TCA Television Corp. et al v. McCollum et al

Filing 124

REPORT AND RECOMMENDATION re: 100 MOTION for Attorney Fees. For the foregoing reasons, I recommend granting the Hand to God Producers' motion for attorneys' fees and costs pursuant to 17 U.S.C. § 505, and awarding them $49,84 0 in attorneys' fees and $283.04 in costs. Pursuant to 28 U.S.C. § 636(b) (1) and Rules 72, 6(a), and 6(d) of the Federal Rules of Civil Procedure, the parties shall have fourteen (14) days from this date to file written objections to this Report and Recommendation. Such objections shall be filed with the Clerk of the Court, with extra copies delivered to the chambers of the Honorable George B. Daniels, Room 1310, and to the chambers of the undersigned, Room 1960, 500 Pearl Street, New York, New York 10007. Failure to file timely objections will preclude appellate review. (Objections to R&R due by 6/19/2017.) (Signed by Magistrate Judge James C. Francis on 6/5/2017) Copies Transmitted this Date By Chambers. (anc)

Cir. 2016), cert. denied, __ S. Ct. __, 2017 WL 1408798 (U.S.
2017); TCA Television Corp. v. McCollum (“TCA I”), 151 F. Supp. 3d
419, 426-32, 434-37 (S.D.N.Y. 2015). It should suffice here to say
that two characters in Hand to God -- one a human, the other a
puppet -- “perform, almost verbatim, a little over a minute of
Who’s on First? [sic]”1 and that a video clip of that performance
was included in promotional materials for the play.
F.3d at 175-77 & n.8.

TCA II, 839

The plaintiffs base their infringement

claims on these uses.
A.

Performance History and Complaints

Hand to God was first performed in workshop from late October
2011 until April 2012; it opened off-Broadway in mid-February 2014
and played until late March of that year. (First Amended Complaint
(“Amended Complaint”), ¶ 59).

Approximately one year later, on

March 4, 2015, the play had its first performance on Broadway at
the Booth Theatre.

(Amended Complaint, ¶ 60).

On April 13, 2015,

counsel for plaintiff TCA Television Corp. as “the owner of various
proprietary material related to the estate of Lou Costello,”
together with a representative of the estate of Abbott, sent a
cease-and-desist letter to the Booth Theatre accusing the play of
infringing on copyrights owned by the estates.

(Letter of Greg S.

Bernstein dated April 13, 2015, attached as Exh. 4 to Declaration
of Mark J. Lawless dated Jan. 12, 2017 (“Lawless 1/12/17 Decl.”),
1

The Chicago Manual of Style states that the titles of
shorter works should be placed in quotation marks rather than
underlined (or italicized).
See The Chicago Manual of Style §
8.161 (16th ed. 2010) (“[T]itles of articles, chapters, and other
shorter works are set in roman and enclosed in quotation marks.”).
2

at 1).

On May 29, 2015, an attorney from the same firm, now acting

as “litigation counsel for the successors in interest to the
estates of Lou Costello and Bud Abbott,” sent a letter to counsel
for the defendants expressing the intent “to file a Complaint and
Motion for Preliminary Injunction no later than June 4th unless the
dispute is settled prior to that date.” (Letter of Marc J. Rachman
dated May 29, 2015, attached as Exh. 5 to Lawless 1/12/17 Decl.),
at 1).
The Complaint was filed on June 4, 2015, as threatened.

The

original complaint named eighteen defendants -- sixteen individuals
and entities identified as “producers” of Hand to God, along with
the playwright and Key Brand Entertainment Inc., the owner of the
website

Broadway.com,

which

“feature[d]

video

clips

of

the

infringing scene.” (Complaint, ¶¶ 9-26). The Complaint, which was
filed the day before the 69th Annual Tony Awards ceremony, at which
Hand to God was nominated for five awards, received some attention
from the press. (Lawless 1/12/17 Decl., ¶ 6; Andrew R. Chow, “Hand
to God” Play Sued by Abbott and Costello Heirs Over Use of “Who’s
on First?”, N.Y. Times, June 4, 2015, attached as Exh. 6 to Lawless
1/12/17 Decl.; Lawsuit Filed by Abbott & Costello Heirs Against
Acclaimed Hand to God Play Claims Infringement of Famous “Who’s on
First?” Routine, Business Wire, June 5, 2015, attached as Exh. 7 to
Lawless 1/12/17 Decl.).
Four days later, the Amended Complaint was filed against the
same defendants, except that Key Brand Entertainment was replaced
by Hand to God LLC, “a producer, advertiser and/or owner” of Hand
3

to God.

(Amended Complaint, ¶¶ 9-26).

The Amended Complaint

identifies the plaintiffs as “heirs to Abbott & Costello” who own
valid copyrights in “Who’s on First?” (Amended Complaint, ¶ 1), and
reviews the history of the copyrights at issue.

According to the

Amended Complaint, the Routine was first performed in 1938 on a
television show.

(Amended Complaint, ¶ 32).

It was “first

published for the purposes of registration pursuant to the 1909
[Copyright] Act” in 1940 in the Universal Pictures Co. (“UPC”) film
One Night in the Tropics, and an expanded version was later
published in 1945 in the UPC film The Naughty Nineties.
Complaint, ¶ 42).

(Amended

Pursuant to a work-for-hire agreement dated

November 6, 1940 (the “November 1940 Agreement”), the rights to the
performances in these two movies were granted to UPC, which
registered each film in the year it was released.

(Amended

Complaint, ¶¶ 43-44; Copyrights dated Nov. 15, 1940, and June 29,
1945, attached as Exh. 1 to Amended Complaint). UPC timely renewed
both

copyrights

(Amended

Complaint,

¶

45;

Applications

for

Registration of a Claim to Renewal Copyright dated Dec. 7, 1967,
and date illegible, attached as Exh. 2 to Amended Complaint),
which,

after

amendments

to

the

Copyright

protection for the works until 2035 and 2040.
¶¶ 46-48).

Act,

resulted

in

(Amended Complaint,

In 1984, Universal Pictures (“Universal”), a division

of the successor to UPC, executed a quitclaim agreement with Abbott
& Costello Enterprises (“ACE”), a partnership formed by the heirs
of Abbott & Costello.

(Amended Complaint, ¶ 50; Quitclaim dated

March 12, 1984 (“1984 Quitclaim”), attached as part of Exh. 3 to
4

Amended Complaint).

That partnership was dissolved in 1992, and,

through assignments and inheritance, each of the three plaintiffs
in this action allegedly owned a percentage of the copyrights at
the time the Amended Complaint was filed.

(Amended Complaint, ¶¶

54-57). The Amended Complaint also alleges a non-statutory -- that
is, common law -- copyright in a radio performance of the routine
in 1947.

(Amended Complaint, ¶¶ 35, 101).

B.

Motion to Dismiss

The defendants filed a motion to dismiss the Amended Complaint
that (1) asserted that the Routine had fallen into the public
domain and (2) advanced a fair use defense.

The Hand to God

Producers argued that “Who’s on First?,” originally performed in
1938, cannot have been a work-for-hire under the November 1940
Agreement,

because

it

pre-existed

that

agreement,

which

“specifically excluded pre-existing comic routines . . . from work
for hire status or other ownership by [UPC].”

(Memorandum in

Support of Defendants’ Joint Motion to Dismiss the First Amended
Complaint for Failure to State a Cause of Action (“Def. MTD Memo.”)
at 14).

They further cited the following provision from the

November 1940 Agreement to support their position that UPC had “a
mere license to incorporate the Routine in its movie” (Def. MTD
Memo. at 7):
FIFTH: The Artists [Abbott and Costello] agree to furnish
and make available to the Producer [UPC] all literary and
dramatic material and routines heretofore used by the
Artists either on the radio or otherwise and now owned by
the Artists, and the Producer shall have the right to use
said material and routines to such extent as the Producer
may desire in connection with any photoplay in which the
Artists render their services hereunder and in connection
5

with the advertising and exploitation of such photoplay.
. . . The Artists expressly agree that they will not use
or license, authorize or permit the use of any of the
material and/or routines referred to in this paragraph in
or in connection with motion pictures for any person,
firm or corporation other than the Producer, at any time
prior to the termination of the employment of the Artists
under this agreement or one year after the general
release of the photoplay in which used, whichever is
greater.
The Artists reserve the right to use on the radio and in
personal appearances authorized under the terms of this
agreement any material and routines referred to in this
paragraph; provided, however, that such material and
routines shall have been created or used by the Artists
prior to the date of this agreement or created by the
artists solely (or by writers employed by the Artists in
connection with services other than motion pictures)
during the term of this agreement . . . .
(Def. MTD Memo. at 14 (alterations in original); November 1940
Agreement, attached as Exh. A to Declaration of Mark J. Lawless
dated July 7, 2015 (“Lawless 7/7/15 Decl.”), at 5-6).

