The defendant manufactures and imports toys. It has been in
the business of selling ragdolls since 1992. Among the dolls
sold by Goffa was a small seated ragdoll (CL), which it
copyrighted in 1996.
Douglas Song, President of defendant Goffa, learned that a
four foot tall rag doll (plaintiffs) was selling well in United
States markets. He decided to introduce a competitive work. In
April of 1998, he ordered his Shanghai factory to develop a
prototype based on the face and hat of his CL Doll, and body
parts from various other Goffa dolls. This factory had never
manufactured rag dolls. Edward Sclier, defendant's general
manager, testified that the factory employees were "not
creative" when it came to product design, and that they
"couldn't do much on their own."
Later that month, Mr. Song and Mr. Sclier attended a trade
fair in China. There they noticed that a company named Hubei was
exhibiting rag dolls of differing sizes; one doll in Hubei's
catalogue appears to be a copy of plaintiffs 20 inch doll. Hubei
was not displaying any 48 inch dolls at the fair, so Mr. Song
requested that Hubei create a 48 inch sample and quote a price.
Mr. Song testified that while at the fair he did not view the
Hubei catalogue, but that seems doubtful since he was there to
see what was available in the market.
Defendant admitted obtaining a sample 48 inch doll from Hubei.
The evidence suggested that the Hubei 48 inch sample doll's face
and body strongly resembled the Well-Made's 48 inch Sweetie
Mine. Mr. Song sent the 48 inch sample he had received from
Hubei to the Shanghai factory as an example of "how nice other
people make it."
Defendant also obtained at least one of Well-Made's 48 inch
dolls and disassembled it during its own design process. Mr.
Sclier admitted that he himself had purchased a Well-Made 48
inch doll at retail in this country. While he swore otherwise,
it is apparent from his equivocal statements on the stand that
he sent this doll to the company's Shanghai factory in order to
have it reproduced; there, it was copied with some variations
based on the Hubei 48 inch sample.
Defendant's Chinese factory made design changes based on the
Hubei sample, some of Goffa's own dolls, and the Well-Made doll.
Mr. Song decided to use his own factory's design, and informed
Hubei that he would not be placing an order with it.
As already suggested, and is apparent from the picture set out
below, defendant's 48 inch doll has an entirely different face
than plaintiffs Sweetie-Mine 48 incher, with a head that does
not stand out from the body as much as does plaintiffs; has
slightly different body parts; uses dissimilar clothing, with a
style copied only in part from plaintiffs doll's dress (as in
the ankle and the wrist bands); embodies a much longer skirt;
and utilizes poorer cloth and sewing. The stuffing seems about
the same in density. All in all, the alleged infringing 48 inch
doll looks like a slightly less alert and attractive relative of
plaintiffs 48 inch doll, but definitely not like a twin of
either the 20 or 48 incher.
Plaintiffs Sweetie Mine doll was sold in the United States by
retailers including King Kullen Supermarkets, a defendant in
this action. Defendant's Huggable Lovable doll was introduced at
a lower price than what plaintiff had been asking. To keep
competitive, plaintiff then changed its 48 inch doll slightly by
"slimm[ing] the pattern down," cutting its cost, and lowering
In October 1998, attorneys for plaintiff warned defendant that
they believed Goffa's 48 inch doll infringed on copyrights owned
by Well-Made. A few months later, in early 1999, Goffa
instructed its factory to substantially change the design of its
48 inch doll and it ceased production of the allegedly
1. Registration Requirement
For any work created after January 1, 1978, copyright
automatically inheres upon the work's creation. See
17 U.S.C. § 102(a) ("Copyright protection subsists, in accordance with
this title, in original works of authorship fixed in any
tangible medium of expression . . ."); Montgomery v. Noga,
168 F.3d 1282, 1288 (11th Cir. 1999); 2 Melville B. Nimmer & David
Nimmer, Nimmer on Copyright § 7.16[A] at 7-147 (2002).
Registration with the United States Copyright Office is not
required to obtain copyright protection. 17 U.S.C. § 408(a) ("At
any time during the subsistence of [the copyright], the owner of
copyright or of any exclusive right in the work may obtain
registration of the copyright. . . . Such a registration is not
a condition of copyright protection.").
Registration is a precondition for bringing an infringement
action in federal court. 17 U.S.C. § 411(a) ("no action for
infringement of the copyright in any United States work shall be
instituted until registration of the copyright claim has been
made in accordance with this title."). It is a jurisdictional
prerequisite, not a substantive element. See Geritrex Corp. v.
Dermarite Indus., LLC, 910 F. Supp. 955, 966 (S.D.N.Y. 1996).
