Aliotti v. R. Dakin & Co.

• Decision Date: 04 November 1987
• Docket Number: No. 86-2584,86-2584
• Citation: 831 F.2d 898
• Parties: 1987 Copr.L.Dec. P 26,186, 4 U.S.P.Q.2d 1869 Shelley ALIOTTI and John Aliotti, Plaintiffs-Appellants, v. R. DAKIN & CO., a California corporation, Defendant-Appellee.
• Court: U.S. Court of Appeals — Ninth Circuit

Page 898

831 F.2d 898

1987 Copr.L.Dec. P 26,186, 4 U.S.P.Q.2d 1869

Shelley ALIOTTI and John Aliotti, Plaintiffs-Appellants, v. R. DAKIN & CO., a California corporation, Defendant-Appellee.

No. 86-2584.

United States Court of Appeals Ninth Circuit.

Argued and Submitted Oct. 6, 1987.

Decided Nov. 4, 1987.

Richard H. Rosenthal, Carmel Valley, Cal., for plaintiffs-appellants.

Daniel J. Furniss, San Francisco, Cal., for defendant-appellee.

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

Before GOODWIN, ALARCON and LEAVY, Circuit Judges.

GOODWIN, Circuit Judge:

Shelley and John Aliotti appeal an adverse summary judgment in their damage action for copyright infringement and related grievances.

Shelley Aliotti is a designer of craftwork and toys. From 1976 to 1979 she worked on a contract basis for Favorite Things, Inc., a Carmel-based toy manufacturer. She designed soft pillows, stuffed animals, and other items directed toward the children's market. The Aliottis acquired copyrights to items created by them after Favorite Things, Inc. became bankrupt in 1982.

In November 1978, Bernard Friedman, the president of Favorite Things, telephoned Harold Nizamian, the president of appellee R. Dakin Co., to ask him whether Dakin would be interested in acquiring Favorite Things. After this phone conversation, Friedman sent Nizamian a letter and pictures of various products manufactured by Favorite Things. Upon a request from Dakin's board of directors for additional information, Friedman complied and sent Nizamian a presentation booklet, which included data concerning the production and sale of its merchandise. Friedman also sent Dakin a copy of Favorite Things' current sales brochure, which included photographs of three stuffed toy dinosaurs--Brontosaurus, Stegosaurus and Triceratops--which had been designed by Shelley Aliotti and were being marketed as the "Ding-A-Saur" line.

During a March 1979 meeting at Favorite Things' office, Friedman and Aliotti showed two Dakin executives many of Favorite Things' designs, including many products designed by Aliotti. In addition to the three stuffed dinosaurs already marketed by Favorite Things, Aliotti displayed prototypes of three additional Ding-A-Saurs--Tyrannosaurus Rex, Pterodactyl and Woolly Mammoth. The parties did not discuss the possibility that Dakin might purchase any particular design. After the meeting, the Dakin executives told Shelley Aliotti to contact them if she was interested in being considered for employment at Dakin.

In April 1979, Dakin's board of directors decided not to acquire Favorite Things. In July or August 1979, Dakin began developing its own line of stuffed toy dinosaurs. Dakin first offered its "Prehistoric Pet" line for sale in its fall catalog, which was released in June 1980. The six stuffed animals offered by Dakin were of the same six species as those presented to Dakin by Aliotti. Although Dakin offered affidavits supporting its claim that its employees independently developed its dinosaur line, for the purposes of summary judgment we assume that Dakin appropriated Aliotti's idea of producing stuffed dinosaur dolls.

DISCUSSION

I. Copyright Claims

The district court's grant of summary judgment on the copyright claims is subject to de novo review. See Berkic v. Crichton, 761 F.2d 1289, 1292 (9th Cir.), cert. denied, 474 U.S. 826, 106 S.Ct. 85, 88 L.Ed.2d 69 (1985). Although "summary judgment is not highly favored on the substantial similarity issue in copyright cases," id., it is appropriate if "the court concludes that no reasonable jury could find substantial similarity of both ideas and expression between the works at issue." Frybarger v. International Business Machines Corp., 812 F.2d 525, 528 (9th Cir.1987). See Fed.R.Civ.P. 56(c) (allowing summary judgment when "there is no genuine issue as to any material fact").

To prevail on her copyright claims at trial, Aliotti must prove (1) that she owned the copyrights, (2) that Dakin had access to her designs, and (3) that there is "substantial similarity" between her designs and Dakin's stuffed animals. See Berkic, 761 F.2d at 1291; Sid and Marty Krofft Television Productions, Inc. v. McDonald's Corp., 562 F.2d 1157, 1162 (9th Cir.1977). Because there exist genuine issues of material fact on the issues of ownership and access, summary judgment is appropriate on the copyright claims only if no reasonable jury could find the two lines of stuffed animals to be substantially similar to one another. See Worth v. Selchow & Righter Co., 827 F.2d 569, 571 (9th Cir.1987).

