Wildlife Exp. Corp. v. Carol Wright Sales, Inc.

• Decision Date: 11 March 1994
• Docket Number: No. 92-3274,92-3274
• Citation: 18 F.3d 502
• Parties: 1994 Copr.L.Dec. P 27,230, 30 U.S.P.Q.2d 1140 WILDLIFE EXPRESS CORPORATION, Plaintiff-Appellee, v. CAROL WRIGHT SALES, INCORPORATED, Defendant-Appellant.
• Court: U.S. Court of Appeals — Seventh Circuit

Page 502

18 F.3d 502

1994 Copr.L.Dec. P 27,230, 30 U.S.P.Q.2d 1140

WILDLIFE EXPRESS CORPORATION, Plaintiff-Appellee, v. CAROL WRIGHT SALES, INCORPORATED, Defendant-Appellant.

No. 92-3274.

United States Court of Appeals,

Seventh Circuit.

Argued Oct. 29, 1993.

Decided March 11, 1994.

P. Gregory Cross (argued), Mark R. McKinney, Cross, Marshall, Schuck, Deweese, Cross & Feick, Muncie, IN, for plaintiff-appellee.

James D. Zalewa (argued), Mark J. Liss, Leydig, Voit & Mayer, Chicago, IL, for defendant-appellant.

Before RIPPLE, KANNE and ROVNER, Circuit Judges.

RIPPLE, Circuit Judge.

Wildlife Express Corporation ("Wildlife") brought an action against Carol Wright Sales, Inc. ("Carol Wright") to recover damages for infringement of various copyrighted animal-styled children's duffle bags. The magistrate judge, sitting with the consent of the parties as the district court, found that Carol Wright had infringed, willfully or with reckless disregard, Wildlife's copyrights of the sculptured bear, duck and elephant duffle bags and awarded statutory damages in the amount of $50,000 per copyright infringement. Carol Wright appeals. For the reasons discussed in the following opinion, we affirm the judgment of the district court.

I BACKGROUND

A. Facts

Wildlife is an Indiana corporation that manufactures and sells children's duffle bags with soft sculpture animal heads and tails on the ends of cylindrical bags called "roll bags." The plush heads and tails were made to resemble bears, pandas, ducks and elephants. Wildlife named its bags "Critters in a Carrier" and obtained registered copyrights of the soft sculptures on the bags. Defendant Carol Wright, a Delaware corporation, is a mail-order retailer that purchases products from domestic and foreign suppliers and offers them for sale through catalog mailings. It marketed four duffle bags with plush heads and tails, in the forms of a bear, panda, duck and elephant, under the name "Precious Pet Duffle Bags."

Wildlife exhibited its Critters in a Carrier at the 1986 American International Toy Fair in New York City. An exhibitor from Taiwan, Jackson Lin, carefully examined the bags for approximately fifteen minutes, to the concern of Wildlife. In fact, after Mr. Lin offered to manufacture the Critters, Wildlife's president Stephen Janney escorted Mr. Lin away from his booth. Months later, in the fall of that year, Carol Wright's chief executive officer, Robert Ginsberg, visited Mr. Lin's showroom in Taiwan. Following that visit, Carol Wright's senior buyer made arrangements to market Precious Pet Duffles, which were made by Dior Merchandising, one of Mr. Lin's companies. Carol Wright offered the Precious Pet Duffles for sale in 1987. Wildlife became aware of the In October 1988, Carol Wright received a Notice of Redelivery from the United States Customs Service. It stated that Carol Wright's panda duffle bags infringed a copyright registered and owned by Wildlife. The next month the Customs Service cancelled the notice because Wildlife did not post the bond required to contest Carol Wright's shipment as violative of its copyright. The Customs Service wrote across the original notice "cancelled 11/3/88 panda dissimilar from copyright registration of Wildlife Express. [signed] D.E. Daniels." In February 1989, however, Wildlife asserted a claim of copyright infringement against Carol Wright. Carol Wright denied the claim but offered to discontinue selling the bags when it had depleted its present inventory. In September 1989, Wildlife filed suit.

duffles in May 1987, when the company received the Carol Wright catalog.

B. Procedural History

Noting the methodology set out by this court in Atari, Inc. v. North American Philips Consumer Elecs. Corp., 672 F.2d 607 (7th Cir.), cert. denied, 459 U.S. 880, 103 S.Ct. 176, 74 L.Ed.2d 145 (1982), the district court acknowledged that, in order to establish copyright infringement, the plaintiff must prove that he owns a valid copyright and that the defendant copied his work. With respect to the first factor, the court concluded that Wildlife owns valid copyright registrations for the bear, duck and elephant, and that they are the proper subjects of a copyright as sculptural works because the head and tail of the duffle bag are separately identifiable from the utilitarian duffle.

