material in [a] motion picture.” Appellants’ Reply Br. 27-28 (emphasis in original). Rather, the court there assumed that plaintiffs’ story treatment was

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independently copyrightable when it held that plaintiffs had “failed to secure a federal copyright for it.” Richlin v. Metro-Goldwyn-Mayer Pictures, Inc., 531 F.3d at 976. Thus, the court acknowledged that “publication of a motion picture with notice secures federal statutory copyright protection for all of its component parts,” but observed “that does not mean that the component parts necessarily each secure an independent federal statutory copyright.” Id. at 975-76. The movie’s publication protected so much of the treatment as was disclosed therein, but it “did not constitute publication of the Treatment ‘as such’—i.e., as a work standing alone.” Id. at 973.

This reasoning undermines rather than supports plaintiffs’ merger theory. The plaintiffs in Richlin “clearly intended” that the treatment “be merged into inseparable or interdependent parts of a unitary whole.” Id. at 967. That is not this case. As already explained, the Routine was created and performed by Abbott and Costello well before Tropics was filmed, and the team continued to perform it for years after. Indeed, the Agreements’ licensing of the Routine’s performance in Tropics and The Naughty Nineties contemplated such independent performances. In these circumstances, we conclude that the Routine did not merge into UPC’s films so as to avoid the need for its creators to renew the copyright. See 16 Casa Duse, LLC v. Merkin, 791 F.3d at 259.

In sum, because plaintiffs fail plausibly to allege that (1) Abbott and Costello assigned their common law copyright in Who’s on First? to UPC; (2) the Routine, as appropriated by defendants in Hand to God, was first

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created for UPC as a work-for-hire; or (3) the Routine so merged with the UPC movies in which it was performed as to become a unitary whole, we conclude that plaintiffs did not plead their possession of a valid copyright in the Routine, as required to pursue their infringement claim.

Accordingly, even though the district court erred in dismissing plaintiffs’ amended complaint based on defendants’ fair use of the appropriated material, we affirm dismissal based on plaintiffs’ failure plausibly to allege a valid copyright.

III. Conclusion

To summarize, we conclude as follows:

1. Dismissal was not supported by fair use because all four relevant factors weigh in plaintiffs’ favor:

a. Defendants’ verbatim use of over a minute of Who’s on First? in their commercial production, Hand to God, was not transformative because defendants neither used so much of the Routine for a different purpose nor imbued the original with a different message, meaning, or expression;

b. Defendants failed persuasively to justify their use of the Routine, as a secondary user who appropriates a creative work without alteration must do;

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c. Defendants’ use of some dozen of the Routine’s variations of “who’s on first” was excessive in relation to any dramatic purpose; and

d. Plaintiffs allege an active secondary market for the work, which was not considered by the district court.

2. Dismissal is warranted by plaintiffs’ failure plausibly to plead ownership of a valid copyright. Their efforts to do so on theories of assignment, work-for-hire, and merger all fail as a matter of law.

Accordingly, the judgment of dismissal is AFFIRMED.

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APPENDIX C — MEMORANDUM DECISION AND ORDER OF THE UNITED STATES DISTRICT

COURT FOR THE SOUTHERN DISTRICT OF NEW YORK, FILED DECEMBER 16, 2015

UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK

15 Civ. 4325 (GBD)

TCA TELEVISION CORP., HI NEIGHBOR, AND DIANA ABBOTT COLTON,

Plaintiffs,

-against-

KEVIN MCCOLLUM, THE ENSEMBLE STUDIO THEATRE, INC., MANHATTAN CLASS COMPANY,

INC., ROBERT ASKINS, HAND TO GOD LLC, AND DOES AND ABC COMPANIES 1-10,

Defendants.

December 17, 2015, Decided December 17, 2015, Filed

MEMORANDUM DECISION AND ORDER

GEORGE B. DANIELS, United States District Judge

Plaintiffs, TCA Television Corporation, Hi Neighbor, and Diana Abbott Colton, filed this action against Defendants, Kevin McCollum, The Ensemble Studio

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Theatre, Inc., Manhattan Class Company, Inc., Robert Askins, Hand to God LLC, and Does and ABC Companies 1-10, under 17 U.S.C. § 101 of the Copyright Act of 1976 and New York common law copyright.

This action arises out of Defendants’ use of dialogue from the iconic comedy routine, Who’s On First? (“the Routine”), in their critically-acclaimed Broadway dark comedy, Hand to God, as well as in the play’s promotional video. (See Am. Compl., (ECF No. 3), ¶ 1.)

In their Amended Complaint, Plaintiffs, the heirs of Abbott and Costello, allege that they own valid copyrights in Who’s on First?, and that despite requests to Defendants to cease and desist their unauthorized use of material from the Routine in Hand to God, Defendants continue to “willfully capitalize on Abbott & Costello’s world-famous reputation and Plaintiffs’ copyrighted works.” (Id. ¶¶ 4-5.) Plaintiffs seek damages, restitution, disgorgement, injunctive relief, and attorneys’ fees. (See id. ¶¶ A-F.)

Defendants move to dismiss the Amended Complaint for failure to state a claim pursuant to Federal Rule of Civil Procedure 12(b)(6), arguing, inter alia, that the Plaintiffs have failed to allege a continuous chain of title in the Routine, that the Routine has passed into the public domain, and that they have made fair use of the Routine. (Am. Mot. to Dismiss, (ECF No. 55); Defendant’s Mem. in Supp. of Mot. to Dismiss (“Mem.”), (ECF No. 51), at 1.)1

1. The motion was fully submitted following the filing of Plaintiff’s Opposition brief (“Opp’n,” (ECF No. 61)) and Defendant’s

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Because Plaintiffs have not sufficiently alleged a claim for federal or New York common law copyright infringement, Defendants’ motion to dismiss for failure to state a claim is GRANTED.

I. Standard of Review

To survive a motion to dismiss, “a complaint must contain sufficient factual matter, accepted as true, to ‘state a claim to relief that is plausible on its face.’” Ashcroft v. Iqbal, 556 U.S. 662, 678, 129 S. Ct. 1937, 173 L. Ed. 2d 868 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570, 127 S. Ct. 1955, 167 L. Ed. 2d 929 (2007)). The plaintiff must demonstrate “more than a sheer possibility that a defendant has acted unlawfully”; stating a facially plausible claim requires pleading facts that enable the court “to draw the reasonable inference that the defendant is liable for the misconduct alleged.” Id. at 678. Thus, the factual allegations pleaded “must be enough to raise a right to relief above the speculative level.” Twombly, 550 U.S. at 555.

A district court must first review the plaintiff ’s complaint to identify allegations that, “because they are no more than conclusions, are not entitled to the assumption of truth.” Iqbal, 556 U.S. at 679. The court then considers whether the plaintiff’s remaining well-pleaded factual allegations, assumed to be true, “plausibly give rise to an entitlement to relief.” Id. In deciding the 12(b)(6) motion,

Reply brief (“Reply,” (ECF No. 63)). This Court heard oral argument regarding this motion on September 9, 2015. See September 9, 2015 Oral Argument Transcript (“Tr.”).

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the court accepts the complaint’s well-pleaded factual allegations as true and draws all reasonable inferences in the non-moving party’s favor. See N.J. Carpenters Health Fund v. Royal Bank of Scot. Grp., PLC, 709 F.3d 109, 119 (2d Cir. 2013).

“In deciding a motion to dismiss under Rule 12(b)(6), the court may refer ‘to documents attached to the complaint as an exhibit or incorporated in it by reference, to matters of which judicial notice may be taken, or to documents either in plaintiffs’ possession or of which plaintiffs had knowledge and relied on in bringing suit.’” Fishbein v. Miranda, 670 F. Supp. 2d 264, 271 (S.D.N.Y. 2009), aff’d sub nom. Silverman v. Teamsters Local 210 Affiliated Health & Ins. Fund, 761 F.3d 277 (2d Cir. 2014) (quoting Brass v. Am. Film Tech., Inc., 987 F.2d 142, 150 (2d Cir. 1993)); see also Hayes v. Coughlin, No. 87 Civ. 7401, 1991 U.S. Dist. LEXIS 14680, 1991 WL 220963, at * 1 (S.D.N.Y. Oct. 16, 1991) (“Papers outside a complaint may be incorporated by reference into the complaint when such papers are referred to within the body of the complaint.”). “[U]nder Rule 201(b) of the Federal Rules of Evidence, courts may take judicial notice of facts that are ‘capable of accurate and ready determination by resort to sources whose accuracy cannot reasonably be questioned.’” Island Software & Computer Serv., Inc. v. Microsoft Corp., 413 F.3d 257, 261 (2d Cir. 2005) (citing Fed. R. Evid. 201(b)). The Second Circuit has held that federal copyright registrations, “as published in the Copyright Office’s registry,” are among the facts of which a district court may take judicial notice. Id.

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II. Plaintiffs’ Federal Copyright Infringement Claims

To state a claim for copyright infringement, Plaintiffs “must allege (1) ‘ownership of a valid copyright,’ and (2) ‘copying of constituent elements of the work that are original.’” Perrin & Nissen Ltd. v. SAS Grp. Inc., No. 06 CIV. 13089 (MGC), 2009 U.S. Dist. LEXIS 60506, 2009 WL 855693, at *4 (S.D.N.Y. Mar. 27, 2009) (citing Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S. Ct. 1282, 113 L. Ed. 2d 358 (1991)). To withstand Defendants’ motion to dismiss, Plaintiffs must “plead[] factual content” for each element of the claim asserted such that “the court [can] draw the reasonable inference that the defendant is liable for the misconduct alleged.” Iqbal, 556 U.S. at 678. However, “[n]either Twombly nor Iqbal requires a plaintiff in a copyright infringement action to plead specific evidence or extra facts beyond what is needed to make the claim plausible.” Ritani, LLC v. Aghjayan, 880 F. Supp. 2d 425, 440 (S.D.N.Y. 2012) (internal quotation marks omitted).

Because the Routine and the films that published it, One Night and The Naughty Nineties, were created before January 1, 1978, they are subject to the 1909 Act.2 See 17 U.S.C. § 301(b)(2); Martha Graham Sch. & Dance Found., Inc. v. Martha Graham Ctr. of Contemporary Dance,

2. This Court uses “published” as a term of art. Specifically, ‘“[P]ublication occurs when by consent of the copyright owner, the original or tangible copies of a work are sold, leased, loaned, given away, or otherwise made available to the general public ....’” Shoptalk, Ltd. v. Concorde-New Horizons Corp., 168 F.3d 586, 590 (2d Cir. 1999) (quoting Bartok v. Boosey & Hawkes, Inc., 523 F.2d 941, 945 (2d Cir. 1975)).

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Inc., 380 F.3d 624, 633-34 (2d Cir. 2004) (citing Playboy Enterprises, Inc. v. Dumas, 53 F.3d 549, 553 (2d Cir. 1995)). Under the 1909 Act, state common law copyright provided protection until first publication. See Martha Graham, 380 F.3d at 632-33 (citing 17 U.S.C. §§ 2, 10, 12, 19, 21, 24 (repealed); Shoptalk, 168 F.3d at 590). Thereafter the work was entitled to an initial twenty-eight-year term of statutory copyright, provided that adequate statutory notice was given at publication, or appropriate registration and deposit were made. See id. In the absence of adequate statutory notice at publication, a work was injected into the public domain. See id. If adequate statutory notice was given, then application for renewal made during the last year of the initial term extended the copyright for a renewal term of twenty-eight additional years. See id.

A. Existence and Ownership of a Valid Copyright

As a threshold matter, a federal infringement claim requires that Plaintiffs allege they possessed a valid copyright at the time of the alleged infringement. See Perrin, 2009 U.S. Dist. LEXIS 60506, 2009 WL 855693, at *4. Plaintiffs allege that Abbott and Costello first performed the Routine on March 24, 1938, as a live radio broadcast for The Kate Smith Hour. (Am. Compl. ¶ 32.) However, in November 1940, the duo signed a “work-for-hire” agreement with Universal Pictures Company, Inc. (“UPC”) that assigned to Universal “all the rights to the duo’s performances of Who’s On First in One Night and The Naughty Nineties.”3 (See Am. Compl. ¶ 43.) Plaintiffs thus allege that upon execution of the November 1940

3. The relevant portions of Abbott and Costello’s November 1940 agreement with Universal provide:

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FIRST: [T]he producer hereby engages and employs the Artists, severally and as a team . . . to render to the Producer their exclusive services as actors, performers and entertainers in the portrayal of such roles or parts as may be designated by the Producer in such photoplays as may be designated by the Producer, and further employs the Artists to render their services in consulting, advising, collaborating with and assisting the Producer in the preparation of stories and screen plays upon which such photoplays are to be based and in otherwise performing such services as many be required of them pursuant to the provisions of this agreement.

[...]

FIFTH: The Artists agree 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 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. The Artists warrant that they know of no claims that the use of said material and routines or any part thereof as herein permitted will violate or infringe any copyright or any other right or rights of any other person, firm or corporation whatsoever.

(Rachman Decl. Ex. A at 1, 5; see Am. Compl. ¶ 43.) While Plaintiffs did not append the November 1940 Contract to the Amended Complaint, they clearly referenced the agreement in the Amended Complaint. As such, this Court may look to the November 1940 Contract as incorporated by reference. See Hayes, 1991 U.S. Dist.

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Agreement, “Abbott and Costello expressly granted UPC the right to use [the Routine] in the 1940 Motion Picture[, One Night in the Tropics (“One Night”),] and also assigned their rights in the version that appeared in that motion picture.” (Opp’n at 6; see also Am. Compl. ¶¶ 43-44.) According to Plaintiffs, One Night was the first publication of the Routine relevant to copyright registration under the 1909 Copyright Act. (See Am. Compl. ¶ 42.) In 1945, Abbott and Costello then expanded the One Night version of the routine in another UPC film, The Naughty Nineties. (See id.)

