{"id":4281,"date":"2016-10-13T11:28:28","date_gmt":"2016-10-13T15:28:28","guid":{"rendered":"http:\/\/cpip.gmu.edu\/?p=4281"},"modified":"2026-02-03T21:05:42","modified_gmt":"2026-02-03T21:05:42","slug":"second-circuit-brings-some-sanity-back-to-transformative-fair-use","status":"publish","type":"post","link":"https:\/\/blogs.uakron.edu\/ualawip\/2016\/10\/13\/second-circuit-brings-some-sanity-back-to-transformative-fair-use\/","title":{"rendered":"[Archived Post] Second Circuit Brings Some Sanity Back to Transformative Fair Use"},"content":{"rendered":"

\"theThe Second Circuit handed down an opinion<\/a> in TCA Television v. McCollum<\/em> earlier this week holding that a play\u2019s inclusion of Abbott and Costello\u2019s famous \u201cWho\u2019s on First?<\/a>\u201d routine was not<\/u> transformative fair use. Given how expansive transformativeness has become lately, especially in the Second Circuit, the opinion is somewhat surprising. What\u2019s more, it\u2019s not clear that the appellate court even needed to reach the fair use issue since it held for the defendants on the alternate ground of lack of ownership. If anything, it appears that this particular panel of judges went out of its way to push back on\u2014and bring some much-needed sanity to\u2014transformative fair use doctrine in the Second Circuit.<\/p>\n

The play at issue, \u201cHand to God,\u201d features an introverted boy named Jason who communicates through his alter ego sock puppet named Tyrone. In order to impress a girl, Jason and Tyrone perform over one minute of the \u201cWho\u2019s on First?\u201d routine, with Jason as Abbott and Tyrone as Costello. The plaintiffs, including Abbott and Costello\u2019s heirs, sent the defendants, producers and author of the play, a cease and desist letter. When the defendants refused to remove the scene from the play, the plaintiffs sued for copyright infringement. On the first fair use<\/a> factor, which looks at the \u201cpurpose and character of the use,\u201d the district court held<\/a> that Jason\/Tyrone\u2019s almost-verbatim recitation of the heart of the \u201cWho\u2019s on First?\u201d routine was \u201chighly transformative\u201d\u2014so transformative that it was \u201cdeterminative\u201d of fair use.<\/p>\n

The standard for transformativeness, which comes from the Supreme Court\u2019s opinion<\/a> in Campbell v. Acuff-Rose<\/em>, looks at \u201cwhether the new work merely \u2018supersede[s] the objects\u2019 of the original creation\u201d or whether it \u201cinstead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message[.]\u201d The district court held that \u201cHand to God\u201d used \u201cWho\u2019s on First?\u201d for a different\u2014and thus transformative\u2014purpose, namely, to proffer a \u201cdarkly comedic critique of the social norms governing a small town in the Bible Belt.\u201d While Abbott and Costello\u2019s routine was standard vaudevillian fare, the district court reasoned that the play used it for a more dramatic purpose.<\/p>\n

The Second Circuit rejected<\/a> the district court\u2019s conclusion, pointing out that \u201cthe 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.\u201d In other words, it’s not enough for \u201cHand to God\u201d to have a different purpose than \u201cWho\u2019s on First?\u201d The issue is whether \u201cHand to God\u201d used \u201cWho\u2019s on First?\u201d for a different purpose than Abbott and Costello used the routine. The Second Circuit held that it did not: \u201cThe Play may convey a dark critique of society, but it does not transform Abbott and Costello\u2019s Routine so that it<\/u> conveys that message.\u201d<\/p>\n

The disagreement between the district court and the Second Circuit is subtle, yet important. The lower court determined that having Jason\/Tyrone recite the \u201cWho\u2019s on First?\u201d routine was transformative because it gave the audience a glimpse into Jason\u2019s psyche. Whereas Jason is seemingly kind and soft-spoken on the surface, it becomes clear through his sock puppet persona Tyrone that there\u2019s much murkiness beneath. And to the extent that Jason\/Tyrone\u2019s recitation of \u201cWho\u2019s on First?\u201d is comedic, the district court thought that the \u201caudience laughs at Jason\u2019s lies, not, as the Plaintiffs claim, simply the words of the Routine itself.\u201d<\/p>\n

