HQ 0450288 - Suspected copyright infringement of "Googles" Platypus stuffed animal which is registered with the U.S. Copyright Office (No. VA 332-950, March 3, 1989) and recorded with U.S. Customs (Issuance No. 89-058, April 28, 1989). - United States International Trade Commision Rulings

United States International Trade Commision Rulings And Harmonized Tariff Schedule

faqs.org Rulings By Number Rulings By Category Tariff Numbers

faqs.org > Rulings and Tariffs Home > Rulings By Number > 1993 HQ Rulings > HQ 0224025 - HQ 0450288 > HQ 0450288

HQ 450288

December 12, 1990

TRA CO:R:P IPR 450288 TPT

CATEGORY: COPYRIGHT

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

RE: Suspected copyright infringement of "Googles" Platypus stuffed animal which is registered with the U.S. Copyright Office (No. VA 332-950, March 3, 1989) and recorded with U.S. Customs (Issuance No. 89-058, April 28, 1989).

Dear Sir:

This is in response to your letter dated July 24, 1990, requesting a Headquarters ruling on the possible infringement of the "Googles" Platypus stuffed animal.

FACTS:

The instant matter involves the importation of 420 stuffed animal toys described on a commercial invoice as Plump Duck. The value of the merchandise is $2,268 as shown on the invoice. Upon examination by Customs, Customs detained the subject merchandise for possible infringement of the copyright referenced above. Upon notification of the importer that the goods were suspected of copyright infringement, the importer submitted a statement denying infringement of any copyright.

Customs informed the copyright owner concerning the importation of the merchandise. Upon notification from Customs, the copyright owner requested that the merchandise not be allowed entry and posted a bond in the amount of $2,800.

ISSUE:

Whether the shipment of plump duck stuffed animals infringes the registered and recorded copyright of the "Googles" Platypus stuffed animal?

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 2
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 would regard 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 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 Ganz Brothers has established a prima facie case of ownership of the copyright since it has submitted a registration certificate issued by the U.S. Copyright Office.

Next, concerning the issue of access to the protected work, the record includes a statement by Mr. Howard Ganz, president of Ganz Brothers. In his statement, he contends that there was access to his product as a result of advertising of the product. He states that samples of the subject article were sent to sales representatives as early as January, 1988, and were displayed at approximately 50 trade shows in the United States since January, 1988. This product was available for sale in the spring of 1988 and has been displayed in a large number of retail outlets.

In the absence of any statement by the importer on the issue of access to the protected work, we conclude that access to the protected work existed.

3

Turning to the issue of substantial similarity, the importer, in denying that its stuffed toy doll is piratical, states that its stuffed doll animal design is based upon the description found in the Webster Dictionary for a platypus. The importer states that the dictionary describes a platypus as a flat footed animal, with webbed feet, having a tail like a beaver, and a bill like a duck. The importer, upon examining a photograph of the copyrighted doll, contends that its toy doll differs from the copyrighted toy because of differences in the feet, tail, and bill. The importer contends that the copyrighted work is not designed like a platypus.

In arguing that infringement of the copyrighted work exists, Ganz Brothers states that the imported article copies the entire unique aesthetic appeal of the protected work. The copyright owner asserts that the overall appearance of the imported article includes visual elements distinctive to the protected work such as the shape, size, combination of materials, body, and facial proportions. Specifically, Ganz Brothers argues that the expression of the idea, that of a plush, long-haired toy platypus, is copied because details such as the elongated, resting position of the doll, color combination, beak shapes, black plastic eyes, and webbed feet are the same.

Ganz Brothers argues that while minor differences exist between its protected stuffed animal and the imported article, the differences are the type that an ordinary observer would be likely to overlook. Ganz Brief at 10. Ganz Brothers further contends that the manufacturer of the imported article has engaged in nothing more than a thin attempt to disguise deliberate copying. Id. at 10-11.

When comparing stuffed animals, prior cases are helpful. 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 invevitably stems solely from the commonality of the subject matter is not proof of unlawful copying).

In the instant case, the dolls (the imported sample and the one Ganz Brothers doll) are characterized as being a stuffed platypus (sometimes called a duckbill). According to the Webster's Third New International Dictionary a platypus has a bill resembling 4
that of a duck, a fur coating, five-toed webbed feet, and a broad flattened tail. Based upon this general description of the animal, we may assume that stuffed animals made to replicate this animal will have some or all of these features. Therefore, the case revolves around the resolution of the issue of whether the imported article unnecessarily copies features of the copyrighted work in order to express the idea of a stuffed platypus doll.

It is not improper to engage in a side-by-side comparison of the dolls in order to reach a determination on the issue of substantial similarity. Knickerbocker Toy Co., Inc. v. Genie Toys, Inc., 491 F. Supp. 526, 528 (E.D. Mo. 1980). In examining the imported doll, we note that, it is approximately a foot longer than the protected work, although the overall shape and color are similar. Significantly, however, unlike the protected work, the imported article possesses a beaver-like tail. The bill on the imported article is longer and narrower than that on the protected work. The bill also has two black stripes which the protected work does not possess. When the imported article and the protected work are placed on a flat surface, an observer notices immediately the larger, more pronounced webbed feet of the imported article which extend out away from the body more than on the copyrighted doll. Based upon the overall appearance and comparison of the two dolls, we conclude that there is no infringement.

HOLDING:

We conclude that the similarities between the protected work and the imported doll are dictated by the subject matter being expressed. Therefore, we hold that the imported article is not an infringement under 17 U.S.C. 602 and may be released and the bond deposited by the copyright owner shall be provided to the importer.
Sincerely,

John F. Atwood, Chief

Previous Ruling Next Ruling