Plaintiffs further allege that as the assignees of the rights to the Routine, UPC registered One Night in 19404 and The Naughty Nineties in 19455 with the United States Copyright Office, and then timely renewed those two copyrights. (See Am. Compl. ¶¶ 43-45, Exs. 1-2; Opp’n at 12-17.) According to Plaintiffs, the 1970 Copyright Act and Sonny Bono Copyright Term Extension Act, 17 U.S.C. §§ 108, 203(a)(2), 301(c), 302, 303, 304(c)(2), extended the protection afforded to the Routine as performed in the two movies another ninety-five years until 2035 and 2040, respectively. (See Am. Comp. ¶¶ 47-48.)

LEXIS 14680, 1991 WL 220963, at *1 (“Papers outside a complaint may be incorporated by reference into the complaint when such papers are referred to within the body of the complaint.”).

4. One Night in the Tropics’ initial copyright registration number was LP 10042. (See Am. Compl. ¶ 44.) The 1967 renewal number was R 423759. (See id. ¶ 45).

5. The Naughty Nineties’ initial copyright registration number was LP 13337. (See id. ¶ 44.) The 1972 renewal number was R 532048. (See id. ¶ 45).

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Continuing along the chain of title, Plaintiffs allege that on March 12, 1984, Universal Pictures (“Universal”),6 quitclaimed “all rights, title, and interest, under copyright or otherwise, in and to the Who’s on First performance scenes in both One Night and The Naughty Nineties . . .” to Abbott & Costello Enterprises (“ACE”), a general partnership formed by the duo’s heirs. (Id. ¶ 50.) The quitclaim assignment, which Plaintiffs maintain made ACE the sole owner of the two copyrights at issue, can be found in Copyright Office Volume 3437 at page 851. (See id. ¶ 51; Ex. 3 at 2-3.) Upon ACE’s dissolution, 50% of the copyrights’ ownership was assigned to TCA, a corporation formed by Costello’s heirs, 25% to Abbott’s daughter, Vickie Abbott Wheeler, and 25% to Abbott’s son, Bud Abbott, Jr. (See id. ¶¶ 50, 54; Ex. 4.) After Bud Abbott, Jr.›s death in 1997, his daughter, Diana Abbott Colton, inherited his 25%. (See Am. Compl. ¶ 56.) Plaintiffs allege that Vickie Abbot Wheeler also transferred her 25% to her company, Hi Neighbor. (See id.) Plaintiffs thus contend that a chain of title to the Routine’s copyright has continuously existed, and that they are now its owners.

1. The Routine as Performed in The Kate Smith Hour

Plaintiffs correctly contend that none of Abbott and Costello’s pre-1940 radio and vaudeville performances of the Routine, including the Kate Smith Hour performance of the Routine, “were deemed a ‘publication’ for copyright

6. According to Plaintiffs, Universal is a division of Universal City Studios, Inc., the “successor to UPC.” (Am. Compl. ¶ 50.)

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purposes.” (Opp’n at 9; Am. Compl. ¶ 42.) As this District has previously found, “[p]ublic performance of a work is not considered a publication that divests an author of copyright protection.” Silverman v. CBS Inc., 632 F. Supp. 1344, 1350 (S.D.N.Y. 1986) (citing 1 Nimmer § 4.08[A]), decision supplemented, 675 F. Supp. 870 (S.D.N.Y. 1988), aff’d in part, vacated in part, 870 F.2d 40 (2d Cir. 1989). A “rendering of the performance before the microphone,” such as Abbott and Costello’s performance of the Routine on the radio show, The Kate Smith Hour, “cannot be held to be an abandonment of ownership to it by the proprietors or a dedication of it to the public at large.” Id. at 1350 (internal quotations omitted). Thus, Abbott and Costello retained common law copyright protection of the Routine, as performed on The Kate Smith Hour. See Shoptalk, 168 F.3d at 590 (stating that the 1909 Act “‘specifically exempt[ed] from coverage (and from preemption) the common-law right of an author of an unpublished work’”) (quoting Roy Export Company Establishment of Vaduz, Liechtenstein v. Columbia Broadcasting System, Inc., 672 F.2d 1095, 1101 (2d Cir. 1982) (internal quotation marks omitted)).

Defendants conjecture that the contents of the Routine as performed on The Kate Smith Hour are unknown, as are Abbott and Costello’s rights to the Routine in relation to The Kate Smith Hour, where the duo made regular appearances. (See Tr. 3:13-25; Mem. at 5-6.) However, on a motion to dismiss, all that is required is that Plaintiffs allege facts that allow this Court to draw a reasonable inference in Plaintiffs favor. See N.J. Carpenters Health Fund, 709 F.3d at 119. Accordingly, the radio broadcast

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of the Routine did not constitute a publication and did not divest Abbott and Costello of their common law copyright in the Routine.

2. Assignment of the Common Law Copyright in the Routine to UPC

A valid assignment of statutory copyright requires a writing, Martha Graham, 380 F.3d at 643 (citing 17 U.S.C. § 204(a)); Jasper v. Bovina Music, Inc., 314 F.3d 42, 46-47 (2d Cir. 2002). However, courts in this Circuit “have ruled that assignments of common law copyright need not be in writing.” See id. (citing Houghton Mifflin Co. v. Stackpole Sons, Inc., 104 F.2d 306, 311 (2d Cir. 1939) (finding that German possession of Adolf Hitler’s Mein Kampf manuscript sufficed to imply assignment of common law copyright)); Epoch Producing Corp. v. Killiam Shows, Inc., 522 F.2d 737, 747 (2d Cir. 1975) (noting that assignment need not be in writing) (citing Dave Grossman Designs, Inc. v. Bortin, 347 F. Supp. 1150, 1154 (N.D. 111. 1972)); see also Siegel v. Warner Bros. Entm’t. Inc., 658 F. Supp. 2d 1036, 1086 (C.D. Cal. 2009) (“[D]uring the time the 1909 Act was in effect, at common law, a copyright was capable of assignment so as to completely divest the author of his rights, ‘without the necessity of observing any formalities.’” (quoting Urantia Foundation v. Maaherra, 114 F.3d 955, 960 (9th Cir. 1997))). Thus, “[t]he assignee of an author’s common law copyright might by virtue of such assignment, claim statutory copyright.” Siegel, 658 F. Supp. 2d at 1085. Furthermore, such an assignment could be oral or could be implied from the parties’ conduct. See id. (concluding

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that agreements and actions can indicate an assignment of the initial and renewal copyright term) (citing Jerry Vogel Music Co. v. Warner Bros., Inc., 535 F. Supp. 172 (S.D.N.Y. 1982); Van Cleef & Arpels, Inc. v. Schechter, 308 F. Supp. 674 (S.D.N.Y. 1969)).

According to Plaintiffs, Abbot and Costello “granted their pre-existing common law copyright in Who’s on First to UPC.” (Opp’n at 9.) As alleged by Plaintiffs, “Paragraph Fifth” of the November 1940 Agreement between UPC and the duo provides:

The Artists agree 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 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.

(Rachman Decl. Ex. A at 5 (emphasis added).) The contract language, together with UPC’s subsequent registration of the copyrights for One Night and, later The Naughty Nineties, constitutes an implied assignment of the initial copyright from Abbott and Costello. See Siegel, 658 F. Supp. 2d at 1086 (“Although the words ‘assign’ or ‘transfer do not appear in the ... agreement, such an intent was demonstrated by other language contained in

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the agreement .... Such expressed receipt of the ‘original’ material in question and the ability to license that material is not the language used to describe the recipient of a mere license to the material in question, but as one of an assignee.”) Furthermore, for Abbott and Costello not to register a copyright to the Routine as performed in One Night and The Naughty Nineties after executing the November 1940 contract is consistent with an assignment of the copyright to UPC. (See Opp’n at 17-18.)

Defendants contend that Abbott and Costello did not assign or grant UPC all of their rights in the Routine, but rather gave UPC a license. (See Mem. at 14.) Defendants support their argument with contractual language stating that Abbott and Costello “reserve[d] the right to use on the radio and in person appearances authorized under the terms of this agreement.” (Rachman Decl., Ex. A at 5; Tr. at 14:14-16:8.) Defendants also argue that “Abbott and Costello’s personal registration of the script of the 1944 Radio Version fortifies the conclusion that no ownership of the Routine or of other preexisting [Abbott and Costello] routines had vested in Universal Studios.” (Mem. at 14-15; Tr. at 14:16-15:19, 32:17-33:1.)

The language of the November 1940 contract does not explicitly state that Abbott and Costello were keeping ownership of the copyright. (See Rachman Decl., Ex. A at 5-6.) Retaining a “right to use” material is not the equivalent of retaining a copyright. See Jim Henson Prods., Inc. v. John T. Brady & Assocs., 16 F. Supp. 2d 259, 277 (S.D.N.Y. 1997). Courts in this District have contemplated this difference, noting that “there [i]s

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the strongest presumption that even when an author transferred the copyright in a work in which a character was fully delineated, the author retained the right to use the character in sequels or other works.” Id.

Defendants also attempt to introduce a purported 1944 copyright registration of an unspecified “Abbott and Costello Baseball Routine,” made in the name of the artists, as proof of behavior inconsistent with an assignment of the copyright to UPC. (Lawless Decl., Ex. B; Tr. at 18:5-22., 34:25-35:2.) Even if this Court were to take judicial notice of the purported 1944 Copyright Registration, its existence does not render Plaintiffs’ factual allegations implausible. As this Court noted during oral argument, Abbott and Costello could have mistakenly believed they owned the copyright to the Routine when (and if) they registered the Routine in 1944, even though they gave up the copyright ownership with the November 1940 Agreement. (See Tr. at 19:5-12.) As this Court must accept the Amended Complaint’s factual allegations as true and draw all reasonable inferences in the non-moving party’s favor, it is certainly plausible and is sufficiently alleged that Abbott and Costello assigned their common law copyright in the Routine to UPC. See N.J. Carpenters Health Fund, 709 F.3d at 119.

3. First Publication in a Derivative Work, the 1940 Film, One Night in the Tropics

As previously noted, “publication occurs when by consent of the copyright owner, the original or tangible copies of a work are sold, leased, loaned, given away, or

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otherwise made available to the general public . . . .” Shoptalk, 168 F.3d at 590 (quoting Bartok v. Boosey & Hawkes, Inc., 523 F.2d 941, 945 (2d Cir. 1975) (internal quotations omitted)). Release of a motion picture is indeed a well-recognized form of publication for purposes of copyright law. See, e.g., Richlin v. Metro-Goldwyn-Mayer Pictures, Inc., 531 F.3d 962, 972 (9th Cir. 2008) (finding that an unpublished movie treatment was “published by virtue of the release and distribution of the Motion Picture” based upon that treatment).7 In this case, One Night and The Naughty Nineties constitute publications of derivative works. Derivative works are “[c]ompilations or abridgments, adaptations, arrangements dramatizations, translations, or other versions of works in the public domain or of copyrighted works.” Shoptalk, 168 F.3d at 591.

When a previously unpublished work is “embodied in a [derivative] motion picture, so much of the [underlying work] as is disclosed in the motion picture is published when the motion picture is published.” Shoptalk, 168 F.3d at 592. Therefore, when, as Plaintiffs allege, UPC released One Night in 1940 for public consumption, see id., it was also “the first time that [the Routine] was published.” (Opp’n at 9; Am. Compl. ¶ 42).

Viewing the alleged facts in the light most favorable to the Plaintiffs, UPC’s registration of the initial copyrights

7. Neither Plaintiffs’ nor Defendants’ briefing explicitly addressed the underlying common law copyright in the 1938 broadcast of the Routine and the effects of publication upon the common law protection.

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in One Night in its name was “therefore the first time that it obtained [statutory] copyright under the 1909 Act[,] upon UPC’s registration with the Copyright Office.” (Opp’n at 9; Am. Compl. ¶ 42). Specifically, the portion of the pre-existing Routine published in One Night was covered by the copyrights owned and registered by UPC. See Shoptalk, 168 F.3d at 592. The publication of the Routine within the film, therefore, extinguished whatever common law copyright Abbott and Costello had in the unpublished version of the Routine and had later assigned to UPC. See Shoptalk, 168 F.3d 586, 590, 591-92 (2d Cir. 1999) (holding that “because ‘a single work cannot be protected from copying under both federal and state law”’ simultaneously, “the securing of a statutory copyright, either by general publication with a proper notice or by registration of the work, ended the common-law protection”) (quoting Roy Exp., 672 F.2d 1095, 1101 n.13 (2d Cir. 1982)); see also, Sanga Music, Inc. v. EMI Blackwood Music, Inc., 55 F.3d 756, 758 (2d Cir. 1995).

4. Portions of the Routine Covered by the One Night and the Naughty Nineties Copyrights

Under the 1909 Act, “derivative works are explicitly included in the subject matter of copyright by the 1909 Copyright Act.” Tempo Music, Inc. v. Famous Music Corp., 838 F. Supp. 162, 168 (S.D.N.Y. 1993) (citing 17 U.S.C. § 7). However, to extend protection to derivative works, “[f]irst, the original aspects of a derivative work must be more than trivial. Second, the scope of protection afforded a derivative work must reflect the degree to

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which it relies on preexisting material and must not in any way affect the scope of any copyright protection in that preexisting material.” Id. at 167-168 (citing Durham Indus., Inc. v. Tomy Corp., 630 F.2d 905, 909 (2d Cir. 1980); 17 U.S.C. § 7). “Absent a genuine difference between the underlying work of art and the copy of it for which protection is sought, the public interest in promoting progress in the arts—indeed, the constitutional demand ... could hardly be served.” Id. at 170.

