HQ 456337 - Suspected copyright infringement of Walt Disney's Little Mermaid characters - Copyright Registration No. VAU 143-283, effective November 4, 1988; Customs Recordation COP 91-00271, effective October 16, 1991 - United States International Trade Commision Rulings

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CPR-3 CO:R:IT:I 456337 VEA

CATEGORY: COPYRIGHT

U.S. Customs Service
Area Director
New York Seaport Area
6 World Trade Center
New York, N.Y. 10048

RE: Suspected copyright infringement of Walt Disney's Little Mermaid characters - Copyright Registration No. VAU 143-283, effective November 4, 1988; Customs Recordation COP 91-00271, effective October 16, 1991

Dear Sir:

Your correspondence dated August 4, 1993, forwarded the file on Entry No. H78-0035517-1) to Headquarters pursuant to 19 C.F.R. Section 133.43(c)(1) of the Customs Regulations for a decision on alleged infringement of the above referenced copyright owned by The Walt Disney Company.

FACTS:

On March 18, 1993, Customs officers at the New York Seaport detained a shipment of 5400 jelly-molded infant and girl's shoes which originated in Hong Kong. The shoes were imported by Chengs Enterprise Incorporated and included two styles, S1235C and S1235G. Characters found on the inner sole of the shoes were suspected of infringing the copyright for "Ariel", "Flounder" and "Sebastian", characters from Disney's Little Mermaid movie which is recorded with U.S. Customs.

Pursuant to the Customs Regulations, the importer and copyright owner were notified of the detention. The importer denied infringement. In accordance with 19 C.F.R. Section 133.43(b), the copyright owner filed a written demand requesting that the articles be excluded from entry and posted a surety bond in the amount of $6,525.00. Pursuant to 19 C.F.R. Section 133.43(c)(1), Customs notified both parties that they could submit further evidence, legal briefs, or other pertinent material to substantiate the claim or denial of infringement. The importer submitted a brief in support of its denial of infringement. The copyright owner submitted a letter informing Customs that it considered the imported shoes to be infringing. It provided a copy of the registration certificate for the Little Mermaid characters from the U.S. Copyright Office and stated that the infringing shoes were molded after a shoe manufactured by one of its authorized licensees. The file was forwarded to Customs Headquarters for a decision on the infringement issue.

ISSUE:

Whether the figures found on the jelly-molded infant and girl's shoes infringe Walt Disney's copyright for "Ariel", "Flounder", and "Sebastian", characters from the Little Mermaid movie?

LAW AND ANALYSIS:

Section 602(b) of the Copyright Act, 17 U.S.C. Section 602(b) prohibits the importation of articles which infringe a copyright. Under Section 603(b)(2), the person seeking exclusion of infringing merchandise pursuant to Section 602(b) must "furnish proof, of a specified nature and in accordance with prescribed procedures, that the copyright in which such person claims an interest is valid and that the importation would violate the prohibition in Section 602 of the Copyright Act. Section 133.43(c)(1) of the Customs Regulations, 19 C.F.R. Section 133.43(c)(1) places the burden of proving that an article infringes a copyright and should be excluded from entry into the U.S. on the party claiming infringement.

To prove infringement in copyright cases, the copyright owner must demonstrate: (a) ownership of a valid copyright; (b) unauthorized copying of the protected material; and (c) that the copying constituted unlawful appropriation. Arnstein v. Porter, 154 F. 2d 464 (2nd Cir. 1946); Warner Bros, Inc. v. American Broadcasting Companies, 654 F. 2d 204 (2nd Cir. 1981); William F. Patry, Latman's The Copyright Law 189-255 (6th ed. 1986).

Under Section 410 of the Copyright Act, 17 U.S.C. Section 410(c), "a certificate of registration made before or within five years after the first publication of the work shall constitute prima facie evidence of the validity of the copyright and of the facts stated in the certificate". The Walt Disney Company has provided Customs with a copy of the registration certificate issued by the U.S. Copyright Office for the characters allegedly infringed in this case.