Indeed, the

defendants revealed that Abbott and Costello themselves registered
the script of a version of the Routine broadcast in 1944 -- a fact
“not even alluded to in the [Amended] Complaint” -- which “debases
any notion that [UPC] had acquired ownership of the text of the
Routine under the [November] 1940 Agreement.”

(Def. MTD Memo. at

7, 15; Certificate of Copyright Registration dated March 13, 1944
(“1944 Registration”), attached as Exh. B to Lawless 7/7/15 Decl.).
Moreover, the 1984 Quitclaim “distinguish[es] the text of the
Routine from its registered performances.” (Def. MTD Memo. at 15).
Specifically, the 1984 Quitclaim notes that Universal retained
rights under the November 1940 Agreement and a later 1964 agreement
(which allowed UPC to use film footage of Abbott and Costello in a
television documentary) to use (or continue to use) the pair’s
6

performance of “Who’s on First?” in The Naughty Nineties and in any
other “photoplays . . . produced by Universal” pursuant to any
agreement between the studio and the duo or their successors-ininterest.

(1984 Quitclaim at 1).

And the quitclaim was executed

“in reliance upon the representation by Jerome E. Weinstein,
attorney for ABBOTT & COSTELLO ENTERPRISES” -- a partnership of the
heirs of Abbott and Costello -- that the partnership was “the owner
of copyright in and to the Routine.”

(1984 Quitclaim at 2).

In

light of these facts, the Hand to God Producers contended that
“Who’s on First?” was “a pre-existing freestanding contribution to
a collective work, licensed to [UPC] for inclusion in the work.”
(Def. MTD Memo. at 15). The defendants thus argued that, while the
registration of One Night in the Tropics protected the Routine
during the initial copyright term, UPC, as “a mere licensee,” could
not “register renewal in the copyright when the time came in 1968”;
rather, “only Abbott or the heirs to Costello [as owners of the
copyright in the Routine] could exercise the renewal right.” (Def.
MTD Memo. at 15-16).
into

the

public

When they failed to do so, the Routine fell

domain.

(Def.

MTD

Memo.

at

17-18).

The

defendants’ second major argument contended that, even if the
plaintiffs owned the copyright in the routine, its appearance in
Hand to God constituted fair use.

(Def. MTD Memo. at 19-22).

The plaintiffs countered that “[u]nder the terms of the
November 1940 Agreement, Abbott & Costello granted UPC all rights
in the existing versions of the Who’s on First? [sic] routine in
connection with the motion pictures that UPC produced, in which
7

Abbott & Costello would perform.”

(Plaintiffs’ Memorandum of Law

in Opposition to Defendants’ Motion to Dismiss (“Pl. MTD Memo.”) at
6).

Like the defendants, they pointed to the fifth provision of

the agreement, but supplied different emphasis in order to bolster
their position that the November 1940 Agreement was no mere
license, but rather was an assignment of the copyright:
The Artists agree to furnish and make available to the
Producer all literary and dramatic material and routines
heretofore used by the Artists either on the radio or
otherwise and now owned by the Artists, and the Producer
shall have the right to use said material and routines to
such extent as the Producer may desire in connection with
any photoplay in which the Artists render their services
hereunder and in connection with the advertising and
exploitation of such photoplay. The Artists warrant that
they know of no claims that the use of said material and
routines or any part thereof as herein permitted will
violate or infringe any copyright or any other right or
rights of any other person, firm or corporation
whatsoever.
(Pl. MTD Memo. at 6-7 (quoting November 1940 Agreement at 5)).
The plaintiffs also cited the first section of the November
1940 Agreement, which is the work-for-hire provision:
[T]he Producer hereby engages and employs the Artists,
severally and as a team . . . to render to the Producer
their exclusive services as actors, performers and
entertainers in the portrayal of such roles or parts as
may be designated by the Producer in such photoplays as
may be designated by the Producer, and further employs
the Artists to render their services in consulting,
advising, collaborating with and assisting the Producer
in the preparation of stories and screen plays upon which
such photoplays are to be based and in otherwise
performing such services as may be required of them
pursuant to the provisions of this agreement.
(Pl. MTD Memo. at 7 (quoting November 1940 Agreement at 1)).

This

provision, they argued, “sets out the services that Abbott &
Costello were expected to provide -- specifically, to help prepare
8

the content of motion pictures, and to perform that content.

Such

content included a version of Who’s on First? [sic], and as such,
was prepared as a work-for-hire for UPC.”

(Pl. MTD Memo. at 7).

Consequently, under the Copyright Act of 1909, “UPC was considered
the ‘author’ of the version of Who’s on First? [sic] that appeared
in the 1940 Motion Picture for purposes of copyrighting the work.”
(Pl. MTD Memo. at 7).

Returning to the fifth provision, the

plaintiffs contended that the reservation of rights merely allowed
Abbott and Costello “to continue to use and perform, on the radio
or in personal appearances, versions of Who’s on First? [sic] that
pre-dated the 1940 Agreement, or that were created separate and
apart from the motion pictures produced by UPC thereunder.”
MTD Memo. at 8-9).

(Pl.

Asserting that “[a] motion picture . . . is an

integrated work,” the Abbott and Costello Successors insisted,
“[T]here can be no dispute that, until the 1984 execution of the
Quitclaim

Agreement,

UPC

was

the

sole

owner

of

the

federal

copyright in [One Night in the Tropics] and [The Naughty Nineties]
and was therefore the only party eligible to register or renew the
Who’s on First? [sic] routines contained therein.”

(Pl. MTD Memo.

at 9).
The

Abbott

and

Costello

Successors

then

introduced

an

agreement from July 1940 -- not mentioned in the Complaint or the
Amended Complaint because it was “discovered . . . after the filing
of the Amended Complaint” (Pl. MTD Memo. at 10 n.7) -- to argue
that, even if the Routine was not covered by the November 1940
Agreement, “alternatively, it certainly was covered” by the prior
9

agreement, in which Abbott and Costello “g[a]ve and grant[ed] to
[UPC] the sole and exclusive right to photograph and/or otherwise
reproduce any and all of their acts”; “furnish[ed]” UPC with “the
material and routines heretofore used and now owned by [Abbott and
Costello] for use by [UPC] in the photoplay [One Night in the
Tropics] . . . and for which [UPC] shall have exclusive motion
picture rights”; and “g[a]ve and grant[ed] to [UPC] solely and
exclusively all rights of every kind and character whatsoever in
and to the same” (Pl. MTD Memo. at 10 (emphasis omitted) (quoting
Agreement dated July 24, 1940 (“July 1940 Agreement”), attached as
Exh. B to Declaration of Marc J. Rachman dated July 31, 2015, at 34)).

Those rights survived the execution of the November 1940

Agreement.

(Pl. MTD Memo. at 11).

The plaintiffs stated that language in the 1984 Quitclaim that
ACE was the owner of the copyright in the Routine refers to the
common law copyright rather than statutory copyrights.
Memo. at 11-12).

(Pl. MTD

Moreover, if UPC did not own the rights to the

Routine, it would not have had the power to grant them to ACE, and
“the [1984] Quitclaim [] would have been [] pointless.”

(Pl. MTD

Memo. at 12).
The Abbott and Costello Successors asserted that these facts
established that UPC was the only entity that could have renewed
the copyright in One Night in the Tropics and consequently protect
the

Routine.

(Pl.

MTD

Memo.

at

12).

They

countered

the

defendants’ position that “Who’s on First?” was a freestanding
contribution to a collective work merely licensed to UPC by
10

arguing, again, that the movie was “an integrated work where the
component elements are indivisible from each other,” rather than a
composite work.
1944

(Pl. MTD Memo. at 14).

Registration,

calling

the

They then addressed the

defendants’

argument

that

it

registered the script of “Who’s on First?” in the names of Abbott
and Costello for a radio performance “utter speculation.” (Pl. MTD
at 18).
The Abbott and Costello Successors went on to oppose the
defendants’ argument that Hand to God’s quotation of the Routine
was

fair

use,

and

asserted

that

the

1947

radio

performance

“remain[ed] protected under common law copyright.”2 (Pl. MTD Memo.
at 20-25).
C.

The District Court Opinion

The

Honorable

George

B.