Defendants concede that Plaintiffs have established a chain of title “to the newly created material” added to the Routine in One Night that differed from the Kate Smith Hour performance. (See Tr. at 27:19-25.) However, Defendants argue that the original aspects of the derivative work—the version of the Routine in One Night—are trivial. (See Mem. at 9-10). Because the Routine did not change substantially between the 1938 and 1940 performances, according to Defendants, the Routine remained protected by either the underlying copyright in the Routine or UPC’s copyright registration of One Night only “for the initial term of copyright through 1968 ....” (Mem. at 9, 15.) Defendants contend that after 1968 Abbott and Costello’s heirs were required to register a renewal of the copyright to the Routine. (Id. at 15.) Given the plausible allegation that Abbott and Costello assigned their common law copyright in the Routine to UPC with the 1940 Agreement, Defendants argument that the duo’s heirs had to register a renewal of the copyright is unavailing.

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Because as much of the 1938 Routine as was disclosed in the motion picture was published when the motion picture was published, and because the law treats motion pictures as a unitary works, the copyrights in One Night and The Naughty Nineties that UPC registered “merged” the Routine with the films. See 16 Casa Duse, LLC v. Merkin, 791 F.3d 247, 257-58 (2d Cir. 2015) (holding that because “[f]ilmmaking is a collaborative process typically involving artistic contributions from large numbers of people,” statutory copyright in the film itself could be undermined if “copyright subsisted separately in each of their contributions to the completed film” (citing Richlin, 531 F.3d at 975 (“A motion picture is a work to which many contribute; however, those contributions ultimately merge to create a unitary whole.”))); see also Garcia v. Google, Inc., 786 F.3d 733, 743 (9th Cir. 2015) (“Untangling the complex, difficult-to-access, and often phantom chain of title to tens, hundreds, or even thousands of standalone copyrights [in a film] is a task that could tie the distribution chain in knots.”). Thus, Plaintiffs have sufficiently alleged a continuous chain of title encompassing the Routine.

B. Infringing Use

The second element of a copyright infringement claim that Plaintiffs must allege is that Defendants “cop[ied] constituent elements of the work that are original.” Perrin, 2009 U.S. Dist. LEXIS 60506, 2009 WL 855693, at *4. “To demonstrate unauthorized copying, the plaintiff must first ‘show that his work was actually copied’; second, he must establish ‘substantial similarity’ or that ‘the copying amounts to an improper or unlawful

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appropriation.’” Cooley v. Penguin Grp. (USA) Inc., 31 F. Supp. 3d 599, 605-06 (S.D.N.Y. 2014), as corrected (July 14, 2014) (quoting Tufenkian Import/Export Ventures, Inc. v. Einstein Moomjy, Inc., 338 F.3d 127, 131 (2d Cir. 2003)) (internal quotation marks omitted)).

Here, Defendants concede that they use part of the Routine in Hand to God, characterizing the use as “part of a sophisticated artistic expression.” (Mem. at 2.) Specifically, Jason, the play’s shy and repressed main character, finds a creative escape from his religious small-town life through his hand sock-puppet, named Tyrone. (See Am. Compl. ¶ 58.) Initially, Jason used Tyrone for his church’s “Christian Puppet Minstry,” led by his mother. (See id. ¶ 61 (citing Marilyn Stasio, Broadway Review: Hand to God, Variety (Apr. 7, 2015), http://variety.com/2015/legit/ reviews/hand-to-god-review-broadway-1201467612/ .)) Over the course of the play, Tyrone, the puppet, begins to develop a life of its own, possibly due to demonic possession. (See Mem. at 4.) About fifteen minutes into the play, Jason attempts to impress his crush, Jessica, by performing about one minute and seven seconds of the Routine, with Tyrone as Costello and Jason as Abbott. (See Am. Compl. ¶¶ 65-66, 75.) Impressed, Jessica asks Jason if he made up the dialogue himself, and he says “yes.” (See id.) The audience is intended to recognize the famous Abbott and Costello sketch and find humor when Tyrone, the puppet, calls Jason a liar and tells Jessica that the sketch “is a ‘famous routine from the Fifties.’” (See id. at 64, Ex. 5 at 22-24; Mem. at 3.) The puppet proceeds to insult Jessica, saying, “You’d know that if you weren’t so stupid,” and then exposes Jason’s

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feelings for Jessica. (Mem. at 3; Am. Compl. Ex. 5 at 24 (“It doesn’t matter because he thinks you’re hot.”).) Providing a contrast with the soft-spoken Jason, the puppet Tyrone’s outrageous and subversive behavior escalates over the course of the play, and its post-Routine outburst provides a starting point for the gradual exposure of the darker side of Jason’s personality. (See Mem. at 3-4.)

1. Fair Use Defense

Given Defendants’ concession that they used part of the Routine, as performed in One Night and The Naughty Nineties, the relevant inquiry is whether the scene in Hand to God is nonetheless a noninfringing “fair use” of the Routine.

Congress passed the Copyright Act “‘[t]o promote the Progress of Science and useful Arts,’ U.S. Const, art. I, § 8, cl. 8, ‘by granting authors a limited monopoly over (and thus the opportunity to profit from) the dissemination of their original works of authorship.’” BWP Media USA, Inc. v. Gossip Cop Media, LLC, 87 F. Supp. 3d 499, 504-05 (S.D.N.Y. 2015) (citing Authors Guild, Inc. v. HathiTrust, 755 F.3d 87, 95 (2d Cir. 2014)). However, Congress also recognized that giving authors total control over their own works might not always expand public knowledge, but in fact limit it. See Authors Guild v. Google, Inc., 804 F.3d 202, 212 (2d Cir. 2015). Thus, the doctrine of fair use developed, and was eventually reflected in § 107 of the Copyright Act of 1976, authorizing the public to draw upon copyrighted materials without the permission of

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the copyright holder in certain circumstances. See BWP Media USA, 87 F. Supp. 3d at 504-05.8

Determining fair use is “an open-ended and context-sensitive inquiry,” id. (internal quotations omitted), requiring this Court to weigh four nonexclusive factors to determine whether a given use is fair:





8. As to whether the fair use inquiry is appropriate for a motion to dismiss, under certain circumstances, it is sometimes possible to resolve this mixed question of law and fact at this stage of the proceedings. BWP Media USA, Inc., 87 F. Supp. 3d at 505. In such circumstances, “the only two pieces of evidence needed to decide the question of fair use . . . are the original version and the allegedly infringing work.” Id. (internal quotations omitted); see also Adjmi v. DLT Entm’t Ltd., 97 F. Supp. 3d 512, 527 (S.D.N.Y. 2015), appeal withdrawn (June 25, 2015) (“Courts in this Circuit have resolved motions to dismiss on fair use grounds in this way: comparing the original work to an alleged parody, in light of applicable law.”).

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17 U.S.C. § 107. It is well-established in this Circuit that fair use analysis always “calls for a case-by-case analysis.” Bill Graham Archives, LLC. v. Dorling Kindersley Ltd., 386 F. Supp. 2d 324, 328 (S.D.N.Y. 2005), aff’d sub nom. Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605 (2d Cir. 2006) (internal quotation marks omitted) (quoting Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 577, 114 S. Ct. 1164, 127 L. Ed. 2d 500 (1994)).

a. The Nature of the Copyrighted Work

“[T]he nature of the copyrighted work[,] focuses on the value of the materials used.” Adjmi, 97 F. Supp. 3d at 532 (internal quotation marks omitted). This factor distinguishes between creative or factual original works. See id. While both types of work are covered by copyright protection, creative works are “closer to the heart of copyright.” Id.

The Routine as performed in One Night and The Naughty Nineties is clearly a creative work. Indeed, it has reached iconic status as Time magazine’s “Best Comedy Routine of the Twentieth Century” in 1999. (See Am. Compl. ¶¶ 36-39.) The instantly recognizable nature of the Routine is further highlighted by the American Film Institute’s designation of only one line of the play, “Who’s on first?” as one of the “100 Greatest Movie Quotes of All Time.” (See id. ¶ 38.) In fact, Tyrone, the sock puppet, acknowledges how well-known the Routine is when he says to Jessica, “You’d know [Jason didn’t make it up] if you weren’t so stupid.” (Am. Compl., Ex. 5 at 23.) Overall, this factor weighs in favor of the Plaintiffs, but “assumes

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less importance in the overall fair use analysis relative to the other three factors.” See Adjmi, 97 F. Supp. 3d at 532; Cariou, 714 F.3d at 710 (citing Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605, 612 (2d Cir. 2006)).

b. The Amount and Substantiality of the Portion Used in Relation to the Copyrighted Work

Another statutory fair use factor considers “whether ‘the amount and substantiality of the portion used in relation to the copyrighted work as a whole’ ... are reasonable in relation to the purpose of the copying.” Adjmi, 97 F. Supp. 3d at 532-33 (quoting 17 U.S.C. § 107(3); see also Campbell, 510 U.S. at 586). Courts in this Circuit “consider the proportion of the original work used, and not how much of the secondary work comprises the original.” Cariou, 714 F.3d at 710. Furthermore, this factor employs a “sliding scale: the larger the volume (or the greater importance of the original taken), the less likely the taking will qualify as a fair use.” Adjmi, 97 F. Supp. 3d at 533.

The play Hand to God runs for one hour and fifty-five minutes. According to Plaintiffs, the play uses about one minute and seven seconds of the Routine. (Am. Compl. ¶ 66.) The Routine performed in One Night runs about three minutes, while The Naughty Nineties performance lasts almost nine minutes. (Mem. at 21; Lawless Decl., Ex. C). Defendants use a hybrid of the first thirty-seven seconds of One Night and the first minute and six seconds

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of the Routine as performed in The Naughty Nineties.9 (Am. Comp. ¶ 66.) While Plaintiffs argue that the amount taken is substantial, the number of minutes used is not the only consideration when assessing the third factor. As the Adjmi court noted, “the greater the importance of the original taken [], the less likely the taking will qualify as a fair use.” Adjmi, 97 F. Supp. 3d at 533.

“If a challenged work appropriates what amounts to ‘the heart’ of an original work, even if only in a few words, then such an appropriation is substantial for purposes of the fair use inquiry.” Castle Rock Entm’t v. Carol Pub. Grp., Inc., 955 F. Supp. 260, 269 (S.D.N.Y. 1997), aff’d sub nom. Castle Rock Entm’t, Inc. v. Carol Pub. Grp., Inc., 150 F.3d 132 (2d Cir. 1998) (citing Harper & Row Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 564, 105 S. Ct. 2218, 85 L. Ed. 2d 588 (1985)). The fact that even only one line of the play, “Who’s on first?” is instantly recognizable, (see Am. Compl. ¶ 38.), and that Defendants use more than merely “the introductory premise” of the Routine, (see Mem. at 21.), tips this factor slightly in favor of the Plaintiffs. However, the highly transformative nature of the new use ultimately outweighs this comparatively less important factor. Adjmi, 97 F. Supp. 3d at 534.

9. Plaintiffs allege that Hand to God “uses about 25% of the entire [R]outine from the 1940 Motion Picture,” One Night, and “about 20% of the entire routine from the 1945 Motion Picture[,]” The Naughty Nineties. (Am. Comp. ¶ 66.)

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c. The Effect of the Use Upon the Potential Market for or Value of the Copyrighted Work

Another statutory factor of the fair use analysis looks to “the effect of the use upon the potential market for or value of the copyrighted work.” 17 U.S.C. § 107(4). “The copyright law is primary concerned with protecting the ability of a copyright holder to exploit the market for his work. Use of a copyrighted work which does not usurp the market for the copyrighted work leans the fourth factor favorably towards fair use.” Bill Graham Archives, LLC. v. Dorling Kindersley Ltd. (Bill Graham Archives I), 386 F. Supp. 2d 324, 331 (S.D.N.Y. 2005) (citing Campbell, 510 U.S. at 593), aff’d sub nom. Bill Graham Archives v. Dorling Kindersley Ltd. (Bill Graham Archives II), 448 F.3d 605 (2d Cir. 2006).

Plaintiffs’ argue that Defendants’ use of part of the Routine without paying any fees diminishes its’ potential licensing and royalty market. (Opp’n at 24). However, this factor applies mainly to the market for the original work. See Cariou, 714 F.3d at 708 (“[T]he application of this factor does not focus principally on the question of damage to Cariou’s derivative market.”). It is unlikely that a reasonable observer of the new work would find that Jason and his puppet’s reenactment of the Routine could usurp the market for the original Abbott and Costello performance of the Routine. See Bill Graham Archives I, 386 F. Supp. 2d at 331. Furthermore, Defendants’ transformative use of the Routine could arguably broaden the market for the original work, as it exposes a new

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audience of viewers to the work of the classic American comedy duo. See Cariou, 714 F.3d at 708 (“Our court has concluded that an accused infringer has usurped the market for copyrighted works, including the derivative market, where the infringer’s target audience and the nature of the infringing content is the same as the original.”) This factor, therefore, weighs in favor of the defendants. Cariou, 714 F.3d at 708.

d. The Purpose and Character of the Allegedly Infringing Use

The determinative statutory factor in this fair use inquiry, which has been described as “[t]he heart of the fair use inquiry,” Cariou v. Prince, 714 F.3d 694, 705 (2d Cir. 2013), cert. denied, 134 S. Ct. 618, 187 L. Ed. 2d 411 (2013), (alterations in original) (quoting Blanch v. Koons, 467 F.3d 244, 251 (2d Cir. 2006)) (internal quotation marks omitted), examines the purpose and character of the allegedly infringing work. See Adjmi, 97 F. Supp. 3d at 529. Hand to God is an artistic work with a commercial purpose because “the user stands to profit” from use of the Routine without paying licensing fees—this weighs against fair use. See id.; BWP Media USA, 87 F. Supp. 3d at 506 (“The greater the private economic rewards reaped by the secondary user (to the exclusion of broader public benefits), the more likely the first factor will favor the copyright holder and the less likely the use will be considered fair.”). As Plaintiffs note, the scene using the Routine is highlighted as part of an online video clip to promote the show and sell tickets. (See Am. Compl. ¶ 69.) Defendants made an affirmative

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decision to use that particular clip in promoting the play because it is representative of its plot and “specifically mentioned in many articles and reviews of the play.” (Id.) “However, the Supreme Court has discounted the force of commerciality in applying a fair use analysis, noting ‘no man but a blockhead ever wrote, except for money.’” Kane v. Comedy Partners, No. 00 CIV. 158, 2003 U.S. Dist. LEXIS 18513, 2003 WL 22383387, at *3 (S.D.N.Y. Oct. 16, 2003) (citing Campbell, 510 U.S. at 584), aff’d, 98 F. App’x 73 (2d Cir. 2004). Therefore, the for-profit secondary use is not determinative as to this statutory factor.

