TRA CO:I:IT:I 453234 TPT
District Director of Customs
U.S. Customs
909 First Avenue
Room 2039
Seattle, WA 98174
Re: Suspected infringement of Russ Berrie's Troll doll copyright
(U.S. Copyright Office Registration Nos. VA 462-387, VA 462-390;
Customs Recordation Issuance Nos. Cop 91-00300, Cop 91-00301)
Dear Sir:
This is in response to your memorandum dated March 12, 1992,
wherein you requested that this office provide a legal opinion as
to whether certain detained troll dolls infringe the copyrights
referenced above.
FACTS:
The Entry Summary (Customs Form 7501) indicates that the
subject troll dolls were imported on November 5, 1991, and that
the entry date was November 11, 1991. Customs notified the
importer by a letter dated December 5, 1991, that the troll dolls
were suspected of infringing copyright registration VA 462-387.
Because the merchandise had been released, Customs requested that
it be given constructive custody of the merchandise.
In a letter dated January 3, 1992, the importer denied the
allegation of infringement and informed Customs that the
merchandise was not available for re-delivery or detention.
In accordance with section 133.43 of the Customs Regulations
(19 C.F.R. 133.43), Customs notified the copyright owner
regarding this shipment by letter dated January 8, 1992. The
copyright owner, through counsel, responded and requested that
Customs deny entry to the shipment and deposited a bond in the
amount of $2,500 by a letter dated February 3, 1992.
ISSUE:
Whether the imported troll doll is substantially similar to
the copyrighted troll dolls referenced above?
Whether the evidence, arguments, and law provide sufficient
grounds to disregard the claims to derivative work copyrights in
2
the trolls referenced above?
LAW AND ANALYSIS:
The role of Customs in issuing substantive decisions of
copyright infringement as to imported merchandise was addressed
recently in The Miss America Organization v. Mattel, Inc., 945
F.2d 536 (2nd Cir. 1991). Citing section 603 of the Copyright
Law (17 U.S.C. 603) the court recognized Customs authority to
enforce the provisions of the law prohibiting importations of
infringing goods. Mattel, 945 F.2d at 538. Also, the court
acknowledged that as a result of its duties, Customs has
developed expertise in determining whether merchandise does or
does not infringe. Id. at 539. Further, the court stated that
since sections 602 and 603 (17 U.S.C. 602, 603) direct the
Secretary of Treasury to enact regulations to aid in combatting
copyright infringement, it is implicit in these directions that
the agency (Customs) would be involved in making infringement
determinations. Id. at 541. Therefore, because the Treasury
Department has been assigned the duty to enforce the copyright
laws in cases where there is a reason to believe infringement
exists as to an imported item, it follows that it is within
Customs jurisdiction to take any action to fulfill this duty.
Id. at 542.
Customs has some independence and autonomy in making
infringement determinations regarding imported merchandise. Id.
at 544. The court stated that there is no reason to enjoin
Customs from performing its statutory duties so long as the
agency proceeds in conformity with the statutory scheme. Id.
A party claiming infringement of its copyright must prove
that it owns the copyright, that the alleged infringer had access
to the copyrighted work, and that there is substantial similarity
between the copyrighted work and the alleged infringing work.
Aliotti v. R. Dakin & Co., 831 F.2d 898, 900 (9th Cir. 1987). A
party makes a prima facie case as to copyright ownership by
submitting the copyright registration which carries with it a
presumption of validity and ownership. 17 U.S.C. 410(c); Folio
Impressions, Inc. v. Byer California, 752 F. Supp. 583, 585
(S.D.N.Y. 1990), aff'd, 937 F.2d 759 (2nd Cir. 1991); Quaker Oats
Co. v. Mel Appel Enterprises, Inc., 703 F. Supp. 1054, 1058
(S.D.N.Y. 1989). Upon presentation of a registration certificate
the burden of proof shifts to the defendant to introduce evidence
of invalidity. Original Appalachian Artworks, Inc. v. The Toy
Loft, Inc., 684 F.2d 821 (11th Cir. 1982).
