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HQ 468099

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July 30, 1999

RR:IT:IP 468099 CRS

CATEGORY: INTELLECTUAL PROPERTY RIGHTS

Diane L. Weinberg, Esq.
Meeks & Sheppard
330 Madison Avenue, 39th Floor
New York, NY 10017

RE: Stuffed toy bears; beanie babies; copyright; not substantially similar

Dear Ms. Weinberg:

This is in reply to your ruling request, dated July 19, 1999, submitted on behalf of your client, Team Beans, L.L.C., as to whether certain beanbag stuffed toy bears infringe on certain copyrights owned by Ty, Inc. Two samples of the Team Bean bears were submitted with the ruling request, as well as two sample Ty bears.

FACTS:

Team Beans markets toy stuffed bears that have been licensed by various sports associations, including Major League Baseball Properties, the Major League Players Association, the National Football League Properties, the Quarterback Club, NASCAR and fifteen individual drivers, and the Indianapolis Speedway Corp.

The sample bears are made in China, are manufactured from a plush fabric, are filled with beans and are approximately eight inches tall. Each has a head, two ears, two eyes, a nose, two arms, a torso, two legs and two feet. The bears are also able to stand independently. This latter characteristic is due to the use of a cross-construction in the lower posterior that allows the proper volume of fill, thereby ensuring that the bear will remain upright when correctly set up. The cross construction technique forces the fill to stay in the appropriate position at all times. Each bear contains five individually sealed and safely secured bean bags.

Sample bear no. 1 represents Tony Gwynn, rightfielder, San Diego Padres. The bear is wearing a San Diego road gray uniform with ASan Diego@ emblazoned across the front, and the name AGwynn@ and the number A19" on the back. Each bear is licensed by Major League Baseball Properties and has a hang tag that indicates that the article has been licensed by Major League Baseball (MLB). A second hang tag bears the name ATeam ML Beans authentic,@ and provides details of Mr. Gwynn=s career highlights. The bear=s right foot sports the MLB logo; its left foot, that of the Major League Baseball Players Association. On the bear=s right arm is the 1999 MLB All Star Game patch; on the left arm, the Padres= team patch.

Sample bear no. 2 represents John Elway, the recently retired quarterback of the Denver Broncos. The bear is wearing the blue home uniform jersey of the Denver Broncos. The word ABroncos,@ and below that, the number A7," are stitched across the front of the bear=s jersey, while the name AElway@ and the number A7" are stitched on the back. The bear=s right foot sports the National Football League (NFL) logo. No hang tags are attached. Photographic images of both the Gwynn and Elway bears are displayed below.

The sample Ty bears, AValentino@ and ACurly,@ are registered with the U.S. Copyright Office (Reg. Nos. VA 679-765 and VA 775-051) and recorded with Customs (COP 97-00202 and COP 97-00273). Each has a head, two ears, two eyes, a nose, two arms, a torso, two legs, two feet. ACurly@ is brown in color, and AValentino,@ white. The Ty bear is poseable but generally assumes a sitting position. The Team Beans bear has a more upright posture than the Ty bear even when sitting. In addition, when sitting the Team Beans bear=s feet point upward, while those of the Ty bear point outward. Furthermore, while the Ty bear is unable to stand upright, it is nevertheless able to stand after a fashion, albeit more of a crouch. In any case, it does not stand as readily, nor as easily, nor in as many positions, as the sample Team Beans bear. The AValentino@ bear sports a heart on its left breast and both have ribbons tied around their necks. In addition, both Ty bears have a red, heart-shaped tag in their left ear on which is written ATy, Beanie Baby original.@ Neither of the Ty bears is clothed. Photographic images of both the AValentino@ and ACurly@ bears are displayed below.

In your submission, you provided the following information regarding the construction of the sample Elway and Gwynn style Team Beans bears as contrasted with that of the copyrighted Ty bears.

