COPYRIGHT LAW SPRING 2003
PROFESSOR FISCHER
MODEL ANSWER QUIZ 3
INFRINGEMENT AND FORMALITIES
I have been asked to advise Fun Toys on whether they can succeed in a
lawsuit against Dolly Friends for infringement of the 20-inch Cutie
Mine Doll (20 CM doll) and the 48-inch Cutie Mine Doll (48 CM doll).
Throughout this memorandum, I will state what, if any, additional
information I would need to provide definitive advice. My overall
advice is that Fun Toys is unlikely to succeed in an infringement action
against Dolly Friends alleging that Dolly Friends’ Cuddly Lovably doll
(CL doll) infringes either the 20 CM doll or the 48 CM doll.
Copyrightability
The 20 CM Doll
To be copyrightable, the 20 CM doll must both be an original work of
authorship fixed in a tangible medium of expression. 17 U.S.C. §
102(b). There is no doubt that both of these dolls are fixed within the
meaning of the current Copyright Act, since both works have been put
into a permanent form that can be perceived by a human. 17 U.S.C. §
101 (definition of “fixation”). The Feist case sets out the current
standard for originality. See CB p. 75. The work must be
independently created and must also have some “minimal degree of
creativity”. Feist holds that the “requisite level of creativity is
extremely low; even a slight amount will suffice”. The dolls are most
likely protectable as pictorial, graphic, and sculptural works (17
U.S.C. § 102(5)) and are unlikely to be barred from protection as
useful articles, since toys are generally held not to have an intrinsic
utilitarian function beyond portraying the appearance of the article.
See, e.g., Gay Toys, 703 F.2d 970 (6th Cir. 1983), see also definition of
“useful article” at 17 U.S.C. § 101). More information is required
about the extent to which the 20 CM doll differs from rag dolls in the
public domain and/or rag dolls that are currently in copyright to
determine whether the originality test is met. For the sake of
argument, I will assume that it is met for the remainder of my advice.
Moreover, the copyright registration for the 20 CM doll was made
within 5 years of the publication of the work and hence is prima facie
evidence of the validity of the copyright. 17 U.S.C. § 410(c). I am also
making the assumption that FT owns any copyright for the 20 CM doll
and has not transferred it away by assignment, for example.
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48 CM Doll
The 48 CM doll is also clearly fixed, for the same reason stated above.
If copyrightable, the 48 CM doll would be copyrightable as a
derivative work based on the 20 CM doll, since we are told it is
identical in all respects save for size. Some circuits, such as the
Second Circuit and the Seventh Circuit, appear to require a higher
standard of originality for derivative works than other works. In
Batlin v. Snyder (CB p. 168), the Second Circuit held that there must
be “some substantial variation, not merely a trivial variation such as
might occur in the translation to a different medium.” This test
appears to be more stringent than the test for originality set out in
Feist. The rationale for a more stringent test is fear of harassment by
those claiming derivative works copyrights. See, e.g., the concerns of
the Seventh Circuit in Gracen v. Bradford Exchange (CB p. 172). Since
the only change to the 48 CM work is apparently its translation to a
different size, it is arguably not copyrightable as a derivative work,
since this is likely too trivial a difference to warrant copyright
protection. It is analogous to the translation to a different medium in
Batlin and to the development of 3D versions of 2D cartoon characters
in the Second Ninth Circuit case of Entertainment Research Group v.
Genesis Creative Group (CB p. 174). In both of these cases, these
changes were held to be too insignificant for copyright protection.
There are some cases involving mounting notecards on tiles that
indicate that the Ninth Circuit may often take a less stringent
approach than the Second or Seventh to finding works copyrightable
as derivative works. Compare, e.g. Mirage Editions v. Albuquerque
A.R.T. (9th Cir. CB p. 523). with Lee v. A.R.T. Co. (7th Cir. CB p. 522).
But even in the Ninth Circuit, the ERG case (discussed in the above
paragraph) is more analogous to the facts of this question than the tile
cases.
In my opinion, the 48 CM doll is thus unlikely to be found to be
copyrightable as a derivative work, even in the Ninth Circuit. This
would probably explain why Fun Toys never registered copyright in
the 48 CM doll. However, if, contrary to my advice, the 48 CM doll is
found to be copyrightable as a derivative work, the only aspects of the
48 CM Doll that would be protectable would be the new and original
expression added to the underlying 20 CM doll. See 17 U.S.C. §
103(b).
