1986 to the present, with approximately 40,000 catalogs distributed each year, (3) Muttsy has been featured in numerous advertisements in the mass media, as well as on national television, and that (4) Muttsy images are used on posters sold by retail stores, the Court finds that Gund has established access to the copyrighted work.
Thus, the Court moves on to the remaining element of whether Muttsy and Skippy are "substantially similar." If they are not, that ends the Court's inquiry. If they are, the defendant can still rebut the inference of copying by showing that its product was independently created despite its similarity to plaintiff's work. Gund, Inc. v. Russ Berrie and Co., Inc., 701 F. Supp. 1013, 1018 (S.D.N.Y. 1988) (citing Eden Toys, Inc. v. Marshall Field & Co., 675 F.2d at 501).
Whether one work is substantially similar to another is determined by the "ordinary observer" test. Judge Learned Hand stated that there is substantial similarity where "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." Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960). The Second Circuit has formulated this test as "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). The Court of Appeals has also explained that a work may be a "copy" even if every detail is not the same, as "the key to the 'ordinary observer' test is . . . the similarities rather than the differences," because "only a slavish copy would have no differences." Gund, Inc. v. Russ Berrie and Co., 701 F. Supp. at 1018 (quoting Novelty Textile Mills v. Joan Fabrics Corp., 558 F.2d at 1093 & n.4).
Significantly, however, copyright protection extends only to a work's particular expression of an idea and not to the idea itself, and "the similarity that inevitably stems solely from the commonality of the subject matter is not proof of unlawful copying." Gund, Inc. v. Russ Berrie and Co., 701 F. Supp. at 1018-19 (quoting Durham Industries, Inc. v. Tomy Corp., 630 F.2d 905, 913 (2d Cir. 1980)). Thus, anyone can make a stuffed floppy dog, and all floppy dogs may share certain characteristics inherent in the idea of a floppy dog, such as the fact that they flop on their stomach, have no set shape, and are extremely huggable. See Gund, Inc. v. Russ Berrie and Co., Inc., 701 F. Supp. at 1019. The issue then becomes whether the essential "expression" of Skippy - which flows not from the commonality of characteristics of floppy dogs, but from the way in which the characteristics have been designed and projected to produce a whole "look" - is such that it must be seen as copied from Muttsy. Id.
Based on the foregoing standards, the court finds that Skippy and Muttsy are not substantially similar, and that any similarity between the two dogs would appear to the ordinary observer to result solely from the fact that both are more or less non-naturalistic, reclining, huggable, floppy dogs. Eden Toys, Inc. v. Marshall Field & Co., 675 F.2d at 500 (citing Novelty Textile Mills, Inc. v. Joan Fabrics Corp., 558 F.2d at 1093). While the two floppy dogs are similar in shape, lie in a similar reclining position, and have certain features in common, such as plastic eyes partially covered by fur, long tails and ears, and plastic noses, their "total concept and feel" are substantially different. Eden Toys, Inc. v. Marshall Field & Co., 675 F.2d at 500 (citing Warner Brothers v. American Broadcasting Companies, 654 F.2d 204, 211 (2d Cir. 1981)).
First, and most significantly, an ordinary observer would be immediately struck by the different overall look of the two dogs. Muttsy's fur is made of a fine fiber, giving the dog a very smooth texture and finish. By contrast, Skippy has a mongrel-like appearance, with uneven and longer fur, resulting in a scruffy, rough look. More specifically, whereas Muttsy's plush material gives it an extremely smooth finish, Skippy looks as if he was sprayed with water by a passing car and left outside to dry.
Second, as a result of being more softly stuffed, Muttsy is a skinny dog with a greater degree of floppiness. If an adult or child purchaser attempted to pick Muttsy up by the tail area it would flop downward, unable to be held in a horizontal position.
On the other hand, Skippy is more firmly stuffed, giving it a chubby appearance. And although Skippy retains its floppy charm, it is a more rigid dog, able to maintain its form when held by the tail area.
Third, whereas Skippy's head and face are relatively upright, erect and tilted to one side, with the chin resting on the ground, Muttsy's face and head droop downward so that the nose rests on the floor. Additionally, the faces themselves are very different. Skippy's muzzle is very large, broad and flat, resulting in virtually no forehead for the dog. Muttsy, on the other hand, has an oval face, with a more defined and rounder muzzle, creating the impression of a distinct forehead. Moreover, although both dogs have plastic noses, Skippy's shiny nose has a different look than Muttsy's more pronounced, dull nose.
Fourth, despite being approximately the same length and size, the ears add to the overall different look and feel of the two dogs. Muttsy's ears have straight bottom edges and hang straight down from the dog's head. By contrast, Skippy's ears have rounded edges and stick out much more from the dog's head, especially on the smaller sizes.
Finally, although the toys, when dropped on the floor, often flop in different positions, Muttsy's rear legs have a tendency to stick out from both sides, whereas Skippy's chubbier back legs generally go straight back, making the rear paw pads visible from above.
These numerous differences necessitate a finding that Muttsy and Skippy are not substantially similar. Thus, Gund cannot establish a likelihood of success on the merits, and its motion for a preliminary injunction and recall is denied.
For the reasons set forth above, Gund's motions for a preliminary injunction and recall are denied.
SHIRLEY WOHL KRAM
UNITED STATES DISTRICT JUDGE
Dated: New York, New York
January 6, 1993