Is it Fair Use? Who's on First (Copyright Fair Use Factor)?

Abbott and Costello Meet the Copyright Lawyer (1 1/2 Stars)

It’s time for another round of “Is it Fair Use?”, the fast-paced, heart-racing game that’s sweeping the nation.¹If said nation were experiencing some serious time-dilation. This episode of “Is it Fair Use?” features one of the classic skits of American Comedy: “Who’s on First?”

Pure gold. Most of us have this routine more or less memorized, and yet, even knowing all the jokes, the routine is never fails to make us laugh.

Along Came a Demonic Hand Puppet

Much more recently, a Broadway play, called Hand to God, about—if I’m understanding this correctly—a possibly possessed hand puppet, used about the first minute’s worth of routine.²Note: that the version of the routine referenced in the play was slightly different than the version above. The play is about “an introverted student in religious small-town Texas who finds a creative outlet and a means of communication through a hand puppet, which turns into his evil or devilish persona.” It’s meant to be a “dark comedy.”
Early in the play, we get a sense of what we’re in for when the boy with the puppet tries to impress a girl by reenacting the “Who’s on First?” routine, between himself and the hand puppet. (The puppet naturally plays the Costello role.) After about a minute of the routine, pretty much verbatim, the girl is actually impressed and asks the boy if he came up with it all by himself. Either she’s ignorant of the classics (ah, kids these days), or she’s buttering him up. The boy falsely boasts that he did—a fact immediately apparent to the audience as a lie, because the routine is so well-known. But the puppet, seemingly on its on volition, calls him a liar, calls her stupid (for not recognizing the routine), then “vulgarly divulges [the boy’s] physical desire for [the girl]. Only after a physical struggle with [the puppet] is [the boy] able to remove the puppet from his hand.” The girl storms off, and the boy gets all dejected because he is either insane or the owner of a possessed hand puppet. Life just doesn’t get much more awkward than that.

Enter the Copyright Lawyers

The owners³Well, putative owners. I’ll explain later. of the routine sued the producers of the play, the theater and a bunch of other people⁴19 additional defendants, if I’m counting correctly. I’m guessing most of them are investors? for copyright infringement. Before the lawsuit even properly got started, the defendants asked the court to dismiss the claim on grounds that the play’s use of the routine was a fair use. In particular, they argued that the use “transformed” the snappy, funny and recognizable routine into “a darkly comedic critique of [a New Yorker’s understanding of] the social norms governing a small town in the Bible Belt.” Using the routine, the play was able to contrast the boy’s “seemingly soft-spoken personality and the actual outrageousness of his inner nature, which he expresses through the sock puppet.”⁵Lame. The sock puppet should be possessed. And it should whisper dark truths to the boy.
In this sort of motion, known as a “Rule 12(b)(6) motion,” the court is supposed to treat factual allegations in the complaint as true, even if (a) they seem a little (but not completely) implausible, and (b) they turn out not be true. We’re at the very beginning of the case, and the defendant is basically saying: even if you prove everything in your complaint, I still win, so we may as well just stop it here.

Parody vs. Transformative Use

It is unusual, but not unheard of, for courts to grant Rule 12(b)(6) motions on the issue of fair use, so long as it really is apparent from the complaint that the use is a fair one, and there’s no plausible way the plaintiff could argue otherwise. We saw one fairly recently in the “What What in the Butt” case.⁶Itself a subject of a previous exciting episode of “Is it Fair Use?”!. But (ahem) that case was easier than most because it involved parody. Once parody is found, fair use nearly always follows because parody turns all of the fair use factors on their heads: facts that would ordinarily weigh against fair use weigh in favor instead. For example, normally the more of the underlying work you take, the more the third factor weighs against fair use. But because parody has to invoke as much of the work as it needs so the audience can recognize the underlying work and understand what’s being parodied.
This case isn’t parody. Parody must comment on the underlying work. It can’t just be a vehicle to comment on something else. Thus, when someone mimicked Dr. Seuss’ *The Cat in the Hat*—a book about the OJ Simpson trial, written in Seuss’ style and incorporating several copyrightable elements—the Ninth Circuit found that the book did not parody Dr. Seuss, but rather a parody of the events surrounding the Simpson trial⁷E.g., “One knife/ Two knife?/ Red knife/ Dead wife.”
The use of “Who’s on First?” isn’t parody of the routine because it doesn’t comment on the routine. It’s just a vehicle for establishing certain plot and thematic points in the play: that the boy is an awkward teenager, he has a real problem with the hand-puppet, etc.