Access to a copyrighted work may be established by direct
proof of copying or by circumstantial evidence that an alleged
infringer had access to the copyrighted work. Gund, Inc. v. Russ
Berrie and Co., Inc., 701 F. Supp. 1013, 1018 (S.D.N.Y. 1988).
Whether a work is substantially similar to another is determined
3
by the "ordinary observer" test which is whether the ordinary
observer would be disposed to overlook the disparities of the
works and regard their aesthetic appeal as the same. Id. at
1018. A determination that copying has taken place does not
require a finding that every detail is the same, the key being
the similarities rather than the differences. Id. at 1018.
Imported articles which infringe a copyright are prohibited
importations under section 602(b) of the Copyright Act and such
articles are subject to seizure and forfeiture under section
603(c) of the Copyright Act. These articles are seized and
forfeited in the same manner as goods imported in violation of
the Customs revenue laws. 17 U.S.C. 603. Alternatively,
infringing articles may be returned to the country of export
whenever it is shown to the satisfaction of the Secretary of the
Treasury (Customs) that the importer had no reasonable grounds
for believing that its acts constituted a violation of law. 19
C.F.R. 133.47. The party claiming that an imported article is
infringing shall bear the burden of proof. 19 C.F.R.
133.43(c)(1).
The copyright which is at issue here is VA 462-387 which
covers the three and a half inch troll doll. Russ Berrie
contends that the more appropriate registration is VA 462-390
which covers the four inch troll. The detained troll is two and
a half inches.
Russ Berrie asserts that all the trolls recorded with
Customs are covered by U.S. Copyright Office registrations which
constitute prima facie presumption of validity. Masquerade
Novelty, Inc. v. Unique Industries, Inc., 912 F.2d 663 (3rd Cir.
1990). It further argues that the copyrighted troll figure is
derived from two dimensional photographs of an earlier version of
a Russ troll doll and, thus, the current three dimensional works
are derivative works subject to copyright protection under
section 103 of the Copyright Law (17 U.S.C. 103).
Russ Berrie states that it made full disclosure to the
Copyright Office in applying for its copyright registration. It
asserts that full disclosure was made of the two dimensional
troll from which its three dimensional troll was derived. In
Scandia House Enterprises, Inc. v. Dam Things, Est., 243 F. Supp.
450 (D.D.C. 1965) the court found troll dolls to be in the public
domain. Russ Berrie concedes that the underlying two dimensional
trolls might be identical to or substantially similar to the
public domain troll doll. Russ Berrie Memorandum at P.4. Based
upon the information provided, the Copyright Office granted the
registration in August, 1991.
Russ Berrie asserts that in making these new troll dolls
many features were changed. It states that the eyelids were
4
rounded, the eyes were made closer together, the chin was
sculptured to come after the smile line, the space between the
nose and mouth was shortened, the eye color was changed, the
hairline width was made longer, the head was made larger in
proportion to the body, the ears were rounded, the nose was made
more puggish, and rouge was removed from the cheeks. Also, in
addition to these changes to the head, the copyright owner
contends that other parts of the body were changed. It states
that the entire back of the sculpture is original and changes
were made to the legs, chest, bottom, toes, hands.
The copyright owner relies upon Feist Publications, Inc. v.
Rural Telephone Service Company, Inc., U.S. , 111 S. Ct.
1282 (1991), for the standard for originality. The Court stated
that "original" means work that is independently created and
possesses at least some minimal degree of creativity, the level
of which is extremely low and that the vast majority of works
have the requisite creativity no matter how crude, humble, or
obvious. Id. at 1287. Russ Berrie argues that even if its
original troll dolls are in the public domain because they were
made from the molds used to make the dolls ruled upon in 1965,
the changes made to create the current three dimensional dolls
are protectable as derivative works.
The importer argues that Russ Berrie has offered no evidence
to support validity of its VA 462-387 copyright. Additionally,
it argues that for Customs to fail to address the issue of
validity denies due process where exclusion of merchandise may
take place without consideration of the issue.