Daniels,

U.S.D.J.,

granted

the

defendants’ motion, agreeing only with their fair use argument.
Judge Daniels noted that, “[a]s a threshold matter, a federal
infringement claim requires that Plaintiffs allege they possessed
a valid copyright at the time of the alleged infringement.” TCA I,
151 F. Supp. 3d at 426.

He found that Abbott and Costello

“retained common law copyright protection” of “Who’s on First?” as
performed on the radio in 1938; additionally, the November 1940
Agreement, which “furnish[ed] and ma[de] available to

[UPC]

all

. . . routines heretofore used by [Abbot and Costello] . . . and
2

After oral argument on the motion to dismiss, the plaintiffs
voluntarily dismissed without prejudice claims against all
defendants other than Mr. McCollum, Ensemble Studio Theatre Inc.,
MCC Theater, Robert Askins, Hand to God LLC, and the Doe
defendants. (Memorandum Endorsement dated Sept. 18, 2015).
11

now owned by [them]” in connection with UPC’s later registration of
the

copyrights

in

One

Night

in

the

Tropics

and

The

Naughty

Nineties, “constitute[d] an implied assignment of the initial
[common law] copyright from Abbott and Costello.”3
(quoting

November

1940

Agreement).

He

Id. at 428-29

discounted

the

1944

Registration, saying “its existence does not render Plaintiffs’
factual allegations implausible,” because Abbott and Costello could
have been mistaken about their ownership of the copyright.
429-30.
Night

Id. at

The initial publication of “Who’s on First?” within One
in

the

Tropics,

to

which

UPC

held

the

copyright,

“extinguished whatever common law copyright Abbott and Costello had
in the unpublished version of the Routine.”

Id. at 430.

Finally,

Judge Daniels held that
[b]ecause as much of the 1938 Routine as was disclosed in
the motion picture was published when the motion picture
was published, and because the law treats motion pictures
as unitary works, the copyrights in One Night [in the
Tropics] and The Naughty Nineties that UPC registered
“merged” the Routine with the film.
Id. at 431. “Thus, Plaintiffs [] sufficiently alleged a continuous
chain of title” over “Who’s on First?”

Id.

Judge Daniels then analyzed the use of the routine in Hand to
God applying the “four nonexclusive factors” of 17 U.S.C. § 107.
See id. at 433-37.

He found that the routine was “clearly a

creative work” and that the proportion of the routine used was
substantial; however, he also ruled that the use of the routine in
Hand to God did not affect the market for the original and that,
3

Assignment of a common law copyright does not require a
writing. See id. at 428 (collecting cases).
12

most importantly, its use in the play was transformative.

See id.

He therefore found that the defendants were protected by the fair
use doctrine and that the plaintiffs had failed to state a claim.4
Id. at 437.
D.

Appellate Arguments

The plaintiffs appealed the judgment, arguing that Judge
Daniels misapplied the fair use factors.
Appendix

for

Plaintiffs-Appellants,

(Brief and Special

attached

as

Exh.

A

to

Declaration of Jonathan D. Reichman dated Feb. 9, 2017 (“Reichman
Decl.”), at 16-18).
appeal.

The Hand to God Producers did not cross-

Instead, they opposed the Abbott and Costello Successors’

fair use argument and additionally contended that pursuant to the
so-called “Right for Any Reason Rule,”5 the Second Circuit could
affirm the District Court’s judgment if it found that “no valid
copyright

exists

for

Defendants-Appellees

the

text”

(“Appellee

Reichman Decl., at 8-10, 28-29).

of

the

Br.”),

Routine.

attached

as

(Brief
Exh.

B

for
to

The Hand to God Producers argued

that the district court’s opinion was flawed “by three leaps of
faith.”

(Appellee Br. at 31).

The first was that Abbott and

Costello in 1940 signed away “all of their existing comedic

4

In addition, Judge Daniels held that the any common law
copyright in pre-1972 radio recordings had been extinguished. See
id. at 437.
5

“An appellee who does not take a cross-appeal may ‘urge in
support of a decree any matter appearing before the record,
although his argument may involve an attack upon the reasoning of
the lower court.’” Jennings v. Stephens, __ U.S. __, __, 135 S.
Ct. 793, 798 (2015) (quoting United States v. American Railway
Express Co., 265 U.S. 425, 435 (1924)).
13

birthright” to UPC in exchange for a possible multi-picture deal.
(Appellee Br. at 31). The second was that Abbott and Costello “and
their successors’ lawyers continuously erred and betrayed” that
agreement “by making separate filings in the Copyright Office
reflecting [that] Abbott & Costello’s copyright ownership of the
text arose from their 1944 registration.”

(Appellee Br. at 31).

In support of this contention, the Hand to God Producers pointed
out that Abbott and Costello’s heirs “repeatedly referred to the
1944 registration” for the “A&C Baseball Routine” in “subsequent
registrations for variations of the Routine.” (Appellee Br. at 32;
see TCA II (No. 16-0134), Joint Appendix at 240, 242-43, 245). The
third was “that the heirs’ written representation to Universal
Studio that they were ‘the owner[s] of copyright in and to the
Routine,’ which was made to induce the Quitclaim . . . , actually
referred to an extinguished common law copyright and not to federal
copyright in the Routine itself.”

(Appellee Br. at 31).

The Hand to God Producers went on to argue that the Routine
cannot have been a work made for hire under the November 1940
Agreement because it pre-existed that agreement; that the 1940
Agreements were not assignments of copyright, but rather licenses;
and that there is no evidence of an oral or implied assignment as
suggested by Judge Daniels.

(Appellee Br. at 34-39).

Thus, the

copyright protection of the 1940 version of the Routine could not
be extended by UPC through its renewal of the copyright to the
film, but rather had to be renewed by Abbott and the heirs of
Costello when the original copyright in One Night in the Tropics
14

expired in 1968.

(Appellee Br. at 40).

The Abbott and Costello Successors’ reply insisted that the
copyright in the Routine was assigned to UPC and thus UPC’s
ownership was not dependent on a work-for-hire arrangement, but
that, if it were, the 1940 work-for-hire provision confirmed a
previously agreed-to work-for-hire arrangement.

(Reply Brief for

Plaintiffs-Appellants (“Appellant Reply”), attached as Exh. C to
Reichman Decl., at 22-23).

Addressing the 1944 Registration, the

Abbott and Costello Successors noted that it was not accompanied by
a deposit of the script, “which would be necessary for determining
to what extent the . . . ‘script’ contained ‘new matter’ not
included in the earlier 1940 [] [m]ovie.” (Appellant Reply at 24).
Therefore, although the 1944 Registration was not renewed, “it
would not have injected into the public domain those portions of
the Routine contained in the earlier . . . [m]ovie.”
Reply at 24).

(Appellant

The statement about ownership of “Who’s on First?”

in the 1984 Quitclaim merely “confirm[ed] that [Universal] was
returning certain rights in the Routine to the proper persons.”
(Appellant

Reply

at

25).

Finally,

the

Abbott

and

Costello

Successors contended that the district court properly found that
“so much of the Routine as was used in the [m]ovies ‘merged’ with
the [m]ovies to become a ‘unitary whole’ with a single copyright
owner, UPC.”
E.

(Appellant Reply at 27-28).

The Second Circuit Opinion and Subsequent Submissions

The Court of Appeals affirmed the District Court’s dismissal,
agreeing with the Hand to God Producers’ argument that the Routine
15

had fallen into the public domain when Abbott and Costello’s heirs
failed to renew the copyright in 1968.

In particular, the Second

Circuit held that dismissal was not proper based on fair use,
finding that “all four statutory factors weigh[ed] in favor of
plaintiffs and against a defense of fair use.”
187.

TCA II, 839 F.3d at

However, the court “identif[ied] no merit in any of the

theories relied on by plaintiffs to support their copyright claim,”
-- that is, assignment, work for hire, or merger –- and therefore
“affirm[ed] dismissal of the amended complaint for failure to plead
a valid copyright.”

Id.

Regarding assignment of the copyright, the Court or Appeals
examined both the November 1940 Agreement, which was a multi-year
and multi-picture agreement, and the July 1940 Agreement by which
Abbott and Costello agreed to appear in Night in the Tropics.
at 173.

Id.

The court found Judge Daniels’ conclusion that the

language of the November 1940 Agreement could be construed as an
implied

assignment

of

the

initial

copyright

“flawed

in

two

respects.” Id. at 188. First, each of the two relevant agreements
“clearly express[es] the parties’ intent for Abbott and Costello to
license the use of, not assign copyrights in, their existing comedy
routines.”

Id.