Krofft sets forth a two-part test for determining whether one work is substantially similar to another. See Krofft, 562 F.2d at 1164; see also Berkic, 761 F.2d at 1292; Jason v. Fonda, 526 F.Supp. 774, 777 (C.D.Ca.1981), aff'd, 698 F.2d 966 (9th Cir.1982). The "extrinsic" test, used to determine whether two ideas are substantially similar, is objective, resting upon specific criteria that can be listed and analyzed. See Krofft, 562 F.2d at 1164. The "intrinsic" test, which is used to compare forms of expression, is more subjective, "depending on the response of the ordinary reasonable person." Id. Appellants argue that the district court failed to articulate the applicable law or to apply the two tests to the facts of this case.

The district court's order granting summary judgment distinguished between idea and expression but never explicitly applied the extrinsic and intrinsic tests:

The dolls at issue here derive from the same idea of stuffed dinosaur dolls, but they differ in the expression of that idea. The "Ding-A-Saur" dolls depict a sleepy eyed, "dingy" dinosaur with exaggerated facial and other anatomical features. The stitching on each dinosaur is raised and distinctive, and generally, they are constructed of a distinctive suede-like material. By contrast, the Dakin "Prehistoric Pet" dolls are more accurate depictions of dinosaurs; the dolls reflect less personality. They have no sleepy-eyed look or exaggerated features. They are constructed with a plush material, and the stitching is hidden.

As a matter of law, considering the total concept and feel of the products, the allegedly infringing dolls are not copies of the plaintiffs' "Ding-A-Saurs." No ordinary person could reasonably find that the dolls are so substantially similar as to render one a copy of the other; the dolls are substantially dissimilar.

Order Granting Summary Judgment at 2-3, No. 84-20368 (N.D.Cal. April 29, 1986).

As the district court recognized in its statement that the dolls "derive from the same idea," the extrinsic test is satisfied Appellants argue correctly that the district court's determination as to substantial similarity of expression relied incorrectly on the analytic dissection of the dissimilar characteristics of the dolls. See Krofft, 562 F.2d at 1164 (observing that analytic dissection is not appropriate under the intrinsic test). Similarity of expression exists only when "the total concept and feel of the works" is substantially similar. See Litchfield v. Spielberg, 736 F.2d 1352, 1357 (1984), cert. denied, 470 U.S. 1052, 105 S.Ct. 1753, 84 L.Ed.2d 817 (1985); Krofft, 562 F.2d at 1164. Dissection of dissimilarities is inappropriate because it distracts a reasonable observer from a comparison of the total concept and feel of the works.

                here because both lines of products depict the same subject matter--stuffed dinosaur toys.    See McCulloch v. Albert E. Price, Inc., 823 F.2d 316, 319 (9th Cir.1987) (finding the extrinsic test to have been conducted adequately where the district court's findings indicated that it had found a similarity of ideas)
                

The inquiry into similarity of expression is modified by a line of cases recognized by Krofft but never satisfactorily integrated into the two-part Krofft framework. See Krofft, 562 F.2d at 1167-69. No substantial similarity of expression will be found when "the idea and its expression are ... inseparable," given that "protecting the expression in such circumstances would confer a monopoly of the idea upon the copyright owner." Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738, 742 (9th Cir.1971). See Landsberg v. Scrabble Crossword Game Players, Inc., 736 F.2d 485, 489 (9th Cir.), cert. denied, 469 U.S. 1037, 105 S.Ct. 513, 83 L.Ed.2d 403 (1984) (factual works); See v. Durang, 711 F.2d 141, 143 (9th Cir.1983) (scenes a faire doctrine); Krofft, 562 F.2d at 1168.

Because these cases involve elements of expression, they properly may be assimilated within the analytical framework of the intrinsic test. To the extent that it is necessary to determine whether similarities result from unprotectable expression, it is appropriate under Krofft's intrinsic test to perform analytic dissection of similarities. Although even unprotectable material should be considered when determining if there is substantial similarity of expression, see McCulloch, 823 F.2d at 320-21, no substantial similarity may be found under the intrinsic test where analytic dissection demonstrates that all similarities in expression arise from the use of common ideas.

No copyright protection may be afforded to the idea of producing stuffed dinosaur toys or to elements of expression that necessarily follow from the idea of such dolls. See, e.g., Herbert Rosenthal Jewelry Corp., 446 F.2d 738 (finding the idea and the expression of jeweled bee pins to be inseparable). Appellants therefore may place no reliance upon any similarity in expression resulting from either the physiognomy of dinosaurs or from the nature of stuffed animals. See Frybarger, 812 F.2d at 529-30 (quoting Atari, Inc. v. North American Philips Consumer Elecs. Corp., 672 F.2d 607, 616 (7th Cir.), cert. denied, 459 U.S. 880, 103 S.Ct. 176, 74 L.Ed.2d 145 (1982)) (finding that certain video game features are "as a practical matter indispensable, or at least standard, in the treatment of a given [idea]").

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