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HQ 476874

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November 22, 2004

ENF-4-02: RR:IT:IP 476874 DSR
CATEGORY: RESTRICTED MERCHANDISE INTELLECTUAL PROPERTY RIGHTS

Mr. Michael E. Murphy, Esq.

Baker & McKenzie

815 Connecticut Avenue, NW
Washington, DC 20006-4078

RE: Request for Binding Copyright Infringement Ruling Submitted on Behalf of Wing Hing Manufacturing Company, Ltd.; Fish Tank Bubbles Bottle; Gazillion Bubbles Bottle

Dear Sir:

This is in response to your request for a binding ruling under 19 CFR § 177.1, dated November 8, 2004. The request is submitted on behalf of Wing Hing Manufacturing Company, Ltd., concerning the admissibility of certain merchandise resembling the copyrighted “Gazillion Bubbles” product owned by Funrise Toys, Ltd. (“Funrise”).

FACTS:

Wing Hing Manufacturing Company, Ltd. (“Wing Hing”), is a maker and importer of children’s toys. The product at issue in this ruling request is Wing Hing’s “Fish Tank Bubbles Bottle” and it is registered with the United States Copyright Office as USCO Reg. No. VA-1-265-543. The product that it resembles is called “Gazillion Bubbles, and is owned by Funrise Toys, Ltd. (“Funrise”). The “Gazillion Bubbles” product is registered with the United States Copyright Office (“USCO”), as USCO Reg. No. VA 1-200-739 (covering the bottle) and USCO Reg. No. VA-1-200-738 (covering the wand). The bottle and wand are recorded with CBP as CBP Rec. Nos. COP 03-00148, and COP 03-00149, respectively. The following facts are claimed by Wing Hing:

Wing Hing began marketing bubble products in 1997. Initially, the product line included “standard” bubble bottles with basic cylindrical shapes. Since then, however, the product line evolved and Wing Hing now markets over 100 different types of bubble products. During this evolution, new products included, for example, bottles shaped like an ice cream cone, perfume bottle, etc. Wing Hing also began developing translucent bottles that would allow the user to see the bubble blowing wand inside. In 2003, Wing Hing also sought to expand its line of bubble accessories by introducing the Sea Creature Bubble Play Set. Each Sea Creature Play Bubble Set came with 4 different sea creature bubble blowing wands and a 2 oz. bottle of bubble solution. The wands each had one of four different sea creatures on them (i.e., a sea horse, whale, gold fish or octopus). Later, Wing Hing developed a product that incorporated a shaped, translucent bottle with a sea creature theme, e.g., a translucent bottle that would appear. The end result was the “fish tank” theme represented in the Fish Tank Bubbles bottle at issue.

Description of the Fish Tank Bubbles Bottle

The Fish Tank Bubbles bottle is intended to give the impression of being a fish tank by employing a translucent bottle and a bubble blowing wand that makes it appear as if a sea is “swimming” in the bubble solution. There are four variations of the wand currently in production – each with one of the following sea creatures on them (i.e., sea horse, whale, goldfish, or octopus). The wand also contains two circular holes through which a child blows and makes bubbles. The bottle itself is narrow at its midpoint, and widens at its top and bottom. It also has a convex “window” on the front, the curve of which (combined with the bubble solution) has the effect of magnifying a child’s view of the sea creature on the immersed wand. Wing Hing also added a spiraling, upward-flowing bubble pattern to the bottle to add to the fish tank theme (i.e., bubbles rising to the surface of the fish tank). Additionally, Wing Hing realized that carrying a traditional bottle was sometimes difficult for small children (e.g., because their hands may be too small or because the bottles became sticky after the solution spilled down the side of the bottle). In response to this observation, Wing Hing began pursuing ways to make its bubble bottles easier to carry, which ultimately resulted in the development of a bottle with a shaped hook on its cap. The end of appendage does not connect to the cap, and is designed to allow a child to hook the bottle onto his belt or school bag. Wing Hing claims that the hook, and the added functionality it provides, is a major focus point of Wing Hing’s marketing efforts for the current “Fish Tank Bubbles Bottle.” The hooked cap is connected to the immersed bubble blowing wand. Photographs of aspects of the Fish Tank Bubbles bottle are shown below.

Description of the Gazillion Bubbles Bottle

The Gazillion Bubbles bottle also contains bubble-making solution and a bubble-blowing wand. The shape of the bottle consists of a slightly flared bottom and a bulbous midsection. Concentric, narrow rings cover the majority of the bottle, with a column of small bubble-like dimples covering what would be the bottle’s front and surrounding an oval-shaped, flat, port-hole like area. The words “The One and Only! Gazillion Bubbles” appear on the port-hole like area. The cap is topped with a small, closed loop and is connected to the wand. The wand itself has the stylized word “Gazillion” on one side and several bubbles on the other. Several circular holes of varying sizes compose the bottom of the wand.. The bottle is opaque, and it is rather difficult to see the bubble making wand immersed in the bubble solution. Photographs of aspects of the Gazillion Bubbles bottle are shown below.

ISSUE:

Whether the subject Fish Tank Bubbles Bottle infringes upon the Gazillion Bubbles Bottle copyrights.