Construction

Team Beans Bear

Ty Beanie Baby

Legs

3 pieces w/inner safety bags

2 pieces with no inner safety bags

Back

1 piece w/cross section rear end seam

2 pieces w/ 1 seam down back

Front

1 piece w/small groin section

1 piece w/large seam down from the neck

Rear-End

Cross intersection seam part of back pattern

No definitive rear-end; part of 2-piece back

Ears

2 rectangular pieces

2 circular pieces

Nose

Triangular shape

Oval shape

Eyes

Large and spaced apart

Small and close together

Arms

2 piece, short arms w/inner safety bags

2 piece, long arms w/no inner safety bags

Head

Wider in shape

Taller in shape

Torso

Internal safety bag to hold beans

No internal safety bag to hold beans

Notwithstanding that the bears are approximately the same size, there are differences in respect of their overall design, body shape, posture, stitching, concept and feel. In this regard, you noted a number of distinctions, including the following:
$ Both bears have round heads; however, the Ty bear=s head is round throughout, while the forehead of the Team Beans bear is flattened, creating a different profile appearance.
$ Each bear has a nose; however, the Ty bear=s nose is oval shaped and flat, while the Team Beans bear=s nose is triangular and more pronounced.
$ In the area surrounding the nose, the Team Beans bear has a protruding snout; the Ty bear does not. The profile of the products is affected.
$ Each bear has two ears; however, the Ty bear=s ears are round and thumbnail shaped, while the Team Beans bear=s ears are oval shaped and shorter.
$ The firmness of the Team Beans bear is intentional as it is specially designed to stand upright. The Team beans bear is intended to be viewed standing up.
$ Each Team Beans bear is embroidered with a sports team or league uniform, logo or player jersey corresponding to a professional or amateur sport, player or league and is intended to promote and market the sporting event, league, team or player.
$ The Ty bear=s legs are stitched together on the sides, while those of the Team Beans bear are stitched from front to back.
$ The Team Beans bear has cross stitching on the lower rear end of the torso (where fill is added for displacement, thereby allowing the bear to stand); the Ty bear has no stitching in this area.
$ Each bear has two feet; however, the Ty bear=s feet are smaller and turned outward, while the feet of the Team Beans bear are larger and face front.

The feet of the Team Beans bear are stitched around the side and have a separate bottom panel that leaves the bottom surface clear from stitching (enabling the toy to stand).
$ The legs, feet and arms of the Team Beans bear are stiffer and firm, while those of the Ty bear are flexible and less firm.

In addition to the sample Ty bears submitted with the ruling request, Ty, Inc., owns other registered copyrights in respect of beanbag stuffed teddy bears, including, inter alia, the following copyrights that are recorded with Customs: COP 97-00201; COP 97-00274; COP 97-00292; COP 98-00079; COP 98-00080; and COP 99-00030.

ISSUE:

The issue presented is whether the sample Team Beans bears are substantially similar to certain beanbag stuffed teddy bears produced by Ty, Inc., such that they are prohibited from importation into the United States pursuant to 17 U.S.C. ' 603.

LAW AND ANALYSIS:

Articles that infringe a registered copyright are prohibited from importation into the United States pursuant to section 602(b) of the Copyright Act of 1976, as amended (17 U.S.C. '' 101-810), and are subject to seizure and forfeiture in accordance with the provisions of 17 U.S.C. ' 603. Articles so seized are 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 provided it can be shown that the importer had no reasonable grounds for believing that its acts constituted a violation of law. 17 U.S.C. ' 603; see also, 19 C.F.R. ' 133.47.

Anyone who violates any of the exclusive rights of the copyright owner as set forth in the Copyright Act, or who imports copies or phonorecords into the U.S. in violation of section 602 of the Act, is an infringer of the copyright. In order to prove copyright infringement, one must establish ownership of a valid copyright in the article being infringed and that there was unlawful or illicit copying by the alleged infringer. Atari, Inc. v. North American Philips Consumer Electronics Corp., 672 F.2d 607, 614 (7th Cir. 1982) (citing 3 M. Nimmer, Nimmer On Copyright, ' 13.01, at 13-3 (1981)). See also, Eden Toys, Inc. v. Marshall Field & Company, 675 F.2d 498, 499 (2d Cir. 1982); Sid & Marty Kroft Television Productions, Inc. v. McDonald=s Corporation, 562 F.2d 1157 (9th Cir. 1977); Arnstein v. Porter, 154 F.2d 464, 468 (2d Cir. 1946). Since evidence of copying is often unavailable, copying may be inferred where the alleged infringer had access to the copyrighted work and the alleged infringing work is substantially similar to the copyrighted work. Atari v. North American Philips, 672 F.2d at 614 (citing Warner Brothers, Inc. v. American Broadcasting Cos., Inc., 654 F.2d 204, 207 (2d Cir. 1981).