Leavening Leval

But that’s not the end of the story. Just because the play’s use of the routine isn’t parody doesn’t mean it cannot be fair use. There’s… drumroll… transformative use!! Transformative use started off in 1990 as an attempt by Judge Leval of the Second Circuit to regularize fair use. As a judge who saw a lot of fair use cases, he became concerned that fair use was too much of a crap shoot, which in our judicial system is unjust. Like defendants should be treated alike. You should be able to predict whether a certain action is legal or not, by reading the cases of similarly-situated defendants. Judge Leval wanted to regularize fair use cases, to make them more predictable. Among other things, he developed the concept of “transformative use”:

If, on the other hand, the secondary use adds value to the original—if the quoted matter is used as raw material, transformed in the creation of new information, new aesthetics, new insights and understandings—this is the very type of activity that the fair use doctrine intends to protect for the enrichment of society. Transformative uses may include criticizing the quoted work, exposing the character of the original author, proving a fact, or summarizing an idea argued in the original in order to defend or rebut it.

“Transformative use” received a kind of imprimatur in 1994⁸That was fast![/ref], when the Supreme Court referenced it repeatedly in Campbell v. Acuff-Rose Music (the “Oh, Pretty Woman!” case), still the most important decision on fair use. Citing Judge Leval’s article, the Supreme Court wrote,

The central purpose of this investigation is to see, in Justice Story’s⁹Justice Story originally came up with the four fair-use factors in 1841, in Folsom v. Marsh. words, whether the new work merely “supersede[s] the objects” of the original creation, or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message; it asks, in other words, whether and to what extent the new work is “transformative.” Although such transformative use is not absolutely necessary for a finding of fair use, the goal of copyright, to promote science and the arts, is generally furthered by the creation of transformative works.

Enter the Bad Boy of Art (and His Copyright Lawyers)

But the Supreme Court was dealing with a clear-cut case of parody. Though it indicated that parody was merely one way of achieving the desired transformative effect, the concepts of “parody” and “transformative” have since then tended to merge into one another. But parody, as we noted, has an important limitation: it must comment on the underlying copyrighted work. For a long time, it was assumed that all types of “transformative” uses were had a similar limitation: they had to comment on the underlying copyrighted work.
A recent decision out of Judge Leval’s Second Circuit put to rest that assumption. In Cariou v. Prince (itself a subject of a previous exciting episode of “Is it Fair Use?”), the Second Circuit held that a transformative work need not comment on the underlying work. In that case, notorious bad-boy artist Richard Prince bought the plaintiff’s book of photographs of Rastafarians, and used them to make his own “appropriative” works. Most of his uses were in collages in which you could hardly recognize the plaintiff’s photographs, but some were nothing more than vandalizations of the plaintiff’s photographs. The trial court had found that Prince’s works were not fair use because they could not be transformative; and they could not be transformative because they did not comment on the plaintiff’s works (which was 100% true). Reversing, the Second Circuit held the collages were fair use because they were “transformative,” but it remanded the vandalizations for the trial court to determine whether they were transformative enough to be fair use.¹⁰The case settled before that could happen.
The primacy that the Second Circuit gives “transformative use” in the fair use analysis is not universally accepted. The Seventh Circuit, in Kienitz v. Sconnie Nation LLC, notoriously rejected Cariou’s approach¹¹Arguably in dicta., though its own approach was hardly fleshed out and didn’t seem all that different from Cariou’s.¹²Judge Easterbrook, writing for the Seventh Circuit, made as though he was returning to basics—to the original four statutory factors—before stating that the fourth factor (effect on the market) was the most important, without any legal authority (and, indeed, the Supreme Court in Campbell rejected that view). His application of the second factor was either unique or bizarre, depending on your point of view. In the end, he held that the third and fourth factors favored fair use, and that was that. Not an incorrect result, just one sort of lacking coherent analysis.
But we’re in the Second Circuit with the “Hand to God” case, so transformative use is powerful. Indeed, I’ve complained before (on yet another exciting episode of “Is it Fair Use?”) that, in the Second Circuit, a bare finding of transformative use could result in a finding of fair use, even if the other factors are firmly against. This is because courts have been treating transformative use as though it were parody, but without parody’s important limitation. As with parody, courts have been neutralizing the other factors upon a finding of transformative use, so long as the use is consistent with its transformative purpose. Transformative use was less a factor¹³Really, a sub-factor of the first factor. and more an on-off switch.
On the defendants’ Rule 12(b)(6) motion, the trial court dismissed the case, finding the play’s use of “Who’s on First” to be fair. Specifically, the trial court found that the use to be so highly transformative as to be determinative of fair use. It explained that the routine was transformed from a funny schtick into a window on the boy’s psyche, contrasting the boy’s “seemingly soft-spoken personality and the actual outrageousness of his inner nature, which he expresses through the sock puppet.” The routine was thus put into the service of “a darkly comedic critique of the social norms governing a small town in the Bible Belt.” The plaintiffs appealed.
So, what do you think? Fair use, or not? Did the Second Circuit reverse the finding of fair use? Click here to learn the answer.

Rick Sanders

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