HQ 0450053 - Copyright Infringement of "Googles Dog," a stuffed toy doll - United States International Trade Commision Rulings

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HQ 450053

June 21, 1990

TRA CO:R:P IPR 450053 TPT

CATEGORY: COPYRIGHT

District Director of Customs
511 N.W. Broadway
Portland, Oregon 97209

RE: Copyright Infringement of "Googles Dog," a stuffed toy doll

Dear Sir:

This is in response to your letter of May 14, 1990, requesting a Headquarters ruling on the possible infringement of the "Googles" copyright by the importer.

FACTS:

A shipment of 948 floppy dog toy dolls entered through the port of Portland, Oregon, on November 6, 1989. The shipment was released. However, on December 6, 1989, a Notice of Redelivery (Customs Form 4647) was issued for a possible violation of a copyright owned by Ganz Brothers for its line of "Googles" stuffed toy dog dolls.

Ganz Brothers owns the copyright to "Googles" which was registered with the U.S. Copyright Office on July 1, 1988 (VAu No. 135-487). Ganz Brothers subsequently recorded its copyright with U.S. Customs effective December 27, 1988 (Issuance No. 88- 163), in order to receive protection against infringing imported articles.

Counsel for Ganz Brothers submitted a brief arguing that the shipment of floppy dogs is piratical and should be excluded from importation or destroyed. Additionally, Ganz Brothers has deposited a single transaction bond in the amount of $7,500.

ISSUE:

Whether the shipment of floppy dogs which entered on November 6, 1989, through the port of Portland, Oregon, infringes the "Googles" copyright.

2

LAW AND ANALYSIS:

A party claiming infringement of its copyright must prove that it owns the copyright, that the alleged infringer had access to the copyrighted work, and that there is substantial similarity between the copyrighted work and the alleged infringing work. Aliotti v. R. Dakin & Co., 831 F.2d 898, 900 (9th Cir. 1987). A party makes a prima facie case as to copyright ownership by submitting the copyright registration which carries with it a presumption of validity and ownership. 17 U.S.C. 410(c); Quaker Oats Co. v. Mel Appel Enterprises, Inc., 703 F. Supp. 1054, 1058 (S.D.N.Y. 1989). Access may be established by direct proof of copying or by circumstantial evidence that an alleged infringer had access to the copyrighted work. Gund, Inc. v. Russ Berrie and Co., Inc., 701 F. Supp. 1013, 1018 (S.D.N.Y. 1988). Whether a work is substantially similar to another is determined by the "ordinary observer" test which is whether the ordinary observer would be disposed to overlook the disparities of the works and regards their aesthetic appeal as the same. Id. at 1018. A determination that copying has taken place does not require a finding that every detail is the same, the key being similarity rather than the differences. Id. at 1018.

Imported articles which infringe a copyright are prohibited importations under section 602(b) of the Copyright Law (17 U.S.C. 602(b)) and such articles are subject to seizure and forfeiture under section 603(c) of the Copyright Law (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).

The importer challenges neither the validity of the "Googles" copyright registration nor ownership of the copyright. Therefore, it is determined that Ganz Brothers is the copyright owner.

Turning next to the issue of whether the importer had access to the copyrighted work, Ganz Brothers argues that the huge success and popularity of the Googles toys has provided occasions for potential infringers to see and copy its product. Ganz Brothers asserts that it has displayed the Googles line of plush toys in many showrooms and Toy and Gift Shows as well as having the Googles dog promoted by over 150 sales representatives.

3

Ganz Brothers has submitted as exhibits numerous advertisement photographs of the complete line of Googles plush toy dolls. We note that one photograph of the Googles plush toy dog appears in the August/September 1989 issue of Today's Parent. In the absence of any statement by the importer addressing the issue of access to the copyrighted work, we conclude that the importer did have access.

The remaining element to be proven is whether the imported work is substantially similar to the "Googles" plush toy dog. The importer argues and emphasizes that its doll has large floppy paws which extend forward and its hind paws are not overly exaggerated and oversized like those of Googles, that its doll's tongue is much smaller and the snout is totally different. Further, the importer argues that the shape of the ears of the two dolls are different and its ears are not of the same color scheme. Finally, the importer argues that the body structure of the two dolls is very different. It argues that unlike Googles' short and fat body its doll is more normal, long and not chubby.