A certificate of registration from the U.S. Copyright Office constitutes prima facie evidence of copyright ownership. 17 U.S.C. ' 410(c). Ty, Inc., owns numerous registered copyrights in respect of beanbag stuffed teddy bears, including, inter alia, the following copyrights recorded with Customs: COP 97-00201; COP 97-00202; COP 97-00273; COP 97-00274; COP 97-00292; COP 98-00079; COP 98-00080; and COP 99-00030. Accordingly, we presume that Ty, Inc. is the owner of valid copyrights in respect of beanbag stuffed teddy bears. For purpose of this ruling we have assumed that the Ty bears are in the public domain and that Team Beans had access to them. The issue to be resolved, therefore, is whether the sample Team Beans bears are substantially similar to the copyrighted beanbag stuffed teddy bears produced by Ty, Inc.

However, a Acopyright never extends to the >idea= of the >work,= but only to its >expression,= and . . . no one infringes, unless he descends so far into what is concrete as to invade that >expression.=@ Warner Brothers v. American Broadcasting, 654 F.2d at 209 (citing Judge Learned Hand in National Comics Publications, Inc., v. Fawcett Publications, Inc., 191 F.2d 594, 600 (2d. Cir. 1951); Eden Toys, 675 F.2d at 500. Thus, in order for the Team Beans bears to infringe, there would have to exist substantial similarity of expression between Team Beans= and Ty=s expression of beanbag stuffed teddy bears.

As a general matter, substantial similarity is determined by reference to the Aordinary observer@ test, i.e., Awhether an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work.@ Ideal Toy Corp. v. Fab-Lu Ltd., 360 F.2d 1021, 1022 (2d Cir. 1966). See also, Atari v. North American Philips, 672 F.2d at 614 (The test is Awhether the accused work is so similar to the plaintiff=s work that an ordinary reasonable person would conclude that the defendant unlawfully appropriated the plaintiff=s protectable expression by taking material of substance and value.@); Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960) (Judge Learned Hand, stating that substantial similarity exists where Athe ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard their aesthetic appeal as the same.@); Aliotti v. R. Dakin & Co., 831 F.2d 898, 901 (9th Cir. 1987) (ADissection of similarities is inappropriate because it distracts the reasonable observer from a comparison of the total concept and feel of the works.@).

In the instant case, the bears are similar in that they each have a head, two ears, two eyes, a nose, a torso, two arms, two legs and two feet. They are both approximately the same size, are made from plush fabric and are stuffed with beans. On the other hand, these common features do not establish substantial similarity. Indeed, it would be an unusual bear who did not possess a head, two ears, two eyes, a nose, and a full set of limbs. Moreover, while both the sample Team Beans and the Ty, Inc. bears are made from plush fabric, we note that teddy bears are commonly made from soft fabric.

In Eden Toys, the Second Circuit considered a case of copyright infringement involving two stuffed toy snowmen. Citing numerous differences in the construction of the two snowmen, the court found that the snowmen were not substantially similar. 675 F.2d at 500. In Aliotti v. R. Dakin & Co., a case of copyright infringement involving stuffed toy dinosaurs, the one having exaggerated facial and other anatomical features, the other being a more accurate depiction of a dinosaur, the Ninth Circuit upheld the lower court=s finding that there was no substantial similarity, stating that A[s]ubstantial similarity of expression cannot be established by the fact that both lines of dinosaurs are gentle and cuddly, given that stuffed animals are intended for children and are usually designed to be soft and non-threatening.@ 831 F.2d at 901.

Similarly, in Alcheny II, Inc. v. Yes! Entertainment Corporation, 844 F.Supp. 560, two talking teddy bears were found not to be substantially similar. The elements of similarity included: plush material; the fact that both bears wore clothes; that the shirts of both bears contained a crest with the trademark and name of each individual bear; that each bear had a pear-shaped head; the noses of both bears protruded and were of similar shape; the noses, mouths, inside of the ears and soles of the feet were all of a light color which contrasted with the rest of the fur. Notwithstanding these elements of similarity, the court noted among other things that the bears had vastly different coloring, were dressed differently, and that their eyes and body shapes were different. Id. at 569.

In North American Bear Company, Inc. v. Carson Pirie Scott & Co., 1991 U.S. Dist. LEXIS 17350 (N.D. Ill. 1991), also concerned a copyright claim involving teddy bears. The court stated that A[a]part from the fact that the two bears share the necessary elements that define most teddy bears, there is nothing to support a claim of substantial similarity. The protectable details not necessitated by the idea of a teddy bear - such as particular facial features, paw pads and body construction - are different in each bear.@ Id. at 7.

Finally, in Ty, Inc. v. Salvino, Inc., 1998 U.S. Dist. LEXIS 16977 (N.D. Ill. 1998), the court, in considering an application for a temporary restraining order, was presented with virtually the same issue as is here under consideration, viz., whether certain bean bag bears, called Bamm Beano=s, infringed copyrights owned by Ty, Inc. The court noted differences in construction, e.g., facial features, the fact that the Bamm Beanos had embroidered on them the name and number of a major league baseball player. Although Ty=s bears also had embroidered imprints, they consisted of such things as a shamrock, a heart, a peace symbol or a national flag. The court found no substantial similarity.