Formalities
Both the 20 CM doll and the 48 CM doll of these works were created
on or after the date of U.S adherence to the Berne Convention, which
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rendered copyright notice unnecessary for copyright protection for
works first published on or after March 1, 1989. 17 U.S.C. § 401.
Publication is also no longer required for copyright protection, which
now commences as of the date of the work’s creation, rather than on
general publication with a valid copyright notice, as under the 1909
Copyright Act. However, a plaintiff cannot sue for infringement prior
to registration of the coyright claim. 17 U.S.C. § 411. A copyright
registration has been obtained for the 20 CM doll but not for the 48
CM doll. Since the copyright registration was issued for the 20 CM
doll, I assume that the deposit requirements in 17 U.S.C. §§ 407 and
408 were complied with.
The lack of registration for the 48 CM doll means that Fun Toys
cannot sue for infringement of the 48 CM doll unless and until a
certificate of registration issues or registration is applied for and
refused by the Copyright Office. 17 U.S.C. § 411. For the reasons set
out above, it is possible that the Copyright Office would refuse to
register the 48 CM doll. But if a registration is obtained, Fun Toys
can sue for infringement of the 48 CM doll (although, as discussed
above, it is unlikely to succeed because the 48 CM doll is unlikely to be
found copyrightable). However, Fun Toys will be penalized in
remedies for waiting to register after an alleged infringement has
occurred: statutory damages and attorney’s fees cannot be awarded
for infringements that took place prior to the effective date of
registration, unless the registration is made within 3 months after the
first publication of the work. § 17 U.S.C. § 412.
Infringement
Section 501(a) of the current 1976 Copyright Act provides that
“anyone who violates the exclusive rights of the copyright owner” is a
copyright infringer. The potential rights of the copyright owner that
have been infringed on the facts of the question are the right of
reproduction (17 U.S.C. § 106(1)), the right of adaption (also known as
the right to make derivative works) (17 U.S.C. § 106(2)), and the right
of distribution (17 U.S.C. § 106(3)).
Violation of the Right of Reproduction
The right of reproduction is the right to reproduce the copyrighted
work in copies or phorecords. 17 U.S.C. § 106(1). Copies are defined
as material objects, other than phonorecords, in which the work is
fixed. If infringing, the CL dolls are copies.
Actual Copying
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To succeed on a claim for infringement of the right of reproduction, Fun Toys
must first show that there was actual copying of her quilt. Actual copying can be
established by direct or indirect evidence. See Arnstein v. Porter, 154 F.2d 464
(CB pp. 420). There is no direct evidence of copying in the facts provided, but this
should be investigated. Indirect copying can be established by access to the work
and similarity between the allegedly infringed and infringing works, or by striking
similarity between the works without proof of access. See id. Access can be
inferred in some cases, and given the widespread popularity of the 20 CM doll, it
seems likely that Dolly Friends would be held to have had subconscious access to
the 20 CM doll, even if they did not deliberately copy it. See Bright Tunes v.
Harrisongs Music Ltd., 420 F. Supp. 177 (S.D.N.Y. 1976) (CB p. 430). Expert
evidence is admissible to determine whether there are sufficient similarities to find
copying. See Arnstein (CB p. 423). There are some similarities between the 20
CM doll (which is said to be identical to the 48 CM doll depicted in the appendix,
other than in size). Both have blond pigtails, both have stitched on eyes, rag and
rag bodies. But there are also some differences: the features for CM are much
larger, the color and style of clothing is very different between the two dolls, the
CL doll has black shoes with straps and the CM doll has simply red bottoms of the
feet, simulating shoes. There are probably enough similarities for a case of
copying to go to a jury, but a jury is at least 50% likely to find that the dolls are
not similar enough to find copying.
Unlawful Appropriation
The second prong of the infringement test requires the plaintiff to show that there
was unlawful appropriation of their copyrighted expression. See Arnstein (CB p.
359). To show unlawful appropriation in a case like this one that does not involve
exact copying, the plaintiff must show that there is "substantial similarity"
between the CL doll and the protectable elements of the CM doll(s). (See, e.g.,
Nichols v. Universal Pictures, 45 F.2d. 119 (2d Cir. 1930) (CB p. 446).