Second, “requiring no further discussion in the

face of clear contract language,” the court found that “UPC’s
registration (and renewal) of copyrights in its movies says nothing
about what Abbott and Costello intended to convey in the two
agreements,” reasoning that, whether or not UPC had rights in the
Routine, it would have renewed the films’ copyrights in order to
16

protect its rights in the films themselves.

Id. at 188.

The July 1940 Agreement, in which the duo agreed to appear in
Night in the Tropics, merely “furnish[ed] UPC with ‘routines
heretofore used and now owned by [Abbott and Costello] for use by
[UPC] in the photoplay in which they appear hereunder and for which
[UPC]

shall

have

the

exclusive

motion

Id. (quoting July 1940 Agreement at 4).

picture

rights.’”

Similarly, the November

1940 Agreement
states that the team would furnish UPC with all “routines
heretofore used by [Abbott and Costello] either on the
radio or otherwise and now owned by [Abbott and
Costello],” and that UPC would “have the right to use
said material and routines to such extent as [UPC] may
desire in connection with any photoplay in which the
Artists render their services hereunder.”
Id.

This quoted language from the two agreements “makes plain[]

[that] Abbott and Costello furnished UPC with their routines for a
limited purpose: use in any movies in which the team appeared under
the respective agreements. This is unmistakably the language of an
exclusive, limited-use license, not the assignment of copyright.”
Id. at 188-89.

The court further concluded that the Routine was

not a work-for-hire owned by UPC because “it is not plausible to
infer that the Routine as performed in 1938,” which predated the
work-for-hire provision in the November 1940 Agreement, “did not
already contain” the parts of the routine appropriated in Hand to
God.

Id. at 190.

Finally, the argument that a copyright in the

Routine could not be registered separately from the films because
the routine merged with the films failed.
First?”

was

a

freestanding

work,
17

Id. at 191.

pre-existing

the

“Who’s on
films

and

performed by Abbott and Costello for years after, as contemplated
in the July 1940 Agreement and the November 1940 Agreement. Id. at
191-92.

The 1984 Quitclaim’s “representation that plaintiffs’

predecessors-in-interest still owned the Routine’s copyright in
1984 [was] also at odds with the argument that the Routine had so
merged with [One Night in the] Tropics as to admit a single
copyright owned by UPC.”

Id. at 191.

The court concluded:

In sum, because plaintiffs fail plausibly to allege that
(1) Abbott and Costello assigned their common law
copyright in Who’s on First? [sic] to UPC; (2) the
Routine, as appropriated by defendants in Hand to God,
was first created for UPC as a work-for-hire; or (3) the
Routine so merged with the UPC movies in which it was
performed as to become a unitary whole, we conclude that
plaintiffs did not plead their possession of a valid
copyright in the Routine, as required to pursue their
infringement claim.
Id. at 192.
Based on the Second Circuit’s opinion affirming the dismissal,
the Hand to God Producers filed a motion for attorneys’ fees. When
the Abbott and Costello Successors filed a petition for a writ of
certiorari,6 I denied that motion without prejudice to renewal in
6

The petition argued only that the Routine merged into the
films in which it appeared and pressed a variation of the theory
they presented to Judge Daniels and the Second Circuit. (Petition
for a Writ of Certiorari (“Cert. Petition”), attached as Exh. to
Letter of Jonathan D. Reichman dated April 19, 2017, at 13-14, 2021).
The Abbott and Costello Successors contended that UPC’s
renewal of the copyright of One Night in the Tropics prevented the
Routine from falling into the public domain because, prior to its
appearance in the film, it was not protected by statutory copyright
(because it had not been “published” as that term is understood
under the 1909 Copyright Act). (Cert. Petition at 24, 28). They
distinguished cases rejecting the theory of merger for freestanding
works appearing in longer works like films by noting that, in those
cases, the non-integrated material had previously been protected by
copyright by operation of law. (Cert. Petition at 27). Under this
argument, what is determinative is not whether the relevant work is
18

the event that the petition was denied, as it was on May 22, 2017.
The Hand to God Producers thereafter renewed the motion.

(Order

dated May 23, 2017).
Discussion
A.

Legal Standard

According

to

Section

505,

a

district

court

may

in

its

discretion “award a reasonable attorney’s fee to the prevailing
party.”

17

U.S.C.

§

505.

“Fee

awards,

‘automatic’ or given ‘as a matter of course.’”

however,

are

not

Beastie Boys v.

Monster Energy Co., 112 F. Supp. 3d 31, 39-40 (S.D.N.Y. 2015)
(quoting Fogerty v. Fantasy, Inc., 510 U.S. 517, 533 (1994)).
Rather, awards under this section “should encourage the types of
lawsuits that promote” the Copyright Act’s aims of “encouraging and
rewarding authors’ creations while also enabling others to build on
that work.”

John Wiley & Sons, Inc. v. Kirtsaeng, No. 08 Civ.

7834, 2016 WL 7392210, at *2 (S.D.N.Y. Dec. 21, 2016) (quoting
Kirtsaeng v. John Wiley & Sons, Inc. (Kirtsaeng II), __ U.S. __,
__, 136 S. Ct. 1979, 1986 (2016)).7

freestanding and separable, but whether it was protected by
statutory copyright prior to its inclusion in a motion picture.
7

The Supreme Court first addressed Kirtsaeng v. John Wiley &
Sons, Inc. in 2013, with a majority of the Court finding that “the
‘first sale’ doctrine applies to copies of a copyrighted work
lawfully made abroad,” reversing the judgment in favor of
plaintiff-appellee John Wiley & Sons, Inc. (“John Wiley”), and
remanding the case.
Kirtsaeng v. John Wiley & Sons, Inc.
(Kirtsaeng I), __ U.S. __, __, __, 133 S. Ct. 1351, 1355-56, 1371
(2013).
On remand, the district court denied the defendant’s
motion for attorneys’ fees under Section 505, and that issue
eventually came before the Supreme Court in Kirtsaeng II.
Kirtsaeng II, __ U.S. at __, 136 S. Ct. at 1983-84.
19

The Supreme Court recently provided “additional guidance” in
the

form

of

“governing

standards

and

principles”

“utterly freewheeling inquiries” under Section 505.
__ U.S. at __, 136 S. Ct. at 1979, 1985-86.
that

“substantial

weight”

should

be

to

prevent

Kirtsaeng II,

While the Court held

given

“to

the

objective

(un)reasonableness of a losing party’s litigation position,” id. at
__, 136 S. Ct. at 1986, it also cautioned that this factor “can be
only an important [one] in assessing fee applications -- not the
controlling one,” id., __ U.S. at __, 136 S. Ct. at 1988.

That is,

a finding of reasonableness should not “raise a presumption against
granting fees” or become the de facto dispositive factor in the
analysis.

Id. at __, 136 S. Ct. at 1989.

So a district court must

also take into account “all other relevant factors,” id. at __, 136
S. Ct. at 1989, including “the frivolousness of the non-prevailing
party’s claims or defenses; [] [the] party’s motivation; . . . and
[the goals of] compensation and deterrence,” Bryant v. Media Right
Productions, Inc., 603 F.3d 135, 144 (2d Cir. 2010) (citing
Fogerty, 510 U.S. at 534 n.19).

The inquiry may analyze conduct

other than the legal and factual positions that caused the nonprevailing party ultimately to fail.

See, e.g., BMG Rights

Management (US) LLC v. Cox Communications, Inc., No. 14-cv-1611,
2017

WL

600093,

at

*4

(E.D.

Va.

Feb.

14,

2017)

(examining

defendants’ discovery abuses), appeal docketed, Nos. 17-1352, 171353 (4th Cir. March 20, 2017).

20

B.

Analysis
1.

Objective Unreasonableness

The plaintiffs argue that their litigation position should not
be found objectively unreasonable because (1) the Second Circuit
determined that their arguments against the defendants’ fair use
defense were “in fact entirely valid” and (2) Judge Daniels found
merit in the plaintiffs’ position on the copyright ownership issue
(which the plaintiffs call the “standing” issue).
Memorandum

of

Law

in

Opposition

to

(Plaintiffs’

Defendants’

Motion

for

Attorneys’ Fees (“Pl. Fees Memo.”) at 8-9).
The fact that the plaintiffs’ position on the fair use issue
was ultimately vindicated does not require a determination that
their litigation position was objectively reasonable.

Rather, if

a claim “is clearly without merit on any determinative issue, then
it is objectively unreasonable.”

Torah Soft Ltd. v. Drosnin, No.