Actual certification by the Copyright Office is not necessary. A
copyright holder may commence an action for infringement as soon
as the Copyright Office has received a proper application, fee
and deposit. See Apple Barrel Prods., Inc. v. Beard,
730 F.2d 384, 386-7 (5th Cir. 1984); 2 Nimmer § 7.16[B][a] at 7-155.
But see Tooker v. Copley, 3 U.S.P.Q.2d (BNA) 1396, 1987 WL
124315 (S.D.N.Y. 1987) (plaintiff must obtain a response from
Copyright Office; application alone is insufficient).
2. As Applied to Derivative Works
A work not itself registered, but derived from a copyrighted
registered work may be the basis of a suit. Section 10 of Title
17 of the United States Code defines a derivative work:
A `derivative work' is a work based upon one or more
preexisting works, such as a translation, musical
arrangement, dramatization, fictionalization, motion
picture version, sound recording, art reproduction,
abridgement, condensation, or any other form in which
a work may be recast, transformed, or adapted. A work
consisting of editorial revisions, annotations,
elaborations, or other modifications which, as a
whole, represent an original work of authorship, is a
Derivative works receive copyright protection. 17 U.S.C. § 103.
"A derivative work . . . must incorporate that which itself is
the subject of copyright." 1 Nimmer § 3.01 at 3-5.
A threshold of more than trivial originality is necessary for
a work to be independently copyrightable. As noted in Durham
Industries, Inc. v. Tomy Corp., 630 F.2d 905 (2d Cir. 1980):
First, to support a copyright the original aspects of
a derivative work must be more than trivial. Second,
the scope of protection afforded a derivative work
must reflect the degree to which it relies on
preexisting material and must not in any way affect
the scope of any copyright protection in that
preexisting material. Thus the only aspects of [a
derivative work] entitled to copyright protection are
the non-trivial, original features, if any,
contributed by the author or creator of those
Id. at 909. In Durham, the court of appeals for the Second
Circuit found that toy replicas of popular Disney characters
failed to satisfy this test. The Durham court reiterated the
rule established in L. Batlin & Son, Inc. v. Snyder,
536 F.2d 486 (2d Cir. 1976) (en banc), cert. denied, 429 U.S. 857, 97
S.Ct. 156, 50 L.Ed.2d 135 (1976), that a work involving changes
(such as reproduction in another medium) requiring only
"manufacturing" or "physical" skill, as opposed to "artistic"
skill, does not merit protection as a derivative work. Durham,
630 F.2d at 910; see also 1 Nimmer § 3.03[A] at 3-11 — 3-12.
("[T]he following contributions to pre-existing works have been
held to be too minimal to warrant the recognition of a new and
separate copyright as a derivative[:] . . . a change in . . .
scale or size of a work or sculpture. . . .").
Because derivative works receive copyright protection separate
from that of the preexisting works they modify, a jurisdictional
problem arises if the holder of a registered copyright creates a
derivative work based on the registered work, fails to register
the derivative work, and then brings an infringement claim based
on the derivative work. The requirement in section 411 of Title
17 of the United States Code that copyright claims be registered
before a lawsuit can be entertained makes no distinction between
derivative and nonderivative works. The copyright in the
preexisting work upon which a derivative work is based is not
sufficient to meet the registration requirement as to any claim
based on infringement of the derivative work. See Murray Hill
Publ'ns, Inc. v. ABC Communications, Inc., 264 F.3d 622 (6th
Cir. 2001); Creations Unlimited, Inc. v. McCain, 112 F.3d 814,
816 (5th Cir. 1997). This correct approach must be applied
carefully in accordance with the admonition that "the scope of
protection afforded a derivative work must reflect the degree to
which it relies on preexisting material and must not in any way
affect the scope of any copyright protection in that preexisting
material." Durham, 630 F.2d at 909.
By definition, a derivative work contains elements of
underlying works that themselves may be subject to copyright;
the copyright in the derivative work extends only to those
elements original to the derivative work. It follows that
where the preexisting work is registered, but the derivative
work is not, a suit for infringement may be maintained as to any
protected element contained in the registered preexisting work,
but not as to any element original to the unregistered
derivative work. See Mattel, Inc. v. Robarb's, Inc.,
139 F. Supp.2d 487, 496, 498 (S.D.N.Y. 2001) (defendant's copy of
plaintiffs unregistered derivative work infringed on plaintiffs
copyright in registered work, elements of which were included in
the unregistered derivative work and the infringing copy); 2
Nimmer § 7.16[B] at 7165.
To establish copyright infringement, "two elements must be
proven: (1) ownership of a valid copyright, and (2) copying of
constituent elements of the work that are original." Feist
Publ'ns. Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111
S.Ct. 1282, 1296, 113 L.Ed.2d 358 (1991).
