Dam Things from Denmark v. Russ Berrie & Co.

Decision Date03 December 2001
Docket NumberNo. CIV.A. 01-4008(NHP).,CIV.A. 01-4008(NHP).
Citation173 F.Supp.2d 277
CourtU.S. District Court — District of New Jersey
PartiesDAM THINGS FROM DENMARK, v. RUSS BERRIE & CO., INC.

Peter L. Skolnik, Lowenstein Sandler PC, Roseland, NJ, Robert L. Sherman, Romy Berk, Paul, Hastings, Janofsky & Walker LLP, New York City, for Plaintiff.

Trent S. Dickey, Sills Cummis Radin Tischman, Epstein & Gross PC, Newark, NJ, for Defendant.

POLITAN, District Judge.

This matter comes before the Court on an application for a preliminary injunction by Plaintiff, Dam Things from Denmark a/k/a Troll Company ApS ("Plaintiff" or "Dam"). Plaintiff brought this action by way of an Order to Show Cause filed on August 22, 2001. Plaintiff seeks to enjoin Defendant, Russ Berrie & Company, Inc. ("Defendant" or "Russ") from infringing its copyrights, importing infringing troll dolls, continuing to represent itself as the "original" troll doll creator, and maintaining its copyright registrations. Oral argument was heard on October 29, 2001. In addition, the parties have submitted a plethora1 of memoranda in connection with the present application. This Court has subject matter jurisdiction over this matter pursuant to 28 U.S.C. §§ 1331, 1332, 1338, and 1367.

STATEMENT OF FACTS

In 1957 and 1958, Thomas Dam, a citizen and resident of Denmark, created a sculpture from clay. He used this sculpture to form a plastic mold and, using the mold, created a doll made out of rubber. He called his creation a troll. See Pl.Ex. 1. Mr. Dam gave this troll to his daughter Lajla as a gift, however, people in Mr. Dam's small town of Gjol took notice. Realizing the public interest in his troll doll, Mr. Dam, with the help of family members, began to produce what he termed "Good Luck Troll" dolls in larger quantity for sale to the public. He produced these trolls in a small factory inside of the Dam family home.

Dam's troll designs were copyrighted in Denmark pursuant to Danish copyright law. The Good Luck Trolls were sold throughout Denmark, and sales quickly spread to Norway and Sweden by 1961. In that year, the material used to make the trolls was changed from rubber to PVC, a type of plastic. See Niels Dam Decl., ¶ 4, Ex. D. Also at that time, production of the Dam trolls began in the United Kingdom. Id. Moreover, the Dam trolls entered the United States market for sale that year as well. Id. In 1962, Thomas Dam formed the company Dam Things Establishment which has been succeeded by Plaintiff company. Id., ¶ 6.

In the early 1960's, Plaintiff obtained U.S. copyright registrations for its Good Luck Trolls which were being sold in the U.S. These copyright registrations were invalidated, however, as a result of a declaratory judgment action brought against Dam. See Scandia House Enterprises, Inc. v. Dam Things Establishment, 243 F.Supp. 450 (D.D.C.1965). Scandia House, a distributor of Dam's trolls at the time, sought a declaratory judgment from the D.C. district court that Dam's U.S. copyrights were invalid.

The Scandia House Court found that Dam's troll designs then in circulation in the U.S. were indeed invalid because Dam had failed to comply with a formality required by the copyright laws in effect at that time. Id. at 455. Specifically, Plaintiff's troll products failed to provide proper notice of its copyright. The word "Denmark" instead of the name "Dam" was imprinted on the foot of some of the troll dolls; this designation was held insufficient to provide proper notice. Id.

The D.C. district court thus declared Dam's troll dolls, sold in the U.S. in 1961 and 1962, to be in the U.S. public domain, and concluded that "[n]o copyright can subsist in Dolls in the public domain." Id. at 454-55.

In 1966, Thomas Dam assigned all of his copyrights in Good Luck Troll designs to his company Dam Things Establishment. Niels Dam Decl., ¶ 6.2 Dam Things Establishment was succeeded by Thomas Dam Design and Copyrights AG, which company was then merged into Troll Company ApS in 1993. After Thomas Dam's death in 1989, his children, Niels and Lajla Dam entered into an agreement which confirmed that Troll Company ApS held the exclusive rights to all Good Luck Troll designs. Niels Dam Decl., ¶¶ 7-8.

In 1964, prior to the Scandia House decision, Russell Berrie, currently the president of Defendant company, sold Dam troll dolls for a company called Royalty Design. See Berrie Cert., ¶ 4. Royalty Design imported Dam's trolls and sold them in the U.S. pursuant to a licensing agreement with Dam. In 1967, after Dam's trolls were declared to be in the public domain in the U.S., Russell Berrie left Royalty Design and began selling troll dolls (which he had purchased from Royalty Design) on his own. Berrie Cert., ¶ 5. In or about 1974, Russell Berrie, through his company Russ, purchased molds from Royalty Design and began to produce and sell troll dolls under the Defendant company's name. Over the years, Russ, along with other toy companies, has made troll dolls and sold them periodically in the U.S. market. Russ's trolls have always looked very similar to the original Dam trolls. There is no question that, at least until 1996, Russ was not violating U.S. copyright law by producing these trolls.