The importer has engaged in a comparison which details the differences between its doll and Googles. The importer's analysis of the differences is incorrect. The analysis for determining substantial similarity is to look at the overall appearance of the dolls to see if the combination of the details creates a general impression of substantial similarity. Fisher- Price Toys v. My-Toy Co., Inc., 385 F. Supp. 218, 220 (S.D.N.Y. 1974). Further, the determination must be based on whether an average lay observer would recognize the imported doll as having been appropriated from the Googles doll. See Durham Industries, Inc. v. Tomy Corporation, 630 F.2d 905, 912 (2d Cir. 1980).

In order to reach a determination on the issue of substantial similarity, it is not improper to engage in a side- by-side comparison of the dolls at issue. Knickerbocker Toy Co., Inc. v. Genie Toys Inc., 491 F. Supp. 526, 528 (E.D. Mo. 1980). The importer refers to both toy dogs as floppy dogs. Ganz Brothers characterizes its dog as a plush dog. We observe that both dogs are two-tone in color (the Googles dog is white and gray, the imported dog is white and golden brown). Both dolls are white over the center portion of their bodies and have white heads. Both dolls have the same overall shape of long, floppy ears with rounded ends, although we note the length of the "hair" and colors differ. The Googles doll and the imported doll have raised rounded rumps covered by their respective colors as well as similarly shaped tails also covered by their respective colors. When placed on a flat surface the Googles toy and the imported toy lie flat with all four appendages spread out to the sides. Both dolls appear to be the same length.

4

Both dolls have a plush, long-haired appearance which is of similar length on each doll. This characteristic is common to the tail, rump, body, and head of each doll. Both feel the same to the touch. Both dolls have the same shade of pink tongues protruding from the mouth, lengths being somewhat different. The snout of the imported doll is bigger than Googles' snout. The eyes on both dolls are merely round pieces of black plastic. The long hair droops and covers one eye on each doll. The slightly visible eye on each doll is surrounded by its respective color. Both dolls have black pieces of plastic as noses. The imported doll's nose piece has two indented nostrils and the shape is generally triangular. The Googles nose piece is plain, slightly larger and different in shape from that of the imported doll.

In Gund, Inc. v. Smile International, Inc., 691 F. Supp. 642 (E.D.N.Y. 1988), the court had a case involving floppy stuffed toy dogs. In Gund the court described the toy dog dolls as a "non-rigid stuffed toy dog that 'flops' down on its stomach." Id. at 645. The court concluded that the question to be answered was whether the defendant had copied features of the copyrighted work which were unnecessary to express the idea of such a floppy dog. In reaching a decision we note that in a side-by-side comparison, the differences which the importer suggests are covered up by the "long-haired" appearance of its doll.

These infringement cases are so factually based that it requires that decisions be ad hoc. Durham at 912 (citing Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487 (2d Cir. 1960)); Gund at 645. While we recognize that there are a limited number of ways to create a floppy dog, we conclude that the overall appearance of the dolls and the combination of the detailed features creates a general appearance of substantial similarity in the case before us. We conclude that it is more than just coincidence that the dogs have a similar feel, that the tongues are of the same shade of pink, that one eye of each doll is surrounded by its respective color, and that generally the portions of the bodies covered by color are the same. Also, we conclude that the differences which do exist are minor and appear to be an attempt on the part of the importer to disguise copying of the Googles doll. See Fisher-Price Toys at 221. Therefore, we find that the essential expression of the characteristics of a plush, floppy dog toy have been designed and projected to produce a whole look which must be seen as copied from Googles.

HOLDING:

We are of the opinion that the imported plush toy dog doll is substantially similar to and infringes the copyrighted "Googles" toy dog doll. The copyright owner's bond shall be returned. 19 C.F.R. 133.44. If the importer fails to comply with the Notice of Redelivery issued pursuant to 19 C.F.R. 133.46, the district 5
director should proceed with a claim for liquidated damages under 19 C.F.R. 141.113(g).

Sincerely,

John F. Atwood, Chief
Intellectual Property Rights

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