00 Civ. 5650, 2001 WL 1506013, at *5 (S.D.N.Y. Nov. 27, 2001).
Here, the Abbott and Costello Successors may have won the fair use
battle, but they lost the war -- and on a fundamental issue: the
existence

of

defendants.

a

valid

copyright

in

the

material

used

by

the

The Second Circuit’s decision that the routine had

fallen into the public domain eviscerated the plaintiffs’ standing
to bring suit. See Creazioni Artistiche Musicali, S.r.l. v. Carlin
America, Inc., No. 14 Civ. 9270, 2016 WL 7507757, at *2 (S.D.N.Y.
Dec. 30, 2016) (“[I]n order to have standing to sue, a plaintiff
must be ‘the legal or beneficial owner of an exclusive right under
a valid copyright at the time of the alleged infringement.’”
21

(quoting Hutson v. Notorious B.I.G., LLC, No. 14 Civ. 2307, 2015 WL
9450623, at *3 (S.D.N.Y. Dec. 21, 2015))); Pannonia Farms, Inc. v.
USA Cable, No. 03 Civ. 7841, 2006 WL 2872566, at *5 (S.D.N.Y. Oct.
5, 2006) (holding that there was no legal basis for plaintiffs’
copyright claims where subject of suit was “clearly in the public
domain”).

Without standing to sue, the plaintiffs’ positions on

whether Hand to God’s use of the routine was transformative,
commercial, substantial, or affected the market for the original
were, at most, of academic interest.
The plaintiffs’ second proposition -- that the fact that Judge
Daniels found that they owned a valid copyright precludes a finding
that their position on this issue was objectively unreasonable -is also problematic.

First, it is not unusual for courts to

disagree, even on such fundamental issues as whether a particular
position is reasonable or not.8

Second, and more fundamentally, it

8

For example, courts regularly disagree on whether a statute
is ambiguous, that is, whether it is “susceptible to two or more
reasonable meanings.” Rabin v. Wilson-Coker, 362 F.3d 190, 196 (2d
Cir. 2004) (quoting Natural Resources Defence Council v. Muszynski,
268 F.3d 91, 98 (2d Cir. 2001)). In that situation, the court
finding the statute unambiguous must necessarily find that at least
one of the other courts’ potential interpretations is unreasonable.
Similarly, we have been cautioned that “language . . . does not
automatically become ambiguous every time two courts disagree as to
its meaning.” United States v. Leal-Felix, 625 F.3d 1148, 1158
(9th Cir. 2010) (Bennett, J., dissenting), rev’d en banc, 665 F.3d
1037 (9th Cir. 2011); see also Moskal v. United States, 498 U.S.
103, 108 (1990). That is, each of two (or more) courts may find a
different position reasonable, but that does not necessarily mean
all of those positions must always be considered reasonable. See,
e.g., Carr v. United States, 560 U.S. 438, 444, 456-57 (2010)
(finding statute’s meaning plain although circuits were split on
proper interpretation); see also In re Philadelphia Newspapers,
LLC, 599 F.3d 298, 313 (3d Cir. 2010) (“[A]s Justice Thomas has
observed, ‘[a] mere disagreement among litigants over the meaning
of a statute does not itself prove ambiguity; it usually means that
22

focuses on Judge Daniels’ opinion attention that more properly
should be trained on the Abbott and Costello Successors’ litigation
positions -- specifically, on the reasonableness of the Abbott and
Costello Successors’ litigation positions in light of the outcome
of the case.9

The question to be answered, then, is whether it was

objectively reasonable for the Abbott and Costello Successors to
argue that (1) the 1940 Agreements assigned the copyright in the
Routine to UPC rather than licensing it, (2) the Routine was a
work-for-hire and therefore originally owned by UPC, or (3) the
Routine

merged

with

the

film

One

Night

in

the

Tropics,

the

copyright to which UPC registered and renewed.
Although

each

of

these

issues

exhibits

ultimately none is a particularly close call.

some

complexity,

Indeed, the Second

Circuit’s opinion calls the positions of the Abbott and Costello
Successors

meritless,

TCA

Television,

839

F.3d

at

187,

and

implausible, id. at 190; and finds the facts and legal principles
supporting the defendants’ positions clear, id. at 188-89; plain,
one of the litigants is simply wrong.’
The same is true of
disagreements among courts.” (second alteration in original)
(internal citation omitted) (quoting Bank of America National Trust
& Savings Association v. 203 North LaSalle Street Partnership, 526
U.S. 434, 461 (1999) (Thomas, J., concurring))).
9

To be sure, Justice Kagan supported her statement that John
Wiley’s (unsuccessful) position in Kirtsaeng I was reasonable by
noting that “several Courts of Appeals and three Justices of the
Supreme Court had agreed with it.” Kirtsaeng II, __ U.S. at __,
136 S. Ct. at 1984.
I do not, however, read that dictum to
indicate either that the fact that one or more judges (or justices)
have sided with a non-prevailing party (or other litigants
similarly situated to that non-prevailing party) requires a finding
of reasonableness or that those jurists’ opinions, rather than the
non-prevailing party’s positions, are the proper target of the
inquiry.
23

id. at 189-90; and unmistakable, id. at 189.

As further discussed

below, I agree with these characterizations and further find that,
notwithstanding any intricacy arising from the interpretation of
interrelated documents created over a period of decades, the Abbott
and Costello Successors’ arguments were objectively unreasonable.
a.

Assignment

As noted, the Second Circuit found that the language of the
July 1940 Agreement and the November 1940 Agreement “plain[ly]”
furnished a mere license to UPC to use the Routine in movies, with
Abbott and Costello retaining the right to exploit “Who’s on
First?” in other ways and in other media.
89.

TCA II, 839 F.3d at 188-

That is the only reasonable reading of the agreements.

Each

one clearly grants UPC the right to use the Routine only in one or
more motion pictures. Indeed, as the Second Circuit noted, counsel
for the plaintiffs “acknowledged as much in the district court when
they argued that the agreements’ language ‘represented a clear
grant of rights to UPC in all previous acts and routines created by
Abbott and Costello . . . if used in any motion pictures produced
by UPC in which Abbott & Costello provided their services.”10

10

Id.

Similarly, although the Abbott and Costello Successors
emphasized language from the July 1940 Agreement granting UPC
“solely and exclusively all rights of every kind and character
whatsoever in and to the same,” it is clear from the context that
“the same” comprises only the team’s routines as used “in the
photoplay in which they appear hereunder,” that is, One Night in
the Tropics. (Pl. MTD Memo. at 10 (quoting July 1940 Agreement at
4)). Again, the plaintiffs acknowledged this when they argued,
“This language conveys an absolute grant of all rights in all of
Abbott & Costello’s acts and performances thereof in motion
pictures produced under the July 1940 Agreement for UPC.” (Pl. MTD
Memo. at 10 (emphasis added)).
24

at 189 n.16 (quoting Pl. MTD Memo. at 7).

Moreover, the November

1940 Agreement limited Abbott and Costello’s “ability to use or
license

specific

material

(i.e.,

material

created

before

the

agreements) only ‘in connection with motion pictures’ and only for
a limited time” -- until the termination of the duo’s employment or
one year after the release of the film in which their material was
used -- which “plainly indicates the parties’ understanding that
the team retained ownership of the copyright in their pre-agreement
material and granted UPC only a license.”

Id. at 189.

This is

confirmed by the fact that, under the 1909 Copyright Act, which was
in effect in 1940, “copyrights were ‘indivisible,’ meaning that the
bundle of rights that accrued to a copyright owner could only be
assigned as a whole, and the transfer of anything less than all
rights was deemed a license rather than an assignment.” Jim Henson
Productions, Inc. v. John T. Brady & Associates, Inc., 16 F. Supp.
2d 259, 288 (S.D.N.Y. 1997); see also Goodis v. United Artists
Television, Inc., 425 F.2d 397, 400 (2d Cir. 1970).
The 1984 Quitclaim does not help the plaintiffs.

As noted

above, the Second Circuit found that the language of the document
undermined the notion that Universal owned the copyright in the
Routine.
arguments

TCA II, 839 F.3d at 191.
regarding

the

quitclaim

Additionally, the plaintiffs’
are

logically

and

legally

unsound. First, the Abbott and Costello Successors insist (without
further elucidation) that the recital that Abbott and Costello
Enterprises owned the copyright “clear[ly] . . . refer[s] to ACE as
the owner of the common law copyright” in the Routine rather than
25

the federal copyrights.

(Pl. MTD Memo. at 11).

all apparent from the language of the document.

But that is not at
Indeed, the only

way I can see that such an interpretation would be “clear” is if
one had already accepted the premise that Universal owned the
statutory copyrights, in which case that common law copyright would
be the only interest left.

