Is it Fair Use? Who's on First? ANSWER

Answer: NOT (necessarily) FAIR USE!

Read the opinion, TCA Television Corp. v. McCollum, here.
If you’ve found this answer without reading the question, here’s the question.
I kind of deked you, didn’t I? Sorry.
But given the trend of the caselaw out of the Second Circuit, weren’t you just a little bit surprised? How easy it would have been to find the use of “Who’s on First?” transformative and, thus, fair? The trial court was convinced.
It is tempting to reading this opinion as a criticism of Cariou and an attempt to reign in some of its implications. And in some ways, that’s not a bad reading. For one thing, it acknowledges that Cariou “might be thought to represent the high-water mark of our court’s own recognition of transformative works” and that “it has drawn some criticism.” More important, whereas Cariou seemed to let transformative use run wild, by untethering it from any relationship with the underlying work, the “Hand to God” case puts at least some of the focus back onto the underlying work:

…the focus 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. 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.

Thus, although Hand to God was dark (in contrast to the brightness of “Who’s on First?”), the play used the routine exactly the same way it has always been performed: as a virtuosic comedic schtick. Simply dumping the unaltered routine into a different context didn’t “transform” it.

Reining in Cariou, or Reading it Carefully?

But, in the end, what the Second Circuit is doing is reading Cariou carefully and accurately. Although Cariou unmoored “transformative use” from a requirement that it comment on the underlying copyrighted work, it did not let slip the dogs of fair use, as many have assumed. That’s because Cariou involved two different types of works. One type was collages, where the artist had taken the photographer’s works and cut them up, marked them up, then combined them with bits of other photographs to create grotesque and shocking images. The other type was a kind of vandalism of an otherwise unaltered photograph. The most notorious of this type was Graduation, in which the artist took a photograph a Rastafarian man and added only an electric guitar (making it look like the man was playing the guitar about six inches lower than any normal human being ever would) and ovals over the man’s eyes and mouth. The Second Circuit found the first type to be fair uses, but it remanded the second type back to the trial court for reconsideration. This remanding was correct and appropriate because the trial court had incorrectly assumed that transformative uses had to comment on the underlying work; the Second Circuit was asking her to reconsider the question of fair use without that erroneous assumption.
The Second Circuit in the “Hand to God” case seized on that distinction:

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. 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. But where lesser changes retained certain of the original work’s aesthetics, the court would not say “for sure” that their incorporation into the defendant’s works had “transformed [the original] work enough to render it transformative.” As to these works, Cariou remanded for further proceedings.

The Second Circuit applied this distinction to the play’s use of “Who’s on First?”:

Far from altering Who’s on First to the point where it is “barely recognizable” within the play, defendants’ use appears not to have altered the Routine at all. [Hand to God] 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 [Hand to God] 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,¹Oxford comma in the original. This is not an endorsement by the IP Breakdown of Oxford commas. and delivery of Abbott 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 aura.

The court goes on to describe the play’s use of the routine as a McGuffin—a device to set up the plot but is of little or no significance in itself, like the Maltese Falcon. If the only point was to for the puppet to catch the boy in a lie—a lie the audience immediately recognizes—in front of the girl, then almost anything would have done. The playwright could have set up something earlier in the play that the audience witnessed, and the boy could have lied about that. The real reason the playwright used “Who’s on First?”, the court suggest, is precisely because it is so good. It seems perverse—outside the context of parody—to weaken copyright protection because the underlying work is brilliant.

Clear as Mud? Same as Always

Although this opinion reigns in the excesses of transformative work, I’m not sure it clarifies the muddy concept very much. Cariou tells us that a transformative work need not comment on the underlying work, but this case tells us that there has to be some relationship between the two. Both cases tell us that recognizability is also a factor: the less recognizable the underlying work, the more transformative? But that seems like it goes to the third factor—amount and centrality of the taking.
And how does this all fit in with the “Google Books” decision, written by Judge Leval himself for the Second Circuit, which called Google’s digitizing of books as “transformative”? Isn’t that a completely different type of “transformation,” from one medium to another (much more useful one), and essentially an economic one?
Lots of people are understandably fed up with “transformative use”: Leval’s attempt to re-conceptualize the first fair-use factor is just a failure. I’m not prepared to go quite so far. Transformativeness can be a useful concept, if we use it as just a factor—one of many—and strip it of its definitional make-or-break quality. We can say that Hand to God‘s use of “Who’s on First?” is slightly transformative, but the commercial use, expressiveness of the routine, the amount taken and the effect on the market²Since the motion brought under Rule 12(b)(6), the court had to accept the plaintiffs’ allegations about the effect on the market for the routine. outweigh it by several magnitudes. We can say that the transformativeness is slight because (a) the play doesn’t comment on the routine, (b) the play doesn’t alter the routine in some interesting way, and (c) the routine wasn’t really all that necessary for the play’s aesthetic and thematic success.

Strong Copyrights Need Shorter Terms.

Postscript: the defendants won anyway. The Second Circuit found that “Who’s on First?” entered the public domain, for reasons that are best described as highly technical and messy.³Which is why I referred to the copyright “owners” as “putative owners.” It turns out, there’s no copyright to own. To my mind, this is the ideal result—albeit a lucky one. We can tolerate strong copyright protections if they are for short periods. After a few decades, one should be able to put a comedy routine into a play, and one should not need to twist fair use into a pretzel to do it.
Thanks for reading!

Rick Sanders

Rick is currently General Counsel for Software Freedom Conservancy. Previously, he has been practicing law as an intellectual-property litigator since 2000.