630 F.2d 905 (2nd Cir. 1980), 639, Durham Industries, Inc. v. Tomy Corp.

Docket Nº:639, Docket 79-7752.
Citation:630 F.2d 905
Party Name:185 DURHAM INDUSTRIES, INC., Plaintiff-Appellee, v. TOMY CORPORATION, Defendant-Appellant.
Case Date:September 02, 1980
Court:United States Courts of Appeals, Court of Appeals for the Second Circuit

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630 F.2d 905 (2nd Cir. 1980)


DURHAM INDUSTRIES, INC., Plaintiff-Appellee,


TOMY CORPORATION, Defendant-Appellant.

No. 639, Docket 79-7752.

United States Court of Appeals, Second Circuit

September 2, 1980

Argued March 27, 1980.

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[Copyrighted Material Omitted]

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Lewis H. Eslinger, New York City (Stuart A. White, James D. Fornari, Curtis, Morris & Safford, P. C., New York City, F. David LaRiviere, Carson, California, Mori & Ota, Los Angeles, Cal., of counsel), for defendant-appellant.

James M. Rhodes, Jr., New York City (John M. Calimafde, Michael Ebert, Hopgood, Calimafde, Kalil, Blaustein & Lieberman, New York City, of counsel), for plaintiff-appellee.

Before FRIENDLY and MESKILL, Circuit Judges, and THOMSEN, [*] District Judge.

MESKILL, Circuit Judge:

Appellant Tomy Corporation and appellee Durham Industries, Inc. are American companies engaged in the manufacture and sale of toys. In January of 1979, counsel for Tomy accused Durham of systematically copying certain Tomy toys and threatened to take legal action if the matter was not immediately resolved by other means. Evidently believing that the best defense is a good offense, in February of 1979 Durham filed an action against Tomy in the United States District Court for the Southern District of New York seeking a declaratory judgment to the effect that in marketing its line of toys Durham had violated no legal rights of Tomy. In response, Tomy asserted nine counterclaims against Durham: eight counterclaims alleging copyright infringement in regard to eight specified toys 1 and the ninth counterclaim alleging

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unfair competition under both the Lanham Act, 15 U.S.C. § 1125(a), and state law, in regard to the same eight Tomy products.

After some preliminary skirmishing between the parties, 2 Durham moved for and was granted summary judgment dismissing all nine counterclaims. Viewing the dismissal of Tomy's counterclaims as a de facto and satisfactory resolution of the entire controversy, Durham voluntarily dismissed its declaratory judgment action. Claiming that the dismissal of its counterclaims was erroneous, Tomy has appealed.

For purposes of discussion the eight pairs of toys involved in this case may be grouped into two categories: the Disney figures, of which there are three pairs, and the miscellaneous toys, of which there are five pairs. In analyzing the Disney figure counterclaims we have focused on the threshold issue of copyright validity; our analysis of the counterclaims involving the miscellaneous toys centers on the very different issue of copyright infringement.


Tomy claims to hold copyrights on three wind-up plastic figures, each about three inches in height and each capable of locomotion, which are instantly recognizable as the Disney characters Mickey Mouse, Donald Duck and Pluto Dog. Durham has manufactured and distributed virtually indistinguishable versions of these three Disney figures, and Durham concedes that in making these toys it used Tomy's Disney figures as models. Tomy asserts that Durham has thereby infringed upon Tomy's exclusive right to copy its own creations.

Before asking a court to consider the question of infringement, a party must demonstrate the existence and the validity of its copyright, for in the absence of copyright (or patent, trademark, or state law) protection, even original creations are in the public domain and may be freely copied. Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 84 S.Ct. 784, 11 L.Ed.2d 661 (1964); Compco Corp. v. Day-Brite Lighting, Inc., 376 U.S. 234, 84 S.Ct. 779, 11 L.Ed.2d 669 (1964); see also Goldstein v. California, 412 U.S. 546, 93 S.Ct. 2303, 37 L.Ed.2d 163 (1973). In many cases, the existence of a valid copyright can be established by the introduction into evidence of a Copyright Office certificate of registration. Such a certificate, if timely obtained, "constitute(s) prima facie evidence of the validity of the copyright and of the facts stated in the certificate." 17 U.S.C. § 410(c) (Copyright Act of 1976); cf. Novelty Textile Mills, Inc. v. Joan Fabrics Corp., 558 F.2d 1090, 1092 n.1 (2d Cir. 1977) (certificate given same effect under 1909 Copyright Act); see 3 M. Nimmer on Copyright § 12.11 (1980) ("Nimmer"). It is clear, however, that a certificate of registration creates no irrebuttable presumption of copyright validity. Where other evidence in the record casts doubt on the question, validity will not be assumed.