That is circular reasoning.

Second,

the plaintiffs contend that had Universal not owned the rights to
“Who’s on First?” the 1984 Quitclaim “would have been utterly
pointless.”

(Pl. MTD Memo. at 12).

But that misapprehends the

purpose of a quitclaim, which does not warrant that the grantor has
any ownership interest in the property at issue; rather, it merely
“transfers whatever present right or interest the grantor has.”
Westlake v. Silva, 49 Cal. App. 2d 476, 478, 121 P.2d 872, 873
(1942); see City of Manhattan Beach v. Superior Court, 13 Cal. 4th
232, 239, 914 P.2d 160, 165 (1996) (“[A quitclaim] deed does not
imply any precedent interest . . . .”); see also In re Marriage of
Gioia, 119 Cal. App. 4th 272, 280, 14 Cal. Rptr. 3d 362, 368 (2004)
(“By

issuing

the

quitclaim

deed,

[the

grantor]

was

only

transferring whatever interest the estate possessed at the time of
conveyance, if any. As quitclaim deeds contain no implied warranty
of title, [the grantor] was not representing that the estate had an
interest in the property.”).11
11

I have assumed that the 1984 Quitclaim is governed by
California law, as that is the place it was executed.
(1984
Quitclaim at 2). But a quitclaim has the same attributes in New
York and elsewhere. See, e.g., Ebenstein v. Pritch, 275 A.D. 256,
259, 89 N.Y.S.2d 282, 284-85 (1st Dep’t 1949) (“[A] quitclaim deed
. . . does not set forth that the grantor is the owner of any
interest in the property transferred.”); 23 Am. Jur. 2d Deeds § 276
26

The Abbott and Costello Successors’ position that the limited
license was actually an assignment, which appears to ignore the
plain language of the agreements as well as controlling law, was
therefore objectively unreasonable.
b.

Work Made for Hire

The Second Circuit also ruled that the Amended Complaint
failed to plead sufficiently that the Routine was a work made for
hire under the 1940 agreements such that authorship inhered in UPC.
TCA II, 839 F.3d at 190.

A work is a work for hire if it “is made

at the hiring party’s ‘instance and expense’” and the hiring party
has the right “to direct and supervise the manner in which the
writer performs his work.”

Playboy Enterprises v. Dumas, 53 F.3d

549, 554 (2d Cir. 1995) (quoting Brattleboro Publishing Co. v.
Winmill Publishing Corp., 369 F.2d 565, 567 (2d Cir. 1966), and
Picture Music, Inc. v. Bourne, Inc., 457 F.2d 1213, 1216 (2d Cir.
1972)). But here the Abbott and Costello Successors admit that the
Routine pre-existed the 1940 agreements by “more than two years.”
TCA II, 839 F.3d at 190; (Amended Complaint, ¶ 32). Therefore, the
comedy team “plainly did not create the Routine at UPC’s ‘instance
and expense.’”

TCA II, 839 F.3d at 190.

The court made short shrift of the Abbott and Costello
Successors’ counter-arguments, which misapplied (or misunderstood)
the pleading burden.

The plaintiffs suggested that the Routine as

it appeared in One Night in the Tropics contained material written
specifically for the film under the work-for-hire provision in the
(2017 update).
27

November 1940 Agreement, and they complained that the Hand to God
Producers failed to establish the “scope of protectible expression
of the 1938 radio broadcast.”

Id.

Without that information, it

was not possible to determine what parts of “Who’s on First?” preexisted the film’s version of the Routine.

The problem with this

argument should be obvious: it is the plaintiffs’ burden to allege
“1) which specific original works are the subject of the copyright
claim, 2) that plaintiff owns the copyrights in those works, 3)
that the copyrights have been registered in accordance with the
statute, and 4) by what acts during what time the defendant
infringed the copyright.”

Warren v. John Wiley & Sons, Inc., 952

F. Supp. 2d 610, 616 (S.D.N.Y. 2013) (quoting Kelly v. L.L. Cool
J., 145 F.R.D. 32, 36 (S.D.N.Y. 1992)).
Finally, the Abbott and Costello Successors’ contention that
the

November

1940

work-for-hire

provision

“confirmed”

a

pre-

existing agreement (Appellant Reply at 22-23) is unsupported by any
allegation in the Amended Complaint.

Indeed, it is arguably

contradicted by the allegation that the work-for-hire provision
itself constituted the grant to UPC of “all rights to the duo’s
performances” of the Routine in One Night in the Tropics and The
Naughty Nineties.
c.

(Amended Complaint, ¶ 43).
Merger

“[A]uthors of freestanding works that are incorporated into a
film . . . may copyright these ‘separate and independent works.’”
TCA II, 839 F.3d at 191 (quoting 16 Casa Duse, LLC v. Merkin, 791
F.3d 247, 259 (2d Cir. 2015)). That is, when a “freestanding work”
28

like “Who’s on First?” appears in a movie, it does not become part
of an “integrated ‘work of authorship’” such that it cannot be
separately copyrighted.

16 Casa Duse, 791 F.3d at 259.

Here,

then, the question is whether it was objectively unreasonable for
the plaintiffs to argue that “the Routine so merged with the UPC
movies in which it was performed as to become a unitary whole.”
TCA II, 839 F.3d at 192.
The Abbott and Costello Successors’ litigation position was
marked by a failure to acknowledge the governing legal principle
stated above.

The principle was not a novel one; the 16 Casa Duce

Court found support for it in the statutory definition of a
collective work.12

791 F.3d at 259 (quoting 17 U.S.C. § 101).

12

In

To the extent that 16 Casa Duce contradicts the statement
of the Copyright Office Board of Appeals that “[t]he Copyright
Office generally regards a motion picture as a work of authorship
which evidences a common design and is meant to exist as an
integrated whole,” (Letter of Nanette Petruzzelli, Chief, Examining
Division for the Appeals Board, United States Copyright Office,
dated May 14, 2002 (“Husbands Decision”), attached as Exh. 1 to Pl.
MTD Memo., at 4), that decision would give way to the Second
Circuit’s 16 Casa Duce opinion.
See, e.g., Morris v. Business
Concepts, Inc., 283 F.3d 502, 505 (2d Cir. 2002) (stating, “We
recognize that ‘the Copyright Office has no authority to give
opinions or define legal terms, and [that] its interpretation on an
issue never before decided should not be given controlling
weight,’” but deferring to interpretation to extent of its
persuasiveness (alteration in original) (quoting Bartok v. Boosey
& Hawkes, Inc., 523 F.2d 941, 946–47 (2d Cir. 1975))). Moreover,
the Husbands Decision goes on to describe a “composite work,” that
is, a work that does not “merge into a unitary whole,” as “an
original publication relating to a variety of subjects to which a
number of different authors have contributed distinguishable and
separable sections.” Husbands Decision at 4. This description is
echoed in the Abbott and Costello Successors’ own description of
One Night in the Tropics: “[t]he Who’s on First? [sic] routine that
appears therein is only a small segment of the 1940 [film], the
majority of which contents Abbott & Costello had no part in
creating and made no contribution.” (Pl. MTD Memo. at 12).
29

the plaintiffs’ opposition to the motion to dismis, the Abbott and
Costello Successors doggedly insisted that a motion picture is
necessarily a “unitary work.”

(Pl. MTD Memo. at 1-2, 6, 9, 14).

They persisted in that stand in their unitary work argument on
appeal.

(Appellant Reply at 18, 20, 27).

Moreover, as the Second

Circuit noted, the two cases on which the plaintiffs principally
relied -- Garcia v. Google, 786 F.3d 733 (9th Cir. 2015) (en banc),
and Richlin v. Metro-Goldwyn-Mayer Pictures, 531 F.3d 962 (9th Cir.
2008) -- did not support this position.
92.

TCA II, 839 F.3d at 191-

Rather, Garcia was factually not analogous, and Richlin’s

reasoning “undermine[d] rather than support[ed] the plaintiffs’
merger theory.”

Id.

Indeed, Richlin (like 16 Casa Duce) notes

that the component parts of a motion picture may be separately
copyrightable.

See Richlin, 531 F.3d at 976.

Perhaps it is not surprising that the plaintiffs avoided
articulating this precept considering that a number of their
factual allegations and legal arguments turn out to support the
conclusion that “Who’s on First?” was a separate, independent work
that appeared in UPC’s films. The plaintiffs continually discussed
the Routine as a separate work -- with its own title -- in which
the rights protected by copyright inhere.

