Well-Made Toy Mfg. v. Goffa Intern. Corp.

Citation354 F.3d 112
Decision Date02 December 2003
Docket NumberDocket No. 02-7881.
PartiesWELL-MADE TOY MFG. CORP., a corporation of the State of New York, Plaintiff-Counter-Defendant-Appellant, v. GOFFA INTERNATIONAL CORP., a corporation of the State of New York, King Kullen Grocery Co., Inc., Defendants-Counter-Claimants-Appellees.
CourtUnited States Courts of Appeals. United States Court of Appeals (2nd Circuit)

Gerard F. Dunne, Law Office of Gerard F. Dunne, Esq., New York, NY, for Plaintiff-Counter-Defendant-Appellant.

William A. Alper, Cohen, Pontani, Lieberman & Pavane (Martin B. Pavane and Catriona M. Collins, of counsel), New York, NY, for Defendants-Counter-Claimants-Appellees.

Before: CALABRESI and SACK, Circuit Judges, and GARAUFIS, District Judge.*

SACK, Circuit Judge.

This is an appeal from a judgment on a copyright infringement claim rendered by the United States District Court for the Eastern District of New York (Jack B. Weinstein, Judge) in favor of the defendants-counter-claimants-appellees Goffa International Corporation ("Goffa") and King Kullen Grocery Co., Inc., ("King Kullen"). The plaintiff-appellant Well-Made Toy Mfg. Corp. ("Well-Made") asserts that a rag doll manufactured by Goffa and sold at retail by King Kullen infringed the copyright for two rag dolls designed and manufactured by Well-Made. Well-Made's dolls seem similar to one another, although they are of significantly different sizes. Well-Made's larger 48-inch doll was a derivative work based upon its smaller 20-inch doll. Well-Made had registered its copyright in the 20-inch doll but not in the larger, derivative one.

Following a bench trial, the district court decided that Goffa's rag doll was not substantially similar to Well-Made's registered, 20-inch doll. The district court also concluded that because the copyright in the later, 48-inch doll had not been registered, the court lacked subject matter jurisdiction to consider whether the copyright in that doll had been infringed by Goffa's doll. See 17 U.S.C. § 411(a) (prohibiting an "action for infringement of the copyright in any ... work ... until registration of the copyright claim has been made in accordance with this title.").

On appeal, Well-Made does not contest the district court's finding that Goffa's doll is not substantially similar to Well-Made's 20-inch doll. Well-Made argues instead that registration of the copyright claim in the 20-inch doll creates subject matter jurisdiction over infringement claims with respect to its 48-inch derivative of the 20-inch doll, which Well-Made claims is infringed by Goffa's doll. Well-Made also argues that its right to control the production of works derivative of the 20-inch Well-Made doll was infringed. Well-Made contends that if Goffa's doll is derivative of Well-Made's 48-inch doll, and if the 48-inch doll is itself derivative of the 20-inch doll, then the derivative's derivative — the Goffa doll — is transitively derivative of the 20-inch doll, irrespective of any substantial similarity, or lack thereof, between Well-Made's 20-inch doll and Goffa's 48-inch doll. For the reasons that follow, we reject both of Well-Made's arguments and affirm the judgment of the district court.

BACKGROUND

The facts underlying this appeal are set forth in comprehensive detail in the opinion of the district court. Well-Made Toy Mfg. Corp. v. Goffa Int'l Corp., 210 F.Supp.2d 147 (E.D.N.Y.2002). We discuss them here only to the extent necessary to explain our resolution of this appeal.

Well-Made manufactures and sells rag dolls with the name "Sweetie Mine." The first Sweetie Mine was a 20-inch doll, the copyright for which Well-Made registered in 1996. Two years later, Well-Made designed a 48-inch version. The 48-inch Sweetie Mine was created by enlarging the cloth patterns for the 20-inch Sweetie Mine on a photocopier, then adjusting the enlarged doll's proportions. Well-Made considered the adjustments, made according to the artistic judgment of Well-Made's designers, necessary to achieve aesthetic proportionality in the larger doll's features. Well-Made never registered a copyright in the 48-inch Sweetie Mine.

