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


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.
—Lonyo

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  • identicon
    Anonymous Coward, 5 Jan 2016 @ 8:51am

    That's Copyright, ladies and gentlemen.



    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.

    reply to this | link to this | view in chronology ]

  • identicon
    Pixelation, 5 Jan 2016 @ 8:57am

    Next time on the show it'll be...

    Cold kitty, dead kitty, rotting stinky fur...

    reply to this | link to this | view in chronology ]

  • identicon
    AJ, 5 Jan 2016 @ 9:03am

    I'm not really pro or against IP laws or property. With that said, this is fucking ridiculous. I believe artists and creators rights should be protected, but for 80 years? That's just stupid, that makes absolutely no since to the common person. I could see 20 years, but 80?

    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....

    reply to this | link to this | view in chronology ]

  • icon
    Adam (profile), 5 Jan 2016 @ 9:10am

    SMH

    This is why we can't have nice things...

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 5 Jan 2016 @ 9:14am

    What'chu talking 'bout Willis?

    reply to this | link to this | view in chronology ]

  • icon
    TasMot (profile), 5 Jan 2016 @ 9:16am

    Automatic Copyright Extensions

    All these copyright extensions seem to do is to promote the filing of lawsuits. No matter what the result of the case, poor old dead Edith will never get a penny of the royalties and will never write another poem. Her daughters on the other hand might get a big settlement for DOING NOTHING.

    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.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 5 Jan 2016 @ 9:50am

    "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."

    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.

    reply to this | link to this | view in chronology ]

    • identicon
      Lonyo, 5 Jan 2016 @ 10:07am

      Re:

      Incorrect. It can be renewed by the proprietor of a composite work under the 1909 copyright act, which was applicable to this work. The renewal by the proprietor of a composite work applies to both the copyright on the composite work, and also the individual copyrights within the work.

      The definition of a composite work is not defined in the 1909 copyright act, nor its amendments. Nor the 1976 copyright act.

      reply to this | link to this | view in chronology ]

  • icon
    Jeremy Lyman (profile), 5 Jan 2016 @ 10:02am

    No.

    Burn the whole system down; nothing existing has a copyright. If you make something new after now you can register a copyright for 3 years if you want. After that... make something else.

    reply to this | link to this | view in chronology ]

  • identicon
    Lonyo, 5 Jan 2016 @ 10:15am

    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.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 5 Jan 2016 @ 10:15am

    When copyright encourages you to hope you or your ancestor have been victimized in some obscure way like this in order to make a boatload of money, you know copyright is completely messed up.

    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.

    reply to this | link to this | view in chronology ]

    • icon
      That One Guy (profile), 5 Jan 2016 @ 11:12am

      Re:

      You vastly under-estimate their greed and sense of self-entitlement. When you've got people not only defending already effectively eternal copyright, but oft-times arguing that the duration is too short(and I believe it's down to a few years before things might start entering the public domain in the US, so expect to see those arguments seriously start ramping up), the idea that they would defend something like this isn't hard to imagine at all.

      reply to this | link to this | view in chronology ]

      • icon
        nasch (profile), 6 Jan 2016 @ 3:01pm

        Re: Re:

        and I believe it's down to a few years before things might start entering the public domain in the US, so expect to see those arguments seriously start ramping up

        This is the first time a copyright extension bill might not pass. Should be interesting.

        reply to this | link to this | view in chronology ]

        • icon
          That One Guy (profile), 6 Jan 2016 @ 8:28pm

          Re: Re: Re:

          While it would certainly be nice if it didn't, there are too many large companies with too much money to throw around that really don't care for the idea of anything entering the public domain for me to give good odds for that happening.

          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.

          reply to this | link to this | view in chronology ]

          • icon
            nasch (profile), 7 Jan 2016 @ 10:09am

            Re: Re: Re: Re:

            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.

            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.

            reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 5 Jan 2016 @ 11:01am

    I personally hate the concept of copyright. I'm not against people being "Oh, by the way, I made this." That's fine.

    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.

    reply to this | link to this | view in chronology ]

    • identicon
      David, 6 Jan 2016 @ 3:01am

      Re:

      If I build a house, I don't expect to get paid every time somebody moves into the house.

      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.

      reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 5 Jan 2016 @ 11:39am

    There's nothing like a warm kitty. *cough*

    reply to this | link to this | view in chronology ]

  • identicon
    James O'Keefe, 5 Jan 2016 @ 1:04pm

    This doesn't seem hard, but then it is copyright law where sense doesn't apply

    Since Edith Newlin wrote the poem in early 1933, then the 28 year term of copyright would expire in 1961, yes? Since she didn't file to renew her copyright for the second 28 years, Willis Publishing renewing its copyright (for the book) in 1964 cannot apply to the poem since poem was in the public domain by that time. Am I missing something?

    reply to this | link to this | view in chronology ]

  • icon
    Almost Anonymous (profile), 5 Jan 2016 @ 1:38pm

    Total bull

    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.
    Mike, cut out the bullshit. You and I both know that Edith Newlin would never have written that poem if she hadn't known that her two daughters would be able to sue God and country almost a century later for infringement by a (possibly undeservedly) wildly successful TV show.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 5 Jan 2016 @ 2:24pm

    Sweet Jesus

    Sweet Jesus, make it stop!

    reply to this | link to this | view in chronology ]

    • identicon
      David, 6 Jan 2016 @ 3:04am

      Re: Sweet Jesus

      Jesus is still not over chasing the moneylenders from the temple and missing out on a publishing deal for the gospel. You know just how many copies are in circulation?

      reply to this | link to this | view in chronology ]

  • icon
    trparky (profile), 5 Jan 2016 @ 4:55pm

    I don't want to live on this planet anymore.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 5 Jan 2016 @ 5:05pm

    In the words of Professor Farnsworth: "I don't want to live on this planet anymore."

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 6 Jan 2016 @ 2:23am

    sue happy culture instead of just trying to share and appreciate culture

    reply to this | link to this | view in chronology ]

  • icon
    Ninja (profile), 6 Jan 2016 @ 3:16am

    Well, I'm sure that dead mother will benefit tons from any earnings from the poem now, no?

    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.

    reply to this | link to this | view in chronology ]

  • identicon
    Michelle, 6 Jan 2016 @ 3:37am

    I sometimes wonder if somewhere out there, there is a person who ACTUALLY understands every nook and cranny of copyright laws...

    They're probably hiding together with the dragons and the unicorns.

    reply to this | link to this | view in chronology ]

    • icon
      TasMot (profile), 6 Jan 2016 @ 5:08am

      Re:

      They are hiding with the dragons and unicorns waiting until they "feel" like you did something they don't like, then they dig through all the arcane parts of copyright law and look for some way to make an accusation of infringement so that they can get some free money.

      reply to this | link to this | view in chronology ]

  • identicon
    Way to go, 6 Jan 2016 @ 10:10am

    Zooey Deschanel

    I hate that big bang stupid show. I can't even begin to watch it just like when Hillary Clinton is about to say something suddenly on my tv I have to mute and switch channels.

    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.

    reply to this | link to this | view in chronology ]


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