Rather, the heart of the “purpose and character” inquiry is whether the new work “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.” Adjmi, 97 F. Supp. 3d at 529 (quoting Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 579, 114 S. Ct. 1164, 127 L. Ed. 2d 500 (1994); see also Castle Rock Entm ‘t. Inc. v. Carol Publ’g Grp. Inc., 150 F.3d 132, 141 (2d Cir. 1998)). That is, whether the use of the original is “transformative,” id., based on a “reasonable perception” of the new work. Cariou, 714 F.3d at 707. “The use must be productive and must employ the quoted matter in a different manner or for a different purpose from the original.” Blanch v. Koons, 396 F. Supp. 2d 476, 480 (S.D.N.Y. 2005) (quotation marks omitted) (quoting Pierre Leval, Toward a Fair Use Standard, 103 HarV. L. reV. 1105, 1111 (1990)), aff’d, 467 F.3d 244 (2d Cir. 2006).

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The Second Circuit has specifically rejected the contention that commentary is necessary to the fair use defense, holding that “[f]he law imposes no requirement that a work comment on the original or its author in order to be considered transformative.” Cariou, 714 F.3d at 706. Courts have found that use of the original work, “in furtherance of the creation of a distinct visual aesthetic and overall mood” for the audience, is transformative. See Sandoval v. New Line Cinema Corp., 973 F. Supp. 409, 413 (S.D.N.Y. 1997) aff’d, 147 F.3d 215 (2d Cir. 1998) (“The use of plaintiff’s Photographs was transformative, in the sense that defendants used the visual images created in plaintiffs work in furtherance of the creation of a distinct visual aesthetic and overall mood for the moviegoer watching the scene in the killer’s apartment.”). When a work is transformative, it deserves protection so that “the goal of copyright, to promote science and the arts, is generally furthered.” Blanch, 396 F. Supp 2d at 480 (citing Campbell, 510 U.S. at 579; Leval, supra at 1111).

Although Plaintiffs contend that Defendants’ use of the Routine does not “add[] anything materially new or provide[] a different aesthetic,” and claim that the actor playing Jason “merely re-enact[s] the [R]outine as Abbot and Costello performed it,” the tone of the new performance is markedly different. (See Opp’n at 21.) Hand to God uses the Routine to create context and “a background for the ever more sinister character development of Tyrone, the alter-ego sock puppet.” (Mem. at 20.) On the other hand, simply because the Routine occurs in a different time period, a different setting, and between a teenage boy and his sock puppet does not necessarily make the Routine’s

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use transformative. See Adjmi, 97 F. Supp. 3d at 530 (“It is hardly parodic to repeat [the] same exercise . . . just because society and the characters have aged.”).

It is the performance through the anti-hero puppet, Tyrone, that, according to Defendants, creates new aesthetics and understandings about the relationship between horror and comedy that are absent from Abbott and Costello’s performances of the Routine in One Night and The Naughty Nineties. See Cariou, 714 F.3d at 706. (See also Mem. at 4 (citing Jason Zinoman, Hand to God Melds Gore and Giggles, Each Often Elicited by a Puppet, N.Y. TIMES, May 26, 2015, http://www.nytimes.com/2015/05/27/theater/theaterspecial/hand-to-god-melds-gore-and-giggles-each-often-elicited-by-a-puppet.html?_r=0 ).) Whereas the original Routine involved two actors whose performance falls in the vaudeville genre, Hand to God has only one actor performing the Routine in order to illustrate a larger point. The contrast between Jason’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 town in the Bible Belt. Thus, Defendants’ use of part of the Routine is not an attempt to usurp plaintiff’s material in order to “avoid the drudgery in working up something fresh.” Campbell, 510 U.S. at 580. Nor is the original performance of the Routine “merely repackaged or republished.” Authors Guild, Inc. v. HathiTrust, 755 F.3d 87, 97 (2d Cir. 2014) (quoting Leval, supra at 1111).

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Furthermore, Plaintiffs’ contention that “the scene in the Play is performed ... for the same exact purpose—for audience laughs”—cannot defeat the transformative use argument. (See Opp’n at 21; Tr. at 53:21-54:7.)10 While the Routine, as performed in the play, also results in comic relief for the audience, it does so for reasons different from why audiences found the original sketch humorous. (See Mem. at 19; Tr. at 29: 7-19.) Tyrone, the sock puppet, breaks the “fourth wall” with the audience when he says to Jessica, “You’d know [Jason didn’t make the Routine up] if you weren’t so stupid,” sharing with them an inside joke. (Am. Compl., Ex. 5 at 23.) The audience laughs at Jason’s lie, not, as Plaintiffs claim, simply the words of the Routine itself. See HathiTrust, 755 F.3d at 96 (“Added value or utility is not the test: a transformative work is one that serves a new and different function from the original work and is not a substitute for it.”). For the lie to be apparent, the play requires that the audience be able to recognize the original source of Jason’s sock puppet performance. See Authors Guild v. Google, Inc., 804 F.3d 202, 215 (2d Cir. 2015) (“A taking from another author’s work for the purpose of making points that have

10. During Oral Argument, Plaintiffs shed further light on their argument:

Mr. Rachman: [The Routine] is performed by Jason and his puppet for the very purpose of eliciting laughs, which is the purpose of that original work, and it creates those laughs in the play.

The Court: I have never heard an argument that how this is the same [is] because it was funny then and it is funny now. That is not the analysis. (Tr. at 53:21-54:2.)

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no bearing on the original may well be fair use, but the taker would need to show a justification.”). This statutory factor, therefore, weighs strongly in favor of Defendants. “The more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use.” Cariou, 714 F.3d at 708 (citing Campbell, 510 U.S. at 579).

Based upon the allegations in the Amended Complaint and the materials incorporated by reference therein, Plaintiffs, therefore, fail to state a claim upon which relief can be granted. Defendants’ motion to dismiss Plaintiffs’ federal claim of direct infringement is therefore GRANTED.11

II. Plaintiffs’ New York Common Law Copyright Infringement Claims

Plaintiffs argue that to the extent “all pre-1972 radio broadcast performances” of the Routine remain unpublished, they remain protected by New York’s common law copyright. (See Opp’n at 25; Am. Compl. ¶ 63.) However, this Circuit has held that “because ‘a single work cannot be protected from copying under both federal and state law at the same time,’... where the author of a previously unpublished work consented to its inclusion in a published collection, that publication extinguished the common-law copyright in the underlying work.”

11. Because Defendants have made a showing of fair use to defeat Plaintiffs’ direct infringement claim, this Court need not consider Plaintiffs’ federal vicarious and contributory infringement claims.

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Shoptalk, 168 F.3d at 591 (quoting Roy Exp., 672 F.2d at 1101 n. 13, and then citing Sanga Music, Inc., 55 F.3d at 758). Therefore, Defendants’ motion to dismiss Plaintiffs’ common law infringement claims is also GRANTED.

CONCLUSION

Plaintiffs’ federal and New York common law copyright claims are DISMISSED. Because Plaintiffs have insufficiently alleged a copyright infringement by Defendants of the Abbott and Costello Routine, the Complaint doesn’t get past first base.

The Clerk of Court is directed to close the motion at ECF No. 55.

Dated: New York, New York December 17, 2015

SO ORDERED.

/s/ George B. Daniels GEORGE B. DANIELSUnited States District Judge

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APPENDIX D — ORDER OF THE UNITED STATES COURT OF APPEALS FOR THE SECOND

CIRCUIT, DATED DECEMBER 20, 2016


Docket No. 16-134

At a stated term of the United States Court of Appeals for the Second Circuit, held at the Thurgood Marshall United States Courthouse, 40 Foley Square, in the City of New York, on the 20th day of December, two thousand sixteen.



v.






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Defendants.

ORDER

Appellants, TCA Television Corp., Hi Neighbor, and Diana Abbott Colton, filed a petition for panel rehearing, or, in the alternative, for rehearing en banc. The panel that determined the appeal has considered the request for panel rehearing, and the active members of the Court have considered the request for rehearing en banc.

IT IS HEREBY ORDERED that the petition is denied.

FOR THE COURT:Catherine O’Hagan Wolfe, Clerk

/s/ Catherine O’Hagan Wolfe

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APPENDIX E — FEDERAL STATUTES

EXCERPTS AS ENACTED, COPYRIGHT ACT OF 1909, 35 STAT. 1075 (1909).

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Sec. 3. That the copyright provided by this Act shall protect all the copyrightable component parts of the work copyrighted, and all matter therein in which copyright is already subsisting, but without extending the duration or scope of such copyright. The copyright upon composite works or periodicals shall give to the proprietor thereof all the rights in respect thereto which he would have if each part were individually copyrighted under this Act.

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Sec. 5. That the application for registration shall specify to which of the following classes the work in which copyright is claimed belongs:

(a) Books, including composite and cyclopedic works, directories, gazetteers, and other compilations;

(b) Periodicals, including newspapers;

(c) Lectures, sermons, addresses, prepared for oral delivery;

(d) Dramatic or dramatico-musical compositions;

(e) Musical compositions;

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(f) Maps;

(g) Works of art; models or designs for works of art;

(h) Reproductions of a work of art;

(i) Drawings or plastic works of a scientific or technical character;

(j) Photographs;

(k) Prints and pictorial illustrations:

Provided, nevertheless., That the above specifications shall not be held to limit the subject-matter of copyright as defined in section four of this Act, nor shall any error in classification invalidate or impair the copyright protection secured under this Act.

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Sec. 7. That no copyright shall subsist in the original text of any work which is the public domain, or in any work which was published in this country or any foreign country prior to the going into effect of this Act and has not been already copyrighted in the United States, or in any publication of the United States Government, or any reprint, in whole or in part, thereof: Provided, however, That the publication or republication by the Government, either separately or in a public document, of any material in which copyright is subsisting shall not be taken to cause any abridgement or annulment of the copyright or

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to authorize any use or appropriation of such copyright material without the consent of the copyright proprietor.

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Sec. 9. That any person entitled thereto by this Act may secure copyright for his work by publication thereof with the notice of copyright required by this Act; and such notice shall be affixed to each copy thereof published or offered for sale in the United States by authority of the copyright proprietor, except in the case of books seeking ad interim protection under section twenty-one of this Act.

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Sec. 11. That copyright may also be had of the works of an author of which copies are not reproduced for sale, by the deposit, with claim of copyright, of one complete copy of such work if it be a lecture or similar production or a dramatic or musical composition; of a photographic print if the work be a photograph; or of a photograph or other identifying reproduction thereof if it be a work of art or a plastic work or drawing. But the privilege of registration of copyright secured hereunder shall not exempt the copyright proprietor from the deposit of copies under sections twelve and thirteen of this Act where the work is later reproduced in copies for sale.

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1912 Amendment to 1909 Copyright Act.

“Sec. 5. That the application for registration shall specify to which of the following classes the work in which copyright is claimed belongs:

“(a) Books, including composite and cyclopedic works, directories, gazetteers, and other compilations;

“(b) Periodicals, including newspapers;

“(c) Lectures, sermons, addresses (prepared for oral delivery);

“(d) Dramatic or dramatico-musical compositions;

“(e) Musical compositions;

“(f) Maps;

“(g) Works of art; models or designs for works of art;

“(h) Reproductions of a work of art;

“(i) Drawings or plastic works of a scientific or technical character;

“(j) Photographs;

“(k) Prints and pictorial illustrations;

“(l) Motion-picture photoplays;

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“(m) Motion pictures other than photoplays:

“Provided, nevertheless, That the above specifications shall not be held to limit the subject matter of copyright as defined in section four of this Act, nor shall any error in classification invalidate or impair the copyright protection secured under this Act.”

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Renewal Provision of Copyright Act of 1909, renumbered in 1947, Codification, 17 U.S.C. § 24 (repealed 1977).

§ 24. Duration; renewal anD extenSion.—The copyright secured by this title shall endure for twenty-eight years from the date of first publication, whether the copyrighted work bears the author’s true name or is published anonymously or under an assumed name: Provided, That in the case of any posthumous work or of any periodical, cyclopedic, or other composite work upon which the copyright was originally secured by the proprietor thereof, or of any work copyrighted by a corporate body (otherwise than as assignee or licensee of the individual author) or by an employer for whom such work is made for hire, the proprietor of such copyright shall be entitled to a renewal and extension of the copyright in such work for the further term of twenty-eight years when application for such renewal and extension shall have been made to the copyright office and duly registered therein within one year prior to the expiration of the original term of copyright—:—And provided further, That in the case of any other copyrighted work, including a contribution

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by an individual author to a periodical or to a cyclopedic or other composite work, the author of such work, if still living, or the widow, widower, or children of the author if the author be not living, or if such author, widow, widower, or children be not living, then the author’s executors, or in the absence of a will, his next of kin shall be entitled to a renewal and extension of the copyright in such work for a further term of twenty-eight years when application for such renewal and extension shall have been made to the copyright office and duly registered therein within one year prior to the expiration of the original term of copyright: And provided further, That in default of the registration of such application for renewal and extension, the copyright in any work shall determine at the expiration of twenty-eight years from first publication.

