HQ 0453696 - Suspected infringement of Russ Berrie's Troll doll copyright (U.S. Copyright Office Registration No. VA 462-387; Customs Recordation Issuance No. Cop 91-00300) - United States International Trade Commision Rulings

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HQ 453696

October 5, 1992

TRA CO:I:IT:I 453696 TPT

CATEGORY: COPYRIGHT

District Director of Customs
U.S. Customs
ATTN: Olga Galvan
300 S. Ferry Street
San Pedro, CA 90731

RE: Suspected infringement of Russ Berrie's Troll doll copyright (U.S. Copyright Office Registration No. VA 462-387; Customs Recordation Issuance No. Cop 91-00300)

Dear Sir:

This is in response to your memorandum dated July 29, 1992, wherein you requested that this office provide a legal opinion as to whether certain detained troll dolls infringe the copyrights referenced above.

FACTS:

Customs notified the importer by a letter dated March 20, 1992, that twenty cartons of Trollkin watches were being detained for suspected copyright infringement of the above referenced copyright.

In a letter dated April 3, 1992, the importer denied the allegation of infringement.

In accordance with section 133.43 of the Customs Regulations (19 C.F.R. 133.43), Customs notified the copyright owner regarding this shipment. The copyright owner, through counsel, responded and requested that Customs deny entry to the shipment and deposited a bond in the amount of $5,078.16.

ISSUE:

Whether the imported Trollkin watch incorporates features which are substantially similar to the copyrighted troll doll referenced above to constitute infringement?

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LAW AND ANALYSIS:

The role of Customs in issuing substantive decisions of copyright infringement as to imported merchandise was addressed recently in The Miss America Organization v. Mattel, Inc., 945 F.2d 536 (2nd Cir. 1991). Citing section 603 of the Copyright Law (17 U.S.C. 603) the court recognized Customs authority to enforce the provisions of the law prohibiting importations of infringing goods. Mattel, 945 F.2d at 538. Also, the court acknowledged that as a result of its duties, Customs has developed expertise in determining whether merchandise does or does not infringe. Id. at 539. Further, the court stated that since sections 602 and 603 (17 U.S.C. 602, 603) direct the Secretary of Treasury to enact regulations to aid in combatting copyright infringement, it is implicit in these directions that the agency (Customs) would be involved in making infringement determinations. Id. at 541. Therefore, because the Treasury Department has been assigned the duty to enforce the copyright laws in cases where there is a reason to believe infringement exists as to an imported item, it follows that it is within Customs jurisdiction to take any action to fulfill this duty. Id. at 542.

Customs has some independence and autonomy in making infringement determinations regarding imported merchandise. Id. at 544. The court stated that there is no reason to enjoin Customs from performing its statutory duties so long as the agency proceeds in conformity with the statutory scheme. Id.

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); Folio Impressions, Inc. v. Byer California, 752 F. Supp. 583, 585 (S.D.N.Y. 1990), aff'd, 937 F.2d 759 (2nd Cir. 1991); Quaker Oats Co. v. Mel Appel Enterprises, Inc., 703 F. Supp. 1054, 1058 (S.D.N.Y. 1989). Upon presentation of a registration certificate the burden of proof shifts to the defendant to introduce evidence of invalidity. Original Appalachian Artworks, Inc. v. The Toy Loft, Inc., 684 F.2d 821 (11th Cir. 1982).

Access to a copyrighted work 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 3
observer would be disposed to overlook the disparities of the works and 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 the similarities rather than the differences. Id. at 1018.

Imported articles which infringe a copyright are prohibited importations under section 602(b) of the Copyright Act and such articles are subject to seizure and forfeiture under section 603(c) of the Copyright Act. These articles are seized and forfeited in the same manner as goods imported in violation of the Customs revenue laws. 17 U.S.C. 603. 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.

Russ Berrie asserts that all the trolls recorded with Customs are covered by U.S. Copyright Office registrations which constitute prima facie presumption of validity. Masquerade Novelty, Inc. v. Unique Industries, Inc., 912 F.2d 663 (3rd Cir. 1990). It further argues that the copyrighted troll figure is derived from two dimensional photographs of an earlier version of a Russ troll doll and, thus, the current three dimensional work is a derivative work subject to copyright protection under section 103 of the Copyright Law (17 U.S.C. 103).

Russ Berrie states that it made full disclosure to the Copyright Office in applying for its copyright registration. It asserts that full disclosure was made of the two dimensional troll from which its three dimensional troll was derived. In Scandia House Enterprises, Inc. v. Dam Things, Est., 243 F. Supp. 450 (D.D.C. 1965) the court found troll dolls to be in the public domain. Russ Berrie argues that the detained troll watches are infringing because the sculptural elements of the detained item are "virtually verbatim" from the copyrighted item. The copyright owner points to the closeness of the chin line to the lips, the colors of the eyes, the roundness of the cheeks, and most prominently the shape and location of the ears.

The copyright owner asserts that there is no question but that the importer had access to its work. Russ Berrie argues that it has successfully marketed its product nationally since 1990 and is a market leader of troll dolls. Therefore, it contends that the only issue is whether the imported item is substantially similar to the copyrighted item.

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In asserting that the imported item is substantially similar to its troll, the copyright owner states that the expression on the imported item is appropriated from its troll. The copyright owner argues that the imported item incorporates a friendlier, more human-like look, that the location of and the shape of the rounded ears, more rounded eyes, the smile, the rounded cheeks, and chin line are appropriated from the protected expression.

The importer argues that the any similarity between its item and Russ Berrie's relates more to the idea of a troll rather than the expression. The importer contends that the upstanding colored hair, round eyes, circular ridge around the eyes, bulbous nose, and round cheeks were found in the original Norfin troll doll, the Russ Berrie troll and is incorporated in the imported item, thereby constituting features in the public domain. Therefore, the importer argues that its item does not infringe the Russ Berrie copyright referenced above.

CUSTOMS DETERMINATION

Initially, we disagree with the copyright owner, Russ Berrie, that the Scandia case is irrelevant to this case. We must be cognizant of those characteristics and features of the troll doll which are in the public domain and may be copied by any one. Works substantially derived from pre-existing works, whether copyrighted or in the public domain, are subject to copyright protection so long as the derivative work itself is original as long as the original aspects are nontrivial and do not affect the underlying work. Knickerbocker Toy Co., Inc. v.Winterbrook Corp., 554 F. Supp. 1309, 1317 (D.N.H. 1982).

We now turn to the actual comparison of the troll facial features. We see that the public domain doll, the copyrighted doll, and the imported item have bulbous noses, round eyes, and the rounded ridges over the eyes leading down to the nose. The ears on all three items are different. The public domain doll has pointed ears, the copyrighted doll has rounded ears with a circular shaped line in the mold, and the imported item has rounded ears which protrude more than on the copyrighted item. The mouth on the imported doll appears to be more like the public domain doll in that the lower lip is the end of the facial features and has no chin, unlike a smoother curl of the lower lip on the copyrighted doll. Finally, the double row of ridges around the eyes of the imported item give the face a different appearance than on the copyrighted work.

Based upon the foregoing comparison, we conclude that the imported item is not substantially similar to the copyrighted work and, therefore, does not infringe the above referenced copyright.

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HOLDING:

We find that the imported item does not infringe the Russ Berrie copyright referenced above and shall be released. The bond deposited by the copyright owner, and returned herein, shall be provided to the importer along with a copy of this decision.

Sincerely,

John F. Atwood, Chief

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