HQ 0452061 - Suspected copyright infringement of the Mantae Catch Game (VA 423-007) protecting the etching of a baseball glove on the handle side of a paddle (Customs recordation 91-00175, June 24, 1991) - United States International Trade Commision Rulings

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HQ 452061

January 14, 1992

TRA CO:R:P IPR 452061 TPT

CATEGORY: COPYRIGHT

Port Director of Customs
700 Doug Davis Drive
Atlanta, GA 30354

RE: Suspected copyright infringement of the Mantae Catch Game (VA 423-007) protecting the etching of a baseball glove on the handle side of a paddle (Customs recordation 91-00175, June 24, 1991)

Dear Sir:

This is in response to a request for a substantive decision on the issue of copyright infringement requested by a supervisory import specialist in Atlanta.

ISSUE:

Whether a catch ball game paddle which has the etching of a baseball glove on the handle side has a degree of similarity sufficient to invoke the regulatory procedures under either section 133.42 or 133.43 (19 C.F.R. 133.42, 133.43) of the Customs regulations?

LAW AND ANALYSIS:

Imported articles which infringe a copyright are prohibited importations under section 602(b) of the Copyright Act (17 U.S.C. 602(b)) and such articles are subject to seizure and forfeiture under section 603(c) of the Copyright Act (17 U.S.C. 603(c)). These articles are seized and forfeited in the same manner as goods imported in violation of the Customs revenue laws. Alternatively, infringing articles may be returned to the country of export whenever it is shown to the satisfaction of the Secretary of the Treasury (Customs) that the importer had no reasonable grounds for believing that its acts constituted a violation of law. 19 C.F.R. 133.47. The party claiming that an imported article is infringing shall bear the burden of proof. 19 C.F.R. 133.43(c)(1).

Initially, we conclude that the work deposited with Customs is subject to protection. The submission of a copyright registration is prima facie evidence of copyright ownership and of the validity of the copyright. 17 U.S.C. 410(c); Quaker Oats 2

Co. v. Mel Appel Enterprises, Inc., 703 F. Supp. 1054 (S.D.N.Y. 1989).

The examination of the imported article at this stage, i.e., retaining imported merchandise within Customs's custody pursuant to section 1499 (19 U.S.C. 1499) to determine if any laws have been violated, is to decide whether there is sufficient similarity to invoke the procedures referenced above. It is essential that even at this preliminary stage that the "ordinary observer" test be used for concluding whether to release, detain or seize the merchandise. Therefore, we must decide whether the ordinary observer would be disposed to overlook the disparities of the work and would regard its aesthetic appeal as the same. See Gund, Inc. v. Russ Berrie and Co., Inc., 701 F. Supp. 1013 (S.D.N.Y. 1988).

It has been previously determined that to the degree that the similarity between the copyrighted work and an alleged infringing work inheres only in the general ideas expressed, the similarities are not infringing; therefore, it follows that similarity in expression is non-infringing to the extent the nature of the creation makes similarity necessary and that "indispensable expression" of a generalized idea may be protected only against virtually identical copying. Gund, Inc. v. Smile International, Inc., 691 F. Supp. 642, 645 (E.D.N.Y. 1988), aff'd, 872 F.2d 1021 (2d Cir. 1989); see Durham Industries, Inc. v. Tomy Corporation, 630 F.2d 905 (2d Cir. 1980) (when the protected work and the alleged infringing work express the same idea, the similarity that inevitably stems solely from the commonality of the subject matter is not proof of unlawful copying).

The etching on the circle-shaped protected work is made up of narrow lines which outline the four fingers, the thumb, and the "pocket" of a baseball glove. The surface is smooth in appearance. Near the end of the middle and ring fingers there are intersecting lines to simulate where lacing might be on a real glove. In the "pocket" area there are dashed lines along the edge to simulate stitching. In the center of the "pocket" there are curved lines conveying the appearance of a circular pattern.

The etching on the item shaped like a baseball glove to be imported, while similar in that it is readily recognizable as a baseball glove, is different. The surface on this item is made to appear "grainy". Also, along the edge of the glove, in the "pocket" area, and near the end of the middle and ring fingers there are bolder, wider lines to simulate lacing around the glove. In the center of the "pocket" these bold lines are shown in knots as well as along the edge of the small finger.

3

The differences in the etchings are not so minor that they can be easly overlooked.

HOLDING:

We find that although the etching on the item to be imported derives from the same idea as that of the copyrighted work, the expression of the idea in tangible form is sufficiently different so that it does not amount to infringement. Therefore, merchandise bearing etchings identical to the sample submitted may be released.

Sincerely,

John F. Atwood, Chief
Intellectual Property Rights Branch

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