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June 26, 2002


The opinion of the court was delivered by: Weinstein, Senior District Judge.


I. Introduction

Based on its copyright and registration of its 20 inch ragdoll, plaintiff sues for copying of its 48 inch rag doll, designed by it as a grown-up version of the smaller toy. Judgement for defendant is required because small dolls, like humans, grow up with substantially changed proportions.

II. Procedural History

In 1999, plaintiff, Well-Made Toy Manufacturing Corporation ("Well-Made"), filed separate actions against Goffa International Corporation ("Goffa"), the manufacturer of the allegedly infringing doll, and King Kullen Grocery Company ("King Kullen"), a chain of supermarkets that sold it at retail. Since Well-Made has indemnified King Kullen, the singular word "defendant" is used throughout this memorandum.

The cases were consolidated for all purposes. They were tried without a jury.

III. Facts

A. Rag Dolls

Rag dolls are soft, stuffed fabric playthings which were traditionally made at home from scrap pieces of fabric. Currently, most rag dolls are manufactured by toy companies. The doll designer in this country creates annotated paper patterns. Mass. cutting of individual fabric pieces and sewing together of the parts to create an empty shell, or "skin," are typically accomplished in China. The shapes of the constituent fabric pieces and the way in which the pieces are assembled and stuffed determines the three-dimensional form of the doll. The skins are stuffed in this country to give the toy volume.

Designing rag dolls is not a field in which experimentation or deviation from the norm is highly valued. The standard elements are well-known. As plaintiffs designer testified, "it is putting things together to make one new creation that makes it individual." Rag dolls typically have in one skin a head, a torso, limbs, hands, and feet; a dress and bonnet can either be attached or separate. They commonly incorporate quaint outfits, including dresses of traditional style, print fabric with matching bonnets, hair consisting of yarn which is often braided, faces which often have embroidered features, limbs that are sometimes more floppy than the torso, and shoes which are built in and stuffed with the same material as the rest of the doll. Ruffles, cuffs, and bows are common features. Density of the stuffing determines rigidity.

B. Sweetie-Mine

The plaintiff, Well-Made, produces a ragdoll named "Sweetie Mine". It was designed for plaintiff in 1995 by Marla Speer. Ms. Speer began by drawing a two-dimensional illustration. She then created fabric patterns for the pieces that would make up the three-dimensional doll. She also laid out embroidery for the face and painted a pattern for the doll's dress. To give a more defined form to the doll's face, the designer incorporated a polyester backing, or "face pocket." She testified that she borrowed the idea for a "face pocket" from generally available designs of teddy bears and other stuffed animals. Her doll was 20 inches tall.

Well-Made received a copyright registration for the Sweetie Mine doll in 1996. Copyright Registration No. VA 770-506 (dated April 26, 1996). The deposit pictures accompanying the copyright application were photographs of the 20 inch doll. Copyrightable features of the work were identified as the "facial artwork and body sculpture."

In early 1998, Well-Made developed a 48 inch version of the Sweetie Mine. This 140 percent increase in scale was accomplished by using a photocopy machine to enlarge the paper drawings of the 20 inch fabric patterns. Enlarged patterns were then adjusted so that the larger doll's proportions would remain pleasing. For example, the head was reduced in size and the legs lengthened. Ms. Speer testified that these adjustments were intended to preserve the "same aesthetic appeal as the original design." Krista Kosmas, who also participated in the creation of the 48 inch doll for Well-Made, testified that enlarging the doll without altering the proportions would result in a "fat, very klutzy looking doll."

Both admitted that these adjustments were not mathematically governed by any strict rules of proportionality; artistic discretion was required. Ms. Speer's testimony was as follows:

Q: Was there an exact ratio of the head to the body of the forty-eight inch doll that you were working toward?

A: No.

Q: There was just whatever you thought looked good?

A: Yes.

Q: In your artistic judgement?

A: Yes.

Q: Were there a range of sizes for the head in comparison with the body of the forty-eight inch doll that you might have chosen?

A: I think there might be a small range.

Q: Some other designers might have chosen a different proportion of the head to the body and the rest of the doll?

A: Oh, yes. Might not have looked as good, though.

Aside from these proportional considerations, three substantive changes were made that seem unrelated to proportion. First, the shape of the faces is different. That of the 20 inch doll has five distinct angles: two just below the cheeks, two at the temples, and one at the peak of the forehead. This gives the face a soft pentagonal look, like an inverted strawberry that comes to a peak at the forehead. The 48 inch doll has a wider, more elliptical face; the distinct angles are absent; and the head juts forward from the body further as a result of larger darts in the fabric. Second, the features of the 20 inch doll are set lower in the face, so that it has a high forehead; the facial features of the 48 inch doll are more centered, so that the forehead is lower. These changes give the 48 inch doll an "older" look than the 20 inch doll. Finally, the bow, or sash, which was included on the back of the waistband of the 20 inch doll was omitted from the 48 inch product.

All in all, the Well-Made 48 inch rag doll is an attractive, perky looking four foot companion for a preteen child, while the 20 inch is sweet and cuddlesome, small enough to be snuggled up to by a toddler.

Well-Made did not file a copyright application for registration of the 48 inch doll.

C. Huggable-Lovable

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 its price.

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 infringing version.

IV. Law

A. Jurisdiction

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][1] 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 ยง ...

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