RR:IT:IP 469770 MLR
Peter W. Klestadt, Esq.
Grunfeld, Desiderio, Lebowitz & Silverman, LLP
245 Park Avenue, 33rd Floor
New York, NY 10167-3397
RE: Boogie Bass Fish; Copyright; 17 U.S.C. 603
Dear Mr. Klestadt:
This is in reply to your letter dated June 1, 2000, requesting a ruling whether certain fish infringe on a copyright owned by Gemmy Industries Corp. (hereinafter “Gemmy”). A meeting was held at the Office of Regulations & Rulings and a sample was presented. Your request for confidential treatment was withdrawn.
FACTS:
It is stated that Telebrands Corp. has commenced marketing a novelty item under the trademark “Boogie Bass”, which is a sculpture of a bass fish mounted on a plaque that sings parodies of popular songs, turns its head and wiggles its tail. The size of the Boogie Bass is 16 7/8 inches in length, 5 7 1/4 inches high from fin to fin, and 1 7/8 inches wide. The Big Mouth Billy Bass measures approximately 13 inches long, 5 ½ inches high, and 2 inches wide.
It is claimed that the Boogie Bass does not infringe upon Gemmy’s registration of its 3-dimensional sculptural work entitled “Fish”, marketed as “Big Mouth Billy Bass”, U.S. Copyright Registration No. VA 983-291, Customs Recordation COP 00-00044. Telebrands states that the design of its Boogie Bass product was not copied from Gemmy’s copyrighted work, but rather was independently created based on the idea of a singing fish mounted on a plaque. Telebrands states that it consulted taxidermists who provided Telebrands with several actual stuffed bass fish. A stuffed bass fish was presented during the meeting at the Office of Regulations & Rulings. From these models, it is stated that Telebrands obtained the form and shape for its bass, the texture and the coloring. It is claimed that the final imported version depicted below is different than earlier prototypes circulated in advertisements, and that the fish depicted in the advertisements are not the subject of this ruling request. Exhibit C is attached, depicting photographs of the two stuffed fish Telebrands used to create its product. It is also stated that pictures of actual bass fish were taken from books and reviewed to make the fish look as realistic as possible. Telebrands also states that it designed its own plaque, created its own parodies of songs, and designed its own mechanism for moving the fish.
Telebrands Boogie Bass
Gemmy Big Mouth Billy Bass
ISSUE:
Whether the sample Telebrands Boogie Bass fish depicted above is substantially similar to Gemmy’s fish, such that it is 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 seized are forfeited in the same manner as goods imported in violation of the Customs revenue laws. 17 U.S.C. 603.
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, the copyright owner must prove (1) ownership of a valid copyright in the article being infringed; and (2) 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 Copyrights, 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 Corp., 562 F.2d 1157, 1164 (9th Cir. 1977); Arnstein v. Porter, 154 F.2d 464, 468 (2d Cir. 1946). Copying can be established by showing that: (1) the alleged infringer had access to the copyrighted work, and (2) the protected elements of the two works are substantially similar. Atari, 672 F.2d at 614 (citing Warner Brothers, Inc. v. American Broadcasting Companies, 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). Gemmy owns a copyright for a 3-Dimensional sculpture of a Fish that is also recorded with Customs under COP 00-00044. Accordingly, we presume that Gemmy is the owner of a valid copyright with respect to a 3-dimensional sculpture fish. Regarding access to the copyright owner’s work, access is presumed where an item is generally available on the open market. Arnstein, 154 F.2d at 468. In this case, Gemmy’s fish has been available for a few months and Telebrands concedes that it had access to Gemmy’s Big Mouth Billy Bass product.
The issue is whether the Telebrands fish is substantially similar to the copyrighted fish produced by Gemmy. A “copyright 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 Bros., 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. The real task in a copyright infringement action, then, is to determine whether there has been copying of the expression of an idea rather than just the idea itself. Sid & Marty Kroft, 562 F.2d at 1162. Therefore, in order for the sample fish to be infringing, there would have to exist substantial similarity of expression between it and the Gemmy fish.
With regard to the issue of substantial similarity, courts often look to the two-part test for similarity as outlined in Sid & Marty Kroft, 562 F.2d at 1162. The first step, referred to as the “extrinsic test”, requires a determination of substantial similarity between the ideas which includes an analysis of the specific criteria that can be listed and analyzed, such as the type of artwork at issue, the materials used, the subject matter, and the setting for the subject. Since it is an extrinsic test, analytic dissection and expert testimony are appropriate. The second step, labeled the “intrinsic test”, involves a determination of substantial similarity between the expressions of the ideas which depends not on expert testimony or analytic dissection, but instead on the response of the ordinary reasonable person, that is, the determination focuses largely on whether the suspect work captures the “total concept and feel” of the copyrighted work. See Spectravest Inc. v. Mervyn’s Inc., 673 F. Supp. 1486 (N.D. Cal. 1987); Baxter v. MCA Inc., 812 F.2d 421, 424 (9th Cir. 1987).
