Baby Buddies Inc v. Toys “r” Us Inc

• Decision Date: 22 July 2010
• Docket Number: No. 08-17021.,08-17021.
• Citation: 611 F.3d 1308
• Parties: BABY BUDDIES, INC., a Florida corporation, Plaintiff-Counter-Defendant-Appellant,v.TOYS “R” US, INC., a Delaware corporation, Toys “R” Us-Delaware, Inc., a Delaware corporation, Geoffrey, Inc., a Delaware corporation, Defendants-Counter-Claimants-Appellees.
• Court: U.S. Court of Appeals — Eleventh Circuit

611 F.3d 1308

BABY BUDDIES, INC., a Florida corporation, Plaintiff-Counter-Defendant-Appellant,v.TOYS “R” US, INC., a Delaware corporation, Toys “R” Us-Delaware, Inc., a Delaware corporation, Geoffrey, Inc., a Delaware corporation, Defendants-Counter-Claimants-Appellees.

No. 08-17021.

United States Court of Appeals,

Eleventh Circuit.

July 22, 2010.

COPYRIGHT MATERIAL OMITTED

Joseph J. Weissman, Johnson, Pope, Bokor, Ruppel & Burns, Frank Robert Jakes, Johnson, Blakely, Pope, Bokor & Ruppel, Tampa, FL, for Plaintiff.

Robert S. Weisbein, Foley & Lardner, LLP, New York City, Charles F. Ketchey, Jr., Trenam Kemker, Tampa, FL, for Defendants.

Appeal from the United States District Court for the Middle District of Florida.

Before DUBINA, Chief Judge, TJOFLAT, Circuit Judge, and BOWEN, ^* District Judge.

TJOFLAT, Circuit Judge:

This appeal involves a copyright dispute between Baby Buddies, Inc. (“Baby Buddies”) and Toys “R” Us, Inc. (“Toys R Us”). Baby Buddies sued Toys R Us in federal district court, alleging that Toys R Us's pacifier holder infringed Baby Buddies's copyright in its own similar pacifier holder. After discovery, Toys R Us moved for summary judgment. The district court granted the motion for summary judgment and dismissed Baby Buddies's claims. Baby Buddies appeals that judgment, and we affirm.

I.

A.

In 1985, Darlene Krause (“Krause”) tried to find a pacifier holder for her new baby. A pacifier holder is a device that can be attached to a baby's clothing and has a short tether that can be connected to a pacifier. If the baby drops the pacifier, the tether prevents it from falling to the ground and becoming dirty or lost. Krause found the available pacifier holders unattractive, so she made her own: she bought a small, fuzzy bear resembling a teddy bear from a craft store, affixed a clip to it, attached a colorful ribbon as a tether, and added a matching ribbon bow for decoration. The homemade pacifier holder proved so popular with friends that Krause and her husband formed Baby Buddies, Inc. in 1986 to produce and sell the pacifier holder. The following year, Krause applied for and received a copyright registration for her design. ¹ Krause assigned all rights in her copyrighted work to Baby Buddies.

A year later, Baby Buddies employed a design and molding firm to redesign the pacifier holder using a molded plastic bear. The redesigned bear made the pacifier holder cheaper to manufacture, easier to assemble, easier to clean, and more aesthetically pleasing. This pacifier holder features a white, plastic bear still resembling a child's teddy bear. The bear is approximately one-and-one-quarter inches tall and is seated with its lower paws facing out and its upper paws facing inward and resting on its stomach. The bear has sharply defined features, with its toes, muzzle, and mouth clearly delineated. A bow made of textured, aquamarine-colored ribbon² attaches to the back of the bear. The bow has two loops on the top and two loose ends of the ribbon on the bottom that form a flattened “X” shape behind the bear's head and torso. The same ribbon is used to make a several-inches-long tether with a snap on the end that allows it to be looped through a hole in the baby's pacifier. The tether extends downward from the bottom of the bear. A metal clip is attached to the back of the bear.³ Baby Buddies's rights in this second pacifier holder form the basis of this appeal, and we refer to this second design as the “Baby Buddies pacifier holder” and to the plastic bear featured in this design as the “Baby Buddies bear.” In 1991, Baby Buddies registered this second design with the United States Copyright Office.⁴

Sometime around 1997, Toys R Us began carrying the Baby Buddies's pacifier holder. The pacifier holder sold well-Baby Buddies has sold more than a million units, with more than half a million of those sales coming through Toys R Us.