The importer contends that once the prima facie evidence
validity exists based upon the presentation of a registration
certificate, the importer may submit evidence to rebut the
presumption by showing that the copyrighted work merely copied or
presented trivial variations of a public domain work. Russ
Berrie & Co. v. Jerry Elsner Co., 482 F. Supp. 980 (S.D.N.Y.
1980). In arguing that the copyright at issue here is invalid,
the importer asserts that troll dolls have been considered to be
in the public domain as a result of the decision in Scandia House
It argues that public domain works may be freely copied. Russ
Berrie & Co. 482 F. Supp. at 985. Conceding that the copyright
law extends protection to that material which an author
contributes to a pre-existing work, the importer contends that
the copyrighted trolls fail to have the requisite requirements
for a valid copyright of a derivative work,
The importer argues that in order to obtain a copyright in a
derivative work, the material which is added to the pre-existing
work must be substantial, not merely trivial. Sherry
Manufacturing Company, Inc. v. Towel King of Florida, Inc., 753
F.2d 1565 (11th Cir. 1985). The importer asserts that the
5
copyright owner may prevail only if the copyrighted troll doll
differs substantially from the public domain troll doll. L.
Batlin & Son, Inc. v. Snyder, 536 F.2d 486 (2nd Cir. 1976), cert.
denied, 429 U.S. 857 (1976). The importer contends that there
are fewer differences between the Russ Berrie troll doll and the
public domain troll doll than what was found in L. Batlin where
the court invalidated a copyright for a derivative work.
In support of its position that the Russ Berrie troll doll
is substantially similar to the public domain troll, the importer
provides Mr. Russ Berrie's testimony in EFS Marketing, Inc. v.
Russ Berrie & Company, Inc., 21 U.S.P.Q. 2d 1993 (S.D.N.Y. 1991)
(decision denying preliminary injunction sought by plaintiff and
denying summary judgement sought by defendants). The importer
offers Mr. Berrie's statement that he made minor changes to the
public domain doll by rounding the ears, changing the jawline,
and derouging or dereddening the face. The importer argues that
these are merely trivial changes and that copyright protection
does not extend to these minor variations.
CUSTOMS DETERMINATION
As a general rule Customs has not addressed the issue of
validity of a copyright except to state that the existence of a
registration certificate constitutes prima facie evidence of
validity pursuant to section 410 of the Copyright Law. Customs
has been careful not to appear to encroach on the courts'
functions of passing on a certificate's validity since the
registrant vouches for the independence and originality of a
copyright when it is signed. 20 Cust. B. & Dec. 646 (C.S.D. 86-
23, 1986) (hereinafter C.S.D. 86-23). However, because both
parties in the instant matter present and argue the issue, we are
compelled to discuss it.
Although the facts in C.S.D. 86-23 are very different than
the instant case, it does provide some background. In C.S.D. 86-
23 Customs was faced with imported merchandise which became the
subject of a copyright registration after the importation
occurred. The merchandise was suspected of infringing another
copyright registration which covered the same merchandise. In
this ruling Customs stated that
Although a copyright registration certificate
acquired prior to importation is arguably
somewhat more persuasive of originality than
one obtained only after Customs has seized or
detained imported goods, it is similarly
subject to question and may be disregarded
when other evidence indicates piratical
copying.
Id. at 648.
6
Further, Customs held in that case that if evidence clearly
indicates piratical copying or reason to suspect such copying of
a copyrighted work recorded with Customs and the imported article
is covered by a copyright certificate (whether obtained before or
after importation), Customs officers shall institute the
procedures set forth in section 133.43. Therefore, Customs does
not now venture into resolving the issue of a questionable
copyright registration certificate without having contemplated
this possibility in the past albeit under a different factual
setting.
In an effort to resolve this issue, we look to the copyright
laws and judicial opinions available to reach a reasoned
conclusion. First, section 103 of the Copyright Law (17 U.S.C.
103) explicitly provides for protection of derivative works. We
look to judicial opinions which have dealt with the question of
whether a derivative work has sufficient original authorship to
warrant copyright protection.
