United States: Second Circuit Finds Use Of "Who's On First" Routine Not Transformative And Not Fair

Earlier this month, the U.S. Court of Appeals for the Second Circuit issued a consequential opinion on the meaning and scope of what has become the "transformative use" factor of the fair use defense to copyright infringement. TCA Television Corp. v. McCollum, No. 16-134-cv-, __ F.3d __, 2016 WL 5899174 (2d Cir. Oct. 11, 2016). While transformative use is one consideration within the first of four factors applied to determine whether a use of a copyrighted work is "fair" and thus not an act of infringement, it has become the predominant consideration in the Second Circuit. And while it is fair to say that the Second Circuit in recent decisions has stretched the scope of what had previously been considered a transformative use, McCollum appears to pull back on that expansion.

In a unanimous 3-0 ruling, the Second Circuit ruled that a Broadway play's verbatim performance of a full minute from the iconic Abbott and Costello routine, "Who's on First," in a scene between an introverted, small-town boy and his demonic sock puppet, was not transformative or otherwise fair use as a matter of law. In doing so, the court rejected Southern District of New York Judge George B. Daniels' dismissal (at the pleading stage) of the plaintiff ("TCA")'s copyright infringement action on the basis of fair use. (The Circuit affirmed on the separate ground that plaintiffs failed to plausibly allege a valid copyright interest.)1 

The Parties and Play

In the late 1930s, the famous Vaudeville comedic duo comprised of William "Bud" Abbott and Lou Costello first performed their now-world famous routine known as "Who's on First."2  The purported successors to rights in Who's on First (the "Routine") filed a lawsuit against the producers and author ("Producers") of a successful Broadway play, Hand to God (sometimes referred to below as the "Play"). As described in TCA's complaint, the Play is a "dark comedy about an introverted student in a 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."

In Hand to God's first act, the lead character (Jason) tries to impress a girl (Jessica) by using his sock puppet (Tyrone) to perform just over a minute of the Routine. When Jessica asks Jason if he wrote the Routine, Jason says "yes," to which his sock-puppet alter ego "Tyrone" immediately, and seemingly of his own volition, calls Jason a liar. Tyrone then calls Jessica "stupid" for not recognizing the plagiarism, whereupon the dialogue shifts away from the Routine to various lurid subject matters expressed by Tyrone.

The District Court's Opinion

The Producers moved to dismiss TCA's copyright claim on three grounds:  (1) lack of a valid copyright; (2) the Routine allegedly being in the public domain; and (3) fair use. The district court granted the motion on grounds of fair use, declining to rule on either of the other grounds.

With respect to fair use, the district court found the Play's use of the Routine was so "highly transformative" it constituted fair use as a matter of law. Id. at *1. In the court's view, "by having a single character perform the Routine, the Play's authors were able to contrast 'Jason's seemingly soft-spoken personality and the actual outrageousness of his inner nature,'" which acted as "a darkly comedic critique of the social norms governing a small town in the Bible Belt."  Id. at *7 (quoting TCA Television Corp. v. McCollum, 151 F. Supp. 3d 419, 436 (S.D.N.Y. 2015)).

TCA appealed to the Second Circuit.

The Second Circuit Affirms the Dismissal on Different Grounds (Copyright Validity) but Rejects the Finding of "Transformative Use" as a Matter of Law

While ultimately dismissing plaintiffs' copyright claim on grounds of copyright validity, the Second Circuit found that the district court erred in dismissing the complaint based on fair use. In doing so, the court provided a detailed analysis of what is and is not likely to constitute a "transformative use."

The court considered the Play's potential "transformative use" under its analysis of the first fair use factor—i.e., "the purpose and character of the secondary use," which considers "whether the new work merely supersedes 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."3  Id. at *7 (quoting Campbell v. Acuff Rose Music, Inc., 510 U.S. 569, 579 (1994)).

With respect to the proper focus of the "transformative use" inquiry, the panel stressed that:

[T]he focus of 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.

With these principles in mind, the Second Circuit found the district court's "transformative use" analysis—in particular, its focus on the "general artistic and critical purpose of the Play"— flawed. Id. (emphasis in original). The panel observed that the district court did not explain (and the Second Circuit did not find) that the Play's use of the Routine specifically—as opposed to any other well-known comedy routine—was necessary to the Play's stated purpose of critiquing small-town social norms. Id. Moreover, the Play's use did not change ("transform") the character of the Routine itself; to the contrary, it used the Routine in the same manner as it was originally performed (i.e., as a comedic sketch).