Considering the second factor, the district court determined that Carol Wright had access and therefore the opportunity to copy the copyrighted work. With respect to the issue of substantial similarity, the fact of copying was established, in the court's view, by a comparison and dissection of the products. The court relied substantially on the virtual identity of the disassembled pattern pieces that make up each of the animal faces and tails in the Critters and Precious Pets. In determining that the copying resulted in an improper appropriation, the court held that an "ordinary observer" comparing these two expressions of the duffle bags would regard their "aesthetic appeal" as identical and would conclude that Carol Wright unlawfully appropriated Wildlife's work and infringed on its copyrights.

Turning to damages, the district court found the plaintiff's actual damages too speculative to award, but then awarded enhanced statutory damages by finding that Carol Wright's infringement was willful. The court determined that Carol Wright, by choosing not to inquire into the proprietary status of merchandise purchased abroad, accepted the risk of infringement. Once Carol Wright had received the Customs notice, "it was no longer reasonable to sit back secure in its belief that its panda did not infringe Plaintiff's panda." R.501 at 11. The court found Carol Wright's failure to conduct a check on copyrights to be reckless disregard, and its continued sales after Wildlife's letter and subsequent suit claiming infringement to be willful infringement. It set damages at $50,000 for each of the three copyright infringements.

II DISCUSSION

Carol Wright challenges the district court's determinations that there was substantial similarity between its Precious Pet Duffle bags and Wildlife's Critters bags, and that Carol Wright infringed Wildlife's copyrights willfully or with reckless disregard of their existence. We shall examine each argument by reviewing the district court's findings of fact for clear error and its conclusions of law de novo. ¹ Fed.R.Civ.P. 52(a); Chi-Boy Music v. Charlie Club, Inc., 930 F.2d 1224, 1227 (7th Cir.1991) (applying "clearly erroneous" standard to findings of willfulness); Atari, 672 F.2d at 620 (holding that district court's conclusion on substantial similarity not clearly erroneous); see also Data East USA, Inc. v. Epyx, Inc., 862 F.2d 204, 206 (9th Cir.1988) (reviewing factual findings on substantial similarity for clear error); Whelan Assocs., Inc. v. Jaslow Dental Lab., Inc., 797 F.2d 1222, 1248 (3d Cir.1986), cert. denied, 479 U.S. 1031, 107 S.Ct. 877, 93 L.Ed.2d 831 (1987) (same).

A. Copyright Infringement

A plaintiff claiming copyright infringement must show both "(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original." Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 1296, 113 L.Ed.2d 358 (1991); see also 3 Melville B. Nimmer, Nimmer on Copyright Sec. 13.01[A], at 13-6 (1993).

1.

We turn first to the validity of the copyright. To receive a copyright, the work must be original. Feist, 499 U.S. at 361, 111 S.Ct. at 1296. A certificate of registration from the U.S. Register of Copyrights constitutes prima facie evidence of the validity of a copyright. 17 U.S.C. Sec. 410(c). Although that presumption may be rebutted, in this case Wildlife's ownership of the pertinent copyrights and the validity of those copyrights are not challenged. ²

In this case, protection is claimed for the animal heads and tails themselves, and for the way they are placed on the duffle bags, but not for the general idea of animal heads on duffle bags. ³ This claim is consistent with the Copyright Act. The primary objective of the Copyright Act, the promotion of the arts and sciences, "is accomplished by 'assur[ing] authors the right to their original expression,' but also by 'encourag[ing] others to build freely upon the ideas and information conveyed by a work.' " Erickson v. Trinity Theatre, Inc., 13 F.3d 1061, 1069 (7th Cir.1994) (quoting Feist, 499 U.S. at 349-50, 111 S.Ct. at 1290). In light of this goal the Copyright Act protects the expression of ideas, but exempts the ideas themselves from protection. 17 U.S.C. Sec. 102(b) (identity of ideas shown in two works does not give rise to infringement action); Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S 539, 547, 105 S.Ct. 2218, 2223-2224, 85 L.Ed.2d 588 (1985). ⁴ Consequently, we have held that, in a video game, for example, the original manner of expressing ideas is found in the "shapes, sizes, colors, sequences, arrangements and sounds." Atari, 672 F.2d at 617. In a life-size, realistic-looking concrete deer it is the features over which the manufacturer exercised discretion in its portrayal, aspects such as pose, posture, and facial expression. Concrete Mach. Co. v. Classic Lawn Ornaments, Inc., 843 F.2d 600, 607 (1st Cir.1988). When reproduction of a lifelike object is at issue, "a copyright holder must then prove substantial similarity to those few aspects of the work that are expression not required by the idea." Id. One court has found that the design of a jewelled bee pin provided nothing new to the idea of the pin; therefore, since copying the pin necessarily would entail copying the idea as well as the expression, copying the expression was not barred. Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738, 742 (9th Cir.1971). However, "[a]s a work embodies more in the way of particularized expression, it moves away from the bee pin in Kalpakian, and receives broader copyright protection."...