Supreme Court Asked to Save Abbott and Costello "Who's on First?" Copyright

Heirs to the comedic duo present a "critically important" question about a "new rule" robbing contributors to old movies of ownership rights.
CBS/Photofest

After being sworn in, Neil Gorsuch is now the ninth justice on the U.S. Supreme Court, but at an upcoming conference to decide which cases should be heard, a question will undoubtedly be raised: "Who's on first?"

That's because the heirs of William "Bud" Abbott and Lou Costello this week petitioned the high court to review a case concerning their world-famous comedy routine. Those heirs sued the producers of the Broadway play Hand to God in June 2015, claiming copyright infringement, and what looked to be a case about fair use took a surprising turn in October 2016 when the 2nd Circuit Court of Appeals decided that the heirs lacked standing to sue and suggested that "Who's on first?" was in the public domain.

The case is about eight decades in the making since Abbott and Costello performed "Who's on first?" on radio. At the time, the two didn't secure a copyright registration or publish their material with a copyright notice. Instead, Abbott and Costello would bring "Who's on first?" to the 1940 film One Night in the Tropics, which attained a copyright via registration by Universal Pictures. A few days before the film was released, the comedy pair entered into an agreement with Universal that reserved for them the right to use routines created by them. In 1967, Universal renewed the copyright on One Night in the Tropics. Then in the early 1980s, Universal quitclaimed rights to the comedians' routine to the heirs' companies. (Costello died in 1959. Abbott died in 1974).

Ever since, Abbott and Costello heirs have been operating under the assumption that they own "Who's on first?," suing the Hand to God producers for incorporating the bit into their play about a demonic hand puppet belonging to an introverted student. They subsequently got a huge shock when an appeals court decided that because Abbott and Costello hadn't specifically created their routine for One Night in the Tropics, the heirs couldn't rely on Universal's copyright renewal to enjoy ownership. Stated another way, the appeals court suggested that Abbott and Costello needed to file their own copyright and renewal.

Since the 1976 Copyright Act, authors no longer have to go through the formality of renewal, but there are nevertheless many early- and mid-20th century works whose ownership depends on whether authors complied with the dictates of the older 1909 Copyright Act. The Supreme Court has explored the nuances of renewal before — see Stewart v. Abend, especially if you're an Alfred Hitchcock fan — but not how contributions to copyrighted works factor. That subject of film contributions has been coming up in courts more and more, including the Innocence of Muslims case, where an actress sought to assert an ownership interest in her performance, and the 16 Casa Duse case, pitting a film's director against its producer.

In the cert petition, the Abbott and Costello heirs argue that a movie is not a "composite" work like a periodical — a collection of copyrighted contributions — but that a motion picture is treated as a "unitary work" that merges elements like a script, a musical score, direction, performances, etc.

"So it is here," states the petition. "No part of the ["Who's on First"] Routine was published or registered before a portion of it was performed and embedded into the 1940 Tropics movie. Abbott and Costello had no standing to renew a copyrighted in their embedded Routine; the renewal of the movie copyright renewed the integrated whole."

The Abbott and Costello heirs say the 9th Circuit recognized this in Richlin v. Metro-Goldwyn-Mayer Pictures by holding that the copyright renewal of the film, The Pink Panther, also renewed the previously unpublished treatment and screenplay.

So now they are upset that the 2nd Circuit has taken a different stance by supposedly treating a movie like a periodical and deciding that because "Who's on First" could have been separately published or registered before its incorporation in the movie, Universal's renewal doesn't cover them. The question they are presenting to the high court is "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."

As the Supreme Court decides whether to tackle this case, the justices are being told how copyright law has changed over time. Not only in the way renewals are no longer necessary, but how "publication" isn't as important now as authorship being "fixed in a tangible medium of expression." The Abbott and Costello heirs say the question presented is "critically important" as the 2nd Circuit has "create[d] an unprincipled exception to the 'unified copyright' theory" and "announced [its] new rule at a time when the holders of such rights can no longer comply."

Here's the full petition for a writ of certiorari, authored by Louis Petrich, Jonathan Reichman and Jonathan Thomas.

At his confirmation hearing, Chief Justice John Roberts famously compared being a judge to an umpire who calls balls and strikes. With any luck, the conference will go something like this: Roberts: "Who's on first?"; Anthony Kennedy: "What"; Clarence Thomas: "I don't know"; Ruth Bader Ginsburg: "Why"; Stephen Breyer: "Because"; Samuel Alito: "Tomorrow"; Sonia Sotomayor: "Today"; Elena Kagan: "I don't care."

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