Jcw Investments, Inc. v. Novelty, Inc.

Decision Date30 October 2003
Docket NumberNo. 02 C 4950.,02 C 4950.
Citation289 F.Supp.2d 1023
CourtU.S. District Court — Northern District of Illinois
PartiesJCW INVESTMENTS, INC., d/b/a Tekky Toys, Plaintiff, v. NOVELTY, INC., Defendant.

Gregory J Smith, Competition Law Group, LLC, Kelly J. Eberspecher, Competition Law Group, Chicago, IL, for JCW Investments, Inc. dba Tekky Toys, plaintiff.

Michael J. Kelly, Todd J. Ohlms, Freeborn & Peters, Chicago, Daniel J. Lueders, John L Roberts, Woodard, Emhardt, Naughton, Moriarty & McNett, Bank One Center/Tower, Indianapolis, IN, for Novelty Inc, defendant.


GETTLEMAN, District Judge.

In its amended complaint, plaintiff JCW Investments, Inc. ("Tekky Toys") seeks injunctive and monetary relief against defendant Novelty, Inc. ("Novelty"), alleging that defendant's farting dolls, Fartman and Fartboy, infringe, 1) its copyright on its doll, "Pull My Finger Fred," in violation of 17 U.S.C. §§ 106 and 501 (Count I)1, and 2) its trademark in "Pull My Finger Fred" in violation of the Lanham Act, 15 U.S.C. § 1114(1) (Count II). Plaintiff also asserts claims of unfair competition in violation of the Lanham Act, 15 U.S.C. § 1125(a) (Count III), trademark dilution in violation of the Lanham Act, 15 U.S.C. § 1125(c) (Count IV), common law unfair competition (Count V), and violation of the Illinois Uniform Deceptive Trade Practices Act, 815 ILCS 510/2 (Count VI). Defendant counterclaims for cancellation of plaintiff's trademark on Pull My Finger Fred pursuant to 15 U.S.C. § 1064.

On June 30, 2003, pursuant to Federal Rule of Civil Procedure 56, defendant moved for summary judgment on plaintiff's copyright infringement claim, arguing that, (1) plaintiff's copyright is invalid because of improper authorship, and (2) defendant's acts do not constitute copying. Plaintiff has cross-moved for summary judgment of copyright infringement. For the reasons stated below, the court grants plaintiff's motion and denies defendant's motion.


Plaintiff Tekky Toys is an Illinois corporation with its principal place of business in Orland Park, Illinois. Tekky Toys designs and sells novelty items, including a plush toy character called "Pull My Finger Fred" ("Fred"), which was developed in 1997.

Fred3 is a plush toy figure of a smiling, black-haired, balding, Caucasian man in a white tank top, blue pants, and brown shoes with black bottoms, sitting in a green chair. When Fred is activated by pinching a red sticker marked "Press Here" on the protruding finger of his right hand, Fred emits flatulence-like sounds, his chair vibrates, and he jokes about the sound he just made (for example, by saying, "Silent, but deadly," and "Did somebody step on a duck?"). A close visual inspection of Fred reveals that he has eyes with annular retinas, large nostrils, and a wavy smile that reveals five upper teeth and two lower teeth. Fred also has a line under the right side of his mouth, and his hair extends slightly in front of his ears.

In or around 1997, James Wirt and Geoff Bevington began working together on developing drawings of Fred. The inspiration for these drawings was drawn from the imagination and personal experiences of both Bevington and Wirt. Wirt sent one of Bevington's drawings to Peter MacKennan ("MacKennan"), a three-dimensional character designer who was not an employee of Tekky Toys. Wirt hired MacKennan to make a three dimensional pattern and prototype sculpture from one of Bevington's drawings. Using a Bevington drawing and an instruction by Wirt as to how big the plush sculpture should be, MacKennan made a pattern and a prototype sculpture of Fred. From his work, MacKennan never intended to be a co-author or co-owner of any copyright in Fred, and on January 9, 2003, he executed a declaration to this effect.

Mark MacLean was the "voice talent" for the sound recording utilized for Fred. Wirt and Bevington provided MacLean with a list of phrases to read using different voices. While neither Wirt's nor Bevington's voice was actually used in the sound recording, MacLean provided different voices as directed by Wirt.4 From these different recordings, Wirt selected which of these voice recordings would ultimately be used for Fred.

Wirt then submitted the pattern and prototype made by MacKennan along with a Bevington drawing to at least two toy manufacturers in Asia (the "Asian manufacturers"). With these materials the Asian manufacturers made many different prototypes and production models of Fred. After reviewing these prototypes, Bevington and Wirt made various revisions. For example, Wirt's revisions included increasing the size of the eyes, eyebrows, and stomach, and changing the mouth and the orientation of the audio trigger. Although some minor differences existed between the specifications sent to the Asian manufacturers and the final dolls (for example, Fred's hair is made of plush in the final doll), these changes were submitted to and approved by Wirt.