An issue to be resolved in copyright infringement cases is
the issue of validity. Masquerade Novelty, 912 F.2d at 667;
Durham Industries, Inc. v. Tomy Corporation, 630 F.2d 905, 908
(2nd Cir. 1980); Folio Impressions, Inc. 752 F. Supp. at 585;
Russ Berrie & Co., 482 F. Supp. at 984. The court in Mattel
stated that when infringement cases arise in the context of
imported merchandise, it is within the jurisdiction of Customs to
fulfill the duties explicitly tasked to the Department of the
Treasury, i.e., to enforce the provisions of the law prohibiting
importation of infringing goods. Mattel, 945 F.2d at 538.
Although we see implicit in the court's language that Customs may
address any issue that is raised in connection with determining
whether copyright infringement exists, we do not choose to take
the step of invalidating the registration.
Customs's role of enforcement is different from that of the
U.S. Copyright Office's role as a registry. Since our decisions
may have the effect of depriving one of his/her property, we must
engage in the type of legal analysis conducted by the courts. It
is instructional for us to review cases wherein works were
derived from the public domain or from works subject to copyright
registrations, but found to be invalid upon challenge in the
courts.
The L. Batlin case involved a copyright recorded with U.S.
Customs where a copyrighted plastic bank derived from a cast iron
bank in the public domain. The cast iron bank is referred to as
an Uncle Sam mechanical bank which was known to
exist as early as 1886 and had long since passed into the public
domain. The court described the bank as
7
Uncle Sam, dressed in his usual stove pipe
hat, blue full dress coat, starred trousers,
and leaning on his umbrella, stands on a
four-or five-inch wide base, on which sits
his carpet bag. . . . The base has an
embossed American eagle on it with the words
"Uncle Sam" on streamers above it, as well as
the word "Bank" on each side.
L. Batlin, 536 F.2d at 488.
Defending the copyrighted plastic work, the copyright owner
in L. Batlin argued that in addition to the difference in size,
that his carpet bag in his plastic bank was smoother than the
cast iron bank, that the metal bank had a fatter base, that the
eagle in the cast iron was holding arrows while on the plastic
bank the eagle was holding leaves, that the shapes of Uncle Sams
were different, and the shapes and texture of the hats were
different.
Additionally, the copyright owner claimed that the umbrella
hung loose on the cast iron bank but not on the plastic bank and
that the texture of the clothing, the hairline, shape of the bow
ties and of the shirt collar, left arm, and the flag bearing the
name on the base of the statue were all different. The court,
however, concluded that these differences were not "perceptible
to the casual observer." Id. at 489.
The court concluded that the public domain cast iron bank
and the plastic bank, the subject of a copyright registration,
were extremely similar except for the size and material. Id.
The court stated that other than the size the only other
differences were the shape of the satchel and the leaves in the
eagles talons. Id. The court reviewed those features which were
similar. The similar features were summarized by "the appearance
and number of stripes on the trousers, buttons on the coat, and
stars on the vest and hat, the attire and pose of Uncle Sam, the
decor on his base and bag, the overall color scheme." Id.
The court found that there must be independent creation and
that there must be some substantial, not trivial originality.
Id. at 490. The court, therefore, affirmed the lower court's
factual finding that the differences were infinitesimal. Id. at
489.
In Gracen v. Bradford Exchange, 698 F.2d 300 (7th Cir.
1983), a copyright in a derivative work was denied because there
was not substantial difference between a still photograph of Judy
Garland in the Wizard of Oz and Miss Gracen's painting of Judy
Garland. Scenes from the movie were provided to contestants.
The contestants were asked to give their interpretations through
8
paintings. The picture of Judy Garland provided by Bradford
Exchange and the painting done by Miss Gracen have differences
(Reproduced as part of the reported case). Although, we do not
enumerate all the differences here, we note that the two pictures
reproduced in the reported case do differ in that Miss Gracen's
painting has Judy Garland standing on a brick road and a wooden
fence on one side of the road, two features absent in the
photograph provided by the Bradford Exchange to its contestant.
However, despite these two obvious differences and other minute
ones, the court rejected Miss Gracen's argument that she
possessed a copyright in her work as derivative work because the
differences were not substantial enough. Id. at 305.
