Well-Made Toy Mfg. v. Goffa Intern. Corp., Docket No. 02-7881.

CourtUnited States Courts of Appeals. United States Court of Appeals (2nd Circuit)
Writing for the CourtSack
Citation354 F.3d 112
PartiesWELL-MADE TOY MFG. CORP., a corporation of the State of New York, Plaintiff-Counter-Defendant-Appellant, v. GOFFA INTERNATIONAL CORP., a corporation of the State of New York, King Kullen Grocery Co., Inc., Defendants-Counter-Claimants-Appellees.
Decision Date02 December 2003
Docket NumberDocket No. 02-7881.
354 F.3d 112
WELL-MADE TOY MFG. CORP., a corporation of the State of New York, Plaintiff-Counter-Defendant-Appellant,
v.
GOFFA INTERNATIONAL CORP., a corporation of the State of New York, King Kullen Grocery Co., Inc., Defendants-Counter-Claimants-Appellees.
Docket No. 02-7881.
United States Court of Appeals, Second Circuit.
Argued: May 30, 2003.
Decided: December 2, 2003.

Page 113

Gerard F. Dunne, Law Office of Gerard F. Dunne, Esq., New York, NY, for Plaintiff-Counter-Defendant-Appellant.

William A. Alper, Cohen, Pontani, Lieberman & Pavane (Martin B. Pavane and Catriona M. Collins, of counsel), New York, NY, for Defendants-Counter-Claimants-Appellees.

Before: CALABRESI and SACK, Circuit Judges, and GARAUFIS, District Judge.*

SACK, Circuit Judge.


This is an appeal from a judgment on a copyright infringement claim rendered by the United States District Court for the Eastern District of New York (Jack B. Weinstein, Judge) in favor of the defendants-counter-claimants-appellees Goffa International Corporation ("Goffa") and King Kullen Grocery Co., Inc., ("King Kullen"). The plaintiff-appellant Well-Made Toy Mfg. Corp. ("Well-Made") asserts that a rag doll manufactured by Goffa and sold at retail by King Kullen infringed the copyright for two rag dolls designed and manufactured by Well-Made. Well-Made's dolls seem similar to one another, although they are of significantly different sizes. Well-Made's larger 48-inch doll was a derivative work based upon its smaller 20-inch doll. Well-Made had registered its copyright in the 20-inch doll but not in the larger, derivative one.

Following a bench trial, the district court decided that Goffa's rag doll was not

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substantially similar to Well-Made's registered, 20-inch doll. The district court also concluded that because the copyright in the later, 48-inch doll had not been registered, the court lacked subject matter jurisdiction to consider whether the copyright in that doll had been infringed by Goffa's doll. See 17 U.S.C. § 411(a) (prohibiting an "action for infringement of the copyright in any ... work ... until registration of the copyright claim has been made in accordance with this title.").

On appeal, Well-Made does not contest the district court's finding that Goffa's doll is not substantially similar to Well-Made's 20-inch doll. Well-Made argues instead that registration of the copyright claim in the 20-inch doll creates subject matter jurisdiction over infringement claims with respect to its 48-inch derivative of the 20-inch doll, which Well-Made claims is infringed by Goffa's doll. Well-Made also argues that its right to control the production of works derivative of the 20-inch Well-Made doll was infringed. Well-Made contends that if Goffa's doll is derivative of Well-Made's 48-inch doll, and if the 48-inch doll is itself derivative of the 20-inch doll, then the derivative's derivative — the Goffa doll — is transitively derivative of the 20-inch doll, irrespective of any substantial similarity, or lack thereof, between Well-Made's 20-inch doll and Goffa's 48-inch doll. For the reasons that follow, we reject both of Well-Made's arguments and affirm the judgment of the district court.

BACKGROUND

The facts underlying this appeal are set forth in comprehensive detail in the opinion of the district court. Well-Made Toy Mfg. Corp. v. Goffa Int'l Corp., 210 F.Supp.2d 147 (E.D.N.Y.2002). We discuss them here only to the extent necessary to explain our resolution of this appeal.

Well-Made manufactures and sells rag dolls with the name "Sweetie Mine." The first Sweetie Mine was a 20-inch doll, the copyright for which Well-Made registered in 1996. Two years later, Well-Made designed a 48-inch version. The 48-inch Sweetie Mine was created by enlarging the cloth patterns for the 20-inch Sweetie Mine on a photocopier, then adjusting the enlarged doll's proportions. Well-Made considered the adjustments, made according to the artistic judgment of Well-Made's designers, necessary to achieve aesthetic proportionality in the larger doll's features. Well-Made never registered a copyright in the 48-inch Sweetie Mine.

Also in 1998, Goffa began manufacturing a 48-inch rag doll called the "Huggable Lovable." The Huggable Lovable was sold through King Kullen stores. King Kullen is represented jointly with Goffa under an indemnification agreement between them.1

In 1999, Well-Made brought suit against Goffa and King Kullen in the United States District Court for the Eastern District of New York, alleging that the Huggable Lovable infringed Well-Made's copyrights in the 20- and 48-inch Sweetie Mines. At the conclusion of a bench trial, the district court found that Goffa had designed the Huggable Lovable by "actually

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cop[ying] large parts of" the 48-inch Sweetie Mine. Id. at 167. According to the court, however, the Huggable Lovable did not infringe Well-Made's copyright in the 20-inch Sweetie Mine, because of the difference between the sizes, proportions, facial features, fabrics, and colors of the two dolls. Id. at 167-72. The court also concluded that it lacked subject matter jurisdiction to consider whether Goffa's Huggable Lovable infringed Well-Made's copyright in the 48-inch Sweetie Mine, because there was no separate registration of any such copyright claim. Id. at 164-65, 172 (citing 17 U.S.C. § 411(a)).