In the instant case, the evidence that raises-and we think necessitates an adverse determination of-the issue of the validity of Tomy's copyrights on its three Disney figures is the mute testimony of Mickey, Donald and Pluto themselves. One look at Tomy's figures reveals that, in each, the element of originality that is necessary to

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support a valid copyright is totally lacking. For half a century or so Disney's characters have peered at us from movie screens, comic books, television sets, posters, clothing, watches, dolls, and a variety of other media, and it would be safe to say that they have a recognition factor that any politician or celebrity would envy. See Sid & Marty Krofft Television Productions, Inc. v. McDonald's Corp., 562 F.2d 1157, 1171 (9th Cir. 1977) (Mickey Mouse recognized worldwide); Walt Disney Productions v. Air Pirates, 345 F.Supp. 108 (N.D.Cal.1972) (Disney characters instantly recognizable), aff'd in part, 581 F.2d 751 (9th Cir. 1978), cert. denied, 439 U.S. 1132, 99 S.Ct. 1054, 59 L.Ed.2d 94 (1979). The three Tomy figures are instantly identifiable as embodiments of the Disney characters in yet another form: Mickey, Donald and Pluto are now represented as small, plastic, wind-up toys. 3

Neither party contests the fact that Walt Disney created the three characters at issue. Tomy acknowledges Disney's ownership of copyrights on these characters 4 and concedes that without a license from Disney Tomy's publication of its Disney figures would constitute infringement. That Tomy's creations are derivative works 5 is in itself, of course, no bar to copyrightability. Derivative works are explicitly included in the subject matter of copyright as defined by the Copyright Act. 17 U.S.C. § 103. But this principle is subject to two important and related limitations. First, to support a copyright the original aspects of a derivative work must be more than trivial. Second, the scope of protection afforded a derivative work must reflect the degree to which it relies on preexisting material and must not in any way affect the scope of any copyright protection in that preexisting material. 6 Thus the only aspects of Tomy's Disney figures entitled to copyright protection are the non-trivial, original features, if any, contributed by the author or creator of these derivative works.

In L. Batlin & Son, Inc. v. Snyder, 536 F.2d 486 (2d Cir.) (en banc), cert. denied, 429 U.S. 857, 97 S.Ct. 156, 50 L.Ed.2d 135 (1976), we discussed at length the concepts of originality and triviality as they applied to a derivative work based on an article in the public domain. In that case, we held appellant's plastic Uncle Sam bank, a derivative work based on similar banks in the public domain, insufficiently original to support a copyright. Although in the instant case the preexisting works are themselves the subjects of copyrights and are therefore not in the public domain, the standard announced in Batlin by which the copyrightability of a derivative work is to be determined is fully applicable. 7

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The analysis in Batlin started from the premise that " 'the one pervading element prerequisite to copyright protection regardless of the form of the work' is the requirement of originality-that the work be the original product of the claimant." Id. at 489-90 (quoting § 10 of 1975 edition of Nimmer; see 1 Nimmer § 2.01 at 2-5). At least since Chamberlin v. Uris Sales Corp., 150 F.2d 512 (2d Cir. 1945), we have interpreted this requirement-which is rooted in the Constitution-to mean that to be copyrightable a work must "contain () some substantial, not merely trivial, originality . . . ." Id. at 513.

Although novelty, uniqueness and ingenuity are not required, independent creation is. Batlin, 536 F.2d at 490. Accord, Donald v. Zack Meyer's T.V. Sales and Service, 426 F.2d 1027, 1029-30 (5th Cir. 1970), cert. denied, 400 U.S. 992, 91 S.Ct. 459, 27 L.Ed.2d 441 (1971). Independent creation, in turn, means that a work must not consist of actual copying. Batlin, 536 F.2d at 490, citing Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99, 102-03 (2d Cir. 1951). This test of originality, which has been aptly characterized as "modest," "minimal," and as establishing a "low threshold," is the sine qua non of copyrightability. Batlin, 536 F.2d at 490, citing Herbert Rosenthal Jewelry Corp. v. Grossbardt, 436 F.2d 315, 316 (2d Cir. 1970), and Nimmer; see Puddu v. Buonamici Statuary, Inc., 450 F.2d 401, 402 (2d Cir. 1971) ("modest"); Thomas Wilson & Co. v. Irving J. Dorfman Co., 433 F.2d 409, 411 (2d Cir. 1970), cert. denied, 401 U.S. 977, 91 S.Ct. 1200, 28 L.Ed.2d 326 (1971) ("modest at best"); Millworth Converting Corp. v. Slifka, 276 F.2d 443, 445 (2d Cir. 1960) ("modest"); see also Dan Kasoff, Inc. v. Novelty Jewelry Co., 309 F.2d 745, 746 (2d Cir. 1962) ("faint trace" of originality required).

Particularly important for decision of the case before us is the explicit rejection in Batlin of the contention that the originality requirement of copyrightability can be satisfied by the mere reproduction of a work of art in a different medium, or by the demonstration of some "physical" as opposed to "artistic" skill. Batlin, 536 F.2d at 491, declining to follow contrary holding in Doran v. Sunset House Distributing Corp., 197...

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