Thus, for example, the

Abbott and Costello Successors could contend that the November 1940
Agreement “represented a clear grant of rights to UPC in all
previous acts and routines created by Abbott & Costello, including
. . . their most famous routine, Who’s on First? [sic],” and that
the Routine “was prepared as a work-for-hire” pursuant to that same
30

agreement.

(Pl. MTD Memo. at 7, 12).

As the Second Circuit

recognized, the plaintiffs admitted that the Routine pre-existed
the films in which it appeared and was performed independently of
those films countless times after their release.
at 191-92.

TCA II, 839 F.3d

Moreover, as noted above, the plaintiffs acknowledged

that the “Who’s on First?” routine “is only a small segment of [A
Night in the Tropics], the majority of which contents Abbott &
Costello had no part in creating and made no contribution” (Pl. MTD
Memo. at 12), recalling the Copyright Office’s description of a
“composite work,” Husbands Decision at 4.

Indeed, other than the

Abbott and Costello Successors’ ipse dixit that movies are always
integrated wholes (which is itself unreasonable in light of cases
like Richlin and 16 Casa Duce), they made no apparent attempt to
explain why the Routine should be considered as having merged with
the films.

Given the legal principles and their own factual

allegations, the plaintiffs’ argument on this issue was simply not
reasonable.
2.

Other Factors
a.

Frivolousness

Objective unreasonableness is not the same as frivolousness.
See, e.g., Kirtsaeng II, __ U.S. at __, 136 S. Ct. at 1985
Supreme

Court

has]

noted

with

approval

‘several

(“[The

nonexclusive

factors to inform a court’s fee-shifting decisions: ‘frivolousness,
motivation, objective unreasonableness[,] and the need in certain
circumstances

to

advance

considerations

of

compensation

and

deterrence.’” (second alteration in original) (quoting Fogerty, 510
31

U.S. at 534 n.19)); Agence France Presse v. Morel, No. 10 Civ.
2730, 2015 WL 13021413, at *5 (S.D.N.Y. March 23, 2015) (noting
that

objective

unreasonableness

and

frivolousness

are

not

necessarily “coextensive” (quoting Gordon v. McGinley, 11 Civ.
1001, 2013 WL 1455122, at *2 (S.D.N.Y. March 28, 2013))), aff’d sub
nom. Presse v. Morel, 645 F. App’x 86 (2d Cir. 2016).
separating them is not, however, well-defined.

The line

An argument “is

frivolous when there is indisputably absent any factual or legal
basis’ for it.” Hallford v. Fox Entertainment Group, Inc., 12 Civ.
1806, 2013 WL 2124524, at *1 (S.D.N.Y. April 18, 2013). Of course,
that is the same way objective unreasonableness tends to be
described. See, e.g., Canal+ Image UK Ltd. v. Lutvak, 792 F. Supp.
2d 675, 681 (S.D.N.Y. 2011) (“‘Objective unreasonableness’ is
generally used to describe claims that have no legal or factual
support.” (quoting Viva Video, Inc. v. Cabrera, 9 F. App’x 77, 80
(2d Cir. 2001))).

Cases indicate, however, that frivolousness is

a particularly intense form of objective unreasonableness.

See,

e.g., CK Co. v. Burger King Corp., No. 92 Civ. 1488, 1995 WL 29488,
at *1 (S.D.N.Y. Jan. 26, 1995).
Here, assuming that the plaintiffs’ major positions should not
be characterized as frivolous, some of their subsidiary arguments
were sufficiently without basis to be so impugned.

See Kirtsaeng

II, __ U.S. at __, 136 S. Ct. at 1988-89 (cautioning that courts
must take into account all relevant circumstances in analyzing
Section 505 fee applications).
motion

pictures

are

per

se

The persistent assertion that
integrated
32

works

is

frivolous,

especially where legal support that the plaintiffs garnered for
that

mistaken

notion

actually

undermines

it.

The

baseless

suggestion that the work-for-hire provision in the November 1940
Agreement was actually the confirmation of an understanding from
more than two years earlier is similarly flawed.

And the argument

that the 1984 Quitclaim related only to the common law copyright is
sufficiently impaired both logically and legally to exceed even
objective unreasonableness.
b.

Motivation

Here, the defendants are on shakier ground.

They assert that

the infringement claim was frivolous and that, “in turn calls [the]
[p]laintiffs’

motivation

into

question.”

(Defendants’

Joint

Memorandum of Law in Support of Motion for Attorneys’ Fees and
Costs (“Def. Memo.”) at 17).
assertion.

First,

although

There are two problems with this
I

have

found

certain

subsidiary

arguments frivolous, I have not found that the entire claim was,
itself, frivolous.

Second, if frivolousness sufficed to impute an

ill motive, there would be no need to analyze these factors
separately.
The Hand to God Producers also point to the timing of the
Complaint and the “engineered publicity” that accompanied it as
evidence of bad faith.

(Def. Memo. at 18; Defendants’ Reply

Memorandum of Law in Support of Motion for Attorneys’ Fees and
Costs (“Reply”) at 8).

This strikes me as sheer speculation.

Finally, the defendants complain about the “naming and shaming” in
the Complaint of investors who had no control over the content of
33

the play.

(Reply at 7).

While it seems clear that neither the

Complaint nor the Amended Complaint included sufficient details
about certain “producer” defendants who were really just investors
in the production, see, e.g., Carell v. Shubert Organization, Inc.,
104 F. Supp. 2d 236, 271 (S.D.N.Y. 2000) (finding allegation that
defendant is “producer” who invested in production insufficient to
identify actionable conduct committed by individual and dismissing
claims against him) –- and, indeed, these producers were later
voluntarily dismissed (Order dated Sept. 18, 2015) -- I do not find
that this conduct establishes an improper motive for filing the
Complaint.
c.

Compensation and Deterrence

Awarding fees in this case would be faithful to the Copyright
Act’s purpose of enabling authors to build on the work of others,
see John Wiley, 2016 WL 7392210, at *2; see also Fogerty, 510 U.S.
at 156 (“[T]he ultimate aim [of the Copyright Act] is . . . to
stimulate

artistic

creativity

for

the

general

public

good.”

(quoting Twentieth Century Music Corp. v. Aiken, 422 U.S. 151, 156
(1975))), by deterring claimants from filing infringement actions
when the arguments supporting their ownership of a copyright are
weak to the point of unreasonableness.

Moreover, it will serve to

compensate the Hand to God Producers for their defense of an action
that should not have been brought in the first place because the
plaintiffs lacked standing.

See, e.g., Assessment Technologies of

WI, LLC v. WIREdata, Inc., 361 F.3d 434, 437 (7th Cir. 2004) (“[A]n
award of attorneys’ fees may be necessary to enable the party
34

possessing the meritorious claim or defense to press it to a
successful conclusion rather than surrender it because the cost of
vindication exceeds the private benefit to the party.

The best

illustration is in fact a case like this, where the party awarded
the fees, being the defendant, could not obtain an award of damages
from which to pay his lawyer no matter how costly it was for him to
defend against the suit.”).
warrants

the

granting

of

In sum, the balance of factors

attorneys’

fees

and

costs

to

the

defendants.
C.

Fees

Analysis of an application for attorneys’ fees should begin
with the court’s determination of a “presumptively reasonable fee.”
Sandoval v. Materia Brothers Inc., No. 11 Civ. 4250, 2013 WL
1767748, at *3 (S.D.N.Y. March 5, 2013) (quoting Arbor Hill
Concerned Citizens Neighborhood Association v. County of Albany,
522 F.3d 182, 189 (2d Cir. 2008)). That amount is calculated using
the lodestar method, multiplying a “reasonable hourly rate” by the
“reasonable number of hours required by the case.”

Millea v.

Metro–North Railroad Co., 658 F.3d 154, 166 (2d Cir. 2011); accord
Sandoval, 2013 WL 1767748, at *3.

The fee applicant bears the

burden of establishing that the requested hourly rates and number
of hours worked are reasonable.

Hensley v. Eckerhart, 461 U.S.

424, 433 (1983); Rozell v. Ross-Holst, 576 F. Supp. 2d 527, 544
(S.D.N.Y. 2008).
The Hand to God Producers seek reimbursement of $60,780 in
attorneys’ fees and $289.74 in costs.
35

Mark J. Lawless, their

attorney of record, charged for 110.8 hours, largely at a rate of
$400 per hour,13 for a total of $43,180.

(Invoices from Mark J.

Lawless dated Aug. 12, 2015, Nov. 6, 2015 (“11/6/15 Inv.”), Jan.
25, 2016 (“1/25/16 Inv.”), April 13, 2016 (“4/13/16 Inv.”), July
30,

2016,

attached

as

exhibits

to

Lawless

2/28/17

Decl.;

Declaration of Mark J. Lawless dated May 23, 2017, ¶¶ 4-5).
also seeks $111 in costs.

