TCA Television Corp. v. McCollum
151 F. Supp. 3d 419
S.D.N.Y.2015Background
- Plaintiffs (heirs of Abbott & Costello) sued defendants over defendants’ use of portions of the comedy routine “Who’s On First?” in the play Hand to God and a promotional clip, alleging federal and New York common-law copyright infringement.
- Plaintiffs allege Abbott & Costello performed the Routine in 1938 (radio) and entered a November 1940 agreement assigning rights in film performances to Universal Pictures Company (UPC); UPC registered copyrights for the films One Night (1940) and The Naughty Nineties (1945) and later renewed them.
- Plaintiffs claim a continuous chain of title: UPC → Universal → quitclaim (1984) to Abbott & Costello Enterprises (ACE) → division among heirs and their entities, making Plaintiffs current owners of the film copyrights covering the Routine as embodied in those films.
- Defendants concede they used about 1:07 of the Routine in Hand to God (a staged puppet reenactment), and used that clip for promotion, but argue Plaintiffs failed to plead a continuous title chain, the Routine is public domain, or, alternatively, the use is fair use.
- The Court considered whether the Routine’s radio performance was unpublished common-law material, whether the 1940 film publication and registrations vested statutory rights, and whether the defendants’ use in Hand to God was a transformative fair use.
- Holding: the Court dismissed federal and New York common-law infringement claims for failure to state a claim, concluding Plaintiffs failed to overcome Defendants’ showing of fair use (transformative purpose outweighed other factors) and that publication in the films extinguished common-law protection of the material embodied there.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Valid ownership of a copyright in the Routine at time of alleged infringement | Abbott & Costello assigned pre‑existing common-law rights to UPC in 1940; UPC registered and renewed film copyrights; chain of title continued to Plaintiffs | Assignment was at most a license; later Abbott & Costello registrations suggest they retained rights; Plaintiffs failed to plead continuous title | Court found Plaintiffs plausibly alleged assignment to UPC and subsequent transfers; chain of title sufficiently alleged to proceed on ownership element but other defects remained resolved against Plaintiffs |
| Effect of 1940/1945 film publications on common-law protection | Pre‑1940 radio performances were unpublished and protected at common law; assignment to UPC converted those rights into statutory rights via film publication | Publication and registrations by UPC may not have covered all preexisting material; uncertainty about scope | Court held film publication embodied and published those portions disclosed in the films, extinguishing common-law protection for that material and supporting statutory protection in the films |
| Whether defendants copied original, protected elements | Plaintiffs: defendants used more than incidental lines and copied the recognizable heart of the Routine (including the famous line) | Defendants conceded use but argued it was limited in duration and context and constituted fair use | Court concluded copying occurred but fair use applies; transformative purpose and market‑effect factors favored defendants, so plaintiff's direct infringement claim dismissed |
| Fair use of the Routine in Hand to God | Use is not transformative and harms licensing market; commercial use (promotion) weighs against fair use | Use is highly transformative: puppet performance changes meaning, function, and gives new commentary/aesthetic; limited portion used; unlikely to usurp original market | Court held the purpose/character factor decisive: use was transformative (new meaning/aesthetic); amount and market effect did not overcome transformative nature; fair use defeated plaintiffs’ claim |
Key Cases Cited
- Ashcroft v. Iqbal, 556 U.S. 662 (2009) (pleading standard requires plausible factual allegations)
- Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007) (plausibility pleading standard)
- Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991) (elements of copyright infringement claim)
- Martha Graham Sch. & Dance Found., Inc. v. Martha Graham Ctr. of Contemp. Dance, Inc., 380 F.3d 624 (2d Cir. 2004) (assignment and 1909 Act principles)
- Shoptalk, Ltd. v. Concorde-New Horizons Corp., 168 F.3d 586 (2d Cir. 1999) (publication under 1909 Act extinguishes common-law protection for embodied portions)
- Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994) (framework for fair use; transformative inquiry)
- Cariou v. Prince, 714 F.3d 694 (2d Cir. 2013) (transformative use analysis and reduced weight of other factors when use is transformative)
- Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605 (2d Cir. 2006) (fair use balancing; transformative use protects new work)
- Castle Rock Entm’t v. Carol Pub. Grp., Inc., 150 F.3d 132 (2d Cir. 1998) (‘heart’ of the work and substantiality in fair use analysis)