R. Dakin & Co. v. A & L Novelty Co., Inc.
| Decision Date | 09 January 1978 |
| Docket Number | No. 75-C-1292.,75-C-1292. |
| Citation | 444 F. Supp. 1080 |
| Parties | R. DAKIN & COMPANY, d/b/a the Dardenelle Co., Plaintiff, v. A & L NOVELTY CO., INC., Defendant. |
| Court | U.S. District Court — Eastern District of New York |
Owen, Wickersham & Erickson, Melville Owen, San Francisco, Cal., Morgan, Finnegan, Pine, Foley & Lee, John L. Welch, New York City, for plaintiff.
Harold Sacks, New York City, for defendant.
FINDINGS OF FACT and CONCLUSIONS OF LAW
This is an action for infringement of copyrights on five stuffed toy animals. Trial was before the court without a jury. The court has jurisdiction of the parties and the subject matter under the Copyright Law, Title 17 U.S.C. and 28 U.S.C. § 1338.
Plaintiff, R. Dakin & Company, is a California corporation with its principal place of business in Brisbane, California. Dakin does some of its business through an operating division called The Dardenelle Company. Defendant, A & L Novelty Co., Inc., is a New York corporation having its principal place of business in Brooklyn, New York.
Dakin manufactures and sells high quality stuffed toy animals. Its products are sold to department stores, gift shops, discount stores, and variety chains. Dakin relies principally on its semiannual catalogs and its attendance at various toy shows to advertise its products. Since 1968, Dakin has participated in the annual New York Toy Show held at 200 Fifth Avenue, New York, New York, and at various hotels throughout New York City. Dakin has maintained a year-round showroom at 200 Fifth Avenue since 1970.
A & L Novelty is also in the business of manufacturing and selling stuffed toy animals. It sells its products mainly to discount stores, department stores, and chain stores. Since 1960, A & L has maintained a sales office at 200 Fifth Avenue in New York City and also participated in the annual New York Toy Show.
Between 1968 and 1974, Dakin manufactured and obtained copyrights for the five stuffed animals that are the subjects of this lawsuit. The date of first publication, the period of distribution, the copyright registration number, and the date of issuance of each of these stuffed animals are as follows:
Item First Publication Period of Copyright Reg. No
Distribution
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Frogaboo July 9, 1968 1968-1972 Gp 74730
August 25, 1971
Hippoboo January 21, 1969 1969-1976 Gp 74731
August 25, 1971
Hilda Hippo October 19, 1971 1971-1976 Gp 83582
February 23, 1973
Fishaboo April 29, 1970 1970-1974 Gp 74732
August 25, 1971
Gabby Gibbon March 27, 1974 1974-1975 Gp 98420
April 29, 1975
All samples of Dakin's stuffed toy animals have had the Dakin notice affixed to them.
Dakin's Frogaboo, Hippoboo, and Fishaboo are stuffed toy animal pajama bags with wide, open mouths for receiving pajamas. Hilda Hippo is a bean bag; other than that it essentially is a smaller version of Hippoboo. Gabby Gibbon is a stuffed toy animal.
The prototypes of Dakin's Frogaboo, Hippoboo, and Fishaboo were submitted to Beverly Lund, Dakin's Product Development Coordinator, by Virginia Clark, an independent designer. What interested Dakin in regard to the prototypes was that each combined the attributes of a pajama bag, a pillow, and a stuffed toy. While pajama bags in the shape of animals have been on the toy market for a long time, Dakin felt that the pajama bag — pillow — stuffed toy was a novel concept worthy of further development. Therefore, Dakin invested its time and resources into converting the crude and unattractive prototypes into stylized, colorful, attractive products. It began to market Frogaboo, Hippoboo, and Fishaboo in 1968, 1969, and 1970, respectively. The items appeared in Dakin's catalogs and were displayed in its showroom at 200 Fifth Avenue. Prior to the Fall of 1971, Dakin had sold and distributed over 8,000 Frogaboos, over 13,000 Hippoboos, and over 6,000 Fishaboos throughout the country.