(11/6/15 Inv.; 1/25/16 Inv.).

He

The law

firm of Levine, Plotkin & Menin, LLP (the “Levine Firm”), counsel
for the Hand to God production, charged attorneys’ fees of $17,600,
at rates of $275 per hour, $325 per hour, and $800 per hour, and
incurred costs of $178.74.

(Def. Fees Memo. at 19; Client Ledger,

attached as Exh. to Lawless 2/28/17 Decl.). The Abbot and Costello
Successors object to the hours insofar as they were expended on the
appeal (but not on work in connection with the petition for
certiorari, which the defendants chose not to oppose) and on a
potential claim in the United Kingdom.

(Plaintiffs’ Response to

Defendants’ Belated Reply Declaration of Mark J. Lawless in Support
of Defendants’ Motion for Costs Including Attorneys’ Fees (“Pl.
Sur-Reply”)
provided,

at

2-3).

particularly

sufficiently

detailed

They

also

those
to

complain

from

the

determine

that

Levine
whether

the

invoices

Firm,

are

not

the

time

is

reimbursable, and they argue that the hourly fee of $800 charged by
the Levine Firm is unreasonably high.
13

(Pl. Sur-Reply at 3).

Mr. Lawless spent 12.85 hours on the fee motion, but the fee
was capped at $4,000, which works out to an hourly rate of
approximately $311 for that work. (Invoice dated Jan. 25, 2016,
attached as Exh. to Declaration of Mark Lawless dated Feb. 28, 2017
(“Lawless 2/28/17 Decl.”).
36

1.

Work on the Appeal

The Abbot and Costello Successors argue that this Court should
not award fees on appeal because the Second Circuit, itself, did
not order attorneys’ fees on appeal, but only “some limited costs.”
(Pl. Sur-Reply at 2).
Second

Circuit

The Hand to God Producers agree that the

awarded

only

“its

rule-imposed

maximum

on

reproduction costs” under Rule 39 of the Federal Rules of Appellate
Procedure, but counter the plaintiffs’ argument by citing the
Second Circuit’s decision in L-3 Communications Corp. v. OSI
Systems, Inc., 607 F.3d 24 (2d Cir. 2010).

(Letter of Mark J.

Lawless dated March 15, 2017).
In L-3, the Second Circuit addressed whether a district court
can assess costs under Rule 39(e) of the Federal Rules of Appellate
Procedure in a situation where the Court of Appeals had awarded
costs

(under

Rule

39(a)

of

the

Federal

Rules

of

Appellate

Procedure) to the appellant who had prevailed in part on the
appeal, but had not “directed taxation of costs under Fed. R. App.
P. 39(e).”

607 F.3d at 26-27.

The Second Circuit held that the

district court could award costs under subsection (e).
31.

Id. at 30-

However, as should be clear, L-3 deals only with taxation of

costs under Fed. R. App. P. 39.

And most Courts of Appeals to have

addressed the question have held that costs under that rule do not
include attorneys’ fees.

See Family PAC v. Ferguson, 745 F.3d

1261, 1266-67 (9th Cir. 2014) (agreeing with First, Third, Fifth,
Sixth, and Seventh Circuits that Rule 39 costs do not include
attorneys’ fees, and disagreeing with D.C. Circuit); cf. Adsani v.
37

Miller, 139 F.3d 67, 74-75 (2d Cir. 1998) (indicating that, whereas
Section 505 provides authority to award attorneys’ fees on appeal,
Rule 39 does not).

Thus, neither party’s submissions are relevant

here.14
Attorneys’ fees on appeal are recoverable under Section 505.
See, e.g., Adsani, 139 F.3d at 75 (noting, in discussion of
attorneys’ fees on appeal, that such fees are available under
Section 505).

As the Honorable Denise L. Cote, U.S.D.J., noted in

her opinion after the second Kirtsaeng remand, in awarding such
fees, a court should “look[] at [the litigation] holistically and
in light of the Copyright Act’s goals.”
7392210,

at

*2.

I

have

performed

John Wiley, 2016 WL

that

recommended an award of attorneys’ fees.

exercise

above

and

I see no reason to

exclude those expended on the appeal.
2.

Work on Potential U.K. Claim

As both sides recognize, this claim is merely a “potential”
claim.

(4/13/16 Inv.; Pl. Sur-Reply at 2).

These fees, which

total $2,140 (5.35 hours at $400 per hour (11/6/15 Inv.; 1/25/16

14

To the extent that the Abbot and Costello Successors
intended to argue that fees on appeal should not be awarded because
the Second Circuit did not itself award fees pursuant to Rule 38 of
the Federal Rules of Appellate Procedure, which governs fee awards
for frivolous appeals, that argument would fail.
A grant of
attorneys’ fees under Rule 38 is not a prerequisite for a fee award
under Section 505. See, e.g., Fantasy, Inc. v. Fogerty, 94 F.3d
553, 561 (9th Cir. 1996) (“While we see no basis for awarding
attorney’s fees under FRAP 38, we conclude that fees are warranted
under § 505 inasmuch as it served the purposes of the Copyright Act
for Fogerty to defend an appeal so that the district court’s fee
award would not be taken away from him.”).

38

Inv.; 4/13/16 Inv.)), are not recoverable.
3.
A

Detail

motion

for

attorneys’

fees

must

be

accompanied

by

“contemporaneous time records indicating, for each attorney, the
date, the hours expended, and the nature of the work done.”

New

York State Association for Retarded Children, Inc. v. Carey, 711
F.2d

1136,

1154

(2d

Cir.

1983).

The

records

should

be

“sufficiently detailed to allow a court to determine if the time
and labor expended was reasonable.”

Serin v. Northern Leasing

Systems, Inc., No. 06 Civ. 1625, 2011 WL 1467560, at *6 (S.D.N.Y.
April 19, 2011), aff’d, 501 F. App’x 39 (2d Cir. 2012).

In

addition, a determination of what constitutes a reasonable hourly
rate involves “a case-specific inquiry into the prevailing market
rates for counsel.”
(2d Cir. 2005).

Farbotko v. Clinton County, 433 F.3d 204, 209

The hourly rates must be “in line with those

[rates] prevailing in the community for similar services by lawyers
of

reasonably

comparable

skill,

experience,

and

reputation.”

Reiter v. MTA New York City Transit Authority, 457 F.3d 224, 232
(2d Cir. 2006) (alteration in original) (quoting Blum v. Stenson,
465 U.S. 886, 896 n.11 (1984)).

The document provided by the

Levine Firm reflects, as noted, over $17,000 in attorneys’ fees.
However, the entries are unreasonably vague, with descriptions such
as “p/c Lawless copyright issue,” “[v]ideo and misc.; p/c Mark,”
and “[v]arious w/Lawless.”

(Client Ledger at 1).

Moreover, it

provides no information about the attorneys performing the work -not even their names.
39

“While vague descriptions . . . are not fatal to a fee
application, unspecific or vague records are generally removed.
This can be accomplished through excision of the vague entries or
reducing the total hours by a flat percentage.”
1467560, at *6 (internal citation omitted).

Serin, 2011 WL

Although this is “a

somewhat arbitrary process,” Tucker v. City of New York, 704 F.
Supp. 2d 347, 357 (S.D.N.Y. 2010), it is an efficient way to trim
a fee application that is so devoid of detail as to make analysis
of

its

reasonableness

impossible.

I

therefore

recommend

discounting the fees charged by the Levine Firm by 50%, to $8,800.
Mr. Lawless’ fee records are, on the other hand, sufficiently
detailed.

Moreover, the Abbott and Costello Successors do not

object to Mr. Lawless’ hourly rate of $400, which is within the
realm of reasonableness.

See, e.g., BWP Media USA Inc. v. Uropa

Media Inc., No. 13 Civ. 7871, 2014 WL 2011775, at *3 (S.D.N.Y. May
16, 2014) (recommending approval of hourly rates of $525 and $450
for law firm partners in copyright infringement litigation).
4.

Costs

Mr. Lawless claims $111 in costs for research and messenger
services.

(11/6/15 Inv.; 1/25/16 Inv.).

The Abbott and Costello

Successors do not challenge these charges. The Levine Firm appears
to seek $178.74 in costs.

Of that amount, $172.04 appears to be

for postage and FedEx charges.

(Client Ledger).

what the remaining amount relates to.

It is unclear

I therefore recommend that

the Hand to God Producers be awarded $283.04 in costs.

40