***

Excerpts of Copyright Act to 1976, Title 17 of United States Code

§ 102 Subject matter of copyright: In general

(a) Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. Works of authorship include the following categories:

(1) literary works;

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(2) musical works, including any accompanying words;

(3) dramatic works, including any accompanying music;

(4) pantomimes and choreographic works;

(5) pictorial, graphic, and sculptural works;

(6) motion pictures and other audiovisual works;

(7) sound recordings; and

(8) architectural works.

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§ 107 Limitations on exclusive rights: Fair use

Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include—


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The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors.

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§ 201 Ownership of Copyright

(d) Transfer of ownership.—

(1) The ownership of a copyright may be transferred in whole or in part by any means of conveyance or by operation of law, and may be bequeathed by will or pass as personal property by the applicable laws of intestate succession.

(2) Any of the exclusive rights comprised in a copyright, including any subdivision of any of the rights specified by section 106, may be transferred as provided by clause (1) and owned separately. The owner of any particular exclusive right is entitled, to the extent of that right, to all of the protection and remedies accorded to the copyright owner by this title.

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***

§ 302 Duration of copyright: Works created on or after January 1, 1978

(a) In general.—Copyright in a work created on or after January 1, 1978, subsists from its creation and, except as provided by the following subsections, endures for a term consisting of the life of the author and 70 years after the author’s death.

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§ 304 Duration of copyright: Subsisting copyrights

(a) Copyrights in their first term on January 1, 1978.—

(1) (A) Any copyright, the first term of which is subsisting on January 1, 1978, shall endure for 28 years from the date it was originally secured.

(B) In the case of—

(i) any posthumous work or of any periodical, cyclopedic, or other composite work upon which the copyright was originally secured by the proprietor thereof, or

(ii) any work copyrighted by a corporate body (otherwise than as assignee or licensee of the individual author) or by an employer for whom such work is made for hire,

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the proprietor of such copyright shall be entitled to a renewal and extension of the copyright in such work for the further term of 67 years.

(C) In the case of any other copyrighted work, including a contribution by an individual author to a periodical or to a cyclopedic or other composite work—

(i) the author of such work, if the author is still living,

(ii) the widow, widower, or children of the author, if the author is not living,

(iii) the author’s executors, if such author, widow, widower, or children are not living, or

(iv) the author’s next of kin, in the absence of a will of the author,

shall be entitled to a renewal and extension of the copyright in such work for a further term of 67 years.

(2) (A) At the expiration of the original term of copyright in a work specified in paragraph (1)(B) of this subsection, the copyright shall endure for a renewed and extended further term of 67 years, which—

(i) if an application to register a claim to such further term has been made to the Copyright Office within 1 year before the expiration of the original term of copyright, and the claim

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is registered, shall vest, upon the beginning of such further term, in the proprietor of the copyright who is entitled to claim the renewal of copyright at the time the application is made; or

(ii) if no such application is made or the claim pursuant to such application is not registered, shall vest, upon the beginning of such further term, in the person or entity that was the proprietor of the copyright as of the last day of the original term of copyright.

(B) At the expiration of the original term of copyright in a work specified in paragraph (1)(C) of this subsection, the copyright shall endure for a renewed and extended further term of 67 years, which—

(i) if an application to register a claim to such further term has been made to the Copyright Office within 1 year before the expiration of the original term of copyright, and the claim is registered, shall vest, upon the beginning of such further term, in any person who is entitled under paragraph (1)(C) to the renewal and extension of the copyright at the time the application is made; or

(ii) if no such application is made or the claim pursuant to such application is not registered, shall vest, upon the beginning of such further term, in any person entitled under paragraph

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(1)(C), as of the last day of the original term of copyright, to the renewal and extension of the copyright.

***

(b) Copyrights in their renewal term at the time of the effective date of the Sonny Bono Copyright Term Extension Act.—Any copyright still in its renewal term at the time that the Sonny Bono Copyright Term Extension Act becomes effective shall have a copyright term of 95 years from the date copyright was originally secured.

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§ 501 Infringement of copyright

(a) Anyone who violates any of the exclusive rights of the copyright owner as provided by sections 106 through 122, or of the author as provided in section 106A(a), or who imports copies or phonorecords into the United States in violation of section 602, is an infringer of the copyright or right of the author, as the case may be. For purposes of this chapter (other than Section 506), any reference to copyright shall be deemed to include the rights conferred by Section 106A(a). As used in this subsection, the term “anyone” includes any State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State acting in his or her official capacity. Any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this title in the same manner and to the same extent as any nongovernmental entity.

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JURISDICTIONAL STATUTES

28 U.S.C. § 1331. Federal question

The district courts shall have original jurisdiction of all civil actions arising under the Constitution, laws, or treaties of the United States.

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28 U.S.C. § 1338 Patents, plant variety protection, copyrights, mask works, designs, trademarks, and unfair competition

(a) The district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to patents, plant variety protection, copyrights and trademarks. No State court shall have jurisdiction over any claim for relief arising under any Act of Congress relating to patents, plant variety protection, or copyrights. For purposes of this subsection, the term “State” includes any State of the United States, the District of Columbia, the Commonwealth of Puerto Rico, the United States Virgin Islands, American Samoa, Guam, and the Northern Mariana Islands.

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APPENDIX F — LETTER FROM THE UNITED STATES COPYRIGHT OFFICE TO EDWIN

KOMEN, ESQ., FILED JULY 31, 2015

UNITED STATES COPYRIGHT OFFICE THE LIBRARY OF CONGRESS

101 Independence Avenue, S.E.Washington, D.C. 20559-6000

May 14, 2002

Edwin Komen, Esq.Cleary & Komen, LLPSuite 200600 Pennsylvania Avenue, S.E.Washington, D.C. 20003

RE: HUSBANDS Control No. 10-600-754-2(C)

Dear Mr. Komen:

I am writing on behalf of the Copyright Office Board of Appeals concerning your appeal of the Office’s refusal to register a renewal claim in the screenplay for the film Husbands. You submitted the renewal claim to the Office on February 26, 1998, on behalf of the heirs of John Cassavetes, author of the screenplay. Before proceeding further, however, I would like to take this opportunity to apologize for the long delay in getting back to you with the Office’s decision. Concerning that decision, because of long-standing registration policy, the Board of Appeals has determined that no renewal registration may be made for the screenplay. The administrative record in this case and the Board’s reasoning underlying its decision follow.

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ADMINISTRATIVE RECORD

I. Initial submission

On February 26, 1998, you submitted two renewal claims for registration: one for the motion picture Husbands in the name of Faces Music, Inc., and one for the Husbands screenplay in the names of Gena Rowlands [widow of the screenplay author John Cassavetes], Nicholas Cassavetes, Alexander Cassavetes and Zoe Cassavetes [children of the deceased screenplay author Cassavetes.] Renewal registration RE 786-355 was made for the motion picture; renewal registration for the screenplay was refused. The Office’s refusal to register was communicated to you by letter dated March 25, 1999, in which supervisory examiner Evelyn Leedy explained that the lack of a separate original registration for the screenplay meant, under Office registration practices, that no separate renewal registration for the screenplay could be placed on record. Ms. Leedy’s letter also noted that any statutory copyright protection for a screenplay such as the one for Husbands must rely on the statutory protection for the motion picture.

II. Your appeal

On August 6, 1999, you submitted a second appeal to the Office’s Board of Appeals.1 Your second appeal

1. Because the Examining Division would merely have confirmed its refusal to register according to the Office’s examining practices, the Register in her discretion allowed you to proceed directly to the second appeal of the refusal to register the screenplay for Husbands.

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submission included biographical material for the deceased screenplay author Cassavetes. You set out in your appeal the history of ownership of the rights in the screenplay, noting that Cassavetes wrote the Husbands screenplay in 1968 as an individual and not as an employee for hire and subsequently transferred [mid-1968] the rights to Faces Music, Inc. There then followed a re-assignment to Cassavetes [later in 1968] and a subsequent re-assignment from Cassavetes to Faces Music, Inc. [1969].2 John Cassavetes died February 3, 1989. Because you maintain that the screenplay in question was authored by Cassavetes as an independent, not-for-hire author, you submitted a renewal registration application for it under the provisions of 17 U.S.C. 304[a][1][C], naming Cassavetes’ widow and children as renewal claimants.

Your appeal argues that copyright protection for the screenplay was secured by original registration for the motion picture in 1970 and that, given the purported original-term copyright for the screenplay, your submission of the renewal claim in the name of the Cassavetes heirs is appropriate. You cite Stewart v. Abend, 495 U.S. 207 (1990) and Fred Fisher Co, Inc. v. Witmark & Sons, 318 U.S. 643 (1943) on renewal rights generally

2. We note that although these transfers of rights in the screenplay were contemporaneously recorded with the Copyright Office, no separate original-term registration for the unpublished screenplay [which under Office regulations administering the provisions of the 1909 Act would have been in class D and would have covered the “acting versions of dramatic works such as plays, radio or television dramas ... motion picture shooting scripts ...”] was made before publication of the motion picture occurred in 1970.

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and for the fact that where the author does not survive into the renewal term, the renewal vests in the statutorily designated classes. You recognize the holding in Batjac Productions, Inc. v. Goodtimes Home Video Corp., 160 F.3d 1223 (9th Cir. 1998) [concerning the motion picture McLintock!] that publication of a motion picture publishes the constituent elements of the motion picture and further note that the Batjac court did not find that the renewal copyright for the McLintock! screenplay would have been automatically merged with any renewal secured for the motion picture as a whole. You go on to cite the lower court decision in the McLintock! case which stated in dictum that the renewal term for the screenplay in McLintock! “would lie with the author’s heirs ... because ... the author of the screenplay died... prior to the expiration of the initial copyright term.” Maljack Productions, Inc. v. UAV Corp., 964 F. Supp. 1416, 1425 (C.D. Cal. 1997).

You analogize the Batjac facts to those surrounding the authorship of the Husbands screenplay. Your argument is that the Husbands screenplay has been properly copyrighted as part of the 1970 copyright registration for the motion picture and that the motion picture registration, in the name of Faces Music, Inc., the assignee of John Cassavetes, protected the independently authored screenplay as well. The distinction you make between the McLintock! screenplay and the Husbands screenplay is that the heirs of the McLintock! screenplay did not file a timely renewal for the screenplay whereas the Cassavetes heirs did.

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You bolster your argument for renewal registration of the Cassavetes-authored screenplay by reference to Goodis v. United Artists Television Inc., 425 F.2d 397 (2d Cir. 1970). There the Second Circuit accorded protection to contributions to a composite work [a story published serially in a magazine] even though the contributions did not carry separate copyright notices and had not been separately registered. The Goodis court extended the protection of the overall composite work to its individual contributions, giving as its reasoning the fact that the individual contribution author had not intended to dedicate his work to the public even in the absence of a separate copyright notice for the contribution and an absence of the act of separate registration. As you also note in your appeal, the Office’s practice has been to register a renewal in contributions to composite works which contributions were not separately registered for their original term of copyright.3

You have also stated that the Office’s refusal to register for renewal the claim of the Cassavetes heirs in the Husbands screenplay will make people unwilling to deal with the widow and children unless the owner of the renewal rights in the motion picture were willing to acknowledge the expiration of its rights in the screenplay for the renewal term, something which you term a “highly unlikely scenario.” You maintain that the Office’s refusal to put the renewal claim on record will deny the widow and

3. This is, indeed, the case as long as the periodical or other composite work was registered in its original term. See Compendium II, Compendium of Copyright Office Practices, sec. 1310.02 (1984), the Office’s manual of registration practices under the 1976 Act.

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children the right to claim royalties for the continued use of the screenplay by the owner of the rights in the derivative motion picture. You urge the Office to reconsider its long-standing policy with respect to registering renewal claims in component parts of a motion picture in order to assure consistency of our practices with case law.

DECISION

The Copyright Office Board of Appeals affirms the Examining Division’s refusal to register a renewal claim in the names of the heirs of John Cassavetes for the screenplay in the motion picture Husbands.

I. Motion picture registration practices under the copyright law of 1909

A. Characteristics of motion picture authorship

The Copyright Office considered a motion picture to be a unified work of authorship for purposes of registration under the 1909 law. The Office’s Compendium I (1973) describes a motion picture as “ordinarily ... embod[ying] a large number of contributions, including those of the author of the story, author of the screenplay, director, editor, cameraman, individual producer, etc. These persons are not regarded as the ‘author’ of the film in the copyright sense.”4 Compendium I. sec. 2.14.3 (III)(a)(2)(1).

4. Although motion picture industry practice, including the recognition of rights in parties contributing to the overall authorship embodied in a motion picture, may have changed over the decades since the Office’s Compendium I was in effect, the Office continues

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Compendium I further states that most motion pictures were works made for hire, with the production company’s being the employer in most cases. Id. at 2.14.3 (III)(a)(2)(2). The Office’s understanding of motion picture authorship was based on then-prevailing industry practices; its recognition of the ownership of motion pictures as works made for hire and motion picture authorship as consisting of contributions or parts, each of which is meant to be joined to other contributions or parts, in order to produce an integrated entity underlies this understanding.

