Boyds Collection v. Bearington Collection

• Decision Date: 15 April 2005
• Docket Number: CIVIL ACTION NO. 1:02-CV-2083.
• Citation: 365 F.Supp.2d 612
• Parties: The BOYDS COLLECTION, LTD., Plaintiff v. The BEARINGTON COLLECTION, INC., Defendant.
• Court: U.S. District Court — Middle District of Pennsylvania

365 F.Supp.2d 612

The BOYDS COLLECTION, LTD., Plaintiff v. The BEARINGTON COLLECTION, INC., Defendant.

CIVIL ACTION NO. 1:02-CV-2083.

United States District Court, M.D. Pennsylvania.

April 15, 2005.

Alan R. Boynton, Jr., Harvey Freedenberg, McNees, Wallace & Nurick, Harrisburg, PA, Lee F. Grossman, Grossman Law Offices, Chicago, IL, Michael Cherskov, Thomas J. Motzny, Albert Y. Tsui, Cherskov & Flaynick, Chicago, IL, Charles T. Young, Jr., McNees Wallace & Wallace LLC, Harrisburg, PA, for Plaintiff.

Alex S. Fonoroff, Caroline W. Spangenberg, Christopher P. Bussert, Christopher J. Kellner, James J. Leonard, Jerre B. Swann, Kilpatrick Stockton LLP, Atlanta, GA, Heather Paterno, Thomas Edward Brenner, Goldberg, Katzman & Shipman, P.C., Harrisburg, PA, Kristin R. Connor, Stephen Dorvee, Arnall Golden Gregory LLP, Atlanta, GA, for Defendant.

MEMORANDUM

CONNER, District Judge.

Presently before the court is a motion by defendant, The Bearington Collection, Inc. ("Bearington"), for partial reconsideration of a memorandum and order denying summary judgment in its favor on the copyright infringement claims of plaintiff, The Boyds Collection, Ltd. ("Boyds"). The court concluded that several of the copyrights at issue, for plush bears differing only with respect to their clothing, are potentially valid because such clothing does not necessarily constitute a "useful article."¹ Bearington argues that this holding improperly contravenes rulings of the United States Copyright Office, the federal agency responsible for administration of copyright law. The court previously rejected this argument, and will reject it again for similar reasons.

Copyright law excludes from its protection "useful articles": "[p]ictorial, graphic, and sculptural works" that have an "intrinsic utilitarian function." See 17 U.S.C. §§ 101, 102(a)(5); MELVILLE B. NIMMER & DAVID NIMMER, NIMMER ON COPYRIGHT §§ 1.06[A], 2.08 (2004) (hereinafter NIMMER). These works serve purposes independent of expression and, whether standing alone or incorporated into a previously copyrighted design, cannot be validly registered as enforceable copyrights. See Feist Publ'ns, Inc. v. Rural Tel. Service Co., Inc., 499 U.S. 340, 345-56, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991) (noting that the focus of copyright law is on artistic "creativity" as opposed to technological innovation); Dam Things from Denmark v. Russ Berrie & Co., Inc., 290 F.3d 548, 563 (3d Cir.2002) (discussing derivative works). The copyrighted designs at issue here are wholly derivative of previous bears registered by Boyds, except as to their clothing. Thus, whether this clothing is a "useful article" subject to copyright protection is potentially dispositive of the validity of the Boyds copyrights.

The court, when presented with this question in Bearington's motion for summary judgment,² answered in the negative. It distinguished clothing for people, which has "universally" been held to fall within the definition of "useful article," from clothing for toys and dolls:

Clothing [for a person], regardless of differences in design, may be worn by an individual to cover and protect his or her body.... [In contrast, t]he clothing on a teddy bear obviously has no utilitarian function. It is not intended to cover embarrassing anatomical aspects or to protect the bear from exterior elements. Rather, it is intended and serves only to modify the appearance of the bear, to give the doll a different "look and feel" from others. Clothing on a bear replicates the form but not the function of clothing on a person. It does not constitute a "useful article" excluded from copyright protection.

Boyds Collection, Ltd. v. Bearington Collection, Inc., 360 F.Supp.2d 655, 661 (M.D.Pa.2005) (footnotes omitted).³

The court recognized that the Copyright Office apparently follows a contrary interpretation, as indicated in two letters produced by Bearington, under which all clothing — whether for a person or a doll — is deemed to be a "useful article" per se. The court also recognized that this interpretation was entitled to deference, as that of the agency responsible for administering copyright law.⁴ Nevertheless, the agency's position was rejected for several reasons. The two letters submitted by Bearington do not disclose the source or rationale of the Copyright Office's theory, but merely state its position on the issue.⁵ They were authored by an agency examiner, not an official clearly vested with interpretative authority.⁶ And, most problematic, the interpretation proposed in the letters "fatally conflicts with the plain meaning" of the statutory definition of "useful article," as applied in this case.⁷ See id.

