ENTERTAINMENT RES. GROUP v. Genesis Creative Group

• Decision Date: 02 May 1994
• Docket Number: No. C 92 2526 SAW (FSL).,C 92 2526 SAW (FSL).
• Parties: ENTERTAINMENT RESEARCH GROUP, INC., Plaintiffs, v. GENESIS CREATIVE GROUP, INC. and Aerostar International, Inc., Defendants.
• Court: U.S. District Court — Northern District of California

853 F. Supp. 319

ENTERTAINMENT RESEARCH GROUP, INC., Plaintiffs, v. GENESIS CREATIVE GROUP, INC. and Aerostar International, Inc., Defendants.

No. C 92 2526 SAW (FSL).

United States District Court, N.D. California.

May 2, 1994.

Earl A. Bohachek, Rubinstein & Bohachek, and Kurtis J. Kearl, Cooper, White & Cooper, San Francisco, CA, for plaintiff Entertainment Research Group.

Stephen W. Sommerhalter, Jeffrey L. Fazio, Buchalter, Nemer, Fields & Younger, San Francisco, CA, for defendant and moving party Aerostar Intern. Inc.

Kirk W. Garey, Robins, Kaplan, Miller & Ciresi, San Francisco, CA, for defendant Genesis Creative Group, Inc.

Ronald L. Yin, Limbach & Limbach, San Francisco, CA, for potential intervenor Toys "R" Us.

Robert V. Kuenzel, Proskauer, Rose, Goetz & Mendelsohn, San Francisco, CA, for potential intervenor Hanna-Barbera Productions.

Larry W. McFarland, Baker & Hostetler, Los Angeles, CA, for potential intervenor Quaker Oats Co.

ORDER RE DEFENDANT AEROSTAR'S MOTION FOR PARTIAL SUMMARY JUDGMENT HEARD ON APRIL 21, 1994

LANGFORD, United States Magistrate Judge.

I. INTRODUCTION

This case unites together old adversaries in the arena of advertising to pit them collectively against a common foe in an arena to which they are not accustomed; the federal courtroom. Creatures which are normally docile and pleasant as they hawk their wares have now turned hostile and litigious. The Pillsbury "Doughboy", "Toucan Sam", "Dino the Dinosaur", "Geoffrey the Giraffe", "Oatis Oat Square", "Little Sprout" and yes, even that smiling old salt "Cap'n Crunch" have abandoned their jocular demeanor, joined forces and donned their battle garb in order to engage an enemy far more dangerous than any competitor encountered on the commercial airwaves: the derivative copyrighter.

Their common foe is Plaintiff Entertainment Research Group (ERG). ERG (with authorization from the original copyright holders), manufactures three-dimensional, inflatable costumes of the above named characters for use in grocery stores, shopping malls and other appropriate venues. In an attempt to protect its work, ERG attached copyright notices to the derivative costumes. Defendant Aerostar (another costume manufacturer), is accused of copying these costumes and infringing upon ERG's copyrights. As a defense, Aerostar has brought a summary judgment motion asserting that ERG has not created anything entitled to copyright protection and therefore Aerostar cannot be guilty of copyright infringement. Although not parties to this action at the time of the hearing, Hanna-Barbera, Quaker Oats, Toys "R" Us (some of the owners of the original copyrights), were present by their counsel and voiced disapproval of Plaintiff's derivative copyright assertion. They stand poised to intervene, pending the outcome of this motion.

II. COPYRIGHT VALIDITY

Defendant Aerostar brings this motion for summary judgment claiming ERG's copyright is not valid. To establish copyright infringement, the holder of the copyright must prove both valid ownership of copyright and infringement of that copyright by the alleged infringer. The registration of a copyright certificate itself establishes a prima facie presumption of validity, which may be rebutted by a showing on the part of the alleged infringer that the copyright holder's work is not original. Since Aerostar has put ERG's copyrights in dispute, ERG must prove the validity of its copyright as a threshold issue. Without proper copyright protection any infringement claim is moot and summary judgment rejecting the alleged infringement claim is appropriate.

Plaintiff ERG contends they are entitled to copyright protection for their creation of inflatable derivative works which are based on previously copyrighted characters (i.e., ERG is claiming a derivative copyright in their inflatable "Doughboy", where Pillsbury obviously owns the underlying copyright for the "Doughboy").