In its administration of the 1909 Copyright Act, the Copyright Office did not consider the authorship of a motion picture to be a composite work, i.e., a work consisting of distinct and separable contributions which do not merge into a unitary whole. Although the 1909 Act contained no definition of “composite work,” case law and scholarly commentary came to accept the definition of a composite work as lacking the common design of a unified entity.5 This understanding of motion picture authorship

to apply its practices for motion picture authorship governed by the 1909 statute consistently as they have been applied in the past in order to assure fair and equitable registration treatment.

5. For a detailed treatment of the development of the concept of composite works, see former Register of Copyrights Barbara Ringer’s Study No. 31 Renewal of Copyright, Copyright Law Revision Studies, issued pursuant to S. Res. 240, 86th Cong., 2d Sess. 131-134 (1961). The Study includes reference to a number of judicial opinions decided during the 1940s and 1950s concerning musical works in which courts described composite works as those works of multiple authorship which nevertheless lack a common design or unity.

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has continued under the Office’s administration of the 1976 Copyright Act. The Copyright Office generally regards a motion picture as a work of authorship which evidences a common design and is meant to exist as an integrated whole. Compendium II, sec. 1317.04[a], in its renewal provisions provides an explicit statement concerning the nature of a motion picture: “Generally a composite work is an original publication relating to a variety of subjects to which a number of different authors have contributed distinguishable and separable selections. Thus, a work by a single author consisting of a collection of his writings is not a composite work. Similarly, a work which is the product of joint authorship and common design, or which consists of elements which have been indistinguishably merged into a single entity, cannot be regarded as composite, e.g., musical compositions, dramas, dramatico-musical works, and motion pictures.”

I point out the 1976 Act’s treatment of the soundtrack of a motion picture, with a soundtrack’s possibly embodied works of authorship such as musical compositions and screenplays, and the Act’s legislative history’s acknowledgment that the soundtrack of a motion picture is explicitly included in the definition of a motion picture H.R. Rep. No. 94-1476, at 56 (1976). Nimmer directly states it: soundtracks are “fully protected by the motion picture copyright.” Nimmer at 2.09[E][1]. Current examining practices of the Motion Picture unit [Motion Picture Authorship (MPAU) 9/15/93], administering the provisions of the current copyright law, provide a definition of “author” of a motion picture: “The authors of a motion picture generally include the producer, director,

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camera operator, editor, screenplay writer, and other individuals who make a copyrightable contribution to the production. Except for the script and musical score, all the elements comprising a motion picture are considered part of a single, integrated work and must be registered as a whole.” This examining practice under the current Act does allow for the registration of a screenplay separate and apart from the registration of the motion picture as a whole. However, even the current [1993] examining practice [MPAU at 2] indicates that examiners should question an application for a feature film or a network television production which is limited to the authorship of the “script” and that examiners should call or write to verify the extent of the claim--this because of the Office’s continuing understanding that a motion picture is generally to be regarded as an integrated, single work and that it is unusual for separate claims in component parts of the motion picture to be submitted.

B. The 1975 regulation re motion picture soundtracks

As previously explained, during the years of the 1909 copyright law the Office considered a motion picture to be an integrated entity but Compendium I stated that the Office “takes no position as to whether copyright in a motion picture covers the integrated sound track portions of the work.” Compendium I at 2.14.1 (III).

In 1975, however, prior to the 1978 effective date of the current Act, the Office issued a regulation [37 C.F.R. 202.15(e) (1975) (removed January 1, 1978)] which

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recognized that “copyright in a motion picture extends to an integrated soundtrack and its copyrightable component parts” and which permitted separate registration for a copyrightable component of a motion picture sound track where the component part was not previously published or registered but only if the motion picture bore a separate copyright notice covering the particular component part. The 1975 regulation, explicitly stated to pertain to applications for registration made after May 12, 1975, also specifically allowed that “applications to register a claim to copyright in a component part of a motion picture soundtrack for the renewal term shall be accepted only if separate registration has first been made for the original term.” [emphasis added]. Thus, although the 1975 regulation is no longer in effect and although the Office’s registration practices under the 1976 Act allow the separate registration of a component part of a motion picture soundtrack [including a screenplay] in the Office’s recognition of the protection of the copyrightable aspects of a soundtrack in a motion picture [17 U.S.C. 101, definition of motion picture], a work first published in 1970 is governed by registration practices as they existed under the 1909 law. Further, even the 1975 regulation, somewhat liberalizing registration with respect to separate works embodied in motion picture soundtracks, disallows the separate renewal registration for the Cassavetes screenplay which had not been registered for an original term of copyright.

II. The Goodis theory and its non-applicability to the Cassavetes screenplay

Goodis involved a short story published in serial segments in a magazine. The magazine carried an overall

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notice in the name of the owner of the copyright in the collective, or composite, work as a whole but did not carry an individual notice for the short story. The owner of the rights in the magazine, the collective work, held only the right of first publication from the story’s author. The Second Circuit held that a copyright notice in the name of the magazine’s owner — only a licensee with respect to the short story — was sufficient to secure a valid copyright on behalf of the author-owner of the rights in the short story. Goodis v. United Artists Television, Inc., 425 F.2d 397, 399 (2d Cir. 1970). Applying principles of equity as well as the liberalized provisions of the 1976 Act not yet in effect at the time of the decision but, in the opinion of the court, already well-known among copyright industries, scholars and the courts, the Second Circuit held that the notice for the magazine as a whole was “more than adequate to apprise any innocent party that he might be infringing another’s copyright” and that “although placing a special notice in the author’s own name on each installment appearing in the magazine would be a more careful practice ...,” the court found that “failure to do so [i.e., use of individual notices] should [not] cause an author to suffer forfeiture.” Id. at 403.

Although your appeal urges renewal registration for the screenplay, the Office finds the Goodis decision inapplicable to the Cassavetes screenplay. As previously explained [I. A., supra], it is the position of the Office that a motion picture has not been regarded as a composite work for registration purposes as was the magazine in Goodis; this position prevents the Office from placing the renewal for the screenplay on the public record. The failure of the screenplay author Cassavetes [or of a party that could have been deemed his agent] to have reserved via registration

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the copyright in the unpublished version of the screenplay [which could have been done contemporaneously with the recordation of the multiple transfer assignments (n. 2, supra)], thus rendering the screenplay’s copyright for purposes of the public registration record separate and apart from the copyright in the motion picture, means that the Office, viewing the motion picture as an integrated entity, cannot now insert into the public record a claim to renewal rights owned by a party different from the owner of record of the rights in the integrated entity, i.e., in the motion picture as a whole.

The Board confirms the Examining Division’s position that, for registration purposes, a motion picture cannot be considered a composite work and, thus, the Office’s analysis of the Cassavetes screenplay proceeds from the viewpoint that the screenplay, not having been segregated as an identifiable work for registration purposes as the subject of a separate original-term registration prior to its incorporation into the published motion picture [n.3, supra] and such separate ownership fact for the screenplay not having been placed on the public record, the screenplay must be treated as an integrated, component part of the overall motion picture.6

6. Although Nimmer states that the Goodis decision left unanswered the question of whether the holding of the umbrella-like protection of a notice in the name of a collective, or composite, work owner protecting an individual contribution extends to other types of works in “which the name appearing in the notice was that of a mere licensee” [Nimmer, at 10.01[C][2], n. 48], we need not consider the unanswered question. Again, because of the works involved — the Goodis magazine considered as consisting of distinct and separate

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III. The medium of fixation

We also address your contention that because the Office has registered renewal claims in contributions to collective, or composite, works where the only original-term registration was that for the collective, or composite, work as a whole, the Office should now, in a similar vein, register the Cassavetes screenplay. You support this position by reference to the fact that the nature of the medium in which authorship is fixed should not affect the rights in that authorship and you cite Shoptalk, Ltd. v. Concorde-New Horizons Corp., 168 F.3d 586 (2d Cir. 1999) in support of the principle. We wholeheartedly add our recognition of that principle and further cite both section 101 of the current Act which defines “fixation” of a work as well as the House Report to the 1976 Act which clarifies that, differing from case law under the 1909 statute that held statutory protection to be dependent upon the medium in which authorship was fixed, no such limitation exists under the 1976 Act and “it makes no difference what the form, manner or medium of fixation may be” regarding the copyright in a work. H.R. Rep. No. 94-1476, at 52 (1976).7

contributions and the Husbands motion picture considered an integrated whole — the consistent registration practices explained above which developed under the 1909 Act recognized a significant difference in the nature of authorship and ownership between the essential composition of a magazine and that of a motion picture.

7. The 1976 Act explicitly rejects the prior case law developed under the 1909 statute which followed the doctrine of White-Smith Publishing Co. v. Apollo Co., 209 U.S. 1 (1908),, which had held that unless the medium of fixation is one from which authorship may be

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The Cassavetes screenplay is, of course, a work governed by the 1909 Act and the case law which developed under it. We need not, however, consider that case law because our refusal to register the screenplay rests not on the differing medium of the work involved in the Goodis case [a story appearing in a print magazine] versus the screenplay work first published as part of the soundtrack of a motion picture. Our refusal, rather, is based on the Office’s classification of a motion picture as an integrated work of authorship requiring the positive step of reserving any separate original-term copyright for an aspect of, or contribution to, the soundtrack in which separate ownership was the case.

IV. Recent case law as it affects renewal registration of the Cassavetes screenplay

A. Stewart v. Abend

The right of a renewal owner in an underlying work to prevent the continued use during the renewal term of a derivative work based upon the underlying work was at issue in Stewart v. Abend, 495 U.S. 207 (1990). The Supreme Court held that the renewal right of an owner who had succeeded to the renewal in an underlying work at the death [prior to the beginning of the renewal term] of the author of the underlying work allowed the renewal owner to demand compliance with his terms for continued exploitation of the derivative work during the renewal term. In Stewart a short story was the subject of statutory

visually perceived, that medium does not constitute a copy of the authorship and, thus, the authorship in such a medium could not be deposited and registered, rendering it non-protectible.

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copyright protection in a situation involving the timely original-term registration of the magazine in which the story had been first published. See n. 3, supra, for the Office’s practice of registering for renewal a contribution to a collective, or composite, work where the only original-term registration is that for the overall collective work.

The underlying story in Stewart was timely renewed by the statutory successor and the renewal registration had for its basis the original-term registration of the magazine in which it was published. Although you cite Stewart generally for it affirmance of previous case law holding that where an author does not survive into the renewal term, the classes indicated in section 24 of the 1909 law — reenacted as section 304 of the 1976 law — succeed to the renewal right, the facts of Stewart are not the facts of the Cassavetes screenplay. Again, the lack of copyright registration for the original term for the screenplay considered by the Office to be authorship intimately intertwined in the integrated whole of the motion picture — which was registered for its original term of copyright — prevents a separate renewal registration for the screenplay which under Office registration practices cannot be said to be analogous to the Stewart v. Abend story which was incorporated not into an integrated, larger whole but into a composite, or collective, work in which the contributions sustained their independent identities.

B. Maljack v. UAV Corp.

Your appeal also cites Batjac Productions, Inc. v. Goodtimes Home Video Corp. and Marybeth Peters,

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Register of Copyrights, 160 F.3d 1223 (9th Cir. 1998) and states that the Ninth Circuit remarked in that opinion that, in order to have preserved a copyright separate and distinct from a published motion picture, the owner of the rights in the screenplay for the motion picture would have had to file a timely renewal which renewal, according to your interpretation, would not have automatically merged with any renewal which may have been secured for the motion picture as a whole. Your appeal notes, however, that this principle was irrelevant in Batjac because the screenplay in question had not been timely renewed. You then, however, cite the lower court opinion in the Batjac litigation Maljack Productions, Inc. v. UAV Corp., 964 F. Supp. 1416 (C.D. Cal. 1997) which you maintain explicitly addressed the question of the rights in an underlying screenplay. You point out Maljack’s statement that “under Stewart the right to seek a renewal term would lie with the author’s heirs, not with plaintiff’s [i.e., the owners of the rights in the published motion picture.]” Maljack at 1425. You also point out footnote 6 in the Maljack opinion supporting the statement that the screenplay in question was one authored independently and in which the rights had been transferred by the screenplay author to Batjac.

We regard the Maljack statement concerning the screenplay rights as lying with the heirs of the author and the statement’s supporting footnote concerning the copyright transfer from author to production company to be dictum: (1) the statement is not necessary to the outcome of the case; (2) the court’s analysis concerning the issues of the publication status of the screenplay and of the required degree of originality with respect to revisions in

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a public domain soundtrack can be sustained in Maljack without adverting to the statement on which you rely; (3) the question of the rights of the heirs of the not-for-hire screenplay was not at issue in the Maljack litigation.

We read this Maljack statement as saying in dictum that, assuming there had been a possibility of seeking a renewal for the screenplay, that possibility would have lain with the heirs of the deceased screenplay author rather than with Batjac. The statement, however, does not provide any guidance on the specific issue of whether the screenplay — unregistered for an original copyright term — embodied in the published motion picture may be separately renewed; the statement merely places the right of renewal with, i.e., assigns standing to, the screenplay author’s heirs in the event a renewal filing were possible.

For the reasons stated in this letter, the Copyright Office Board of Appeals affirms the refusal to register the renewal claim in the Cassavetes screenplay. This decision constitutes final agency action on this matter.

Sincerely,

/s/

Nanette Petruzzelli Chief, Examining Division for the Appeals Board United States Copyright Office

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APPENDIX G — FIRST AMENDED COMPLAINT OF THE UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF NEW YORK, FILED JUNE 8, 2015

UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF NEW YORK

Civil No. 15-cv-4325(GBD)(JCF)

TCA TELEVISION CORP., HI NEIGHBOR AND DIANA ABBOTT COLTON,

Plaintiffs,

v.

