Daughters Sue 'Big Bang Theory' Over Infringing Use Of Mother's 82-Year-Old Poem 'Warm Kitty'
from the and-they-might-actually-have-a-case dept
A copyright infringement lawsuit has been filed against a long list of defendants -- all of it related to the hit sitcom "The Big Bang Theory." Supposedly, a poem written in 1933 is being used without permission of the putative rights holders (the author's daughters) and making everyone involved with the show a lot of money.
The poem, titled "Warm Kitty," is often sung by one of the main characters. It has been used often enough to become its own cultural force, resulting in a pile of Big Bang Theory merchandise featuring the words and/or title.
The plaintiffs claim that one defendant, Willis Publishing, licensed the poem to Warner Bros. Entertainment without their permission. The chain of custody, as it were, is a bit tangled.
Edith Newlin wrote the poem in early 1933. Later that year, she was approached by Laura Pendleton MacCarteney for permission to use her words as lyrics to a song in nursery song book. This book ("Songs for the Nursery School") was published in 1937 by Willis Publishing. The words were set to a public domain song and Newlin was thanked in the opening pages of the book for allowing Willis Publishing to use her "copyright for the 'Warm Kitty' lyrics."
Willis Publishing renewed its copyright (for the book) in 1964, shortly before the first 28-year copyright period ended. (Under the then-current law -- the Copyright Act of 1909 -- rights holders were allowed one 28-year extension of the copyright term.) This registration was not listed as Willis Publishing, but rather done under MacCarteney's name, unlike the original registration in 1937.
Under the 1909 copyright law, federal protection was not extended to creators unless they a) published the work and b) attached a copyright notice. In this case, Willis handled the publication and notice, while simultaneously recognizing the copyright for the words still resided with Newlin.
Under that same law, the rights to the poem on its own belonged to Newlin, with Willis' publication serving as her official copyright notice. At the end of the term, it would have been up to Newlin to renew it. She never did, but -- as is argued by the plaintiffs -- the 1964 renewal by MacCarteney, which covered the entire contents of the book, effectively acted as a re-up for Newlin.
This registration (and renewal) by proxy sounds a bit iffy, but may actually be legitimate. According to a Ninth Circuit Appeals Court decision in 1988 (Abend v. MCA, Inc.) that deals with pre-Copyright Act of 1976 protections, "blanket" renewals that simultaneously carve out exceptions for rights holders' work contained within another copyrighted work can both serve as a renewal for the whole as well as the works contributed towards it without severing the original contributors' copyright protections.
We adopt the Second Circuit's conclusion that where a magazine publisher has purchased limited publication rights in a work "under circumstances which show that the author has no intention to donate his work to the public, copyright notice in the magazine's name is sufficient to obtain a valid copyright on behalf of the beneficial owner, the author or proprietor [of the work]." Goodis v. United Artists Television, Inc., 425 F.2d 397, 399 (2d Cir.1970).The key to this lawsuit is this part of the court's decision:
In Goodis, the Second Circuit addressed a factual situation similar to the one in this case. There, the author of a story granted limited rights to the publisher of a periodical. The publisher registered a blanket copyright in the issue of the periodical that contained the story. The author never separately copyrighted his work. Id. at 399.
Under these circumstances, the Second Circuit concluded that the publisher's copyright effectively protected the story and gave the author beneficial ownership of a copyright in the story. In so holding, the court decided that the "doctrine of indivisibility" should not be strictly applied to decide who may copyright a work.
"...under circumstances which show that the author has no intention to donate his work to the public…"Newlin gave Willis Publishing permission to use her words. In return, she was apparently given nothing more than credit and proxy copyright registration. The fact that Willis acknowledged her copyright suggests it was not, at that point, seeking to make any other claims about the incorporated work. The book was renewed in whole and unchanged in 1964, leaving the page acknowledging Newlin's permission to include the poem intact. At that point, Willis could have approached Newlin to be granted full control of the rights. It apparently did not do this. Instead, long before the short poem became a lucrative entity, it simply renewed the copyright and her incorporated work, extending protection of "Warm Kitty" until 1993.
In 1978, copyright terms were extended: 75 years from the date of publication for pre-1978 works. That brought the poem's expiration date to 2012. Before the first Congressionally-granted extension could expire, the "Sonny Bono Act" tacked on another 20 years for works pre-dating the 1978 extension. The second renewal by Willis/MacCarteney is how Newlin's daughters are able to claim they hold the rights to this poem (the proxy renewal). Two updates of intellectual property laws explain why they will continue to do so until 2032.
And the weird thing is, they may be right.