By contrast, the Second Circuit held that this \u201creasoning is flawed in that what it identifies are the general artistic and critical purpose and character of the Play<\/u>.\u201d Moreover, the district court failed to identify how the \u201cdefendants\u2019 extensive copying of a famous comedy routine was necessary to this purpose, much less how the character of the Routine<\/u> was transformed by defendants\u2019 use.\u201d The Second Circuit\u2019s approach here recognizes that fair use is premised upon necessity<\/a>, that is, there needs to be a justification for copying the specific original work. In this case, the point of having Jason\/Tyrone recite \u201cWho\u2019s on First?\u201d was to demonstrate that Jason was lying when he later claimed to have written it. But that could have been accomplished by using any<\/em> recognizable work.<\/p>\n

As the Second Circuit noted, \u201cthe particular subject of the lie\u2014the Routine\u2014appears irrelevant to that purpose.\u201d And as such, the defendants\u2019 use of \u201cWho\u2019s on First?\u201d had \u201cno bearing on the original work\u201d and lacked the required \u201cjustification to qualify for a fair use defense.\u201d This reasoning sounds very close to requiring the copyist to comment upon the original, a principle that, for better or worse, was rejected by the Second Circuit in Cariou v. Prince<\/em><\/a>. Indeed, the appellate panel here mentioned Cariou<\/em>, noting that, \u201calthough commentary frequently constitutes fair use, it is not essential that a new creative work comment on an incorporated copyrighted work to be transformative.\u201d Nevertheless, the Second Circuit easily distinguished Cariou<\/em> since there the artist at least changed the original work.<\/p>\n

The Second Circuit\u2019s opinion is a refreshing reminder that, despite what some would prefer, not everything arguably-transformative is transformative fair use. If the defendants wanted to use a copyrighted work within the play, the proper course would have been to negotiate a license or to not use the work at all. And given the way \u201cWho\u2019s on First?\u201d was used within the play, there was certainly no shortage of alternatives that could have sufficed. It\u2019s also nice to see that some judges in the Second Circuit are skeptical of cases like Cariou<\/em>, which the panel here referred to as \u201cthe high-water mark of our court\u2019s recognition of transformative works.\u201d The panel also rightfully noted that an overly-expansive view of transformativeness threatens a copyright owner’s exclusive right to prepare derivative works. And the fact that this push-back is coming from within the Second Circuit makes it all the more interesting.<\/p>\n","protected":false},"excerpt":{"rendered":"

The Second Circuit handed down an opinion in TCA Television v. McCollum earlier this week holding that a play\u2019s inclusion of Abbott and Costello\u2019s famous \u201cWho\u2019s on First?\u201d routine was not transformative fair use. Given how expansive transformativeness has become lately, especially in the Second Circuit, the opinion is somewhat surprising. What\u2019s more, it\u2019s not […]<\/p>\n","protected":false},"author":3627,"featured_media":0,"comment_status":"closed","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":{"_monsterinsights_skip_tracking":false,"_monsterinsights_sitenote_active":false,"_monsterinsights_sitenote_note":"","_monsterinsights_sitenote_category":0,"_jetpack_memberships_contains_paid_content":false,"footnotes":""},"categories":[10,1],"tags":[73,250,543,647,1300,1433,1480,1482,1565],"class_list":["post-4281","post","type-post","status-publish","format-standard","hentry","category-copyright","category-uncategorized","tag-abbott-and-costello","tag-cariou-v-prince","tag-fair-use","tag-hand-to-god","tag-second-circuit","tag-tca-television-v-mccollum","tag-transformative-fair-use","tag-transformativeness","tag-whos-on-first"],"jetpack_featured_media_url":"","jetpack_sharing_enabled":true,"_links":{"self":[{"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/posts\/4281","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/users\/3627"}],"replies":[{"embeddable":true,"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/comments?post=4281"}],"version-history":[{"count":1,"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/posts\/4281\/revisions"}],"predecessor-version":[{"id":15841,"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/posts\/4281\/revisions\/15841"}],"wp:attachment":[{"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/media?parent=4281"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/categories?post=4281"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/blogs.uakron.edu\/ualawip\/wp-json\/wp\/v2\/tags?post=4281"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}