Pryor Cashman successfully represented Warner Bros. Entertainment, CBS, Fox Broadcasting, Turner Broadcasting and Chuck Lorre Productions in a copyright infringement action brought by the daughters of Edith Newlin, a pre-school teacher and nursery-rhyme writer, claiming that the use of the song "Soft Kitty" in the hit television sitcom The Big Bang Theory used their mother's lyrics without permission.
Edith Newlin wrote the "Soft Kitty" lyrics for a songbook published by Willis Music Co. in 1937. The songbook had a blanket copyright notice in Willis Music's name, which it renewed in 1964. Newlin never filed a separate copyright registration or renewal for the lyrics.
The Big Bang Theory has used "Soft Kitty" with permission from Willis Music. Plaintiffs filed suit in federal court in Manhattan in December 2015, claiming the show's use violates their copyright interest in the lyrics, which Plaintiffs allegedly inherited from their late mother.
Pryor Cashman successfully moved to dismiss the suit on the grounds that Plaintiffs did not own a valid copyright in the "Soft Kitty" lyrics. Led by Intellectual Property Partner Tom Ferber and Associate Rebecca Siegel, the defendants argued that Newlin – as the putative owner of the lyrics – was the only party that had a right to renew the copyright in the lyrics and that her failure to exercise that right resulted in the lyrics entering the public domain. In opposition, Plaintiffs argued that Willis Music's 1964 renewal in the songbook served to renew Newlin's individual copyright in the lyrics.
The Court's Decision
In a March 27, 2017 Opinion, Judge Naomi Reice Buchwald dismissed the complaint, agreeing with Pryor Cashman that the proprietor of a collective work, such as Willis Music, only had the right to renew its copyrights in the collective work (i.e., the songbook) and any individual contributions in which it held copyright ownership. The Court reasoned that where the proprietor did not have a copyright interest in an individual contribution, the right to renew belonged to the author of that individual contribution.
Since Plaintiffs alleged that Newlin owned the copyright in the lyrics during the initial term, that renewal right belonged only to Newlin, and because she never filed a renewal, the copyright in the lyrics expired at the end of the initial 28-year term in 1964. Accordingly, Judge Buchwald concluded that Plaintiffs failed to establish that they own a valid copyright in the lyrics.
The Burden to Renew: Licensing Older Musical Compositions
This opinion could affect the use and licensing of certain older musical compositions that were originally published as part of a collective work. To the extent that the individual authors failed to renew their copyright interest in such songs, a film or TV show (like The Big Bang Theory) would be free to utilize those works without the need for a license from the author.
News of this victory was reported by numerous media outlets, including Law360, BBC News and Yahoo.
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