Newlin may have been a bystander to Willis' use of her lyrics, but she never explicitly gave up her control of the work, nor did the music publishing company ever seek to take sole ownership of these rights. An informal agreement made 82 years ago may result in the award of damages to Newlin's heirs -- who had no idea the poem had gained cultural traction until several years after The Big Bang Theory debuted.
Willis Publishing might have a problem on its hands. On its own website, it makes the highly-dubious claim (sort of...) that it owns the rights to a poem that it explicitly stated in 1937 (and again in 1964) belonged solely to the poem's creator.
In 1937 we published a book called Songs for the Nursery School and we sold tens of thousands of copies. It is a hardbound book of over 150 songs for children. The book was written by Laura Pendleton MacCarteney. In that book on page 27 is Warm Kitty.Whoever the company secured the rights from, it apparently wasn't Newlin's daughters. It could be that Willis Publishing approached Laura MacCarteney -- who was listed as the rights holder in the 1964 copyright renewal -- but MacCarteney would have been similarly unable to grant Willis or Warner Bros. permission to use Newlin's work.
Warner Brothers and I worked together to secure the rights for the show The Big Bang Theory and they have been using the song ever since.
So, if this bizarre registered-without-even-trying copyright registration holds up, it may end up costing Willis something. The rest of the parties would have acted in good faith under the assumption that the last known rights holder (Willis/MacCarteney) were able to negotiate licensing terms for Newlin's poem. In fact, it's highly likely the licensing agreement with Warner Bros. Entertainment contains an indemnity clause, which would make Willis solely responsible for any erroneous claims or misrepresentations it may have made out its ownership of the poem.
And, while I can appreciate the first move in most lawsuits is to name as many defendants as possible, dragging Fox into this just because it bought the syndication rights is really one potential target too many. Fox had nothing to do with the allegedly-bogus licensing of the poem and its agreement likely doesn't include the merchandising rights. (I suppose it could be the potential target of an injunction preventing further use of episodes featuring the poem.)
If it goes the plaintiffs' way, it will be a weird way of getting rich -- something that seems to happen most frequently in the IP world. Two daughters will be collecting money for a poem their mother wrote over 80 years ago and never once made a move to monetize during her 99-year lifespan. In fact, without The Big Bang Theory popularizing the poem -- nearly a century removed from its original creation -- there'd be nothing for the sisters to sue about, much less hope to collect on. It could very well be they would have had prior notice if Willis hadn't cut them out of the deal (either innocently or maliciously), but the increased value of the poem has nothing to do with Newlin's daughters' efforts -- or for that matter, Willis Publishing's long-forgotten book of nursery songs.
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Filed Under: big bang theory, copyright, edith newlin, laura mccarteney, licensing, warm kitty
Companies: warner bros., willis publishing
Reader Comments
The First Word
“In summary
As far as I am aware from reading the 1909 copyright law and the filing, the situation is as below:Newlin gave "permission" (per filing) for her song to be included in the book made by Willis.
Under the 1909 Copyright Act, if the book is considered a composite work, then the renewal of the book by Willis in 1964 would renew the copyright of the book itself, and also all works within the book.
The 1909 Copyright Act states that the proprietor of a composite work upon renewal also renews all copyrights within the composite work.
The issue which is central to this is whether or not the book is a composite work, in which case the Willis renewal also renewed the Newlin copyright on an individual basis.
The underlying agreement between Newlin and Willis would probably dictate whether it's a composite work, whether Willis holds the copyright, or whether it's not a composite work AND Willis does not hold the copyright.
If it is not a composite work and Willis does not own the rights, I believe that would mean the copyright has expired.
If Willis received the rights as part of the arrangement (unlikely as the song has a separate copyright notice), then Willis would own the copyright and it would be valid.
If it is a composite work, then the Willis renewal would mean that Newlins has a valid copyright for the song which is separate from the composite work copyright, I believe.
The problem is this:
The 1909 Copyright Act, and amendments, do not define a composite work.
If it was a renewal of a composite work by Willis and Newlins holds the copyright, there is no definite way for WB to have known that the copyright was held by Newlins, as Newlins never registered or renewed directly. I think that WB could only have gone to Willis as the renewer and relied on their representations of the nature of the work as to who held the copyright, short of demanding to see the original agreement between Newlins and Willis for the use of the work.
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What an absolute mess. And in the end, they're actively trying to stop the real purpose of copyright in order to benefit only themselves.
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Next time on the show it'll be...