In 1996, pursuant to the Uruguay Round Agreements Act, Congress enacted 17 U.S.C. § 104A, which provides that owners of copyrights which were lost to the United States public domain because of a failure to comply with a formality in U.S. copyright law previously in effect, are entitled to restoration of lost copyrights in certain instances.3 § 104A is known as the restoration provision and generally provides "that where foreign works may have fallen into the public domain in the United States because of their failure to comply with U.S. statutory formalities (such as publication without notice), the copyright is automatically restored as of January 1, 1996." Toho Co. Ltd. v. William Morrow & Co., Inc., 33 F.Supp.2d 1206, 1216 (C.D.Cal.1998); 17 U.S.C. § 104A(h)(6)(C)(i). § 104A(b) "awards ownership of a restored work to `the author or initial rightholder of the work as determined by the law of the source country of the work.'" Films By Jove, Inc. v. Berov, 154 F.Supp.2d 432, 448 (E.D.N.Y. 2001). There are other requirements for restoration which will be discussed herein.

In the present action, Plaintiff claims that its copyrights which were lost to the public domain in or about 1965 were restored on January 1, 1996 pursuant to § 104A. Plaintiff further claims that Defendant infringes or is threatening to infringe its restored copyrights. Plaintiff relies on nineteen different models of Dam's Good Luck Troll designs.4 See Compl., ¶ 13; Aug. 18, 2001 Ostergaard Decl., Ex. A.

DISCUSSION
Standard for Issuance of Preliminary Injunction

In determining whether to issue a preliminary injunction, courts generally must consider: "(1) whether the movant has shown a reasonable probability of success on the merits; (2) whether the movant will be irreparably injured by denial of the relief; (3) whether granting preliminary relief will result in even greater harm to the nonmoving party; and (4) whether granting the preliminary relief will be in the public interest." Doe v. National Board of Medical Examiners, 199 F.3d 146, 154 (3d Cir.1999) (quoting American Civil Liberties Union of New Jersey v. Black Horse Pike Regional Bd. of Educ., 84 F.3d 1471, 1477 n. 2 (3d Cir.1996) (en banc)); Allegheny Energy, Inc. v. DQE, Inc., 171 F.3d 153, 158 (3d Cir.1999).

"[T]he grant of injunctive relief is an extraordinary remedy ... which should be granted only in limited circumstances." Frank's GMC Truck Ctr., Inc. v. General Motors Corp., 847 F.2d 100, 102 (3d Cir.1988)(citing United States v. City of Philadelphia, 644 F.2d 187, 191 n. 1 (3d Cir.1980)); see also Falter v. Veterans Admin., 632 F.Supp. 196, 201 (D.N.J. 1986)(quotes omitted)(stating that "[t]here is no power the exercise of which is more delicate, which requires greater caution, deliberation, and sound discretion, or more dangerous in a doubtful case, than the issuing [of] an injunction"). Furthermore, an injunction should issue only if the plaintiff produces evidence sufficient to convince the court that all four factors listed above favor preliminary relief. See Opticians Ass'n of Am. v. Independent Opticians of Am., 920 F.2d 187, 192 (3d Cir. 1990).

The primary purpose of a preliminary injunction is to preserve the status quo. See Arthur Treacher's Franchisee Litig., 689 F.2d 1137, 1150 (3d Cir.1982). Moreover, a preliminary injunction may only be issued when there are no disputed issues of material fact. See Apollo Technologies, Corp. v. Centrosphere Industrial Corp., 805 F.Supp. 1157, 1191 (D.N.J. 1992).

In copyright actions, courts employ the same four-part analysis described above, but if a plaintiff is able to first demonstrate a reasonable likelihood of success on the merits of its claim, irreparable harm is presumed, and a balancing of the parties' respective interests is unnecessary. See Apple Computer, Inc., 714 F.2d at 1254.

1. REASONABLE PROBABILITY OF SUCCESS ON THE MERITS

For the Court to grant injunctive relief in the case at bar, Dam must make a preliminary showing that it is reasonably likely to prevail on the merits of its claim(s). To determine likelihood of success on the merits here, this Court must decide whether Plaintiff has made out a prima facie case of copyright restoration and copyright infringement. Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240, 1254 (3d Cir.1983).

The Copyright Act specifically authorizes courts to grant injunctions in order to prevent or restrain copyright infringement. 17 U.S.C. § 502. To obtain a preliminary injunction, Plaintiff must demonstrate that its copyrights were restored pursuant to § 104A and that Defendant infringes or is threatening to infringe those restored copyrights. § 504.

To continue reading

Request your trial
3 cases
  • Lego A/S v. Best-Lock Constr. Toys, Inc.
    • United States
    • U.S. District Court — District of Connecticut
    • July 25, 2019
    ...the registrability of a claim in an original work o pictorial, graphic, or sculptural authorship."); Dam Things from Denmark v. Russ Berrie & Co. , 173 F. Supp. 2d 277, 284 (D.N.J. 2001) ("This Court is convinced that the election doctrine, with respect to [choosing between] copyright and d......
  • Dam Things from Denmark v. Russ Berrie & Co. Inc.
    • United States
    • United States Courts of Appeals. United States Court of Appeals (3rd Circuit)
    • May 14, 2002
    ...as Denmark. Dam Things has held and continues to hold a valid Danish copyright in the trolls. Dam Things from Denmark v. Russ Berrie & Co., 173 F.Supp.2d 277, 284 (D.N.J.2001). In 1965, the District Court for the District of Columbia held that the Dam Things' trolls submitted for patent and......
  • Troll Co. v. Uneeda Doll Co.
    • United States
    • United States Courts of Appeals. United States Court of Appeals (2nd Circuit)
    • April 13, 2007
    ...Internacionales, S.A. v. Harriscope of Los Angeles, Inc., 302 F.Supp.2d 1131, 1137 (C.D.Cal.2004); Dam Things from Denmark v. Russ Berrie & Co., 173 F.Supp.2d 277, 285 n. 9 (D.N.J. 2001), rev'd on other grounds, 290 F.3d 548 (3d An owner of a restored copyright may not enforce its copyright......

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT