Boyds Collection v. Bearington Collection, Inc., CIV.A.1:02 CV 2083.

• Decision Date: 21 March 2005
• Docket Number: No. CIV.A.1:02 CV 2083.,CIV.A.1:02 CV 2083.
• Citation: 360 F.Supp.2d 655
• Parties: The BOYDS COLLECTION, LTD., Plaintiff v. The BEARINGTON COLLECTION, INC., Defendant.
• Court: U.S. District Court — Middle District of Pennsylvania

360 F.Supp.2d 655

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

No. CIV.A.1:02 CV 2083.

United States District Court, M.D. Pennsylvania.

March 21, 2005.

COPYRIGHT MATERIAL OMITTED

Alan R. Boynton, Jr., Harvey Freedenberg, McNees, Wallace & Nurick, Charles T. Young, Jr., McNees Wallace & Wallace LLC, Harrisburg, PA, Lee Grossman, Michael Cherskov, Thomas J. Motzny, Cherskov and Flaynick, Chicago, IL, 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, for Defendant.

Elaine D. Solomon, Roger F. Cox, Blank Rome LLP, Philadelphia, PA, for Intervenor.

MEMORANDUM

CONNER, District Judge.

Bears are big business. Revenues in the collectible teddy bear industry approached $1 billion in the late 1990s, in a field consisting of both established companies and relatively small start-ups.¹ Against this competitive backdrop, plaintiff, The Boyds Collection, Ltd. ("Boyds"), seeks to enjoin sales of bears designed by defendant, The Bearington Collection, Inc. ("Bearington").² The complaint alleges that several Bearington bears infringe on copyrighted Boyds bears, entitling Boyds to injunctive and monetary relief under federal law.

Presently before the court is a motion for summary judgment by Bearington. It asserts that the Bearington bears are not sufficiently similar to the Boyds bears to permit a finding of copyright infringement. Dozens of the bears at issue have been provided to the court for comparison. Having reviewed these submissions and analyzed governing copyright law, the court concludes that, although there can be no dispute over the bears' adorability, there remains a genuine issue of material fact regarding their similarity. The latter question must be reserved for the jury.

I. Statement of Facts³

Closely spaced black eyes, semi-circular cupped ears, a triangular sewn nose, a protruding shaved muzzle, an inverted "Y"-shaped sewn mouth, blended brown fur, and paw pads: these features combine to make a Boyds bear. A common bear stands approximately eight inches in height and has an arm-span of approximately six inches, although some are a bit bigger. They are stuffed, dressed in distinctive decorative clothing, and given a unique name such as "Leo Bruinski" or "Mr. Baybeary." (Doc. 120 ¶¶ 21-26, at 25-27; Doc. 130 ¶¶ 21-26, at 31-37; see also Doc. 95, Exs. DX45, DX49, DX87, DX91-DX93, DX105-DX112, DX126). The bears sell for approximately $20.00 each.⁴

The "flagships" of the Boyds collection are "Bailey" and "Matthew." These bears, which share the features described above with minor differences in facial characteristics and clothing, were created in 1992 and 1996 by an employee of Boyds. They were copyrighted in 1997. Design elements similar to Bailey and Matthew were later incorporated into other bears, with different clothing. These bears were subsequently registered under independent copyrights. (Doc. 120 ¶¶ 4-6, at 21-22; Doc. 120, Exs. 3A-3B, 7A-7K; Doc. 130 ¶¶ 4-6, at 21-22).

Bearington formed in 1997 and designed its first bear, named "Camille," in the same year.⁵ Prior to creating Camille, representatives of Bearington reviewed plush bear catalogs and attended several trade shows, but they did not have access to several of the copyrighted Boyds bears until later. It is unclear to what degree Camille shared features of the Boyds bears or whether it represented a significantly different design.⁶ Two years later, in 1999, Bearington redesigned Camille with many of the same characteristics as a Boyds bear.⁷ (Doc. 94 ¶¶ 16-25; Doc. 120 ¶¶ 16-25, at 7-9; Doc. 121, Ex. 10 at 134-35; Doc. 122, Exs. 20-21; see also Doc. 95, Ex. DX40).

Soon thereafter, Bearington began marketing a series of new bears, many of which resembled the Boyds design. A common Bearington bear has closely spaced black eyes, semi-circular cupped ears, a triangular sewn nose, a protruding shaved muzzle, an inverted "Y"-shaped sewn mouth, blended brown fur, and paw pads. It stands approximately eight inches in height and has an arm-span of approximately six inches, although some are a bit bigger. It is stuffed, dressed in decorative clothing, and given a unique name such as "Jacqueline de Fleur" or "Pappa Christmas." (Doc. 120 ¶¶ 21-26, at 25-27; Doc. 130 ¶¶ 21-26, at 31-37; see also Doc. 95, Exs. DX14-DX23, DX25, DX28, DX31, DX34, DX37, DX39, DX42-DX42, DX47, DX50-DX51, DX54, DX67-DX68, PX75). The bears sell for approximately $20.00 each.⁸

In November 2002, Boyds commenced the instant copyright infringement action against Bearington. The complaint alleges that bears marketed by Bearington infringe on fifteen copyrights held by Boyds, including those for the Bailey and Matthew designs. Boyds seeks compensatory and injunctive relief. (Docs. 1, 73). Bearington denies these claims, and moved for summary judgment in November 2004. (Doc. 92).