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The Pro IP lobby get stupid laws passed by paying off our politicians, then they scream that people don't have any respect for IP laws and start filing lawsuits. The reason people don't respect the IP isn't because people don't respect IP, it's that they don't respect the stupid fucking laws protecting IP. So what's the IP Lobby do? They get even more stupid laws passed and around we go....
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Re:
Worded that wrong.. should have been...
The reason people don't respect the work isn't because people don't respect IP"
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SMH
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Re: Next time on the show it'll be...
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Automatic Copyright Extensions
Way to go copyright for providing an incentive for ..., wait, nothing is going to be created out of this except a payment. What did the constitution say about creating a payment for doing nothing? I can't seem to find that clause anywhere in there. Could somebody find that clause for me?
Somebody get that corpse out of the ground and give her a drink, would ya? After all, she inspired the writing of another set of legal briefs and some money for lawyers.
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Re: Automatic Copyright Extensions
Don't dig me up bro!
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IIRC, only the original copyright holder (in this case Willis Publishing) could renew a copyright...unless a tranfer of copyright to a third party can be shown.
Unless Laura Pendleton MacCarteney's descendants can show such a transfer, or that MacCartney owned Willis Publishing and its' assets, her claim is invalid.
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No.
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Re:
The definition of a composite work is not defined in the 1909 copyright act, nor its amendments. Nor the 1976 copyright act.
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Re: Next time on the show it'll be...
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In summary
Newlin gave "permission" (per filing) for her song to be included in the book made by Willis.
Under the 1909 Copyright Act, if the book is considered a composite work, then the renewal of the book by Willis in 1964 would renew the copyright of the book itself, and also all works within the book.
The 1909 Copyright Act states that the proprietor of a composite work upon renewal also renews all copyrights within the composite work.
The issue which is central to this is whether or not the book is a composite work, in which case the Willis renewal also renewed the Newlin copyright on an individual basis.
The underlying agreement between Newlin and Willis would probably dictate whether it's a composite work, whether Willis holds the copyright, or whether it's not a composite work AND Willis does not hold the copyright.
If it is not a composite work and Willis does not own the rights, I believe that would mean the copyright has expired.
If Willis received the rights as part of the arrangement (unlikely as the song has a separate copyright notice), then Willis would own the copyright and it would be valid.
If it is a composite work, then the Willis renewal would mean that Newlins has a valid copyright for the song which is separate from the composite work copyright, I believe.
The problem is this:
The 1909 Copyright Act, and amendments, do not define a composite work.
If it was a renewal of a composite work by Willis and Newlins holds the copyright, there is no definite way for WB to have known that the copyright was held by Newlins, as Newlins never registered or renewed directly. I think that WB could only have gone to Willis as the renewer and relied on their representations of the nature of the work as to who held the copyright, short of demanding to see the original agreement between Newlins and Willis for the use of the work.
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I strongly doubt even the biggest advocates of encouraging artists to produce more work would think this mess of a situation sounds right or at all reasonable.
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It's just...
If I build a house, I don't expect to get paid every time somebody moves into the house.
And I don't expect my children to be able to make money off something I did when they contributed absolutely nothing to the process.
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This doesn't seem hard, but then it is copyright law where sense doesn't apply
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Re: Re: Automatic Copyright Extensions
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Total bull
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Sweet Jesus
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Uh, it's called "rent". And why wouldn't you?
Copyright is more like getting paid every time someone looks at the house. And you got dibs on somebody building a house looking the same so that people cannot go elsewhere to look at something like your house.
The difference is that the house admits only a strictly limited number of tenants. But there is no limit to how many people may look at it, or copy it.
I have no problem with the concept of rent. It's paying for the use of a limited tangible resource.
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Re: Sweet Jesus
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Now copyright has become a tool to ensure earnings for at least 2 generations after the creator. And if recent history is any clue, it will eventually benefit the entire family till the end of time.
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They're probably hiding together with the dragons and the unicorns.
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Zooey Deschanel
As for Zooey, get out of that new girl show. That is such a waste of your talents, your youthful beauty and everyone's time. You are way above that show.
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This is the first time a copyright extension bill might not pass. Should be interesting.
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If the pushback gets to be too high, they'll probably just pull a CISA and slip the extension bill into some unrelated but required bill, forcing it through that way.
It would be nice if something actually entered the public domain in the US for once, but copyright hasn't been about the public for a long time, and those that it is designed to benefit have plenty of money to throw around, and politicians are just ever so cheap to buy...
Hopeful, but not holding high expectations basically.
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Yeah that is probably their best shot. I'm hopeful this is their last chance to get away with even that before public pressure gets too much. But knowing that, this extension will probably be a doozie.
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