1. Valid Copyright
Assuming that a plaintiff satisfies the jurisdictional
requirement by registering the copyright, the first substantive
inquiry the court must make is whether the copyright is valid.
The Copyright Act provides that a "certificate of [copyright]
registration made before or within five years
after first publication of the work shall constitute prima facie
evidence of the validity of the copyright. . . ."
17 U.S.C. § 410(c). This presumption of validity may be rebutted. See
Hasbro Bradley, Inc. v. Sparkle Toys, Inc., 780 F.2d 189, 192
(2d Cir. 1985); Durham Indus., Inc. v. Tomy Corp.,
630 F.2d 905, 908 (2d Cir. 1980).
2. Copying of Original Elements
The second element of the Feist test, that a plaintiff prove
"copying of constituent elements of the work that are original,"
requires a two part showing: "A plaintiff with a valid copyright
proves infringement by demonstrating that: (1) the defendant has
actually copied the plaintiffs work; and (2) the copying is
illegal because a substantial similarity exists between the
defendant's work and the protectible elements of plaintiffs."
Fisher-Price, Inc. v. Well-Made Toy Mfg., 25 F.3d 119, 122-23
(2d Cir. 1994) (emphasis in original).
a. Actual Copying
Copyright, unlike patent protection, is not solely concerned
with the degree of similarity between the protected work and the
allegedly infringing work. In copyright, the explanation for the
similarity matters. For there to be a violation of copyright
protection, similarities must arise from actual copying, not
mere coincidence. Proof of independent creation is an
affirmative defense against a claim of infringement. Yurman
Design, Inc. v. PAJ, Inc., 262 F.3d 101, 110 (2d Cir. 2001)
("Under the Copyright Act, one may market a product identical to
a copyrighted work so long as the second comer designed his
product independently."); Repp v. Webber, 132 F.3d 882, 889
(2d Cir. 1997); Eden Toys v. Marshall Field & Co.,
675 F.2d 498, 501 (2d Cir. 1982).
Actual copying may be established by direct evidence, such as
by defendant's admission or by an eyewitness account. More
commonly, copying is established indirectly by evidence of
"access to the copyrighted work, similarities that are probative
of copying between the works, and expert testimony."
Laureyssens v. Idea Group, Inc., 964 F.2d 131, 140 (2d Cir.
1992). Generally, it is the conjunction of access and probative
similarity that lead to an inference of direct copying. See
id. ("A common form of indirect proof of copying — but far from
the only form — is a showing of defendant's opportunity to come
into contact with plaintiffs work and such similarities between
the works which, under all the circumstances, make independent
"Access may be established directly or inferred from the fact
that a work was widely disseminated or that a party had a
reasonable possibility of viewing the prior work." Boisson v.
Banian, 273 F.3d 262, 270 (2d Cir. 2001). Proof of access may
also be inferred where "two works are so strikingly similar as
to preclude the possibility of independent creation. . . ."
Lipton v. Nature Co., 71 F.3d 464, 471 (2d Cir. 1995); Repp,
132 F.3d at 889 & n. 1.
As the court of appeals for this circuit noted in Repp v.
Webber, "copyright caselaw has caused considerable confusion by
the use of the term "substantial similarity" at two different
points of the copyright infringement analysis." Repp, 132 F.3d
at 889. The court attempted to resolve this confusion in
Laureyssens v. Idea Group, Inc., 964 F.2d 131 (2d Cir. 1992),
where it observed that the similarity, as it relates to proving
may or may not be substantial. [Evidence of
similarity at this stage is] not offered for [its]
own sake in satisfaction of the requirement that
taken a substantial amount of protected material from
the plaintiff's work. Rather, [it is] offered as
probative of the act of copying and may accordingly
for the sake of clarity conveniently be called
Id. at 140. Subsequent decisions have reintroduced
uncertainty, particularly regarding whether the relevant
comparison is limited to protectible elements. Compare
Fisher-Price, Inc., 25 F.3d at 123, ("In the context of
deciding whether the defendant copied at all (as distinguished
from whether it illegally copied), `similarity' relates to the
entire work, not just the protectible elements.") (emphasis in
original) with Williams v. Crichton, 84 F.3d 581, 587 (2d Cir.
1996) ("In the absence of direct evidence, copying is proven by
showing (a) that the defendant had access to the copyrighted
work and (b) the substantial similarity of protectible
material in the two works") (emphasis added). Although the
Repp court did not address this issue, it reaffirmed the
Laureyssens court's distinction between "probative"
similarity, for the purpose of proving actual copying, and
"substantial" similarity, for the purpose of showing
infringement. Repp, 132 F.3d at 889 & n. 1.