Wirt and Bevington applied for a copyright registration with the United States Copyright Office for a "plush toy with sound" for their 3-dimensional sculpture and sound recording. The copyright registration form stated that Wirt and Bevington were the only "co-authors" of Fred. Wirt also submitted a production unit of Fred made by one of the Asian toy manufacturers to the United States Copyright Office. The Registrar of Copyrights received the application and on February 5, 2001, Bevington and Wirt obtained Certificate of Copyright Registration No. SRu434-019 for Fred. The Asian manufacturers were directed to place the copyright designation "©" on the cardboard box container of the Fred doll. Wirt and Bevington assigned their copyright rights to Tekky Toys on July 11, 2002.

Defendant Novelty is a privately held Indiana corporation. Defendant is in the business of selling novelty items, including the plush toy Fartman5 that is at the heart of the instant dispute. Its principal place of business is in Greenfield, Indiana, and it is owned entirely by its President, Todd Green ("Green"),

Green testified at his deposition that he first saw Fred at a showroom for TL Toys in Hong Kong, one of the Asian manufacturers of Fred (although he could not remember when). Green also admitted that his idea for Fartman was based on Fred.

Fartman is a plush doll of a smiling, black-haired, balding Caucasian man, wearing a white tank top with "Fartman" emblazoned across the front in red capital letters, a red baseball cap with a large "F" on the front (worn backwards), blue pants, and white tennis shoes with black laces and white bottoms, sitting in a brown vinyl chair. When Fartman is activated by pinching a red sticker marked "Press Here" on the protruding finger of his right hand, he emits flatulence-like sounds, his chair vibrates, and he jokes about the sound he just made (for example, by saying, "Silent, but deadly," "Did somebody step on a duck?" as well as "Rip-it-y-do-dah!"). A close visual inspection of Fartman reveals that he has eyes with solid retinas, no nostrils, and a wavy smile revealing five teeth. Fartman is slightly larger than Fred and his voice is similar to Fred's.

Green described his Fartman idea to Mary Burkhart ("Burkhart"), the art director at Novelty, who quickly prepared a single drawing based on Green's Fartman idea. Although Burkhart testified at her deposition that she could not remember the actual words or specific instructions Green used in describing his Fartman idea, she testified that he described a "kind of a hillbilly-type guy, sitting in a chair that would fart and be activated by actually pulling his finger." Burkhart further testified that she did not see Fred until January 7, 2003, as part of this litigation.

Green and Burkhart were the only Novelty employees involved in the development of Fartman. According to the general practice at Novelty, Burkhart would have shown her drawings to Green for his input and approval, after which the drawing would be put into a JPEG form so that the manufacturer could understand the specifics of how the toy was to look. Once the JPEG drawing was approved by Green, it was supplied to Gtig, a third-party toy manufacturer, so that Gtig could make a prototype of Fartman for Novelty's review.6 Gtig made samples of Fartman, and Novelty directed Gtig to change the first sample to comport with the JPEG drawing.

On October 8, 2001, Novelty began selling its "Pull My Finger Santa" product, a farting Santa doll which is not seated in a chair. Novelty began selling Fartman on November 5, 2001. In March 2002, plaintiff learned that defendant was selling Fartman.

The "pull-my-finger" gag, which involves an individual reaching out and asking someone else to pull his finger and passing gas when his finger is pulled, did not originate with plaintiff or the defendant. Neither did the sayings "did somebody step on a duck" nor "silent but deadly." The recorded history of the "pull-my-finger" joke appeared as early as 1887 in Emile Zola's book The Earth. A reference to a doll performing the "pull-my-finger" gag surfaced in 1997 when radio personalities Bob and Tom released an album, "FUNHOUSE," which contained a previously broadcast comedy sketch entitled "Pull My Finger Charlie." The "Pull My Finger Charlie" sketch describes a hypothetical toy doll that farts and jokes, "Did someone step on a duck?" when its finger is pulled. However, the "Pull My Finger Charlie" track does not describe an actual toy or any physical characteristics of a toy that was actually sold to consumers.


A moving party is entitled to summary judgment under Rule 56 when the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show there is no genuine issue of material fact and that the moving party is entitled to judgment as a matter of law....

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1 books & journal articles
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    • United States
    • The Journal of High Technology Law Vol. 8 No. 2, July 2008
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    ...Psihoyos v. Nat'l Geographic Soc'y, 409 F. Supp. 2d 268 (S.D.N.Y. 2005) ("non-trivial"); JCW Investments, Inc. v. Novelty, Inc., 289 F. Supp. 2d 1023 (N.D. Ill. 2003) ("not merely trivial"); Earth Flag, Ltd. v. Alamo Flag Co., 154 F. Supp. 2d 663 (S.D.N.Y. 2001) ("non-trivial"); CRC Press, ......

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