The panel distinguished these facts from those in a notable, recent decision regarding transformative use, Cariou v. Prince, 714 F.3d 694 (2d Cir. 2013). Cariou involved an artist who radically and crudely altered copyrighted photographs without intent to comment on the original, but with the intent to change the original "into something [] completely different." Id. at 707. There, the Second Circuit found the uses transformative (as to the majority of photographs) even if they did not comment on the original, on the grounds that the use gave the photographs "new expression" and made them "barely recognizable."  Id. at 708-710.

Contrasting Hand to God's use to that in Cariou, the panel found that "[f]ar from altering Who's on First to the point where it is 'barely recognizable' in the Play...defendants' use appears not to have altered the Routine at all. The Play may convey a dark critique of society, but it does not transform Abbott and Costello's Routine so that it conveys that message." 2016 WL 5899174 at *9 (emphasis in original). To the contrary, the Play appeared to have performed the Routine verbatim so that the audience would instantly recognize it.

The Producers argued that the Routine was transformative because it was used for a dramatic, rather than comedic, purpose. The Second Circuit disagreed, finding instead that any "dramatic" purpose served by the Routine appeared to be nothing more than a "theatrical device that sets up the plot, but is of little or no significance in itself." In other words, the subject of Jason's lie to Jessica—the Routine—was irrelevant to the dramatic purpose of establishing a dichotomy between Jason and his alter ego. Id.

Finally, the panel found that the district court erred in discounting the Play's commercial purpose, which, unlike nonprofit educational purposes (for example), tends to weigh against the first fair use factor. Id. at 10. In this regard, the court relied heavily on the fact that the Play "not only used an unaltered and appreciable excerpt of the Routine...but also featured the Routine in the Play's advertising." Id. at 11.

Based on these considerations, the Second Circuit concluded the Play's use of the Routine was "not transformative," and that, instead, it "duplicated to a significant degree the comedic purpose of the original work." Id. That conclusion drove the balance of the analysis.4           

Implications for Future "Transformative Use" Analysis

The Second Circuit's opinion clarifies that simply placing an unaltered original copyrighted work "in a sharply different context from its original authors" does not warrant a protectable "transformative use."  Id. at *10. As the court astutely noted, any contrary rule would mean that "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 [or song, joke, poem, etc.] was different from that of the appropriated material."  Id. at *7.

Insofar as it signals the need for district courts to more carefully scrutinize an alleged infringer's secondary use, particularly with respect to "transformative use," the McCollum opinion may be a welcome relief for those who have criticized the Second Circuit's 2013 opinion in Cariou. See, e.g., Nimmer § 13.05[B][6] at 13.224.20 (with respect to Cariou:  "It would seem that the pendulum has swung too far in the direction of recognizing any alteration as transformative, such that this doctrine now threatens to swallow fair use. It is respectfully submitted that a correction is needed in the law."). Notably, the panel in McCollum recognized these criticisms of Cariou, though remarked it "need not defend [that case] here." 2016 WL 5899174 at *9.

The long-term impact of McCollum on the district courts' consideration and application of "transformative use" remains to be seen, but its suggestion that Cariou is at or close to the outer limit of fair use is likely to be influential nationwide given the high level of attention being paid to the Second Circuit's treatment of transformative use in Cariou and, most recently, the Google Books decision.[5]  We will continue to closely monitor and keep our clients updated on these important judicial developments.


1. This client alert does not discuss plaintiffs' copyright ownership, given its highly fact-specific nature.

2. As countless generations will recall, the "Who's on First" routine "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.'" 2016 WL 5899174 at *1.

3. The fair use doctrine, codified in Section 107 of the Copyright Act, requires courts to weigh the following nonexclusive factors:  (i) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (ii) the nature of the copyrighted work; (iii) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (iv) the effect on the use upon the potential market for or value of the copyrighted work.

4. With respect to the remaining factors, the court found that (i) as a creative work and comedy sketch created for public entertainment, the Routine "lies at the heart of copyright's intended protection" and the Producers did not adequately explain why the Play needed to use the Routine as opposed to a public domain work (ii) the Producers used over a minute of verbatim parts of the Routine, including its most "instantly recognizable" parts; and (iii) the district court improperly disregarded the possibility of the Producers' use adversely affecting a derivative market for the Routine—namely, TCA's opportunities to license it to third parties.

5. Authors Guild, Inc. v. Google, Inc., 804 F.3d 202 (2d Cir. 2015).

Second Circuit Finds Use Of "Who's On First" Routine Not Transformative And Not Fair

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions