684 F.2d 821 (11th Cir. 1982), 81-7214, Original Appalachian Artworks, Inc. v. Toy Loft, Inc.

Docket Nº:81-7214.
Citation:684 F.2d 821
Party Name:439 ORIGINAL APPALACHIAN ARTWORKS, INC., A Georgia Corporation, Plaintiff-Appellee, v. The TOY LOFT, INC., A Georgia Corporation; Lawson Enterprises Unlimited, Inc., A Georgia Corporation; and A. David Lawson, an individual, Defendants-Appellants.
Case Date:September 03, 1982
Court:United States Courts of Appeals, Court of Appeals for the Eleventh Circuit

Page 821

684 F.2d 821 (11th Cir. 1982)





The TOY LOFT, INC., A Georgia Corporation; Lawson

Enterprises Unlimited, Inc., A Georgia

Corporation; and A. David Lawson, an

individual, Defendants-Appellants.

No. 81-7214.

United States Court of Appeals, Eleventh Circuit

September 3, 1982

Page 822

Pitts & Kesterson, James C. Kesterson, Knoxville, Tenn., for defendants-appellants.

Deal, Birch, Orr & Jarrard, Stanley F. Birch, Jr., Gainesville, Ga., Newton, Hopkins & Ormsby, William H. Needle, L. Ray Patterson, School of Law, Emory University, Atlanta, Ga., for plaintiff-appellee.

Appeal from the United States District Court for the Northern District of Georgia.

Page 823

Before RONEY and KRAVITCH, Circuit Judges, and PITTMAN [*], District judge.

KRAVITCH, Circuit Judge:

The Toy Loft appeals from judgment of the district court, 489 F.Supp. 174, entered after a bench trial, granting Original Appalachian Artworks (OAA) damages for copyright infringement, injunctive relief against future copying and against infringement of trade dress, and $10,000 in attorneys' fees. The Toy Loft asserts that the trial court erred in finding that OAA had a valid copyright and that the Toy Loft had infringed both that copyright and OAA's distinctive "trade dress," and also erred in awarding attorneys' fees. For the reasons stated below, we affirm.

I. Background

Xavier Roberts president of plaintiff-appellee OAA, has an extensive background in art and soft sculpture. In 1976 and 1977 while employed as the manager of Unicoi State Park's craft shop, Roberts became acquainted with Martha Nelson, a local artist who made soft-sculpture dolls. Roberts bought several of Ms. Nelson's dolls for resale at the craft shop, but due to a subsequent dispute she refused to sell Roberts any additional dolls. As a result, in May 1977 Roberts and an artist friend, Debbie Morehead, began making and selling a soft-sculpture doll of their own. During the ten months between May, 1977 and January, 1978, Roberts sold approximately 80 soft-sculpture dolls of varying designs. Approximately half of these dolls contained no copyright notice; the other half had a notice on a tag pinned to the doll.

According to Roberts, he and Morehead were attempting to develop a distinctive soft-sculpture doll during this period, and by February 1978 they had produced what they considered to be an acceptable prototype for general sale. Roberts began producing and selling dolls based on this prototype, all of which carried some copyright notice. The early production dolls had a pinned-on notice which was later replaced with a sewn-in notice. Roberts incorporated OAA in the fall of 1978, and on June 1, 1979 obtained a copyright certificate for the dolls. 1

OAA's dolls, sold under the trade name "The Little People," have achieved considerable commercial success, in part due to a unique combination of marketing techniques. These techniques include treating the dolls as "babies" who are "adopted" rather than sold; providing the customer with a "birth certificate" and "Official Adoption Papers" which include an "oath of adoption" to be subscribed to by the buyer; individually naming each doll that is produced and communicating this fact by means of a name tag affixed to each doll's clothing; sending the buyer a birthday card for his "little person" on the first anniversary of the date of sale; and signing each doll's derriere "Xavier" while advertising that the dolls are a "limited signed edition."

Appellant David A. Lawson, owner of the Toy Loft, first became aware of OAA's products when he saw them displayed for sale at Hartsfield Airport in Atlanta in late 1978 or early 1979. The Toy Loft began selling the OAA dolls in May, 1979, after receiving an order of dolls and details of the marketing scheme. Subsequently, Lawson discovered that Martha Nelson had made soft-sculpture dolls prior to OAA, and apparently decided to reap some of the doll business for himself. In November, 1979, Lawson began selling dolls using marketing techniques similar to OAA's, including offering

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the dolls for "adoption," providing a "birth certificate," and signing the dolls' derrieres "Mama Stork" with a registration number. Lawson's dolls, which are called "The Love Me Babies," have copyright notices affixed by means of a sewn-in tag.

Upon discovering that Lawson was selling his own soft-sculpture dolls, OAA sued for copyright infringement, infringement of trade dress, and unfair competition. After a bench trial, the district court found that the OAA dolls were copyrightable "original works" under the copyright laws; that the 1978 dolls were "new works" so that the sale of the 1977 dolls without proper copyright notices did not invalidate the copyright in the 1978 dolls; that Lawson and the Toy Loft had infringed OAA's copyright; and that Lawson had also infringed OAA's distinctive "trade dress" and thus had committed unfair competition.

II. Copyright Infringement

OAA's primary claim below was that Lawson had infringed its copyright in its dolls. In order to prove a claim of infringement a plaintiff must show (1) that he owns a valid copyright in the work and (2) copying by the defendant. Miller v. Universal City Studios, Inc., 650 F.2d 1365, 1375 (5th Cir. 1981); Ferguson v. National Broadcasting Co., 584 F.2d 111, 113 (5th Cir. 1978). Accord Kamar International, Inc. v. Russ Berrie & Co., 657 F.2d 1059, 1062 (9th Cir. 1981); Durham Industries, Inc. v. Tomy Corp., 630 F.2d 905, 911 (2d Cir. 1980) (quoting Novelty Textile Mills, Inc. v. Joan Fabrics Corp., 558 F.2d 1090, 1092-93 (2d Cir. 1977)). See generally 3 M. Nimmer, Copyright § 13.07 (1981). Lawson claims on appeal that neither of these elements was proven.

  1. Validity of OAA's Copyright

    1. The Originality Requirement

      Lawson's first challenge to the validity of OAA's copyright is that the OAA dolls are "copies" of the pre-existing Martha Nelson dolls and thus lack the originality essential to copyright protection. 2 We disagree.

      The central requirement of copyright protection for a work is that the work must have an element of originality. 17 U.S.C. § 102 (copyright protection extends to "original works of authorship"); Imperial Homes Corp. v. Lamont, 458 F.2d 895, 897 (5th Cir. 1972); Donald v. Zack Meyer's T.V. Sales and Service, 426 F.2d 1027, 1029 (5th Cir. 1970), cert. denied, 400 U.S. 992, 91 S.Ct. 459, 27 L.Ed.2d 441 (1971). Accord Kamar International, Inc. v. Russ Berrie & Co., 657 F.2d 1059, 1061 (9th Cir. 1981); Durham Industries, Inc. v. Tomy Corp., 630 F.2d 905, 908-11 (2d Cir. 1980). See generally 1 M. Nimmer, Copyright § 2.01 (1981). Although the originality concept defies exact definition, courts generally agree that "originality" for copyright purposes is something less than the novelty or uniqueness necessary for patent protection. Durham Industries, supra, 630 F.2d at 910; Imperial Homes, supra, 458 F.2d at 897; Zack Meyer's, supra, 426 F.2d at 1029; Nimmer, supra. The test of originality variously has been characterized as "modest," "minimal," and "a low threshold." Durham Industries, supra. Perhaps the most firmly entrenched definition of originality, however, is that first formulated by the Second Circuit and later adopted by the former Fifth:

      All that is needed ... is that the "author" contributed more than a "merely trivial" variation, something recognizably "his own." Originality in this context "means little more than a prohibition of actual copying." No matter how poor artistically the "author's" addition, it is enough if it be his own.

      Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99, 103 (2d Cir. 1951). See Zack

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      Meyer's, supra, 426 F.2d at 1030; Tennessee Fabricating Co. v. Moultrie Manufacturing Co., 421 F.2d 279, 281-82 (5th Cir. 1970) (quoting language from Bell ).

      Here the trial court stated in its findings of fact that OAA's dolls were "substantially different" from the earlier Nelson dolls, detailing several differences in design. 3 This finding was supported by a review of the exhibits and record and was not clearly erroneous. 4 We agree with the trial court, moreover, that these differences supplied the minimal degree of originality necessary for copyright protection. The OAA dolls were more anatomically correct than the Nelson dolls in several respects and were proportioned more like an infant. These variations on the idea of a human-figure soft-sculpture doll, an idea admittedly taken from the Nelson dolls, 5 were the original work of Roberts and Morehead and were more than merely trivial variations. See Puddu v. Buonamici Statuary, Inc., 450 F.2d 401, 402 (2d Cir. 1971) (although copyrighted statues "bore a strong family resemblance" to prior uncopyrighted works, "the differences suffice(d) to satisfy the modest requirement of originality").

    2. Copyright Notice

      Lawson's second argument is that OAA has lost its copyright due to inadequate notice. According to Lawson, the dolls produced and sold by OAA in 1978 were copies of the dolls made by Roberts and Morehead in 1977. The dolls, therefore, were first "published" 6 in 1977, and because the 1977 dolls concededly lacked proper copyright notices under the 1909 Copyright Act, any copyright OAA may have had in the dolls is now irretrievably lost.

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      While the publication of a work without a proper copyright notice under the 1909 Act was considered a dedication to the public and resulted in a forfeiture of copyright, see 37 C.F.R. § 202.2(a)(2), the new Act has changed this result considerably by providing liberal savings provisions for copyright protection even if the copyright notice is omitted entirely from a work. Given...

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