RR:IT:IP 467741 CRS
Ms. Gloria Armbruster
Tur-rific Toys
216 Coronation Drive
Houston, TX 77034-2316
RE: Alleged copyright infringement; “Little Angel?” Prayer Doll; COP 99-00051
Dear Ms. Armbruster:
This is in reply to your letter of February 24, 1999, concerning certain imported merchandise which you contend infringes a Tur-rific Toys copyright that is registered with the U.S. Copyright Office (SRU 322-829) and recorded (COP 99-00051) with U.S. Customs. The registered and recorded copyright covers a literary sound recording contained in Tur-rific Toys’ “Little Angel?” Prayer Doll. A sample of the imported merchandise was submitted with your inquiry. We regret the delay in responding.
FACTS:
The sample merchandise is a “Sweet Faith?” doll imported by DSI Toys, Inc. The “Sweet Faith” doll is approximately thirteen inches tall, has large feet covered with pink shoes, wears a white dress with pink fringe, and has reddish blond hair. The doll is made in the People’s Republic of China. The “Sweet Faith” doll also contains a sound recording of a prayer. When the doll’s hands are held together, she says the following prayer:
Now I lay me down to sleep,
I pray the Lord my soul to keep.
Guide and guard me through the night
And wake me in the morning’s light. Amen.
The recording is activated by holding the doll’s hands together. If the hands become separated, the doll completes the line she was saying, then stops. When her hands are held together again, she will resume the prayer at the point at which she left off. If her hands stay apart for more than ten seconds, she will say the prayer over from the beginning.
The registered and recorded copyright owned by Tur-rific Toys and entitled “Prayer Doll Night Time Verse,” is for a sound module recording based in large measure on the well-known prayer from The New England Primer:
Now I lay me down to sleep,
I pray the Lord my soul to keep;
If I should die before I wake,
I pray the Lord my soul to take.
John Bartlett, Familiar Quotations (Bartlett’s) 287 (Justin Kaplan ed.) 16th ed. 1992. The Tur-rific Toys recording of this traditional prayer is prefaced by the phrase, “It’s night-night time, let’s say our prayer,” and concludes with “God bless my family and all my friends. Amen. Nighty-night.” Neither of these phrases is part of the traditional prayer.
The copyrighted sound recording is contained in a “Little Angel” prayer doll. Tur-rific Toys’ promotional literature describes the doll as being “a beautiful, cuddly, 16-inch soft body doll with vinyl head and sculpted vinyl hands, rooted hair, sleeping eyes, soft flannel pajamas with a monogrammed lace collar and a long play 49-word sound mechanism, packaged in a full-color, try-me, window display box.” The doll is part of Tur-rific Toy’s “Family Values Collection” and is available in three different styles (nos. 7644, 7645 and 7646). The “Little Angel” doll is also made in the People’s Republic of China.
ISSUE:
The issue presented is whether the sample “Sweet Faith” doll and sound recording is piratical of the registered and recorded copyright such that it is subject to seizure and forfeiture.
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, if the copyright is recorded with Customs, the articles are subject to seizure and forfeiture in accordance with the provisions of 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.
The term “phonorecords,” as defined in section 101 of the Act, means “material objects in which sounds, other than those accompanying a motion picture or other audiovisual work, are fixed by any method now known or later developed, and from which the sounds can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. The term ‘phonorecords’ includes the material object in which the sounds are first fixed.” 19 U.S.C. § 101. The “Little Angel” prayer doll is a material object in which a sound recording has been fixed and, as such, constitutes a phonorecord pursuant to 17 U.S.C. § 101.
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). 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 thereto. 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). A copy of the registration certificate is contained in our files and indicates that the registered and recorded copyright is owned by Tur-rific Toys. There is no evidence that the alleged infringer had access to the copyrighted work, however. Nevertheless, access can be inferred where there is substantial similarity between the suspected article and the copyrighted work. Arnstein v. Porter, 154 F.2d 464, 468 (2d Cir. 1946) (“If there is evidence of access and similarities, then the trier of fact must determine whether the similarities are sufficient to prove copying...and [i]f evidence of access is absent, the similarities must be so striking as to preclude the possibility that the plaintiff and defendant independently arrived at the same result.”).
In the instant case, the copyrighted recording is a derivative work based on the traditional prayer from The New England Primer, combined and arranged with selective phrases, e.g., “it’s night-night time,” to achieve a night-time verse for a prayer doll. The sample imported merchandise is a doll containing a sound recording of a similar night-time prayer. Accordingly, we have assumed for purposes of this decision that the alleged infringer had access to the copyrighted work.
Nevertheless, there must also exist substantial similarity of expression between the alleged infringing article (the imported merchandise) and the copyrighted article in order for the former to infringe on the registered and recorded copyright. 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 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; 17 U.S.C. § 102.
As a general matter, substantial similarity is determined by reference to 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). See also, Atari v. North American Philips, 672 F.2d at 614 (The test is “whether 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.”). See, e.g., Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960) (holding that “the ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard their aesthetic appeal as the same.”).
Both the copyrighted work and the alleged infringing works are based on the prayer from The New England Primer. The sound module that is the subject of the registered and recorded copyright repeats verbatim the traditional prayer from The New England Primer and adds the additional phrases referenced above, viz. “It’s night-night time, let’s say our prayer,” etc. To the extent that the copyrighted work is based on the prayer from The New England Primer it constitutes a derivative work pursuant to 17 U.S.C. § 101.
It is established that “in the case of a derivative work based on an underlying work that is in the public domain, only the material added to the underlying work is protected by copyright.” Waldman Publishing Corp. v. Landoll, Inc., 43 F.3d 775,782, citing 1 Nimmer on Copyright § 3.07[C]. Thus, only the phrases added to the prayer from The New England Primer are themselves protected by copyright.
The voice recordings differ markedly. For example, the recording contained in the sample “Sweet Faith” doll is that of a little girl. In contrast, the copyrighted recording in the “Little Angel” doll has a synthetic, or mechanical quality. Moreover, the “Sweet Faith” recording is distinct, more natural sounding, and thus easier to understand than the “Little Angel” recording. Even to the extent that are similarities in the words, the expression of the prayers as represented by the two recordings is therefore vastly different. For these reasons we find no substantial similarity in respect of the recordings.
As to the material objects in which the recordings are fixed, i.e., the sample doll and the Tur-rific Toys “Prayer Doll,” we likewise find that there is no substantial similarity. Both are dolls, but there the similarity ends. The Tur-rific Toys doll is taller, and has eyes that close when the doll is placed in a reclining position. The sample doll, in contrast, is shorter, has large feet, and eyes that do not close. The Tur-rific Toy doll is wearing pyjamas; the sample doll, a dress. In light of the foregoing, the ordinary observer would be unlikely to recognize either the recording or the doll itself as having been appropriated from the copyrighted work. Accordingly, it is our position that the sample imported merchandise does not infringe on the registered and recorded copyright.
HOLDING:
In conformity with the foregoing, the sample “Sweet Faith” doll and sound recording is not piratical of the registered and recorded copyright.
Sincerely,
Caridad Berdut, Acting Chief
Intellectual Property Rights Branch