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).

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.

The key to this lawsuit is this part of the court's decision:

"...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.

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.

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.

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.

Filed Under: big bang theory, copyright, edith newlin, laura mccarteney, licensing, warm kitty
Companies: warner bros., willis publishing