Where the courts have found substantial similarity, the infringing goods have had the same aesthetic appeal, or total concept and feel, as the copyrighted article. In Wildlife Express Corporation v. Carol Wright Sales, Inc., 18 F.3d 502 (7th Cir. 1994), the court in finding similarity discounted minor differences, pointing to evidence of copying and noting Aa remarkable resemblance between Wildlife=s and Carol Wright=s works. They are very similar in size, shape, pose and feel.@ Id. At 510-511. See also, Ideal Toy Corporation v. Fab-Lu, Ltd., 261 F.Supp. 238, 240 (S.D.N.Y. 1966) (dolls which deliberately copied plaintiff=s doll and would be readily mistaken therefor, were substantially similar). Similarly, in Atari v. North American Philips, 672 F.2d 607, the court found that there was substantial similarity between two video games where the alleged infringer had not only adopted the same basic characters as the copyrighted work, but had portrayed them in a manner that made the accused work appear substantially similar to that of the plaintiff. Thus, the court found that one would be likely to overlook such minor differences as existed and regard the aesthetic appeal of the two games to be the same. Id. at 614 (citing Sid & Marty Kroft v. McDonald=s, 562 F.2d at 1166-1167.)

Here, quite apart from the many technical differences in construction that distinguish the Team Beans bears from the Ty bears, the Atotal concept and feel@ of the former differs fundamentally from that of the latter. First and foremost, the Team Beans bears can stand upright. Their posture therefore differentiates them from the Ty bears, which generally pose in the sitting position commonly associated with teddy bears. Indeed, the Team Beans bears are specifically designed to stand, whereas the Ty bears, which are not so constructed, can stand - or crouch - only when carefully balanced. This is usually accomplished by placing the heels of the bear=s feet together with its Atoes@ pointing outwards, and by pressing down on the beans so that they settle, thereby lowering the bear=s center of gravity.

Second, the Team Beans bears are emphatically sports bears. In the case of sample bear no. 1, the Tony Gwynn bear, the appeal to the sports fan is conveyed by the bear=s road gray Padre uniform, the Padres, MLB and All-Star game logos, Mr. Gwynn=s career highlights as stated on the ear tag, and the licensing agreement with MLB which allows Team Beans to market the bears as AMLB Genuine Merchandise.@ In the case of sample bear no. 2, the John Elway bear, the sporting appeal is similar. The bear is wearing Mr. Elway=s Denver Broncos home uniform and sports the National Football League=s logo. While the sample bear does not have any tags listing career highlights or indicating that it is genuine NFL merchandise, it is our understanding that the Elway bear and similar football-style bears will be marketed with such tags.

In contrast, the Ty bears have no association with sports. According to its hang tag, the ACurly@ bear is:

A bear so cute with hair that=s Curly you will love and want him surely

To this bear always be true
He will be a friend to you!

Similarly, the hang tag on the AValentino@ reads:

His heart is red and full of love
He cares for you so give him a hug
Keep him close when feeling blue
Feel the love he has for you!

These sentiments contrast markedly from the sports theme that characterizes the Team Beans bears. In addition, as noted above the Team Beans bears are designed to stand upright; the Ty bears are designed to be poseable. For example, the Ty bears can bend forward and touch their Atoes.@ The Team Beans cannot; if one attempts to pose them in such a manner their construction causes them to spring back into an upright sitting position. As discussed above, there are also numerous other differences in construction. In particular, as noted above the faces of the Gwynn and Elway bears are quite different from the Ty bears= faces. Substantial similarity of expression cannot be established simply by the fact that both bears are of approximately the same size and are stuffed with beans. Aliotti v. R. Dakin & Co., 831 F.2d at 901. In consideration of the above, we therefore find the Atotal concept and feel@ and aesthetic appeal of the Team Beans bears to be different from that of the Ty bears. Accordingly, it is our position that the sample Team Beans bears do not infringe on the registered and recorded copyrights owned by Ty, Inc.

HOLDING:

In conformity with the foregoing, the sample Team Beans bears are not substantially similar to the beanbag stuffed teddy bears copyrighted by Ty, Inc. Accordingly, they are not piratical of Ty=s copyrights and are thus not in violation of 17 U.S.C. ' 603 when imported into the United States.

Sincerely,


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