Also in 1998, Goffa began manufacturing a 48-inch rag doll called the "Huggable Lovable." The Huggable Lovable was sold through King Kullen stores. King Kullen is represented jointly with Goffa under an indemnification agreement between them.1

In 1999, Well-Made brought suit against Goffa and King Kullen in the United States District Court for the Eastern District of New York, alleging that the Huggable Lovable infringed Well-Made's copyrights in the 20- and 48-inch Sweetie Mines. At the conclusion of a bench trial, the district court found that Goffa had designed the Huggable Lovable by "actually cop[ying] large parts of" the 48-inch Sweetie Mine. Id. at 167. According to the court, however, the Huggable Lovable did not infringe Well-Made's copyright in the 20-inch Sweetie Mine, because of the difference between the sizes, proportions, facial features, fabrics, and colors of the two dolls. Id. at 167-72. The court also concluded that it lacked subject matter jurisdiction to consider whether Goffa's Huggable Lovable infringed Well-Made's copyright in the 48-inch Sweetie Mine, because there was no separate registration of any such copyright claim. Id. at 164-65, 172 (citing 17 U.S.C. § 411(a)).

On appeal, Well-Made argues that the district court was mistaken in not considering infringement of the 48-inch Sweetie Mine because, although there is no registered copyright for that doll, it is a derivative work based on the 20-inch Sweetie Mine, which is registered. Well-Made also contends that if the Huggable Lovable is derivative of the 48-inch Sweetie Mine, and the 48-inch Sweetie Mine is derivative of the 20-inch Sweetie Mine, then the Huggable Lovable violates Well-Made's exclusive right to prepare derivative works of its registered 20-inch doll under 17 U.S.C. § 106(2).

DISCUSSION
I. Standard of Review

On appeal from a bench trial, we review the district court's findings of fact for clear error and its conclusions of law de novo. Mobil Shipping & Transp. Co. v. Wonsild Liquid Carriers Ltd., 190 F.3d 64, 67 (2d Cir.1999). Mixed questions of law and fact are also reviewed de novo. White v. White Rose Food, 237 F.3d 174, 178 (2d Cir.2001).

II. Registration of an Underlying Work

Under 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." This registration requirement is jurisdictional. See Morris v. Business Concepts, Inc., 283 F.3d 502, 505 (2d Cir.2002); see also 2 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 7.16[B][1][a], at 7-155 (2002).

Well-Made never filed a separate copyright claim registration for the 48-inch Sweetie Mine, but contends that the district court should nonetheless have considered infringement of a copyright on the 48-inch Sweetie Mine. According to Well-Made, its registration of a copyright claim with respect to the 20-inch Sweetie Mine suffices. We disagree. Under section 411(a), registration of a claim on an original work does not create subject matter jurisdiction with respect to a suit for infringement of the original's unregistered derivative.

We addressed the mirror image of this issue in Streetwise Maps, Inc. v. VanDam, Inc., 159 F.3d 739 (2d Cir.1998). There, the plaintiff had published two Manhattan street maps, the later-published map differing from the earlier by the addition of subway and bus lines. No copyright claim had been registered for the earlier map. The later map had been registered, with the certificate of registration indicating that it was derivative of the earlier map and listing the subway and bus lines as the newly added expressive elements. The defendants argued that the district court lacked subject matter jurisdiction to hear claims alleging that any aspects of the maps other than the drawings of the subway and bus lines had been copied. We disagreed, holding that "because [the plaintiff] is the owner of the copyright of both the derivative and pre-existing work the registration certificate relating to the derivative work in this circumstance will suffice to permit it to maintain an action for infringement based on defendants' infringement of the pre-existing work." Id. at 747; cf. Morris v. Business Concepts, Inc., 259 F.3d 65, 68 (stating that under Streetwise Maps, "where the owner of a copyright for a collective work also owns the copyright for a constituent part of that work, registration of the collective work is sufficient to permit an infringement action under § 411(a) for the constituent part."), modified on reh'g, 283 F.3d 502 (2d Cir. 2002).

Well-Made contends that the converse proposition — that registration of a claim on a pre-existing work confers jurisdiction over infringement claims regarding its derivative works — is also true. We conclude otherwise.

Neither Streetwise Maps nor its logic governs Well-Made's claim. In Streetwise Maps, the registration statement listed the pre-existing work, the plaintiff was the...

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