KEVIN MCCOLLUM; 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.; ENSEMBLE STUDIO THEATRE INC.; MCC

THEATER; ROBERT ASKINS; HAND TO GOD LLC, AND DOES AND ABC COMPANIES 1-10,

Defendants.

FIRST AMENDED COMPLAINT

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FOR FEDERAL AND NEW YORK COMMON LAW COPYRIGHT INFRINGEMENT

AND INJUNCTIVE RELIEF

JURY TRIAL DEMANDED

Plaintiffs TCA Television Corp. (“TCA”), Hi Neighbor and Diana Abbott Colton (“Colton”) (TCA, Colton and Hi Neighbor are collectively referred to herein as “Plaintiffs”), by and through their undersigned counsel Davis & Gilbert LLP, for their First Amended Complaint (“Complaint”) against the defendants named in this action and described below (collectively referred to herein as the “Defendants”), allege as follows:

NATURE OF ACTION

1. William “Bud” Abbott and Lou Costello (“Abbott & Costello”), one of the most famous comedy duos in American history, are best known for their iconic comedy routine known as “Who’s on First?” Plaintiffs, as heirs to Abbott & Costello, own valid copyrights in Who’s On First? (collectively the “Copyrights”). Plaintiffs bring this action seeking damages and injunctive relief for the Defendants’ infringement of the Federal and common law Copyrights in Who’s on First? that occurs in the script and performances of the Broadway play, Hand to God, and in a video that is being used to promote Hand to God.

2. Defendants are the producers, playwright, and promoters of Hand to God, which features a scene enacting Abbott & Costello’s Who’s on First? routine that

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infringes Plaintiffs’ Copyrights. The routine is currently being performed live onstage eight times per week without license or permission from Plaintiffs.

3. These Defendants are willfully capitalizing on Abbott & Costello’s world-famous reputation and Plaintiffs’ copyrighted works in connection with Hand to God.

4. Defendants are using Plaintiffs’ property and infringing upon their rights despite requests that they cease and desist from such use.

5. Plaintiffs seek damages and attorney’s fees for copyright infringement under the Copyright Act, 17 U.S.C. § 101 et seq., and under New York copyright common law.

THE PARTIES

6. Plaintiff TCA Television Corporation is a California corporation, with its principal place of business in Burbank, California. TCA, which is owned by Lou Costello’s heirs and owns 50% of the Who’s on First? Copyrights (as defined below).

7. Plaintiff Hi Neighbor is a general partnership formed under the laws of the state of California, with its principal place of business in Sherman Oaks, California. Plaintiff Hi Neighbor, which is owned by heirs of Bud Abbott, owns 25% of the Who’s on First? Copyrights.

8. Plaintiff Colton is a resident of Valencia, California. Colton, who is an heir of Bud Abbott, owns 25% of the Who’s on First? Copyrights.

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9. Upon information and belief, Defendant Kevin McCollum (“McCollum”) is located at 8 Barrett Circle Ct., Carmel, New York, 10512. Upon information and belief, McCollum is one of the producers of the infringing Broadway play Hand to God.

10. Upon information and belief, Defendant Broadway Global Ventures (“BGV”) is located at 1441 Broadway, Suite 2301, New York, New York, 10018. Upon information and belief, BGV is one of the producers of the infringing Broadway play Hand to God.

11. Upon information and belief, Defendant CMC is located at Booth Theatre, 222 West 45th Street, New York, New York, 10036. Upon information and belief, CMC is one of the producers of the infringing Broadway play Hand to God.

12. Upon information and belief, Defendant Morris Berchard (“Berchard”) is located at 527 Hudson Street, New York, New York, 10014. Upon information and belief, Berchard is one of the producers of the infringing Broadway play Hand to God.

13. Upon information and belief, Defendant Mariano V. Tolentino Jr. (“Tolentino Jr.”) is located at 8 Mallard Court, Bloomington, Illinois, 61704. Upon information and belief, Tolentino Jr. is one of the producers of the infringing Broadway play Hand to God.

14. Upon information and belief, Defendant Stephanie Kramer (“Kramer”) is located at 829 Park Avenue,

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Apartment 7A, New York, New York, 10021. Upon information and belief, Kramer is one of the producers of the infringing Broadway play Hand to God.

15. Upon information and belief, Defendant LAMS Productions, Inc. (“LAMS”) is located at 156 West 56th Street, Suite 1202, New York, New York, 10019. Upon information and belief, LAMS is one of the producers of the infringing Broadway play Hand to God.

16. Upon information and belief, Defendant DeSimone/Winkler (“DeSimone/Winkler”) is located at 45 Park Drive South, Rye, New York, 10580. Upon information and belief, Desimone/Winkler is one of the producers of the infringing Broadway play Hand to God.

17. Upon information and belief, Defendant Joan Raffe (“Raffe”) is located at 2134 Pacific Boulevard, Atlantic Beach, New York, 11509. Upon information and belief, Raffe is one of the producers of the infringing Broadway play Hand to God.

18. Upon information and belief, Defendant Jhett Tolentino (“Tolentino”) is located at 2134 Pacific Boulevard, Atlantic Beach, New York, 11509. Upon information and belief, Tolentino is one of the producers of the infringing Broadway play Hand to God.

19. Upon information and belief, Defendant Timothy Laczynski (“Laczynski”) is located at 1838 2nd Avenue, New York, New York, 10128. Upon information and belief, Laczynski is one of the producers of the infringing Broadway play Hand to God.

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20. Upon information and belief, Defendant Lily Fan (“Fan”) is located at 530 East 76th Street, Apartment 26E, New York, New York, 10021. Upon information and belief, Fan is one of the producers of the infringing Broadway play Hand to God.

21. Upon information and belief, Defendant Ayal Miodovnik (“Miodovnik”) is located at 181 Morningside Avenue, Apartment 6, New York, New York, 10026. Upon information and belief, Miodovnik is one of the producers of the infringing Broadway play Hand to God.

22. Upon information and belief, Defendant Jam Theatricals Ltd. (“Jam”) is located at 980 North Michigan Avenue #1590, Chicago, IL 60611. Upon information and belief, Jam is one of the producers of the infringing Broadway play Hand to God.

23. Upon information and belief, Defendant Ensemble Studio Theatre Inc. (“Ensemble”) is located at 549 West 52nd Street, New York, NY 10019. Upon information and belief, Ensemble is one of the producers of the infringing Broadway play Hand to God.

24. Upon information and belief, Defendant Manhattan Class Co. Inc. (“MCC”) is located at 231 West 29th Street #303, New York, NY 10001. Upon information and belief, MCC is one of the producers of the infringing Broadway play Hand to God.

25. Upon information and belief, Defendant Robert Askins (“Askins”) is located at Booth Theatre, 222 West 45th

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Street, New York, New York, 10036. Upon information and belief, Askins is the playwright of the infringing Broadway play Hand to God.

26. Upon information and belief, Defendant Hand to God LLC is located at 254 West 54th Street, 15th Floor, New York, New York, 10019. Upon information and belief, Hand to God LLC is a producer, advertiser and/or owner of the infringing Broadway play Hand to God.

27. Plaintiffs are currently ignorant of the true names and capacities of the defendants sued herein as Does and ABC Companies 1 through 10, inclusive, and therefore sue these defendants by such fictitious names. Upon information and belief, these defendants have engaged in direct, vicarious and/or contributory infringement of the Who’s On First? Copyrights, and Plaintiffs will amend this Complaint to allege their true names and capacities when ascertained. Upon information and belief, Defendants Does and ABC Companies 1-10 include individuals and corporations.

JURISDICTION AND VENUE

28. This action arises under the Copyright Act of 1976, 17 U.S.C. §§ 101 et seq. This Court has subject matter jurisdiction over this action pursuant to 28 U.S.C. §§ 1331, 1338(a), and has supplemental jurisdiction over related New York state law claims.

29. Venue is proper in this district pursuant to 28 U.S.C. § 1391(b) and (c) because the events giving rise to Plaintiffs’ claims occurred in this district, and Defendants are subject to personal jurisdiction within this district.

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FACTUAL ALLEGATIONS

Fame of Abbott & Costello and Who’s on First?

30. Abbott & Costello are one of the most famous American comedy duos of the twentieth century. They performed together on stage, radio, television and film from 1935 until 1957.

31. During their partnership of more than twenty years, Abbott & Costello starred in more than thirty-five films, hosted their own half-hour comedy television series, and were ranked among the most popular stars in the United States.

32. On March 24, 1938, Abbott & Costello first performed Who’s on First?, their most famous comedy act, live on the popular radio show The Kate Smith Hour.

33. Who’s on First? revolves around the attempts of Costello (sometimes playing the part of a peanut vendor and sometimes a rookie baseball player) to learn the names of the players of a baseball team from its coach, Abbott. Hilarity soon ensues due to the confusion inherent in the players’ names: first baseman “Who,” the second baseman, “What,” the third baseman, “I Don’t Know,” and so on.

34. Over the following two decades, it is estimated that Abbott & Costello performed Who’s on First? thousands of times.

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35. An April 17, 1947 episode of Abbott & Costello’s radio program, The Abbott & Costello Show, ended with a well-known radio broadcast performance of Who’s On First?, (the “1947 Broadcast”).

36. The Wall Street Journal has called Who’s on First? “[t]he most famous sketch in American comedy history.”

37. In 1999, it was voted Best Comedy Routine of the 20th century by Time Magazine.

38. In 2005, the American Film Institute voted the line “Who’s on first” from The Naughty Nineties as one of the 100 Greatest Movie Quotes of All Time.

39. Abbott & Costello and Who’s On First? are synonymous with baseball. In fact, Abbott & Costello and Who’s On First? are featured in the Baseball Hall of Fame in Cooperstown, New York. A gold record of Who’s On First? has been displayed there since 1956.

40. Since its inception, Who’s on First? has been quoted, parodied and licensed innumerable times, and maintains worldwide recognition and acclaim.

41. The fame of Abbott & Costello together with the fame of Who’s on First? have resulted in invaluable and incalculable good will to the Who’s on First? Copyrights.

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History of the Who’s on First? Copyrights

42. Who’s on First? was first published for purposes of registration pursuant to the 1909 Act in the 1940 Universal Pictures Co. Inc. (“UPC”) film One Night in the Tropics and then later in a more expanded version closer to what we know today in the 1945 UPC film The Naughty Nineties.

43. On November 6, 1940, Abbott & Costello had signed a work-for-hire agreement with UPC, which granted UPC all rights to the duo’s performances of Who’s On First? in One Night in the Tropics and The Naughty Nineties. Accordingly, at that time, all rights to Abbott & Costello’s enactment of Who’s On First? in both films belonged to UPC.

44. UPC registered One Night in the Tropics and The Naughty Nineties with the United States Copyright Office (the “Copyright Office”) under copyright registration numbers LP 10042 (in 1940) and LP 13337 (in 1945), respectively. The original copyright registrations (the “Federal Copyrights”) are attached hereto as Exhibit 1.

45. UPC timely renewed the registrations for both One Night in the Tropics and The Naughty Nineties with the Copyright Office under copyright registrations numbers R 423759 (in 1967) and R 532048 (in 1972), respectively. The copyright renewals for the Federal Copyrights are attached hereto as Exhibit 2.

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46. Under the 1909 Act, the initial renewals were for twenty-eight years after the first twenty-eight years of copyright registration.

47. Under the Copyright Act of 1976 and the Sonny Bono Copyright Term Extension Act, because the application for renewals for One Night in the Tropics and The Naughty Nineties were timely, the renewals were extended to a protection period of a total ninety-five years from the dates of first publication (a total of the first 28 years after publication plus an additional 67 years).

48. Accordingly, Federal copyright protections for One Night in the Tropics and The Naughty Nineties do not expire until 2035 and 2040, respectively.

49. While the Federal Copyrights for both works are valid and subsisting, they are no longer held by UPC, but have since been assigned to successors in interest to UPC.

50. The heirs to Abbott & Costello formed a general partnership known as Abbott & Costello Enterprises (“ACE”) whereby they exploited various rights owned by the estates. In 1984, Universal Pictures (“Universal”), a division of Universal City Studios, Inc., successor to UPC,·entered into a quitclaim agreement with ACE, in which Universal granted ACE all rights, title and interest, under copyright or otherwise, in and to the Who’s on First? performance scenes in both One Night in the Tropics and The Naughty Nineties (the “Who’s on First? Copyrights”). Universal retained a perpetual license to both films.

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51. The assignment, dated March 12, 1984, was recorded in the Copyright Office Volume 3437 at page 851. A copy is attached hereto as Exhibit 3.

52. Upon execution of the quitclaim agreement between Universal and ACE, ACE became the sole owners of the Who’s on First? Copyrights. ACE had no further registration obligations at that time, as the copyrights for One Night in the Tropics and The Naughty Nineties had already been timely renewed, and do not expire until 2035 and 2040, respectively.

53. Federal law does not provide copyright protection for sound recordings fixed before February 15, 1972. However, neither does federal law preempt common law copyright protection provided to such recordings until February 15, 2067. Accordingly, under New York state law, common law copyright continues to be enforced for pre-1972 sound recordings, and the 1947 Broadcast, as well as all pre-1972 radio broadcast performances of Who’s On First?, are protected by common law copyrights (the “Common Law Copyrights”).

54. In 1992, ACE was dissolved. Upon its dissolution, ownership of the Who’s on First? Copyrights was assigned as follows: 50% to TCA (a corporation formed by the heirs of Costello); 25% to Vickie Abbott Wheeler, Abbott’s daughter; and, 25% to Bud Abbott, Jr., Abbott’s son. The assignment is attached hereto as Exhibit 4.