II. Standard of Review

"Summary judgment serves as a minimal but important hurdle for litigants to overcome before presenting a claim to a jury." Pappas v. City of Lebanon, 331 F.Supp.2d 311, 314 (M.D.Pa.2004). Faced with such a motion, the adverse party must produce affirmative evidence, beyond the disputed allegations of the pleadings, in support of the claim. FED. R. CIV. P. 56(e); see Celotex Corp. v. Catrett, 477 U.S. 317, 322-23, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986); Corneal v. Jackson Township, 313 F.Supp.2d 457, 464 (M.D.Pa.2003), aff'd, 94 Fed.Appx. 76, 2004 WL 790315 (3d Cir.2004). "Such affirmative evidence — regardless of whether it is direct or circumstantial — must amount to more than a scintilla, but may amount to less (in the evaluation of the court) than a preponderance." Saldana v. Kmart Corp., 260 F.3d 228, 231-32 (3d Cir.2001) (quoting Williams v. Borough of West Chester, 891 F.2d 458, 460-61 (3d Cir.1989)). Only if this burden is met can the cause of action proceed. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250-57, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587-89, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986); see FED. R. CIV. P. 56(c), (e).

III. Discussion

Copyright law assures authors of "original" creative works that others will not profit from their designs without their approval. 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); see also U.S. CONST. art. I, § 8, cl. 8; 17 U.S.C. §§ 101-103; 1 MELVILLE B. NIMMER & DAVID NIMMER, NIMMER ON COPYRIGHT § 1.06 [A] (2004) (hereinafter NIMMER). To benefit from these protections, the author must register the design with the United States Copyright Office, a division of the Library of Congress. See 17 U.S.C. §§ 408, 412, 701. Once approved, a copyright registration permits its owner to enjoin others from marketing the subject designs without permission. Id. §§ 411, 501-502. An infringer of a valid copyright is potentially liable for any profits received from sales of the copyrighted design, as well as "actual damages suffered by the owner as a result of the infringement." Id. § 504; see also id. § 505 (providing for recovery of costs and attorney's fees).

A claim of copyright infringement comprises two elements: "(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original." Feist Publ'ns, 499 U.S. at 361, 111 S.Ct. 1282. The instant motion for summary judgment challenges both aspects of Boyds's claims. Each will be addressed in turn.

A. Ownership of a Valid Copyright

"The sine qua non of copyright is originality." Id. at 345, 111 S.Ct. 1282. A product is entitled to copyright protection only if it "possesses at least some minimal degree of creativity." Id. (citing 1 NIMMER § 2.01[A], [B]). The work need not be wholly novel or entirely removed from prior innovations. Id. Indeed, a composite of existing materials may qualify as "original" so long as the aggregation of elements signifies additional creative effort by the author. Id. at 347-49, 111 S.Ct. 1282; see also 17 U.S.C. § 103. Put simply, a work is generally deemed "original" if it is, to some degree, more than a mere copy of what came before. See Feist Publ'ns, 499 U.S. at 358-59, 111 S.Ct. 1282.

A presumption of originality attaches to a design previously registered by the Copyright Office.⁹ See 17 U.S.C. § 410(c). However, this presumption is rebuttable on evidence that the design was not entitled to protection under federal copyright law. Id.; see also Williams Elec. v. Artic Int'l, Inc., 685 F.2d 870, 871-872 (3d Cir.1982). Thus, the copyrighted Boyds bears are presumed original absent proof that the Copyright Office somehow erred in issuing the registrations.

Bearington argues that the copyrighted Boyds designs replicate features of bears produced throughout the industry prior to 1990, demonstrating that the Boyds bears are not original. The court cannot agree. While the prior bears — many of which have been introduced into the summary judgment record — share many similarities with the Boyds designs, there are also clear differences between them. The prior bears have different fur than a Boyds bear. They have slightly different facial expressions. They have different styles of arms and legs. (Compare Doc. 95, Exs. DX84, DX97-DX104 with Doc. 95, Exs. DX87, DX91-DX92). Despite their similarities, the prior bears and the Boyds bears are not so indistinguishable as to defeat the presumption of originality as a matter of law.¹⁰ See Original Appalachian Artworks, Inc. v. Toy Loft, Inc., 684 F.2d 821, 824 & n. 2 (11th Cir.1982); Kamar Int'l, Inc. v. Russ Berrie & Co., 657 F.2d 1059, 1061 (9th Cir.1981).

Bearington further argues that, even if the first Boyds bears were "original," subsequent designs based on these bears, with differences only in...