Over Christmas, the producers of The Big Bang Theory (amongst others) received a rather unwelcome gift – their now-famous Soft Kitty lullaby has become the subject of a copyright infringement claim. The daughters of Edith Newlin, a New Hampshire nursery school teacher, claim the show has copied their mother’s 1933 poem, Warm Kitty, without their mother’s permission.

For those of you who are unfamiliar with this infuriatingly catchy nursery rhyme (as this writer was before setting out to write this post), it is the lullaby that the show’s neurotic main character, Sheldon, makes others sing to him when he is unwell. If they do not, he protests, he will not get better. If you must, feel free to get yourself up to speed by watching the video here.

Especially after watching the above clip, it is easy to dismiss this lawsuit as a trivial pop-cultural blip. However, the details of the claim raise some interesting legal issues and demonstrate how the producers of this commercial juggernaut, which famously pays its stars over $1 million US per episode, may be able to avoid a potentially costly headache.

The copyright claim

(read the pleadings here)

In 1933, Edith Newlin wrote the rhyme Warm Kitty. That same year, the Willis Music Company (“WMC”) sought permission to publish Warm Kitty in a book of nursery rhyme songs, Songs for the Nursery School. The permission was granted; the book was published; and WMC promptly registered the book with the Copyright office. Under the relevant legislation of the time, this also served to register Ms Newlin’s corresponding copyright in the lyrics to Warm Kitty, reportedly set to expire in 2037.

Seventy years later, in 2007, WMC purported to licence Warner Bros. Entertainment, a producer of The Big Bang Theory, the right to use the lyrics.

The show then used it to much popular fanfare. Furthermore, once the rhyme had intruded into the zeitgeist, the production houses capitalised on this success by selling merchandise (from watches to dressing gowns) with the Soft Kitty lyrics. You can see this merchandise (or purchase some for yourself if so inclined) here.

The plaintiffs (the daughters of Ms Newlin) claim that The Big Bang Theory failed to credit Ms Newlin as the author of the lyrics, instead crediting Bill Prady, principal of Chuck Lorre Productions, as authoring the lyrics. The plaintiffs maintain that their mother was the holder of the copyright to the lyrics for her life, and, upon death, the copyright passed to them. Seeking damages for copyright infringement and an immediate injunction, the plaintiffs delivered a final sharp jab at the show: they noted that they had not brought the suit earlier because The Big Bang Theory is “a program that the Plaintiffs had never viewed”.

What does it mean?

Unlike recent suits involving questions of musical/lyrical copyright (see, for example, claims against Taylor Swift (see our previous post here) and Robin Thicke (see our previous post here)), the least interesting legal question raised here is whether the lyrics of Soft Kitty and Warm Kitty are ‘substantially similar’. The US test to determine whether a defendant has infringed a plaintiff’s copyright is whether the two works are of ‘substantial similarity’. The Australian equivalent (noting that there are some differences in the tests) is the ‘substantial part’ test. Consider this comparison of Edith Newlin’s 1933 rhyme titled Warm Kitty with the lyrics from The Big Bang Theory song:

Click here to view the image

From a quick assessment, and consideration of the assertion that Warner Bros. Entertainment created Soft Kitty after purporting to secure a licence to use the Warm Kitty lyrics, it is possible that this legal point goes uncontested. Rather, the multi-million dollar question is likely to be: did anyone have the right to copy and communicate Warm Kitty?

There are several avenues that this matter can travel, depending on the evidence. If the scope of the 80 year old agreement between Ms Newlin and WMC is broad enough to authorise WMC to sub-licence the lyrics, then the Newlin sisters are not likely to have a claim. However, if it is found that WMC did not have permission to sub-licence the lyrics, then each publication of the lyrics may be a breach of copyright. To give this some magnitude, every screening, DVD sale, sale on iTunes and stream on Netflix of an episode with the lyrics, and further, every item of merchandise sold with the lyrics sold may all constitute copyright infringement.

However, another aspect to consider, which might protect The Big Bang Theory, is their original licencing contract with WMC. Frequently, such contracts would contain (1) a warranty from WMC that they held the rights they purported to licence, and (2) an indemnity clause, should a third party claim that their intellectual property rights have been infringed. If The Big Bang Theory’s international licencing web of contracts also contain similar warranty and indemnity clauses, then the show may be able to claim that they are indemnified by WMC from the plaintiff’s claim. This stream of liability may then lead back to one place – The Willis Music Company, a family owned Cincinnati business, which publishes music books and sells instruments.

Of course, there are other ways in which the claim against the show could be dismissed. For example, the defendants could prove that Ms Newlin never in fact owned the copyright to Warm Kitty, This may be the case if is the plaintiffs are not able to prove that it is an original piece of work or that Ms Newlin was not the author of the work.

CBS continues to sell merchandise containing the entire lyrics to Soft Kitty and continues to distribute The Big Bang Theory. However, if the Newlin sisters’ pleadings hold up, and noting that the show’s tenth season is rumoured to be its last, it may be a long time before Sheldon rests easy again.