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January 7, 1980

RUSS BERRIE & COMPANY, INC., Plaintiff, against JERRY ELSNER CO., INC., Defendant.

The opinion of the court was delivered by: HAIGHT


This case is before the Court on plaintiff's motion for preliminary injunction, Fed.R.Civ.P. 65(a), *fn1" respecting claims of copyright infringement, 17 U.S.C. § 501 Et seq., and common law trademark infringement under the Lanham Act, 15 U.S.C. § 1125(a). Defendant cross moves for summary judgment on the copyright claims. Fed.R.Civ.P. 56. The Court has subject matter jurisdiction over the claims raised herein under 28 U.S.C. § 1338(a); personal jurisdiction over the defendant is uncontested and venue is proper in this forum. 28 U.S.C. § 1400(a); § 1391(b), (c).

 Before a preliminary injunction will issue, the movant must demonstrate likely irreparable harm and either probable success on the merits or serious litigable questions going to the merits coupled with a balance of hardships tipping decidedly in the movant's favor. *fn2" E. g., Jackson Dairy, Inc. v. H. P. Hood & Sons, 596 F.2d 70, 72 (2d Cir. 1979). Summary judgment, of course, requires that there is no genuine issue as to any material fact so that the Court may enter judgment as a matter of law. Rule 56(c).

 For the following reasons, I conclude that plaintiff is entitled to a preliminary injunction on its Lanham Act claims; and that defendant is entitled to summary judgment dismissing the copyright infringement claims.



 Plaintiff Russ Berrie & Co., Inc. ("Berrie"), a New Jersey corporation with its principal place of business in that State, is the second largest manufacturer of stuffed toy animals in the United States. In this suit, Berrie charges defendant Jerry Elsner Co., Inc. ("Elsner"), a medium sized competitor incorporated in New York, with infringing three of its copyrighted plush toy designs a stuffed Santa Claus figure, style # 195; a plush Christmas teddy bear, trimmed and capped in red, style # 181; and a thumb-sucking stuffed gorilla, style # 595. Elsner's use of the name "Congo" in connection with sales of the latter toy is also alleged to infringe Berrie's trademark "Gonga" used for its gorilla.

 Santa and Christmas Bear

 Berrie is the holder of certificates of copyright registration, issued September 12, 1979, and bearing numbers V.A. 33-376 and V.A. 33-377, respectively, for its Santa and Christmas bear. *fn3" Both toys were conceived by Berrie's design department in February, 1978, executed by Berrie's manufacturing contractors in the Orient, and first published on September 8, 1978. The toys bear the requisite notice of copyright when offered for sale.

 Defendant Elsner also puts out a stuffed Santa figure and a Christmas bear. One accused toy, Elsner's 1979 Santa, style # 823, is much like Santa figures in its product line since 1976 and 1977, with some variations in ornamentation and definition of the limbs.

 Elsner's accused Christmas bear, style # 832, is a seasonal version of a stuffed teddy that defendant has produced since 1970. Defendant's traditional teddy is dark brown in color. When the Christmas bear was made up in that color originally, the dark brown did not blend properly with the red body and hat given the Christmas version. Accordingly, defendant's president and founder, Jerry Elsner, directed that the Christmas bear be made in a beige color.

 Based on its 1979-80 wholesale catalogue, plaintiff's Santa and bear sell for $ 21 per dozen. Defendant's current price list shows its Santa wholesaling for $ 24 per dozen and its bear for $ 28.80 per dozen.

 The Gorillas

 In 1978, Berrie adopted and began using the name "Gonga" as a trademark for its stuffed gorilla. Berrie advertises its toy under that mark and, since November 1978, has sold its gorilla nationwide with the trademark "Gonga" appearing both on the label affixed to the toy and on a wooden plaque hanging around the gorilla's neck.

 Berrie's Gonga is a copy of a pre-existing uncopyrighted work, a Japanese gorilla named "Gori-Gori." On a trip to the Orient in April 1978 taken by plaintiff's president and founder, Russell Berrie, and its chief designer Beverly Cerepak, the latter purchased one of the Japanese gorillas in Hong Kong. Mr. Berrie then brought the gorilla to his Taiwanese manufacturer, Sang Lan Enterprises, and requested that a thumb-sucking Berrie gorilla be made, but with certain changes. Mr. Berrie recollects that the gorilla he viewed in 1978 lacked eyebrows, and had a brown and white nose. Mr. Berrie's directions to Sang Lan were to change the Japanese gorilla's plush covering and stuffing; produce a somewhat smaller "bean bag" version; add eyebrows; eliminate the ball and chain that the Japanese gorilla wore around one ankle; use a neck plaque reading "Beware, Gonga Loves You"; alter the skin tone and facial dimensions; and paint the nose all brown.

 Sang Lan thereafter produced the original versions of plaintiff's Gonga, with notice of copyright printed on the labels affixed to the toys. Subsequently, Berrie determined that it needed an additional manufacturing source for its Gonga. Sometime prior to September 1978, Berrie sent the Sang Lan Gonga to a second manufacturer, Good Choice Co., Ltd. of Taiwan, to solicit that company's samples of the product. The Good Choice product proved unsatisfactory, and Berrie ultimately discontinued Good Choice as a supplier of Gonga.