On appeal, Well-Made argues that the district court was mistaken in not considering infringement of the 48-inch Sweetie Mine because, although there is no registered copyright for that doll, it is a derivative work based on the 20-inch Sweetie Mine, which is registered. Well-Made...

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46 practice notes
  • Mannion v. Coors Brewing Co., No. 04 Civ. 1187(LAK).
    • United States
    • United States District Courts. 2nd Circuit. United States District Courts. 2nd Circuit. Southern District of New York
    • July 21, 2005
    ...on the Iced Out Comp Board, which precludes a suit for infringement based upon that image. Well-Made Toy Mfg. Corp. v. Goffa Int'l Corp., 354 F.3d 112, 115-117 (2d Cir.2003); 17 U.S.C. § 411(a) (2005). The only question in this case is whether the Coors Billboard infringes the copyright in ......
  • In re Literary Works in Electronic Databases, Docket No. 05-5943-cv(L).
    • United States
    • United States Courts of Appeals. United States Court of Appeals (2nd Circuit)
    • November 29, 2007
    ...matter jurisdiction over infringement claims arising from unregistered copyrights. See Well-Made Toy Mfg. Corp. v. Goffa Int'l Corp., 354 F.3d 112, 115 (2d Cir.2003); Morris v. Bus. Concepts, Inc., 259 F.3d 65, 72 (2d Cir. 2001). The District Court never specifically addressed this potentia......
  • Peter Letterese & Assoc. v. World Inst. of Scient., No. 05-15129.
    • United States
    • United States Courts of Appeals. United States Court of Appeals (11th Circuit)
    • July 8, 2008
    ...of substantial similarity. See Atkins v. Fischer, 331 F.3d 988, 993 (D.C.Cir.2003); Well-Made Toy Mfg. Corp. v. Goffa Int'l Corp., 354 F.3d 112, 117 (2d Cir.2003); Kohus v. Mariol, 328 F.3d 848, 858 (6th Cir.2003); Dam Things from Denmark v. Russ Berrie & Co., Inc., 290 F.3d 548, 565 (3d Ci......
  • Reed Elsevier, Inc. v. Muchnick, No. 08–103.
    • United States
    • United States Supreme Court
    • March 2, 2010
    ...that § 411(a)'s registration requirement was jurisdictional, see 509 F.3d, at 121 (citing Well–Made Toy Mfg. Corp. v. Goffa Int'l Corp., 354 F.3d 112, 114–115 (C.A.2 2003); Morris v. Business Concepts, Inc., 259 F.3d 65, 72–73 (C.A.2 2001)), the Court of Appeals concluded that the District ......
  • Request a trial to view additional results
45 cases
  • Mannion v. Coors Brewing Co., No. 04 Civ. 1187(LAK).
    • United States
    • United States District Courts. 2nd Circuit. United States District Courts. 2nd Circuit. Southern District of New York
    • July 21, 2005
    ...on the Iced Out Comp Board, which precludes a suit for infringement based upon that image. Well-Made Toy Mfg. Corp. v. Goffa Int'l Corp., 354 F.3d 112, 115-117 (2d Cir.2003); 17 U.S.C. § 411(a) (2005). The only question in this case is whether the Coors Billboard infringes the copyright in ......
  • In re Literary Works in Electronic Databases, Docket No. 05-5943-cv(L).
    • United States
    • United States Courts of Appeals. United States Court of Appeals (2nd Circuit)
    • November 29, 2007
    ...matter jurisdiction over infringement claims arising from unregistered copyrights. See Well-Made Toy Mfg. Corp. v. Goffa Int'l Corp., 354 F.3d 112, 115 (2d Cir.2003); Morris v. Bus. Concepts, Inc., 259 F.3d 65, 72 (2d Cir. 2001). The District Court never specifically addressed this potentia......
  • Peter Letterese & Assoc. v. World Inst. of Scient., No. 05-15129.
    • United States
    • United States Courts of Appeals. United States Court of Appeals (11th Circuit)
    • July 8, 2008
    ...of substantial similarity. See Atkins v. Fischer, 331 F.3d 988, 993 (D.C.Cir.2003); Well-Made Toy Mfg. Corp. v. Goffa Int'l Corp., 354 F.3d 112, 117 (2d Cir.2003); Kohus v. Mariol, 328 F.3d 848, 858 (6th Cir.2003); Dam Things from Denmark v. Russ Berrie & Co., Inc., 290 F.3d 548, 565 (3......
  • Reed Elsevier, Inc. v. Muchnick, No. 08–103.
    • United States
    • United States Supreme Court
    • March 2, 2010
    ...that § 411(a)'s registration requirement was jurisdictional, see 509 F.3d, at 121 (citing Well–Made Toy Mfg. Corp. v. Goffa Int'l Corp., 354 F.3d 112, 114–115 (C.A.2 2003); Morris v. Business Concepts, Inc., 259 F.3d 65, 72–73 (C.A.2 2001)), the Court of Appeals concluded that the District ......
  • Request a trial to view additional results
1 books & journal articles
  • Lengthening Shadows: Biotechnology and Patent Eligibility
    • United States
    • Landslide Nbr. 9-5, May 2017
    • May 1, 2017
    ...examples. 44. See Airframe Sys., Inc. v. L-3 Commc’ns Corp., 658 F.3d 100 (1st Cir. 2011); Well-Made Toy Mfg. Corp. v. Goffa Int’l Corp., 354 F.3d 112 (2d Cir. 2003); Murray Hill Publ’ns, Inc., v. ABC Commc’ns, Inc., 264 F.3d 622 (6th Cir. 2001), abrogated on other grounds by Reed Elsevier,......

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