LAW AND ANALYSIS:

Articles that infringe upon 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 USC §§ 101-810), and if the copyright is recorded CBP, the articles are subject to seizure and forfeiture in accordance with the provisions of 17 USC § 603. Anyone who violates any exclusive rights of the copyright owner as set forth in the Copyright Act, or who imports copies or phonorecords into the United States in violation of section 602 of the Act, is an infringer of the copyright.

Copyright protection is precluded for facts, principles and ideas. See Section 102(b) of the Copyright Act of 1976 (17 USC § 102(b)). For example, the idea of crafting a piece of jewelry in the shape of an insect would not be extended copyright protection. Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738, 742 (1971). To extend copyright protection to an idea would allow authors to monopolize ideas and, thereby, undermine the purpose of the copyright regime. See U.S. Cont., art. I, Section 8, cl. 8. “Copyright protection is limited to those aspects of a work – termed ‘expression’ – that display the stamp of the author’s originality.” Harper & Row Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 547 (1985). It follows, therefore, that where various iterations of an idea amount to the same “expression” of the idea, the resulting similarities signal that the most recent iteration is an infringing product.

In order to prove copyright infringement, it is necessary to 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); Arnstein v. Porter, 154 F.2d 464, 468 (2d Cir. 1946). Copying may be inferred where the alleged infringer had access to the copyrighted work and the alleged infringing work is substantially similar thereto. Access to the copyrighted work is proven where it is shown that the opportunity existed to examine or copy the work. Inasmuch as the copyrighted “Gazillion Bubbles” design is widely circulated, access may be presumed.

Where evidence of access exists, it is then necessary to determine whether the similarities are sufficient to prove copying, i.e., whether the challenged work is substantially similar to the copyrighted work in both idea and expression. Substantial similarity is determined by reference to two inquiries: whether the similarities substantiate copying; and whether the copying amounted to an unlawful appropriation of protectible expression. Arnstein v. Porter, supra. See Concrete Machine Co. v. Classic Lawn Ornaments, Inc., 843 F.2d 600 (1988). These inquiries are the basis for the “ordinary observer” test, i.e., whether 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).

In this instance, the copyrighted Gazillion Bubbles Bottle and wand are protected as sculptures (USCO Reg. Nos. VA-1-200-739, VA-1-200-738). As described above, the bottle contains a bubble-making solution and a bubble-blowing wand. The shape of the bottle consists of a slightly flared bottom and a bulbous midsection. Concentric, narrow rings cover the majority of the bottle, with a column of small bubble-like dimples covering what would be the bottle’s front and surrounding an oval-shaped, flat, port-hole like area. The words “The One and Only! Gazillion Bubbles” appear on the port-hole like area. The cap is topped with a small, closed loop. The bottle is opaque, and it is rather difficult to see the bubble making wand immersed in the bubble solution.

The Fish Tank Bubbles Bottle, while evocative of the Gazillion Bubbles Bottle, contains elements that differ from the “expressive” elements of the Gazillion Bubbles design. To wit, the distinctly “expressive” and thus, protectible, elements of the Gazillion Bubble bottle consist of the contour of the bottle; the raised, horizontal, concentric rings covering the bottle; the column of small bubble-like dimples covering what would be the bottle’s front and surrounding an oval-shaped, flat, port-hole like area; the words “The One and Only! Gazillion Bubbles” that appear on the port-hole like area; and the small, closed loop that tops its cap. However, these elements are not present on the Fish Tank Bubbles design. To wit, the Fish Tank contour is nearly the opposite of that Gazillion Bubble design – where the Gazillion Bubbles bottle is bulbous at its midpoint, and flared at its bottom, the Fish Tank design is bulbous at its top and bottom, and thinner at its midpoint. Also, the Fish Tank design incorporates bubbles that surround the entire bottle, whereas the Gazillion design does not. The Fish Tank design does not contain any of the concentric rings that are prominently displayed on the Gazillion Bubbles bottle, nor does its hook bear a substantial similarity to the Gazillion Bubbles loop at its cap. Additionally, the porthole and bottle of the Fish Tank design are translucent, enabling an observer to easily view the enclosed wand and sea creature, while the Gazillion Bubbles bottle is opaque, thus rendering its wand difficult to see. Finally, the Fish Tank Bubbles wand contains a prominent and distinct sea creature and two circular bubble making holes, while the Gazillion Bubbles wand contains only a stylized word “Gazillion” and several small bubble-making holes of varying sizes.

HOLDING:

Based upon the above, we conclude that enough differences exist between the “expressive” aspects of the copyrighted Gazillion Bubbles designs, and those aspects of the Fish Tank design, to warrant a determination that the Fish Tank design is not piratical of the registered and recorded Gazillion Bubbles designs.

George Frederick McCray
Chief, Intellectual Property Rights Branch

Fish Tank Bubbles wand

Gazillion Bubbles rings and bubbles

EMBED MSPhotoEd.3

Fish Tank bottle “bubbles”

Fish Tank bottle

Fish Tank bottle cap

Gazillion Bubbles bottle cap

Gazillion Bubbles bottle

Gazillion Bubbles wand

Fish Tank bottle “porthole”

Gazillion Bubbles “window”


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