Proof that a copyrighted work has been copied may be shown by direct or indirect evidence. Direct evidence such as an admission by the importer or testimony by a witness to the copying is unavailable in this case. The copyright owner may prove copying by indirect or circumstantial evidence such as proof of access to the copyrighted work or similarities between the two works that are unlikely to have occurred without copying. Latman, supra at 191. Courts have held that a copyright owner may indirectly prove access to a protected work by showing that the defendant had a reasonable opportunity to view or copy the protected work, for example, in cases where the work has been widely disseminated. ABKCO Music, Inc. v. Harrisongs, Ltd., 722 F. 2d 988 (2d Cir. 1983); Midway Mfg. Co. v. Bandai-America, Inc., 546 F. Supp 125 (D.N.J. 1982). The Little Mermaid movie was
widely released in 1989 in movie theaters throughout the United States. Also, numerous U.S. companies were licensed to manufacture a variety of articles bearing the copyrighted characters. In view of the widespread release of the movie, its commercial success, and the ready availability of merchandise on the market bearing the Little Mermaid characters, it is reasonable to infer that the importer in this case had access to the protected works.

The third element to prove infringement in copyright cases requires that the copyright owner demonstrate that the importer has unlawfully appropriated its protected work. In determining whether an infringing article unlawfully appropriates a copyrighted work, courts generally apply a "substantial similarity" test. A finding of "substantial similarity" means that the infringing article copies a substantial and material amount of the protected work. Atari, Inc. v. North American Philips Consumer Electronics Corp., 672 F. 2d 607 (7th Cir. 1982), cert denied, 459 U.S. 880 (1982); Heim v. Universal Pictures Co., 154 F. 2d 480 (2d Cir. 1946); Arnstein, 154 F.2d at 464. Thus, simply establishing that a protected work has been copied is insufficient to prove infringement. The copying must amount to a substantial and material amount of the copyrighted work to constitute infringement.

The standard courts apply to determine whether an alleged infringing article is "substantially similar" to a copyrighted work is that of the "ordinary observer". Other courts in determining "substantial similarity" have adopted a total concept and feel test" by which an article is found to be infringing if the "mood evoked by the total combination of its elements is substantially similar to the copyrighted work. Roth Greeting Cards v. United Card Co., 429 F. 2d 1106 (9th Cir. 1970). Using the ordinary observer test, courts have held that an article is infringing if it is so similar to the copyrighted work that an "ordinary reasonable person" would conclude that it unlawfully appropriates a substantial and material amount of the copyrighted work". Atari, 672 F. 2d at 614. In this case, the ordinary observer would include children since they are the primary audience for the copyrighted work.

Applying this test to the imported articles, we find that the figures on the jelly-molded infant shoes at issue are so similar to Walt Disney's Ariel, Flounder and Sebastian characters that an "ordinary reasonable person" would conclude that they unlawful appropriate a substantial and material amount of the copyrighted works. Ariel has distinctive features which are unique to Disney's expression of a mermaid character. For example, she has long red hair and is wearing a purple shell-shaped bra top. The bottom part of Ariel's outfit has a sea shell-shaped design on both sides at the waist. In one pose, she has a flower in her hands, which are placed in her lap.

The imported shoes contain a mermaid-like figure which incorporate several of the distinctive features found on the Disney character. She has long red hair, and like Disney's Ariel is wearing a purple shell-shaped bra top and a bottom which has a sea shell-shaped design on both sides at the waist. The figure also has a flower in her hand. The only
differences between the two characters are the figure on the imported article has a flower in her hair. Also, the bottom part of her outfit is purple instead of green. Moreover, the flower that she is carrying has a white bulb in the middle and is held in only one hand which is extended upward toward her face. The dissimilarities between Disney's character and the mermaid-like figure on the imported article are clearly insignificant and do not negate our finding of "substantial similarity" in this case. Moreover, courts have found infringement even in cases where there are differences between the alleged infringing article and the protected work. If the infringing article is recognizable by an ordinary observer as having been taken from the copyrighted work, "substantial similarity" and therefore infringement have been proven. See generally Roth, 429 F. 2d at 1110; Bradbury v. Columbia Broadcasting System Inc., 287 F. 2d 478 (9th Cir. 1961).