Finally, in Sherry Manufacturing Company, Inc. v. Towel King
of Florida, Inc., the work at issue was a design on beach towels.
Sherry Manufacturing first marketed its towels with the design in
the 1960's. The design was a decorative scene depicting three
palm trees growing out of some sand, an ocean view above the sand
with a sailboat in the right lower corner, and clouds above the
ocean horizon. The design was not copyrighted and was public
domain material.
In the mid-seventies, Sherry Manufacturing wanted to obtain
copyright protection for its designs. This original design was
changed. The redesign involved changes in the dimension of the
beach, trees, and water. The new design was submitted for
registration and a copyright registration was issued. The
copyrighted work was subsequently corrected due to a watermark
defect. When it was discovered that Towel King was marketing a
towel which copied Sherry's design, the suit followed.
The district court judge found Towel King's design to be
virtually identical to the copyrighted design except for the way
the word Florida appeared on the towels, a difference in one
cloud on the left side of the palm trees, and a reduction of the
sand below the palm trees. Towel King's design even included the
watermark defect. Id. at 1566. At issue on appeal was whether
the new Sherry design was copyrightable.
The court concluded that based upon a side by side
comparison, the contributions by Sherry's artist were too trivial
and too insubstantial to justify copyright protection. Id. The
trial judge listed the differences between Sherry's public domain
design and the copyrighted design.
a) The extent of the seawater portion of the
scene is painted differently.
b) The amount of sand beneath the tree was
increased to change the impression from an
island to a beach.
c) The leaves of the palm tree are sharper
9
and more lifelike.
d) The clouds on the new design were painted
differently.
e) The effect of the wind in the overall
impression is diminished.
g) The water was lowered approximately three
inches. On [Sherry's Original Design] some
of the palm leaves touched the water. In
[Sherry's New Design] they are two inches
away.
h) The leaves of the palm tree are
different. The right small palm leaves are
totally spread from the center palm tree
trunk.
Id. at 1568. (no subsection (f) in the trial court's fact
finding.)
Upon reviewing the lower court's findings, the court of
appeals concluded that these distinguishing features were so
minor that they were virtually unnoticeable upon a cursory
comparison. Id. The court continued that those differences
which were noticeable were so only because they involved simple
changes in spacing and dimensions of non-detailed features. The
court stated that copyright protection was intended to apply to
works with more recognizable originality, especially in cases
such as this where the primary purpose of making changes was to
make the work copyrightable, and to make it more aesthetically
appealing. Id.
Applying these principles to the instant matter, initially,
we disagree with the copyright owner, Russ Berrie, that the
Scandia case is irrelevant to this case. We must be cognizant of
those characteristics and features of the troll doll which are in
the public domain and may be copied by any one. Works
substantially derived from pre-existing works, whether
copyrighted or in the public domain, are subject to copyright
protection so long as the derivative work itself is original as
long as the original aspects are nontrivial and do not affect the
underlying work. Knickerbocker Toy Co., Inc. v.Winterbrook
Corp., 554 F. Supp. 1309, 1317 (D.N.H. 1982).
The copyright owner's reliance upon Feist is misplaced.
Feist focused on compilations. In the instant case, the issue
presented involves derivative works. Since we find sufficient
case law on derivative works, we obtain our guidance from these
cases.
Next, we turn to the features of the Russ Berrie trolls, the
imported troll, and the public domain troll. Again, we disagree
with the copyright owner's contention that Mr. Berrie's testimony
10
in another action is irrelevant in the instant matter. Mr.
Berrie's testimony in EFS has been submitted as part of the
record before us and shall be considered. While we understand
that the EFS case involves a trade dress issue, the significance
of the testimony is that Mr. Berrie provides a historical
background for his trolls in a copyright context.
From the copyright owner's petition, Russ Berrie Petition at
10 n.2, and Mr. Berrie's testimony, it is stated that Mr.
