TCA Television Corp., Hi Neighbor, Diana Abbott Colton, Plaintiffs-Appellants,
Kevin McCollum, Robert Askins, Does, ABC Companies, 1-10, Hand to God LLC, The Ensemble Studio Theater, Inc., Manhattan Class Company, Inc., Defendants-Appellees, Broadway Global Ventures, CMC, Morris Berchard, Mariano V. Tolentino, Jr., Stephanie Kramer, LAMS Productions, Inc., Desimone Winkler, Joan Raffe, Jhett Tolentino, Timothy Laczynski, Lily Fan, Ayal Miodovnik, JAM Theatricals Ltd., Key Brand Entertainment Inc., Defendants.
Argued: June 23, 2016
appeal from a judgment entered in the Southern District of
New York (Daniels, J.) dismissing an action for
copyright infringement by the heirs of William
"Bud" Abbott and Lou Costello, plaintiffs challenge
the district court's determination, made as a matter of
law on a Rule 12(b)(6) motion, that defendants' verbatim
use of a portion of Abbott and Costello's iconic comedy
routine, Who's on First?, in the recent Broadway
play Hand to God, qualified as a non-infringing fair
use. Defendants defend the district court's fair use
ruling, and further argue that dismissal is supported, in any
event, by plaintiffs' failure to plead a valid copyright
interest. We here conclude that defendants' appropriation
of Who's on First? was not a fair use, but,
nevertheless, affirm the challenged judgment on
defendants' alternative invalidity ground.
Jonathan D. Reichman (Jonathan W. Thomas, on the brief),
Kenyon & Kenyon LLP, New York, New York, for
J. Lawless, Law Office of Mark J. Lawless, New York, New
York, for Defendants-Appellees.
Before: Jacobs, Calabresi, Raggi, Circuit Judges.
RAGGI, CIRCUIT JUDGE
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-
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.
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.
Abbott and Costello's Who's on First?
and Costello were a popular mid-Twentieth Century comedy duo.
One of their routines, commonly referred to as Who's
on First? (also, the "Routine"), has become a
treasured piece of American entertainment
history.The Routine's humor derives from
misunderstandings that arise when Abbott announces the roster
of a baseball team filled with such oddly named players as
"Who, " "What, " and "I Don't
Know." A rapid-fire exchange reveals that
"who's on first" need not be a question. It can
be a statement of fact, i.e., a player named
"Who" is the first baseman. Later parts of the
routine reveal, after similar comic misunderstandings, that a
player named "What" is the second baseman, and one
named "I Don't Know" is the third baseman.
Agreements Pertaining to Rights in the Routine
parties cite various contracts and copyright filings spanning
more than 40 years as relevant to claimed rights in the
Abbott and Costello's Agreements with UPC
The July 1940 Agreement
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
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
 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  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  give
and grant to the Producer solely and exclusively all
rights of every kind and character whatsoever in and to the
same, or any of them, perpetually, including as well the
perpetual right to use the names of the Artists and pictures
or other reproductions of the Artists' physical
likenesses, and recordations and reproductions of the
Artists' voices, in connection with the advertising and
The November 1940 Agreement
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"). That contract terminated the
July Agreement without prejudice to, among other things,
UPC's "ownership . . . of all rights heretofore
acquired, " including those "in or to any . . .
material furnished or supplied by the Artists."
Id. at 162. In the November Agreement, Abbott and
Costello agreed "to furnish and make available to the
Producer all literary and dramatic material and routines
heretofore used by the Artists either on the radio or
otherwise and now owned by the Artists, " and
acknowledged that "the Producer shall have the right to
use said material and routines to such extent as the Producer
may desire in connection with any photoplay in which the
Artists render their services hereunder and in connection
with the advertising and exploitation of such
photoplay." Id. at 129. Abbott and Costello
agreed that they would "not use or license, authorize or
permit the use of any of the material and/or routines"
so referenced "in connection with motion pictures"
by others than UPC for specified times. Id.
Nevertheless, they reserved the right to use materials and
routines created by them (without the assistance of UPC
writers) "on the radio and in personal
appearances." Id. at 129-30.
UPC Registers a Copyright for Tropics
November 1940, UPC registered a copyright for
Tropics with the United States Copyright Office,
which it renewed in December 1967. See id. at 36,
UPC Uses an Expanded Version of the Routine in The
Naughty Nineties and Registers a Copyright for that
1945, Abbott and Costello performed an expanded version of
Who's on First? in another movie for
UPC, The Naughty Nineties. That version maintains
the core of the Routine-with "Who" on first base,
"What" on second, and "I Don't Know"
on third-but several new players take the field: left fielder
"Why, " center fielder "Because, "
pitcher "Tomorrow, " catcher "Today, "
and shortstop "I Don't Care."
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.
The 1944 Copyright Registration for "Abbott and
Costello Baseball Routine"
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. The record
suggests that this registration was not renewed, prompting
the Copyright Office to conclude that the work had entered
the public domain in 1972, and, on that ground, to reject a
1984 application for a derivative work registration filed by
the children of Abbott and Costello based on the 1944
The 1984 Quitclaim Agreement
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, 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,  "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.
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% 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?.
Hand to God
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
The Relevant Scene
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 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
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. 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
can't defeat." Id. at 24.
scene foreshadows darker and more disturbing exchanges
between Jason and the puppet that will occur as the Play
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.
District Court Proceedings
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.
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.
Dismissal Was Not Properly Based on Fair Use
Standard of Review
review de novo a judgment of dismissal under
Fed.R.Civ.P. 12(b)(6), accepting all factual allegations in
the 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
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 (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
(1985) (internal quotation marks omitted); see Fox Film
Corp. v. Doyal, 286 U.S. 123, 127 (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.").
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 (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).
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 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
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.
The Statutory Framework for Analyzing Fair Use
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
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in
relation to the copyrighted ...