Disney's Flounder character is a yellow fish with turquoise blue fins and human facial features including a nose, a mouth, eyes and eyebrows. The Flounder character found on both styles of the imported shoes is an exact reproduction of Disney's character. The importer admits that Flounder is found on the imported shoe. Its submission states: "In the actual samples taken from this shipment one flounder fish can be found among the thirty plus figures in the inner sole." The importer further states that "the figure of the flounder is difficult to find because it is located in the toe region of one shoe and is only a partial figure in the other shoe". However, a cursory review of the imported shoes reveals that the Flounder character is prominently displayed in the center of the inner sole on one of the styles. Although surrounded by other aquatic characters, it is centrally located and visible to even the causal observer. On the second style, the Flounder character is located only slightly closer to the toe region, but is also clearly visible. The position of the infringing character and the existence of numerous other characters on the imported shoe do not negate infringement in this case. The imported shoes bear an exact copy of Disney's Flounder character which would lead an ordinary reasonable person to conclude that a substantial and material portion of the protected work has been unlawfully appropriated.

The third Disney character at issue, Sebastian, is a red crab which also has human facial features including a large mouth which is open and enormous eyes. Sebastian has a shell on its back and a group of claw-like legs on each side of its body. Finally, Sebastian also has claw-like arms. One arm is extended above its head and the other out to its side. The red-colored character on both styles of the imported shoes is an exact reproduction of Disney's Sebastian character. It incorporates the distinctive features of the Disney character including the large eyes and open mouth, the claw-like arm extended above the head, and the group of claw-like legs on each side of its body. The entire Sebastian character has been reproduced on one style of the imported shoes and the top half of the Sebastian character on the other style.

The importer argues that the Sebastian character is "inconsequential" on the second style since the entire figure does not appear on the shoe. It also argues that this figure "can only be spotted upon a very close examination of the shoe". We disagree with the importer's
arguments. Although only the top portion of Disney's Sebastian character has been reproduced on one style of the imported shoe, it incorporates the features unique to the protected work including its red color, large eyes, open mouth, and the claw-like arm extended above its head, therefore, leaving little doubt of the intent to copy the protected work. Also, the figure on this style of the imported shoe is located close to the edge of the inner sole and appears to have only been cut off. However, it is still visible to the ordinary observer.

The importer argues that the inconspicuous placement of the infringing characters on the inner sole and the fact that they are not visible when the shoe is worn indicates that the imported articles did not intend to "copy or capture the total concept and feel of the Little Mermaid". It also argues that "the presence of the alleged infringing characters can arguably be considered de minimis, thereby negating a finding of copyright infringement". These arguments are not persuasive in this case where two of the figures on the imported articles are exact copies of Disney's Flounder and Sebastian characters. Although the mermaid-like figure is not an exact reproduction of Disney's Ariel, it clearly incorporates its distinctive features leaving an ordinary observer to conclude that the protected work was copied. Finally, the position of the infringing characters on the imported articles also does not negate infringement in this case since they are clearly visible to even the causal viewer. Based on the evidence in this case and the failure of the importer to present any persuasive arguments, we conclude that the imported shoes unlawfully appropriate a substantial and material amount of the copyrighted works to constitute infringement.

HOLDING:

We find that the figures on the detained jelly-molded shoes infringe Walt Disney's copyright for "Ariel", "Flounder" and "Sebastian", animated characters from the Little Mermaid movie. Therefore, the imported articles are subject to seizure and forfeiture under 17 U.S.C. Section 603 and 19 C.F.R. Section 133.44 of the Customs Regulations. However, if it is shown to the satisfaction of the District Director that the importer had no reasonable grounds for believing that its actions constituted a violation of the law, the articles may be returned to the country of export pursuant to 19 C.F.R. Section 133.47. The bond filed shall be returned to the copyright owner. Copies of this decision should be provided to all interested parties.

John F. Atwood, Chief
Intellectual Property Rights Branch

CO:R:IT:I
457692 VEA

Paul G. Giguere, Esq.
Sandler, Travis & Rosenberg
1341 G Street, N.W.
Suite 610
Washington, D.C. 20005

Dear Mr. Giguere:

Per your letter of March 9, 1994, please find attached a copy of HQ Ruling 456375 issued by the Intellectual Property Rights Branch on August 23, 1993, in the matter of the Russ Berrie Troll dolls. We have not issued any other rulings relating to this matter since August 23rd. We have waived the charges for this service.

Please do not hesitate to call us if we can be of further assistance.

Sincerely,

John Atwood, Chief
Intellectual Property Rights Branch

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