The first issue to be decided is whether or not ERG is entitled to a derivative copyright. This requires the court to determine the scope of derivative copyrights and decide whether ERG's inflatable derivative costumes fall within the boundaries delineated by copyright law.

Section 101 of the Copyright Act defines a derivative work as:

a work based upon one or more pre-existing works, such as a translation, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship, is a "derivative work".

17 U.S.C.A. § 101.

Although there is relatively little guidance from the Ninth Circuit¹ on derivative copyrights where the underlying work is not in the public domain, the Court of Appeals for the Second Circuit has considerable experience with the question of derivative copyrights and we now turn to that circuit for guidance.

The Second Circuit has held that in order to constitute a separately protectable derivative work, an adaptation of a preexisting work must contain "some substantial, not merely trivial, originality." L. Batlin & Son v. Snyder, 536 F.2d 486 (2d Cir.1976), cert. denied, 429 U.S. 857, 97 S.Ct. 156, 50 L.Ed.2d 135 (1976).

The Second Circuit further refined this test in Durham Industries, Inc. v. Tomy Corp, 630 F.2d 905 (2d Cir.1980), where they formulated a two pronged test²: "First, to support a copyright the original aspects of a derivative work must be more than trivial. Second, the original aspects of 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." Id. at 909 (emphasis added).

The basis for the second prong of the Durham test is § 103(b) of the Copyright Act which provides:

The copyright in a compilation or derivative work extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work, and does not imply any exclusive right in the preexisting material. The copyright in such work is independent of, and does not affect or enlarge the scope, duration, ownership, or subsistence of, any copyright protection in the preexisting material.

17 U.S.C.A. § 103(b) (emphasis added).

For the purposes of summary judgment however, this court feels constrained by the Ninth Circuit's decision in North Coast Industries v. Jason Maxwell Inc., 972 F.2d 1031 (9th Cir.1992). In that case, the Ninth Circuit overturned a summary judgment ruling by the district court. The district court had held that the minimum changes in design made by the plaintiff over a work already existing in the public domain were insufficient to warrant copyright protection. In reversing the trial court, the Ninth Circuit stated that summary judgment is appropriate when "... no reasonable trier-of-fact could find even trivial differences in the designs...." Id. at 1034.

Although this court is prepared to adopt the language of North Coast, an important distinction needs to be drawn between North Coast and the case at bar. North Coast dealt exclusively with a pattern design imprinted on a dress. There was no aspect of the North Coast designs which was functional or useful (or to use language from § 102 of the Copyright Act, there was no aspect of those designs which had a "mechanical or utilitarian aspect").

Unlike the designs in North Coast, the costumes at issue in this case are a necessary hybrid of form and function. Unlike North Coast, this court must determine the scope of copyright protection and the propriety of summary judgment when elements of artistry and function are intertwined.

Section 102 of the Copyright Act defines the subject matter of copyright. Subsection (a) lists 7 categories of works which are copyrightable including "pictorial, graphic and sculptural works." This court feels that any copyright protection afforded ERG would fall under this category. A quick look at the definition of "sculptural works" under § 101 leads us to relevant, useful language.

The definition states that sculptural works, including works of artistic craftsmanship are entitled to copyright protection "insofar as their form but not their mechanical or utilitarian aspects are concerned." 17 U.S.C.A. § 101. It further states that "the design of a useful ... article shall be considered a ... sculptural work only if, and only to the extent that, such design incorporates ... sculptural features that can be identified separately from and are capable of existing independently of, the utilitarian aspects of the article." 17 U.S.C.A. § 101 (emphasis added).

Based on this, this court finds that any aspect of a "sculptural work" which is driven primarily by a functional, utilitarian or mechanical consideration will not merit copyright protection. Any differences in appearance between a derivative work and the preexisting work which are driven primarily by a functional, utilitarian or mechanical purpose cannot be considered when seeking artistic differences for the purpose of originality.³

This court is certain that ERG's clients would request costumes which are completely identical to their preexisting characters. Any minimal differences in appearance are therefore a result of functional costume considerations, i.e., the costume must be worn by a human.

A quick look at ERG's "Toucan Sam" costume illustrates this point. In the preexisting work, "Toucan Sam" has rather short, skinny, rubbery legs placed far apart on "Sam's" torso. In the derivative costume work, "Toucan Sam" has thick, bulky, tall legs which are placed close together on "Sam's" torso. Are these differences the result of an "artistic" decision on the part of ERG? No, they are due to the limitations of the human body. The legs need to be thicker, and...