 Berrie first published its Gonga on November 14, 1978, by selling the item with the requisite copyright notice. An application for copyright therein was made in April 1979. Although specifically directed to provide such information, the application failed to disclose that Berrie's Gonga was a derivative work based on the pre-existing public domain Japanese "Gori-Gori." *fn4" On the basis of Berrie's application, a certificate of copyright registration V.A. 25-275 was subsequently issued, effective February 5, 1979.

 In October 1977, Jerry Elsner visited Japan, and like Russell Berrie, was taken with a thumb-sucking Japanese gorilla, wearing a wooden neck plaque that read "Danger Gori-Gori For Japan." Mr. Elsner obtained a brochure from the selling company at that time which illustrated the gorilla he had seen. The Japanese Gori Gori on the market in 1977, as is evident from that brochure, had eyebrows, an all brown nose, and wore a ball and chain around its ankle.

 In or about October 1978, on a visit to his Taiwan supplier, Good Choice Co. Ltd., Mr. Elsner was offered a stuffed gorilla similar to the Japanese item he had seen in 1977. Good Choice apparently represented that the item it was offering was a copy of the Japanese gorilla, which was in the public domain. This was confirmed recently in a letter from Good Choice to Elsner dated September 15, 1979. The Good Choice gorilla was offered in three colors and minus the neck plaque and ankle shackles. Good Choice's catalogue depicting its gorilla, and an actual Good Choice gorilla have been submitted. Affixed to the latter is a label identifying Good Choice as the manufacturer; no copyright notice is included.

 Mr. Elsner states that to his knowledge the Japanese Gori Gori has been sold in this country since 1977. A specimen recently purchased at F.A.O. Schwarz, bearing a Sakai & Co., Ltd., Japan, label, without copyright notice, and with a neck plaque but no ball and chain, is in evidence. Elsner's accused gorilla, style # 894, is manufactured by Good Choice. The Elsner gorilla is sold without the wooden neck plaque found on both the Japanese Gori Gori made by Sakai, and the Berrie gorilla. However, Elsner sells its gorilla to the trade under the name "Congo," although that name does not appear on the product itself. Apparently, the "Congo" designation is not used at the retail level. Both plaintiff's and defendant's gorillas currently wholesale at $ 36 per dozen. The competing gorillas are marketed through similar channels of trade. Both parties utilize catalogues to sell to wholesale customers and the competing gorillas were both offered for sale to the trade at the New York Gift Show in August 1979.

 By letter of August 15, 1979 Berrie put Elsner on notice of the alleged infringements which form the basis of this suit.



 The Applicable Law

 In the copyright context, an infringement claim turns on two elements: plaintiff must establish its ownership of a valid copyright and defendant's copying. Novelty Textile Mills v. Joan Fabrics Corp., 558 F.2d 1090, 1092 (2d Cir. 1977) (citing 2 Nimmer on Copyright § 141, p. 611 (1976)). A prima facie case, sufficient if unrebutted to support interlocutory relief, is made out on the first element by submission of a certificate of copyright registration, which carries with it a presumption of copyright validity and ownership, and is prima facie evidence of the facts stated therein. Id. at 1092 n.1; 17 U.S.C. § 410(c). Success is likely on the second necessary element if, based on the average lay observer test, see text at p. 986, Infra, there is substantial similarity between the copyrighted and accused works, and some evidence that defendant had access to plaintiff's work. Novelty, supra. These two factors substantial similarity and access are the "Sine qua non to a finding of copying," Id. at 1092 n.2, and establish a prima facie case on the second element. It then becomes incumbent upon defendant to rebut that prima facie case by demonstrating, for example, its own independent creation of the accused article or its copying not of plaintiff's product but of work in the public domain.

 Turning to the particulars of this case, the parties are on common ground as to the relevant legal principles. Both sides agree that plush toys such as are here involved are copyrightable as sculptural works of art. 17 U.S.C. § 102(a) (5) (Act of 1976) (predecessor section previously codified as § 5(g) of 1909 Act); 37 C.F.R. § 202.3(a)(iii); See, e.g., Uneeda Doll Co., Inc. v. Goldfarb Novelty Co., Inc., 373 F.2d 851 (2d Cir. 1967); Samet & Wells, Inc. v. Shalom Toy Co., Inc., 429 F. Supp. 895 (E.D.N.Y.1977), Aff'd, 578 F.2d 1369 (2d Cir. 1978); Fisher-Price Toys v. My-Toy Co., Inc., 385 F. Supp. 218 (S.D.N.Y.1974). Both agree that a validly obtained statutory copyright protects the holder thereof against copying by others, not of the idea underlying the work but rather of the particular expression of that idea embodied in the copyrighted item. E. g., Reyher v. Children's Television Workshop, 533 F.2d 87 (2 Cir. 1976); Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487 (2d Cir. 1960). Both sides agree that works in the public domain, i. e. uncopyrighted works, may be freely copied by all, but that one may bring sufficiently original variation to a public domain work to render the new version copyrightable in its own right as a derivative work. 17 U.S.C. § 103; E. g., Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99, 102-03 (2d Cir. 1951). In such circumstances, copyright protection extends only to the new material contributed to the prior ...

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