The opinion of the court was delivered by: ROBERT SWEET, Senior District Judge
Defendants Chrisha Creations Limited ("Chrisha") and Quay
Richerson ("Richerson") have moved to dismiss the complaint of
plaintiff Gemmy Industries Corporation ("Gemmy") pursuant to Fed.
R. Civ. P. 12(b)(6), and for summary judgment dismissing the
Gemmy complaint pursuant to Fed.R.Civ.P. 56. For the reasons
set forth below, the motion is granted.
Gemmy commenced this action in the United States District Court
for the District of Kansas on October 21, 2003, by filing its
complaint followed by the First Amended Complaint on November 17,
2003, alleging nine causes of action: copyright infringement,
unfair competition, violation of the Uniform Trade Secrets Act,
violation of fiduciary duty, breach of implied contract, patent
infringement, injunction and attorneys' fees, arising out of the
defendants' sale of self-inflating outdoor decorations (the
"Kansas action"). Chrisha filed its complaint seeking injunctive
relief against Gemmy in this Court on November 12, 2003 (the "New
York action"). On January 28, 2004, the Honorable John W.
Lungstrum, Chief Judge, transferred the Kansas action to this
Court and on March 5, 2004, the New York action and the Kansas
action were consolidated under the caption of the Kansas action
(the "consolidated action"). Gemmy in the Kansas action moved for a preliminary injunction
and Chrisha and Richerson moved to dismiss and for transfer and
for summary judgment. Motion practice and discovery ensued. Gemmy
discontinued its action against Alsto.
On February 11, 2004, a hearing was held on Chrisha's motion.
Additional materials were submitted on February 27, 2004, March
15, 2004, and April 9, 2004.
The following facts are established by the Chrisha Statement of
Undisputed Material Facts, the affidavits and depositions
submitted, and are undisputed except as noted below.
Gemmy is a Texas corporation with its principal place of
business in Irving, Texas, and sells self-inflating outdoor
decorations among other products for 20 years. Chrisha is a Rhode
Island corporation with its principal place of business in
Greenville, Rhode Island, and has been selling toys, holiday and
seasonal accessories, decorations and costumes for 17 years.
Richerson is a resident of Sisters, Oregon and president of LSA
of Oregon, Inc. and has been an independent sales representative
for Chrisha since 1988, and acted in a similar capacity for Gemmy
in 1999 until the fall of 2003. Gemmy and Chrisha sell their products to retailers or
distributors who in turn sell the products to the consumer.
In August 2000, Gemmy began developing a prototype for a new
product, a line of inflatable outdoor decorations. The initial
prototype was inflated by a hair dryer through a long tube. In
October 2000, Gemmy showed the prototype at a meeting for
approximately thirty representatives of retailers. Some of those
representatives requested and were provided with quote sheets.
The quote sheet provided specifications on the prototype,
including an estimated price for the produce, measurements, and
sometimes weights. No sales orders for the prototype were taken
or provided at that time.
In January 2001, the prototype was altered in that the hair
dryer was replaced with a box fan that inflated the prototype
through a long tube.
The first airblown inflatable figures were shipped in May 2001.
Each airblown inflatable is made up of a base containing a fan
unit, an inflatable body attached to the base, and a string of
enclosed lights extending through the inflatable body.
Gemmy obtained Copyright Registration No. VA 1-151-537 for the
airblown stationary Santa with Ho Ho Ho on November 12, 2002,
Copyright Registration No. VA 1-103-387 for the airblown stationary Snowman on May 2, 2001, and Copyright Registration No.
VA 1-103-392 for the Airblown Stationary Pumpkin-Vertical on May
2, 2001, and Copyright Registration No. VA 1-199-889 for the
Airblown Polar Bear on March 13, 2003.
Gemmy's airblown inflatables are sold in distinctive boxes. The
shape and die cut of Gemmy's distinctive boxes is accurately
depicted in Exhibits G and H. Exhibit G depicts the inside of
Gemmy's box and Exhibit H depicts the outside of Gemmy's box.