Berrie's company bought troll doll molds from a Florida company
which made the public domain troll doll for Scandia. Importer's
Exhibit C at p. 256, 273 (hereinafter 'Imp. Ex.') Mr. Berrie's
company used the same molds to make troll dolls in 1972, Berrie
Pet. at 10 n.2, and in 1976. Imp. Ex. C at p. 275. In the late
1980's Mr. Berrie sent the work abroad for manufacturing, still
using photographs of earlier troll dolls, but asking that they be
enlarged. Id. at p. 279. In a series of questions and answers
concerning copyrighting the pencil topper troll, Mr. Berrie
testified that the changes involved were as to the ears, jaw
line, rounding cheeks, removing rouge color, and adding other
elements. Id. at pp. 279-281.
Mr. Berrie's affidavit in the EFS case, Imp. Ex. D, confirms
that his troll dolls, old and new, incorporate features of public
domain trolls. Id. at p. 13. Specifically, he states that these
public domain elements are pointed ears, puggish nose, pot belly,
big eyes, wild hair, and outstretched arms. Id. The only
changes Mr. Berrie refers to are the changes in the ears, jaw
line, rounding cheeks, removing rouge color, and
adding other elements (unspecified).
We now turn to the actual comparison of the troll dolls. We
agree that the importer's two and a half inch troll doll is
substantially similar, if not identical, to the three and a half
and four inch copyrighted dolls (which are identical except the
size). However, when the copyrighted dolls are compared to a
public domain doll, we see that they have pot bellies,
outstretched arms, big round eyes, wild hair, and bulbous noses.
Also, if changes have been made to the backs of the copyrighted
doll, we see no discernable differences other than the minor
difference in the angle of bend at the knee. The differences
are slight in that the dolls are slightly different shades of
flesh color, the ears of the copyrighted work are not as pointed,
and there is slightly more of a chin on the copyrighted works.
In our side by side comparison we do not notice many of the
changes noted by the copyright owner. After reviewing L. Batlin,
Gracen, and Sherry Manufacturing Company, we conclude that the
similarities between the public domain doll and the protected
works are substantial and that the differences, in our judgement,
11
are trivial. We are of the opinion that an ordinary observer
would overlook the differences because they are trivial and
insubstantial .
Concerning the importer's argument that it is denied due
process where Customs does not make a finding on the issue of
validity, we believe that the procedural mechanisms available are
sufficient. In cases where Customs finds infringement, an
importer may challenge the substantive merits during proceedings
for judicial forfeiture. See 19 U.S.C. 1608; 19 C.F.R. 162.47.
Therefore, we conclude that the procedural mechanisms now
available provide the importer with due process to challenge
Customs seizures and forfeitures.
This forum has not in the past found a copyright invalid and
we choose not to do so here. However, Customs will enforce its
regulations as though no copyright certificate exists. See
C.S.D. 86-23.
Although the decision above makes any further findings
unnecessary, we do address an additional point made by the
importer. The documents submitted by the importer demonstrate
that the troll doll which was imported is Item No. M2287, two and
a half inch troll doll. The importer has provided entry
documents related to a 1989 shipment which indicates that this
item was imported prior to the creation of the troll doll covered
by copyright registration VA 462-387 (work created 1990, first
published May 13, 1991).
Although these documents are provided in order to permit
Customs to conclude that the item currently detained is the same
as the item imported in 1989, we can not reach this conclusion.
The 1989 invoice refers to the Item No. M2287 as small trolls.
Additionally, the photocopies from the catalogue, when compared
to the detained troll appears to be different. Therefore, we can
not conclude that the item detained and the items imported in
1989 are identical based upon the questionable quality of the
black and white photocopy.
HOLDING:
Customs will enforce its regulations as if there is no valid
certificate of registration covering this claim to copyright.
C.S.D. 86-23. Therefore, based upon the foregoing, we conclude
that there is no infringement by the imported item on the Russ
Berrie troll dolls at issue.
12
A copy of this decision may be provided to the copyright
owner and importer. Finally, in view of the decision that
infringement does not exist in this case, the bond deposited by
the copyright owner shall be transmitted to the importer pursuant
to 19 C.F.R. 133.44(b).
Sincerely,
John F. Atwood, Chief
Intellectual Property Rights Branch