In early 1972, A & L began marketing the following stuffed toy pajama bags with wide, open mouths for receiving pajamas: Stuffed Toy Frog, No. 041/PJ, Stuffed Toy Hippo, No. 042/PJ, and Stuffed Toy Fish, No. 044/PJ. A & L's products are strikingly similar to Dakin's. In comparing Dakin's Hippoboo with A & L's Stuffed Hippo, the form of expression of the two stuffed toys is practically identical. Both toys are made of plush material. The shape of the head and body, the placement of the eyes, ears, nose, and mouth, and the color scheme (though not the particular colors) of the toys are the same. A & L's Stuffed Hippo differs from Dakin's product in that it is slightly smaller, it lacks the small tail found on Dakin's Hippoboo, its nostrils are made of black felt dots rather than black felt crescents, and its ears are slightly larger (although they are the same shape and made of the same felt material). An additional difference between the parties' stuffed toys is that the eyes on Dakin's Hippoboo are made of multiple pieces of felt placed in such a way as to give the toy an almost entreating look on its face, while A & L's Stuffed Hippo has paper eyes that stare straight ahead. The effect of these differences, however, is minimal, and the ordinary observer would be prone to overlook them and regard the toys as the same.
The differences between Dakin's Fishaboo and A & L's Stuffed Fish are also minimal. While both toys have felt dots to represent nostrils, A & L's are slightly larger. Both toys use three eccentric circles for eyes, but Dakin's "glance" upward while A & L's "glance" downward. In addition, Dakin's product uses felt pieces for the eyes and has felt eyebrows, while A & L's product has paper eyes and no eyebrows.1 Other than these minor differences, the products are almost identical. Their shape is the same, as is the placement of one felt "fin" on each side of the body and a double felt "dorsal fin" at the top of the body. Both toys are made of brightly colored plush felt.
The similarities between Dakin's Frogaboo and A & L's Stuffed Frog also outweigh the differences between them. The body shapes of the two toys are substantially similar. Both toys have small bumps in the vicinity of the eyes. Both toys have felt "legs" that end with three points serving as "toes." The rear "legs" of each toy frog are attached to a circular piece of felt located on the rear sides of the frogs so as to produce the effect of the folded legs of a frog. The fact that A & L's frog has paper eyes with lashes and felt nostrils, while Dakin's frog has multiple pieces of felt for eyes and no nostrils, does not alter the substantial similarity between the parties' products.
In March of 1974, Dakin obtained a copyright for and began marketing Gabby Gibbon, a stuffed toy gibbon. Virginia Kemp, Dakin's head designer, began preparing design sketches for a stuffed toy gibbon in March, 1973. In January of 1974, Ms. Kemp finalized the design for Gabby Gibbon. While the original design sketch had the arms and legs of the toy extended, the final design sketch showed the legs in a folded, sitting position. When the product was produced, the arms were crossed and sewn together to keep the legs folded, and the thighs were tack-sewn to the body.
In about June of 1974, Gabby Gibbon was advertised in Dakin's Fall 1974 Catalog. By the Fall of 1974, over 7,500 Gabby Gibbon toys had been sold.
In January, 1975, A & L began marketing a Stuffed Toy Baboon, style numbers 633, 1033, 1333, and 5033. The Stuffed Toy Baboon was advertised on the cover of A & L's 1975 Catalog; it is substantially similar in appearance to Dakin's Gabby Gibbon. Both toys appear to represent seated gibbon monkeys. Like a gibbon, each monkey has a black face encircled by white trim. The hands and feet of both toys are also white. The toys differ in that Dakin's Gabby Gibbon has a brown body, like a real-life gibbon, while A & L's Stuffed Toy Baboon has a yellow body. In addition, A & L's toy has a small plastic nose on its snout and a red tongue protruding from its mouth. These features do not appear on Gabby Gibbon. These differences, however, are slight in comparison to the similar features, coloring, and posture of the toys.
In the early part of 1975, Harold Nizamian, Dakin's president, was visiting the showroom of Just Accessories, one of Dakin's sales representatives located at 112 West 34th Street in New York City. Just Accessories represented both Dakin and A & L and displayed both toy lines in its showroom. During the course of his visit, Mr. Nizamian noticed A & L's 1975 Catalog which features on its front cover a toy monkey very similar to Dakin's Gabby Gibbon. Upon perusing the catalog, Mr. Nizamian discovered A & L's Stuffed Hippo, Stuffed Fish, and Stuffed Frog, all of which closely resembled products of Dakin's.
Dakin notified A & L that it considered the latter's...
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