Bearington disagrees. It argues that the rationale for the agency's interpretation was presented in prior administrative rulings, and "need not be reiterated in every objection letter from the [agency]." It complains that, contrary to the court's description, the letters were authored by a "supervisory" examiner in the "Visual Arts Section of the Copyright Office." It characterizes the letters, provided by the agency in response to Bearington's applications to register clothing designs, as "ruling[s] having the force of law" that bind this court. It asserts that clothing on plush bears serves the "utilitarian functions" of protection and preservation and should be considered "useful article" under copyright law. Finally, and with a rhetorical flourish, Bearington claims that the court's decisions "will ... open up a Pandora's box where decisions on copyrightability of articles of clothing [for dolls and people] will depend on whether or not they are deemed to be sufficiently `useful' or have a sufficiently `intrinsic utilitarian function.' "(Doc. 154).

None of these contentions are meritorious. Obviously an agency may rely on previously expressed rationales in responding to an applicant, without repeating the complete justification for the agency's position. But a justification for the policy, if it is to be accorded substantial judicial deference, should appear somewhere in the court record. See United States v. Mead Corp., 533 U.S. 218, 228-29, 121 S.Ct. 2164, 150 L.Ed.2d 292 (2001) (citing Skidmore v. Swift & Co., 323 U.S. 134, 140, 65 S.Ct. 161, 89 L.Ed. 124 (1944)). The letters offered by Bearington do not satisfy this condition. They do not provide a rationale for agency's position, and the prior ruling to which they cite — and upon which Bearington seizes — concerns the copyrightability of costumes for people, not clothing for dolls. See Registrability of Costume Designs, 56 Fed.Reg. 56530 (Nov. 5, 1991). The ruling's conclusion, that costumes for people "fall within the literal definition of useful article" because they serve the "useful function... [of] clothing the body," see id. at 56534, does not suggest that clothing for dolls should be considered "useful articles." To the contrary, this rationale seemingly supports the holding that doll clothing, if employed solely for appearance differentiation, has no "utilitarian function" and falls outside of the statutory definition of "useful article."⁸

Similarly unavailing is Bearington's contention that the letters were authored by a "supervisory" official with significant experience in the field. An authoring official's position within an agency is relevant only to the extent that it establishes that person's authority to speak on the agency's behalf. See Mead, 533 U.S. at 228-31, 121 S.Ct. 2164; see also INS v. Aguirre-Aguirre, 526 U.S. 415, 423-425, 119 S.Ct. 1439, 143 L.Ed.2d 590 (1999); NationsBank of N.C., N.A. v. Variable Annuity Life Ins. Co., 513 U.S. 251, 256-257, 115 S.Ct. 810, 130 L.Ed.2d 740 (1995). Other gradations within employment, including whether the individual is a supervisor or supervisee, are immaterial to the proper level of deference to be afforded to the proffered interpretation. See id. Despite the "supervisory" position of the author of the letters at issue, nothing in the record indicates that he was vested with rule- or policy-making responsibilities. His opinion is properly viewed as a reflection of standard agency practice, but not more.⁹ See id.

Bearington's next argument — that the letters have the "force of law" and preclude the infringement claims sub judice — is simply wrong. Federal law vests in the Copyright Office the authority to promulgate regulations "for the administration of the functions and duties made the responsibility of the [agency]" under governing statutes. See 17 U.S.C. § 702; see also Cablevision Sys. Dev. Co. v. Motion Picture Ass'n of Am., Inc., 836 F.2d 599, 608 (D.C.Cir.1988); Bonneville Int'l Corp. v. Peters, 153 F.Supp.2d 763, 771-75 (E.D.Pa.2001). However, the letters at issue were not promulgated under this authority. They do not have the "force of law." See Christensen v. Harris County, 529 U.S. 576, 587, 120 S.Ct. 1655, 146 L.Ed.2d 621 (2000); see also Mead, 533 U.S. at 228-31, 121 S.Ct. 2164; Southco, Inc. v. Kanebridge Corp., 390 F.3d 276, 286-87 (3d Cir.2004). At most, the letters represent individual adjudications of the Copyright Office in response to Bearington's registration applications. See 17 U.S.C. § 410(b); see also Fed. Employees v. Dep't of Interior, 526 U.S. 86, 98-99, 119 S.Ct. 1003, 143 L.Ed.2d 171 (1999), cited in Mead, 533 U.S. at 230 n. 12, 121 S.Ct. 2164. They are not enforceable against Boyds, which obtained the copyrights at issue in separate agency proceedings, and they do not affect Boyds's statutory right to bring the infringement action sub judice.¹⁰ See 17 U.S.C. §§ 411, 501-502. Beyond demonstrating standard agency practice, the letters do not bind the court in ruling on these claims. See Mead, 533 U.S. at 228-31, 121 S.Ct. 2164; Christensen, 529 U.S. at 587, 120 S.Ct. 1655; Southco, 390 F.3d at 286 n. 5.

Moreover, the interpretation followed by the Copyright Office, as applied in this case under a view of the record favorable to Boyds,¹¹ clearly...