HQ 0732095 - Copyright Infringement- "DISNEY CHARACTER GUIDE" - Pamphlet of Drawings (Expires 1-11-2007) - Headquarters Issuance No. 84-63, Effective July 31, 1984 - Walt Disney Registration No. VA 124-730, Published February 25,1983 - United States International Trade Commision Rulings

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HQ 732095

November 15, 1989

CPR-3 CO:R:C:V 732095 SO

CATEGORY: COPYRIGHT

Mr. James V. McLaughlin
Assistant District Director of Customs
Commercial Operations
10 Causeway Street, Suite 603
Boston, Massachusetts 02222-1059

RE: Copyright Infringement- "DISNEY CHARACTER GUIDE" - Pamphlet of Drawings (Expires 1-11-2007) - Headquarters Issuance No. 84-63, Effective July 31, 1984 - Walt Disney Registration No. VA 124-730, Published February 25,1983

Dear Sir:

Your letter of January 4, 1989, requested a Headquarters decision pursuant to section 133.43(c)(1), Customs Regulations (19 CFR 133.43(c)(1)), concerning infringement of the above referenced copyright recordation of the Walt Disney Company for "MICKEY MOUSE." We regret the delay in responding.

FACTS:

A shipment containing a 26" inflatable mouse, consigned to Rhode Island Novelty, was detained by Customs on suspicion of infringement of the above referenced copyright (No. VA 124-730) and many other copyrights of Walt Disney for their famous cartoon character, "MICKEY MOUSE," which have been recorded with Customs for import protection. Walt Disney posted the required surety bond and submitted arguments in support of their demand that the imported "INFLATABLE MOUSE" be excluded from entry into the U.S. The importer denied infringement and submitted arguments in support of their claim that the imported "INFLATABLE MOUSE" is non-infringing.

ISSUE:

Would the "INFLATABLE MOUSE," imported by Rhode Island Novelty, infringe the copyrights of Walt Disney Company for "MICKEY MOUSE?"

LAW AND ANALYSIS:

The basic test for determining whether there has been an infringement of a copyright is whether substantial similarity exists between two works. The appropriate test for determining whether substantial similarity is present is whether an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work, Ideal Toy Corp. v. Fab-Lu Ltd., 360 F.2d 1022 (1966). Another statement of the test is whether an ordinary observer who is not attempting to discover disparities between two articles would be disposed to overlook them and regard their aesthetic appeal as the same, Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F2d 487 (1960). The substantial similarity test was developed in order to bar a potential infringer from producing a supposedly new and different work by deliberately making trivial or insignificant variations in specific features of the copyrighted work.

Two steps are involved in the test for infringement. There must be access to the copyrighted work and substantial similarity not only of the general ideas but the expression of those ideas as well. Walt Disney obtained his initial copyright for "MICKEY MOUSE" on November 21, 1928, when the sound cartoon, "Steamboat Willie," was produced. Since then "MICKEY MOUSE" has enjoyed great popularity through cartoons, dolls, theme parks, etc. It is apparent that the party who made the "INFLATABLE MOUSE" over- seas had ample opportunity to view the copyrighted work. Even without direct evidence of access to the copyrighted work, the substantial similarity between the works may be so striking as to preclude the possibility that the works were arrived at independently.

We compared the "INFLATABLE MOUSE" with illustrations of "MICKEY MOUSE" in various poses and with pictures of several licensed inflatable "MICKEY MOUSE" products. We agree with the conclusion reached by Walt Disney that the imported item is intended to appear to the general public as "MICKEY MOUSE." We noted similarities in the overall face structure, including the rounded shape and one-toned color of the ears, the specific shape of the "widows peak" mask, the oval eyes with large pupils located at the bottom, the pencil line eyebrows, the somewhat pointed snout, and the change in color from dark ears and head to light (flesh colored) face. The differences noted by the attorney for the importer in the shape of the ears and snout, and the clothing customarily worn by "MICKEY MOUSE," including the lack of white gloves, are insignificant considering the substantial similarity of the head and face noted above.

Section 602(b) of the Copyright Law (17 U.S.C. 602(b)) provides that, "In a case where the making of the copies or phonorecords would have constituted an infringement of copy- right if this title had been applicable, their importation is
prohibited." Section 603(c) of the Copyright Law (17 U.S.C. 603(c)) provides that, "Articles imported in violation of the importation prohibitions of this title are subject to seizure and forfeiture in the same manner as property imported in violation of the Customs revenue laws. Forfeited articles shall be destroyed as directed by the Secretary of the Treasury or the court, as the case may be; however, the articles may be returned to the country of export whenever it is shown to the satisfaction of the Secretary of the Treasury that the importer had no reasonable grounds for believing that his or her acts constituted a violation of law.

HOLDING:

We are of the opinion that the imported articles would be prohibited entry into the U.S. as infringing the rights of the copyright owner. The imported merchandise is subject to seizure and forfeiture (17 U.S.C. 603). However, the district director of Customs may allow the return of the imported articles to the country of export, whenever he is satisfied that the importer had no reasonable grounds for believing that his act (of importing the infringing inflatable mouse) constituted a violation of law. The bond of the copyright owner shall be returned. Copies of this decision may be furnished to all interested parties.

Sincerely,

Marvin M. Amernick

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