HQ 0450381 - 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

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HQ 450381

December 12, 1990

TRA CO:R:P IPR 450381 TPT

CATEGORY: COPYRIGHT

District Director of Customs
301 S. Ashley Drive
Tampa, Florida 33602

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 Madam:

This is in response to your letter dated September 12, 1990, requesting a Headquarters ruling on the possible infringement of the "Googles" Platypus stuffed animal.

FACTS:

The instant matter involves the importation of 1,680 stuffed animal toys described on a commercial invoice as Quackers. The value of the merchandise is approximately $4,700 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 $5,746.

ISSUE:

Whether the shipment of Quackers 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.

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Turning to the issue of substantial similarity, the importer argues that the imported article is a stuffed duck. The importer, in denying that its stuffed toy doll is piratical, states that its stuffed doll animal design is significantly different. The importer states that the bill of its doll and the webbed feet provide a basis for finding that there is no piracy.

In arguing that infringement of the copyrighted work exists, Ganz Brothers states that the imported article was intended to copy the overall impression of the Googles doll. It contends that the imported article is substantially similar to the protected work as to shape and appearance. The copyright owner also asserts that the creation of Quackers post-dates Googles and that this is evidence of the copying. Ganz Brothers also asserts that the imported article copies the entire aesthetic appeal of the protected work.

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).

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, despite the overall similarity of the shape, it differs substantially from the protected article. The imported article is approximately seven inches shorter, the webbed feet are designed differently, and the bill is longer and rounded, unlike the copyrighted work which has a wider, but shorter bill. Further, one immediate featrue which is different is that the imported article is not a long-haired doll. Therefore, we conclude that this doll does not infringe the copyrighted work.

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
4
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

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