Copyright infringement requires that the unlawful appropriation must have been
of copyrightable expression and not simply uncopyrightable idea. One test that
has been used as a guide for determining whether there is substantial similarity of
copyrightable expression is the famous “abstractions” test applied by Judge
Learned Hand in Nichols v. Universal Pictures. Judge Nichols stated: “Upon any
work and especially upon a play a great number of patterns of increasing
generality will fit equally well, as more and more of the incident is left out. The
last may perhaps be no more than the most general statement of what the play is
about and at times consist of only its title, but there is a point in this series of
abstractions where they are no longer protected since otherwise the playwright
could prevent the use of his ideas to which apart from their expression his
property is never extended.” Nichols (CB p 448). The trouble with this test is that
it does not clearly indicate where in a work the level of abstraction is such as to
cross the line from expression to idea. Applying this approach, it is likely that the
CL doll would not infringe. Many of the similarities: e.g. cloth body, blond yarn
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hair, sewn on features, simplified hands would be found to be unprotectable ideas
common to all rag dolls rather than expression. There are also many differences,
eg. the color of the clothing, the bangs are differently styled, the shoes look
different, the clothing is a different design.
Another influential approach, called “total concept and feel”, is based on a 1970
Ninth Circuit case, Roth Greeting Cards (CB p. 491). The approach here is for the
ordinary lay observer to consider the similarity of the underlying tone or mode of
the defendant’s work and the original conceptionof the plaintiff’s work. Under
this approach, a court should not dissect the works at issue into separate
components and compare only the copyrightable elements because to do so would
almost nothing being copyrightable. Hoewver, the total concept and feel approach
is likely to overprotect uncopyrightable expression.
If a court applied this
approach, it is more likely that the CL doll would be held to infringe, but, in my
view, it is more likely that a jury would find that it does not infringe either the 20
CM doll or the 48 CM doll.
Violation of the Right of Adaption
The right of adaption, set out in 17 U.S.C. § 106(2) provides that the copyright
owner has the exclusive right to prepare derivative works based upon the
copyrighted work. If the CL doll is found to be a derivative work of the CM
doll(s), rather than a copy, this right would be infringed. The current Copyright
Act defines derivative work as “a work based upon one or more preexisting
works”. 17 U.S.C. § 101. There is a circuit split as to how much originality is
required to be an infringing derivative work. See Lee v. A.R.T. (CB p. 522 for a
discussion of the different approaches). Assuming that the CL doll is found to be
a derivative work, the test for infringement of the right of adaption is also
substantial similarity, just like that for the right of reproduction. See Horgan v.
Macmillan (CB p. 513). Thus, the analysis above, and its conclusion that a court is
unlikely to find substantial similarity, is also applicable to whether there has been
an infringement of the right of reproduction.
Violation of the Right of Distribution
This right also requires a violation of the right of reproduction because it amounts
to an exclusive right to distribute copies or phonorecords of the copyrighted work
by sale or other transfer of ownership. Since we are told that Dolly Friends has
been selling the CL doll, whether this right will be held to be infringed will stand
or fall on whether there has been a violation of the right of reproduction.
Possible Defenses
In the unlikely event that infringement is found, the most likely defense that will
be raised is the defense of fair use, which protects certain copyright infringements
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from liability for public policy reasons. The defense of fair use requires a court to
assess four nonexclusive factors: the purpose and character of the use; the nature
of the copyrighted work; the amount and substantiality of the use; and the effect
on the market for the copyrighted work. See 17 U.S.C. § 107. The purpose and
character of Dolly Friends’ use is clearly commercial, which weighs against a
finding of fair use. The nature of the copyrighted work is artistic and creative,
and non-factual, which also weighs against a finding of fair use. If infringing, the
Dolly Friends doll does not take the entire copyrightable expression of the CM
doll(s) but only took uses some of the copyrightable expression. How much will
depend on the fact finder’s ruling on infringement. Thus, this factor is
inconclusive. The effect on the market is often viewed as the most significant
factor. There is a good argument that the use of Fun Toys’ protectible expression
in the CL doll usurps the market for the use, by substituting for a derivative
market that Amy has the right to develop – or choose, for artistic reasons, not to
develop. On balance, though dependent on a court’s view as to what, if any,
protectable expression was taken, at least 3 of the 4 fair use factors weigh against
fair use.
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