By 1999, though, Toys R Us had decided to produce and market its own pacifier holder under its private label, “Especially for Baby.” Toys R Us had its product development department attempt to buy the Baby Buddies pacifier holder on the open market. When that effort proved unsuccessful, Toys R Us enlisted a consultant to design several different pacifier holders, including a teddy bear pacifier holder. The design consultant in turn engaged a subcontractor. At some point, the consultant sent the subcontractor a copy of the Baby Buddies pacifier holder and a note saying in part, “I need a new animal design. The buyer likes this bear but I do not want to produce the same exact thing. Can you please work on a similar design?” The subcontractor responded with designs for a pacifier holder featuring a bear as well as with designs featuring an angel, a duck, a bunny, and balloons, which the consultant had also apparently requested. After a few modifications, Toys R Us and its consultant settled on a design for the bear-themed pacifier holder, among several others.

The Toys R Us pacifier holder features a one-and-one-half-inch tall molded plastic bear. The bear is predominantly white with a red heart on its stomach. The bear is sitting down with its lower paws facing outward and its upper paws also facing outward and sticking out from each side. Its features are bloated and cartoonish; it lacks a muzzle and its paws are simple circles with gold dots to represent its digits. A textured, light mint-green colored ribbon⁵ forms a bow behind the bear. The bow forms a nearly perfect “X” shape, with its upper loops sticking out from behind the side of the bear's head and its lower loose ends sticking out below the bear's lower paws. A separate piece of the same ribbon forms a several-inch-long tether that extends from the bottom of the bear and has a snap that lets the tether loop through a hole in the baby's pacifier.⁶ We refer to this pacifier holder as the Toys R Us pacifier holder and to the bear as the Toys R Us bear.

Toys R Us sold both pacifier holders for a time, then began phasing out the Baby Buddies pacifier holder, discontinuing it entirely in 2003. Baby Buddies then sued Toys R Us for copyright infringement.

B.

Baby Buddies filed a three-count complaint against Toys R Us⁷ on July 2, 2003, in federal court: Count I alleged that Toys R Us's pacifier holder infringed Baby Buddies's copyright in its pacifier holder; Count II alleged that Toys R Us violated Fla. Stat. § 817.41, which prohibits misleading advertising, by claiming to be the original author and copyright holder of the bear-themed pacifier holder; and Count III sought relief against Toys R Us under the theory of common law unfair competition.⁸ Baby Buddies sought damages and injunctive relief. Toys R Us's answer denied liability and asserted several affirmative defenses.

The parties engaged in discovery. Toys R Us enlisted a husband and wife team of self-professed teddy bear experts, Terry and Doris Michaud, who wrote a report concluding that the bears featured on its and Baby Buddies's pacifier holders were not similar.⁹ Based on the information obtained through discovery and the Michauds' expert report, Toys R Us moved for summary judgment pursuant to Federal Rule of Civil Procedure 56(c) on Counts I and II (the copyright and state law misleading advertising claims). For purposes of summary judgment on the issue of copyright infringement only, Toys R Us conceded the validity of Baby Buddies's copyright in its pacifier holder and conceded that it had access¹⁰ to the pacifier holder.¹¹ Along with its motion, Toys R Us submitted deposition excerpts, documents obtained during discovery, the Michauds' report, and product samples of both its and Baby Buddies's pacifier holders.¹²

On October 3, 2008, the district court granted Toys R Us's motion for summary judgment on Counts I and II. In addressing the copyright infringement claim, the district court separated the elements of Baby Buddies's pacifier holder that could be protected under the copyright laws from those elements that could not. The court found that the tether was a functional item not subject to copyright protection and that the color of the tether could not be separated from it. The court also found the clip to be a functional item not subject to protection. The bow, according to the court, was too generic to merit protection, leaving only the plastic molded bear subject to copyright protection. The court then compared the various features of the two bears, concluding that no genuine issue of material fact existed as to infringement. Because the court concluded that Toys R Us had not infringed Baby Buddies's copyright, it also held that Toys R Us did not engage in misleading advertising under the Florida statute by claiming that it was the creator and owner of the Toys R Us pacifier holder. Accordingly, the district court granted Toys R Us's motion for summary judgment as to Counts I and II.

Following the grant of summary judgment on Counts I and II, the parties jointly moved the district court to enter final judgment as to Counts I and II under Federal Rule of Civil Procedure 54(b) and to stay further proceedings on Count III pending the resolution of Baby Buddies's appeal of the judgment on Counts I and II. Baby Buddies further stipulated that if the court of appeals upheld the district court's dismissal of Counts I and II, it would voluntarily move to dismiss Count III with prejudice. The district court granted the joint motion on November 13, 2008, entering final judgment in favor of Toys R Us on Counts I and II and staying further proceedings on Count III. On December 11, 2008, Baby Buddies filed its notice of appeal of the district court's November 13 judgment as to Counts I and II.¹³

II.

“We review the district court's grant of summary judgment de novo, construing all evidence in the light most favorable to the non-moving party. Summary judgment is only proper when there are no genuine issues of material fact.” Leigh v. Warner Bros., Inc., 212 F.3d...