Telebrands claims that the only similarity between the Boogie Bass and the Big Mouth Billy Bass is the fact that both are bass. It is claimed that Customs is first required to determine which portions of the copyrighted work are entitled to protection, and then is required to compare the protectable features of the works visually, side-by-side, to determine if they are so similar that the alleged infringer must have copied the copyrighted work. Telebrands claims that there can be no copyright infringement if all that is copied is the idea or the noncopyrightable subject matter. Harper & Row Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 547-48 (1985). Telebrands claims that the idea of a singing and moving fish mounted on a plaque is not protectable. As support, counsel cites Kurt S. Adler, Inc. v. World Bazaars, Inc., 897 F. Supp. 92, 94-95 (S.D.N.Y. 1995), where the court held that functional elements of a Santa Claus ornament which enable it to blow bubbles are not protectable, and that the protection covers only the expressive elements. Similarly, counsel cites Durham Industries, Inc. v. Tomy Corp., 630 F.2d 905, 916 (2d Cir. 1980), where the court held that the mechanical or utilitarian features of the wind-up dolls at issue, that is their ability to walk or crawl, were not protectable. Therefore, it is claimed that Gemmy’s copyright does not cover the movement of its fish.
Telebrands also claims that Gemmy’s copyright pertains to a sculpture of a bass fish, which is a public domain figure found in nature, mounted on a plaque, and therefore, Gemmy’s protection is limited to the artistic elements Gemmy added to arrive at its product. As support, counsel cites Herbert Rosenthal Jewelry v. Kalpakian, 446 F.2d 738 (9th Cir. 1971), where the court would not infer copying based upon substantial similarity because the only similarities were that both pieces of jewelry were lifelike representations of a bee; Herbert Rosenthal Jewelry v. Honora Jewelry Co., 509 F.2d 64 (2d Cir. 1974), where the court held that plaintiff’s copyright does not cover the idea of a turtle pin, and the differences between the products were sufficient to avoid infringement; Russ Berrie & Company v. Jerry Elsner Co., 482 F. Supp. 980 (S.D.N.Y. 1980), where infringement was not found as the similarities were common to all Santa Claus figures; F.W. Woolworth Co. v. Contemporary Arts, 193 F.2d 162 (1st Cir. 1951), where protection of a copyright covering a dog in show position extended only to the particular details of the expression, such as the proportion of the representation, and the asymmetrical curls and folds of the body hair and feathering of the legs; and Mattel, Inc. v. Azrak-Hamway International, 724 F.2d 357, 360 (2d Cir. 1983), where a superhuman muscleman was depicted, copyright protection extended only to the particular muscle groups accentuated with respect to the other figure.
Notwithstanding that Gemmy’s copyright does not cover the movement of its fish, Telebrands claims that there still is no basis for finding infringement because the Boogie Bass movements are not the same as Gemmy’s. Telebrands sings the entire portion of a song, as opposed to only the chorus of the songs on Gemmy’s sound chip. The flapping of the fish is also a common movement of a fish. As support, counsel cites Worlds of Wonder v. Vector Intercontinental, 653 F. Supp. 135 (N.D. Ohio 1986); Worlds of Wonder v. Veritel Learning Systems, 658 F. Supp. 351 (N.D. Tex. 1986); and Alchemy II v. Yes! Entertainment Corp., 844 F. Supp. 560, 567-68 (C.D. Cal. 1994).
In regard to the Gemmy Billy Mouth Billy Bass and the Telebrands Boogie Bass, they both have the same fish, specifically bass fish, theme and/or motif. In the instant case, the fish are similar in that they each have two eyes, fins, a tail, and a mouth. However, as noted in Herbert Rosenthal Jewelry, Corp. v. Honora Co., supra, where both pins conformed generally to the shape of a turtle as that reptile appears in nature, with an upper shell, legs, protruding head and tail, in the depiction of bass fish, there will be certain similarities. Although the ideas behind the images appear to be similar, copyright law does not protect ideas, only the expression of the ideas. Additionally, as in Herbert Rosenthal Jewelry, Corp. v. Honora Co., supra, the defendants admitted that they knew of appellant’s pin, but they also claimed that their pin was independently created. In this case, Telebrands has submitted photographs of natural fish and fish from a taxidermist that closely resembles the photo of the Telebrands fish above. Similarly, as with the two fish in this case, in Herbert Rosenthal Jewelry Corp. v. Kalpakian, supra, the court noted that any inference of copying based upon similar appearance lost much of its strength because both pins were lifelike representations of a natural creature. The court also stated that any differences were one of degree and that a jeweled bee pin is an “idea” that defendants were free to copy.
In this case, Gemmy’s copyright covers a 3-dimensional sculpture. Therefore, the copyright does not cover the idea of a fish on a plaque that moves and sings, but rather the artistic expression of the fish. Telebrands may, therefore, copy the idea of a fish on a plaque. What is relevant is whether the depiction of the Telebrands fish is substantially similar to Gemmy’s fish. In this case, the Boogie Bass is larger than Gemmy’s and has a different overall shape. The coloring of the Telebrands fish is a darker green and the markings are not as defined as the ones on the Gemmy fish. The shape and number of fins protruding from the fish body is also different. The fins and tail also have more scales on the Telebrands fish, and the jaw line on the Telebrands fish is more pronounced and slanted. The Telebrands fish also faces a different direction, and the plaque is oval as opposed to rectangular. Therefore, while both the Gemmy and Telebrands bass fish are plastic and mounted to a plaque, we find that the “total concept and feel” and aesthetic appeal of the Telebrands fish at issue is different from that of the Gemmy fish.
HOLDING:
Accordingly, based on the foregoing discussion, the sample Telebrands fish is not substantially similar to the fish copyrighted by Gemmy. The sample Telebrands fish, therefore, is not piratical of Gemmy’s copyrights and will not be in violation of 17 U.S.C. 603 when imported into the U.S.
Sincerely,
Joanne Roman Stump, Chief
Intellectual Property Rights Branch