The heirs of William Abbott and Lou Costello, the popular comedic team from the 1940s and 1950s, have petitioned the Supreme Court, seeking a review of the copyright infringement case that they filed against the producers of the dark comedy Broadway play Hand to God. Hand to God takes place in a religious small town and revolves around the town church’s puppet club that teaches the children of the congregation about the bible. In the play, there’s a scene where the main character performs Abbott and Costello’s famous “Who’s on First?” sketch to impress another character he likes.

According to the petition, Abbott and Costello first began performing the sketch on the radio in the late 1930s, but under copyright law, performances do not count as publication. It was subsequently “published” for the first time when Abbott and Costello performed it in the movie One Night in the Tropics. Universal Pictures registered One Night in the Tropics with the United States Copyright Office in November 1940. Universal renewed the copyright in 1967. Abbott and Costello also performed an expanded version of the sketch in the film The Naughty Nineties, which Universal registered with the Copyright Office in 1945 and renewed on time in 1972. In 1984, Universal used a quitclaim agreement to transfer rights in the routine to the heirs.

The district court granted a motion to dismiss from the producers of Hand to God and ruled that the use of the sketch was fair use. On appeal, the Second Circuit reversed the district court’s reasoning and found that the use of the sketch was not fair use; instead, the appeals court determined that the heirs did not have standing to sue because the copyright was not valid in the first place and the sketch was actually in the public domain. The court’s reasoning was that because Abbott and Costello didn’t create the routine for One Night in the Tropics it wasn’t covered by Universal’s copyright renewal for the film. That is, the comedy duo should’ve filed their own copyright registration and renewal.

The question before the court is “under the 1909 Act, whether material that was incorporated into, and first published by, a movie…is not protected by renewal of the movie copyright unless such material was created specifically for the movie.”

The heirs are asking the Supreme Court to grant the petition because they believe the Second Circuit’s opinion is incorrect and conflicts with the decisions of other circuits, as well as the practices of the Copyright Office. The petition states:

By its opinion, the Second Circuit announced a new rule of eligibility for copyright renewal under the 1909 Act, applied retroactively to the 1940 work—i.e., that the previously unpublished material did not become part of the movie’s unitary copyright for renewal purposes unless it was created solely for the movie. Nothing in the 1909 Act supports such a judge-made rule.

The heirs further argue that a movie is not a composite work like a periodical, which contains separate and distinguishable copyrightable contributions, and that the courts have never treated motion pictures that way under the Act. They add that under the existing case law, if a contribution was first published in a movie with the consent of the author, the publication of the movie divested the contribution’s common law copyright and the movie’s copyright notice afforded its entire contents federal copyright protection. “The Copyright Office has maintained that under the 1909 Act contributions to a motion picture of previously uncopyrighted and unpublished material, such as a script, musical score, or other contributions…have no separate right to renew the copyright in those contributions,” says the petition. Thus, argue the heirs, when the routine was incorporated into the movie it became “inseparable and integrated” and was protected by its copyright and renewal.

For updates on this petition, please stay tuned to our blog.