An employee of Gemmy took pictures of Chrisha's box. Exhibit I
depicts the inside of Chrisha's box and Exhibit J depicts the
outside of Chrisha's box. These photographs are true and accurate
representations of the actual box in which Chrisha's inflatable
figures are sold.
Tsai Chin-Cheng filed for a patent on January 9, 2002 and
obtained United States Patent 6,644,843 entitled Inflatable
Figure Assembly (the "'843 Patent"). The `843 Patent issued on
November 11, 2003 and is directed generally to the products
described herein as Gemmy's airblown products. Exhibit K is a
true and correct copy of the '843 Patent. The '843 Patent was assigned to Gemmy on January 21, 2003. Tsai
Chin-Cheng is the true and correct inventor of the invention
claimed in the '843 Patent.
In the spring of 2000, Richerson began representing Gemmy by
making sales primarily to Fred Meyer and Kroger retailers and had
access to Gemmy's airblown inflatable product line.
Daniel G. Flaherty, the president of Gemmy ("Flaherty") has
claimed that the information obtained by Richerson was
confidential. Richerson has denied any confidentiality, and no
document setting forth any confidentiality agreement has been
Chrisha did not at any time copy the construction of any Gemmy
product. William Machala, the president of Chrisha ("Machala")
initiated the construction and design of Chrisha's inflatable
products in 2001 and commissioned what became the first
construction of a Chrisha prototype inflatable product. He
instructed Shirley Lin, vice general manager at Shanghai Toy Art
requesting that Toy Art create a snowman design for Chrisha's
inflatable snowman product based on the design of a plush toy
snowman that Chrisha has been selling since 2000.
Chrisha's Santa, Snowman and Pumpkin inflatable designs were
independently created by and for Chrisha by Great Success Toys and Shanghai Toy Art located in China ("Toy Art"). Chrisha has
been selling these inflatable products that were independently
created for Chrisha since approximately 2002.
Gemmy's copyright registrations pertaining to its Snowman,
Pumpkin and Santa Clause inflatable body designs are annexed to
its complaints. The copyright certificates do not indicate that
Gemmy's works are derivative works or the specific aspects or
elements of expressions contained within the "three dimensional
sculptures" for which copyright is sought.
Chrisha's Snowman Inflatable Design
Chrisha's design for its inflatable Snowman placed at issue in
this action by Gemmy was independently created for Chrisha by Toy
Art pursuant to Machala's instructions.
The Gemmy and Chrisha Snowmen possess certain stereotypical
attributes: black eyes, smiling faces, rosy cheeks. Chrisha's
Snowman has a three dimensional face with a long pointed carrot
nose, and eyes like coal. The Gemmy Snowman face is printed onto
the fabric and is not three dimensional. The Chrisha Snowman is
wearing a tall black top hat with a red ribbon. The Gemmy Snowman
is wearing a short-cropped hat that looks like a derby, and is
carrying a rather large inflatable candy cane. The Chrisha
Snowman wears a long red and white striped scarf, while the Gemmy Snowman
wears a shorter green and red striped scarf.
The Chrisha Snowman's mouth is three dimensional in the form of
an open lipped smile with lips open approximately one inch. The
Gemmy Snowman has a single line as a smile depicting a closed
mouth and its body design is the three round snow balls, each
becoming smaller approaching the head. The Chrisha Snowman's body
has no clear delineation or reference to three snow balls. Both
Snowmen are wearing gloves, but the Chrisha Snowman's gloves are
green with cuffs, and Gemmy's Snowman's gloves are blue with no
No evidence has been presented to establish that Chrisha had
access to the Gemmy Snowman.
Machala prepared a sketch for Toy Art to create the Chrisha
three stack pumpkin inflatable product indicating that each
pumpkin face in the three stack pumpkin inflatable product should
look different, that a stem should be placed on the top ...