55. This assignment was recorded in the Copyright Office in Volume 3437 at page 852.

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56. Bud Abbott, Jr. passed away in 1997, leaving his 25% share of the Who’s on First? Copyrights to his daughter, Diana Abbott Colton. Vickie Abbott Wheeler transferred her 25% share to her company, Hi Neighbor.

57. TCA retains its 50% share of the ownership of the Who’s on First? Copyrights.

History and Critical Acclaim of Hand to God

58. The play Hand to God is a dark comedy about an introverted student in religious, small-town Texas who finds a creative outlet and a means of communication through a hand puppet, who turns into his evil or devilish persona.

59. The play was originally performed as a workshop at the Ensemble Studio Theater, owned and operated by Defendant Ensemble, from October 31, 2011 to April 1, 2012, and then moved off-Broadway to the Lucille Lortel Theatre, owned and operated by Defendant MCC, from February 19, 2014 to March 30, 2014.

60. The play began Broadway preview performances on March 14, 2015, and officially opened at the Booth Theater on April 7, 2015.

61. Hand to God opened on Broadway to overwhelming critical acclaim. Variety called it a “furiously funny comedy.” The New York Times gave it five stars, named it a Critics’ Pick and lauded the main character’s performance as “flat-out hilarious” and “a true tour de force.” The New Yorker called the play “ribald and wickedly funny.”

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62. In addition, Hand to God was nominated for five Tony Awards, including Best Actor, Best Actress, Best Featured Actress, Best Director and Best Play.

63. Only after its Broadway opening, when Hand to God began to receive widespread press coverage and media attention, did Plaintiffs learn of the key scene within the play, which clearly and unequivocally infringes the Who’s on First? Copyrights and the Common Law Copyrights.

Defendants’ Unauthorized and Infringing Use of the Who’s on First? Copyrights and the Common Law Copyrights

64. During a critical scene in Hand to God, the shy main character Jason reluctantly performs the heart of the iconic Who’s on First? comedy sketch with his puppet in order to impress a girl, Jessica. When Jessica asks him if he came up with it all by himself, Jason at first lies and says yes, to uproarious laughter by the audience, who recognizes the sketch very well. Ultimately, Jason admits that it is a “famous routine from the fifties.” That routine is Who’s on First?

65. The enactment of Who’s on First? in Hand to God is almost a word-for-word copy of the routine, and infringes both the Common Law Copyrights and the Who’s on First? Copyrights. The names Abbott and Costello are even used in the scene, with the Puppet playing the part of Costello and Jason playing the part of Abbott.

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66. The one minute and seven second performance of Who’s on First? in Hand to God can also be directly tied to the first thirty-seven seconds of the routine from One Night in the Tropics, as well as the first minute and six seconds of the routine from The Naughty Nineties. Scripts of the Who’s on First? performances in Hand to God, One Night in the Tropics and The Naughty Nineties are attached hereto as Exhibit 5.

67. It is abundantly clear that Defendant Askins, who wrote the script, and the producer Defendants who brought Hand to God to the stage, have copied the very heart of Who’s on First?

68. The portion of the routine that is copied in Hand to God is the introductory segment that sets up the rest of the scene, where Abbott & Costello go back and forth misunderstanding each other about the meaning of who’s on first: on the one hand, Costello cannot grasp the name of the player on first base, and on the other hand, Abbott is confused about the question that is being asked. This is the segment of the sketch for which the entire routine is named.

69. Moreover, the scene copying Who’s on First? in Hand to God could be viewed in a video clip online promoting the show and selling tickets to the show (the “Infringing Video”), and was posted at the following URL: https://www.youtube.com/watch?v=Tfg-shoiwgY. A screenshot from the Infringing Video appears below. Undoubtedly this scene was chosen for the clip because it is a highlight of the play and central to its plot, and is specifically

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mentioned in many articles and reviews of the play, as further detailed below.

70. At no time did Plaintiffs give Defendants license or permission to use the Who’s on First? Copyrights.

71. In fact, upon learning of the use of the routine while Hand to God was in previews, counsel for Plaintiffs sent a cease and desist letter to the Booth Theatre, where the play is currently in production.

72. Plaintiff refused to cease using the routine in the play.

73. Accordingly, Defendants have no basis to refute their clear and willful infringement of the Who’s on First? Copyrights.

74. Although in Hand to God the routine is being performed by Jason and his puppet rather than the characters used by Abbott & Costello, there is nothing new, different or

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transformative about the performance of Who’s on First? in the play. The purpose of the scene is exactly the same one which Abbott & Costello had—to elicit laughs, at which it succeeds very well, as evidenced by the audio of the Infringing Video, in which you can hear the audience’s laughter.

75. The scene takes place only about fifteen minutes into the one hour and forty-four minute play, and is one of the lighter moments of the production, without which the much darker tone of the rest of the play would be very difficult for the audience to handle. It is this purely comedic scene featuring Who’s On First?, counterbalanced with the more dramatic and serious themes of the play which are developed later on, that has allowed the play to garner both commercial success and wide audience appeal as a “dark comedy.”

76. It is apparent when viewing Hand to God in full that Who’s on First? was selected not only for its hilarity, but also for another very particular reason—it is immediately recognizable to and beloved by audiences, and can be easily referenced by its famous title. Indeed, in two separate instances after the Who’s On First? scene in the play, characters make reference back to Jason and the puppet’s performance, calling it “Who’s On First?.” For example, Jessica tells Jason, “I liked Who’s on First?”

77. The routine is performed, by itself, for an extended period, without interruption or any other action taking place in the scene, and any other comedy routine would simply not have the same impact or appeal.

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78. The play uses a significant portion of the routine (over a minute) and it represents a significant portion of the play (at least 1% by duration).

79. The use of Who’s on First? in Hand to God is also clearly being made for a commercial purpose as it is being used to promote the play via the Infringing Video and is also a vehicle to make the play more humorous and thus more marketable. Indeed, many promotional references of Hand to God, including those on its official website, found at http://handtogodbroadway.com/, refer to the play as a comedy. It is clear that the use of Who’s on First? was made to help Hand to God make it a comedy.

80. And, as further detailed below, Defendants’ enactment of Who’s on First? in Hand to God has diminished the commercial value of the Who’s on First? Copyrights.

Licensing of the Who’s on First? Copyrights

81. Due to the persistent popularity of Who’s on First? nearly eighty years after its inception, Plaintiffs receive regular requests for licenses of the Who’s on First? Copyrights.

82. Plaintiffs regularly license Who’s on First? for use in live performances, and for television, film and advertising.

83. Over the past several decades there has been a healthy commercial market for the Who’s on First? Copyrights, which Defendants flouted by failing to secure a license and profiting from its unauthorized and infringing use of

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Abbott & Costello’s original work, causing harm to the commercial marketplace for future licensing of Who’s on First?.

Defendants’ Profits

84. Defendants have enjoyed substantial commercial success from the gross ticket sales of Hand to God.

85. Since previews began on March 14, 2015, gross ticket sales have steadily grown. Upon information and belief, in its first week, the show’s gross ticket sales were $36,122. By the week of May 24, 2015, only about two months later, sales had reached $442,073. A chart from BroadwayWorld.com illustrating gross ticket sales is attached hereto as Exhibit 6.

86. Upon information and belief, gross ticket sales from Hand to God’s Broadway run alone thus far total over $2.8 million.

87. A portion of these sales is directly attributable to the unauthorized and infringing performance of Who’s on First? in Hand to God.

88. Indeed, many of the show’s most prominent reviews, including those in The New York Times, The New York Post, The Hollywood Reporter, CurtainUp, and San Francisco Splash, all feature detailed and laudatory descriptions of the Who’s on First? scene. Undoubtedly, mention of Who’s on First? in these reviews, some of which are as recent as the week of May 25, have sparked

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interest in theatergoers who might not have otherwise bought tickets, as well as in fans of Abbott & Costello. These reviews are attached hereto as Exhibit 7.

89. Furthermore, the Infringing Video of the Who’s on First? scene, which was publicly viewable online, undeniably helped to stoke interest in Hand to God. Tickets to the play were also available for purchase online where the video was posted.

90. Upon information and belief, Defendants receive advertising revenue from the use of the Infringing Video online.

COUNT I (Direct, Contributory and/or Vicarious Copyright

Infringement Under The Copyright Act)

91. Plaintiffs repeat and reallege the allegations stated in the preceding paragraphs of the Complaint as if set forth fully herein.

92. Plaintiffs own the valid Federal Who’s on First? Copyrights, which is an original work of authorship.

93. Defendants had access to the copyrighted works underlying the Federal Who’s on First? Copyrights, and intentionally copied and distributed them, or portions from them, without Plaintiffs’ consent, and/or had knowledge of infringing activity and induced, caused, or materially contributed to it, and/or induced the infringement, and/or had the right and ability to supervise the infringing activity and had a direct financial interest in the activity.

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94. Defendants’ use constitutes direct copyright infringement and/or contributory and/or vicarious infringement under the Copyright Act.

95. Despite Defendants being put on notice by Plaintiffs of the infringement, Defendants continued to infringe.

96. Defendants’ acts were done intentionally and with knowledge of Plaintiffs’ rights, and thus constitute deliberate and willful infringement.

97. As a result of Defendants’ actions, Plaintiffs have suffered irreparable harm. Plaintiffs have no adequate remedy at law and, if Defendants’ activities are not enjoined, will continue to suffer irreparable harm and injury to their goodwill and reputations.

98. Further irreparable harm to Plaintiffs is imminent as a result of Defendants’ conduct, and Plaintiffs are without an adequate remedy at law. Plaintiffs are entitled to an injunction restraining Defendants, their officers, directors, agents, employees, representatives and all persons acting in concert with them from engaging in further such acts of infringement of the Federal Who’s on First? Copyrights.

99. As a consequence of Defendants’ willful misconduct, Plaintiffs are entitled to an award against Defendants in the amount of (i) Plaintiffs’ damages and Defendants’ profits arising from the infringement, or in the alternative, (ii) statutory damages in the amount of up to $150,000 per work infringed pursuant to 17 U.S.C. § 504(c); and

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Plaintiffs’ costs and attorneys’ fees incurred in connection with this action.

COUNT II (Direct, Contributory and/or Vicarious

Copyright Infringement Under New York Common Law Copyright)

100. Plaintiffs repeat and reallege the allegations stated in the preceding paragraphs of the Complaint as if set forth fully herein.

101. Pre-1972 radio broadcast performances of Who’s on First?, including the 1947 Broadcast, are unique works of intellectual property subject to common law copyright protection.

102. Plaintiffs are also the owners of the valid Common Law Copyrights in the pre-1972 radio broadcast performances of Who’s on First?, which are not subject matter protected by the Copyright Act of 1909, or any subsequent Copyright Acts.

103. Defendants had access to the works underlying the Common Law Copyrights, and intentionally copied, distributed and/or reproduced them, or portions from them, without Plaintiffs’ consent, and/or had knowledge of infringing activity and induced, caused, or materially contributed to it, and/or induced the infringement, and/or had the right and ability to supervise the infringing activity and had a direct financial interest in the activity.

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104. Despite Defendants being put on notice by Plaintiffs of the infringement, Defendants continued to infringe.

105. Defendants’ use constitutes direct copyright infringement and/or contributory and/or vicarious infringement under New York common law.

106. As a result of Defendants’ actions, Plaintiffs have suffered irreparable harm. Plaintiffs have no adequate remedy at law and, if Defendants’ activities are not enjoined, will continue to suffer irreparable harm and injury to their goodwill and reputations.

107. Further irreparable harm to Plaintiffs is imminent as a result of Defendants’ conduct, and Plaintiffs are without an adequate remedy at law. Plaintiffs are entitled to an injunction restraining Defendants, their officers, directors, agents, employees, representatives and all persons acting in concert with them from engaging in further such acts of infringement of the Common Law Copyrights.

108. As a direct and proximate consequence of Defendants’ copyright infringement of Plaintiffs’ Common Law Copyrights, Plaintiffs have been damaged in an amount to be ascertained at trial.

REQUEST FOR RELIEF

WHEREFORE, Plaintiffs request that the Court grant an order or orders:

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A. Awarding damages in an amount to be proven at trial, caused by Defendants’ copyright infringement and/or vicarious and contributory infringement of the Federal Who’s on First? and Common Law Copyrights, and other misconduct as specif ied herein. In the alternative with respect to the Federal Who’s on First? Copyrights, awarding statutory damages in the amount of up to $150,000 per work infringed under § 504(c) of the Copyright Act.

B. Ordering that Defendants make restitution to Plaintiffs for any unjust enrichment caused by virtue of their unlawful conduct.

C. Awarding Defendants’ profits arising out of Defendants’ willful copyright, as well as vicarious and contributory infringement.

D. Awarding Plaintiffs injunctive relief restraining Defendants, their officers, directors, agents, employees, representatives and all persons acting in concert with them from engaging in further such acts of infringement of the Federal Who’s on First? and Common Law Copyrights.

E. Awarding Plaintiffs interest and costs of this action together with statutory attorneys’ fees under the Copyright Act, 17 U.S.C. § 505.

F. Granting such other and further relief as this Court may deem just and proper.

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DEMAND FOR JURY TRIAL

Pursuant to Federal Rule of Civil Procedure 38(b), Plaintiffs hereby demand a trial by jury of all issues so triable.

Dated: New York, New York June 8, 2015

DAVIS & GILBERT LLP

By: /s/ Marc J. Rachman ([email protected]) Brandie J. Lustbader ([email protected])1740 BroadwayNew York, New York 10019(212) 468-4800

Attorneys for PlaintiffsTCA TELEVISION CORP., HI NEIGHBOR AND DIANA ABBOTT COLTON

FOR EXHIBIT 1 SEE SUPPLEMENTAL APPENDIX PP. SA1-SA2



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